Ex Parte Sharavanan et al

Patent Trial and Appeal Board

Mar 10, 2016

13148727 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/148,727 08/10/2011
123223 7590 03/14/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Karthikeyan Sharavanan
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.
074048-0091-US-287521 4349
EXAMINER
ADMASU, ATNAF S
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BASF SE
Appeal2014-003775
Application 13/148,727
Technology Center 1700
Before FREDE. McKEL VEY, CHUNG K. PAK, and MARK NAGUMO,
Administrative Patent Judges.
McKEL VEY, Administrative Patent Judge.
DECISION ON APPEAL
37 C.F.R. § 41.50
I. Statement of the Case
1 BASF SE ("Appellant"), the real party in interest (Appeal Brief ("Br."),
2 page 2), seeks review under 35 U.S.C. § 134(a) of a final rejection dated
3 19 February 2013.
4 The named inventors are: Karthikeyan Sharavanan and Jurgen Demeter.
5 We have jurisdiction under 35 U.S.C. § 134(a).
Appeal2014-003775
Application 13/148,727
1 The application on appeal was filed in the US PTO on 10 August 2011. 1
2 Appellant claims priority based on International Application
3 PCT/EPl0/51456, filed 8 February 2010, that entered the national stage on
4 10 August 2011 as to the United States. 35 U.S.C. § 371.
5 Appellant also claims priority of European Patent Application 09152559.2,
6 filed 11 February 2009.
7 The application on appeal has been published as U.S. Patent Application
8 Publication 2011/0313086 Al (22 December 2011).
9 The Examiner relies on the following evidence.
Christidis et al. U.S. Patent 4,074,054 14 Feb. 1978
"Christi dis"
Philippoz et al. U.S. Patent Application Publication 16 June 2005
"Philippoz" 2005/0131124 Al
10 We mention the following evidence:
Downloaded from the Internet
Magnesium oxide, 98%, extra on 18 Feb. 2016:
Fisher pure, powder, particle size: https://www.fishersci.com/shop/
Scientific 99% <150 µm (-100 mesh), products/magnesium-oxide-98-
ACROS Organics TM extra-pure-powder-particle-size-
99-150-m-l 00-mesh-acros-
organics-3/p-3 734873
1 Because the application on appeal was filed before the enactment of the Leahy-
Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011), we
apply the pre-AIA version of 35 U.S.C. §§ 102 and 103.
2
Appeal2014-003775
Application 13/148,727
1 Appellant does not contest the prior art status of the Examiner's evidence, all
2 of which is prior art under 35 U.S.C. § 102(b).
3 II. Claims on Appeal
4 Claims 10-29 are on appeal. Br., page 3:11; Answer, page 3. Claims 10
5 and 11 are the only independent claims.
6 III. Rejection
7 In the Answer, the Examiner has maintained a rejection of claims 10-29 as
8 being unpatentable under 35 U.S.C. § 103(a) over Philippoz and Christidis.
9 Answer, page 3; Final Rejection, page 3.
10 Argument "A" in the Appeal Brief addresses claims 10, 12-14, 16, and
11 22-24. Br., 9. Appellant does not argue the separate patentabilty of claims 12-14,
12 16, and 22-24 apart from claim 10. Accordingly, we decide the appeal as to those
13 claims on the basis of claim 10. 37 C.F.R. § 41.37(c)(l)(iv).
14 Argument "B" in the Appeal Brief addresses claims 11, 21and25. Br.,
15 page 15. Appellant does not argue the separate patentabilty of claims 21 and 25
16 apart from claim 11. Accordingly, we decide the appeal as to those claims on the
17 basis ofclaim 11. 37 C.F.R. § 41.37(c)(l)(iv).
18 Arguments "C" through "K" address the patentability of other claims.
19 Br., pages 15-24.
20 IV. Analysis
21 A. Argument "A"
22 1. Claim 10
23 The invention relates to a thermoplastic molding material comprising a
24 combination of polyoxymethylene and an imidazole, the combination is said to be
3
Appeal2014-003775
Application 13/148,727
1 stable when used in contact with diesel fuel. Specification, page 1 :26-30 and
2 page 2: 1-7.
3 The details of the invention can be understood from claim 10.
4 Claim 10, reproduced from the claims appendix (Br., page 25) reads:
5 A thermoplastic molding material comprising
6
7
8
9
10
11
12
13
14
15
16
17
18
19
A) 10 to 99.99% by weight of a polyoxymethylene homo- or
copolymer,
B) 0.01 to 5% by weight of an imidazole of the general
formula
1 ,1 ~ 1 , ~LL 1 • 1 1 • 1 1 , 1 1 r- 1 wnere me K, to K ~ ra01ca1s are eacn maepenaenuy aermea
as follows:
R 1 is an alkyl radical having 1 to 5 carbon atoms,
R2 to R4 are each independently hydrogen, an alkyl radical
having 1 to 5 carbon atoms,
C) 0 to 5% by weight of an alkaline earth metal oxide [e.g.,
magnesium oxide-Specification, page 19 Component CJ,
D) 0 to 80% by weight of further additives,
where the sum of the percentages by weight of components A) to
D) does not exceed 100%.
4
Appeal2014-003775
Application 13/148,727
1 Two compounds falling within the scope of element B) are
2 2-methylimidazole having the formula [R1 is methyl or C1]:
3 and 2-ethylimidazole having the formula [R 1 is ethyl or C2]:
4 Specification, page 18, Component B/2 and Component Bil respectively.
5 2. Examiner's Rationale
6 The Examiner rejected claim 10 based on Philippoz and Christidis.
7 Philippoz, like the invention on appeal, relates to high temperature
8 diesel-resistant molded parts (i-f 0002) comprising a combination of a
9 polyoxymethylene and magnesium hydroxide (i-f 0009). The diesel-resistant
10 molding composition may include a metal oxide, e.g., magnesium oxide
11 (page 2, i10020, col. 2:6). The diesel-resistant molding composition also
12 may further include thermal stabilizers (i-f 0021 :4).
13 Philippoz differs from the subject matter of claim 10 in that Philippoz
14 does not describe the use of the claimed imidazoles. Answer, page 4; Final
15 Rejection, page 3, last two lines.
5
Appeal2014-003775
Application 13/148,727
1 To overcome the difference, the Examiner turned to Christidis.
2 Answer, page 4; Final Rejection, page 4.
3 Christidis relates to a method of making imidazoles, including
4 imidazoles within the scope of those defined in element B of claim 10.
5 See col. 2:15-22 describing imidazoles having the formula:
HC-N
II U
·HC · C-R. 'N,.....
I
H
6 where R represents a hydrogen or an alkyl radical of 1 to 17 carbon atoms. The R
7 ofChristidis is equivalent to Appellant's R1 and the-H ofChristidis is equivalent
8 to Appellant's R2.
9 The 2-alkyl imidazoles made according to the process described by
10 Christidis are said to be useful as heat stabilizers for polymers. Col. 3 :67--col. 4: 1.
11 The Examiner held that it would have been obvious to use the Christidis
12 imidazoles as stabilizing agents for the Philippoz polyoxymethylene polymers
13 given the suggestion by Christidis that its imidazoles are useful for stabilizing
14 polymers. Answer, page 4, last paragraph to page 5, lines 1-8; Final Rejection,
15 page 4, last paragraph.
16 3. Appellant's Position
1 7 Appellant maintains that the principal focus of Christidis is a method for
18 making imidazoles. Br., page 12. Appellant further maintains that Philippoz
19 describes the use of "amidine compounds." Id. Appellant still further maintains
20 that nothing in the record establishes any equivalent between imidazoles and
6
Appeal2014-003775
Application 13/148,727
1 amidines. Id. Appellant's position overlooks the reason why the Examiner relied
2 on Christidis. The Examiner did not rely on any equivalent theory. Rather, the
3 Examiner held that one skilled in the art would have found it obvious to use the
4 Christidis imidazoles as stabilizers in the polyoxymethylene polymers of Philippoz
5 given the teaching of Christidis to use its imidazoles to stabilize polymers.
6 Appellant also argues that the Christidis suggestion to use its imidazoles in
7 polymers provides no basis for a suggestion to use the imidazoles in
8 polyoxymethylene polymers. Br., page 13. Appellant's position might have been
9 plausible had there been no teaching in the art that polyoxymethylene polymers are
10 in need of stabilization; however, the record is otherwise. Philippoz teaches a
11 desirability to stabilize polyoxymethylene polymers.
12 Appellant takes Christidis to task because it describes the use of imidazoles
13 where an R group equivalent to Appellant's R1 group of hydrogen or an alkyl
14 group having 1-17 carbon atoms, whereas Appellant's R1 group is limited to alkyl
15 groups having 1-5 carbon atoms. Br., page 14, first paragraph. According to
16 Christidis, all of its imidazoles are said to be useful as stabilizing agents.
17 Appellant has selected a subgenus of the Christidis genus, something one skilled in
18 the art should be free to do absent an unexpected result.
19 Appellant says his selected subgenus produces an unexpected result. Br.,
20 page 14, third and fourth paragraph. "The arguments [in an Appeal Brief] shall
21 explain why the examiner erred as to each ground of rejection." 37 C.F.R.
22 § 41.37(c)(l)(iv). Pointing to tables appearing on 22-25 of the Specification,
23 Appellant-without explaining why-asserts that only the claimed imidazoles
24 provide the needed resistance against diesel fuel. Br., page 14: 17-20. No analysis
7
Appeal2014-003775
Application 13/148,727
1 of the data on pages 22-25 is briefed or otherwise cogently discussed in the record.
2 We therefore ask: Why would one skilled in the art appreciate how the data
3 establishes unexpected results? We decline in the first instance to analyze data
4 without an explanation by an appellant as to the significance of data. We note that
5 the Examiner has not discussed the data-perhaps because Appellant did not
6 provide the necessary explanation in the Appeal Brief.
7 In any event, a cursory review of the data will immediately demonstrate that
8 the data is entitled to little, if any, weight. The "Inventive examples" are described
9 as being based on 0.5 Bil (R1 =ethyl) and 0.5 B/2 (R1 =methyl) whereas
10 "Comparative example" Example V4 is said to be based on 0.1 B/V4 (R1 = H):
Examp!e 1 : A} ->· 0.5 B/1 + 2 c
Exampie 2; A) + 05 B/2 -t· 2 C
v·1 A+ 0.8 B/IV
V2 A + 0.5 8!2V ->· 2C
V3 A+ 0.1 B/3\t +· 2.G
V4 ,r;,,. + 0. 1 B/4\l + 2C
V5 A ·t- 0.5 8i5V + 2C
11 See Specification, page 21. To the extent different results are shown in the tables
12 those results may be due to the difference in the R1 group (C 1 or C2 vis-a-vis H) or
13 the amount of "B" element in the composition (0.5 vis-a-vis 0.1 ).
8
Appeal2014-003775
Application 13/148,727
1 4. Decision on Claim 10
2 For the reasons given, the decision of the Examiner rejecting claims 10,
3 12-14, 16, and 22-24 is affirmed.
4 B. Argument "B"
5 1. Claim 11
6 Claim 11 requires from 0.01 to 5% by weight of an alkaline earth metal
7 oxide.
8 Appellant has not argued the separate patentability of claims 21 and 25 apart
9 from claim 11.
10 According to Appellant, Philippoz does not describe a use of an alkaline
11 earth metal oxide in an amount of from 0.01 to 5% by weight. Br., page 15.
12 Appellant apparently has overlooked Philippoz, i-f 0020, page 2, col. 2:7-9
13 ("More preferably, the metal oxide is magnesium oxide and comprises between 0.1
14 and 2.0% by weight of the composition.") and page 4, Table 3, Example 2,
15 describing a composition with 1.6% by weight of MgO.
16 Once one skilled in the art would have elected to use an alkaline earth metal
17 oxide, we entertain no doubt that one skilled in the art would have been able to
18 determine an appropriate amount-an amount that would accomplish the objective
19 of heat stability. Appellant's argument to the contrary conflicts with the
20 proposition that one skilled in the art is not an automaton. KSR Int 'l Co. v. Teleflex
21 Inc., 550 U.S. 398, 421 (2007). See also In re Peterson, 315 F.3d 1325, 1329-30
22 (Fed. Cir. 2003) ("Selecting a narrow range from within a somewhat broader range
23 disclosed in a prior art reference is no less obvious than identifying a range that
24 simply overlaps a disclosed range.")
9
Appeal2014-003775
Application 13/148,727
1 The decision of the Examiner rejecting claims 11, 21, and 25 is affirmed.
2 C. Arguments "C" through "J"
3 1. Limitations
4 The remaining claims are claims 15, 17-20, and 26-29.
5 These claims contain limitations narrowing the scope of elements defined in
6 claims 10 or 11. The limitations are identified in Table 1.
Table 1
Ri = R2-R4 = c < 10,000 C particle
Claim C1 or C2 H, C1, C is MgO ppm size dso
orC2 impurities 10-200 µm
15 x
17 x
18 x x
19 x x
20 x x x x
26 x x x
27 x x x x
-~~ -~ -~ -~ -~ x x x x
29 x x x x
7 2. R 1 = C 1 or C2
8 Claims 15, 20, 27, and 29 limit Appellant's R1 to methyl and ethyl.
9 Christidis describes moieties corresponding to Appellant's R1 as being
10 hydrogen (H) or an alkyl group having 1 to 17 carbon atoms. Appellant's carbon
11 atom range of 1-2 falls within the scope of the Christidis range consisting of
12 hydrogen and 1-17 carbons. One skilled in the art would have appreciated the fact
13 that the use of any R1 within the Christidis range would have been expected to act
14 as a heat stabilizer for polymers.
10
Appeal2014-003775
Application 13/148,727
1 To the extent that Appellant relies on its evidence of non-obviousness, as
2 noted earlier Appellant has not established any meaningful difference between the
3 use of hydrogen (H) vis-a-vis C1 or C2.
4 3. R2-R4 = H, C1, or C2.
5 Claim 28 limits Appellant's R2-R4 to hydrogen, a methyl radical, or an ethyl
6 radical.
7 Christidis describes imidazoles wherein moieties equivalent to Appellant's
8 R2-R4 are hydrogen:
9 Col.2:15.
HC-N
II U
·HC · C-R
~,,,,,. .
N
I
H
10 One skilled in the art would have expected that the Christidis imidazoles
11 with hydrogen moieties in positions equivalent to Appellant's R2-R4 positions
12 would function as heat stabilizers.
13 5. C = MgO
14 Claims 17-20 and 26-29 limit element C to magnesium oxide (MgO).
15 According to Appellant, neither Philippoz nor Christidis describes the
16 use of magnesium oxide (MgO) or its use in an amount of 0.01-5% by weight.
17 Br., page 17.
18 As pointed out earlier, Philippoz describes the use of MgO in an amount
19 of 1.6% by weight. See page 4, Table 3, Example 2 describing MgO (wt%) as
20 being 1.6.
11
Appeal2014-003775
Application 13/148,727
1 6. C < 10,000 ppm impurities
2 Claims 18, 20, and 26-29 call for magnesium oxide having less than
3 10,000 ppm of metal impurities.
4 Appellant has not explained why the magnesium oxide described by
5 Philippoz would have been expected to have a high impurity content, and if so,
6 what the degree of normal impurities would have been expected in the magnesium
7 oxide described by Philippoz. Moreover, Appellant has failed to explain the
8 significance, if any, of impurities. While a preference is stated for small amounts
9 of metal impurities (Specification, page 5:20-22), no explanation is set out as to
10 the reason for the preference. Nothing on this record establishes that the amount of
11 impurities is in any way critical to the invention. In fact, the record suggests
12 otherwise. Appellant identifies commercially available MgO from Acros Organics
13 as a suitable MgO for use in the invention. Specification, page 5:27-29. Our own
14 investigation reveals that today Acros Organics describes one of its MgO products
15 as having the impurities shown in Table 2:
Table 2
Compound Impurity Level (ppm max)
Aluminum oxide-Ah03 400
Calcium oxide---CaO 3000
Iron oxide-F e203 400
Silicon oxide-Si02 500
Sulfates-S04-containing salts 2500
Total impurities 6800
12
Appeal2014-003775
Application 13/148,727
1 See Fisher Scientific, pages 1-2.2
2 Appellant has failed to explain why use of a known commercial product for
3 its intended purpose would not have been regarded by one skilled in the art as an
4 obvious use. We also note that the Examples in the Specification do not identify
5 the impurity level or the impurities in the MgO said to have been used to generate
6 the data shown on pages 22-25 of the Specification.
7 7. C Particle Size dso 10-200 µm
8 Claims 19, 20, and 26-29 limit the size of the MgO particles to
9 dso 10-200 µm.
10 Appellant has not explained what one skilled in the art would have expected
11 with respect to the size of magnesium oxide particles described by Philippoz.
12 Moreover, Appellant has failed to explain the significance, if any, of particle
13 size. While a preference is stated for particle size (Specification, page 5:24--25),
14 no explanation is set out as to the reason for the preference.
15 Nor had Appellant identified the particle size of the MgO commercially
16 available by Acros Organics. Our own investigation reveals that Acros Organics
1 7 today describes one of its MgO products as having a particle size of< 150 µm. See
18 Fisher Scientific, page 1. We also note that the Examples in the Specification do
2 In the event of further prosecution, Appellant shall provide to the PTO its
understanding of the nature of the commercially available Acros Organics MgO as
of a date prior to Appellant's earliest claimed benefit date, together with any Acros
Organics or other literature supporting its understanding. Appellant shall also
provide a detailed description of the MgO used in the examples in the
Specification. 37 C.F.R. § 1.105. Information submitted under§ 1.105 shall
accompany the next paper filed by Appellant.
13
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Application 13/148,727
1 not identify the particle size of the MgO said to have been used to generate the data
2 shown on pages 22-25 of the Specification.
3 8. Disposition of Dependent Claims
4 The decision of the Examiner rejecting claims 15, 17-20 and 26-29 is
5 affirmed.
6 D. Observation on Prosecution
7 A review of the Final Rejection and the Answer reveals that the Examiner
8 appears to have addressed only claim 10. Notwithstanding Appellant's arguments
9 in its Appeal Brief addressing other claims (e.g., Arguments "B" through "J"), we
10 have found no response to those arguments in the Answer.
11 While we have not found Appellant's arguments addressing independent
12 claim 11, as well as the dependent claims persuasive, in affirming the decision of
13 the Examiner to reject the claims on appeal, we have relied in part on new rationale
14 and the citation of Fisher Scientific.
15 Since Appellant has not had an opportunity to address our rationale or Fisher
16 Scientific, we designate the affirmance of the Examiner's rejection as a new
17 rejection.
18 V. Decision
19 Upon consideration of the appeal, and for the reasons given herein, it is
20 ORDERED that the decision of the Examiner rejecting the claims on
21 appeal over the prior art is affirmed.
22 FURTHER ORDERED that since our rationale supplements the
23 rationale of the Examiner, and we have relied on additional evidence, our
24 affirmance is designated as a new rejection. 37 C.F.R. § 41.50(b).
14
Appeal2014-003775
Application 13/148,727
1 FURTHER ORDERED that our decision is not a final agency action.
2 FURTHER ORDERED that within two (2) months from the date of
3 our decision, appellant may further prosecute the application on appeal by
4 exercising on of the two following options:
5 Option 1: Request reopening of prosecution by submitting an
6 amendment or evidence or both. 3 7 C.F .R. § 41. 50(b )( 1 ).
7 Option 2: Request rehearing on the record presently before the
8 Board. 37 C.F.R. § 41.50(b)(2).
9 FURTHER ORDERED that no time period for taking any
10 subsequent action in connection with this appeal may be extended under
11 37 C.F.R. § 1.136(a)(l)(iv).
12 AFFIRMED
13 (new rejection; 37 C.F.R. § 41.50(b))
14
15
15