Ex Parte Ebert et al

Patent Trial and Appeal Board

Mar 4, 2013

11977505 (P.T.A.B. Mar. 4, 2013)

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.
11/977,505 10/25/2007 Wolfgang Ebert 15778-00013-US 3127
23416 7590 03/04/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
LISTVOYB, GREGORY
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
03/04/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BAYER MATERIALSCIENCE AG
Inventors: Wolfgang Ebert, Bernhard Nietzwetzki,
Rainer Mellis, Wilfried Haese, Bert Ruytinix,
Alexander Karbach and Alexander Meyer
____________________

Appeal 2012-001415
Application 11/977,505
Technology Center 1700
____________________

Before FRED E. McKELVEY, GRACE KARAFFA OBERMAN and
DONNA M. PRAISS, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Bayer MaterialScience AG (“applicant”), the real party in interest 1
(Brief, page 1), seeks review under 35 U.S.C. § 134(a) of a rejection dated 2
16 July 2010. 3
The application was filed in the USPTO on 25 October 2007. 4
The application on appeal claims priority of German patent application 5
10 2006 051 305.3, filed 31 October 2006. 6
The application has been published as U.S. Patent Application Publication 7
2008/0154018 A1. 8
In support of prior art rejections, the Examiner relies on the following 9
evidence. 10
Kawasaki et al.
“Kawasaki”
Japanese Published Patent Application
2001-310935
11 June 2001
Takayoshi et al.
“Takayoshi”
1

European Patent Specification
EP 1 156 071 B1
4 Aug. 2004

Alibaba
Stainless Steel Filter Mesh
http://www.alibaba.com/product-
gs/237543919/stainless_steel_filter_mesh.html

2005
2

1 Takayoshi is the third named inventor, the first being Kimura and the second
being Minami. However, both the Examiner and applicant refer to the European
document as “Takahoshi.” We will refer to the European document as
“Takayoshi.”

2 A copy of Alibaba in the record contains an Internet download date of
24 July 2009—which is after applicant’s filing date. However, the Examiner
indicates that Alibaba was published in 2005. Rejection (16 July 2010), page 2;
Answer, page 3. Applicant has not contested the accuracy of the Examiner’s 2005
date.

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Application 11/977,505

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Applicant does not contest the prior art status of the evidence relied upon by 1
the Examiner. 2
We mention the following additional evidence in this opinion. 3
Murakami et al.
“Murakami”
European Patent Application
EP 1 199 325 A1
24 April 2002
Ebert et al.
“Ebert”
U.S. Patent Application Publication
2008/0154018 A1
26 June 2008

We have jurisdiction under 35 U.S.C. § 134(a). 4
Claims on appeal 5
Claims 1, 4-8 and 10-11 are on appeal. Brief, page 2; Answer, page 2. 6
Claim 1, which we reproduce from page 7 of the Brief (Claim Appendix), 7
reads [matter in brackets and indentation added; principal limitations in issue in 8
italics]: 9
A process for purifying polycarbonate comprising 10
[1] obtaining molten polycarbonate having a weight average 11
molecular weight of 14,000 to 30,000 g/mol and 12
[2] filtering said polycarbonate through at least one non-woven 13
metal structure under a pressure of from 5 to 35 bar to obtain 14
polycarbonate, 15
wherein said non-woven metal structure has a thickness of from 16
5 to 0.1 mm, 17
wherein said structure comprises from 2 to 10 layers including 18
at least one dense layer and at least one less dense layer, 19

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wherein said at least one dense layer is from 0.05 to 0.2 mm 1
thick and has a pore size of from 1 to 10 µm, 2
wherein the densest layer is located in the middle of said at least 3
one non-woven metal structure, and 4
wherein the metal of said at least one non-woven metal 5
structure is 6
[a] thermally pretreated in an oxidative atmosphere and 7
[b] the metal surface of said at least one non-woven 8
metal structure is conditioned at a temperature in the range of from 9
200 to 500 º[C] for up to 35 hours. 10
Independent Claim 11 is similar to Claim 1 and contains a limitation 11
“wherein content of fluorescing particles is lower than that in the molten 12
polycarbonate.” 13
Applicant does not argue the separate patentability of any particular claim. 14
Accordingly, we decide the appeal on the basis of Claim 1. 37 CFR 15
§ 41.37(c)(1)(vii). We also mention one feature of Claim 11. 16
Analysis 17
Polycarbonates and methods for making polycarbonates are known. 18
One of applicant’s objectives is use of a filtration process that is said to 19
enable separation of “fluorescent particles” from molten polycarbonate. The 20
polycarbonate can be used to make a “substrate material” (e.g., CD or DVD) which 21
is said to have a “low fluorescent particle content.” Specification, 3:27-30. 22
Like applicant, Kawasaki and Takayoshi cited by the Examiner also describe 23
preparation of filtered polycarbonates. In both cases, the object is to remove 24

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foreign matter and provide clear polycarbonates. See generally: (1) Kawasaki, 1
Abstract (Problem to be Solved) and ¶ 0004 and (2) Takyoshi ¶ 0006. Unlike 2
applicant, Kawasaki and Takayoshi do not explicitly describe removal of so-called 3
“fluorescent particles.” 4
The sole difference between the subject matter of Claim 1 and Kawasaki 5
argued by applicant in its Brief is the limitation “filtering … under a pressure of 6
from 5 to 35 bar.”
3
Brief, page 4. 7
The Examiner acknowledges the difference. Answer, page 8. The Examiner 8
found that polycarbonate viscosity and filter resistance ultimately dictate filter 9
back pressure. Id. The Examiner further found that both Kawasaki and applicant 10
use an extruder operating at the same temperature. Kawasaki, ¶ 0031 (biaxial 11
screw extruder at 300 ºC to 320 ºC); Specification, page 17:22 (extrude) and 12
page 17:30 to page 18:5 (295-315 ºC).
4
13
According to applicant, “[t]he Examiner essentially takes the position 14
that . . . [pressure] is inherently disclosed in Kawasaki . . . [and is] necessarily 15
dictated by viscosity . . . (a function of polymer molecular weight and processing 16
temperature) and the filter resistance (which is a function of the diameter of the 17
filter openings).” Brief, page 4. Applicant agrees that viscosity, processing 18
temperature and filter diameter opening “might arguably ultimately dictate the 19

3 The 5-35 bar pressure limitation initially appeared in original dependent
Claim 7. It has now been added to independent Claims 1 and 11. The Examiner’s
reference in the Answer (page 5) to Claim 7 is to original Claim 7.

4 The Examiner refers to ¶ 0068 of the Specification. We believe the Examiner is
referring to ¶ 0070 of applicant’s application as published (“Ebert”, cited above).

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maximum pressure of the filter of Kawasaki may be operated . . . .” Id. However, 1
says applicant, the Kawasaki pressure may be higher than 35 or lower than 5 and 2
therefore inherency has not been established. Id. 3
We believe applicant has misperceived the Examiner’s rationale. A pressure 4
is necessary to cause the polycarbonate to pass through a filter. We agree with the 5
Examiner that the determination of a suitable pressure is based, inter alia, on 6
polycarbonate viscosity, extruder temperature and characteristics of the filter (both 7
the diameter of the filter and the diameter of the filter pores). Answer, page 5. We 8
find it difficult to believe that one skilled in the art would have been incapable of 9
determining an appropriate pressure to achieve the purity sought by Kawasaki and 10
Takayoshi.
5
Both Kawasaki and Takayoshi, using a suitable albeit undescribed 11
pressure, nevertheless describe passing polycarbonate through a filter. Both 12
Kawasaki and Takyoshi, like applicant, are attempting to remove impurities. 13
Determination of a suitable pressure would therefore be within the skill of the art. 14
According to applicant, performing the claimed purification process 15
produces an unexpected result. Brief, pages 4-5. 16
An applicant attempting to establish unexpected results must do so with 17
clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It 18
was incumbent upon appellants to submit clear and convincing evidence to support 19
their allegation of unexpected . . . property.”). See also McClain v. Ortmayer, 20

5 We note that in its Example 3, Murakami (cited by applicant in the Specification
(page 3:17 and page 4:23-28) describes an initial pressure of 38 kgf/cm
2
(col. 18:42) which equals approximately 37.3 bar—slightly higher than applicant’s
claimed 35 bar.

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141 U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). 1
Moreover, a showing of unexpected results must be commensurate scope with a 2
claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record 3
does not show that the improved performance would result if the weight-4
percentages were varied within the claimed ranges. Even assuming that the results 5
were unexpected, Harris needed to show results covering the scope of the claimed 6
range.”). 7
Applicant bottoms its unexpected result argument on Examples 3 and 4 of 8
the Specification. Brief, pages 4-5. 9
Any scientific analysis, however, starts with Example 1 (Specification, 10
page 17) describing melting polycarbonate in an extruder at a temperature between 11
295-305 ºC at the exit and as high as 315 ºC in what is referred to as a Zone 3. 12
According to applicant, the extruded polycarbonate has a fluorescent particle 13
content of 15.2 counts/gram. Specification, page 18:8. 14
Example 3 is said to be a “comparison example”. Specification, page 19:4. 15
A polycarbonate is extruded (apparently using the same extruder at the same 16
temperature as that of Example 1). The filter diameter is said to be 28.4 mm 17
(page 19:15). The diameter of the active filtration area is said to be 19 mm 18
(page 19:21-22). A typical filter element is shown in Fig. 2 of Murakami, 19
reproduced below (the overall filter apparatus being shown in Fig. 1—not 20
reproduced). 21

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Murakami Fig. 2
Depicted as a schematic diagram showing an example
of a disk type filter element
D = the outer diameter of the filter element and would correspond to 1
applicant’s diameter of 28.4 mm. Murakami, col. 17:3. 2
d = the inner diameter of the filter element. Murakami, col. 17:4. 3
The active filtration area is calculated on the basis of a diameter = D – d. 4
D = 28.4 mm and D – d for Example 3 filter is 19 mm. Specification, 5
page 19:16-15, 21-22. The active area is therefore 6
((19/2)
2
x π) = 283.4 mm
2
. 7
According to applicant, the Example 3 process yields a polycarbonate 8
having 8.7 counts/gram. 9
Example 4 is similar to Example 3 in many respect but differs at least in that 10
a different size filter is said to have been used. D = 41.2 mm and D - d = 30 mm. 11
Specification, page 20:10-11. The active filtration area is: 12
((30/2)
2
x π) = 706.2 mm
2
. 13

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Example 4, using a larger filter area than the filter of Example 3, reports two 1
fluorescent particle counts of 1.56 counts/gram and 1.18 counts/gram. 2
Specification, page 20:20. 3
Based on the difference in active filtration area, the Examiner found that 4
increasing the diameter would have been expected to lead to decreasing filter 5
resistance and therefore a decreased pressure requirement. Answer, page 8. As a 6
result, one skilled in the art would not be able to determine whether the pressure or 7
the active filtration area is responsible for applicant’s reported lower fluorescent 8
particle counts. 9
On the record before us, we are unable to find that fluorescent particle count 10
is solely a function of pressure. 11
We also note that neither Claim1 nor Claim 11 has a fluorescent count 12
limitation. Example 3 vis-à-vis Example 1 indicates that mere filtration can lower 13
the fluorescent count from 15.2 to 8.7 counts/gram. Accordingly, it would seem 14
that the Kawasaki and Tokayoshi filtration processes also lower fluorescent count 15
even if neither mentioned fluorescent count. Hence, and while not argued, the 16
lower fluorescent count limitation of Claim 11 would appear to occur in both 17
Kawasaki and Tokayoshi. 18
What fluorescent level is “new”? In other words, what level needs to be 19
reached before it can be said that applicant has discovered a new function? 20
We do not foreclose a possibility on a different record that it might be shown 21
that fluorescent count is a new function and is related solely to pressure. To make 22
that determination, one would have to use the same filter apparatus with the same 23
filter and the same polycarbonate and vary only the pressure. We express no views 24

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on whether other variables determine fluorescent count although we recognize that 1
other variables may play a role. 2
We also will observe in the event of future prosecution that the data in the 3
Specification based on a pressure of 20-25 bar is not commensurate in scope with 4
the claimed range of 5-30 bar. In re Harris, 409 F.3d at 1344. 5
Other arguments 6
We have considered applicant’s remaining arguments and find none that 7
warrant reversal of the Examiner’s rejection. Cf. In re Antor Media Corp., 8
689 F.3d 1282, 1294 (Fed. Cir. 2012). 9
Decision 10
Upon consideration of the appeal, and for the reasons given herein, it is 11
ORDERED that the decision of the Examiner rejecting the claims on 12
appeal § 103 over the prior art is affirmed. 13
FURTHER ORDERED that no time period for taking any 14
subsequent action in connection with this appeal may be extended under 37 C.F.R. 15
§ 1.136(a)(1)(iv). 16
AFFIRMED 17
18
ak 19
20