Ex Parte Ponticiello et al

Patent Trial and Appeal Board

Mar 30, 2018

13140500 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/140,500 08/12/2011 Antonio Ponticiello
22850 7590 04/03/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
382398US99XPCT 8135
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
04/03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO PONTICIELLO,
DARIO GHIDONI,
and RICCARDO FELISARI
Appeal 2017-003639
Application 13/140,500
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MONTE T. SQUIRE, and
BRIAND. RANGE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision rejecting claims 1---6. Claims 7-29 are also pending but have been
withdrawn from consideration. We have jurisdiction under35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to an expandable vinyl aromatic
polymer composition for use in thermal insulation in the building industry. The
expandable polymer is used in the form of flat sheets with a density of about 30 gll
because the thermal conductivity of the polymer has a minimum at those values.
Appeal 2017-003639
Application 13/140,500
Spec. 2, ll. 4--9. If the density falls below that limit, the thermal conductivity is
said to be drastically increased. To compensate for that increase, the Appellants
disclose that the sheet thickness must be increased. Spec. 2, ll. 10-14.
Athermanous materials are said to be capable of increasing the thermal
insulation of the expanded materials in which they are contained. Spec. 2, 11. 16-
20. According to the Appellants, suggestions have been made to fill expanded
polystyrene with athermanous materials, such as graphite, carbon black, or
aluminum, to avoid the drawback of increasing sheet thickness to maintain a
desired thermal conductivity. Spec. 2, ll. 14--16.
The Appellants are said to have found that "it is possible to prepare a
composition based on expandable vinyl aromatic polymers with enhanced thermo-
insulation properties, using as athermanous additive, a mixture which has never
been described in literature, comprising carbon coke and expanded graphite."
Spec. 3, 1. 26-4, 1. 4.
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief dated August 31, 2016 ("App. Br."). The limitations at issue are
italicized.
1. An expandable vinyl aromatic polymer composition
compnsmg:
a) a polymeric matrix prepared by polymerizing a base comprising
50-100% by weight of a vinyl aromatic monomer and 0-50% by
weight of a copolymerisable monomer;
b) 1-10% by weight, calculated on polymer (a), of an expanding
agent embedded in the polymeric matrix; and
an athermanous filler comprising:
c) 0.5-25% by weight, calculated on polymer (a), of particulate
carbon coke with a mean particle diameter ( dso) (size) of from 0. 5 to
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Application 13/140,500
100 µm, and a surface area, measured according to ASTM D-3037-89
(BET), of from 5 to 200 m2/g; and
d) 0. 5-10% by weight, calculated on polymer (a), of particulate
expanded graphite with a mean particle diameter ( dso) (size) of from 1
to 30 µm and a surface area, measured according to ASTM D-3037-
89 (BET of from 5 to 500 m2/g,
wherein the athermanousfiller is embedded in the polymeric matrix.
App. Br. 19.
The following rejections are maintained on appeal:
(1) claims 1---6 under 35 U.S.C. § 103(a) as unpatentable over Polimeri
Europa SP A 1 in view of Allmendinger et al. 2 and the Appellants' disclosure; 3 and
(2) claims 1---6, provisionally, on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claims 1 and 3---6 of copending
Application 12/935,388 in view of Polimeri.
B. DISCUSSION
1. Rejection (1)
a. Claim 1
The Examiner finds Polimeri discloses an expandable vinyl aromatic
polymer composition comprising a polymeric matrix, an expanding agent
embedded in the polymeric matrix, and an athermanous filler comprising carbon
black and expanded graphite which are also embedded in the polymeric matrix.
Non-Final Act. 5---6; 4 see also Polimeri 15, 1. 23-16, 1. 2 (disclosing that graphite of
1 WO 2006/108672 A2, published October 19, 2006 ("Polimeri").
2 US 2008/0234400 Al, published September 25, 2008 ("Allmendinger").
3 Spec. 24 (disclosing "Calcinated Coke 4023 sold by the company Asbury
Graphite Mills Inc. (USA), having a size ( dso) of about 5 µm [and] a BET of about
20 m2/g").
4 Non-Final Office Action dated September 10, 2013, incorporated by reference in
the Office Action dated March 2, 2016.
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Application 13/140,500
the expandable type may be used); Ans. 7 (fmding that "at least some expanding
occur[ s] within the 'expandable' graphite to meet the limitations of' expanded"'). 5
The Examiner fmds that the mean particle diameter and the surface area of the
expanded graphite overlap the claimed ranges. Non-Final Act. 6.
The Examiner fmds Polimeri does not disclose using coke as an
athermanous filler. Final Act. 4. 6 The Examiner, however, fmds Allmendinger
evinces that particulate coke was known to be used as an athermanous filler for
polystyrene based foamed compositions at the time of the Appellants' invention.
Final Act. 4. The Examiner fmds Allmendinger discloses that the coke has a
particle size range that overlaps the claimed range. Final Act. 4--5. The Examiner
also fmds Allmendinger does not disclose a particular BET surface area for the
particulate coke and thus fmds that any surface area would be sufficient. Final
Act. 5. Turning to page 24 of the Appellants' Specification, the Examiner fmds
that the Appellants disclose a commercial coke, i.e., Calcinated Coke 4023, having
a particle size within the range disclosed in Allmendinger. Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art to use
Calcinated Coke 4023 in Polimeri's polymer based on the teachings in
Allmendinger. Id.
The Appellants argue that Allmendinger discloses that the polymeric matrix
contains athermanous solids such as carbon black or graphite but does not disclose
or suggest particulate carbon coke as a component of the polymeric matrix. App.
Br. 9-10 (citing Allmendinger if 15). The Appellants argue that Allmendinger
instead describes using coke in a polymeric coating applied to the foam particles.
5 Examiner's Answer dated October 21, 2016.
6 Final Office Action dated January 28, 2014, incorporated by reference in the
Office Action dated March 2, 2016.
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App. Br. 11; see also Allmendinger if 27 (disclosing that using coke in the coating
reduces thermal conductivity). The Appellants argue:
By describing the use of coke as a component of the filler for
the polymer coating in paragraph [0027] but failing to mention the use
of coke as a component of the polymeric matrix in pargraph [0015],
Allmendinger is teaching away from the inclusion of coke in the
polymeric matrix as specified in Claim 1 of the present application.
App. Br. 11 (emphasis omitted).
The Appellants also argue that paragraph 5 of Allmendinger teaches away
from adding coke to Polimeri's polymer matrix. App. Br. 13. Paragraph 5 states:
Reducing the thermal conductivity by embedding athermanous
materials such as carbon black, graphite, aluminum or metal oxides in
foams is known, for example from WO 98/51734. The introduction
of athermanous materials into expandable polystyrene can, however,
influence the foaming behavior.
Allmendinger if 5 (emphasis added).
The Appellants argue that Allmendinger uses coke as a component of the
polymer coating, rather than the polymer matrix, "to reduce undesirable foaming."
App. Br. 13.
The Appellants' arguments are not persuasive of reversible error. First,
there is no dispute on this record that Allmendinger discloses adding athermanous
materials to the polymeric matrix or that coke was known to be an athermanous
material at the time of the Appellants' invention. We recognize that Allmendinger
discloses that ''particular preference is given to using prefoamed, expandable
styrene polymers which comprise athermanous solids such as carbon black,
aluminum or graphite." Allmendinger if 15 (emphasis added). However, the list
provided in Allmendinger merely identifies particularly preferred athermanous
solids and thus is not an exhaustive list of all suitable athermanous solids.
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Moreover, Allmendinger does not expressly exclude coke from the polymeric
matrix.
Second, we recognize Allmendinger discloses that"[ t ]he introduction of
athermanous materials [such as carbon black, graphite, aluminum or metal oxides]
into expandable polystyrene can ... influence the foaming behavior."
Allmendinger if 5 (emphasis added). However, contrary to the Appellants'
argument, Allmendinger does not disclose that athermanous materials, such as
coke, cause undesirable foaming.
Based on the fore going, a preponderance of the evidence does not support a
fmding that Allmendinger teaches away from including coke in either the polymer
matrix disclosed in Allmendinger or Polimeri. 7 See Syntex (US.A.) LLCv. Apotex,
Inc., 407F.3d1371, 1380 (Fed. Cir. 2005) (silence in a reference about a particular
feature does not tend to teach away from it).
The Appellants also argue that Allmendinger does not disclose or suggest
the claimed mean particle diameter or the claimed surface area of the coke. App.
Br. 12.
The Examiner fmds Allmendinger discloses that the preferred size of the
athermanous filler, including coke, is from 0.1to100 µm, which corresponds to
the claimed particle size of coke. Final Act. 4--5; see also Allmendinger if 26
(disclosing that " [ fJ illers having particle sizes in the range from 0. 1 to 100 µm ...
give a reduction in the thermal conductivity by 1-3 mW when present in
proportions of 10% by weight in the polystyrene foam").
7 See Ans. 9 (fmding that athermanous materials function as IR absorbers whether
they are applied to the surface of a material or are embedded in a material matrix).
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As for the surface area of the coke, the Examiner finds Allmendinger "does
not specifically address the BET characteristics of the suitable coke particles thus
implying that known particles of any BET and the disclosed particle size are
suitable for the invention." Final Act. 5; see also Ans. 10. That is, Allmendinger
does not disclose that the surface area of the coke particles is critical. Thus, it is
reasonable to find that one of ordinary skill in the art would have understood that
coke merely having a particle size within the range disclosed in Allmendinger
would be suitable as an athermanous filler.
There is no dispute on this record that Calcinated Coke 4023, described on
page 24 of the Appellants' Specification, was commercially available at the time of
the Appellants' invention and has a size and surface area within the range recited
in claim 1. Moreover, the size ( dso) of Calcinated Coke 4023 is about 5 µm, which
is within the range of particle sizes disclosed in Allmendinger. See Allmendinger
if 26. Thus, one of ordinary skill in the art would have expected Calcinated Coke
4023 to be a suitable athermanous filler based on the teachings of Allmendinger.
See Ans. 11. Significantly, the Appellants do not direct us to any evidence to the
contrary.
Finally, the Appellants argue that certain data show that the combination of
particulate carbon coke and particulate expanded graphite exhibits synergistic
results. App. Br. 15-16. However,"[ s ]ynergism, in and of itself, is not conclusive
ofunobviousness in that synergism might be expected." In re Kollman, 595 F.2d
48, 55 n.6(CCPA1979). For a showing of"unexpectedresults" to be probative of
unobviousness, any difference in results obtained through the claimed invention
and the prior art must not have been expected by one of ordinary skill in the art. In
re Freeman, 474F.2d1318, 1324(CCPA1973).
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Application 13/140,500
The Appellants direct our attention to Examples 1---6 in the Specification.
According to Example 3, the athermanous filler contains 2 parts particulate carbon
coke and 1 part particulate expanded graphite embedded in a polymeric matrix as
recited in claim 1. Flat sheets of expanded material prepared from a composition
containing the athermanous filler are said to have a thermal conductivity of 3 2
mW/mK at 17 g/l. App. Br. 4--5; Spec. 25-26. In contrast, 2partsparticulate
carbon coke, with no particulate expanded graphite, are used in Comparative
Example 1 and the resulting flat sheets are said to have a thermal conductivity of
34.5 mW/mK at 17 g/l. App. Br. 5; Spec. 24--25. In Example 2, now Comparative
Example 2, 1 part particulate expanded graphite, with no particulate carbon coke,
was used and the resulting flat sheets are said to have a thermal conductivity of 3 4
mW/mK at 17 g/l. 8 App. Br. 5; Spec. 25.
The Examiner finds that Example 3 shows the cumulative results of using
two athermanous materials (i.e., 2 parts particulate coke and 1 part particulate
expanded graphite) in amounts totaling the amounts used in both Example 1 (i.e., 2
parts particulate coke) and Example 2 (i.e., 1 part particulate expanded graphite).
Ans. 3. Because the amount of athermanous material used in Example 3 is greater
than the amount of athermanous material used in either Example 1 or Example 2, it
is not clear on this record that the reduced thermal conductivity reported in
8 The Appellants also argue that Example 2 in the Specification and Example 3 of
US 6,340, 713 demonstrate that 1 part expanded graphite provides the same thermal
conductivity as 5 parts standard graphite. App. Br. 16. The Examiner finds that
the benefits of expanded graphite have been recognized in the art. Ans. 6; see also
P olimeri 15, 1. 23-16, 1. 2 (disclosing that graphite of the expandable type may be
used in the polymeric matrix).
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Application 13/140,500
Example 3 is due solely to the combination of particulate coke and particulate
expanded graphite.
In Comparative Example 4, 4 parts ofCalcinated Coke 4023, with no
particulate expanded graphite, were used and the thermal conductivity of the
resulting sheets is said to be 33 mW/mK at 17 g/l. App. Br. 5; Spec. 27.
Comparative Example 5 is said to correspond to Comparative Example 4 "except
that a differenttype of carbon coke [i.e., Needle Coke 4727] was used in the
absence of expanded graphite." App. Br. 5; Spec. 27. The thermal conductivity of
the resulting sheets is said to be 32.5 mW/mK at 17 g/l. App. Br. 5; Spec. 27. In
Example 6, comparative example 5 was repeated adding 3% Needle Coke 4727
and 1 % Graphite ABG 1005, totaling 4% athermanous materials. The thermal
conductivity of the resulting sheets is said to be 31.2 mW/mK at 17 g/l, which is
lower than the thermal conductivity reported in Comparative Examples 4 and 5.
App. Br. 5; Spec. 28.
The Examiner finds that Example 1 (Spec. 24--25) and Example 2 (Spec. 25)
show that "expanded graphite has a much greater effect on lowering the thermal
conductivity [of] foamed [polystyrene] as compared to using coke." Ans. 4. Thus,
the Examiner finds that substituting 1 part coke with 1 part graphite in Example 6
would have been expected to result in a foamed polystyrene having a lower
thermal conductivity than a foamed polystyrene containing only coke (i.e.,
Comparative Examples 4 and 5). Ans. 4.
The Appellants also direct our attention to Examples A---C in a Declaration
of Antonio Ponticiello dated July 25, 2016 ("Ponticiello Deel."). App. Br. 6-7.
According to Mr. Ponticiello, Examples A---C show that "the athermanous filler
mixture of coke and expanded graphite is synergic and not equivalent to the
separate fillers, even at extremely low concentration." P onticiello Deel. if 5.
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Significantly, Dr. Ponticiello does not characterize the results reported in Examples
A---C as "unexpected."
Nonetheless, we tum to Examples A---C in the Ponticiello Declaration.
Example A, described in paragraph 6 of the Declaration, was prepared with 7 parts
Calcinated Coke 4023 and 3 parts expanded graphite. The thermal conductivity of
the resulting sheets is said to be 29 mW/mK at 30.2 g/l. Example B, described in
pargraph 7 of the Declaration, was prepared with 10 parts Calcinated Coke 4023
and no expanded graphite. The thermal conductivity of the resulting sheet is said
to be 3 0 m W/mK at 3 0. 4 g/l. Example C, described in pargraph 8 of the
Declaration, was prepared with 10 parts expanded graphite and no carbon coke.
The thermal conductivity of the resulting sheet is said to be 31 m W/mK at 3 0. 3 g/l. 9
To the extent that Example A shows a reduction in thermal conductivity
compared to Examples B and C, the Examiner fmds that the Appellants' showing
is not commensurate in scope with the claims which encompass as little as 0.5% by
weight coke and expanded graphite and as much as 25% by weight coke and 10%
by weight expanded graphite. Ans. 5---6. Moreover, the Examiner fmds that, based
on the examples of record, there is no expectation that the improvement reported in
Example A would be realized over the ranges recited in claim 1. Ans. 6.
To that end, the Examiner fmds that Examples A---C "create[] more
uncertainty than provide[] evidence of unexpected results." Ans. 5. Indeed, we
note that Comparative Example 2, using 1 part expanded graphite, reported a lower
9 The Appellants argue that "[i]t is well-known to one skilled in the art that a
decrease of 1 unit in the insulating capability of a molded article results [in] an
extremely high energy savings, particularly over the very long period of time that
the inventive composition is used as an insulation material." App. Br. 7; see also
App. Br. 15.
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Application 13/140,500
thermal conductivity than Comparative Example 1, using 2 parts coke. Spec. 24--
25. In contrast, Example C, using 10 parts expanded graphite, reported a higher
thermal conductivity than Example B, using 10 parts coke. P onticiello Deel. ifil 7-
8. The Appellants do not address that inconsistency.
The Examiner also questions whether the reduced thermal conductivity
reported in Example A is a function of foam density. In that regard, the Examiner
fmds that the foam density in Examples 1---6 (17 gll) is lower than the foam density
in Example A (30.2 gll). Ans. 5; see also In re Dunn, 349 F.2d433, 439 (CCPA
1965) ("cause and effect sought to be proven is lost here in the welter of unfixed
variables"). The Appellants do not offer an explanation in response to the
Examiner's fmding.
Having considered all of the evidence of record, we fmd that the
preponderance of the evidence weighs in favor of the Examiner's conclusion of
obviousness. Therefore, the§ 103(a) rejection of claim 1 is sustained.
b. Claims 2-5
The Appellants do not direct us to any error in the Examiner's factual
fmdings or legal conclusions in the rejection of claims 2-5. See Ans. 11-12.
Rather, the Appellants argue that the limitations recited in claim 1 are not disclosed
or suggested in Polimeri or Allmendinger, either alone or in combination. App. Br.
17-18.
For the reasons set forth above, claim 1 is rendered obvious by the
combination of Polimeri, Allmendinger, and the Appellants' disclosure of
commercially available Calcinated Coke 4023 (Spec. 24). Therefore, the§ 103(a)
rejection of claims 2---6 also is sustained.
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2. Rejection (2)
The Appellants do not direct us to any error in the Examiner's factual
fmdings or legal conclusions in the provisional obviousness-type double patenting
rejection on appeal. See App. Br. 3, n.1. Therefore, the provisional obviousness-
type double patenting rejection of claims 1---6 is sustained.
C. DECISION
The Examiner's decision 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)(l).
AFFIRMED
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