Ex Parte van der Mee et alDownload PDFPatent Trial and Appeal BoardMay 25, 201813874700 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/874,700 05/01/2013 Mark Adrianus Johannes van der Mee 23413 7590 05/30/2018 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 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. 13PLAS0086-US-NP 6865 EXAMINER RIETH, STEPHEN EDWARD ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 05/30/2018 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK ADRIANUS JOHANNES VAN DER MEE, ROLAND SEBASTIAN ASSINK, ROBERT DIRK VAN DE GRAMPEL, and PAUL DEAN SYBERT Appeal2017-003952 Application 13/874,700 Technology Center 1700 Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and JANEE. INGLESE, Administrative Patent Judges. ROSS, Administrative Patent Judge. Appeal2017-003952 Application 13/874,700 DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-17, 22-38, and 43--49. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The subject matter on appeal relates to molded, formed, or extruded interior train components, such as seats and claddings, that comprise a thermoplastic composition having low smoke density and low heat release properties. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A railway component, wherein the component is a molded or extruded seat component, comprising a thermoplastic composition comprising, based on the total weight of the composition: 69 to 90 wt.% of a first polymer comprising bisphenol A carbonate units and monoaryl arylate units, or a second polymer comprising bisphenol A carbonate units, monoaryl arylate units, and siloxane units, or a combination comprising at least one of the foregoing polymers; 10 to 30 wt. % of a polyetherimide; 1 In our Decision we refer to the Specification filed May 1, 2013 ("Spec."), the Final Office Action appealed from dated September 30, 2014 ("Final Act."), the Appeal Brief filed June 29, 2015 ("Appeal Br."), and the Examiner's Answer dated August 18, 2017 ("Ans."). 2 Appellants are Applicants, SABIC Innovative Plastics IP B.V. According to the brief, the real party in interest is SABIC Global Technologies B.V. Appeal Br. 2. 2 Appeal2017-003952 Application 13/874,700 optionally, up to 5 wt.% of an additive selected from a processing aid, a heat stabilizer, an ultra violet light absorber, a colorant, or a combination comprising at least one of the foregoing; and optionally, 2 to 12 wt.% of an organophosphorus compound in an amount effective to provide O .1 to 1. 0 wt.% of phosphorus, based on the total weight of the thermoplastic polymer composition, wherein the bisphenol A carbonate units are of the formula the monoaryl arylate units are of the formula wherein each Rh is independently a halogen atom, a C1-10 hydrocarbyl and n is Oto 4; and the siloxane units are of the formula 3 Appeal2017-003952 Application 13/874,700 or a combination compnsmg at least one of the foregoing, wherein E has an average value of 2 to 90; wherein a sample of the thermoplastic composition has: a smoke density after 4 minutes (Ds-4) of equal to or less than 150 measured in accordance with ISO 5659-2 on a 3 mm thick plaque at 50 kW/m2, an integral of the smoke density as a function of time up to 4 minutes (VOF4) of equal to or less than 300 measured in accordance with ISO 5659-2 on a 3 mm thick plaque at 50 kW/m2 a maximum average heat release (MAHRE) of equal to or less than 90 kW/m2 measured in accordance with ISO 5660-1 on a 3 mm thick plaque at 50 kW/m2, and a ductility in multiaxial impact of 80% to 100%, measured at 23°C at an impact speed of 4.4 m/second in accordance with ISO 6603 on 3 .2 mm thick discs. Appeal Br. 19-20 (Claims App 'x). REJECTIONS The Examiner maintains the following rejections: A. Claims 1-17, 22-38, and 43--49 stand rejected under 35 U.S.C. § 103 as unpatentable over Colborn3 in view of Siripurapu. 4 Final Act. 2. B. Claims 1-17, 22-38, and 43--49 stand rejected under 35 U.S.C. § 103 as unpatentable over Colborn in view of Quinn. 5 Id. at 4. 3 Colborn et al., US 2007/0129492 Al, published June 7, 2007 ("Colborn"). 4 Siripurapu et al., US 2009/0306258 Al, published December 10, 2009 ("Siripurapu"). 5 Clayton B. Quinn, US 4,430,484, issued February 7, 1984 ("Quinn"). 4 Appeal2017-003952 Application 13/874,700 C. Claims 1-17, 22-38, and 43--49 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4--24 and 26-49 of copending Application No. 13/874,746 in view of Siripurapu or Quinn. Id. at 6. D. Claims 1-17, 22-38, and 43--49 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-20, 22-24, and 33-36 of copending Application No. 13/915,710 in view of Siripurapu or Quinn. Id. at 6-7. Appellants seek our reversal of Rejections A-Band do not address Rejections C-D. Appeal Br. 9. Because the basis for our reversal of Rejection A (no reason to combine Colborn and Siripurapu) and Rejection B (no prima facie case of obviousness) is common to all claims, we focus our discussion below on claim 1. OPINION Rejection A - Obviousness (claims 1-17, 22-38, and 43--45) The Examiner rejects claims 1-17, 22-38, and 43--45 as obvious over Colborn in view of Siripurapu. Final Act. 3. The Examiner finds that Colborn teaches a first polymer and a second polymer having siloxane units, as claimed. Ans. 2-3. The Examiner also finds that, while optionally claimed, Colborn additionally teaches additives such as heat stabilizers, ultraviolet light absorbers, and colorants, as well as an organophosphorus compound, in concentrations within or overlapping the claimed ranges. Id. at 3. The Examiner acknowledges that Colborn does not include a polyetherimide, but further finds that Siripurapu, also describing polycarbonate compositions for articles within trains, includes 5 Appeal2017-003952 Application 13/874,700 polyetherimide in a range that overlaps with the claimed range. Id. at 4. The Examiner reasons that the person of skill in the art would have reason to incorporate the polyetherimide of Siripurapu into the polycarbonate composition of Colborn "because doing so would result in increased superior smoke density and flame resistance as taught by Siripurapu." Id. The Examiner further finds that because "the compositions of Colborn would possess the same components in the same concentrations once the polyetherimides of Siripurapu are incorporated" and "Colborn utilizes molding and extrusion which are the same processes utilized by the applicant," the additional claimed properties relating to smoke density, average heat release, and ductility, would be expected to be present." Id. at 5. Appellants present several arguments in support of claim 1. See Appeal Br. 9-16. Appellants first contend that "[i]n view of the excellent smoke and heat resistant properties achieved by the compositions disclosed in Colborn, there is no motivation for one skilled in the art to further lower the smoke density levels, particularly at the potential expense to other properties." Id. at 10. Second, Appellants assert that the synergistic effects between the homopolymer of Siripurapu, containing only carbonate units, and the copolymer of Colborn, including carbonate, siloxane, and ester units, would be unpredictable because of the structural differences between the polymers. Appeal Br. 11. Lastly, Appellants argue that certain surprising and unexpected results are achieved though the combination recited in claims 16, 17, 37, and 38. Appeal Br. 13-16. We find Appellants' first argument persuasive and therefore, we do not address Appellants' remaining arguments. 6 Appeal2017-003952 Application 13/874,700 The Examiner's reason to combine Colborn and Siripurapu-i.e., because Siripurapu describes "superior smoke density and flame resistance is observed when the polyetherimides are incorporated at a concentration of 2-15 wt% ofpolyetherimide" (Ans. 4 and 22}-fails to provide an adequate reason to modify Colborn to include the polyetherimide of Siripurapu because, as Appellants note (Appeal Br. 9), Colborn describes polycarbonate compositions that "already have excellent smoke and heat release properties." Id. For example, Colborn states that "[t]he polysiloxane copolymer composition also desirably meets the FAR requirements for low smoke density and levels of toxic combustion by-products" (Colborn ,r 28) and good heat release performance (see id. ,r,r 7 and 103). Thus, while Siripurapu teaches improved smoke density and flame resistance values, the Examiner identifies no teaching in Siripurapu to suggest that including polyetherimide would further reduce the smoke density and flame resistance below that achieved by Colborn alone, or that a further reduction in smoke density and flame resistance would be desirable. Therefore, there is no apparent reason of record to add the polyetherimide of Siripurapu to the polycarbonate composition of Colborn. On this record, we cannot affirm the Examiner's rejection of claims 1-17, 22-38, and 43--49 over Colborn in view of Siripurapu. Rejection B- Obviousness (claims 1-17, 22-38, and 43--45) The Examiner rejects claims 1-17, 22-38, and 43--45 as obvious over Colborn in view of Quinn. Final Act. 4. In addition to the findings above relating to Colborn (supra p. 5), the Examiner finds that Quinn "teaches polyestercarbonate compositions comprising polyetherimide ... at a 7 Appeal2017-003952 Application 13/874,700 polyestercarbonate:polyetherimide ratio of 1:99 to 99:1." Ans. 10-12. The Examiner reasons that incorporating the polyetherimides of Quinn into the compositions of Colborn would have been obvious to the person of ordinary skill in the art "because doing so would result in improved heat distortion temperatures, flexural strength, and tensile strength as taught by Quinn." Id. at 12. The Examiner further finds that "the compositions of Colborn would possess the same components in the same concentrations once the polyetherimides of Quinn are incorporated" and that "Colborn utilizes molding and extrusion which are the same processes utilized by the applicant," therefore, the Examiner finds that the additional claimed properties would be expected to be present. Id. at 12-13. Appellants argue6 that "Quinn discloses ranges so broad that the skilled artisan would have lacked sufficient guidance to arrive at the instantly claimed composition." Appeal Br. 17. Appellants assert that the range of polyestercarbonate to polyetherimide of 99: 1 to 1:99 "provides no guidance whatsoever as to suitable amounts of the polyetherimide and the first polymer, or a second polymer, or a combination" of the polymers and that such a broad range cannot establish a prima facie case. Id. Appellants further contend that the weight percentages recited in the claims "provide particular functional properties and advantages neither recognized nor taught by Colborn or Quinn. Appeal Br. 17. In particular, "Appellants have found that compositions with higher polyetherimide contents have significantly worse ductility levels and/ or impact energy than the compositions containing 6 Similar to Rejection A, Appellants argue unexpected results are achieved by the combination recited in claims 16, 17, 37, and 38. Appeal Br. 17-18. Because we reverse Rejection Bon different grounds, we do not reach Appellants' secondary arguments relating to unexpected results. 8 Appeal2017-003952 Application 13/874,700 only polycarbonate copolymer. In addition, compositions with higher polyetherimide contents have significantly higher Vicat values, which is typically not beneficial for forming extruded articles." Id. Therefore, Appellants reason that the broad range of 1-99% polyetherimide content of Quinn does not suggest the claimed range of 10-30%. Id. at 18. Appellants' argument persuades us of a reversible error in this case. While Quinn does suggest a ratio of polycarbonate copolymer to polyetherimide that would fall within the claimed range, the breadth of Quinn's disclosure (i.e., a ratio of 99: 1 and 1:99) suggests that any and all possible ratios are permissible. The fact that a claimed species may be encompassed by a prior art genus, is not by itself, sufficient to establish a prima facie case of obviousness. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1992). Here, the Examiner identifies no particular teaching in Quinn that would lead the skilled artisan to select the claimed weight percentages of polycarbonate copolymer and polyetherimide. In re Jones, 985 F.2d 347, 351 (Fed. Cir. 1992)("Conspicuously missing from the record is any evidence other than the PTO' s speculation ... that one of ordinary skill in the art ... would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed 2-(2'aminoethoxy)ethanol sale."). Therefore, without more, we find the Examiner has failed to establish a prima facie case of obviousness and we do not sustain the Examiner's rejection of claims 1-17, 22-38, and 43--49 over Colborn in view of Quinn. 9 Appeal2017-003952 Application 13/874,700 Rejection C-D- Nonstatutory Double Patenting (claims 1-17, 22-38, and 43--45) The Examiner provisionally rejects claims 1-17, 22-38, and 43--45 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4--24, and 26-49 of copending Application No. 13/874,746, now US 9,352,755 (issued May 31, 2016), in view of either Siripurapu or Quinn. Final Act. 5. The Examiner further provisionally rejects claims 1-17, 22-38, and 43--45 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-20, 22-24, and 33-36 of copending Application No. 13/915,710, now US 9,650,496 (issued May 16, 2017), in view of either Siripurapu or Quinn. Id. at 6. Appellants do not argue the merits of the Examiner's nonstatutory double patenting rejections. See generally Appeal Br. However, we observe that U.S. Application Nos. 13/874,746 and 13/915,710 have since issued as US Patents 9,352,755 and 9,650,496. Because the scope of the claims in the issued patents may be different than the claims in the applications used in the provisional obviousness-type double patenting rejections, we decline to reach the merits of these rejections. We leave it to the Examiner to determine the propriety of the rejections upon return of jurisdiction to the Examiner. Ex parte Jerg, 2012 WL 1375142, *3 (BPAI 2012) (informative) ("Panels have the flexibility to reach or not reach provisional obviousness- type double-patenting rejections."). 10 Appeal2017-003952 Application 13/874,700 CONCLUSION Appellants identified a reversible error in the Examiner's rejection of claims 1-17, 22-38, and 43--49 under 35 U.S.C § 103 as unpatentable over Colborn in view of Siripurapu. Appellants identified a reversible error in the Examiner's rejection of claims 1-17, 22-38, and 43--49 under 35 U.S.C § 103 as unpatentable over Colborn in view of Quinn. We decline to reach the provisional nonstatutory double patenting rejections. DECISION For the above reasons, the Examiner's rejections of claims 1-17, 22- 38, and 43--49 under 35 U.S.C. § 103 are reversed. REVERSED 11 Copy with citationCopy as parenthetical citation