Ex Parte Sosa et al

Board of Patent Appeals and Interferences

Aug 22, 2012

11456297 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/456,297 07/10/2006 Jose M. Sosa COS-1059 (4176-01600) 5346
25264 7590 08/22/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
MULLIS, JEFFREY C
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
08/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSE M. SOSA, BILLY ELLIS, and STEVEN D. GRAY
____________

Appeal 2011-003785
Application 11/456,297
Technology Center 1700
____________

Before TERRY J. OWENS, PETER F. KRATZ, and LINDA M. GAUDETTE,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 3-20 and 22 under 35 U.S.C. §103(a) as unpatentable over
Sosa ‘880 (US 6,162,880, issued Dec. 19, 2000) or Sosa ‘587 (US 4,857,587,
issued Aug. 15, 1989) in view of Gilg (US 6,060,545, issued May 9, 2000).2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Final Office Action mailed Dec. 15, 2009.
2 Appeal Brief filed Jun. 14, 2010 (“App. Br.”).
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Application 11/456,297

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The invention relates to methods of making compositions which are useful
in applications such as food packaging, office supplies, building insulation, and the
like. (Spec.3 [0003-0004].) “[E]lastomer-reinforced polymers” of the type used in
these applications “are commonly referred to as impact modified or high impact
polystyrene (HIPS) while a styrene homopolymer may be referred to as general-
purpose polystyrene (GPPS).” (Id.) According to the Specification, processing
additives used during the production of HIPS or GPPS “may react with
environmental reagents such as air or other components . . . to produce undesirable
results.” (Id. at [0005].) “For example, antioxidants such as catechols or phenols
which are added to the HIPS production process primarily to stabilize styrene
monomer or are present in polybutadiene elastomers, may be oxidized to quinone-
type compounds (or simply color bodies) resulting in a discoloration or yellowing
of the polymer composition.” (Id.) According to the Specification, “oxidizing
agents . . . commonly found in the reaction processes for the production of styrenic
polymer compositions include metallic stearates, initiators, air or combinations
thereof” (id. at [0025]) as well as peroxides (id. at [0036]).
Appellants’ method is directed to improving the color of a high impact
polystyrene by addition of a color improving additive prior to the addition of any
oxidizing agents to the reaction mixture. (Id. at [0006].)
Appellants do not present separate arguments in support of patentability as
to any particular claim or claim grouping. (See generally, App. Br. 3-4.)
Accordingly, we decide the appeal as to all claims on the basis of claim 22, the
sole independent claim, which is reproduced below from the Claims Appendix to
the Appeal Brief:

3 Specification filed Jul. 10, 2006.
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22. A method of improving the color of a high impact polystyrene
comprising:

preparing a reaction mixture comprising styrene, elastomer and at least one
antioxidant; and

introducing to the reaction mixture a color improving additive consisting
essentially of an alkali salt of an organic acid, an alkali salt of lactic acid, sodium
stearoyl lactate, calcium stearoyl lactate or combinations thereof prior to the
addition of any oxidizing agents to the reaction mixture.

The Examiner relies on Sosa ‘880 and Sosa ‘587 for teachings of methods of
making a high impact polystyrene comprising “preparing a reaction mixture
comprising styrene, elastomer and at least one antioxidant” (claim 22). (Ans.4 3-4,
bridging para. (as to Sosa ‘880); 5 (as to Sosa ‘587).) Sosa ‘880 and Sosa ‘587
disclose their processes may contain undesirable contaminants which affect color
of the final product, as well as unwanted species such as oxygen. (Ans. 3-5; Sosa
‘880 col. 4, ll. 41-46 (“The contaminants include phenols and quinones . . . [and]
may also degrade the quality and color of the finished monovinyl aromatic
polymers.”); Sosa ‘587, col. 4, ll. 17-31 (noting that benzoic acid, which can be
produced by air oxidation of benzaldehyde inhibits styrene polymerization); Sosa
‘880 col. 6, ll. 15-25 and Sosa ‘587 col. 3, ll. 33-34 (noting the recycle streams
may contain unwanted species such as oxygen which adversely affect the
polymerization process and/or resultant HIPS product).)
The Examiner finds Gilg discloses a stabilizer mixture which may be used in
a HIPS process. (Ans. 4; Gilg cols. 7-8 (Examples 1 and 7).) The stabilizer
mixture may be added before or during polymerization or before crosslinking.

4 Examiner’s Answer mailed Aug. 25, 2010.
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(Ans. 4; Gilg col. 19, ll. 35-38.) Gilg’s stabilizer mixture comprises at least one
bisphenol ester derivative and calcium lactate and/or calcium stearoyl-2-lactylate
that is suitable for stabilizing an organic material against oxidative, thermal or
light-induced degradation. (Ans. 4; Gilg col. 1, ll. 28-32.) According to Gilg, the
stabilizer mixture “is distinguished by an outstandingly good stability towards
hydrolysis and an advantageous colour behavior, that is to say, little discoloration
of the organic materials during processing” (col. 21, ll. 15-20, cited in Ans. 4).
Based on the above factual findings, the Examiner concluded “[i]t would
have been obvious to a practitioner having [] ordinary skill in the art at the time of
the invention to add the stabilizer of Gilg to the process of the primary reference
prior to addition of oxidizing agents since the primary reference discloses that
oxidation is undesirable and since [the] secondary reference discloses that
oxidation is inhibited by such addition and in the expectation of reduced color
absent any showing of surprising or unexpected results.” (Ans. 4 (as to Sosa ‘880);
see also, Ans. 5 (as to Sosa ‘587).)
We have considered all arguments advanced by Appellants in the Appeal
and Reply Briefs. We note Appellants do not directly dispute any of the above-
stated findings of fact, including the Examiner’s proposed motivation to modify
the method of the primary references to include a step of adding Gilg’s stabilizer
“prior to the addition of any oxidizing agents to the reaction mixture” (claim 22).
(See generally App. Br. 3-4; Rep. Br.5 1-3.) We determine Appellants raise only
one issue with respect to the Examiner’s above-stated fact finding and reasoning6:

5 Reply Brief filed Dec. 30, 2010.
6 We note the Examiner has advanced alternative facts and reasons in support of
the rejections and that Appellants have presented arguments in response thereto.
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did the Examiner reversibly err in finding Appellants’ claimed “color improving
additive” reads on Gilg’s stabilizer mixture which includes both a bisphenol ester
derivative and a calcium stearoyl lactate?
Appellants maintain the claimed “color improving additive” does not read
on Gilg’s stabilizer mixture because the mixture includes a bisphenol ester
derivative which is excluded by the phrase “consisting essentially of” (claim 22).
(App. Br. 3.)
The term “consisting essentially of” is used in claim construction to indicate
that an “invention necessarily includes the listed ingredients and is open to unlisted
ingredients that do not materially affect the basic and novel properties of the
invention.” PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.
Cir. 1998).
The Examiner has identified disclosure in Gilg which supports a finding that
the presence of a bisphenol ester derivative would not affect the basic and novel
properties of Appellants’ claimed color improving additive and, therefore, is not
excluded by the claim 22 phrase “consisting essentially of.” (See Gilg col. 21, ll.
15-20 (noting the stabilizer mixture has “an advantageous colour behavior, that is
to say, little discoloration of the organic materials during processing”) supra.)
Appellants have not directed us to any evidence (see generally App. Br. 3-4; Rep.
Br. 1-3), nor do we find any basis in the Specification to support a contrary finding
(cf. Spec. [0019] (stating that, in addition to the color improving additive, other
additives may be employed, including stabilizers to help protect the styrenic

We decline to discuss the Examiner’s alternative positions, as we find the above-
stated facts and reasons sufficient to support a prima facie case of obviousness.
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polymer composition from degradation due to exposure to excessive temperatures
and/or ultraviolet light)).
In sum, Appellants have failed to persuade us of reversible error on the part
of the Examiner in determining Appellants’ claimed “color improving additive”
reads on Gilg’s stabilizer mixture which includes both a bisphenol ester derivative
and a calcium stearoyl lactate. We find a preponderance of the evidence supports
the Examiner’s obviousness determination. Therefore, we sustain the rejections of
claims 3-20 and 22.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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