Ex Parte Bogerd et al

Board of Patent Appeals and Interferences

Mar 19, 2012

10955038 (B.P.A.I. Mar. 19, 2012)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/955,038 0913012004 Jos van den Bogerd
43248 7590 03/21/2012
CANTOR COLBURN LLP - SABIC (LEXAN/CYCOLOY)
20 Church Street
22nd Floor
Hartford, CT 06103
UNITED STA TES 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.
147241-2 3815
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
03/21/2012 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 @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JOS VAN DEN BOGERD, REIN MOLLERUS
FABER, and CHRISTIANUS J.J. MAAS
Appeal 2011-001884
Application 10/955,038
Technology Center 1700
Before EDWARD C. KIMLIN, BEYERL YA. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 5-9, 12-14, 16, 20,
21, 26, 28, 32, and 34-48. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 34, 47, and 48 are illustrative:
34. An article comprising:
a composition comprising:
70 wt% to 99 .9 wt% of aromatic thermoplastic polymer, based
upon a total weight of the composition;
Appeal 2011-001884
Application 10/955,038
an inorganic infrared absorbing additive comprising lanthanum
boride, calcium boride, titanium boride, vanadium boride, chromium
borides, molybdenum borides, tungsten boride, or a combination
comprising at least one of the foregoing; and
an UV absorbing additive,
wherein the UV absorbing additive is present and is present in
an amount of less than or equal to 5 wt%, based upon a total weight of
the composition.
4 7. The article of Claim 34, wherein the composition, when in the form of
a 2.5 mm plaque, has a decrease in the amount of the IR absorbing additive
of less than 6. 5 wt%, after 1000 hours of exposure to a Xenon weathering
source according to ISO 4892-2A conditions.
48. The article of Claim 47, wherein the decrease in the amount of the IR
absorbing additive is less than or equal to 4.0 wt%.
The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Lundy
Naarmann
Brunelle
Fujita
4,804,692
6,063,854
6,265,522 B 1
2004/0028920 Al
Feb. 14, 1989
May 16, 2000
Jul. 24, 2001
Feb. 12,2004
Appellants' claimed invention is directed to a molding composition
comprising an aromatic thermoplastic polymer, an inorganic infrared
absorbing additive, such as lanthanum boride, and a UV absorbing additive
which is present in an amount of less than or equal to 5 wt%. According to
Appellants, it has been unexpectedly found that the presence of the UV
absorbing additive in the claimed amounts inhibits a decrease in the amount
of the IR absorbing additive after the composition is exposed to 1,000 hours
of a Xenon weathering source.
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Appeal 2011-001884
Application 10/955,038
Appealed claims 5-9, 12-14, 16, 20, 21, 26, 28, 32, 34, 35, 37-43 and
46-48 stand rejected under 35 U.S.C. § 112, first paragraph, written
description requirement. The appealed claims also stand rejected under 35
U.S.C. § 103(a) as follows:
(a) Claims 5, 12-14, 16, 20, 21, 26, 28, 32, 34-36, and 39-48 over
Fujita in view ofNaarmann,
(b) Claims 5-9 over Fujita in view of Naarmann and Brunelle, and
(c) Claims 37 and 38 over Fujita in view ofNaarmann and Lundy.
We have thoroughly reviewed each of Appellants' arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we agree with the Examiner that the claimed subject
matter is unpatentable for the reasons set forth in the Answer. Accordingly,
we will sustain the Examiner's rejections for essentially those reasons
expressed in the Answer, and we add the following primarily for emphasis.
We consider first the Examiner's rejection under§ 112, first
paragraph, written description requirement. We agree with the Examiner
that Appellants' Specification supports an amount of UV absorbing additive
in the range of 0.05 - 5 wt%, but does not support amounts in the range of
between 0 wt% and 0.05 wt%. While we agree with Appellants that the
claims require the presence of some UV additive, Appellants have not
addressed the Examiner's position that there is no support for the claimed
range of between 0 wt% and 0.05 wt%.
We also concur with the Examiner that although there is descriptive
support for the claimed decrease in the amount of IR absorbing additive of
6.5 wt% and 2.8-4.0 wt%, the Specification does not support a decrease of
less than 2.8 wt%, which values are within the scope of the appealed claims.
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Appeal 2011-001884
Application 10/955,038
While Appellants maintain that the Specification describes decreases of less
than 6.5 wt%, Appellants fail to explain how the Specification supports
decreases of less than 2.8 wt%.
We now tum to the Examiner's§ 103 rejections. There is no dispute
that Fujita, like Appellants, discloses a molding composition comprising a
thermoplastic resin, including bisphenol A polycarbonate and polyester,
infrared absorbing additives such as lanthanum boride and calcium boride,
and UV absorbing additives. As recognized by the Examiner, Fujita is silent
with respect to the amount of UV absorbing additive in the molding
composition. However, it has generally been held that it is a matter of
obviousness for one of ordinary skill in the art to determine the optimum
amount of a known ingredient in a composition via routine experimentation,
and that when patentability is based upon a change in a condition of a prior
art composition, such as a change in concentration or the like, the burden is
on the applicant to establish with objective evidence that the change is
critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Accordingly, we agree with the Examiner that it would have been prima
facie obvious to include a UV absorbing additive in the composition of
Fujita in amounts within the claimed range. Naarmann further evidences
that it was known in the art to use the claimed amounts of UV additives in
thermoplastic molding compositions.
We also concur with the Examiner that Appellants' declaration
evidence falls far short of outweighing the evidence of obviousness
presented by the Examiner. As explained by the Examiner, the Specification
data is hardly commensurate in scope with the degree of protection sought
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Appeal 2011-001884
Application 10/955,038
by the appealed claims. Jn re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). As explained by the
Examiner, the Specification data is limited to lanthanum boride for the
infrared absorbing agent, Tinuvin as the UV absorbing agent, and a
polycarbonate for the thermoplastic polymer. On the other hand, the
appealed claims encompass several different borides as the infrared
absorbing additive, any and all UV absorbing additives, and all aromatic
thermoplastic polymers. Appellants have not established that similar
decreases in the amount of infrared additives can be reasonably expected for
the myriad of compositions embraced by the appealed claims.
Moreover, we agree with the Examiner that Appellants have not
demonstrated that the reported results would be considered truly unexpected
by one of ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1098-
99 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants have not established what would be expected by one of ordinary
skill in the art when a UV additive, which is known to improve weathering,
is included in a thermoplastic composition also comprising an infrared
absorbing additive. Appellants' asserted synergism has not been established
on this record. As set forth by the Examiner, since the Xenon radiation is in
the UV range, one of ordinary skill in the art may very well expect that the
UV absorption would enhance the stability of the infrared absorbing agent.
Also, as pointed out by the Examiner, Appellants' comparative
examples include a UV absorbing additive in the claimed range, i.e., 0.004
wt% falls within the claimed range of less than or equal to 5 wt%.
Finally, we agree with the Examiner's reasoning that it would have
been obvious for one of ordinary skill in the art to use the resorcinol
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Appeal 2011-001884
Application 10/955,038
acrylate-containing polymers of Brunelle as the transparent resin of Fujita,
and to use bisphenol A polycarbonate having a molecular weight of 10,000-
200,000, as disclosed by Lundy, in the moldable composition of Fujita.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
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)(l )(iv).
AFFIRMED
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