Ex Parte LiuDownload PDFPatent Trial and Appeal BoardJul 27, 201613797333 (P.T.A.B. Jul. 27, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/797,333 03/12/2013 Jing LIU 1201301R 1164 35227 7590 07/28/2016 POLYONE CORPORATION LAW DEPARTMENT 33587 WALKER ROAD AVON LAKE, OH 44012 EXAMINER GULAKOWSKI, RANDY P ART UNIT PAPER NUMBER 1766 MAIL DATE DELIVERY MODE 07/28/2016 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 JING LIU ____________________ Appeal 2015-001717 Application 13/797,333 Technology Center 1700 ____________________ Before JAMES C. HOUSEL, N. WHITNEY WILSON and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 4–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In our decision below, we refer to the Final Rejection appealed from mailed April 7, 2014 (Final Act.), the Appeal Brief filed September 2, 2014 (Appeal Br.), and the Examiner’s Answer mailed September 18, 2014 (Ans.). 2 Appellant identifies the real party in interest as PolyOne Corporation. Appeal Br. 3. Appeal 2015-001717 Application 13/797,333 2 STATEMENT OF CASE The claims are directed to “compounds including polylactic acid and having increased heat resistance to improve structural integrity during use of the compound and flame retardance.” Spec. 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A heat resistant, flame retardant, polylactic acid compound, comprising: (a) polylactic acid; (b) polycarbonate; (c) talc in an amount from about 1 to about 8 weight percent of the compound; and (d) aryl phosphate, wherein the compound has a moisture content of less than 0.2%; wherein the aryl phosphate is selected from the group consisting of (i) resorcinol bis (diphenyl phosphate) and (ii) an oligomeric, free flowing solid aryl phosphate ester flame retardant, having a phosphorus content of 10.7%, a specific gravity of 1.3, a melting range of 101-108 °C, and a triphenyl phosphate content of less than about 1 percent; wherein the compound has a V-0 rating when tested according to ASTM Test No. D-635 at 1.6 mm thickness, and wherein the compound has a heat distortion temperature of greater than 65 degrees C when tested according to ASTM D- 648 at 66 PSI. Claims Appendix at Appeal Br. 10. Appeal 2015-001717 Application 13/797,333 3 REJECTION Claims 1 and 4–16 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Zhao3, Matsuno4, Hironaka5 or Ishii6, in view of Hale.7 Final Act. 2. Appellant seeks our review of the Examiner’s rejection above. Appellant does not argue any claim separately, but rather, argues the claims as a group. Appeal Br. 8–9. We therefore discuss claim 1, the sole independent claim, to resolve the issues on appeal. OPINION The Examiner rejects claim 1 (among others) as unpatentable over Zhao, Matsuno, Hironaka or Ishii.8 Final Act. 2. The Examiner finds that, relevant to claim 1, “[a]ll the references disclose polycarbonate, polylactic acid, talc and RDP.” Final Act. 2; Ans. 2. The Examiner also finds that it would have been obvious to [o]ne having ordinary skill in the art, at the time the invention was made, to select oligomeric phosphates as flame-retardants from the list of flame-retardants 3 Zhao et al., US 2013/0317149 A1, published November 28, 2013 (hereinafter “Zhao”). 4 Matsuno et al., US 2012/0289625 A1, published November 15, 2012 (hereinafter “Matsuno”). 5 Hironaka et al., US 2010/0227963 A1, published September 9, 2010 (hereinafter “Hironaka”). 6 Ishii et al., US 2008/0262151 A1, published October 23, 2008 (hereinafter “Ishii”). 7 Hale et al., US 2005/0137356 A1, published June 23, 2005 (hereinafter “Hale”). 8 As detailed by the Examiner, the rejection also includes Hale. But, the Examiner explains that “Hale et al. is cited only because of the limitations in claim 15 which is a dependent claim. It is needed for the rejection of this one claim only.” Ans. 3. Appeal 2015-001717 Application 13/797,333 4 of the primary references, because they are the most efficient with the least amount of side effects. Selecting RDP from the available oligomeric phosphates is a selection from a short list of equivalents which is also obvious. Ans. 2. And, according to the Examiner, the heat distortion and flame retardancy properties are necessarily possessed by the prior art product as it is substantially the same as the product of claim 1. Id. at 4. Appellant argues first that a person of ordinary skill in the art would have no expectation of success to achieve the claimed heat durability and flame retardancy based on the recited combination. Appeal Br. 8. Specifically, Appellant urges that [a]ll the combinations possible from the prior art are far too numerous for PHOSITA to try with any expectation of success for attaining a PLA compound achieving Applicant’s claim limitations of (i) a high heat durability represented by a heat distortion temperature of greater than 65 degrees C when tested according to ASTM D-648 at 66 PSI and (ii) a flame retardancy of at least a V-0 rating when tested according to ASTM Test No. D-635 at 1.6 mm thickness. Id. The Examiner explained that it was obvious to try the finite number of flame retardants listed. Final Act. 2–3. And, that “[a]ll the flame-retardants listed in the cited references are well known and their number does not even approach infinity.” Id. at 3. We do not find Appellant’s argument persuasive of reversible error. Our reviewing court guides that where “the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option,” a solution that is obvious to try may indeed be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 Appeal 2015-001717 Application 13/797,333 5 (Fed. Cir. 2008), citing KSR Int’ Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007); see also Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)(The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.”). Here, because there are only a finite set of options having predictable results and the Examiner has identified each of the claimed elements in the cited references supported by an adequate rationale for combining those teachings, we agree with the Examiner (Final Act. 2–3; Ans. 3) and find that any required modification of the references would have been “obvious to try” at the time of Appellant’s invention. Moreover, Appellant has provided no evidence that modifying the teachings in the cited references would have been “outside the technical grasp” of the ordinary artisan, nor has Appellant presented evidence that the result would not have been predictable, even in light of the number of fire retardants disclosed. KSR, 550 U.S. at 420; see also Merck & Co., 874 F.2d at 807 (affirming obviousness of a composition selected from among more than 1200 compositions). As a result, we are not persuaded the Examiner reversibly erred in concluding that the claimed PLA compound would have been obvious to an artisan possessing an ordinary skill at the time of invention. Next, Appellant argues that the prior art fails to teach the flame retardancy and heat durability of Appellant’s invention. And, Appellant contends that “[n]owhere does the prior art give any indication of which parameters are critical to achieving a flame retardancy of at least a V-0 rating at 1.6mm thickness; nor does the prior art give any direction as to which of the many possible choices is likely to be successful.” Appeal Br. 9. Appellant also urges that “the lack of successful examples with Applicant’s Appeal 2015-001717 Application 13/797,333 6 [PLA compound] . . . and the significant number of examples that fail to meet Applicant’s claim limitations for heat durability and flame retardancy” indicate the unpredictability of a successful outcome. Appeal Br. 8–9. The Examiner finds that “[a]chieving the required V-0 rating can be accomplished by a PHOSITA by simple experimentation and optimization.” Final Act. 3. The Examiner further finds that [i]n view of the disclosures of the primary references one would expect RDP perform as efficiently as resorcinol bis (dixylenyl phosphate) or BPADP in the blend of polylactic acid, polycarbonate, talc and an impact modifier. Substituting RDP for RXP in the Illustrative Examples of Matsuno et al. or Hironaka et al., which means substituting phenyl groups for xylyl groups, would yield appellant's compositions with no change in properties. Ans. 4. And, the Examiner explains that the fact that Appellant’s composition containing RDP is not exemplified is of no consequence because “[s]electing RDP from a list of equivalents . . . is entirely proper in the context of an obviousness rejection.” Id. The Examiner also finds that “[a]ll properties are inherent in the composition” as the prior art products are substantially the same as those claimed. Final Act. 3; Ans. 4. We agree with the Examiner. It has long been the law that where the claimed products and prior art products are identical or substantially identical, the Examiner may assume that the prior art product necessarily possesses the same properties as the claimed product. In re Best, 562 F.2d 1252, 1256 (CCPA 1977). And, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977). Appeal 2015-001717 Application 13/797,333 7 Here, Appellant does not dispute the Examiner’s finding that “[a]ll properties are inherent in the composition” because the “claimed product is the same or substantially the same as the product described in the prior art.” Final Act. 3; Ans. 4. We therefore adopt this finding as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“Since appellant has not shown this finding to be clearly erroneous, we accept it as fact.”). Therefore, on this record, we are not persuaded of reversible error by the Examiner. CONCLUSION The Examiner did not err in rejecting claims 1 and 4–16 under 35 U.S.C. §103(a) as being unpatentable over Zhao, Matsuno, Hironaka or Ishii, in view of Hale. DECISION For the above reasons, the Examiner’s rejection of claims 1 and 4–16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009). AFFIRMED Copy with citationCopy as parenthetical citation