Ex Parte Seidel et al

Board of Patent Appeals and Interferences

Jan 15, 2009

10395408 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANDREAS SEIDEL and THOMAS ECKEL
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Appeal 2008-5946
Application 10/395,408
Technology Center 1700
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Decided: January 15, 2009
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Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
CATHERINE Q. TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-16. We have
jurisdiction pursuant to 35 U.S.C. §§ 6 and 134. A copy of illustrative claim
1 appears below:
Appeal 2008-5946
Application 10/395,408

1. A thermoplastic molding composition comprising polycarbonate and/or
polyestercarbonate, a graft polymer and at least one oligomeric phosphoric
acid ester conforming to formula (I),

wherein

R1, R2, R3 and R4 independently one of the others denote C1 to C8 alkyl,
C5 to C6 cycloalkyl, C6 to C20 aryl or C7 to C12 aralkyl,

n independently one of the others denotes 0 or 1

q denotes 0.8 to 30 and

X denotes a member selected from the group consisting of
mononuclear or polynuclear aromatic radical having 6 to 30 C
atoms, and linear or branched aliphatic radical having 2 to 30 C
atoms,

and calcined talc, the composition exhibiting improved toughness and weld
line strength, UV and flame resistance, flowability and heat resistance in
comparison to corresponding compositions in which the included talc is not
calcined.

The Examiner relies upon the following references as evidence of
obviousness:1
Clauss 5,229,094 Jul. 20, 1993
Seidel ‘074 WO 01/48074 A1 Jul. 5, 2001
Seidel ‘465 6,737,465 May 18, 2004

1 Both Appellants and the Examiner reference U.S. Patent No. 6,737,465 to
Seidel as an accurate translation of WO ‘074.
2
Appeal 2008-5946
Application 10/395,408

Appellants’ claimed invention is directed to thermoplastic molding
compositions comprising a polycarbonate and/or poly(ester)carbonate, a
graft polymer, at least one oligomeric phosphorous acid ester defined by the
recited formula, and calcined talc. According to Appellants, the claimed
composition comprising calcined talc exhibits improved color stability and
flame resistances compared to corresponding compositions comprising talc
that is not calcined.
Appealed claims 1-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over WO ‘074 in view of Clauss.
Appellants do not present separate arguments for any particular claim
on appeal. Accordingly, all the appealed claims stand or fall together with
claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, we are in full agreement with the Examiner that the
claimed subject matter would have been obvious to one ordinary skill in the
art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, and we add the following for primarily for
emphasis.
There is no dispute that WO ‘074, like Appellants, discloses a
thermoplastic molding composition comprising polycarbonate, a graft
polymer and a phosphorous acid ester in accordance with the claimed
formula, as well as talc. WO ‘074 teaches that the talc may be naturally
occurring or a synthetically prepared variety, but does not expressly disclose
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Appeal 2008-5946
Application 10/395,408

calcined talc as one of the synthetic forms (col. 12, ll. 16-17). However, as
pointed out by the Examiner, Clauss specifically teaches that calcined talc
provides advantages over generic talc, for example, increasing the
mechanical proprieties of thermoplastics (col. 2, l. 24 at sic). Accordingly,
based on the collective teachings of WO ‘074 and Clauss, we concur with
the Examiner that it would obvious for one of ordinary skill in the art to use
calcined talc in the thermoplastic composition of WO ‘074 with the
reasonable expectation of improving the mechanical properties of the
composition. The fact the Clauss does not teach improved color stability
and flame resistance as additional advantages of using calcined talc does not
undermine the obviousness of using calcined talc in a thermoplastic molding
composition of the type disclosed by WO ‘074. It is well settled that one
can not gain patentability by simply finding another advantage of using a
known or obvious composition, and it is not required for a finding of
obviousness that the motivation for the skilled artisan to make a claimed
composition be the same as an applicant’s motivation. In re Kemps, 97 F.3d
1427, 1430 (Fed. Cir. 1996). See also In re Dillion, 919 F.2d 688, 693 (Fed.
Cir. 1990) (en banc). In the present case one of ordinary skill in the art
would have found ample motivation for using calcined talc in the
thermoplastic molding composition of WO ‘074.
Appellants rely upon comparative data in the Specification for
showing that “the inventive composition in which the including talc is
calcined exhibits improved color stability and considerably shorter burning
time than does a corresponding composition where the included talc is un-
calcined” (page 4 of principle Brief, first paragraph, citing the table at page
30 of the Specification). However, to the extent Appellants cite the
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Appeal 2008-5946
Application 10/395,408

comparative data as evidence of unexpected results, the showing falls far
short of being commensurate in scope with the degree of protection sought
by the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Claim 1 on appeal
encompasses molding compositions comprising any polycarbonate and/or
poly(ester)carbonate, any graft polymer, and any oligomeric phosphorous
acid ester within the claimed formula. Also, the components recited in claim
1 may be present in any relative proportion inasmuch as no amounts are
specified for the recited components. On the other hand, Appellants’
Specification data is limited to two specific compositions which differ only
in the type of talc used. In particular, the Specification examples use a linear
polycarbonate based on bisphenol A with a relative solution viscosity of
1.24, a graft polymer of 40 parts by weight of a copolymer of styrene and
acrylonitrile in the ratio 73:27 and 60 parts by weight of particulate
crosslinked polybutadiene rubber, a styrene/acrylonitrile copolymer with a
ratio of styrene to acrylonitrile of 72:28, a specific phosphate based on
bisphenol A, chlorite talc with a chlorite content of 20 wt. %,
tetrafluoroethylene polymer, pentaerythritol tetrastearate as a release agent,
and phosphate stabilizer. Manifestly, the number of myriad molding
compositions within the scope of the appealed claims far exceeds the single
composition of the specification comparative data that is representative of
the claimed invention. Appellants have made no showing that the
exemplary composition is fairly representative of the thermoplastic molding
compositions within the broad scope of the appealed claims.
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Appeal 2008-5946
Application 10/395,408

The Hager Declaration is offered only as evidence that UV stability
and flame resistances are non-mechanical properties. The declaration fails
to present any evidence of unexpected results.
In conclusion, based on the foregoing, it is our judgment that the
evidence of obviousness presented by the Examiner outweighs the evidence
of nonobviousness proffered by Appellants. Accordingly, the Examiner’s
decision rejecting 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)(I)(iv).

AFFIRMED

PL initial:
sld

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