Ex Parte Mulholland

Patent Trial and Appeal Board

Mar 30, 2015

12600284 (P.T.A.B. Mar. 30, 2015)

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.
12/600,284 03/17/2010 Bruce M. Mulholland CICT-3-PCT-US (TIC
2007/U
7470
22827 7590 03/30/2015
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
GUGLIOTTA, NICOLE T
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
03/30/2015 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 BRUCE M. MULHOLLAND
____________

Appeal 2013-005237
Application 12/600,284
Technology Center 1700
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and N. WHITNEY
WILSON, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–32. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellant’s claimed invention is directed to a stabilized polyester
composition and a thermoplastic article formed therefrom. The composition
includes a light stabilizer, an antioxidant, a secondary amine, and a specified
lubricant in addition to thermoplastic copolyester.
Claim 1 is illustrative and reproduced below:
1. A stabilized polyester composition comprising:
a thermoplastic copolyester;
a light stabilizer;
an antioxidant;
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a secondary amine; and
a lubricant that includes a metal salt of a fatty acid having a chain
length of from 22 to 38 carbon atoms, wherein the lubricant constitutes from
about 0.5 wt.% to about 10 wt. % of the composition.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Brown et al. US 3,907,926 Sept. 23, 1975
Ogawa et al. GB 2,033,403 A May 21, 1980
Golder et al. US 5,032,631 July 16, 1991
Maier et al. US 5,164,436 Nov. 17, 1992
Malik et al. US 5,679,733 Oct. 21, 1997
Moskala et al. US 6,551,688 B2 Apr. 22, 2003
Strand et al. US 2005/0113556 A1 May 26, 2005

The Examiner maintains the following grounds of rejection:
Claims 1, 2, 4–7, 9–11, and 24–26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brown in view of Ogawa. Claim 3
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown
in view of Ogawa, and Maier. Claim 8 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brown in view of Ogawa, and Strand.
Claims 12–17 and 21–23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown in view of Ogawa, and Malik. Claims 18–21 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown in view
of Ogawa, and Golder. Claims 27–32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brown in view of Ogawa, Strand,
Malik, Golder, and Moskala.1

1 The Examiner refers to “Lechner” as another reference that is relied upon
(Ans. 10; Final Action 8). However, this reference is not otherwise
identified in the Appeal record, including the body of any of the stated
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We affirm the stated rejections for substantially the fact findings and
the reasons set forth by the Examiner in the Examiner’s Answer. We add
the following for emphasis.
Concerning the first stated rejection, Appellant argues the rejected
claims together as a group (App. Br. 8–15). We select claim 1 as the
representative claim.
There is no dispute concerning: (a) the Examiner’s determination that
Brown teaches or suggests a polyester composition comprising
thermoplastic copolyester, an antioxidant, and a secondary amine
corresponding to the requirements of the composition of representative claim
1 for these constituents and (b) the Examiner’s determination that the
composition of claim 1 differs from Brown in further requiring a light
stabilizer component and a lubricant component (Ans. 3–4; see generally
App. Br.). The Examiner turns to Ogawa and finds a teaching of a
thermoplastic polyester composition that includes, inter alia, a light stabilizer
component (UV absorber) and a lubricant/ nucleating component (metal salt
of montan wax), which components the Examiner has determined to
correspond to the light stabilizer and lubricant components called for in
claim1, including a lubricant component comprising metal salt of a fatty
acid having a carbon atom chain length corresponding to the requirements of
appealed claim 1and which latter component (metal salt of montan wax) is
taught by Ogawa to be employed in an amount overlapping with the claimed

rejections. Accordingly, we do not consider this cited reference as part of
the evidence relied upon by the Examiner.
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weight percent range amount for this lubricant component (Ans. 4; Ogawa,
pp. 1–4).2
Based on the teachings of the applied references, the Examiner has
determined that “it would have been obvious to one of ordinary skill in the
art . . . to add a light stabilizer and a lubricant [(montan wax salt) as taught
by Ogawa] to the thermoplastic composition polyester composition taught
by Brown” to gain the benefits for their addition as taught by Ogawa (Ans.
4–5, 12–13). We agree.
Appellant argues that Ogawa employs glass fiber reinforcements in
his composition, and that absent such an ingredient which is not required by
Brown, one of ordinary skill in the art would have no motivation or
incentive to add the salt of montan wax of Ogawa to the composition of
Brown because the latter ingredient is employed by Ogawa for addressing
problems associated with moldability and clouding at least the latter of
which problems are asserted to be occasioned by the use of glass fibers in
the composition of Ogawa according to Ogawa and which reinforcing glass
fibers are not taught to be employed by Brown (App. Br. 9–12). In addition,
Appellant argues that the claimed composition is attended by unexpected
results as evinced by certain Examples set forth in Appellant’s Specification
(App. Br. 12–14; Reply Br. 2–3).
For reasons articulated by the Examiner (Ans. 12–15), Appellant’s
argument has no merit. As explained by the Examiner, both Ogawa and
Brown are directed to linear polyester compositions and Ogawa teaches that

2 Appellant discloses that salts of montanic acid, including salts derived
from crude montan wax satisfy the claimed carbon chain length
requirements and can be employed as their fatty acid salt lubricant and
further that montanic acid salts are commercially available (Spec. 16–17).
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the metal salts of montanic acid have nucleating capability, which improves
moldability and properties of the molded article associated therewith (Ans.
12–13; Ogawa, p. 1, ll. 18–31). As articulated by the Examiner, these
teachings of Ogawa would have furnished an apparent reason for one of
ordinary skill in the art to add such a known metal salt lubricant for its
nucleating capability and advantages associated therewith to the composition
of Brown even though glass fibers are not required and taught by Brown for
use in the composition of Brown (id.).3
Moreover, for reasons articulated by the Examiner, Appellant’s
Specification evidence asserted by Appellant to show unexpected results is
insufficient to satisfy Appellant’s burden to establish unexpected results that
is reasonably commensurate in scope with the claimed subject matter (Ans.
14–15). In this regard, we observe that the composition of representative
claim 1 is broad in that it does not require any particular thermoplastic
copolyester, light stabilizer, antioxidant, secondary amine, or amounts
thereof and is not limited to the particular Specification composition tested,
including using the amounts of the particular lubricant tested.
It follows that, on this appeal record, we shall sustain the Examiner’s
first-stated obviousness rejection.
Concerning the Examiner’s separate rejection of dependent claim 3
under 35 U.S.C. § 103(a) as being unpatentable over Brown in view of
Ogawa, and Maier, Appellant additionally argues that Maier does not teach
or suggest an acid value for the claimed salt as required by claim 3 (about 1

3 Moreover, Appellant has not satisfactorily explained why the provision of
reinforcing fibers, such as the glass fibers of Ogawa, would not have been a
reasonably suggested addition to the thermoplastic composition of Brown
(see Advisory Action 3).
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to about 15mg/g) and that Maier teaches away from employing fatty acids as
lubricants (App. Br. 15–19; Reply Br. 3–5). Contrary to Appellant’s
contentions, we concur with the Examiner that the combined teachings of
Brown, Ogawa, and Maier would have reasonably suggested employing a
fatty acid salt as claimed having an acid value within the claimed range and
that Maier does not teach away from the use of fatty acids as lubricants
(Ans. 15–17). In this regard, the Examiner’s obviousness position is
buttressed by Ogawa’s teaching that fatty acid salts can be employed in “a
neutral or partially neutralized” state (Ogawa p. 1, ll. 40–42). Moreover, the
mere fact that Maier indicates that montan waxes may need to be used in
limited amounts to avoid clouding hardly constitutes a teaching away from
their use as lubricants (col. 1, ll. 26–29).
On this record, we shall likewise sustain the Examiner’s separate
rejection of claim 3.
As for the other obviousness rejections maintained by the Examiner,
Appellant presents separate arguments only with respect to the separate
rejection pertaining to claims 27–32, which additional arguments are
directed to the Moskala reference as if that reference were applied alone in
the Examiner’s rejection of claims 27–32 under 35 U.S.C. § 103(a) as being
unpatentable over Brown in view of Ogawa, Strand, Malik, Golder, and
Moskala (App. Br. 22–23). For reasons articulated by the Examiner, such
argument is manifestly unpersuasive of error in the stated rejection over the
combined teachings of the applied references (Ans. 18–19).
It follows that we shall sustain all of the obviousness rejections
maintained by the Examiner.

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CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims 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

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