Ex Parte Rogunova et al

Patent Trial and Appeal Board

Mar 8, 2018

11891551 (P.T.A.B. Mar. 8, 2018)

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.
11/891,551 08/10/2007 Marina Rogunova P09027/MD07-11 1743
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
MULCAHY, PETER D
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARINA ROGUNOVA
and JAMES Y.J. CHUNG
Appeal 2017-001896
Application 11/891,551
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3, 5, and 14—25 of
Application 11/891,5511 under 35 U.S.C. § 103(a) as obvious. Final Act.
(October 10, 2014). Appellants2 seek reversal of these rejections pursuant to
1 We have previously decided an appeal involving the ’551 Application. See
Ex parte Rogunova, No. 2012-000894, 2013 WL 3362249 (PTAB June 7,
2013) (available at http://bit.ly/2GSDu69).
2 Bayer MaterialScience LLC is identified as the real party in interest.
Appeal Br. 3. After the Appeal Brief was filed, Bayer MaterialScience LLC
changed its name to Covestro LLC. See Assignment/Name Change recorded
October 16, 2015 (reel/frame 036876/00001).
Appeal 2017-001896
Application 11/891,551
35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6. For the reasons
set forth below, we affirm.
BACKGROUND
The ’551 Application describes a thermoplastic molding composition
containing an aromatic polycarbonate. Spec. 1. In particular, the
thermoplastic molding composition has a low gloss. Id. at 2. The
thermoplastic composition comprises an aromatic polycarbonate, a graft
rubber (co)polymer, a siloxane (co)polymer, and, optionally, a vinyl
copolymer. Id. at 2—3.
Independent claims 1 and 14 are representative of the ’551
Application’s claims and are reproduced below from the Corrected Claims
Appendix filed November 16, 2015.
1. A thermoplastic molding composition consisting
essentially of
(A) 10 to 94.5 pbw aromatic (co)polycarbonate,
(B) 4 to 40 pbw rubber graft (co)polymer that includes
a graft base and a grafted phase in which the graft base is
EP(D)M, and in which the grafted phase is compatible with the
aromatic (co)polycarbonate, and
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Application 11/891,551
(C) 0.05 to 10 pbw siloxane (co)polymer is liquid at
room temperature[3] conforming to
3
O—~R:3
wherein R1 is Cl-4 alkyl or C6-14 aryl;[ ]R2
denotes (CH2)m where m is an integer of 1 to 4; and R3 is
(CH2)p where p is 1 to 4 and n is 1 to 30,
(D) 5 to 35 pbw vinyl (co)polymer, the composition
characterized in that its 60° gloss is lower than 35 in accordance
with ASTM D523, and
optionally at least one member selected from the
group consisting of lubricant, mold release agents, nucleating
agent, antistatic agent, thermal stabilizer, light stabilizer,
hydrolytic stabilizer, filler, reinforcing agent, colorant, pigment,
flame retarding agent and drip suppressant.
Corrected Claims App. 14 (November 16, 2015).
14. A thermoplastic molding composition comprising
(A) 10 to 94.5 pbw aromatic (co)polycarbonate,
(B) 4 to 40 pbw rubber graft (co)polymer that includes
a graft base and a grafted phase in which the graft base is a
rubber consisting of copolymer of ethylene and propylene and
3 For the purposes of this opinion, we interpret this phrase as follows:
(C) 0.05 to 10 pbw siloxane (co)polymer that is liquid at
room temperature
If prosecution of the ’551 Application continues, we respectfully suggest
that this phrase be clarified by amendment.
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Application 11/891,551
optional diene monomer and in which the grafted phase is a
homopolymer of polar monomers or a copolymer of
monovinylidene aromatic monomer and at least one polar
comonomer,
(C) 0.05 to 10 pbw siloxane (co)polymer which is
liquid at room temperature and contains a plurality of siloxane
structural units each containing at least one epoxyfimctionality
(SG) and optional siloxane units that contain no epoxy­
functionality (SNG) wherein the weight ratio of (SG) units to
the total siloxane units (SG + SNG) is greater than 0.05, and
(D) a positive amount up to 40 pbw vinyl (co)polymer,
the composition characterized in that its 60° gloss in accordance
with ASTM D523 is lower than 40.
Id. at 15.
REJECTIONS
On appeal, the Examiner maintains4 the following rejections:
1. Claims 1—3 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nodera5 and either Gosens6
or Krishnan.7 Answer 2.
2. Claims 14—25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nodera alone or the combination of Nodera and
Krishnan. Answer. 4.
4 The Examiner has withdrawn the rejection of claims 1—3 and 5 under 35
U.S.C. § 103(a) as unpatentable over Nodera alone. Answer 6.
5 US 2003/0191245A1, published October 9, 2003.
6 US 5,380,795, issued January 10, 1995.
7 US 5,405,892, issued April 11, 1995.
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DISCUSSION
Appellants present a single, consolidated argument for reversal of
both rejections. See Appeal Br. 5—13. We, therefore, limit our discussion to
independent claims 1 and 14. The remaining claims will stand or fall with
the independent claim from which they depend. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1. We begin, as we must, by considering the proper
interpretation of claim 1. In particular, we consider the proper interpretation
of the acronym EP(D)M. The ’551 Application’s Specification states:
The rubber graft (co)polymer, component (B) of the
inventive composition^] refers to a grafted rubber wherein the
rubber is a member selected from the group consisting of
(i) copolymer of ethylene and propylene and optional diene
monomer (herein EP(D)M rubber) and (ii) (co)polyacrylate and
where the grafted phase is compatible with component A,
(co)polycarbonate.
Spec. 7 (emphasis added).
We, therefore, understand that the acronym EP(D)M encompasses
both ethylene-propylene copolymer (variously referred to as ethylene-
propylene rubber, EPR, or EPM) and a terpolymer consisting of ethylene,
propylene, and a diene monomer (EPDM).
We note that both the Examiner and Appellants have apparently
misinterpreted claim 1. For example, Appellants argue that “[e]ach of
independent claims 1 and 14 require a ‘rubber graft (co)polymer that
includes a graft base and a grafted phase,’ where the graft base is EPDM.”
Appeal Br. 8 (emphasis added). Claim 1, however, does not require that the
graft base is EPDM. Instead, claim 1 says the graft base is EP(D)M. Those
parentheses matter. As discussed above, they mean that the inclusion of the
diene monomer is optional.
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As will become apparent, however, the unduly narrow claim
construction adopted by Appellants and the Examiner is a harmless error.
For the reasons set forth below, we affirm the rejection of claim 1.
In the Final Action, the Examiner maintained the basis for the
rejection of claims 1—3 and 5 set forth in the Non-Final Action mailed on
April 7, 2014. Final Act. 2. In that Non-Final Action, the Examiner rejected
claim 1 as unpatentable over the combination of Nodera and either Gosens
or Krishnan. Non-Final Act. 3 (April 7, 2014). The Examiner’s Answer
contains a more detailed explanation of the basis for this rejection. See
Answer 2—A.
Appellants argue that the rejection of claim 1 should be reversed
because
Nodera does not disclose EPDM, but rather a wide range of
other styrenic resins. Nodera does not teach, suggest or provide
any motivation to substitute EPDM for any one of them. The
remaining references likewise offer no teaching, suggestion or
motivation to substitute EPDM as the rubber graft
(co)polymer[] from [sic, for] the styrenic resins that were
disclosed in Nodera. Furthermore, there is no reasonable
expectation of success to substitute EPDM for the styrenic resin
of Nodera. As disclosed in Applicants’ specification, the
choice of resin yields unpredictable results. A person of skill in
the art following the teachings of Nodera[] would have created
a thermoplastic composition having a significantly lower [sic,
higher] gloss than the composition. Neither Nodera, Gosens or
Krishnan provides any reasonable expectation of success in
substituting EPDM for the styrenic resin of Nodera. Thus, the
claimed compositions are not obvious over the prior art
references.
Appeal Br. 5; see also id. at 8—9.
For the following reasons, we are not persuaded by Appellants’
arguments.
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Appellants argue that claim 1 is not obvious over the combination of
Nodera and Gosens because the Examiner has not identified a teaching,
suggestion, or motivation to combine the references nor provided articulated
reasoning with rational underpinning to support the legal conclusion of
obviousness. Appeal Br. 8—9.
We are not persuaded by this argument.
In rejecting claim 1, the Examiner found that “[t]he rubber modified
styrenic resins described at [Nodera 156] are suggestive of the grafted
EPDM component (B).” Non-Final Act. 3; see also Answer 2 (“The listing
of rubber base monomers [in Nodera] are [sic] suggestive of the grafted
EPDM component (B).”). Furthermore, the Examiner stated:
Nodera does teach ethylene-propylene rubber as well as diene
rubbers. Ethylene-propylene rubber [EPR or EPM] and
ethylene-propylene-diene rubber [EPDM] are well[-]known to
be very similar. Using them in the alternative is well known
and conventional. The Gosene [sic, Gosens] reference is
further evidence of the conventionality. As such, using the
claimed epdm instead of the epm is prima facie obvious.
Final Act. 3.
In the Answer, the Examiner provided an expanded explanation of the
reasons it would have been obvious to a person of ordinary skill in the art at
the time of the invention to use EPDM rubber base in Nodera’s composition:
Gosens et al. teaches molding composition^] based upon
the claimed aromatic polycarbonate, column 3 lines 35+. Graft
polymers having a rubber base and styrene are taught at column
4 lines 20-28. The claimed EPDM rubber base is taught as
being an alternative to butadiene and acrylate rubbers. The
claimed polysiloxane polymers are taught at column 4 lines
29+. Articles formed from the compositions taught herein have
improved impact resistance, column 1, lines 60-63 as well as
the examples.
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Application 11/891,551
Gosens et al., Nodera et al. as well as those having
ordinary skill in the art appreciate, that the incorporation of
rubber based graft polymers improve impact resistance. One of
ordinary skill in the art is motivated to select the claimed
EPDM graft polymer base given that Gosens et al teaches the
substitution of butadiene and acrylate rubber base polymers
with EPDM. Nodera et al. teaches the incorporation of rubber
graft base polymers selected from acrylate, butadiene and
ethylene-propylene rubbers. One would be motivated to
incorporate the EPDM rubber graft base of Gosens et al. into
the composition of Nodera et al. given the teaching that EPDM
is an acceptable substitute for diene or acrylate rubber base
polymers and the appreciation that the EPDM rubber base
would improve the impact resistance property as desired by
Nodera et al.
Answer 3^4.
Thus, the Examiner found that the use of Gosens’s EPDM to replace
the styrenic rubber graft base in Nodera’s composition is the substitution of
a known equivalent to achieve a predictable results. This is sufficient reason
for a person of ordinary skill in the art to have combined Nodera and
Gosens.
Appellants also argue that the Examiner has not established a
reasonable expectation of success in combining Nodera and Gosens in that
Appellants argue that the low gloss properties of the claimed thermoplastic
compositions are unexpected. Appeal Br. 11—13. This argument is not
persuasive.8 As the Examiner explained, the composition created by the
modification of Nodera in view of Gosens is substantially the same as that
8 Appellants do not argue that the allegedly unexpected low gloss properties
of the claimed thermoplastic composition are objective evidence of
nonobviousness sufficient to rebut the Examiner’s prima facie case. See
Appeal Br. 11—13.
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described in claim 1. Therefore, a reasonable basis exists to believe that
composition exhibits substantially the same low gloss properties. “Where,
as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d 1252, 1255 (CCPA 1977); see also In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986).
For the reasons set forth above, we affirm the rejection of claim 1.
Rejection 2. The Examiner rejected claim 14 as unpatentable over
Nodera alone or in combination with Krishnan. Answer 4—6. As discussed
by the Examiner, claim 14 expressly encompasses a “copolymer of ethylene
and propylene and optional diene monomer.” Thus, Nodera itself teaches
the use of a graft copolymer having a graft base within the scope of claim
14: ethylene-propylene rubber. Appellants’arguments concerning the
combination of Nodera and Gosens, therefore, are not persuasive.
Appellants’ arguments regarding the alleged lack of a reasonable
expectation of success are not persuasive for the reasons discussed in
connection with claim 1, above.
We, therefore, also affirm the rejection of claim 14.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1—3,
5, and 14—25 of the ’551 Application.
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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)(l)(iv).
AFFIRMED
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