Ex Parte An et al

Patent Trial and Appeal Board

Jul 27, 2018

13148354 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/148,354 07/03/2013 Narong An
23413 7590 07/31/2018
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.
10PLAS0045-US-PCT 1978
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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 NARONG AN, YU REN, DAKE SHEN,
and Y AMING NIU
Appeal2017-008066
Application 13/148,354
Technology Center 1700
Before KAREN M. HASTINGS, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1--4 and 6--41. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In our Opinion, we refer to the Specification filed August 8, 2011
("Spec."); the Final Office Action mailed June 21, 2016 ("Final Act."); the
Advisory Action mailed August 25, 2016 ("Advis. Act."); the Appeal Br.
filed December 28, 2016 ("App. Br."); the Examiner's Answer mailed
March 13, 2017 ("Ans."); and the Reply Brief filed April 24, 2017 ("Reply
Br.").
2 Appellants identify SABIC GLOBAL TECHNOLOGIES B.V. as the real
party in interest. App. Br. 2.
Appeal2017-008066
Application 13/148,354
The claims are directed to compositions comprising polycarbonate
resins with flame-retardant properties. Spec. ,r 1. The compositions
comprise at least one phenyl-containing linear siloxane and at least one
phenyl-containing cyclic siloxane. Id. ,r 3. Claim 1, reproduced below from
the Claims Appendix of the Appeal Brief, is illustrative of the claimed
subject matter:
1. A composition comprising: (a) a branched polycarbonate
resin, (b) a flame retardant, ( c) at least one phenyl containing
linear siloxane and at least one phenyl containing cyclic
siloxane, and ( d) a linear polycarbonate resin; wherein said
branched polycarbonate is less than 100 wt% based upon the
weight percent of total polycarbonate in said composition;
wherein a molded article from said composition has a UL94 VO
p(FTP) value of 0.90 or greater at a thickness of between 1 mm
and 2. 5 mm;
wherein the phenyl containing cyclic siloxane is a cyclic
siloxane having a formula (R'2SiO)y, wherein R' is a
monovalent phenyl containing hydrocarbon or a fluorinated
phenyl containing hydrocarbon having from 1 to 18 carbon
atoms; and y is a number from 3 to 12; and
wherein the phenyl containing linear siloxane comprises
a poly(phenylalkylsiloxane ), wherein the
poly(phenylalkylsiloxane) comprises an alkyl group having 1 to
18 carbon atoms.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Weidner et al.
("Weidner")
Singh et al.
(''Singh")
Li et al. ("Li")
US 2002/0037966 Al
US 6,462,111 Bl
US 2008/0081860 Al
2
Mar. 28, 2002
Oct. 8, 2002
Apr. 3, 2008
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Application 13/148,354
REJECTIONS 3
The Examiner maintains and Appellants seek review of rejections of
claims under 35 U.S.C. § 103(a) as follows: (1) claims 1-5, 7, 10-22, 25,
26, 40, and 41 over Singh in view of Weidner; and (2) claims 6, 8, 9, 23, 24,
and 27-39 over Singh in view of Weidner and further in view of Li. Final
Act. 3-18; App. Br. 8-19.
OPINION
Rejection of claims 1-5, 7, 10---22, 25, 26, 40, and 41 as obvious over
Singh in view of Weidner
Appellants make separate arguments for patentability of claims 12,
18, 20-22, and 41. App. Br. 12-15. Appellants argue the remaining claims
subject to this rejection as a group. Id. at 8-12. We select claim 1 as
representative of the group. 37 C.F.R. § 4I.37(c)(l)(iv). Claims 2-5, 7, 10,
11, 13-17, 19, 25, 26, and 40 will stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Singh meets the
limitations of the claim with the exception of "at least one phenyl containing
linear siloxane" comprising "a poly(phenylalkylsiloxane) compris[ing] an
alkyl group having 1 to 18 carbon atoms." Final Act. 3--4. The Examiner
finds that Singh teaches that cyclic siloxanes are preferred, but the teaching
is not limited to siloxanes that are cyclic. Id. at 3. The Examiner finds that
Weidner discloses a flame retardant polycarbonate composition comprising
both a linear organopolysiloxane and a cyclic organosiloxane in
combination. Id. at 4. The Examiner concludes that one of ordinary skill in
3 The Examiner withdrew the rejection of claim 41 under 35 U.S.C. § 112,
second paragraph upon entering Appellants' August 25, 2016 Amendment
After Final. Advis. Act. 2.
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the art at the time of the invention would have been motivated to add a linear
organopolysiloxane (as taught in Weidner) to the composition of Singh
because a mixture of linear and cyclic organosiloxanes with polycarbonate
can improve compatibility, prevent dripping of flaming particles, and impart
a high level of flame retardancy to an aromatic polycarbonate. Id. ( citing
Weidner ,r 72); Ans. 18. The Examiner finds a synergistic effect on both
compatibility and flame retardancy achieved by the selection of both the
linear and cyclic polysiloxanes of Weidner. Ans. 18.
Appellants argue that the skilled artisan would not have been
motivated to combine the teachings of Singh and Weidner. App. Br. 9-10.
Appellants contend that Singh discloses compositions with significantly
better flame retardancy that those of Weidner. Id. at 9 ("Singh discloses
[compositions] are able to achieve a p[FTP] [sic] rating of about 1 at a
thickness of only 2.0 mm," while "Weidner merely discloses V-0 ratings at a
thickness of 3 .18 mm."). 4 Appellants also argue that Weidner discloses a
composition comprising only the cyclic organopolysiloxane had
significantly worse flame retardancy, thus the skilled artisan considering
Singh would not have looked to Weidner to improve flame retardancy. Id.
4 The Specification discloses a composition with a "UL94 VO p(FTP) value
of 0.90 or greater at a thickness of between 1 mm and 2.5 mm or at 2.5 mm
or at 1.5 mm or at 1 mm." Spec. ,r 3. UL94 is the Standard for Safety of
Flammability of Plastic Materials for Parts in Devices and Appliances
testing. https://en.wikipedia.org/wiki/UL_94. V-0 means that burning stops
within 10 seconds on a vertical specimen. Id. "p(FTP)" refers to the
probability of first time pass of flammability tests (Fire Test Procedures).
Singh col. 7, 11. 22-23. "A 90% probability of passing the first time [tested],
(i.e., p(FTP) of 0.9) is considered acceptable performance." Id. at 11. 26-28.
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Singh and Weidner both disclose compositions rated as UL94 V-0 or
p(FTP) at or near 1. Singh Tables 1-3; Weidner Tables 1 and 2. Singh
discloses data on composition samples 2.0 or 2.3 mm thick. Singh Tables 1-
3. Weidner's samples are 3.18 mm thick. Weidner ,r,r 119 and 122.
Although the samples tested in Weidner are thicker than the samples tested
in Singh, one cannot conclude from the data presented in the references that
Weidner's flame retardance is necessarily inferior to that disclosed in Singh;
there are no same thickness samples to compare.
In addition, Weidner discloses data for samples of the same thickness
for compositions with only cyclic organopolysiloxanes and with both linear
and cyclic organopolysiloxanes, and determines that the inclusion of both
linear and cyclic organopolysiloxanes in a composition results in better
flame retardancy than a composition with cyclic organopolysiloxane but no
linear organopolysiloxane. Weidner Tables 1 and 2 ( compare Example 3
( comprising both linear and cyclic organopolysiloxanes) with Comparative
Example 3 ( comprising cyclic, but not linear, organopolysiloxane) ). Thus,
Weidner teaches that the addition of a linear organopolysiloxane to a
composition comprising a cyclic organopolysiloxane improves flame
retardancy. Id. This improvement would motivate one to add a linear
organopolysiloxane (taught by Weidner) to Singh's composition comprising
only cyclic organopolysiloxanes.
Appellants contend that the skilled artisan understands that it is
increasingly difficult to obtain V-0 ratings with decreasing thickness values.
App. Br. 9; Reply Br. 3--4. Therefore, according to Appellants, one of
ordinary skill in the art would not look to Weidner, because "Weidner
discloses that their composition comprising only the cyclic
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organopolysiloxane had significantly worse flame retardancy." App. Br. 9.
As discussed above, Weidner discloses that when two samples of the same
thickness are tested under the same conditions, the sample comprising both
linear and cyclic organopolysiloxanes has improved flame retardancy,
relative to the sample comprising only cyclic organopolysiloxane. See
Weidner ,r,r 119-124. Whether it is more difficult to obtain a V-0 rating
with a thinner sample is irrelevant to Weidner' s disclosure. Appellants'
argument is without persuasive merit.
Appellants attempt to rebut obviousness by showing unexpected
results. App. Br. 10. Appellants argue "they surprisingly found that a
composition comprising at least one linear phenyl containing siloxane and at
least one cyclic phenyl containing siloxane resulted in a composition with
improved flame retardant properties." App. Br. 10 (citing Spec. ,r 114).
Appellants' characterization of the results provided in the
Specification is inflated. The Specification includes data only for
compositions comprising a single phenyl containing cyclic siloxane
( octaphenyl cyclotetrasiloxane) and/or a single phenyl containing linear
siloxane (polymethylphenyl siloxane). Spec. ,r,r 114--15. However, claim 1
recites "at least one phenyl containing linear siloxane and at least one phenyl
containing cyclic siloxane." App. Br. 21 (Claims App'x). In addition, claim
1 recites "a branched polycarbonate resin" and "a linear polycarbonate
resin," but data for only five linear and four branched polycarbonate resins is
provided. Spec. ,r,r 113-115.
It is well settled "that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support." In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding
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that unexpected results "limited to sodium only" were not commensurate in
scope with claims to a catalyst having "an alkali metal"); see also In re
Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003) (affirming obviousness
where the applicant claimed an alloy with 1-3% rhenium, yet presented
unexpected results only for 2% rhenium, and evidence suggested that 3%
rhenium possessed inferior properties). Claim 1 encompasses compositions
comprising all phenyl containing linear siloxanes and all phenyl containing
cyclic siloxanes. The evidence provided by Appellants, however, is limited
to data for a single phenyl containing linear siloxane and a single phenyl
containing cyclic siloxane. See Spec. ,r,r 114--115. This very limited data is
far from sufficient to support a claim to all combinations of all siloxanes
encompassed by claim 1.
Appellants contend that the claims are commensurate with the
unexpected results, citing In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987).
App. Br. 12. Appellants argue that they should not be required to show
unexpected results over the entire range of properties possessed by a
chemical compound or composition, and that evidence that a composition
possesses superior and unexpected properties in one of a spectrum of
common properties can be sufficient to rebut a prima facie case of
obviousness. Id.
Appellants are correct on the law, but wrong on the facts. In contrast
to Chupp, claim 1 recites a multitude of compositions comprised of a
multitude of phenyl containing linear and cyclic siloxanes. Moreover, the
Examiner's determination that the evidence in not commensurate with the
claimed subject matter is not based on a particular property of the
composition, but whether the data provided supports the unexpected results
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for all the compositions contained in claim 1, an issue not present in Chupp.
Appellants provide data for a single phenyl containing linear siloxane and a
single phenyl containing cyclic siloxane. Spec. ,r,r 114--115. Showing
superior and unexpected properties for a single linear siloxane combined
with a single cyclic siloxane does not entitle Appellants to a claim
encompassing all linear and cyclic siloxanes.
For the reasons above, we sustain the rejection of claim 1 as obvious
over Singh in view of Weidner. On the same reasoning, we sustain the
rejection of claims 2-5, 7, 10, 11, 13-17, 19, 25, 26, and 40 pursuant to
37 C.F.R. § 4I.37(c)(l)(iv).
Claim 12
Independent claim 12 is similar to the first limitation of claim 1, but
limits the linear and cyclic siloxanes as follows:
12. A composition comprising: (a) a branched polycarbonate
resin, (b) a flame retardant, ( c) poly(phenylmethyl siloxane) and
octaphenyl cyclotetrasiloxane, and ( d) a linear polycarbonate
resin; wherein said branched polycarbonate is less than 100
wt% based upon the weight percent of total polycarbonate in
said composition; wherein a molded article from said
composition has a UL94 VO p(FTP) value of 0.90 or greater at a
thickness of between 1 mm and 2.5 mm.
App. Br. 23 (Claims App 'x).
The Examiner finds that Singh in view of Weidner renders claim 12
obvious, noting that Singh discloses octaphenylcyclotetrasiloxane as the
preferred siloxane and Weidner discloses phenylmethylsiloxane. Final Act.
5---6.
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Appellants argue "a patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the art." App. Br. 13.
As discussed above, the Examiner provided sufficient motivation for
one of ordinary skill in the art to combine the teachings of Singh and
Weidner. The references disclose the specific compounds in the claim,
therefore claim 12 is obvious over the combined references.
Claims 18 and 41
Dependent claims 18 and 41 limit the claimed composition to between
about 0.1 wt% and about 0.8 wt% of the phenyl containing linear siloxane
(claim 18 specifies that it is poly(phenylmethylsiloxane)). App. Br. 25, 30
(Claims App'x). Claim 18 also limits the claimed cyclic siloxane to
octaphenyl cyclotetrasiloxane. Id. at 25.
The Examiner finds that Weidner teaches the amount of total
organopolysiloxane (linear and cyclic) is from 0.1 to about 50 parts by
weight relative to 100 parts by weight of the resin component and the
amount of cyclic organopolysiloxane is from 5 to 95% by weight of the total
of linear and cyclic organosiloxanes. Final Act. 6 (citing Weidner ,r 75).
The Examiner concludes that a composition comprising 0.4 wt%
poly(phenylmethylsiloxane and 0.4 wt% octaphenycyclotetrasiloxane is
encompassed by claims 18 and 41 and disclosed by the combination of
Singh and Weidner. Id. at 6-8.
Appellants acknowledge Weidner' s broad disclosure, but argue that
Weidner is directed towards compositions comprising increased amount of
linear organopolysiloxane, i.e., 2.5 to 10 wt% of linear organopolysiloxane,
based on Weidner's examples. App. Br. 13; Reply Br. 7-8. Appellants
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argue that Weidner teaches that compositions comprising less than O .1 parts
by weight will not have sufficient flame retardancy. Id. ( citing Weidner
,r 78). Therefore, Appellants contend, one of skill in the art would not
consider the narrow (claimed) range of about 0.1 wt% to about 0.8 wt% of
linear organopolysiloxane because he "would likely not consider that such a
small amount would be capable of achieving improved flame retardancy."
Id.
The Examiner finds that Appellants have not established why flame
retardancy at the claimed range of linear organopolysiloxane would have
been unexpected based on the disclosure of Weidner. Ans. 24.
"A reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect On the issue of obviousness, the combined teachings
of the prior aii as a whole must be considered." EiYP Corp. v. Reliance
Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). "[A] reference is not
limited to the disclosure of specific working examples" (In re Mills, 470
F.2d 649,651 (CCPA 1972)), which do not constitute a teaching away from
a broader disclosure (In re Susi, 440 F.2d 442,446 n.3 (CCPA 1971)).
Weidner discloses a range of linear organopolysiloxane that
encompasses the range claimed in claims 18 and 41, and Appellants have not
established that Weidner teaches away from employing any amount of linear
organopolysiloxane within the range disclosed. Therefore, Appellants'
argument is unpersuasive of reversible error.
Appellants also identify claim 18 's requirement of an amount of about
0.1 wt% to 0.8 wt% octaphenyl cyclotetrasiloxane as supporting
patentability. App. Br. 13; Reply Br. 8. Appellants argue that Weidner
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discloses that, when both the linear organopolysiloxane and the cyclic
organopolysiloxane are present, if the composition comprised less than 1.3
wt% of cyclic organopolysiloxane, the composition resulted in one or both
of bad flame retardancy or bleeding of the organopolysiloxane. App. Br. 13.
Appellants support this position with the assertion that Tables 1 and 2 of
Weidner disclose Example 3 comprises 1.3 wt% and Example 5 comprises
7.5 wt% of cycle organopolysiloxane and achieve a V-0 rating, while
Comparative Examples 1 and 2 comprise 0.3 wt% and 0.2 wt%,
respectively, of cycle organopolysiloxane and demonstrate bad flame
retardancy or bleeding. Id. at 13-14.
Appellants' argument is not persuasive at least because we do not find
Appellants' analysis supported by disclosure in Weidner. For example,
Table 2 indicates that neither of Comparative Examples 1 nor 2 comprise
cyclic organopolysiloxane, and one has a rating of V-0 (Comparative
Example 1) while the other has a rating ofV-1 (Comparative Example 2).
Weidner Table 2.
For the reasons above, we sustain the rejection of claims 18 and 41.
Claim 20
Claim 20 depends from claim 1 and requires the composition to have
a haze value less than 3% at 3 mm thickness by ASTM D1003. App. Br. 25
(Claims App'x).
The Examiner finds that Singh's Examples 3-12 have a haze of less
than 3% at about 3.2 mm. Final Act. 6 (citing Singh col. 1, 11. 38--46; col. 2,
11. 16-18; Tables 1 and 2). Appellants respond that Singh's exemplary
compositions have haze values greater that 15%. App. Br. 14 ( citing Singh
Table 1). Appellants identify Singh's Comparative Examples 7-12 as
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having haze values within the claimed range, but UL94 V-0 p(FTP) values
lower than required for the claim. Id.
The Examiner finds that, although the Comparative Examples 7-12
are unpreferred, they must be considered as disclosure of the prior art. Ans.
26.
The Examiner's finding that Singh's Examples 3-12 have a haze of
less than 3% at about 3.2 mm is incorrect. Singh discloses compositions
with "less than or equal to about 30% [i.e., not 3%] haze ... at a thickness of
about 3.2 millimeters." Singh col. 1, 11. 42--46; col. 2, 11. 18-20. Singh's
Examples3---6havehaze%of10.1 to26.1. Id. Table 1. Singh's
Comparative Examples 7-12 meet the haze% requirement of claim 20, but
not the p(FTP) value of claim 1, from which it depends.
The Examiner does not show a prima facie case of obviousness of
claim 20 over Singh in view of Weidner. One of ordinary skill in the art at
the time of the invention would not have combined a composition from
Singh's Comparative Examples, which have less than 3% haze but p(FTP)
values of less than half of 0.90 or greater (as required by claim 20's parent
claim 1) with Weidner' s linear organopolysiloxane with a reasonable
expectation of obtaining a composition with a haze value of less than 3%
that meets the other requirements of claim 20.
We do not sustain the rejection of claim 20.
Claims 21 and 22
Claims 21 and 22 depend from claim 1 and require, respectively, that
the composition has a notched izod impact strength that is at least about 50
Jim and a melt flow range from about 3 g/10 min to less than about 45 g/10
min. App. Br. 25 (Claims App'x).
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The Examiner finds that the compositions of Singh has a melt volume
rate of 10 to 20 cm3 /10 min, which is not directly comparable the melt flow
range of claim 22 in units of g/min. Final Act. 6. The Examiner finds that
when claimed and prior art products are identical or substantially identical in
structure and composition a prima facie case of obviousness is established.
Id. (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). The Examiner
notes the similarity in composition of a composition of Singh in view of
Weidner and a working example from the Specification. Id. at 7. Given this
similarity, the Examiner finds that the burden shifts to Appellants to prove
that the prior art composition does not necessarily possess the claimed
characteristics. Id.
Appellants argue that the present disclosure is not limited to the
working examples and that there is no evidence that the hypothetical
combination of Singh and Weidner, which Appellants contend results from
impermissible hindsight, would necessarily have the claimed impact strength
or melt flow range. App. Br. 14. Appellants further argue that under
inherent anticipation, inherency may not be assumed based solely on
similarities between the claimed invention and the prior art. Id.
The Examiner does not reject the claims under inherent anticipation;
this argument of Appellants' is irrelevant. "[T]he statement that a prima
facie obviousness rejection is not supported if no reference shows or
suggests the newly-discovered properties and results of a claimed structure
is not the law." In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane)
( emphasis added). Because the components suggested by the applied prior
art are the same as those which are claimed, the Examiner had reasonable
basis to believe that the composition would have the property recited in the
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claim. Stated differently, the fact that Appellants may have recognized
another property which would flow naturally from following the teachings
of the applied prior art cannot be the basis for patentability when the
differences, if any, would otherwise have been obvious. Appellants have not
offered persuasive evidence to the contrary. When the claimed and
(obvious) prior art products are substantially identical, the PTO can require
an applicant to prove that the prior art products do not necessarily possess
the characteristics of the claimed product. Cf In re Best, 562 F.2d at 1256.
The fairness of this requirement is evidenced by the PTO' s inability to
manufacture products or to obtain and compare prior art products. Id.
We sustain the rejection of claims 21 and 22.
Rejection of claims 6, 8, 9, 23, 24, and 27-39 as obvious over Singh in
view of Weidner and further in view of Li
Claims 27-34 and 36
Claim 27 is an independent claim. App. Br. 27 (Claims App 'x).
Claims 28-34 and 36 depend, directly or indirectly, from claim 27. Id. at
27-28. Although the rejection of claim 27 is included in the section of the
Final Office Action directed to the combination of Singh, Weidner, and Li,
the Examiner does not rely on Li for any teaching in relation to claims 27-
34, citing instead only Singh and Weidner. Final Act. 12-14. Claim 36
requires that the molded article from the composition of claim 27 has a
UL94 VO p(FTP) value of0.90 or greater at a thickness of 1.5 mm, for
which disclosure the Examiner relies on Li. Final Act. 13-14.
Appellants make no arguments for patentability of claims 27-34. See
generally App. Br. Appellants argue patentability of claim 36 as part of the
group of claims 8, 9, 35-37, and 39. Id. at 16. However, unlike the other
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claims in the group, claim 36 depends from claim 27, and Appellants have
not argued for patentability of claim 27. See generally id. Therefore, we
summarily affirm the rejection of claims 27-34 and 36.
Claim 6
Claim 6 depends from claim 1 and further requires that the branched
polycarbonate has an end-cap containing at least one of phenol, alkyl-
substituted phenols, ester-substituted phenols, cyano-substituted phenols,
and halogen substituted phenols. App. Br. 22 (Claims App'x).
The Examiner finds that Li teaches the claimed end-cap. Final Act. 8.
The Examiner finds that one of ordinary skill in the art would have been
motivated to have endcapped the branched polycarbonate in Singh since Li
discloses that cyanophenyl endcapped polycarbonates can be more flame
retardant than the same polycarbonates without cyanophenyl endcapping.
Id. (citing Li ,r 84).
Appellants argue that Li is directed to a completely different
composition and product than Singh. App. Br. 16. According to Appellants,
Singh discloses a fire retardant, translucent polycarbonate comprising a
branched polycarbonate resin, polytetrafluoroethylene, a fire retardant free
of bromine and chlorine, and an optional siloxane. Id. Appellants argue
that, in contrast, Li is directed to a thermoplastic composition comprising the
"cyanophenyl endcapped polycarbonate, flame retardant, optional impact
modifier, and/or other optional components to form a blend." Id. ( quoting Li
,r 11 ). Appellants contend that hindsight provides the only motivation to
insert the endcapped polycarbonate of Li into the composition of Singh. Id.
In addition, according to Appellants, Li does not discuss the effect of the
components on haze and transparency, which is an objective of Singh.
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The Examiner responds that nothing in Li indicates that haze or
transparency of Singh would be affected by endcapping the polycarbonate.
Ans. 27.
We agree with the Examiner that one of ordinary skill in the art would
have been motivated to combine the disclosure of Li with the combination of
Singh and Weidner, as Li discloses improvement in flame retardancy by
endcapping the polycarbonate. See Li ,r 11. Appellants' comments
regarding haze and transparency do not teach away from the combination of
references. Therefore, we sustain the rejection of claim 6 over Singh in view
of Weidner and further in view of Li.
Claims 8, 9, 35, 36, and 39
Dependent claims 8, 9, 35, 36, and 39 recite a UL94 VO p(FTP) value
of at least 0.9 at a thickness of 1.0 mm ( claims 8 and 39) or 1.5 mm ( claims
9, 35, and 36). App. Br. 23, 28-30 (Claims App'x).
The Examiner finds that Li discloses a polycarbonate composition that
achieves a UL94 VO p(FTP) value of 0.90 or greater at a thickness of 1.5
mm or at 0.75 mm. Final Act. 8, 13. The Examiner concludes that one of
ordinary skill in the art would have been motivated to have selected the
amounts/types of components in Li in order to achieve a UL94 VO p(FTP)
value of O. 90 or greater at a thickness of 1. 5 mm or at O. 7 5 mm in order to
make molded articles that have thin walls and also achieve a maximum
flame retardant performance in UL testing. Id. at 8-9, 13-14 ( citing Li
,r,r 133,216).
According to Appellants, one of ordinary skill in the art would not
know, based on Li, which components to select to achieve the desired rating
or how to insert them into Singh. App. Br. 17. Appellants contend that the
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skilled artisan would have had no motivation to select components from Li
and insert them into Singh. Id. Appellants argue that neither Singh nor
Weidner disclose a composition having a UL94 VO p(FTP) value of at least
0.9 at a thickness of 1.0 mm or 1.5 mm and there is no way of assessing
whether adding the polymer of Li to the composition would result in the
claimed composition. Id. at 17-18.
The Examiner responds that Li teaches a branched polycarbonate
comprising a flame retardant and a cyclic siloxane. Ans. 28. The Examiner
finds that the composition resulting from the combination of Singh,
Weidner, and Li would have been substantially identical to the claimed
compositions. Id.
Li discloses linear and branched polycarbonates, flame retardants,
octaphenylcyclotetrasiloxane, and polysiloxanes, and embodiments
achieving UL94 ratings of VO at thicknesses of 1.5 mm and 1.0 mm. Li
,r,r 3, 24, 30, 67. One of ordinary skill in the art at the time of the invention
would have reasonably expected that a composition resulting from the
combination of the teachings of Singh, Weidner, and Li would have the
properties claimed in claims 8, 9, 35, 36, and 39. Given that the combined
references teach the same or substantially the same compositions claimed,
Appellants have not established why the UL94 values would be outside the
scope of these claims. Where the claimed and prior art products are
substantially identical, the PTO can require an applicant to prove that the
prior art products do not necessarily possess the characteristics of the
claimed product. In re Best, 562 F.2d at 1256. Appellants have not done so.
We sustain the rejection of claims 8, 9, 35, 36, or 39 over Singh in
view of Weidner and further in view of Li.
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Claims 23, 24, 37, and 38
In addition to other limitations, claims 23, 24, 37, and 38 each require
a heat stabilizer in the amount of about 0.06 wt% of the total weight of the
composition. The Examiner finds that Li discloses a heat stabilizer in an
amount of 0.0001 to 1 part by weight, based on 100 parts by weight of the
polymer component of a thermoplastic composition, which is an amount of
heat stabilizers generally used. Final Act. 9; see also Li ,r 107.
Claims 23, 24, 37, and 38 also require potassium perfluorobutane
sulfonate in the amount of about 0.08 wt% of the total weight of the
composition and octaphenyl cyclotetrasiloxane in the amount of about 0.1
wt% of the total weight of the composition. App. Br. 26, 29 (Claims
App 'x). The Examiner finds that Singh discloses potassium perfluorobutane
sulfonate in an amount of less than or equal to about 0.1 % based on the total
weight of the polycarbonate ( citing Singh col. 7, 11. 30-40) and 0.1 wt% of
octaphenylcyclotetrasiloxane ( citing, e.g., Examples 3-6 of Singh). Final
Act. 9.
Claims 23, 24, 37, and 38 require, in addition to other limitations, a
poly(phenylmethylsiloxane) in the amount of about 0.4 wt% of the total
weight of the composition. App. Br. 26, 29 (Claims App 'x). The Examiner
finds that Weidner teaches a total amount of organopolysiloxane in a
composition of 0.1 to 50 parts by weight relative to 100 parts by weight of a
resin component, and the cyclic organopolysiloxane is from 5 to 95% by
weight of the total linear and cyclic organosiloxanes. Final Act. 9 ( citing
Weidner ,r 7 5).
Appellants' same arguments against the Examiner's findings and
conclusions regarding Singh, Weidner, and Li have been discussed
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Application 13/148,354
previously in this decision. For the reasons earlier stated, we find the
Examiner's reasoning persuasive.
Claims 23 and 3 7 also require that the linear polycarbonate comprises
about 70 wt% of an interfacial polycarbonate with a weight average
molecular weight of22000 g/mol and a melt flow of2I.9 to 31.8 g/10 min
as determined by ASTM D 1238 and about 30 wt% branched polycarbonate
based upon weight of polycarbonate. App. Br. 26, 29 (Claims App'x). The
Examiner finds that Singh discloses at least about 70% of a linear
polycarbonate made by an interfacial process and can have a weight average
molecular weight of 22,000 and less than or equal to about 30% by weight of
a branched polycarbonate, based on the total weight of the polycarbonate.
Final Act. 9 (citing Singh col. 2, 11. 49-52; col. 7, 11. 1---6; col. 4, 11. 19-22).
Appellants argue that the specific amounts and types of these components
"is clearly not obviated by the references cited." App. Br. 19.
The Examiner has identified appropriate teachings in the references
and provided adequate reasoning, discussed above, for combining the
references. Therefore, we sustain the rejection of claims 23 and 37.
In addition to other limitations, claims 24 and 3 8 require that the
linear polycarbonate comprises about 40 wt% of a melt polycarbonate with a
weight average molecular weight of 22,000 g/mol and a melt flow of 25 to
35 g/10 min as determined by ASTM D 1238 and about 60 wt% branched
polycarbonate based upon weight of polycarbonate. App. Br. 26, 29 (Claims
App'x). The Examiner finds that Singh discloses "less than or equal to
about 85% by weight of a linear polycarbonate" made by an interfacial
process and at least 15% by weight of a branched polycarbonate, based on
the total weight of the polycarbonate. Final Act. 10 ( citing Singh col. 2, 11.
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49-52; col. 7, 11. 1---6; col. 4, 11. 19-22). However, Singh discloses
"[t]ypically there is greater than or equal to about 70% by weight" of linear
polycarbonate, and "less than or equal to about 95%" by weight of linear
polycarbonate." Singh col. 4, 11. 6-14. Regarding branched polycarbonate,
Singh teaches a broadest typical range of branched polycarbonate of equal to
or greater than 5% to less than or equal to about 30% by weight of branched
polycarbonate. Id. at col. 4, 11. 14--22.
The amounts of linear and branched polycarbonates disclosed in
Singh do not overlap the ranges claimed in claims 24 and 38. Singh's
disclosure of 70 wt% to 95 wt% of linear polycarbonate is 1.75 to 2.375
times the amount claimed. "Where, as here, the prior art disclosure suggests
the outer limits of the range of suitable values, and that the optimum resides
within that range, and where there are indications elsewhere that in fact the
optimum should be sought within that range, the determination of optimum
values outside that range may not be obvious." In re Sebek, 465 F.2d 904,
907 (CCPA 1972). On these faces, one of ordinary skill would not have
been motivated to explore ranges of linear and branched polycarbonates well
outside the ranges taught by Singh.
We do not sustain the rejection of claims 24 and 38.
DECISION
The rejection of claims 1-5, 7, 10-19, 21, 22, 25, 26, 40, and 41 over
Singh in view of Weidner is affirmed; the rejection of claim 20 over these
references is reversed.
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The rejection of claims 6, 8, 9, 23, 27-37, and 39 over Singh in view
of Weidner and further in view of Li is affirmed; the rejection of claims 24
and 3 8 over these references is reversed.
AFFIRMED-IN-PART
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