Ex Parte Klepsch

Board of Patent Appeals and Interferences

Sep 10, 2010

10178669 (B.P.A.I. Sep. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILHELM KLEPSCH
____________________

Appeal 2010-001138
Application 10/178,669
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 6-11, 15, and 16 under 35 U.S.C. § 103(a) as
obvious over Klepsch (US 4,731,213, issued Mar. 15, 1988) in view of

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001138
Application 10/178,669

Trabert (US 5,318,737, issued Jun. 7, 1994), as evidenced by Salvado (US
4,794,545, issued Dec. 27, 1988). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant does not argue any claim apart from the others. We select
claim 6 as representative for deciding the issues on appeal. Claim 6 reads as
follows:
Claim 6. A composite plate for forming sanitary articles by
deep drawing comprising:
a coating of polymethyl methacrylate (PMMA) is
arranged on a support to form the plate, wherein said coating
comprises:
a mixture of impact toughness-modified PMMA and
standard PMMA wherein the modulus of elasticity of said
coating mixture is from about 2500 to 2800 MPa.

According to the Specification, the invention concerns a composite
plate from which an insert for sanitary articles, in particular bath tubs,
shower bases, flush bowls and wash basins can be produced by deep
drawing (Spec. 1:1-3). It was known in the art to form such composites
from acrylonitrile-butadiene-styrene (ABS) coated with polymethyl
methacrylate (PMMA) (Spec. 1:6-9). In the invention, the coating further
includes impact toughness-modified PMMA mixed into the standard PMMA
(Spec. 2:32 to 3:2).
The Examiner finds that Klepsch describes a PMMA coated ABS
composite plate that can be deep drawn into a bath tub insert, and that
Trabert teaches adding PMMA-containing impact modifying particles to
PMMA in such a coating to increase the impact strength (Ans. 4). The
2
Appeal 2010-001138
Application 10/178,669

Examiner concludes that “it would have been obvious to one of ordinary
skill in the art at the time the invention was made to add the particles taught
in Trabert to the PMMA resin taught in Klepsch.” (Ans. 4.) The motivation
for doing so, according to the Examiner, would have been “to improve the
resin’s impact resistance.” (Ans. 4.)
The Examiner further finds that one of ordinary skill in the art would
have optimized the concentration of the impact modifying particles within
the PMMA and, in so doing, the modulus of elasticity would necessarily be
optimized as well (Ans. 4-5). The Examiner applies Salvado as evidence of
the known correlation between the addition of impact modifying elastic
material and the modulus of elasticity (Ans. 4-5).
To overcome the rejection, Appellant relies upon declaratory evidence
of unexpected results (Br. 8-9). The Examiner does not find Appellant’s
showing convincing (Ans. 8-9).
II. DISPOSITIVE ISSUES
The following issues arise:
1. Does the evidence of record support the Examiner’s finding that
Trabert’s acrylate-based impact modifier resin is “impact toughness-
modified PMMA” as required by claim 6?
2. Does the evidence support the Examiner’s finding that, as
evidenced by Salvado, a modulus of elasticity within the claimed range of
from about 2500 to 2800 MPa would have been arrived at when optimizing
the concentration of Trabert’s particles?
3. Does the evidence support the Examiner’s determination that the
Appellant’s declaratory evidence is inadequate to show unexpected results?
3
Appeal 2010-001138
Application 10/178,669

We answer each of the questions in the affirmative. We find no
reversible error in the Examiner’s fact finding and application of law,
therefore, we adopt the fact findings and responses to argument presented in
the Answer and add the following primarily for emphasis.
III. DISCUSSION
A. Issue 1
Appellant attempts to draw a distinction between the claimed “impact
toughness-modified PMMA” and Trabert’s particles of acrylate-based
impact modified resin (Br. 4-7; Reply Br. 2-3). In attempting to draw this
distinction, Appellant relies upon a definition of “impact toughness-modified
PMMA” advanced in a Declaration (Br. 4, citing Decl. III, ¶ 4 (see Evid.
Appx. Exhibit 3)). The Examiner did not give weight to this definition
because: (1) it was not part of the original disclosure, (2) it is not an art-
accepted definition, and (3) it is inconsistent with the definition in the
original disclosure (Ans. 5-6). Therefore, before we can determine whether
the evidence supports the Examiner’s finding that Trabert teaches the
claimed “impact toughness-modified PMMA,” we must determine the scope
of the disputed claim language.
According to the Specification, the coating “comprises a mixture of
impact toughness-modified PMMA and standard PMMA.” (Spec. 3:1-2.)
The Specification defines standard PMMA as homo-polymethyl
methacrylates (Spec. 3:2-3).
The Specification defines “impact toughness-modified PMMA” as
“copolymers (alloys) of methyl methacrylate with less than 30% (percent by
mass), preferably less than 10%, of other acrylates (in particular butyl
acrylate, ethyl acrylate or methyl acrylate).” (Spec. 3:3-7.)
4
Appeal 2010-001138
Application 10/178,669

The Specification makes no mention of how the impact toughness-
modified PMMA is formed or even that it is composed of any form of
particles (See generally Spec.).
The Kappacher Declaration III states that:
As used in the claims and in the specification, the impact
toughness-modified PMMA is defined to cover particular
copolymers (alloys) of methyl methacrylate with less than 30%
(percent by mass) of other acrylates produced by mixing
monomeric methyl methacrylate with discrete impact modifying
particles followed by polymerization of the mixture. The pre-
polymerized impact toughness-modified PMMA is then mixed
with standard PMMA to produce the claimed inventive
composite plate.
(Evid. App. Exhibit 3, Kappacher Decl. III, ¶ 4 (emphasis added).)
“In light of the statutory directive that the inventor provide a ‘full’ and
‘exact’ description of the claimed invention, the specification necessarily
informs the proper construction of the claims.” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). “The construction that stays
true to the claim language and most naturally aligns with the patent’s
description of the invention will be, in the end, the correct construction.”
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998). The inventor’s intention, as expressed in the specification, to
specially define or otherwise dictate the correct claim scope is regarded as
dispositive. Phillips, at 1316.
In Phillips, our reviewing court recognized that the PTO determines
the scope of claims by giving claims their broadest reasonable construction
“in light of the specification as it would be interpreted by one of ordinary
skill in the art,” and pointed out that
5
Appeal 2010-001138
Application 10/178,669

the rules of the PTO require that application claims must
“conform to the invention as set forth in the remainder of the
specification and the terms and phrases used in the claims
must find clear support or antecedent basis in the description
so that the meaning of the terms in the claims may be
ascertainable by reference to the description.”

Phillips, at 1316-17 (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) and 37 C.F.R. § 1.75(d)(1).).
We agree with the Examiner that the definition advanced in the
Declaration should not be given weight. Most importantly, the declaratory
definition does not find support in the Specification. The Specification
defines “impact toughness-modified PMMA” more broadly than the
Declaration and Appellant points to no portion of the Specification
providing support for narrowing the Specification’s definition. If the
declaratory definition were adopted, the claim term being defined (“impact
toughness-modified PMMA”) would not be supported or find antecedent
basis in the description and the meaning of the terms in the claims would not
be ascertainable by reference to the description.
Appellant contends that he is entitled to define claim terms in the
Specification and/or during prosecution and cites to district court patent
infringement cases in support (Br. 4-5). We do not find this argument
persuasive. Appellant has chosen to define the term in the Specification. In
such a case, that definition controls. None of the district court cases cited by
Appellant indicate that a definition advanced in a declaration will trump a
definition recited in the Specification.
6
Appeal 2010-001138
Application 10/178,669

We cannot say that the Examiner erred in relying upon the definition
from the Specification, and not the definition in the Declaration, to interpret
“impact toughness-modified PMMA” as used in claim 6.
Trabert, and the combination of Trabert with Klepsch as applied by
the Examiner, suggests a mixture meeting the requirements of claim 6.
Trabert’s particles contain a core and an outer layer of copolymers of methyl
methacrylate with 0.1 to 12 wt.% C1-C4 alkyl acrylate (e.g., methyl acrylate,
ethyl acrylate, butyl acylatate). Therefore, the particles are copolymers as
required by the definition in the Specification and are made from “impact
toughness-modified PMMA.” There is no dispute that the PMMA of
Klepsch’s coating is standard PMMA, nor is there any dispute that there is a
suggestion for mixing the impact modifier resin particles of Trabert in
standard PMMA (Br. 4-7; Reply Br. 2-3). Mixing the particles with
standard PMMA results in mixing impact toughness-modified PMMA with
standard PMMA as claimed.
Moreover, we determine that even under Appellant’s declaratory
definition, Trabert’s particles are “impact toughness-modified PMMA.”
Trabert’s particles are formed by successively polymerizing monomers to
form a multi-layered particle. The successive polymerization includes
mixing monomeric methyl methacrlyate copolymer with pre-polymerized
particles having a core of the copolymer and a layer of elastomeric second
stage polymer previously polymerized onto the core. Therefore, the
particles of Trabert are formed by “mixing monomeric methyl methacrylate
with discrete impact modifying particles [Trabert’s elastomer covered cores]
followed by polymerization of the mixture” as required by the declaratory
7
Appeal 2010-001138
Application 10/178,669

definition. Again, there is no dispute here that there is a suggestion of
mixing the particles of Trabert with the standard PMMA of Klepsch.
The evidence of record supports the Examiner’s finding that Trabert’s
acrylate-based impact modifier resin is “impact toughness-modified
PMMA” as required by claim 6.
B. Issue 2
Appellant contends that “[a]s a matter of further distinction, Salvado
discloses composite materials while Applicant’s invention concerns a multi-
layer semi-finished product that is not a composite material.” (Br. 7.) This
is because, according to Appellant, “a composite material is a material made
of two or more different types of materials such as plastics combined with
fiber and filler to impart new properties to the compound material.” (Br. 7,
citing Decl. III.)
The Examiner acknowledges this distinction, but finds the distinction
irrelevant (Ans. 8).
Claim 6 requires that the modulus of elasticity of the coating mixture
be from about 2500 to 2800 MPa.
Salvado teaches that “[f]or many properties such as elastic modulus,
the total composite property is the linear sum of the same property for each
phase times the volume fraction of that phase present, summed over all of
the phases making up the composite material.” (Salvado, col. 1, ll. 37-41.)
This is called, according to Salvado, the rule of mixtures.
Salvado articulates the rule of mixtures for mixtures of several phases
which generally retain their inherent character within the mixture, of which
composite materials containing fibers are but one species (Salvado, col. 1, ll.
12-22 and ll. 37-53).
8
Appeal 2010-001138
Application 10/178,669

Particles of impact modifier resin dispersed in a matrix resin as taught
by Trabert and suggested by the combination of Klepsch and Trabert
constitutes a mixture for which the rule of mixtures would be understood to
apply. Those particles are described by Trabert as “discrete” and they would
generally retain their inherent character within the mixture just as fibers and
fillers retain their inherent character in a mixture. As found by the
Examiner, and not disputed by Appellant, one of ordinary skill in the art
would have added the particles of Trabert in an amount to increase the
impact strength of the coating (Ans. 4; Br. 7-8).
The evidence supports the Examiner’s finding that in optimizing the
impact strength of Trabert’s mixture, the modulus of elasticity would have
necessarily also have been optimized per the rule of mixtures. See In re
Aller, 220 F.2d 454, 456 (“where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
Appellant contends that “testing of different blends has also shown
that applicant’s claimed modulus of elasticity is not an inherent property of
the blend, but a unique one.” (Br. 9, citing Decl. II, ¶ 12.) Appellant does
not explain how the evidence in ¶ 12 supports the statement that the property
is not inherent. Turning to ¶ 12 of Declaration II, we merely find statements
that various references fail to provide guidance or motivation for producing
the blend having the claimed modulus of elasticity. Under the
circumstances, we do not find the declaratory evidence Appellant relies upon
convincing.

C. Issue 3
9
Appeal 2010-001138
Application 10/178,669

Appellant further contends that he “has compiled considerable test
data comparing applicant’s claimed combination against that of the prior art
that demonstrates the surprisingly unexpected superior results.” (Br. 8,
citing Decl. I, ¶¶ 10 and 11 in support.)
Appellant also states that “[t]he results have proven to be so superior
that competitors have adopted applicant’s claimed combination.” (Br. 9,
citing to Decl. II, ¶ 3 in support.)
Appellant further contends that the showing of unexpected results “is
further bolstered by the fact that through testing, there is no correlation of
MFI to modulus of elasticity with respect to standard PMMA or to a mixture
of impact toughness-modified PMMA and standard PMMA.” (Br. 9, citing
Decl. II, ¶ 10.)
The Examiner responds that Appellant has not compared the claimed
invention to the closest prior art, that Declaration II contains no data in
support of Appellant’s claim that competitors have adopted the claimed
combination based upon the combination’s superiority, and the fact that
there is no correlation between MFI and the modulus of elasticity does not
seem to be relevant (Ans. 8-9).
Paragraphs 10 and 11 of Declaration I appear to present data
comparing blends of impact toughness-modified PMMA and standard
PMMA with a blend of PVdF and PMMA (Decl. I, ¶ 10).
In ¶ 11 of Declaration I, Dr. Kappacher declares that the data of
Exhibit 1 (Test 1 (Graph 1)) shows that the modulus of elasticity of
Appellant’s blend correlates to the loading of the impact modifier into
standard PMMA (Decl. I, ¶ 11), a result that would be predictable based
upon the rule of mixtures enunciated in Salvado (Salvado, col. 1, ll. 37-53).
10
Appeal 2010-001138
Application 10/178,669

Conclusory statements cannot constitute evidence of unexpected
results in the absence of factual support. See In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995). Moreover, Appellants must adequately explain what facts
or data they are relying upon. Appellants’ vague and general statements as
to what the examples show along with the assertion that the results are
superior amount essentially to mere pleading. A mere pleading unsupported
by proof or showing of facts is inadequate. In re Borkowski, 505 F.2d 713,
718 (CCPA 1974).
“[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007). Moreover, “when unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991).
Our review of the portions of the Declarations relied upon by
Appellant reveal that most of the data presented seems to be directed to a
comparison of PMMA/impact modified PMMA to PVdF/PMMA mixtures,
while the closest prior art are Trabert’s exemplified PMMA/impact modified
PMMA mixtures. Appellant does not explain how the data shows
unexpected results in comparison to the closest prior art, i.e., Trabert.
Moreover, adding the impact modified PMMA appears to predictably effect
the modulus of elasticity according to the rule of mixtures rather than
generate an unexpected result.
We further agree with the Examiner that Dr. Kappacher’s bare
statement in Declaration II, ¶ 3, that the claimed invention “has been copied
and is being used in competitor’s sanitary articles because of its superior
11
Appeal 2010-001138
Application 10/178,669

properties” is not backed by any objective evidence. Therefore, this
statement amounts to essentially a mere pleading and is inadequate.
Moreover, as pointed out by the Examiner, Appellant has not
explained why a lack of correlation between MFI to modulus of elasticity is
relevant to the question of unexpected results.
The evidence supports the Examiner’s determination that the
Appellant’s declaratory evidence is inadequate to show unexpected results.
IV. CONCLUSION
Based on the totality of the record on appeal, including due
consideration of the Appellant’s arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103. We, therefore, sustain the rejection
maintained by the Examiner.
V. DECISION
The decision of the Examiner is affirmed.
VI. 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).

AFFIRMED

ssl

WENDEROTH, LIND & PONACK, L.L.P.
1030 15TH STREET, N.W.,
SUITE 400 EAST
WASHINGTON, DC 20005-1503
12