Ex Parte LI

Patent Trial and Appeal Board

Jul 28, 2014

12156897 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte XIANGYANG LI
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Appeal 2014-006094
Application 12/156,8971
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-15, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 According to the Appellant, the real party in interest is Bayer MaterialScience
LLC of Pittsburgh, Pennsylvania. Appeal Brief dated March 11, 2014 (“Br.”), at 2.
2 A previous Decision on Appeal was entered in the instant Application on
September 30, 2011 (cited herein as “Decision”), affirming the Examiner’s
rejections of claims 1-14 under 35 U.S.C. § 103(a) in view of the same references
relied on in the § 103(a) rejections in this appeal. The issues raised in this appeal
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Claims 1 and 15 are representative of the subject matter on appeal and are
reproduced below from the Claims Appendix of the Appeal Brief dated March 11,
2014 (“Br.”). The limitations at issue are italicized.
1. A thermoplastic composition having antimicrobial properties
comprising 100 parts by weight of a resin blend of component
(i) (co)polycarbonate and component (ii) (co)polyester wherein the
weight ratio (i)/(ii) is 99/1 to 1/99, and 1 to 25 parts per 100 parts by
weight of resin blend of (iii) a grafted elastomeric (co)polymer and
(iv) an amount of antimicrobial agent containing zeolite in particulate
form, hydrotalcite and at least one oxide of a metal selected from the
group consisting of silver, copper, zinc, mercury, tin, lead, bismuth,
cadmium, chromium and thallium, said amount sufficient to impart
antimicrobial efficacy to said composition,
wherein the thermoplastic composition has a low temperature
at -20ºC notched Izod impact strength at 3.2 mm thickness of 12.5 ft-
lb/in.
15. A thermoplastic composition having antimicrobial properties
comprising 100 parts by weight of a resin blend of component (i)
(co)polycarbonate and component (ii) (co)polyester wherein the
weight ratio (i)/(ii) is 99/1 to 1/99, and 1 to 25 parts per 100 parts by
weight of resin blend of (iii) a grafted elastomeric (co)polymer and
(iv) an amount of antimicrobial agent comprising a material system
that contains 15-25% zeolite, 65-75% metal oxide and 8-12%
hydrotalcite, the % all occurrences being relative to the weight of the
system, said amount sufficient to impart antimicrobial efficacy to said
composition, wherein the thermoplastic composition has a low
temperature at -20ºC notched Izod impact strength at 3.2 mm
thickness of 12.5 ft-lb/in.
The claims on appeal stand rejected as follows: claims 1-15 under 35 U.S.C.
§ 112, first paragraph, based on the written description requirement; claims 1-5,
10, 11, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over the combination

are similar to the issues raised in the previous appeal, and the preponderance of the
evidence of record continues to weigh in favor of a conclusion of obviousness.
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of Freitag3 and Tanimoto4; claims 6-9 and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Freitag, Tanimoto, Lever,5 and Appleton6;
and claim 15 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Freitag, Tanimoto, Lever, and Appleton.
B. DISCUSSION
1. Rejection under 35 U.S.C. § 112, first paragraph
Claims 1 and 15 recite, in relevant part, that “the thermoplastic composition
has a low temperature at -20ºC notched Izod impact strength at 3.2 mm thickness
of 12.5 ft-lb/in.” Br. 20, 22. The Examiner finds that the Appellant “discloses a
particular embodiment which has a particular Izod notched impact strength, i.e.
12.5 ft-lb/in” on page 13 of the Specification. Final Act. 2, 3.7 The Examiner,
however, finds “there is no support in the Specification, as originally filed, for the
presently claimed Izod impact strength of 12.5 ft-lb/in for . . . all compositions
which [are] encompassed by the present claims.” Final Act. 2-3; see also Ans. 4
(noting that the claims comprise any number of embodiments, while the
Specification discloses one embodiment within the scope of claims 1 and 15).8
In response, the Appellant directs our attention to LizardTech, Inc. v. Earth
Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005), and generally contends
that “one skilled in the art would recognize [the Appellant] was in possession of
the full scope of the claimed invention.” Br. 6.

3 US 5,310,793, issued May 10, 1994.
4 US 6,071,542, issued June 6, 2000.
5 US 6,187,456 B1, issued February 13, 2001.
6 WO 97/49761, published December 31, 1997.
7 Final Office Action dated July 11, 2013.
8 Examiner’s Answer dated April 23, 2014.
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Claims 1 and 15 are generic claims which encompass numerous
thermoplastic compositions. See Spec. 2, l. 9-11, l. 6. However, only one
composition having the claimed impact strength is described in the original
disclosure. Spec. 13, Table 1 (“Inventive composition”). In LizardTech, the Court
explained that a single embodiment supports a generic claim “only if the
specification would ‘reasonably convey to a person skilled in the art that [the
inventor] had possession of the claimed subject matter at the time of filing[.]’”
LizardTech, 424 F.3d at 1346 (citing Bilstad v. Wakalopulos, 386 F.3d 1116, 1125
(Fed. Cir. 2004)). The Appellant’s general allegation that “one skilled in the art
would recognize [the Appellant] was in possession of the full scope of the claimed
invention” does not rise to the level of such a showing. See Br. 6.
For the reasons set forth above and in the Examiner’s Answer dated April
23, 2014, the § 112, first paragraph, rejection is sustained.
2. Rejections under 35 U.S.C. § 103(a)
There is no dispute on this record that Freitag discloses a resin comprising a
mixture of polycarbonate, polyalkylene terephthalate, and a grafted elastomer in
amounts that either overlap or are within the ranges recited in claims 1 and 15.
Final Act. 4-5; 12-13. The Examiner relies on Tanimoto as disclosing an
antimicrobial agent comprising zeolite, hydrotalcite, and zinc oxide. Final Act. 5,
14; see also Tanimoto, col. 9, ll. 9-28. The Examiner finds that the antimicrobial
agent disclosed in Tanimoto lessens the discoloration of organic polymers, such as
ABS resin and polyester resin, under the influence of heat during processing. Final
Act. 5-6, 14. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to add the antimicrobial agent of Tanimoto to the
thermoplastic composition of Freitag “to obtain a polymeric composition with
reduced discoloration during processing.” Final Act. 6, 14.
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The Appellant does not direct us to any error in the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art to add the
antimicrobial agent of Tanimoto to the thermoplastic composition of Freitag.
Rather, the Appellant argues that the zeolite disclosed in Tanimoto is surface-
treated and Tanimoto does not teach “the effect of different antimicrobial systems
on discoloration and impact strength without coating the antibacterial zeolite as is
instantly claimed.” Br. 11. The Appellants also argue:
The present invention provides a material having a lighter color than
the control and comparative samples and exhibit no deterioration of
low temperature (-20C) impact strength compared to the control,
whereas the comparative samples exhibit deterioration of low
temperature impact strength due to the addition of antimicrobial
additives. In contradistinction, the control sample of Tanimoto et al.
has the highest hunter whiteness (table 1), not the inventive samples.
Br. 11.
The Appellant’s arguments are not persuasive of reversible error. Claims 1
and 15 do not exclude the surface-treatment disclosed in Tanimoto. Likewise, the
thermoplastic compositions recited in claims 1 and 15 are not limited to any
particular color. Therefore, it is of no moment that the zeolite disclosed in
Tanimoto is surface-treated or that the control sample of Tanimoto may have
higher hunter whiteness than a polymer prepared with Tanimoto’s inventive
zeolite. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (patentability may not
be based on limitations not present in the claims).
To the extent that the Appellant is arguing that the claimed thermoplastic
composition exhibits “unexpected results,” the Appellant’s evidence is not
probative. The Appellant has not directed us to any evidence establishing that a
relationship exists between hunter whiteness and the impact strength required by
the claims. Therefore, any comparison between hunter whiteness of the
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Appellant’s “Inventive composition” described on page 13 of the Specification and
hunter whiteness of Tanimoto’s examples is not commensurate in scope with the
claims on appeal. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)
(objective evidence of non-obviousness must be commensurate in scope with the
claims).
The Appellant also compares the impact strength of the Appellant’s
“Inventive composition” with the impact strength of the comparative examples on
page 13 of the Specification. Br. 11. The Appellant, however, has not directed us
to any evidence demonstrating that the Appellant’s comparative examples are
fairly representative of the closest prior art. See In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (“an applicant relying on comparative tests to rebut a prima
facie case of obviousness must compare his claimed invention to the closest prior
art”). Moreover, the Appellant has not directed us to any evidence establishing
that the impact strength of the Appellant’s “Inventive composition” reported in
Table 1 on page 13 of the Specification would have been “unexpected” by one of
ordinary skill in the art. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in
order for a showing of “unexpected results” to be probative evidence of non-
obviousness, the applicant must establish that the difference between the results
obtained through the claimed invention and those of the prior art would not have
been expected by one skilled in the art at the time of invention).
Claims 6-9, 12, and 15 recite amounts of antimicrobial agent, zeolite, metal
oxide, and hydrotalcite. Br. 20-22. The Examiner relies on Lever and Appleton to
establish that these amounts would have been obvious to one of ordinary skill in
the art. Final Act. 10-12, 14-16.
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The Appellant argues that Appleton only discloses a zinc oxide (70%)
mixture with partially silver and sodium ion-exchanged zirconium phosphate
(30%) and there is no suggestion to extend this teaching to other mixtures. Br. 14.
This argument was addressed in our previous Decision. Decision 5. Suffice
it to say that the evidence of record establishes that mixtures of antimicrobial
zeolite and zinc oxide were known in the art, and Appleton is evidence that, at the
time of the Appellant’s invention, it was known to use as much as 70% of zinc
oxide in an antimicrobial agent. Decision 5; Final Act. 11, 15. We also found that
the amount of zinc oxide in the antimicrobial agent of Tanimoto is a result-
effective variable. Decision 5. In this appeal, the Appellant has not directed us to
any evidence to the contrary.
As for Lever, the Appellant argues that Lever does not teach the
combination of an antimicrobial additive, zinc oxide, and hydrotalcite and does not
teach the ratio of these components. Br. 14.
This argument is not persuasive of reversible error. First, it fails to consider
the prior art as a whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test
for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art). The Examiner relies on Tanimoto,
not Lever, to establish that an antimicrobial agent comprising zeolite, zinc oxide,
and hydrotalcite was known in the art at the time of the Appellant’s invention.
Final Act. 5, 14. Second, the claims on appeal do not recite a ratio of zeolite/zinc
oxide/hydrotalcite. Rather, the claims recite amounts of zeolite, zinc oxide, and
hydrotalcite. See claims 9, 12, and 15. On appeal, the Appellant has not directed
us to any harmful error in the Examiner’s conclusion that the claimed amounts of
zeolite, zinc oxide, and hydrotalcite would have been obvious to one of ordinary
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skill in the art based on the prior art of record or demonstrated that the Examiner’s
underlying factual findings are erroneous.
Finally, the Appellant argues that the examples in Lever “demonstrate
improvement in color change . . . but do not imply any improvement in the
absolute color (e.g., the initial lightness L*).” Br. 14. However, the claims on
appeal are not limited to any particular color. Self, 671 F.2d at 1348.
For the reasons set forth above and in the Examiner’s Answer dated April
23, 2014, the § 103(a) rejections are sustained.
C. DECISION
The decision of the Examiner 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)(1).
AFFIRMED

cdc