Ex Parte Eckel et al

Patent Trial and Appeal Board

Nov 19, 2014

12338115 (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte THOMAS ECKEL, VERA BUCHHOLZ, and ECKHARD WENZ
__________

Appeal 2013-000151
Application 12/338,115
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1–13, 15, and 17–25. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to an impact-modified polycarbonate
composition which comprises a salt of a phosphinic acid and talc (Spec. 1).
Claim 1 is illustrative:
1. A flameproof composition consisting essentially of:
A) 38 to 99.3 parts by wt.,in each case based on the sum of the parts
by weight of components A+B+C+D, of an aromatic polycarbonate and/or
aromatic polyester carbonate,
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Appeal 2013-000151
Application 12/338,115

3
3. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over US ’031 (Seidel et al., US 2004/0059031 A1, Mar. 25, 2004) in
view of Klatt and Costanzi as evidenced by Calcium Phosphinate and
DuPont (DuPont™ Teflon® PTFE Grade 30 Aqueous Dispersion,
MatWeb Material Property Data 2011).
4. Claims 22 and 25 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
5. Claims 1–3, 5–7, 10–12, and 13–21 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims
1–7, 9–13, 15–19, and 23 of copending Application No. 12/338,026,
in view of Klatt.
6. Claims 1, 3–6, and 13–21 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1, 3–6,
and 12–23 of copending Application No. 12/338,416, in view of Klatt.
7. Claims 1, 3–8, 11–16, 18, and 19 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims
1, 3–6, and 12–23 of copending Application No. 12/338,270.

REJECTIONS (1) AND (2)
The Examiner finds that Barren teaches the subject matter of claim 1,
except for the particular salt of phosphinic acid and its particular amount
used in their thermoplastic composition and the use of talc as a filler in the
claimed amount (Ans. 6–7). The Examiner finds that Klatt discloses using
0.1 to 30% by weight of phosphinate salt having the formula recited in the
claims and talc in an amount of up to 50% by weight of the fillers in a
thermoplastic composition (Ans. 8). The Examiner concludes that it would
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have been obvious to employ the appropriate amount of phosphinate salt and
talc in the claimed amount as the filler as taught by Klatt in the
thermoplastic molding composition of Barren with a reasonable expectation
of successfully preparing desired molded articles (Ans. 8). The Examiner
finds that Costanzi teaches using calcium hypophosphite salt, which is also
known as calcium phosphinate, with an average particle size of less than 20
m and as high as 50 m in order to improve the flame retardant and
mechanical properties of a thermoplastic composition (Ans. 8–9). The
Examiner concludes that one of ordinary skill in the art would have modified
the composition as suggested by Barren and Klatt to use phosphinic acid
with a particle size as disclosed by Costanzi in order to improve the flame
retardant and mechanical properties of the resulting thermoplastic
composition (Ans. 9).
Appellants argue that there is no reason to combine the teachings of
Barren, Klatt, and Costanzi (App. Br. 14). Appellants contend that Barren
does not suggest incorporating the phosphinic acid salts of Klatt, and Barren,
Klatt and Costanzi provide no suggestion for such a modification. Id.
Contrary to Appellants’ argument, the Examiner made specific
findings regarding why one of ordinary skill in the art would have
substituted Klatt’s phosphinic salt for the fire retardant material in Barren’s
composition (Ans. 8, 19–20). Appellants do not specifically contest or
otherwise show error in the Examiner’s reason for combining (i.e., in order
to successfully prepare molded articles with good mechanical and flame
retardant properties).
Appellants argue that the transitional claim language “consisting
essentially of” in claim 1 excludes the organophosphate flame proofing
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agents of the references (App. Br. 14–15). Appellants contend that
organophosphate flame proofing agents materially affect the basic and novel
characteristics of the claimed invention (App. Br. 14). Appellants contend
that independent claim 23 recites that the composition is free from
phosphorous-containing flameproofing agents listed in the claims which is
contrary to what is disclosed by Barren, Klatt, Seidel, and Costanzi (App.
Br. 28). Appellants contend that Barren’s examples include
organophosphorous compounds and Klatt’s compositions include organic
and inorganic phosphorous compounds (App. Br. 14). Appellants argue that
nothing in Costanzi would have suggested excluding organophosphates from
the composition. (App. Br. 14–15.) Appellants contend that Tables 1 and 2
on pages 22 and 24 of the Specification show that organophosphorous
compounds negatively affect the compositions’ properties (App. Br. 15–16).
Appellants’ showing in Tables 1 and 2 is, however, limited to a single,
specific organophosphorous compound C-1 (i.e., oligophosphate based on
bisphenol A). Accordingly, Appellants’ single showing of organophosphate
compound C-1 is insufficient to establish that other organophosphates would
negatively affect the basic and novel characteristics of the claimed invention
(i.e., the mechanical and flame-retardant properties). Nevertheless, the
Examiner is not proposing to add Klatt’s phosphinic salt to a composition
that already contains organophosphate flame retardant. Rather, the
Examiner’s stated rejection is based on substituting Klatt’s phosphinic salt
flame retardant in a particle size as taught by Costanzi for the
organophosphorus flame retardants of Barren (Ans. 21–22). The Examiner
finds, and Appellants do not dispute, that Barren discloses two
embodiments: (1) a composition with no organophosphorous flame
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retardants and (2) a composition having organophosphorous flame retardants
(Ans. 21). In other words, Barren includes a broader disclosure that
optionally includes flame retardants such that the combined teachings of
Barren, Klatt, and Costanzi would have suggested using the particular
phosphinic salt as the sole flame retardant in Barren’s composition.
Appellants argue that Klatt does not suggest talc and Klatt does not
disclose that using talc as a filler would have any effect in particular (App.
Br. 16). Appellants contend that Table 1 of the Specification demonstrates
that including talc improves physical properties of the presently-claimed
compositions (id.). Appellants argue that comparative Example 5 and
inventive Example 6 of Table 2 in the Specification show that by including
talc in Example 6 the invention has a shorter after-burn time and better ESC
properties, which could not have been predicted by the prior art (id.).
Appellants contend that there would have been no reason to select talc over
other fillers (id.).
Though the prior art may disclose a multitude of effective
combinations does not render any particular combination less obvious.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). As
found by the Examiner, Barren discloses that fillers may be used in molding
compositions and Klatt discloses using talc as filler in molding
compositions. We agree with the Examiner that the combined teachings of
Barren and Klatt would have rendered obvious using talc as the filler in
Barren’s composition. That Appellants have recognized another reason to
use talc does not change the fact that the art recognized talc as a known
additive to molding compositions. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007) (“In determining whether the subject matter of a patent
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claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls.”).
Appellants argue that Tables 1 and 2 of the Specification demonstrates
superior and unexpected results (App. Br. 16). Specifically, Appellants
contend that the addition of other phosphorous containing flame proofing
agents such as mono- and oligomeric phosphoric and phosphonic acid esters
have a negative effect when compared with the claimed phosphinic acid salts
(App. Br. 16). Appellants contend that the data contained in Tables 1 and 2
are representative of the claims and demonstrate that the addition of other
phosphorous-containing flameproofing agents such as mono- and oligomeric
phosphoric and phosphonic acid esters have a negative effect when
compared with phosphinic salts (App. Br. 17). Appellants further argue that
the data in Tables 1 and 2 demonstrate that use talc as the filler unexpectedly
improves the ESC properties and after burn of the compositions (App. Br.
16–17).
The Examiner correctly notes the evidence proffered by Appellants is
directed to a particular composition and is not commensurate in scope with
the claimed subject matter (Ans. 22–24). Claim 1 includes myriad of
compositions, while Appellants’ evidence is limited to two compositions.
Moreover, Appellants’ Example 6 of Table 2 in the Specification uses talc as
component D-1. D-1 is described as a particular talc having a particle size
(d50) of 0.5 mm with a specific amount of MgO, SiO2, and Al2O3 content
(Spec. 19). The claims are not limited to a particular talc having a particular
particle size or composition recited in the example and thus the evidence is
not commensurate in scope with the claims. To be probative of
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nonobviousness the proffered evidence must be commensurate in scope with
the claimed invention. In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980).
Appellants’ arguments regarding claims 2–11, 13, 15, and 17–24
amount to an allegation that the Examiner has not established that the prior
art teaches the subject matter of these claims (App. Br. 18–28). These
arguments do not address specifically or otherwise show error in the
Examiner’s specific findings or conclusion regarding the applied prior art
(Ans. 24–26; Reply Br. generally).
Regarding Rejection (2) of claim 12 under § 103, Appellants advance
the same arguments made regarding claim 1 from which claim 12 depends.
Specifically, Appellants argue that the claim excludes organophosphates and
the evidence of unexpected results in Table 1 of the Specification overcomes
any prima facie case (App. Br. 22–23). We are unpersuaded by these
arguments for the same reasons noted above regarding the same arguments
made regarding claim 1.

REJECTION (3): Claim 25
Appellants argue that the transitional phrase “consisting of” in the
claims, excludes the organophosphorous flameproofing compound (App. Br.
29–30). Appellants contend that US ’031 does not disclose that a
flameproof composition could be achieved without the organophosphorous
compound (App. Br. 30). Appellants contend that Klatt’s compositions use
organophosphorous compounds which are precluded from the claim by the
“consisting of” transitional language (id.).
However, the Examiner finds that US ’031 teaches that the halogen-
free phosphorous compound may be present in an amount of 0 to 20 parts of
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Application 12/338,115

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the composition (Ans. 12). In other words, the Examiner finds that US ’031
discloses that the halogen-free phosphorous compound is an optional
component of the composition. This finding is supported by US ’031’s
disclosure that the halogen-free phosphorous compound is “optional” (para.
[066]). Accordingly, we do not find that US ’031 requires the use of
halogen-free phosphorous compounds.
Appellants’ arguments regarding Klatt and Costanzi are misplaced as
the Examiner relies on Klatt to teach the particular phosphinate salt and talc
which may be used as the additional additives in the composition of US ’031
(Ans. 11–13). The Examiner is not attempting to combine the entirety of
Klatt’s or Costanzi’s composition with the composition of US ’031.
On this record and for the above reasons, we affirm the Examiner’s
§ 103 rejections.

REJECTION (3): 35 USC § 112: WRITTEN DESCRIPTION
The Examiner finds that the subject matter of claims 22 and 25, which
recite “an antidripping agent selected from the group consisting of
polytetrafluoroethylene and penaterythritol tetrasterate” lacks written
descriptive support (Ans. 6). The Examiner finds the Specification does not
support using polytetrafluoroethylene as an antidripping agent, but the
Specification discloses penaterythritol tetrasterate as a mold release agent,
not an antidripping agent (Ans. 6).
Appellants do not challenge the Examiner’s rejection of claims 22 and
25 (App. Br. 30–31). Rather, Appellants proffer an amendment proposal to
remove the rejection. Id.
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Because Appellants do not contest the Examiner’s written description
rejection, we summarily affirm the § 112, first paragraph, lack of written
description rejection of claims 22 and 25.

REJECTIONS (4) TO (6): Obviousness-type Double Patenting Rejections
According to the U.S. Patent and Trademark Office’s electronic
database (eDAN), terminal disclaimers dated September 26, 2012 and
approved September 27, 2012, have been filed in the present application
disclaiming any term beyond any patent that may issue in applications
12/338,026, 12/338,416, and 12/338,270. Accordingly, the provisional
obviousness-type double patenting rejections are moot.

DECISION
The Examiner’s decision 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).

ORDER
AFFIRMED

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