Ex Parte Krauter et al

Patent Trial and Appeal Board

Oct 7, 2013

12262346 (P.T.A.B. Oct. 7, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/262,346 10/31/2008 Berit Krauter 15778*181 (BMS 07 1 156) 6045
23416 7590 10/07/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
10/07/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BAYER MATERIALSCIENCE AG
Inventors: Berit Krauter, Wolfgang Ebert,
Michael Prein and Michael Wagner
____________________

Appeal 2012-007863
Application 12/262,346
Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD TORCZON and
SALLY GARDNER LANE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

I. Background
Bayer MaterialScience AG (“applicant”), the real party in interest (Brief, 1
renumbered page 11), seeks review under 35 U.S.C. § 134(a) of a final rejection 2
dated 14 February 2011. 3
The application on appeal was filed in the PTO on 31 October 2008. 4

1 The Appeal Brief does not appear to have numbered pages. A copy of the first
eleven pages of the Appeal Brief with renumbered pages 1-11 is attached.

Appeal 2012-007638
Application 12/262,346

2

Applicant claims priority of German patent application 10 2007 052783.9, 1
filed 02 November 2007. 2
The application has been published as U.S. Patent Application Publication 3
2009/0137709 A1. 4
II. Prior art 5
In support of prior art rejections, the Examiner relies on the following 6
evidence. 7
Sleeckx U.S. Patent 6,166,116 26 Dec. 2000
Chatterjee et al.
“Chatterjee”
U.S. Patent Application Publication
2006/0002814 A1
05 Jan. 2006
Barry G. Hinwood
“Hinwood”
A TEXTBOOK OF SCIENCE FOR THE HEALTH
PROFESSIONS, Chapman & Hall, page 127
1993

Applicant does not contest the prior art status of the Examiner’s evidence. 8
We have jurisdiction under 35 U.S.C. § 134(a). 9
III. Claims on appeal 10
Claims 1-5, 8-10 and 12-21 are on appeal. Brief, page 2; Answer, page 3. 11
IV. Rejections 12
In the Answer, the Examiner has maintained the following rejections: 13
A. Rejection 1 14
Claims 1-5, 8-10 and 12-18 stand rejected as being unpatentable under § 103 15
over Sleeckx and Chatterjee. Answer, page 4. 16
In connection with Rejection 1, in the Brief applicant does not argue the 17
separate patentabilty of Claims 2-5, 8-10 and 12-18 apart from Claim 1. 18

Appeal 2012-007638
Application 12/262,346

3

Accordingly, as to Rejection 1 we decide the appeal on the basis of Claim 1. 1
37 C.F.R. § 41.37(c)(1)(vii) (2011). 2
B. Rejection 2 3
Claims 1-5, 8-10 and 12-20 also stand rejected as being unpatentable under 4
§ 103 over the same Sleeckx and Chatterjee references, using an alternative 5
explanation. Answer, page 7. Applicant appears to argue Rejection 1 and 6
Rejection 2 together. Accordingly, we decide Rejection 2 along with Rejection 1. 7
C. Rejection 3 8
Claim 21 stands rejected as being unpatentable under § 103 over Sleeckx, 9
Chatterjee and Hinwood. Answer, page 11. 10
V. Invention 11
The invention is generally understood from Claim 1 on appeal. 12
Claim 1, which we reproduce from the Claims Appendix of the Brief 13
(page 9), reads [matter in brackets and indentation added (see 37 C.F.R. § 1.75(i)); 14
principal limitations in issue in italics]: 15
A composition consisting essentially of: 16
[1] a polycarbonate; 17
[2] 0.01 to < 0.3 wt.% of a polyether polyol having a 18
molecular weight of 1100 to 6000; and 19
[3] 0.01 to 0.8 wt.% of a salt of: 20
(i) a metal selected from the group consisting of alkali 21
metals, alkaline earth metals and mixtures thereof, 22
and 23

Appeal 2012-007638
Application 12/262,346

4

(ii) a compound selected from the group consisting of 1
sulfonic acids, 2
and mixtures[2] thereof; 3
wherein the recited percentages by weight are based on the total 4
composition. 5
VI. Analysis 6
A. Rejection 1 7
Rejection 1 is resolved on the basis of whether “consisting essentially” 8
excludes from the scope of Claim 1 certain “free di-sulfonimide” compounds 9
described as being essential in polycarbonate compositions described by Sleeckx. 10
Sleeckx describes polycarbonate compositions comprising: 11
(a) a polycarbonate component (a) (col. 2:66); 12
(b) a poly(oxyalkylene) component (b) (col. 3:34); 13
(c) a free di-sulfonimide component (c) (col. 5:10); and 14
(d) an organic or inorganic acid component (d) (col. 5:56). 15
Putting aside for the time being component (c), Sleeckx differs from Claim 1 16
in that it does not describe the use of applicant’s salt [3]. 17
Chatterjee describes the use of polycarbonate compositions that can include 18
a potassium perfluorobutane sulfonate. ¶¶ 0001 and 0087. 19

2 While it is not entirely clear, we believe “mixtures thereof” refers to mixtures of
the salt and not mixtures of sulfonic acids. Any ambiguity can be cleared up in the
event of future prosecution.

Appeal 2012-007638
Application 12/262,346

5

The Examiner held that it would have been obvious to use Chatterjee’s 1
potassium perfluorobutane sulfonate as the salt described as component (d) of 2
Sleeckx. The rationale for using the potassium perfluorobutane sulfonate as 3
component (d) was achieving flame retardance—a property of interest to applicant. 4
The use of potassium perfluorobutane sulfonate was viewed as being consistent 5
with a teaching of Sleeckx’s that “known additives that are commonly used in 6
carbonate polymer compositions” may be added to the Sleeckx compositions. 7
Col. 7:34-5. 8
Applicant does not seem to question the Examiner’s combination of Sleeckx 9
and Chatterjee. 10
Rather, applicant relies on the transitional phrase “consisting essentially” to 11
establish patentability. 12
According to applicant, the “basic and novel characteristics” of its claimed 13
polycarbonates are “combined transparency and flame resistance.” Brief, page 4. 14
Further according to applicant, the Examiner has not established that the Sleeckx 15
polycarbonates have both transparency and flame resistance—basically because 16
Sleeckx requires the presence of a free di-sulfonimide component (c). Id. at 17
page 5. 18
The Examiner found that Sleeckx describes the disulfonimide as a UV 19
stabilizer. Answer, page 13. The Examiner also noted that Sleeckx describes the 20
use of a small amount of disulfonimide and that applicant has not provided any 21
evidence that the small amount would affect combined transparency and flame 22
retardance. Id. The Examiner also determined that the Specification indicates that 23
“sulfonimides” can be present in applicant’s composition. Id.; Specification 24

Appeal 2012-007638
Application 12/262,346

6

¶ 0008. Applicant states that “sulfonimides” as used in the Specification refer to a 1
class of flameproofing agents that does not include free di-sulfonimide stabilizers. 2
Brief, page 5. The Examiner responds by noting that the Specification does not 3
define “sulfonimide”. Answer, page 13. 4
Under established practice, applicant has the burden of establishing that the 5
presence of the free di-sulfonimide component (c) described as essential for the 6
Sleeckx composition affects the basic and novel properties of applicant’s 7
composition. Applicant acknowledges that burden. Brief, page 4; In re De 8
Lajarte, 337 F.2d 870, 873-74 (CCPA 1964). 9
In this particular case, applicant’s burden is made somewhat difficult 10
because Claim 1 does not specify any degree of transparency or flame retardance. 11
To sustain its burden, applicant turns to data presented in Table 1 (col. 11) of 12
Sleeckx. Sleeckx Table 1 is reproduced below. 13

Appeal 2012-007638
Application 12/262,346

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Examples A through D are comparative examples. Col. 9:62. Examples 1 1
and 2 are Sleeckx’s invention examples. Col. 9:61-62. 2
Applicant calls attention to the YI0 data for Example B (YI0 = 1.54) vis-à-vis 3
Example 2 (YI0 = 2.55). While applicant refers to Example 1, it is believed 4
applicant intended to refer to Example 2. According to applicant the only 5
difference between Example B and Example 2 is addition of di-sulfonimides. 6
Applicant observes that the YI0 increases when a salt (KPTSM—col. 10:19-25) is 7
present. Brief, pages 5-6. KPTSM is a potassium salt of N-(-p-tolylsulfonyl)-p-8
toluenesulfonimide. Col. 10:23-25. Based on the YI0 increase, applicant reasons 9
that transparency suffered. Brief, page 6. Applicant appears to have overlooked a 10
comparison of Example A (YI0 = 2.3) vis-à-vis Example 1 (YI0 = 2.4) where the 11

Appeal 2012-007638
Application 12/262,346

8

difference is minimal. Moreover, we cannot find on this record that there is any 1
significant difference between the YI0 achieved by Sleeckx vis-à-vis that which 2
might be obtained with polycarbonates within the scope of Claim 1 on appeal. 3
Also it is believed that applicant has overlooked the presence of a non-salt 4
(HPTSM—col. 10:19-21). Applicant has not established that any adverse 5
difference in YI0 values was not due to the presence of HPTSM. 6
Applicant has failed to sustain its burden of showing that the presence of any 7
free di-sulfonimide materially affects transparency and flame retardance. 8
Rejection 1 and Rejection 2 are affirmed. 9
Rejection 3 10
Rejection 3 turns on whether the transition phrase “consisting of” excludes 11
free di-sulfonimides. 12
The Examiner held that “consisting of” does not exclude any free di-13
sulfonimide because it permits the presence inter alia of UV stabilizers. The 14
Examiner found that the free di-sulfonimide is a UV stabilizer. Applicant 15
disagrees. Brief, page 6. 16
Applicant’s disagreement is based on a teaching of Sleeckx that various 17
ionizing radiation embodiments are described and that those embodiments do not 18
include a UV embodiment. Id., Sleeckx, col. 9:7-9. Sleeckx identifies its 19
embodiments as “[e]xamples of the ionizing radiation.” Col. 9:7. Nothing in 20
Sleeckx precludes the use of a UV stabilizer. Hinwood describes UV radiation as a 21
form of ionizing radiation. ¶ 11.8—Ultraviolet Light (“Ultraviolet radiation is a 22
form of ionizing radiation.”). The Sleeckx disulfonimide is used to provide color 23
stability when irradiation takes place. Accordingly, one skilled in the art would 24

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Application 12/262,346

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have appreciated that a UV stabilizer would have been expected to minimize color 1
deterioration. 2
Rejection 3 is affirmed. 3
Decision 4
Upon consideration of the appeal, and for the reasons given herein, it is 5
ORDERED that the decision of the Examiner rejecting Claims 1-5, 6
8-10, and 12-21 over the prior art is affirmed. 7
FURTHER ORDERED that no time period for taking any 8
subsequent action in connection with this appeal may be extended under 37 C.F.R. 9
§ 1.136(a)(1)(iv). 10
AFFIRMED 11
12
bar 13
Docket No.: 15778*181
(BMS 07 1 156)
PATENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Patent Application of:
Berit Krauter, et at,
Application No.: 12/262,346 Confirmation No,: 6045
Filed: October 31, 2008 Art Unit: 1796
For: POLYOL-CONTAINING, FLAME­ Examiner: John E. Uselding
RESISTANT POL YCARBONA TES,
PROCESSES FOR PREPARING THE SAME
AND PRODUCTS CONTAINING THE SAME
APPEAL BRIEF

MSAF
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Dear Sir:
Appellants appeal the Examiner's decision rejecting claims 1-5,8-10, and 12-21, as set
f011h in the Final Office Action of February 14,2011.
I. REAL PARTY IN INTEREST
The real party in interest is assignee Bayer MaterialScience AG. Bayer Matel'ialScience
AG acquired the entire rights in this application by assignment from the inventors, which was
recorded on February 9, 2009 at ReellFrame 022236/0059.
II. RELA TED APPEALS AND INTERFERENCES
There are no other prior or pending appeals, interferences, or judicial proceedings known
to Appellants which may be related to, directly affect, be directly affected by, or have a bearing
on the Board's decision in this appeal.
1­
III. STATUS OF CLAIMS
Claims 1-5,8-10, and 12-21 are presently pending and stand rejected. The claims on
appeal are claims 1-5, 8-10, and 12-21, which are reproduced in APPENDIX A.
IV. STATUS OF AMENDMENTS
No amendments were made after the Final Office Action dated February 14, 2011.
V. SUMMARY OF CLAIMED SUBJECT MATTER
Of the claims on appeal, claims 1 and 21 are independent. Claim 1 recites a composition
consisting essentially of:
a polycarbonate; (specification at page 3, lines 10-11)
0.01 to < 0,3 wt.% of a polyether polyol having a molecular weight of 1100 to
6000; (specification at page 3, line 10-11) and
0.01 to 0.8 wt.% of a salt of: (i) a metal selected from the group consisting of
alkali metals, alkaline ea11h metals and mixtures thereof, and (ii) a compound
selected from the group consisting of sulfonic acids, and mixtures thereof
(specification at page 3, lines 22-25); wherein the recited percentages by weight
are based on the total composition.
Claim 21 recites a composition consisting of:
a polycarbonate; (specification at page 3, lines 10-11)
0.01 to < 0.3 wt.% ofa polyether polyol having a molecular weight of 1100 to
6000; (specification at page 3, line 10-11)
0.01 to 0.8 wt.% ofa salt of: (i) a metal selected from the group consisting of
alkali metals, alkaline earth metals and mixtures thereof, and (ii) a compound
selected from the group consisting of sulfonic acids, and mixtures thereof;
(specification at page 3, lines 22-25)
-2­
and one or more additives selected from the group consisting of fillers, UV
stabilizers, heat stabilizers, mold-release agents, flow improvers, antistatics and
pigments; wherein the recited percentages by weight are based on the total
composition. (specification at page 20, lines 21-26)
VI. GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
The grounds ofrejection for review on appeal are the rejection of: (1) claims 1-5,8-10
and 12-20 under 35 U.S.C. §103(a), as being unpatentable over U.S. Patent No. 6,166,116 to
Sleeckx (hereinafter "Sleeckx"), in view ofU.S. Patent Application Publication No.
200610002814 to Chatterjee (hereinafter "Chatterjee"); and (2) claim 21 under 35 U.S.C.
§ 1 03(a), as being unpatentable over Sleeckx, in view of Chatterjee as evidence by Hinwood
(Hinwood is a non patent literature document provided by the Examiner in the Final Office
Action). Sleeckx, Chatterjee, and Hinwood are attached hereto as Exhibits A-C respectively.
VII. ARGUMENT
1. Claims 1-5,8-10 and 12-20 are not rendered obvious by Sleeckx in
view of Cbatterjee.
In claim I, Appellants employ the transitional phrase "consisting essentially of' to limit
the claim to the recited components and those which would not affect the basic and novel
characteristics ofthe invention. The Examiner indicates that Applicants' claims employing the
transitional phrase "consisting essentially of' will be interpreted as equivalent to "comprising."
(See, the Office Action, p. 2). The Examiner takes the position that "absent a clear indication in
the specification or claims of what the basic and novel characteristics are" the transitional
phrases are to be construed equivalently for the purposes of searching and applying prior mi.
(See, id at p. 2, citing M.P.E.P. §2111.03). Appellants disagree with the Examiner's application
of the law conceming transitional phrases and, thus, the resulting conclusion of obviousness.
Section 2111.03 of the M.P.E.P., in citing PPG Industries Inc. v. Guardian Industries
Corp., 48 USPQ.2d 1351 (Fed. Cir. 1998), does indicate that, "[f]or the purposes of searching for
and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification
or claims of what the basic and novel characteristics actually are, 'consisting essentially of will
be construed as equivalent to 'comprising'." (See, M.P.E.P. §211 1.03). However, Appellants
-3­
note that in PPG, the Federal Circuit was considering an issued patent wherein there was nothing
in the prosecution history indicating what was excluded by the transitional phrase or what the
basic and novel characteristics were. Accordingly, there was nothing to resolt to for
interpretation other than the Specification of the patent at issue. Nonetheless, before resorting to
the Specification, the Federal Circuit specifically stated, "[i]n Water Technologies Corp. v.
Caleo. Ltd, 7 USPQ.2d 1097 (Fed. Cir. 1988), for example, this court looked to tlte prosecutiol1
Itistory oja patent to determine whether an unlisted ingredient was excluded from the scope of a
'consisting essentially of' claim." (See, PPG Industries Inc. v. Guardian Industries Corp., 48
USPQ.2d 1351, l355 (Fed. Cir. 1998) (emphasis added».
Appellants further recognize that "[i]n assessing a broadest reasonable claim construction
wherein a potentially exclusionary "consisting essentially of' transitional phrase is put in the
claim by Appellant, it is appropriate that Appellant bears the bW'den of: (1) showing the basic
and novel characteristics of their claimed invention, and (2) establishing how those
characteristics would be materially changed by any allegedly excluded component of an applied
reference. See In re DeLajarte, 337 F.2d 870, 873-74 (CCPA 1964); Ex parte Hoffman, 12
USPQ2d 1061, 1063-64 (BPAI 1989). Put another way, Appellants burden is to show that those
characteristics are "reasonably expected to be materially affected by, any component or step of
an applied reference that is argued to be excluded by a "consisting essentially of' transitional
phrase used in the claims. See In re De Lajarte, 337 F.2d 870,873-74 (CCPA 1964); Exparfe
Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989) (emphasis added),
Appellants submit that the basic and novel characteristics of the invention which are 110t
to be materially affected by an additional, unrecited component, are the combined transparency
and flame resistance of the claimed compositions. As paragraph [0007] of the cutTent
published application states, "[d]espite the many various prior attempts, there continues to be
significant room for improved flame-resistant compositions, in particular for use in thin-walled
products. This is particularly true of transparent compositions or compositions for transparent
products. Various embodiments of the present invention provide transparent compositions which
exhibit markedly improved flame resistance at wall thicknesses of less than or equal to 3 111m."
Based on the foregoing, it is clear that by use of the language "consisting essentially of' in claim
1, Appellants are excluding those components which are reasonably expected to materially affect
the combined transparency and flame resistance.
-'1­
Sleeckx unequivocally mandates the presence of a free disulfonimide so as to improve
color stability when subjected to ionizing radiation, such as gamma radiation and x-rays.
Sleeckx, col. 5, 11. 36-41. In fact, the incorporation of the free disulfonimide is Sleeckx's entire
purpose. The Final Office Action takes the position that the disulfonimide taught in Sleeckx is a
UV stabilizer and would not affect the basic and novel characteristics of the invention. As
supp0l1 for the Examiner's contention, the Examiner points to the abstract and paragraph [0006]
of the published application as disclosing Appellants specifically envisioned the possibility of
adding this compound. Appellants disagree with the Examiner's reading of the present
specification and with the conclusion that the free disulfonimide would not affect the basic and
novel characteristics of the invention.
The abstract and paragraph [0006] of the present application provides that "[t]he present
invention relates to compositions comprising polycarbonate as well as a combination of pol yo I
and alkali or alkaline earth salt of an aliphatic or aromatic sulfonic acid, sulfonamide or
sulfonimide in specific amounts." The recitation of "sulfonimide" here refers to a class of
flameproofing agents and does not include the free di-sulfonimide stabilizer of formula (1)
taught by Sleeckx. For example, paragraph [0049] states "[t]here are used as flameproofing
agents alkali or alkaline earth salts of aliphatic or aromatic sulfonic acid, sulfonamide and
sulfonimide derivatives." Appellants do not state that the di-sulfonimide, as exemplified by the
formula taught by Sleeckx, would 01' could be a flameproofing agent. As such, the present
Application does not specifically allow for the inclusion of the di-sulfonimide as asserted by the
Final Office Action.
Moreover, Appellants submit that it is reasonably believed that the free di-sulfonimides
of Sleeckx materially affect the combined transparency and flame resistance of the claimed
compositions. For example, the present application specifically dictates that the selection of the
flameproofing agent(s) must not adversely affect the transparency of the polycarbonate. See
[0082]. Applicants submit, without being limited by theory, that it is reasonably expected that
the free di-sulfonimide of Sleeckx, when added in addition to the current elements, would
negatively impact the transparency of the article. The Examples ofSleeckx are pa11icularly
instructive. For example, comparing sample B with sample 1, the only difference is the addition
of the di-sulfonimides, and the Yo rating goes from 1.54 to 2.55. Since the only difference was
the presence of the di-sulfonimides, it can be reasoned that the use of the disulfonimides resulted
- $­
in a deterioration of the transparency. As such, it is reasonably expected that when such di­
sulfonimides are added to the currently claimed composition, the basic and novel characteristic
of transparency would reasonably be expected to be negatively impacted.
For at least these reasons, Appellants respectfully request reversal of the rejection of
independent claim 1. Claims 2-5, 8-10 and 12-20 all depend either directly or indirectly from
claim 1 and are also not rendered obvious for at least the reasons given with respect to claim 1.
2. Claim 21 is not rendered obvious by Sleec1a. in view of Chaterjee as
evidenced by Hinwood.
In claim 21, the transitional phrase "consisting of' is employed, thereby restricting the
components to those identified in the claim. Specifically, claim 21 recites, in addition to the
components mentioned in claim 1, "one or more additives selected from the group consisting of
fillers, UV stabilizers, heat stabilizers, mold-release agents, flow improvers, anti statics and
pigments." Appellants submit that the disulfidimes disclosed in Sleeckx do not fall in any of
these categories.
The Final Office Action asserts that the free disulfonimide taught in Sleeckx is a UV
stabilizer. Essentially, although Sleeckx does not classify the free disulfonimide as a UV
stabilizer, the Final Office Action asserts that Hinwood is evidence that ionizing radiation, as
used in Sleeckx, is UV radiation. Appellants disagree with the Examiner's interpretation of
Sleeckx and the conclusion that one ofordinary skill in the art would recognize the fi..ee
disulfonimide as a UV stabilizer.
As explained in Sleeckx, "[e]xamples of the ionizing radiation are alpha-rays, a heavy
electron beam, a proton beam, beta-rays, a neutron beam, gamma-rays, and X-rays." Sleeckx,
col. 9, II. 6-10. The definition of ionizing radiation in Sleeckx does not include UV rays. In fact.
the entire purpose of Sleeckx is to find a material that will improve discoloration that occurs in
medical devices when these medical devices are contacted by these special types of ionizing
radiation. See Sleeckx, col. 8,11. 11-29. As such, Hinwood does not evidence that "ionizing
radiation" , as used by Sleeckx, includes UV radiation.
Moreover. even if ionizing radiation is construed as including UV radiation, Sleeckx does
not show, in any way, that the free disulfonimide would reduce yellowing when exposed to UV
radiation. Specifically, the examples only show an improved color stability when radiated with
"gamma radiation." Sleeckx, col. 10, line 38. There is no other evidence that the disulfonimide
would be affective when exposed to UV radiation. As such, Appellants completely disagree that
the free di-sulfonimides can be classified as a UV stabilizer as asserted by the Final Office
Action.
For at least these reasons, Appellants submit that the free disulfonimide of Sleeckx falls
outside of the "consisting of' language used in claim 21. As such, reversal of the rejection is
respectfully requested.
VIII. CLAIMS
A copy of the claims involved in the present appeal is attached hereto as APPENDIX A.
IX. EVIDENCE
No evidence submitted pursuant to 37 C.F.R. §§ 1.130, 1.131, or 1.132 is being relied
upon for this appeal. Accordingly, no such evidence is provided in APPENDIX B.
X. RELA TED PROCEEDINGS
As stated in section II, supra, no related proceedings have been or are now pending.
Accordingly, no related decisions are provided in APPENDIX C.
XI. CONCLUSION
For these reasons, reversal of the obviousness rejections under 35 U.S.C. § 103(a) of
claims 1-5, 8-10, and 12-21 is strongly urged.
Payment in the amount of $1210 to cover the fee required by 37 C.F.R. §§ 41.20(b)(2) for
this Appeal Brief and the fee required for a two month extension of time is submitted
conculTently herewith. Appellants believe no additional fees are due. However, the Director is
hereby authorized to charge any deficiency in the fees filed, asserted to be filed or which should
have been filed herewith (01' with any paper hereafter filed in this application by this film) to our
Deposit Account No. 03-2775, under Order No. 15778-00181-US, from which the undersigned is
authorized to draw.
-1­
Dated: November 8, 2011 Respectfully submitted,
Electronic signature: IMatthew W. Hammersley/
Matthew W. Hammersley
Registration No.: 61,006
CONNOLLY BOVE LODGE & HUTZ LLP
1007 N0I1h Orange Street
P. O. Box 2207

Wilmington, Delaware 19899-2207

(302) 658-9141

(302) 658-5614 (Fax)
Attomey for Appellants
-8­
APPENDIX A - CLAIMS APPENDIX
Claims Involved in the Appeal of Application Serial No. 12/262,346
1. (Previously presented) A composition consisting essentially of: a
polycarbonate; 0.01 to < 0.3 wt.% of a polyether polyol having a molecular weight of 1100 to
6000; and 0.01 to 0.8 wt.% of a salt of: (i) a metal selected from the group consisting of alkali
metals, alkaline earth metals and mixtures thereof, and (ii) a compound selected from the group
consisting of sulfonic acids, and mixtures thereof; wherein the recited percentages by weight are
based on the total composition.
2. (Original) The composition according to claim 1, wherein the polyol is
present in an amount of 0.01 to 0.25 wt.%.
3. (Original) The composition according to claim 1, wherein the polyol is
present in an amount of 0.01 to 0.12 wt.%.
4. (Original) The composition according to claim 1, wherein the polyol is
present in an amount of0.03 to 0.11 wt. %; and wherein the salt is present in an amount of 0.03 to
0.15 wt.%.
5. (Original) The composition according to claim 1, wherein the polyol is
present in an amount of 0.03 to 0.11 wt.%; and wherein the salt is present in an amount of 0.03 to
0.065 wt.%.
6-7. (Canceled)
8. (Previously presented) The composition according to claim 1, wherein the
compound selected from the group consisting of sulfonic acids, and mixtures thereof is aliphatic.
9. (Original) The composition according to claim 1, wherein the salt
comprises one or more selected from the group consisting of a nona-fluoro-l-butanesulfonate, a
-9­
diphenyl-sulfonic acid sulfonate and mixtures thereof, of an alkali metal selected from the group
consisting of sodium, potassium and mixtures thereof.
10. (Original) The composition according to claim 1, wherein the salt
comprises sodium or potassium nona-fluoro-l-butanesulfonate.
11. (Canceled)
12. (Previously presented) The composition according to claim 1, wherein the
polyether polyol comprises a poly-C2_4-alkylene polyol.
13. (Original) The composition according to claim 1, wherein the polyol
comprises polytetrahydrofuran.
14. (Original) The composition according to claim 1, further comprising an
anti dripping agent.
1S. (Original) The composition according to claim 14, wherein the
antidripping agent comprises a polytetrafluoroethylene.
16. (Original) A product comprising a composition according to claim 1.
17. (Original) An injection-molded, flame-resistant product comprising a
composition according to claim 1.
18. (Previously presented) The composition according to clain1 1, further
comprising one or more additives selected from the group consisting of fillers, UV stabilizers,
heat stabilizers, mold-release agents, flow improvers, anti statics and pigments.
19. (Previously Presented) The composition according to claim 1, wherein the
composition has a UL94 rating ofVO.
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20. (Previously Presented) The composition according to claim 1, wherein the
composition is transparent and has a UL94 rating ofVO.
21. (Previously Presented) A composition consisting of: a polycarbonate;
0.01 to < 0.3 wt.% ofa polyether polyol having a molecular weight of 1100 to 6000; 0.01 to 0.8
wt.% of a salt of: (i) a metal selected from the group consisting of alkali metals, alkaline earth
metals and mixtures thereof, and (ii) a compound selected from the group consisting of sulfonic
acids, and mixtw'es thereof; and one or more additives selected from the group consisting of
fillers, UV stabilizers, heat stabilizers, mold~release agents, flow improvers, antistatics and
pigments; wherein the recited percentages by weight are based on the total composition.
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