Ex Parte Feng

Patent Trial and Appeal Board

Jul 16, 2018

13709190 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/709, 190 12/10/2012
104330 7590 07/18/2018
Dority & Manning, P.A. and Ticona LLC
Post Office Box 1449
Greenville, SC 29602
FIRST NAMED INVENTOR
Ke Feng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CICT-197 (2012P0139) 5044
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KE FENG
Appeal2017-008972
Application 13/709,190
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and
LILAN REN Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
February 24, 2016 decision finally rejecting claims 2, 4, 5, 7, 12-16, and 26-31
("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant is Ticona LLC, which is also identified as the real party in interest.
(Appeal Br. 1 ).
Appeal2017-008972
Application 13/709, 190
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to a thermoplastic composition
comprising three components: (1) a polyphenylene sulfide, (2) glass fibers, and
(3) a boron-containing nucleating agent which comprises boron nitride particles
(Spec. ,r,r 6, 8). The boron nitride particles have a graphitization index of greater
than about 4, an average particle size from about 1 to less than 9 micrometers
and a specific surface area such that the ratio of the average particle size to the
specific surface area is between about 0.001 and about 1 µm/m2/g (Spec. ,r 6).
The claimed composition requires that the thermoplastic composition have a
recrystallization temperature of greater than about 231 °C and a recrystallization
energy of about 25 kJ/ g (Spec. ,r,r 6, 17). Details of the claimed invention may
be found in independent claim 26, which is reproduced below from the Claims
Appendix ( emphasis added):
26. A thermoplastic composition comprising:
a linear polyphenylene sulfide that constitutes from about 30
wt.% to about 80 wt.% of the thermoplastic composition;
glass fibers in an amount of from about 15 wt.% to about 50
wt% of the thermoplastic composition;
a boron-containing nucleating agent in an amount from
about 0.05 wt% to about 2 wt% of the thermoplastic composition,
wherein the boron-containing nucleating agent comprises boron
nitride particles having a graphitization index of greater than about
4, an average particle size of from about 1 to less than 9
micrometers, and a specific surface area, wherein the ratio of the
average particle size to the specific surface area is between about
0.001 and about I micrometers per square meter per gram;
wherein the thermoplastic composition has a
recrystallization temperature of greater than about 231°C and a
recrystallization energy of about 25 kilojoules per gram or more,
as determined according to differential scanning calorimetry.
2
Appeal2017-008972
Application 13/709, 190
REJECTIONS
I. Claims 2, 4, 5, 7, 12, 13, 26-28, and 30 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nakagawa2 in view of Tanaka. 3
II. Claims 14--16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Nakagawa in view of Tanaka, and further in view of
Mitchell, 4 and, optionally, Fontanelle. 5
III. Claim 29 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Nakagawa in view of Tanaka, and further in view of Miyoshi. 6
IV. Claims 2, 4, 5, 7, 12, 13, 26-28, 30, and 31 are rejected under
35 U.S.C. § I03(a) as unpatentable over Nakagawa in view of Clere,7 taken
in view of evidence by Calculator.org. 8
V. Claims 14--16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Nakagawa in view of Clere, taken in view of evidence by
Calculator.org., and, optionally, Fontanelle.
VI. Claim 29 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Nakagawa in view of Clere, taken in view of evidence by
Calculator.org, and further in view of Miyoshi.
2 Nakagawa, US 5,705,550, issued January 6, 1998.
3 Tanaka et al., US 2009/0043026 Al, published February 12, 2009.
4 Mitchell, US 7,432,339 B2, issued October 7, 2008.
5 Fontanelle, "Get Effective Engine Cooling with a Pontiac Pump," posted
on September 20, 2007 on articlesbase.com.
6 Miyoshi et al., JP 10292115 A, (Both Appellant and the Examiner have reference
to the machine translation of record, which we will also rely on).
7 Clere, US 2002/0006511 Al, published January 17, 2002.
8 Description of Specific Surface found on Calculator.org
(http://www.calculator.org/12rogerty.as12x?name=sgecific%20surface ),
printed on April 1, 2015.
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Appeal2017-008972
Application 13/709, 190
DISCUSSION
We decide this appeal on arguments common to all claims and each of
the rejections. Accordingly, we focus our discussion to the rejection of
claim 26 over Nakagawa in view of Tanaka and over Nakagawa in view of
Clere (Rejections I and IV).
The Examiner finds that Nakagawa discloses a thermoplastic
composition comprising the three claimed components, in the following
proportions: (1) polyphenylene sulfide (24.5 to 99.9 wt%), (2) glass fibers
(0 to 73.7 wt%, and (3) boron nitride (0.005 to 0.49 wt%) (Final Act. 4).
The Examiner further finds that each of Tanaka and Clere (as evidenced by
Calculator.org) teach boron nitrides with the claimed physical properties and
that a person of skill in the art would have a reason to use such boron
nitrides in Nakagawa's composition (Final Act. 5---6 and 13-14).
The Examiner implicitly finds that the claimed weight ranges for the
three components would have been obvious over Nakagawa because of the
overlapping ranges disclosed in the reference:
Component Claim 26 Nakagawa
Linear polyphenylene 30-80 wt% 24--99.9 wt%
sulfide
Glass fibers 15-50 wt% 0-73.7 wt%
Boron nitride 0.05-2 wt% 0.005---0.49 wt%
With respect to the final limitations in claim 26 ( that the composition
has a recrystallization temperature of greater than about 231 °C and
recrystallization energy of about 25 kilojoules per gram or more), the
4
Appeal2017-008972
Application 13/709, 190
Examiner finds that: "given that the thermoplastic composition disclosed by
Nakagawa in view of Tanaka[] is identical to [the] presently claimed
thermoplastic composition, it is inherent that the thermoplastic composition"
of the proposed combination would have the claimed properties (Final Act.
6, 15).
The fact that a certain result or characteristic may occur or be present
in the prior art is not sufficient to establish the inherency of that result or
characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)
(reversed rejection because inherency was based on what would result due to
optimization of conditions, not what was necessarily present in the prior art).
In this instance, as argued by Appellants (Appeal Br. 5-6), the ranges of
each component disclosed by Nakagawa fall at least in part outside the
claimed ranges. The prior ranges of the graphitization index and the average
particle size of the boron-containing nucleating agent also differ from those
recited. Accordingly, we do not agree with the Examiner "that the
thermoplastic composition disclosed by Nakagawa in view of Tanaka[] is
identical to [the] presently claimed thermoplastic composition" (Final Act.
6). It is possible that the compositions obtained by combining the teachings
of Nakagawa and Tanaka/Clere would not have the claimed proportions.
Such compositions would not necessarily have the claimed recrystallization
temperatures and energies. 9
9 In fact, Appellant has provided evidence that when the graphitization index
(G.I.) is below 4 (as would be possible using either Tanaka's boron nitride
particles (i-f 32, which recites a G.I. from 0.8 to 10) or Clere's boron nitride
particles (which have a crystallization (or graphitization) index of at least
0.15), the recrystallization temperatures and/or recrystallization energies can
fall outside the claimed ranges (Appeal Br. 14--15).
5
Appeal2017-008972
Application 13/709, 190
The Examiner states that "the claimed properties would be inherently
necessarily be capable of being achieved by the prior art" ( Ans. 21,
emphasis added). However, as noted above, the fact that a certain
characteristic may be present in the prior art is not sufficient to establish
inherency. Rather, the missing limitation must necessarily be present. In
this instance, Appellants have shown that it would be possible that the
asserted combination of the art would not have the claimed properties.
Accordingly, they are not inherent in the combination, requiring reversal of
the rejections.
CONCLUSION
We REVERSE the rejection of claims 2, 4, 5, 7, 12, 13, 26-28, and 30
under 35 U.S.C. § 103(a) as unpatentable over Nakagawa in view of Tanaka.
We REVERSE the rejection of claims 14--16 under 35 U.S.C. §103(a)
as unpatentable over Nakagawa in view of Tanaka, and further in view of
Mitchell, and, optionally, Fontanelle.
We REVERSE the rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Nakagawa in view of Tanaka, and further in view of
Miyoshi.
We REVERSE the rejection of claims 2, 4, 5, 7, 12, 13, 26-28, 30, and
31 under 35 U.S.C. § 103(a) as unpatentable over Nakagawa in view of
Clere, taken in view of evidence by Calculator.org.
We REVERSE the rejection of claims 14--16 under 35 U.S.C. §103(a)
as unpatentable over Nakagawa in view of Clere, taken in view of evidence
by Calculator.org, and, optionally, Fontanelle.
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Appeal2017-008972
Application 13/709, 190
We REVERSE the rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Nakagawa in view of Clere, taken in view of evidence by
Calculator.org, and further in view of Miyoshi.
REVERSED
7