NITSCHE, Jasmin et al.

Patent Trials and Appeals Board

Jun 2, 2020

2019004548 (P.T.A.B. Jun. 2, 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.
14/489,632 09/18/2014 Jasmin NITSCHE 441321US99 5734
22850 7590 06/02/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HOCK, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JASMIN NITSCHE,
HARALD HAEGER, SEBASTIAN GEERKENS,
FRANZ-ERICH BAUMANN,
and REINHARD BEUTH
__________

Appeal 2019-004548
Application 14/489,632
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JEFFREY R. SNAY, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision rejecting claims 1–3, 8–17, and 19. We have jurisdiction under 35 U.S.C.
§ 6(b). A hearing was held on May 13, 2020.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Evonik Degussa
GmbH. Appeal Brief dated December 20, 2018 (“App. Br.”), at 2.
2 The transcript of the hearing (“Tr.”) will be entered in the Official file of the
instant Application.
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Application 14/489,632

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We AFFIRM.
The claims on appeal are directed to a molding composition comprising a
partially aromatic copolyamide and an olefinic copolymer, wherein the molding
composition does not contain an aliphatic homopolyamide.
Independent claim 1 is reproduced below from the Claims Appendix to the
Appeal Brief. The limitation at issue is italicized.
Claim 1: A moulding composition, comprising at least 40 wt.%
of the following components:
a) 60 to 99 parts by wt. of a partially aromatic copolyamide
comprising as polymerized monomer units:
I) 40 to 90 mol% of a combination of
hexamethylenediamine and terephthalic acid; and
II) 70 to 10 mol% of a lactam, a ω-aminocarboxylic
acid, or both, with 11 or 12 C atoms,
the above mol% values being relative to the sum of I and II; and
b) 40 to 1 parts by wt. of an olefinic copolymer consisting
of as polymerized monomer units:
i) 35 to 94.9 wt. % of ethene-based monomer units,
ii) 5 to 65 wt. % of monomer units based on 1-butene,
and
iv) 0.1 to 2.5 wt. % of monomer units based on an
aliphatically unsaturated dicarboxylic acid anhydride,
wherein:
at least one of the following conditions may be satisfied
at most 20% of the hexamethylenediamine can be
replaced by the equivalent quantity of another diamine,
at most 20% of the terephthalic acid can be replaced by
the equivalent quantity of another aromatic dicarboxylic acid, 1,4-
cyclohexanedicarboxylic acid, or both, and
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at most 20% of the repeating units of the lactam, the ω-
aminocarboxylic acid, or both, with 11 or 12 C atoms can be replaced
respectively by the equivalent number of units which are derived from
a combination of hexamethylenediamine and a linear aliphatic
dicarboxylic acid with 8 to 19 C atoms, a caprolactam, or both;
a sum of the weight % values of i), ii), iii)[3] and iv) is 100%;
the sum of the parts by wt. of a) and b) is 100; and
the moulding composition does not contain an aliphatic
homopolyamide.
App. Br. 12–13 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1–3, 8–12, 14–17, and 19 under 35 U.S.C. § 103 as
unpatentable over Doshi et al.4 in view of Tanaka et al.5; and
(2) claim 13 under 35 U.S.C. § 103 as unpatentable over Doshi in view of
Tanaka further in view of Desbois et al.6
B. DISCUSSION
Relying on comparative composition C21 in Doshi Table 18, the Examiner
finds that a thermoplastic composition comprising a partially aromatic
copolyamide (PA 610/6T) and a maleic anhydride grafted ethylene/α-olefin

3 In an amendment dated November 24, 2017, the Appellant deleted the phrase “iii)
0 to 10 wt. % of monomer units based on an olefin different from i) and ii)” from
claim 1. In the event of further prosecution, the Examiner and the Appellant
should consider whether “iii)” should be deleted. See Tr. 10, l. 15–11, l. 13
(indicating that it was error to retain “iii)”).
4 US 2012/0196973 A1, published August 2, 2012 (“Doshi”).
5 US 6,008,297, issued December 28, 1999 (“Tanaka”).
6 US 2012/0245283 A1, published September 27, 2012 (“Desbois”).
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copolymer (PT-4), which satisfies the requirements of claim 1, was known in the
art at the time of the Appellant’s invention.7 Non-Final Act. 3.8
There is no dispute on appeal that comparative C21 does not contain an
aliphatic homopolyamide as claimed. Nonetheless, the Appellant argues that the
inventive compositions of Doshi “must include from 10 to 45 weight percent of an
aliphatic homopolyamide.” App. Br. 8. The Appellant argues that “the
experimental data in [Doshi] clearly illustrates that omitting the aliphatic
homopolyamide [as in comparative composition C21] leads to the resulting
compositions hav[ing] significantly degraded characteristics.” App. Br. 8
(emphasis omitted). For example, at the conclusion of Table 18, Doshi discloses
that “[w]hile both compositions C21 and E29 [(i.e., an inventive composition)]
show tan delta peak values below 0.21 when plasticizer is present, melt blended
composition E29 shows improved high temperature modulus, and better high
temperature tube burst pressure, compared to C21.” Doshi ¶ 178; App. Br. 9
(citing Doshi ¶ 178).
The Examiner recognizes Doshi discloses that the inventive compositions,
which include an aliphatic homopolyamide, have improved high temperature
modulus compared to compositions, such as C21, that do not include an aliphatic
homopolyamide. Ans. 9. Nonetheless, the Examiner explains that
Doshi et al. does not disclose that the moulding composition could not
be formed if the aliphatic homopolyamide was omitted, simply the

7 The Examiner relies on Tanaka to show that the weight percentages of the maleic
anhydride grafted ethylene/α-olefin copolymer recited in claim 1 were known in
the art at the time of the Appellant’s invention. Non-Final Act. 4; Examiner’s
Answer dated March 20, 2019 (“Ans.”), at 8. In the Briefs on appeal, the
Appellant does not direct us to any error in the Examiner’s findings as to Tanaka or
the Examiner’s reason for combining the teachings of Tanaka and Doshi.
8 Non-Final Action dated August 6, 2018.
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composition with an aliphatic homopolyamide has an improved
property. The fact that [a composition] without the aliphatic
homopolyamide is shown to be less than optimal does not vitiate the
fact that it is disclosed. . . . It has been clearly shown in Doshi et al.
and the prosecution history that the moulding composition that omits
the aliphatic homopolyamide can be used to form a moulding
composition.[9]
Ans. 9.
Turning to Table 18, Doshi discloses that the tan delta peak values of
inventive composition E29 and comparative composition C21 are 0.17 and 0.18,
respectively, and that the storage modulus @ 23° C. of composition C21 is higher
than the storage modulus @ 23° C. of inventive composition E29. Doshi Table 18
also discloses that the storage modulus @ 125° C. and the tensile modulus @ 125°
C. of inventive composition E29 are both 5 Mpa higher than those same properties
in composition C21, and the burst pressure @ 125° C. of inventive composition
E29 is 4 bars higher than the burst pressure @ 125° C. of composition C21.
Significantly, the Appellant does not direct us to any evidence or provide
any technical reasoning explaining why the differences between the high
temperature modulus and high temperature tube burst pressure of composition C21
and inventive composition E29 would have discouraged one of ordinary skill in the
art from using composition C21 as a molding composition. The mere fact that

9 The Appellant indicates that “aliphatic homopolyamides” were excluded from the
claimed composition “for the specific purpose of distinguishing the claimed
inventions from the thermoplastic compositions of the primary reference Doshi.”
App. Br. 6–7. The Appellant’s Specification states that aliphatic polyamides are
optional (i.e., “may be contained as an additive”) and lists eighteen “[s]uitable
aliphatic polyamides,” including PA1010. See App. Br. 3 (citing Spec. 10, ll. 12–
17); see also Doshi Table 18 (disclosing that PA1010 is used in inventive
composition E29). The disclosed compositions are said to be useful as molding
compositions regardless of whether they include an aliphatic homopolyamide.
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inventive composition E29 exhibits “improved” high temperature modulus and
“better” high temperature tube burst pressure than composition C21, without more,
does not demonstrate nonobviousness. See Doshi ¶ 178.
On balance, a preponderance of the evidence of record supports the
Examiner’s conclusion of obviousness as to claim 1. The Appellant does not
present arguments in support of the separate patentability of any of dependent
claims 2, 3, 8–17, and 19. Therefore, the obviousness rejections of claims 1–3, 8–
17, and 19 are sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 8–12,
14–17, 19
103 Doshi, Tanaka, 1–3, 8–12,
14–17, 19

13 103 Doshi, Tanaka,
Desbois
13
Overall
Outcome
1–3, 8–17, 19

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)(iv).
AFFIRMED