Ex Parte Eipper et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10587997 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/587,997 08/01/2006 Andreas Eipper 12810-00334-US1 4348
30678 7590 03/28/2012
CONNOLLY BOVE LODGE & HUTZ LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
LEE, DORIS L
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
03/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREAS EIPPER, BERND BRUCHMANN,
DIETRICH SCHERZER, JEAN-FRANCOIS STUMBE,
CARSTEN WEISS, and FREDDY GRUBER
____________________

Appeal 2012-000150
Application 10/587,997
Technology Center 1700
____________________

Before: CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over
Gareiss (US 6,084,012, issued July 4, 2000) in view of Davis (GB 2 324
Appeal 2012-000150
Application 10/587,997
2
797, published November 4, 1998). 1 We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on March 8, 2012. 2
We AFFIRM.
Appellants’ invention relates to a molding composition comprising a
thermoplastic polyester, a highly branched or hyperbranched polycarbonate,
and other additives (Spec. 1:5-16). The molding composition has good
flowability characteristics and mechanical properties (Spec. 3:17-26).
Claims 1 and 5 are illustrative:
1. A thermoplastic molding composition comprising:
A) from 10 to 99.99% by weight of at least one
thermoplastic polyester;
B) from 0.01 to 50% by weight of a highly branched or
hyperbranched polycarbonate having an OH number of from 1
to 600 mg KOH/g of polycarbonate (to DIN 53240, Part 2), a
degree of branching from 10 to 99.9%, and both structural and
molecular non-uniformity;
C) from 0 to 60% by weight of other additives;

1 The Examiner also rejects claims 1-14 under the judicially-created doctrine
of obviousness-type double patenting over claims 1-20 of co-pending U.S.
applications 11/996,489 and 11/815,238. Appellants do not traverse the
merits of the double patenting rejections (see generally App. Br.).
Appellants initially request that these rejections be withdrawn and added to
the later filed applications (App. Br. 9). When the Examiner correctly
indicates that withdrawal on such a basis is not appropriate (Ans. 13),
Appellants request withdrawal on the basis that terminal disclaimers were
filed in the co-pending applications (Reply Br. 3). However, as no terminal
disclaimers have yet been filed in the record of the present application, we
summarily affirm the double patenting rejections as Appellants have waived
any appeal of the rejections.

2 We refer to the transcript of the oral hearing herein as “Tr.”
Appeal 2012-000150
Application 10/587,997
3
wherein the total of the percentages by weight of
components A) to C) is 100%.
5. The thermoplastic molding composition according to
claim 1, wherein component B) is obtainable via a process
comprising:
reacting at least one organic carbonate (A) of the general
formula RO[(CO)]nOR with at least one aliphatic,
aliphatic/aromatic or aromatic alcohol (B) which has at least 3
OH groups, with elimination of alcohols ROH to give one or
more condensates (K), where each R, independently of the
others, is a straight-chain or branched aliphatic,
aromatic/aliphatic or aromatic hydrocarbon radical having from
1 to 20 carbon atoms, and where the radicals R may also be
connected to one another to form a ring, and n is an integer
between 1 and 5, or
ab) reacting phosgene, diphosgene or triphosgene with
abovementioned alcohol (B), with elimination of hydrogen
chloride, and
intermolecular reaction of the condensates (K) to give a
highly functional, highly branched, or highly functional,
hyperbranched polycarbonate,
where the quantitative proportion of the OH groups to the
carbonates in the reaction mixture is selected in such a way that
the condensates (K) have an average of either one carbonate
group and more than one OH group or one OH group and more
than one carbonate group.

Appellants’ arguments are principally directed to independent claim 1
(App. Br. 6-7). Appellants separately address claim 5 (id., 8). Any claim
not separately argued will stand or fall with independent claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-000150
Application 10/587,997
4
II. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
A. CLAIM 1
1. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that (a) the
Examiner unreasonably concluded that one of ordinary skill in the art would
have added the polycarbonate disclosed by Davis as a plasticizer in the
thermoplastic polyester composition taught by Gareiss and (b) a prima facie
case of obviousness, if established, is sufficiently rebutted by Appellants’
evidence of an unexpected and superior increase in flowability? We answer
this question in the negative.
2. ANALYSIS
The Examiner finds that Gareiss teaches a thermoplastic polyester
molding composition that includes components A) and C) of claim 1, but
does not disclose including a highly branched or hyperbranched
polycarbonate component B) as recited in claim 1 (Ans. 5). The Examiner
finds that Davis teaches hyperbranched polymers, one of which is a
hyperbranched polycarbonate having the features recited in claim 1 (id.).
The Examiner finds that Davis teaches that “[m]any of the hyperbranched
polymers of the invention have reactive functional groups at the surface . . .
[and] can also be used as reactive plasticizers in thermoplastic composition”
(id.; see Davis, p. 16, ll. 26-32). The Examiner thus concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to add the hyperbranched polycarbonates of Davis to the
thermoplastic polyester composition of Gareiss to receive the expected
Appeal 2012-000150
Application 10/587,997
5
benefits of the polycarbonate behaving like a plasticizer (Ans. 5).
Appellants contend that the teaching in Davis is not specific enough to
have suggested to one of ordinary skill in the art to specifically add the
hyperbranched polycarbonates, among all of the hyperbranched polymers
disclosed in Davis, to a polyester composition, specifically, among all types
of possible thermoplastic compositions (App. Br. 7; Reply Br. 3; Tr. 3:16-25
and 7:5-23). We do not find Appellants’ arguments to be convincing.
Davis teaches that types of hyperbranched polymers suitable for use
as a plasticizer are those with reactive functional groups at the surface
(Davis, p. 16, ll. 26-32). Appellants have provided no convincing evidence
that the hyperbranched polycarbonates taught by Davis do not have reactive
functional groups at the surface of the compound structure, and thus would
not be expected to function as a plasticizer in the manner suggested by
Davis.
Appellants present no convincing evidence that plasticizers are only
common additives in PVC or cellulosic materials and are not generally
known in the art as additives for thermoplastic polyesters (App. Br. 7).
Appellants cite to pages 203-205 and 209-211 of Additives for Plastic
Handbook, Elsevier, 1996, as evidence of the use of plasticizers in
thermoplastic compositions, but do not provide a copy of the evidence in the
record. Accordingly, we accord this evidence little weight. Moreover, we
find Appellants’ arguments to be contrary to the evidence of record. For
example, Gareiss teaches that the thermoplastic polyester molding
composition may also include plasticizers (Gareiss, col. 11, l. 66 to col. 12, l.
2). Appellants have not provided any convincing evidence that distinguishes
between the “reactive plasticizer” taught by Davis and the plasticizer taught
by Gareiss as being a suitable additive (see Tr. 7:20-23). Appellants also
Appeal 2012-000150
Application 10/587,997
6
have not provided any convincing evidence that the “gum” disclosed in
Example 5 of Davis has unsuitable physical properties to be considered a
plasticizer for the thermoplastic polyester of Gareiss (see App. Br. 9;Tr.
3:25-4:5). Appellants’ attorney arguments do not take the place of evidence
in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants further contend that the Examiner’s conclusion of
obviousness is rebutted by evidence of “the dramatic improvement of
flowability [measured as an MVR value] even by adding small amounts of
highly branched or hyperbranched polycarbonate” (App. Br. 6; see also Tr.
4:6-11).3
The Examiner contends that the data presented by Appellants is not
commensurate with the scope of the claimed invention (Ans. 11). In
particular, the range of component A) recited in the claims is from 10 -
99.9% by weight, but Appellants’ data does not provide a comparable MVR
value for any concentrations of A) less than 67% (id.; see Spec. 31:18-33:35,
Tables 1-5).
We agree with the Examiner that the data does not evince that the
improvements exist for the entire scope of the claimed invention,
particularly a composition having smaller concentrations of component A),
e.g., less than 50% by weight. Most of Appellants’ examples that have a
very high MVR value (of greater than 250) do not include any additive
component C) and, thus, are MVR values for compositions having only a

3 We do not consider Appellants’ additional data presented for the first time
in the Reply Brief (Reply Br. 2). Such evidence is not timely presented, and
the Examiner had no practical opportunity to address Appellants’ belatedly
presented evidence. 37 C.F.R. §41.41 (a)(2) (“A reply brief shall not include
any new or non-admitted amendment, or any new or non-admitted affidavit
or other evidence.”).
Appeal 2012-000150
Application 10/587,997
7
very high concentration (95-100%) of component A). Appellants’ data
contains no examples in which the concentration of component A) is less
than 67%. We note that MVR values drop significantly upon a reduction of
component A) even when the same amount of component B) is added. For
example, compare Examples 1 and 6 from Table 1, wherein the MVR value
drops from greater than 250 to 34.4 as the concentration of component A)
drops from 97% to 67%) with the same amount of component B) (Spec. 31).
Thus, Appellants have provided no convincing evidence that an unexpected
“dramatic improvement” in flowability fairly translates across the entire
claimed range of 10-99.9% component A), particularly at concentrations less
than 50%. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even
assuming that the results were unexpected, Harris needed to show results
covering the scope of the claimed range. Alternatively Harris needed to
narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.’”).
Accordingly, the weight of the evidence taken as a whole supports the
Examiner’s conclusion of obviousness under the law.
B. CLAIM 5
1. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: does the evidence support the Appellants’ view that
the Examiner erred in finding that Davis teaches the hyperbranched
polycarbonate particularly recited in claim 5? We answer this question in
the negative.
Appeal 2012-000150
Application 10/587,997
8
2. ANALYSIS
Claim 5 is a product-by-process claim. We agree with the Examiner
that it is the patentability of the product defined by the claim, rather than the
process for making it that we must gauge in light of the prior art. In re
Wertheim, 541 F.2d 257, 271 (CCPA 1976); In re Brown, 459 F.2d 531, 535
(CCPA 1972). As such, the Examiner finds that Davis describes an identical
hyperbranched polycarbonate compound, even though it is made by a
different process (Ans. 6).
Appellants contend that the claimed hyperbranched polycarbonates
are structurally distinct from Davis’ polycarbonates because the claimed
polycarbonates do not contain imidazolide end groups, as taught by Davis,
which are unstable, easily hydrolyze, and the resulting imidazole has to be
removed from the reaction mixture (App. Br. 8).
Appellants’ arguments fail to convince us of a structural distinction
between Davis’ hyperbranched polycarbonates and the hyperbranched
polycarbonates made by the process recited in claim 5. For example, Davis
teaches polymerizing a compound having a single hydroxyl group (A) and
two or more imidazolide groups (B) to form a hyperbranched polymer
having terminal imidazolide groups (Davis, p. 9, ll. 9-21). Davis further
teaches that, in just such an AB2 structure, the terminal imidazolide groups
can be reacted in a further step to convert them to different groups if desired
(Davis, p. 6, ll. 4-11; see also Ans. 13). For example, Davis further teaches
that the imidazolide of a diol can be reacted with a triol or the imidazolide of
a triol can be reacted with a diol to produce a hyperbranched polycarbonate
(Davis, p. 16, ll. 1-3 and 18-21). Thus, the mere presence of imidazolide
groups upon polymerization does not, without more, distinguish the
Appeal 2012-000150
Application 10/587,997
9
hyperbranched polycarbonates that are formed once the imidazolide groups
have been further reacted.
Appellants also contend that, unlike the hyperbranched
polycarbonates of the claimed invention, Davis’ hyperbranched
polycarbonates have poor processability, cause massive fogging, and are
prone to forming mold deposits (Ans. 9).
Appellants direct us to no convincing evidence of a difference in
properties between the hyperbranched polycarbonate structure prepared as
taught by Davis and as recited in claim 5. As mentioned above, Appellants’
attorney arguments do not take the place of evidence in the record. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
When asked during oral arguments, Appellants’ attorney did not know
how the structure and properties of the hyperbranched polycarbonates would
be distinguished, when the imidazolide groups were further reacted to form
hyperbranched polycarbonates, as taught by Davis (Tr. 8:9-18).
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
IV. DECISION
We affirm the Examiner’s decision.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

Appeal 2012-000150
Application 10/587,997
10
AFFIRMED

cu