Ex Parte van de Grampel et al

Patent Trial and Appeal Board

Mar 19, 2018

13679231 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/679,231 11/16/2012 Robert van de Grampel
140646 7590 03/21/2018
Cantor Colburn - SABIC General
20 Church Street
22nd Floor
Hartford, CT 06103-3207
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.
lOCLYOOOl-US-NP 5361
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
USPTOPatentMail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT VAN DE GRAMPEL,
KARIN VAN DE WETERING,
HENDRIK THEODORUS VAN DE GRAMPEL,
JAN PLEUN LENS, and JOHANNES GOOSSENS
Appeal2017-005802
Application 13/679,231
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1--4, 7-9, 11-14, and 16-24. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as "SABIC Global
Technologies B.V." (Br. 1).
Appeal2017-005802
Application 13/679,231
Appellants' invention is directed to polycarbonate compositions said
to have a combination of high flame retardance at low thicknesses, high flow
properties, and good impact strength (Spec. iii! 2, 6).
Claim 1 is illustrative (emphasis added):
1. A flame retardant thermoplastic composition comprising:
at least one polycarbonate polymer;
at least 0.05 weight percent of a flame retardant additive;
2 wt% or more of glass fibers;
2 wt% of more of talc; and
an acid stabilizer;
wherein the weight ratio of the talc to the glass fibers is
from 0. 65 to 2, the composition contains 9 wt% to 12 wt% of
the glass fibers and the talc combined, and the weight ratio of
the acid stabilizer to the talc is from about 0.01 to about 0.05;
wherein the thermoplastic composition has a melt volume
rate (MVR) of 10 to 25 cc/20 min when measured according to
ISO 1133 at 300°C and a 1.2 kg load, a flexural modulus of at
least 3 .0 GPa when measured according to ISO 178, a Vicat
Bl20 softening temperature of 135°C to 160°C when measured
according to ISO 306, and a notched Izod impact strength of at
least 60 Jim or greater when measured at room temperature per
ASTM D256; and
wherein an article molded from the thermoplastic
composition can attain UL94 VO performance at a thickness of
1.2 mm.
Br. 6 (Claims App.).
Appellants appeal the following rejection:
1. Claims 1--4, 7-9, 11-14, and 16-24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Volkers et al. (US 2006/0287422 Al,
published Dec. 21, 2006, "Volkers") in view of Kikuchi (JP 2001-
2
Appeal2017-005802
Application 13/679,231
164105, published June 19, 2001, and relying on an English
translation dated July 22, 2014, "Kikuchi").
Appellants' arguments focus on the subject matter of independent
claim 1 (Br. 3-5). Any claims not argued separately will stand or fall with
our analysis regarding claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner, inter alia, finds that Volkers teaches or suggests the
subject matter of claim 1, but does not expressly teach that: (i) the
composition contains 9 wt% to 12 wt% of the glass fibers and the talc
combined or (ii) the weight ratio of the talc to the glass fibers is from 0.65 to
2 (Final Act. 2-3).
With respect to the requisite wt% of glass fibers and talc combined,
the Examiner finds that Volkers teaches using about 1 to about 20 parts by
weight of such a combination based on 100 parts by weight of the
polycarbonate resin, the aromatic vinyl copolymer and any impact modifier.
Id. at 2; see Volkers ,-i 67. The Examiner concludes that such
subject matter as a whole would have been obvious to one
having ordinary skill in the art at the time the invention was
made, since it has been held that choosing the over lapping
portion, of the range taught in the prior art and the range
claimed by the applicant, has been held to be a prima facie case
of obviousness.
Final Act. 2-3.
Regarding the requisite weight ratio of talc to glass fibers, the
Examiner finds that "Kikuchi teaches that polycarbonate compositions
should have a weight ratio of glass fibers (D-1) to talc (D-3) of from 25:75-
75:25 and preferably 75:25-50:50 for good flame retardancy and bending
3
Appeal2017-005802
Application 13/679,231
flexibility." Id. at 4. The Examiner concludes that it would have been
obvious for the ordinary skilled artisan "to optimize the glass fiber to talc
ratio as taught by Kikuchi in the composition of Volkers ... to obtain the
desired flame retardance and bending flexibility." Id. The Examiner further
finds "Kikuchi demonstrates that the weight ratio is a result effective
variable that is optimized for good flame retardancy and bending flexibility"
(Ans. 3).
Appellants argue that Kikuchi teaches away from the requisite 9 wt%
to 12 wt% of the glass fibers and the talc combined (Br. 4). Appellants
contend that Kikuchi directs the skilled artisan to glass fibers and talc
combined weight percentages outside of the claimed range because "Kikuchi
states that at less than 25 wt% of the [glass fibers and talc] component,
rigidity is low." Id. at 4 (citing Kikuchi iJ 80). Appellants further argue that
"the Examiner cannot rely on Kikuchi for only the ratio of talc to glass
fibers, and ignore Kikuchi's teaching that the total amount should be a
minimum of 25 wt%" (Br. 4).
We are unpersuaded by these arguments. Appellants' arguments are
premised on bodily incorporation and are not focused on the Examiner's
reason for combining the cited art. It is well established that the obviousness
inquiry does not ask "whether the references could be physically combined
but whether the claimed inventions are rendered obvious by the teachings of
the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
bane); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.").
4
Appeal2017-005802
Application 13/679,231
There is no dispute that the weight percentage range of the glass fibers
and the talc combined required by Appellants' claim 1 is fully encompassed
by Volkers' parts by weight of combined fillers. Where a claim range
overlaps or is fully encompassed by a prior art range, a prima facie case of
obviousness exists. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003) ("Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than identifying a range
that simply overlaps a disclosed range. In fact, when, as here, the claimed
ranges are completely encompassed by the prior art, the conclusion is even
more compelling than in cases of mere overlap."). Therefore, the burden has
shifted to Appellants to show that the claimed invention would not have
been obvious. Peterson, 315 F.3d at 1330.
Furthermore, Appellants have not carried their burden to show that the
Examiner erred in concluding that it would not have been obvious to
optimize the glass fiber to talc ratio as taught by Kikuchi in the composition
of Volkers as a result effective variable to avoid low rigidity and in so doing
arrive at the claimed composition with good flame retardancy.
On this record, we affirm the Examiner's§ 103 rejection.
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. § l .136(a)(l )(iv).
ORDER
AFFIRMED
5