COVESTRO DEUTSCHLAND AG

Patent Trials and Appeals Board

Jul 24, 2020

2019005605 (P.T.A.B. Jul. 24, 2020)

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.
15/026,439 03/31/2016 Ulrich GROSSER 074023-0674-US-540976 4589
123223 7590 07/24/2020
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
FERGUSON, LAWRENCE D
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH GROSSER, JAN HELMIG, THORSTEN SCHULZ,
THOMAS GRIMM, and LUCIA WINKLER
Appeal 2019-005605
Application 15/026,439
Technology Center 1700
Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 27, 30–32, 34, 35, and 37. See Final
Act. 2, 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Covestro
Deutschland AG.” Appeal Br. 2.
Appeal 2019-005605
Application 15/026,439

2
CLAIMED SUBJECT MATTER
According to the Specification, the invention relates to “a process for
the production of a molding by structural foam molding[.]” Spec. 3:1–2.
Claim 27, reproduced below, is illustrative of the claimed subject matter:
27. A molding made of a foamed thermoplastic, wherein
the molding has a surface region with optical structuring which
is formed by the foamed thermoplastic and for which the
averaged ratio of a gloss level measured in the direction of flow
to the gloss level measured perpendicularly to the direction of
flow is below 1.9 and wherein the molding is produced by
- providing a plastics melt by melting of a thermoplastic
which comprises a polycarbonate (PC),
- loading the plastics melt with a blowing agent, and
- injecting the plastics melt loaded with the blowing agent
under pressure into a cavity of a mold in such a way that the
plastics melt fills the cavity behind a melt front proceeding
through the cavity,
wherein
- the injection velocity at which the plastics melt is
injected into the cavity of the mold is adjusted in such a way that,
in a region that follows a section of the melt front with a
chronological separation of at most 0.15 s, at least at one juncture
during the injection procedure, the internal pressure of the
plastics melt in the cavity is greater than the critical pressure of
the blowing agent.
Claims Appendix (Appeal Br. 14–15).

Appeal 2019-005605
Application 15/026,439

3
REFERENCES2
The prior art references relied upon by the Examiner are:
Name Reference Date
Burnell US 5,314,925 May 24, 1994
Schaefer (Maurer) US 2013/0129960 A1 May 23, 2013

REJECTIONS
Claims 27, 30–32, 34 and 37 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burnell. Final Act. 2.
The Examiner rejects claims 34 and 35 “under 35 U.S.C. 103(a) as
being unpatentable over Burnell et al. (US 5,314,925) in view of Maurer et
al. (US 2013/0129960 A1).” Final Act. 5.

OPINION
Claim 273
Appellant argues that the Examiner reversibly erred in rejecting claim
27 because whereas the “plastic melt according to the present invention does
not comprise any fluoropolyolefin compounds,” “Burnell’s aromatic
polycarbonate thermoplastic resin requires an amount of
polytetrafluoroethylene nucleating agent.” Appeal Br. 6.

2 The Examiner states that claims 34 and 35 are rejected based on Burnell
“in view of Maurer et al. (US 2013/0129960 A1).” Final Act. 4. “US
2013/0129960 A1,” however, is a reference by “Philipp Schaefer.”
3 Appellant does not separately argue for the rejection of claims 30–32 and
34 over Burnell; they stand or fall with the rejection of claim 27 over
Burnell. See Appeal Br. 5–8; see also 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2019-005605
Application 15/026,439

4
As the Examiner points out, claim 27 reciting “a thermoplastic which
comprises . . .” is open-ended and does not exclude additional components
such as the nucleating agent in Burnell. Final Act. 6. Appellant’s argument is
not persuasive because it is incommensurate in scope with the claim
language.
Appellant next argues that “[a] comparison of Fig. 7a (according to
the invention) and Fig. 7b (not according to the invention) . . . shows that it
is crucial to adhere to the special feature of the instant process if one wants
to obtain the molding exhibiting special properties.” Appeal Br. 6. We are
not persuaded by this argument because Appellant does not specify what
such “special features” might be and does not challenge the Examiner’s
finding that all of the recited process steps are taught in the prior art.
Compare id., with Final Act. 3.
Appellant lastly argues that the Examiner reversibly erred in finding
that “the averaged ratio of a gloss level measured in the direction of flow to
the gloss level measured perpendicularly to the direction of flow is below
1.9” recited in claim 27 is an inherent property of the prior art composition.
Appeal Br. 7. Appellant’s argument is solely premised on the assertion that
the composition in Burnell includes a nucleating agent and is not
substantially identical to the recited composition. Id. As we analyze supra,
claim 27 does not exclude additional compositions and Appellant’s
argument is not persuasive of reversible error. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (“Where . . . the claimed and prior art products are
identical or substantially identical . . . 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. . . . [The] fairness [of the burden-
Appeal 2019-005605
Application 15/026,439

5
shifting] is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.”). Appellant offers only attorney
argument—but no evidence—that Burnell does not necessarily or inherently
possess the claimed characteristic.
Claims 34 & 35 Over Burnell & Maurer
Claim 34 depends from claim 27 and additionally recites: “wherein
the surface region with the optical structuring which is formed via the
foamed thermoplastic comprises at least 30% the entire surface of the
molding.”
Claim 35 depends from claim 34 and additionally recites: “the
thickness of the molding is in the range from 1 and 20 mm.”
The sole argument Appellant raises is that “Appellants respectfully
submit that based on the disclose [sic] of Maurer, a skilled artisan would not
simply select the claimed thickness” and as a result, the Examiner engaged
in impermissible hindsight. Appeal Br. 9. We are not persuaded by this
argument because it does not address the Examiner’s rationale in support of
the rejection. Compare id., with Final Act. 5 (citing Maurer paragraph 4 as
factual support for the rationale to combine). This argument is unpersuasive
also because it lacks evidentiary support. “Attorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
Cir. 1989).
The rejection of claim 35 over Burnell and Maurer is therefore
sustained. Appellant does not raise arguments for the rejection of claim 34
over Burnell and Maurer and the rejection is sustained.
Appeal 2019-005605
Application 15/026,439

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Claim 37
Independent claim 37 is similar to claim 27 except whereas claim 27
recites “a thermoplastic which comprises a polycarbonate (PC),” claim 37
recites “a thermoplastic which essentially consists of a polycarbonate (PC).”
“By using the term ‘consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998). In this case, claim 37, reciting the transitional
phrase “consistently essentially of” is therefore “open to unlisted ingredients
that do not materially affect the basic and novel properties of the invention.”
Id.
Appellant argues that the composition in Burnell is distinguishable
from that of claim 37 because the prior art composition requires a nucleating
agent. Appeal Br. 11. Appellant argues that “Burnell shows the
polytetrafluoroethylene nucleating agent to materially alter the composition
as it made clear in Table 1 of Burnell” (id.) but does not address the issue of
whether the addition of the nucleating agent would “materially affect the
basic and novel properties of the invention” such as those recited. PPG
Indus., 156 F.3d at 1354. Moreover, the Specification indicates, for example,
that an object of the invention is to achieve a molding by structural foam
molding with a visually attractive surface of the molding. Spec. p. 2, ll. 30–
33. Appellant fails to support that Burnell’s inclusion of a nucleating agent
would affect this property. Appellant’s argument does not sufficiently
explain why claim 37 is limited to the polycarbonate recited and is
unpersuasive of reversible error.
Appeal 2019-005605
Application 15/026,439

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CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27, 30–32,
34, 37
103(a) Burnell 27, 30–32,
34, 37

34, 35 103(a) Burnell, Maurer 34, 35
Overall
Outcome:
27, 30–32,
34, 35, 37

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED