Ex Parte Heuer et al

Patent Trial and Appeal Board

Mar 20, 2013

11157092 (P.T.A.B. Mar. 20, 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.
11/157,092 06/20/2005 INV001Helmut-Werner Heuer PO-8470/BMS041055 6435
23416 7590 03/20/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
03/20/2013 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 HELMUT-WERNER HEUER
and
MELANIE MOTHRATH
____________

Appeal 2011-012191
Application 11/157,092
Technology Center 1700
____________

Before ROMULO H. DELMENDO, GEORGE C. BEST, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final
rejection of claims 2 and 4-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Appellants identify the real party in interest as “Bayer MaterialScience
AG.” Appeal Brief filed February 8, 2011 (“Br.”) at 1.
App
App
comp
orga
stabi
Spec
repro
eal 2011-0
lication 11
The App
rising pol
nic sulfur-
lizes the p
ification (
duced bel
2.
polycarb
wherein
one com
a)

12191
/157,092
ST
ellants cla
ycarbonat
containing
olycarbon
“Spec.”) 1
ow:
A thermo
onate and
said ester
pound sele
comp
where
R1 ind
unsub
R2 an
hydro
for th
where
R1 ha
m den
ATEMEN
im a therm
e and a spe
acid. Acc
ate against
, l. 8 to 3,
plastic mo
an ester o
of organic
cted from
ounds of f
in
ependentl
stituted or
d R3 mutua
gen, C1-C6
e radical
in
s the mean
otes 0 or 1
2
T OF TH
oplastic m
cified am
ording to
exposure
l. 24. Rep
lding com
f organic s
sulfur-con
the group
ormula (I)
y stands fo
halogen-s
lly indepe
alkyl or C

ing given

E CASE
olding co
ount of a p
the Appel
to high tem
resentative
position c
ulfur-cont
taining ac
consisting

r hydroge
ubstituted
ndently st
4-C30 alky
above,
mposition
articular e
lants, the e
peratures
claim 2 i
omprising
aining acid
id is at lea
of:
n or for
C1-C20 alk
and for
l carboxy

ster of an
ster
.
s

,
st
yl,
l or

App
App
eal 2011-0
lication 11
b)
c)
d)
12191
/157,092
n stan
comp
where
R1 ha
A ind
alkyl,
l stand
comp
where
where
and
R4 sta
follow
where
comp
ds for a w
ounds of f
in
s the mean
ependently

s for 2 or
ounds of f
in
in R1 and
nds for C4
ing radica
in R1 has
ounds of f
3
hole numb
ormula (II
ing given
stands fo
3,
ormula (IV
n have the
-C30 alkyl
l

the meanin
ormulae (V
er from 0
)

above,
r hydrogen
)
meaning
carboxyl,
g given ab
IIa), (VII
to 8,
or for C1
given abov
or for the
ove, and
b), (Ib), (I
-C12

e,
Vb)
App
App
eal 2011-0
lication 11
e)
12191
/157,092
where
R1 an
R5 an
C1-C2
halog
R11 in
C4) al
comp
in
d n have th
d R6 indep
0 alkyl, wh
en, and
dependent
kyl amino
ounds of f
4
e meaning
endently s
erein alky
ly stands f
, and
ormula (V
given abo
tand for hy
l can be su
or hydrog
III)
ve, and
drogen or
bstituted
en or di-(C
for
by
1-

App
App
Br. 1
eal 2011-0
lication 11
f)
g)
0-14 (Cla
12191
/157,092
where
R1 an
comp
where
and
comp
where
R1 an
where
up to
polyc
ims App’x
in
d A have t
ounds of f
in R1 and
ounds of f
in
d A have t
in the este
100 ppm r
arbonate.
.).
5
he meanin
ormula (X
A have the
ormula (X
he meanin
r is presen
elative to t
g given ab
)
meaning
I)
g given ab
t in a posi
he weight

ove and

given abo

ove, and
tive amoun
of the
ve
t of
Appeal 2011-012191
Application 11/157,092
6
The Examiner rejected claims 2 and 4-8 under 35 U.S.C. § 103(a) as
unpatentable over Kanayama.2 Examiner’s Answer entered May 9, 2011
(“Ans.”) 4-7.

DISCUSSION
The Appellants argue claims 2 and 4-8 together. Br. 7-8. Therefore,
we confine our discussion to claim 2, which we select as representative.
Claims 4-8 stand or fall with claim 2. 37 C.F.R. § 41.37(c)(1)(vii).
The Appellants do not dispute the Examiner’s finding, Ans. 4-5, that
Kanayama describes a thermoplastic molding composition comprising
polycarbonate and a sulfonic acid-based ionizing radiation stabilizer,
wherein the stabilizer is present in a range of amounts that overlaps the
range recited in claim 2 (“positive amount of up to 100 ppm relative to the
weight of the polycarbonate”). Br. 7-8. Nor do the Appellants contest the
Examiner’s finding, Ans. 4, that Kanayama’s 1,2-bis(tosyloxy)ethane
ionizing radiation stabilizer is a compound falling within the scope of
formula (VIIa), as recited in claim 2. Id. Rather, the Appellants argue that
Kanayama provides no reason or motivation to select 1,2-
bis(tosyloxyethane) from a myriad of disclosed stabilizer compounds. Id.
We find no persuasive force in the Appellants’ argument. Kanayama
describes several classes of compounds that are suitable as the ionizing
radiation stabilizer, including sulfonic acid-based compounds. Kanayama
¶¶ [0074]-[0090]. Kanayama teaches that the sulfonic acid-based
compounds include various compounds, including 1,2-bis(tosyloxy)ethane.

2 U.S. Patent Application Publication 2001/0034419 A1 published October
25, 2001.
Appeal 2011-012191
Application 11/157,092
7
¶¶ [0126]-[0128]. While the Appellants are correct that Kanayama discloses
a large number of possible stabilizer compounds, that fact alone does not
negate a conclusion of obviousness because the reference teaches that any of
the identified compounds would be suitable as an ionizing radiation
stabilizer. See, e.g., Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of effective
combinations does not render any particular formulation less obvious.”); In
re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of
claims affirmed in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands’ of compounds.”).
For these reasons, and those given by the Examiner, we uphold the
Examiner’s rejection.

SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 2 and 4-
8 as unpatentable over Kanayama 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).
AFFIRMED

tc