Ex Parte Cheng et al

Patent Trial and Appeal Board

Sep 22, 2017

13901187 (P.T.A.B. Sep. 22, 2017)

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.
13/901,187 05/23/2013 Yunan Cheng 11PLAS0149-US-NP 4659
23413 7590 09/26/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street RIETH, STEPHEN EDWARD
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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 YUNAN CHENG, YUN ZHENG and
SHIJIE SONG1
(Applicant: SABIC GLOBAL TECHNOLOGIES B.V.)
Appeal 2015-005648
Application 13/901,187
Technology Center 1700
Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
MONTE T. SQUIRE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as SABIC GLOBAL
TECHNOLOGIES B.V.
Appeal 2015-005648
Application 13/901,187
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 2, 5, 8—16, 34, and 37. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A flame retardant polycarbonate composition comprising:
10 to 90 weight percent of a polycarbonate composition that
comprises a polycarbonate;
20 to 60 weight percent of a reinforcing filler; where the
reinforcing filler is a glass fiber, a carbon fiber, a metal fiber, or a
combination comprising at least one of the foregoing reinforcing
fillers; and
a phosphazene compound.
The Examiner relies on the following prior art references as evidence of
unpatentability:
Akasawa (as translated)
Eckel
Jeong (as translated)
Nakacho
Ohira (as translated)
JP 51-037149A
CA 2335948
KR 10-0435571 B1
US 6,528,559 B1
JP 2007-070468A
Mar. 29, 1976
June 12, 1999
Jan. 29, 2003
Mar. 4, 2003
Mar. 22, 2007
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Appeal 2015-005648
Application 13/901,187
THE REJECTIONS2
1. Claims 1, 2, 8, 9, 12—14, 16, 34, and 37 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ohira in view of Akasawa.
2. Claims 5 and 15 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ohira in view of Akasawa as evidenced by Eckel.
3. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over unpatentable over Ohira in view of Akasawa and Eckel.
4. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohira in view of Akasawa and Nakacho.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner’s findings and conclusion that
the subject matter of Appellants’ claims is unpatentable over the applied art.
2 There are 9 provisional obviousness-type double patenting rejections set
forth on pages 10—18 of the Answer, which are incorporated herein by
reference (we do not list them herein). As noted by the Examiner on page
19 of the Answer, Appellants do not address these rejections, and we thus
summarily affirm these rejections. Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (explaining that summary affirmance without consideration
of the substantive merits is appropriate where an appellant fails to contest a
ground of rejection).
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Application 13/901,187
Accordingly, we sustain each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer, and add the following for emphasis.
Rejections 1—4
The Examiner relies upon the primary reference of Ohira for teaching
a glass-fiber reinforced flame retardant composition comprising
polycarbonate resins, a reinforcing filler comprising glass fibers, and an
organic phosphorus flame retardant (Abstract). The Examiner states that
Ohira discloses an embodiment in Example 11 that comprises 67 wt% of
polycarbonate and 20 wt% of flat glass fiber flflf 0176-0177; Table 1), which
lies within the claimed ranges. Ans. 2.
The Examiner states that Ohira does not disclose utilizing
phosphazenes as the phosphorus flame retardant, so relies upon Akasawa for
teaching chained (i.e. linear) or cyclic phosphazene flame retardants for
polycarbonate compositions (p. 2), and notes such flame retardants achieve
improved flame resistance while maintaining preferable physical and
chemical properties (p. 3). The Examiner concludes that it would have been
obvious to have utilized the phosphazene flame retardants of Akasawa
within the compositions of Ohira because doing so would provide flame
resistance while maintaining preferable physical and chemical properties as
taught by Akasawa (p. 3). Ans. 2—3.
Appellants argue that the Examiner has not made a prima facie case of
obviousness over the combination of Ohira in view of Asakawa because the
replacement of the phosphate of Ohira with the phosphazene of Asakawa
does not result in superior flame retardant properties, and therefore there is
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Application 13/901,187
no motivation to replace the phosphates of Ohira with the phosphazenes of
Asakawa in polycarbonate compositions. Appeal Br. 4. In this light,
Appellants refer to tests that were conducted on polycarbonate compositions
shown in the Table 1 on page 5 of the Appeal Brief. Appellants state that
Table 1 shows a comparison of the substitution of the phosphates of Ohira
(Ohira at | [0081] disclosing bisphenol A diphenyl phosphate) with the
phosphazenes of Asakawa. Appeal Br. 4.
Appellants explain that tests were conducted where both a phosphate
flame retardant as prescribed by Ohira is compared with a phosphazene
flame retardant as prescribed by Asakawa to see if there is indeed motivation
to replace the phosphate with the phosphazene as proposed by the Examiner.
Appeal Br. 5. More specifically, Appellants state that Table 1 shows
compositions that comprise a polycarbonate composition and bisphenol A
diphenylphosphate (BPADP) (prescribed by Ohira) (Sample #1) as well
as compositions that contain the polycarbonate composition and a
phosphazene (prescribed by Asakawa) (Sample #2). Appellants state that
Table 3 on page 6 of the Appeal Brief shows that at thicknesses of 1.5
millimeter and 1.2 millimeters, compositions that contain BPADP have a
higher probability of a first time pass p(FTP) of attaining a flame retardancy
of V-0 than compositions that contain the phenoxyphosphazene (SPB-100).
Appeal Br. 6. Appellants also state that the results in row 6 of the Table 3
show that there is a greater probability of attaining a flame retardancy of V-0
when the composition contains a phosphate than when the composition
contains phenoxyphosphazene. Appellants state that three of the four results
in row 6 show that there is a greater probability of attaining a flame
retardancy of V-0 when the flame retardant is phosphate versus when it is a
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Application 13/901,187
phenoxyphosphazene. Appellants submit that the results show that it would
be better to retain the phosphate in the composition than to substitute it with
a phenoxyphosphazene. Appeal Br. 6—7.
In response, the Examiner states that data discussed by Appellants is
of less probative value because it is not in the form of an appropriate
affidavit or declaration. Ans. 18.
The Examiner next states that even considering the data, it is noted
that both Sample #1 and Sample #2 do not comprise a reinforcing filler such
as glass fibers, carbon fibers, carbon fibers, or a combination of at least one
of the foregoing fillers, which is a required component of instant claim 1.
Ans. 18. The Examiner states that the primary reference of Ohira, which
Appellants attempt to compare, teaches the incorporation of glass fibers as
well. The Examiner states that therefore the data is not commensurate with
the teachings of Ohira, nor is it commensurate in scope with instant claim 1.
We agree.
Furthermore, the Examiner makes a valid point that the data only
illustrates a single phosphazene species, which is insufficient to represent the
entire broad genus of “a phosphazene compound” that has every compound
that possesses a phosphorous doubly-bonded to a nitrogen atom and three
other atoms by single bonds, and does not adequately represent all of the
phosphazene compounds set forth by Akasawa. Ans. 19.
Furthermore, the Examiner notes that the motivation cited to support
the combination of Ohira and Akasawa, as set forth on page 3 of Akasawa is
that mainly the phosphazenes of Akasawa are taught to achieve flame
retardance while also maintaining preferable physical and chemical
properties. Ans. 19. The Examiner points out that the data does not show the
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Application 13/901,187
phosphazenes of Akasawa fail to achieve flame retardancy nor does the data
show the phosphazenes of Akasawa fail to maintain desirable physical and
chemical properties. The Examiner states that, to the contrary, the
data presented effectively illustrates such phosphazenes do in fact
achieve the result set forth by Akasawa: the phosphazene compound
achieves flame retardance while maintaining preferable physical and
chemical properties. Ans. 19. We agree.
In view of the above, we affirm Rejections 1—4 (Appellants do not
argue Rejections 2-4 separately from Rejection 1 (Appeal Br. 7)).
DECISION
Each rejection is affirmed (see footnote 2 also).
TIME PERIOD
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).
ORDER
AFFIRMED
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