LOTTE ADVANCED MATERIALS CO., LTD.

Patent Trials and Appeals Board

Sep 15, 2020

15518585 - (D) (P.T.A.B. Sep. 15, 2020)

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.
15/518,585 04/12/2017 Pil Ho KIM 1224.266 3357
21176 7590 09/15/2020
Additon, Higgins & Pendleton, P.A.
10706 Sikes Place
Suite 350
Charlotte, NC 28277-8202
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
additon@ahpapatent.com
docket@ahpapatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PIL HO KIM, SEUNG SHIK SHIN, and KYUONG SIK CHIN

Appeal 2019-006127
Application 15/518,585
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–6 and 9–12.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., “LOTTE ADVANCED MATERIALS CO., LTD.”
(Application Data Sheet filed April 12, 2017 at 4), which is also identified as
the real party in interest (Appeal Brief filed May 16, 2019 (“Appeal Br.”) at
3).
2 See Appeal Br. 14–23; Reply Brief filed August 14, 2019 (“Reply Br.”) at
1–3; Final Office Action entered November 16, 2018 (“Final Act.”) at 3–16;
Examiner’s Answer entered June 14, 2019 (“Ans.”) at 4–23.
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I. BACKGROUND
The subject matter on appeal relates to a thermoplastic resin
composition and to a molded article (Specification filed April 12, 2017
(“Spec.”) ¶ 1). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief, as follows:
1. A thermoplastic resin composition comprising:
about 100 parts by weight of a polycarbonate resin;
about 10 parts by weight to about 140 parts by weight of a
(meth)acrylic resin including repeat units represented by
Formula 1:
[Formula l]

wherein R1 is a hydrogen atom, a methyl group or an ethyl
group and R2 is a substituted or unsubstituted C6 to C20 aryl
group;
about 10 parts by weight to about 80 parts by weight of an
aromatic phosphoric acid ester compound; and
about 10 parts by weight to about 110 parts by weight of
glass fibers,
wherein a difference in index of refraction between the
glass fibers and a resin mixture comprising the polycarbonate
resin, the (meth)acrylic resin, and the aromatic phosphoric acid
ester compound is about 0.02 or less, and
wherein the thermoplastic resin composition has a total
luminous transmittance of about 80% or higher and a haze of
about 10% or less, as measured on an about 1.0 mm thick
specimen in accordance with ASTM D1003, an Izod impact
strength of about 3 kgf·cm/cm to about 15 kgf·cm/cm, as
measured on an about 1/8” thick specimen in accordance with
ASTM D256, a flexural modulus of about 40,000 kgf/cm2 to
about 70,000 kgf/cm2, as measured on an about 6.4 mm thick
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specimen in accordance with ASTM D790, and a coefficient of
linear thermal expansion of about 20 μm/(m°C) to about 60
μm/(m°C), as measured in accordance with ASTM D696.
(Appeal Br. 24 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103, as
follows:
A. Claims 1, 2, 4–6, and 9–12 as unpatentable over Kwon et al.3
(“Kwon”) in view of Basham et al.4 (“Basham”) and Moy et
al.5 (“Moy”); and
B. Claim 3 as unpatentable over Kwon in view of Basham, as
evidenced by “Panlite® L-1250Y: TEIJIN LIMITED –
Polycarbonate” (July 2018) (“PANLITE L-1250Y”) and
“Panlite® L-1250Z100: TEIJIN LIMITED – Polycarbonate”
(July 2018) (“PANLITE L-1250Z100”).
(Ans. 4–23; Final Act. 3–16).
III. DISCUSSION
1. Grouping of Claims
The Appellant argues Rejections A and B together and relies on the
same arguments for all claims on appeal except for claim 12 (Appeal Br. 14–
23). Therefore, we decide this appeal on the basis of claim 1, which we

3 US 2010/0152357 A1, published June 17, 2010.
4 US 2006/0020075 A1, published January 26, 2006.
5 US 2011/0034597 A1, published February 10, 2011.
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select as representative, and separately argued claim 12. Claims 2–6 and 9–
11 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
2. The Examiner’s Position
With respect to claim 1, the Examiner finds that Kwon describes a
thermoplastic resin composition comprising a polycarbonate (e.g.,
PANLITE L-1250WP) and an acrylic copolymer (e.g., a copolymer of 50%
by weight of methyl methacrylate and 50% by weight of phenyl
methacrylate with a refractive index of 1.530) (Ans. 4; Final Act. 3). The
Examiner finds further that, in Example 1, Kwon teaches a composition
comprising 90 parts of the polycarbonate and 10 parts of the acrylic
copolymer, which may be recalculated or rescaled to 11 parts of the acrylic
copolymer per 100 parts of the polycarbonate (Ans. 4; Final Act. 3).
Additionally, the Examiner finds that Kwon teaches that the compositions
may also comprise flame retardants, fillers, and reinforcers, but
acknowledges that such compositions are not exemplified (Ans. 5; Final Act.
4). The Examiner acknowledges further that although Kwon teaches
reducing the difference in refractive index between the polycarbonate and
the acrylic copolymer, it does not disclose or suggest making the “difference
in index of refraction between . . . glass fibers and a resin mixture
comprising the polycarbonate resin, the (meth)acrylic resin, and [an]
aromatic phosphoric acid ester compound [to be] about 0.02 or less,” as
recited in claim 1.
To bridge the gaps between the subject matter recited in claim 1 and
Kwon’s disclosure, the Examiner relies on Basham (Ans. 5; Final Act. 4).
Specifically, the Examiner finds that Basham teaches transparent
polycarbonate compositions containing glass fibers that are selected to
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match the refractive index of the thermoplastic resin component, which
includes the polycarbonate and any other thermoplastic polymer, to within
0.04 units to provide compositions having an excellent combination of
optical and physical properties, in particular transparency and dimensional
stability (Ans. 5–6; Final Act. 4–5). According to the Examiner, Basham
teaches that milled glass fibers offer a good balance of properties (Ans. 5;
Final Act. 4). Furthermore, the Examiner finds that Basham would have
reasonably suggested to a person having ordinary skill in the art that the
difference in refractive index between the glass fibers and the thermoplastic
resin component and any other additives, including flame retardant, is
preferably in the range of 0.005–0.03 and that haze values are significantly
reduced when the difference is less than 0.01 (Ans. 6; Final Act. 5). Based
primarily on these findings, the Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time the invention was filed to match the refractive
index of glass fibers added to the compositions of Kwon to be
within 0.04 of the thermoplastic resin composition including any
additives, such as flame retardants, for the advantage of
providing compositions that [have an] excellent combination of
optical and physical properties, in particular transparency and
dimensional stability as taught by Basham.
(Ans. 6; Final Act. 5).
The Examiner relies on Moy to establish the obviousness of selecting
an aromatic phosphoric acid ester-based compound as the flame retardant in
the composition resulting from the combination of Kwon and Basham in
order to produce compositions with excellent flame retardancy and improved
physical properties (Ans. 8; Final Act. 7).
As for the properties recited in the last clause of claim 1 and in claim
12, the Examiner finds that the compositions suggested by the prior art
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compositions are similar to those disclosed by the Inventors in the
Specification (Spec. ¶ 100 (Table 1, Example 6)), and that, therefore, these
compositions would reasonably appear to meet the specified properties (Ans.
10, 13–14; Final Act. 9, 13).
3. The Appellant’s Contentions
The Appellant contends that the prior art references do not teach or
suggest the limitation “a difference in index of refraction between the glass
fibers and a resin mixture comprising the polycarbonate resin, the
(meth)acrylic resin, and the aromatic phosphoric acid ester compound is
about 0.02 or less,” as recited in claim 1, because Basham’s teaching
regarding matching the refractive index of glass with the refractive index of
the thermoplastic resin component (polycarbonate and any other
thermoplastic resin) “is not the same . . . as teaching or suggesting matching
refractive indexes of glass fibers and a resin mixture comprising
polycarbonate resin, (meth)acrylic resin, and aromatic phosphoric acid ester
compound as recited in claim 1” (Appeal Br. 14, 16). The Appellant argues
further that Basham teaches that other thermoplastic polymers may be used
with a polycarbonate, but the only examples of such other thermoplastic
polymers are polyester resins—not acrylic resins (id. at 16). Additionally,
the Appellant argues that “[c]ontrary to the position taken by the Examiner,
when [Basham’s] paragraph [0092] is correctly read in context, the reference
to ‘any’ additive is to the specific additives used in the examples” (id. at 17).
According to the Appellant, “[t]here accordingly cannot be any reasonable
expectation of success with regard to a composition and property thereof that
is not even taught or recognized in the cited art” (id.). As for Kwon, the
Appellant argues that “Kwon matches refractive index as between the noted
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polymers” but “[t]his is not the same as suggesting matching the refractive
indexes of any other unspecified components, and certainly does not provide
any reasonable expectation of success with respect to matching refractive
index values glass and a resin mixture comprising polycarbonate resin and
any amount and/or type of additive” (id. at 18). As for Moy, the Appellant
argues that Moy, like Basham, does not teach all of the elements recited in
claim 1 (id. at 15).
Regarding the property limitations recited in claims 1 and 12, the
Appellant argues that the Examiner’s use of the Appellant’s own inventive
Example 6 constitutes impermissible hindsight based on the applicant’s own
disclosure (id. at 18–19, 21–22). In any event, the Appellant contends that
the composition in Example 6 is not the same as the modified Kwon
compositions proposed by the Examiner, and, “if anything, demonstrates
unexpected benefits of the claimed compositions” (id. at 19, 22). According
to the Appellant, the Examiner’s position that the suggested prior art
composition would have the claimed properties lacks a reasoned explanation
and, therefore, is merely conclusory (id. at 22).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Because we discern no reversible error in the Examiner’s factual
findings, analysis, and legal conclusions as set forth in the Examiner’s
Answer and the Final Action, we adopt them as our own and add the
following for emphasis. In re Cree, Inc., 818 F.3d 694, 698 n.2 (Fed. Cir.
2016); In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995).
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Kwon describes a polycarbonate resin composition with improved
transparency and scratch resistance comprising about 10 to about 99% by
weight of a polycarbonate resin (A); about 1 to about 90% by weight of an
acrylic copolymer with ultra-low molecular weight and high refractive index
(B) (e.g., a refractive index of about 1.495 to about 1.590); and optionally
less than 89% by weight of an acrylic resin (C) (Kwon Abstract; ¶ 18).
According to Kwon, compatibility of the resins may be improved because
the difference in the refractive indices of the resins is reduced and thus
independent domains of polycarbonate and acrylic resin may not be
observed, and excellent transparency may be achieved because phase
separation is minimized during melt mixing (kneading) at high temperature
(id. ¶ 54). As a result, Kwon states that the “[t]ransparency of the
polycarbonate resin composition . . . can be similar to the transparency of a
polycarbonate resin alone” (id.). Kwon further teaches that the
polycarbonate resin composition may comprise one or more identified
additives that include, inter alia, flame retarders, fillers, or reinforcers (id.
¶ 58).
In Example 1, Kwon discloses a polycarbonate resin composition
containing (A) 90 parts by weight of a bisphenol-A based linear
polycarbonate having a weight average molecular weight of 25,000 g/mol
made by Teijin Chemicals Ltd. (PANLITE L-1250 WP)6 and (B) 10 parts by
weight an acrylic copolymer having a refractive index of 1.530 and a
molecular weight of 25,000 g/mol prepared by suspension polymerizing

6 In rejecting claim 3, the Examiner relies on PANLITE L-1250Y and
PANLITE L-1250Z100 to show that PANLITE L-1250 WP would appear to
have a refractive index of 1.585 (Ans. 15; Final Act. 14).
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50% by weight of phenyl methacrylate and 50% by weight of methyl
methacrylate (id. ¶ 83, Table 1)—monomers that fall within the scope of
claim 1 (Spec. ¶¶ 43–47).7 Kwon states that the transparency (as determined
by measuring total light transmittance TT and haze value (as measured by
Haze Meter NDH 2000 manufactured by Nippon Denshoku)) are 87.8% and
1.0%, respectively (Kwon ¶ 91, Table 1), and, therefore, Kwon’s
composition would reasonably appear to meet the total luminous
transmittance and haze of 80% or higher and about 10% or less, as specified
in claim 1, although the methods for measurement in Kwon may differ from
that used for the claimed invention. In re Best, 562 F.2d 1252, 1255 (CCPA
1977).
Thus, Kwon’s polycarbonate resin composition as described in
Example 1 differs from that specified in claim 1 as follows: (i) Kwon does
not disclose about 10 parts by weight to about 110 parts by weight of glass
fibers as a filler or reinforcer material; (ii) Kwon does not disclose about 10
parts by weight to about 80 parts by weight of an aromatic phosphoric acid
ester compound as a flame retarder (Spec. ¶ 57); (iii) Kwon does not
disclose the difference in refractive index between the filler or reinforcer and
the mixture containing the polycarbonate resin (A), acrylic resin (B), and
any flame retarder; and (iv) Kwon does not provide sufficient information
regarding the Izod impact strength, flexural modulus, or coefficient of linear
thermal expansion as specified in claim 1. Notwithstanding these

7 The Appellant does not dispute the Examiner’s determination that when 90
parts of polycarbonate resin (A) is rescaled to 100 parts by weight, the
amount of the acrylic resin (B) is calculated to be about 11 parts by weight
(Appeal Br. 7–23; Ans. 4; Final Act. 3).
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differences, we agree with the Examiner that claim 1’s subject matter as a
whole would have been obvious in view of the combined teachings found in
Kwon, Basham, and Moy.
Regarding difference (i) (glass fibers), Basham teaches that
compositions comprising a polycarbonate and a glass that closely matches
the refractive index of the polycarbonate may provide films that retain
transparency, yet have lower warping and/or wrinkling over a useful
temperature range (Basham ¶ 15). Significantly, Basham teaches that “the
films may have a low coefficient of thermal expansion (‘CTE’); low
yellowing; low haze; high transmission, and/or high flexural modulus” (id.).
Basham teaches that, in addition to the polycarbonate, “it is also possible to
use combinations of the polycarbonate resins with other thermoplastic
polymers”—e.g., polyesters (id. ¶ 36). Regarding the glass component,
Basham teaches that it may be used in an amount of about 0.05 to about 50%
by weight, which would overlap the amount recited in claim 1, and may be
in the form of milled glass fibers (id. ¶ 45). Basham teaches that “the glass
is selected so as to provide the desired balance of optical and physical
properties to the composition, in particular transparency (as reflected by low
haze and high transmissivity) and optionally low yellowness in combination
with low coefficient of thermal expansion and high flexural modulus” and
that “[t]o achieve these properties, the refractive index of the glass as
matched to that of the thermoplastic resin component (polycarbonate and
any other thermoplastic polymer) to within 0.04”—about 0.001 units to
about 0.04 units (id. ¶¶ 40–41 (emphases added)). According to Basham,
such matching provides an excellent combination of optical and physical
properties, in particular transparency and dimensional stability (id. ¶ 40).
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Furthermore, Basham teaches that the composition “may further include
various components and other additives ordinarily incorporated in resin
compositions of this type, for example impact modifiers, fillers, . . . flame
retardants . . . and the like, as well as combinations of various types of
additives” and that “[i]t is to be understood that the type and amounts of
such components and additives are selected so as to not significantly
adversely affect the desired properties of the compositions, in particular
haze, transparency, and coefficient of thermal expansion” (id. ¶ 58).
Suitable flame retardants are said to include phosphorus compounds in
amounts of about 1.0 to about 20 parts by weight per 100 parts by of the
resin component (id. ¶ 68).
Although neither Kwon nor Basham discloses an aromatic phosphoric
acid ester compound as a flame retarder, the Appellant (Appeal Br. 7–20)
does not dispute the Examiner’s finding that Moy shows that an aromatic
phosphoric acid ester is a known flame retardant that provides
polycarbonate-based compositions with excellent flame retardancy and
physical properties (Appeal Br. 7–20; Final Act. 7 (citing Moy ¶¶ 4, 13;
Abstract)).
Given the collective teachings found in these references, we share the
Examiner’s conclusion that a person having ordinary skill in the art would
have been prompted to use a suitable amount of glass fibers with a refractive
index that matches that of the mixture including the other components
(polycarbonate resin (A), acrylic resin (B), and suitable amounts of other
additives such as an aromatic phosphoric acid ester flame retardant) within
0.04 (e.g., 0.001) with a reasonable expectation of providing a composition
that may be manufactured into films having a low coefficient of thermal
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expansion, low yellowing, high transparency (low haze and high
transmission), and/or high flexural modulus as well as dimensional stability.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”); id. at 417 (“[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
The Appellant’s argument that none of the references teach all the
ingredients recited in claim 1 is misplaced, because, it fails to consider what
the collective teachings of the references would have suggested to a person
having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Here, Basham explicitly teaches that matching the refractive index of
the glass fibers to that of the mixture containing the other components
provides numerous advantages, as we recounted above, that coincide with
many of the properties of interest in the current invention (Basham ¶¶ 40–
41). Given that Kwon teaches the desirability of matching the refractive
indices of the polycarbonate and the acrylic resin to provide compositions
having high transparency and low haze (Kwon ¶¶ 54, 83, 96; Table 1), we
are in complete agreement with the Examiner that the subject matter recited
in claim 1 would have been obvious to a person having ordinary skill in the
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art within the meaning of 35 U.S.C. § 103, as we concluded above.
“Expected beneficial results are evidence of obviousness of a claimed
invention, just as unexpected beneficial results are evidence of
unobviousness.” In re Skoll, 523 F.2d 1392, 1397 (CCPA 1975).
The Appellant’s argument that Basham’s disclosure is limited to those
containing polyester as the additional thermoplastic resin and the additives
disclosed in the working examples lacks merit. Basham places no such
limitations (Basham ¶¶ 36, 58). “[I]n a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (citing In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Regarding the properties recited in the last clause of claim 1, it
appears that Kwon’s exemplified compositions meet the specified haze and
light transmittance, although Kwon appears to measure these properties by
different methods (Kwon Table 1). As the PTO has no means to obtain and
compare products, the burden of production was properly shifted to the
Appellant to show Kwon’s compositions would not necessarily possess
these properties. Best, 562 F.2d at 1255.
Additionally, any improvement in terms of impact strength, flexural
modulus, and coefficient of thermal expansion appear to be expected in view
of Basham (Basham ¶ 40). Again, “[e]xpected beneficial results are
evidence of obviousness of a claimed invention, just as unexpected
beneficial results are evidence of unobviousness.” Skoll, 523 F.2d at 1397.
Moreover, these properties would naturally flow from following the
suggestion in the prior art. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)
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(“The fact that appellant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the differences would otherwise be obvious.”).
See also In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (reaffirming
the principle that where the prior art gives reason or motivation to make the
same composition recited in a claim, the burden and opportunity shifts to the
applicant to rebut the prima facie case and the mere fact that the prior art
does not explicitly disclose the same property discovered for the
composition recited in a claim does not defeat that prima facie case.); accord
Merck, 800 F.2d at 1096 (“‘Structural similarity, alone, may be sufficient to
give rise to an expectation that compounds similar in structure will have
similar properties.’”) (quoting In re Payne, 606 F.2d 303, 313 (CCPA
1979)).
The Appellant’s argument (Appeal Br. 18–19) that the Examiner’s
consideration of Example 6 described in the Specification constitutes
impermissible hindsight is also without merit. As the Examiner explains
(Ans. 20 (citing In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011)), the use of
the Specification to determine what is covered by a claim is always
permissible as a matter of claim construction. Here, the Examiner merely
consulted the Specification to compare the composition suggested by the
prior art to the claimed composition. As for the Appellant’s allegation that
Example 6 constitutes evidence of unexpected results, this allegation is
unpersuasive for the reasons stated above regarding expected results and
structural similarity as well as in the Answer (Ans. 22).
Regarding claim 12, which depends from claim 1 through intervening
claim 11 and recites that “the thermoplastic resin composition has a flame
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retardancy of V-2 measured on a 0.8 mm thick specimen in accordance with
the UL-94 vertical test” (Appeal Br. 26), we adopt the Examiner’s reasoning
on pages 13–14 of the Answer. In this regard, Moy teaches that the flame
retardants disclosed therein provide excellent flame retardancy (Moy ¶ 4).
Best, 562 F.2d at 1255.
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejections.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 9–12 103 Kwon, Basham,
Moy
1, 2, 4–6, 9–
12

3 103 Kwon, Basham,
PANLITE L-
1250Y, PANLITE
L-1250Z100
3
Overall
Outcome
1–6, 9–12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED