Ex Parte Meyer et al

Patent Trial and Appeal Board

Dec 20, 2018

14654293 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/654,293 06/19/2015 Alexander Meyer
157 7590 12/25/2018
Covestro LLC
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BMS121104 3744
EXAMINER
I Covestro Circle KHAN, TAHSEEN
PITTSBURGH, PA 15205
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
12/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER MEYER and JOERG REICHENAUER
Appeal 2018-000551
Application 14/654,293
Technology Center 1700
Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134 the Final Rejection of
claims 16-25 and 27-30. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision we refer to the Specification filed June 19, 2015 ("Spec."),
the Final Office Action dated October 14, 2016 ("Final Act."), the Appeal
Brief filed May 1, 2017 ("Appeal Br."), the Examiner's Answer dated
August 23, 2017 ("Ans."), and the Reply Brief filed October 23, 2017
("Reply Br.").
2 Covestro Deutschland AG is the Applicant/ Appellant and also identified as
the real party in interest. Appeal Br. 1.
Appeal 2018-000551
Application 14/654,293
STATEMENT OF THE CASE
Appellant's invention is directed to colored molding compositions
based on polycarbonate, and, specifically, organic colorants having high
color stability against weathering using specific stabilizers based on
phosphate. Spec. 1: 1-3. Claim 16 is illustrative:
16. A polymer composition having improved color stability
and comprising:
a) thermoplastic polymer in a proportion which together with
the other components adds up to 100% by weight,
b) at least one colorant based on anthraquinone and having at
least one free hydroxyl function in a proportion of from
0.000001 % by weight to 1. 000000% by weight,
c) at least one stabilizer based on phosphate and having the
following structure (9)
(9)
where R21 to R23 are H or identical or different linear, branched
or cyclic alkyl radicals,
where c) is present in a proportion of from 0.00005 to
0.05000% by weight.
Appeal Br. 8 (Claims Appendix).
The following rejection is on appeal: claims 16-25 and 27-30 under
pre-AIA 35 U.S.C. § I03(a) as unpatentable over Meyer3 in view ofHeuer. 4
Final Act. 3; Appeal Br. 2; Ans. 3.
3 US 2012/0157587 Al, pub. June 21, 2012.
4 US 2011/0151262 Al, pub. June 23, 2011.
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Application 14/654,293
ISSUES
The dispositive issues on appeal are whether the Examiner erred in
determining that ( 1) Meyer's composition as modified by Heuer discloses
the claimed composition and (2) Appellant's comparative data does not
distinguish the compound disclosed by Meyer.
ANALYSIS
The Examiner rejects claims 16-25 and 27-30 as obvious over the
combination of Meyer in view of Heuer for the reasons stated on pages 3--4
of the Final Office Action.
Appellant argues the claims together. Appeal Br. 2---6. Therefore, we
confine our discussion to claim 16, which we select as representative.
Claims 17-25 and 27-30 stand or fall with claim 16. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Addressing the first issue, Appellant argues that the Examiner's
reason for combining the references does not lead a person having ordinary
skill in the art to a composition have both component b) and component c)
as claimed. Appeal Br. 4. Appellant contends that the combination suggests
77 possible combinations of colorants and stabilizers with Meyer disclosing
eleven classes of colorants, two of which are based on anthraquinone and
have at least one free hydroxyl function, and Heuer discloses seven
stabilizers, one of which is a phosphate-based stabilizer of the claimed
structure. Id. at 4--5 ( citing Meyer ,r,r 69-81; Heuer ,r 106).
Appellant additionally argues that even if a skilled artisan were to
select an anthraquinone-based colorant with at least one free hydroxyl
function from Meyer, comparative data in the Specification shows the
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Application 14/654,293
selection of the claimed stabilizer results in Delta E values ( color change)
that are significantly lower (1.69 and 1.58) in comparison to compositions
having different stabilizers. Id. at 5---6 (citing Spec. 23-27, Tables 2-7).
According to Appellant, the significant difference in color shift from using
one phosphate stabilizer of Heuer to the claimed phosphate stabilizer was
not expected in either Meyer or Heuer. Id. at 6.
The Examiner responds that the number of stabilizers and colorants
used are a finite amount, and that a skilled artisan would have been expected
to optimize the combination. Ans. 5. The Examiner also finds that Meyer
explicitly states that its structures 1 a and 1 b, which correspond to
Appellant's formulas 4a and 4b, are "'particularly preferred' over the rest of
the colorants," and, thus, the 77 combinations are not equally suggested by
the prior art. Id. Regarding the stabilizers, the Examiner finds that Heuer
teaches the claimed stabilizers as well as the stabilizers used in Meyer,
showing that such stabilizers are known alternative equivalents of one
another. Id.
With respect to the second issue, the Examiner finds Appellant's
showing of unexpected results is not commensurate in scope with
independent claim 16 because the Specification exemplifies the use of
triisooctyl phosphate as the stabilizer whereas structure (9) in the claim is
much wider in scope. Id. at 5---6. The Examiner also finds that Meyer
teaches Delta E values (color change) that overlap with Appellant's Delta E
values obtained in their inventive examples. Id. at 6 ( citing Meyer ,r 181,
Tables 2, 4).
In the Reply Brief, Appellant contends that the Examiner has not
shown a reason to combine Heuer's stabilizer with Meyer's colorant because
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Application 14/654,293
Heuer teaches the improved thermal properties come from the
copolycarbonates, not any stabilizer. Reply Br. 2 ( citing Heuer ,r 101, claim
1 ). Appellant also contends that Heuer' s disclosure of a list of suitable heat
stabilizers is merely for Heuer' s compositions and there is no showing that a
skilled artisan would make a substitution of one heat stabilizer disclosed in
Meyer for another heat stabilizer disclosed in Heuer. Id. at 2-3 ( citing
Heuer ,r 106). Appellant also contends that Meyer discloses colorants 4, 7,
and 8b as "particularly preferred" in addition to colorants 1 a and 1 b without
explanation when such colorants are "particularly preferred" and when they
are not. Id. at 3--4 ( citing Meyer ,r 164).
Regarding unexpected results compared to Meyer, Appellant contends
that there are 8 to 38 times more colorant in compositions of Appellant's
compositions than those of Meyer, therefore a higher loading of colorant
would be expected to result in a higher color shift. Id. at 4 ( citing Meyer
,r 363, Spec. 23, Table 2). Appellant asserts that "[i]t is only by using the
claimed colorants, in combination with the claimed stabilizer, that one can
achieve a much lower Delta E value - one suggestive of a composition
having a much lower amount of colorant, such as the compositions of
Meyer." Id.
Appellant's arguments with respect to the first issue are not persuasive
of error because Appellant does not dispute that Meyer discloses preferred
colorants from among the list of colorants disclosed, thereby providing
guidance for the selection of colorants and further limiting the number of
combinations. Appellant also does not dispute the Examiner's finding (Ans.
5) that Heuer discloses in addition to the claimed heat stabilizers, the same
stabilizers disclosed in Meyer suggesting that they are interchangeable
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Application 14/654,293
equivalents. An "[ e ]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious." In re Fout,
675 F.2d 297,301 (CCPA 1982); see also In re Mayne, 104 F.3d 1339, 1340
(Fed. Cir. 1997) (noting that the substitution of one known element for a
known equivalent is prima facie obvious). "[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-
51 (1966)).
Regarding the second issue related to Appellant's showing of
unexpected results, we are not persuaded by Appellant's arguments that the
Examiner reversibly erred. The burden of establishing that unexpected
results support a conclusion of nonobviousness rests with Appellant. In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art." In re Baxter Travenol
Labs., 952 F.2d 388,392 (Fed. Cir. 1991) (citation omitted). "[I]t is not
enough to show that results are obtained which differ from those obtained in
the prior art: that difference must be shown to be an unexpected difference."
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Accordingly,
Appellant's comparative data is entitled to little or no weight.
We find Appellant's comparative data insufficient to overcome the
Examiner's obviousness rejection for three reasons. First, Appellant's
evidence is not commensurate in scope with the breadth of stabilizers
claimed in claim 16. Second, Appellant does not explain why the single
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Application 14/654,293
stabilizer used in its examples is representative of the scope of the claim.
Third, Appellant's assertion (Reply Br. 4) that Meyer's examples constitute
more colorant than Appellant's examples (0.000260 wt% versus 0.0100000
wt % ) does not establish that the claimed composition produces an
unexpected Delta E value. Claim 16 recites a colorant "in a proportion of
from 0.000001 % by weight to 1.0000000% by weight." Thus, Meyer's
proportion of colorant in its composition is encompassed by claim 16. In
sum, Appellant's arguments do not establish unexpected results compared
with Meyer as the closest prior art.
Additionally, Appellant's comparative data evidence is insufficient to
overcome obviousness of claim 16 because it is limited to two comparative
examples which Appellant has not shown to be commensurate in scope with
the subject matter of the claims. The Examiner's finding that the
Specification uses only triisooctyl phosphate in the examples as the
stabilizer of the invention is supported by the record. Spec. 22. See In re
Peterson, 315 F.3d 1325, 1329--31 (Fed. Cir. 2003). "Establishing that one
( or a small number of) species gives unexpected results is inadequate proof,
for 'it is the view of [the CCP A] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support."' See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (quoting In re Tiffin, 448 F.2d 791,792 (CCPA 1971)).
For the foregoing reasons, and after reviewing the positions and
evidence presented by both the Examiner and Appellant including
Appellant's evidence of unexpected results, we sustain the rejection of claim
16 under 35 U.S.C. § 103(a) over the combination of Meyer and Heuer.
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CONCLUSION
In sum, we affirm the Examiner's rejection of claims 16-25 and 27-
30 under pre-AIA 35 U.S.C. § 103.
DECISION
The Examiner's decision rejecting claims 16-25 and 27-30 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.
AFFIRMED
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