Ex Parte Haese et al

Patent Trial and Appeal Board

Jun 5, 2013

11312162 (P.T.A.B. Jun. 5, 2013)

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
111312,162 12120/2005 Wilfried Haese P086221BMS041123 3309
23416 7590 06105/2013 EXAMINER
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP

POBOX2207
HIGGINS, GERARD T
WILMINGTON, DE 19899-2207
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
06/05/2013 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 WILFRIED HAESE,
BURKHARD REITZE, MICHAEL ROPPEL,
MICHAEL PREIN, and ALEXANDER MEYER
____________

Appeal 2012-001148
Application 11/312,162
Technology Center 1700
____________

Before TERRY J. OWENS, MARK NAGUMO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek relief from the Examiner's final rejection of
Claims 11, 14-16, 19, and 20 directed to a flat substrate prepared by
continuous injection molding.
We AFFIRM.
Representative Claim 11 reads as follows:
11. A flat substrate prepared by continuous injection molding and
comprising a polymeric material comprising a polycarbonate prepared
by a phase interface process from one or more bisphenols and
phosgene, wherein said phosgene is present in an excess of from 8 to
17 mol % during said process based on the total amount of said one or
more bisphenols, wherein said flat substrate has an electric field and
an integral value of said electric field of from -30 to 0 kV/m, as
determined within five minutes of molding at a distance of 100 mm
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Application 11/312,162

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from said flat substrate, and an integral value of said electric field of
from 0 to +25 kV/m, as determined within 180 to 185 minutes of
molding at a distance of 100 mm from the surface of said flat
substrate, and wherein said flat substrate comprises a surface.

Appellants present no argument contesting (1) the rejection of
Claims 11, 14-15, 19 and 20 under 35 U.S.C. § 112 ¶ 1; or (2) the
provisional rejection of Claims 11, 14-15, 19 and 20 on the ground of non-
statutory obviousness-type double patenting. Compare Ans. 5, 10-11 to
App. Br. 3-5. We thus summarily affirm these uncontested rejections.
Appellants contest the rejections of Claims 11, 14-15, 19 and 20 under
35 U.S.C. § 103(a) as unpatentable over (1) Kauth1 in view of Appellants’
admissions; and (2) Horn2 in view of Kauth and Appellants’ admissions.
Ans. 6, 8. Appellants do not separately argue the patentability of any claim.
App. Br. 3-5. All appealed claims thus stand or fall with Claim 11.
We affirm the rejections of Claims 11, 14-15, 19 and 20 under 35
U.S.C. § 103(a) for the reasons stated in the Answer and below.
The Examiner finds that Kauth expressly or inherently discloses each
limitation of Claim 11 but for the use of “a continuous injection molding
process.” Ans. 6 (citations to Kauth omitted). The Examiner concludes that
it would have been obvious to use a continuous injection molding process in
Kauth in view of Appellants’ admissions that the process was known in the
art. Id. (citing Spec. 18:20-21; 20:14-16). The Examiner further finds that
“[i]njection molding of polycarbonate is ubiquitous in the art, and one of

1 US 6,613,868 B2, issued September 2, 2003.
2 US 3,787,359, issued January 22, 1974.
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Application 11/312,162

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ordinary skill would know to use any injection-molding process, including
any conventional process in the art.” Id. at 6-7 (bridging sentence).
Appellants do not contest these factual findings, App. Br. 3-5, but
argue that a disk produced using a “phosgene excess to 8 to 17 mol %” as
specified in Claim 11 exhibits “unexpected results” relative to “a disk
produced using a phosgene excess outside the range of from 8
to 17 mol %[.]” App. Br. 4 (second full paragraph). By way of evidentiary
support, Appellants compare a single inventive example (using “a phosgene
excess of 16.2 mol %”) to a single comparative example (using “a phosgene
excess of 20.1 mol %”). Id. (citing Spec. Examples 1 and 2).
In the Examiner’s view, Appellants’ evidence is unconvincing
“because it does not compare the closest prior art to the claimed invention.”
Ans. 12. The controlling fact here, however, is that Appellants nowhere
distinguish the inventive polycarbonate (produced using a phosgene excess
of 8 to 17 mol %) from Kauth’s polycarbonate (produced using a phosgene
excess of 12 or 14 mol %). Id. at 6, 12 (Kauth’s polycarbonate is produced
using a phosgene excess of 12 or 14 mol %); see generally App. Br. 3-5
(nowhere disputing that fact). Where the prior art is shown by the Examiner
to utilize a phosgene excess that falls squarely within the range specified in
Claim 11, Appellants’ evidence of unexpected results based on that range is
ineffective to rebut the prima facie showing of obviousness.
For the same reasons, Appellants’ evidence is ineffective to rebut the
prima facie showing that Claim 11 is unpatentable over Horn in view of
Kauth and Appellants’ admissions. Ans. 8, 13 (Horn’s process for making
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Application 11/312,162

4
polycarbonate uses phosgene excess of 10 mol %); see App. Br. 5 (alleging
unexpected results where phosgene excess is from 8 to 17 mol %).
Nor are we persuaded by Appellants’ further argument a skilled
artisan would have had no reason “to combine the disclosures of Horn and
Kauth” because “it would not necessarily be predictable to the skilled artisan
that the polycarbonate of Horn could successfully be used as a substrate to
make the optical recording media taught by Kauth.” Id. On that point,
Appellants argue that “Horn gives no indication that its process results in
polycarbonate of comparable quality in terms of yellowness index and
terminal phenolic OH group content.” Id. Appellants’ argument is
unpersuasive for the reasons stated by the Examiner. Ans. 12-13. In
particular, Horn discloses a process that produces “colorless” polycarbonate
of “high purity[.]” Ans. 13 (quoting Horn 2:15; 6:51-52); see Horn 6:3-9
(polycarbonate may be used in “the manufacture of safety glass”).
For the reasons stated above and in the Answer, we thus affirm the
decision of the Examiner rejecting Claims 11, 14-16, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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