Ex Parte Siebecker et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201512871190 (P.T.A.B. Feb. 13, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES D. SIEBECKER, WILLIAM R. FIELDING, JOSHUA U. OTAIGBE ____________ Appeal 2013-005156 Application 12/871,190 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Decision of the Primary Examiner finally rejecting claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is Chemtura Corporation. Br. 2. Appeal 2013-005156 Application 12/871,190 2 STATEMENT OF THE CASE The claimed subject matter relates to flame retardant additives and thermoplastic polymer compositions containing such additives. Br. 12–14 (claims 1, 13). According to the Specification, blending a thermoplastic polymer, such as a polyamide, with both a low glass transition temperature (Tg) tin fluorophosphate glass and a phosphinate-containing flame retardant additive produces a melt processable thermoplastic composition having low shear viscosity and improved flame retardance. Spec. ¶ 10. Claim 1 is representative of the subject matter on appeal and is set forth below (with bold added for emphasis): 1. A flame retardant thermoplastic polymer composition, comprising: a major amount of a thermoplastic polymer wherein the thermoplastic polymer is selected from the group consisting of polystyrenes, polyolefins, polyesters and polyamides; from about 5 wt% to about 25 wt% of a flame retardant additive comprising a phosphinic acid salt, a zinc salt and a melamine salt; and from about 1 wt% to about 10 wt% of a tin fluorophosphate glass which comprises from about 40 to 60 mole % SnF2, from about 15 to 25 mole % SnO and from about 25 to 35 mole % P2O5 and has a Tg of from about 100°C to 175°C. Br. 12 (Claims Appendix). The prior art relied upon by the Examiner in rejecting the claims on appeal is: Borade et al. US 2006/0167143 A1 July 27, 2006 Otaigbe et al. US 2007/0290405 A1 Dec. 20, 2007 Appeal 2013-005156 Application 12/871,190 3 THE REJECTION Claims 1–16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Borade in view of Otaigbe. Ans. 2. ANALYSIS Appellants argue claims 1–16 as a group, relying on limitations common to independent claims 1 and 13 and presenting no argument for separate patentability of the dependent claims. Br. 6–10. Therefore, all appealed claims stand or fall together, and we confine our discussion to claim 1, which is representative of the independent claims. 37 C.F.R. § 41.37(c)(iv). The Examiner finds that Borade teaches a composition containing polyamide and all other elements of claim 1, except that, while low melting glass is disclosed, the particular type of glass described in claim 1 is not disclosed. Ans. 2 (citing Borade claims 1, 15).2 The Examiner finds that Otaigbe teaches a composition of polyamide and tin fluorophosphate glass. Id. (citing Otaigbe claims 1–10). The Examiner concludes that it would have been obvious to substitute the low melting glass of Otaigbe for the low melting glass in the composition of Borade in order to take advantage of the improved miscibility, better flame retardance, strength, creep resistance and 2 Although the rejection does not expressly list a melamine salt, this component is also disclosed by Borade claims 1 and 15. Compare Ans. 2 with Borade claims 1, 15 (“A flame retardant thermoplastic composition comprising . . . polyamide . . . a phosphinate . . . melamine polyphosphate, zinc borate, low melting glass . . .”); see also Br. 6–7 (the Examiner finds that Borade discloses melamine salt). Appeal 2013-005156 Application 12/871,190 4 dimensional stability and lower melt viscosity of the polymer/glass composite, as taught by Otaigbe. Id. (citing Otaigbe Abstract, ¶¶ 3–8). Appellants contend that the Examiner’s reason for combining the references is inadequate and contrary to the teachings of the references and that data in a declaration and the Specification show unexpected results. Br. 6–10. Upon consideration of the evidence presented in this Appeal and each of Appellants contentions, we are not persuaded that Appellants identify reversible error, and we find that a preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. We sustain the rejection of claims 1–16 based on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Answer. We add the following for emphasis. Appellants argue that one skilled in the art would not make the substitution proposed by the Examiner because, according to Appellants, the prior art teaches that glass having a Tg that is too low, e.g., less than 200°C, will not provide the desired flame retardancy, and one skilled in the art would not replace Borade’s flame retardant glass with one that is taught to perform poorly. Br. 7–8 (citing Borade ¶ 73 [sic, ¶ 74] and Endou et al., US 2004/0167294 A1, Aug. 26, 2004 (“Endou”), ¶ 22). The Examiner, however, finds that Borade refers to Endou as disclosing “non-limiting examples of low melting glass,” Ans. 2 (quoting Borade ¶ 74), and that Endou does not define what Tg is “too low.” Id. (quoting Endou ¶ 22). After considering the contentions of Appellants and the Examiner and the cited teachings of Borade and Endou, we are not persuaded that Appellants’ evidence of teaching away is sufficient to outweigh the evidence supporting Appeal 2013-005156 Application 12/871,190 5 the Examiner’s reasons for combining the teachings of the prior art. In reaching this conclusion, we are guided by the following principles: “A reference may be said to teach away when a person of ordinary skill, upon reading the reference would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (citation, quotes and ellipses omitted). That general rule is tempered by the following considerations: [O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill. . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance.”). Appeal 2013-005156 Application 12/871,190 6 The paragraph of Endou cited by Appellants teaches that the Tg of low melting point glass that functions as a flame retardant is “preferably higher than 200°C.” Endou ¶ 22. Endou further teaches that “[i]f the glass transition temperature is too low . . . the flame retardancy . . . tends to be poor.” Id. Based on these disclosures, we agree with the Examiner that Endou does not define exactly what Tg is “too low” and that a Tg of 200°C is not taught as an absolute lower limit for low melting glass that has useful flame retardant properties. Moreover, Endou’s teachings must be viewed in the context of the prior art as a whole, including Otaigbe, which teaches that phosphate glass having a Tg as low as 125°C increases the flame resistance of a nylon (polyamide) composite. Otaigbe Abstract (“The addition of a low Tg phosphate glass . . . to a nylon matrix results in . . . a decrease in . . . flammability . . .”); ¶¶ 31, 32 (“We have also observed in our laboratory some preliminary evidence of the Pglass working to increase the flame resistance of the hybrid,” where the pure Pglass component in the hybrid has a Tg around 125°C). Furthermore, the Examiner determines that one of ordinary skill in the art would have been motivated by additional advantages (other than flame retardance) that Otaigbe teaches would result from the addition of low Tg glass to polyamide, including improved miscibility, strength, creep resistance and dimensional stability and lower melt viscosity of the polymer/glass composite. Ans. 2 (citing Otaigbe Abstract, ¶¶ 3–8). Even if these additional advantages came at the expense of flame retardancy (which we do not find is the case), that would not nullify the additional advantages taught by Otaigbe as a basis to modify the disclosure of Borade with the teachings of Otaigbe. Winner, 202 F.3d at 1340. In view of the apparently Appeal 2013-005156 Application 12/871,190 7 conflicting prior art teachings regarding the relationship between Tg and the flame retardant properties of phosphate glass and further in view of Otaigbe’s teachings regarding additional advantages that result from adding a low Tg glass to polyamide, we are not persuaded that the Examiner erred in concluding that the prior art would have provided one of ordinary skill in the art with a motivation to combine the teachings of Borade and Otaigbe in the manner claimed by Appellants. Next, Appellants argue that the compositions of Borade are different and more complex than the compositions of Otaigbe and that Otaigbe teaches that the effects of low Tg glass are variable and, consequently, one of ordinary skill in the art would not have assumed that the addition of Otaigbe’s glass to the composition of Borade would achieve Otaigbe’s objectives without negative impact on Borade’s polymer blend. Br. 8 (citing Borade ¶¶ 29–30 and Otaigbe ¶¶ 5, 8). We agree with the Examiner, however, that Appellants’ argument is highly speculative and bereft of proof. Ans. 2. Appellants do not direct us to evidence sufficient to persuade us that one of ordinary skill in the art would not have had a reasonable expectation that one or more of the advantages disclosed by Otaigbe and relied upon by the Examiner, Ans. 2 (citing Otaigbe Abstract, ¶¶ 3–8), could be achieved by adding the low Tg glass of Otaigbe to the composition of Borade. In this regard, we note that both Borade and Otaigbe disclose adding low melting glass to a composition in which a major component is polyamide, such as nylon-6 or nylon-6,6. Borade ¶¶ 6, 22, 28; Otaigbe ¶¶ 6, 27 (Table 1). In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.”); see also Medichem, Appeal 2013-005156 Application 12/871,190 8 437 F.3d at 1165 (“certainty of success” is not required); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot take the place of evidence). Lastly, Appellants argue that data in a declaration and the Specification show that glasses with different Tg have different properties, that the lower melting glass of Otaigbe provides better flame retardance in polyamide formulations than the glass of Borade, and that the claimed composition provides flame retardancy that is unexpected in light of the cited prior art. Br. 9–10 (citing Declaration under Rule 132 by inventor Fielding filed Dec. 20, 2011, hereinafter, “Fielding Decl.” and Spec. 12, 16 (Table 3) and ¶¶ 3–5). The Examiner, however, contends that Appellants’ data is not probative because it lacks comparison to the closest prior art, i.e., glass having a Tg of 200°C, the data pertains to a flame retardant system that is different from both Appellants’ claims and Borade, and the range of Tg that was tested is not commensurate with the scope of Appellants’ claims. Ans. 2. We agree with the Examiner’s criticisms and determine that Appellants’ evidence falls short of establishing that the claimed composition provides results that are unexpected as compared with the closest prior art. In this respect, we note that a showing of unexpected results must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). To be persuasive of non- obviousness, 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); In re De Blauwe, 736 F.2d 699, 705, (Fed. Cir. 1984). Appeal 2013-005156 Application 12/871,190 9 As pointed out by the Examiner, Ans. 2, the data in the Fielding Declaration does not test glass having a Tg of 200°C, which is the lower limit of the range disclosed in Borade. Compare Fielding Decl. 3, Table 1 (flame retardancy data for samples containing tin fluorophosphate glass (P Glass) with a Tg of about 125°C and a sample containing P Glass with a Tg of 325°C) with Borade ¶ 93 (“The low-melting glass has a glass transition temperature (Tg) of 200°C to 500°C.”). The data in the Specification suffers from the same deficiency because the only P Glass tested has a Tg of about 125°C. Spec., ¶¶ 51–56 (Tables 1–3). Appellants assert that they are “under no obligation to create prior art” by preparing samples containing glass that is not exemplified in Borade. Br. 9–10. Appellants’ assertion is not, however, consistent with applicable law, which places the burden of showing unexpected results on the person who asserts them, In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972), and requires evaluation of a prior art reference in its entirety, including both generic disclosures and examples, In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must be evaluated, . . . and a reference is not limited to the disclosure of specific working examples.”) (Citations omitted). Furthermore, as noted by the Examiner and conceded by Appellants, the data in the Fielding Declaration was not obtained for the composition of either Borade or the claimed invention. Ans. 2; Br. 9. For example, unlike the claimed compositions, the samples that were tested do not contain zinc salt or melamine salt as recited in Appellants’ claim 1, but instead contain a brominated polystyrene flame retardant (Br-FR), which the Specification teaches should be avoided. Compare Fielding Decl. 2–3, Table 1 (flame retardancy data for samples containing Br-FR) with Br. 12 (claim 1) and Appeal 2013-005156 Application 12/871,190 10 Spec. ¶ 3 (describing drawbacks of halogenated flame retardants, such as polymers of dibromostyrene); id. ¶ 5 (“It would be beneficial to have a flame retardant additive system . . . which avoids the incorporation of halogenated organic additive compounds . . .”). Finally, as pointed out by the Examiner, the data in the Fielding Declaration fails to test a range of Tg that is commensurate with the scope of Appellants’ claims. Whereas Appellants claim a composition containing glass having a Tg of from about 100°C to 175°C, Br. 12 (claim 1), the data in the Fielding Declaration pertains to only a single point within that range, namely compositions containing P Glass with a Tg of about 125°C, Fielding Decl., 2–3 (Table 1). The data in the Specification suffers from the same deficiency. Spec., ¶¶ 51–56 (Tables 1–3). In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) (emphasis added) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). On this record, Appellants do not adequately show that the data they rely upon are reasonably commensurate in scope with the claims, or that they provide results that are unexpected as compared with the closest prior art. Therefore, we are not persuaded that Appellants’ arguments, the Fielding Declaration, or the Specification examples are sufficient to rebut prima facie obviousness. Appeal 2013-005156 Application 12/871,190 11 CONCLUSION OF LAW AND DECISION The rejections are 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). AFFIRMED cdc Copy with citationCopy as parenthetical citation