Ex Parte Papke

Board of Patent Appeals and Interferences

Oct 13, 2009

10506553 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICOLAI PAPKE
____________

Appeal 2009-004447
Application 10/506,553
Technology Center 1700
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Decided: October 13, 2009

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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and PETER F.
KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 2, 7, 9-11 and
15-27. Claim 1 is illustrative:
1. A polyacetal molding composition comprising
a) from 20 to 99% by weight of a polyacetal homo-
or copolymer,
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b) from 0.1 to 80% by weight of an additive, and
c) from 0.00001 to 0.005% by weight of a catalyst

which catalyzes a chemical reaction between the
polyacetal matrix polymer and the surface of the additive,
where the catalyst does not comprise the element boron
and is not a Brönsted acid and wherein the catalyst is
selected from the group consisting of ethyltriphenyl-
phosphonium bromide, tetraphenylphosphonium
bromide, tetrabutylphosphonium bromide, stearyltributyl-
phosphonium bromide, triphenylphosphane, n-butyl
titanate, and their mixtures.

The Examiner relies upon the following references as evidence of
obviousness:
Natarajan US 4,480,071 Oct. 30, 1984
Lindner US 4,683,267 Jul. 28, 1987
Bederke US 5,426,156 Jun. 20, 1995
Yabuta US 5,889,115 Mar. 30, 1999
Sharma US 6,090,319 Jul. 18, 2000
Miyawaki JP 06-240105A Aug. 30, 1994

Appellant’s claimed invention is directed to a molding composition
comprising a polyacetal homo-or copolymer, an additive, such as reinforcing
fiber, and a catalyst that may be, inter alia, n-butyl titanate.
Appealed claims 1, 2, 7-9, 11, 15-17 and 18-27 stand rejected on the
ground of non-statutory obviousness-type double patenting over claims 1, 4,
9, 10-12, and 16-24 of U.S. Patent No. 7,169,887 in view of Laughner. Also
the appealed claims stand rejected under 35 U.S.C. § 103(a) as follows:
(a) claims 1 and 27 over Miyawaki in view of Lindner,
(b) claims 1 and 27 over Miyawaki in view of Lindner and
Yabuta,
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(c) claims 1 and 27 over Miyawaki in view of Lindner and
Bederke,
(d) claims 1, 2, 7, 11 and 18-20 over Natarajan in view of
Lindner,
(e) claims 1, 2, 7, 11, 15, 16, and 21-23 over Natarajan in view
of Lindner and Yabuta,
(f) claims 1, 2, 7, 11, 15, 17, 24-26 over Natarajan in view of
Bederke,
(g) claims 9 and 10 over Natarajan in view of Lindner, Bederke,
or Yabuta further in view of Sharma.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner’s
reasoned analysis and application of the prior art, as well as her cogent
disposition of the arguments raised by Appellant. Accordingly, we will
sustain the Examiner’s rejections for the reasons set forth in the Answer, and
we add the following for emphasis only.
Appellant does not separately argue all the rejections lodged by the
Examiner but, instead, addresses the rejections based on Miyawaki as a
primary reference as a group, and does likewise with the rejections based on
Natarajan as a primary reference.
We consider first the § 103 rejections based on Miyawaki as a primary
reference. Appellant does not dispute the Examiner’s factual determination
that Miyawaki, like Appellant, discloses a molding composition comprising
the presently claimed polyacetal polymer, an additive and a catalyst, such as
triethylamine. As recognized by the Examiner, Miyawaki does not disclose
one of the specifically claimed catalysts. However, the Examiner cites
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Lindner for teaching the equivalency of triethylamine and one of the claimed
catalysts, butyl titanate, as an esterification catalyst. Accordingly, the
Examiner concludes that it would have been obvious for one of ordinary
skill in the art to substitute butyl titanate for the triethylamine catalyst of
Miyawaki. Significantly, Appellant has offered no argument in rebuttal with
respect to the obviousness of such a substitution.
Rather, Appellant contends that Miyawaki teaches a minimum amount
of 0.01 weigh percent of catalyst which is double the maximum amount of
0.005 weight percent. Appellant emphasizes Miyawaki’s teaching that the
reaction cannot fully progress and be effective if insufficient amount of
catalyst is used. Appellant maintains that Miyawaki teaches away from
using the amount of catalyst disclosed by Lindner that falls within the
claimed range.
We are not persuaded by Appellant’s argument. The Examiner
presents the following convincing rationale that has not been refuted by
Appellant:
Given the teachings of Lindner, that one desires to use as low as
an amount of catalyst [as] possible to prevent coloring, the
Examiner finds that one of ordinary skill would be motivated to
decrease the amount of catalyst. Further, one of ordinary skill
would recognize that different catalysts require different
amounts to be effective and as such when one used the catalyst
of Lindner one would not necessarily use the range taught by
Miyawaki.… Further, Lindner teaches that it is beneficial to
have a pure starting material, without acid or base impurities,
because by doing such one can use less catalyst. One looking
to decrease the color of the final product, or, one looking to
spend less money on expensive catalyst, would thusly look to
the teachings of Lindner to motivate them to use less catalyst in
the composition. (Ans. 11-12, para. bridging)

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We agree with the Examiner that one of ordinary skill in the art would
have found it obvious, when selecting butyl titanate for the composition of
Miyawaki, to use as little as possible to reduce coloring and cost. The
skilled artisan would have needed to resort to no more than routine
experimentation to determine the optimum level of catalyst for use in the
molding composition. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Furthermore, it is well settled that where patentability is predicated upon a
change in a condition of a prior are composition, such as a change in
concentration or the like, the burden is on the Applicant to establish with
objective evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Aller, 220 F.2d 454, 456 ( CCPA 1955). In the present case, Appellant
has proffered no such objective evidence of criticality for the claimed
amount of catalyst. Moreover, to the extent that Miyawaki teaches that more
than the claimed amount of catalyst is needed, Appellant has not established
that using a less amount of catalyst produces comparable results.
Manifestly, proceeding against the teaching of the prior art and not obtaining
the advantages taught in the art is a matter of obviousness for the skilled
artisan. See in re Thompson, 545 F.2d 1290, 1294 (CCPA 1976); In re
Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Turning to the §103 rejections based on Natarajan as a primary
reference, Appellant notes that the reference discloses 81 different catalysts
but not the claimed n-butyl titanate. However, Appellant has not presented a
substantive argument against the thrust of the Examiner’s rejection, mainly,
the obviousness of substituting the butyl titanate of Lindner for the
triethylamine catalyst of Natarajan. Appellant offers only the conclusory
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remarks that “Applicant respectively disagrees with this combination” and
that “[t]he Applicant does not believe that the prior art references are
combinable” (App. Br. 12, first para.) Consequently, the rationale of the
Examiner’s rejection stands unrebutted.
Concerning the double patenting rejection, Appellant points out two
differences between the claimed subject matter and that claimed in U.S.
Patent No. 7,169,887. Again, however, Appellant does not address the
thrust of the Examiner’s rejection which is based on the Laughner disclosure
for the obviousness of the claimed differences over the claims of the ‘887
patent. Appellant simply states that “[t]he Applicant does not believe that
Laughner is combinable with the ‘887 patent” without presenting the
requisite analysis why such is the case (App. Br. 14, last para.).
Appellant’s separate arguments for different groups of claims which
recite different amounts of catalyst are not availing for the reasons set forth
above.
As a final point, we note that Appellant bases no argument on upon
objection evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
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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

kmm

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