SABIC Innovative Plastics IP B.V.

Patent Trials and Appeals Board

Aug 14, 2020

2019002748 (P.T.A.B. Aug. 14, 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.
14/015,044 08/30/2013 Edward Norman Peters 12PLAS0401-US-NP 7551
43249 7590 08/14/2020
CANTOR COLBURN LLP - SABIC (NORYL)
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
08/14/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD NORMAN PETERS

Appeal 2019-002748
Application 14/015,044
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and BRIAN D.
RANGE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10, 11, and 13–16 of Application
14/015,044. Final Act. (February 21, 2018). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies SABIC Global Technologies B.V. as the
real party in interest. Appeal Br. 2
Appeal 2019-002748
Application 14/015,044
2
I. BACKGROUND
The ’044 Application describes thermoplastic polyurethanes
exhibiting improved performance in one or more of tensile strength, heat
resistance, hardness, and char formation. Spec. ¶ 3. These properties can be
improved by incorporating 5 to 50 weight percent of a particulate
engineering plastic having specific properties into the polyurethane
thermoplastic resin. Id. ¶ 4.
Claim 1 is representative of the ’044 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A composition comprising:
50 to 95 weight percent of a thermoplastic polyurethane,
wherein the thermoplastic polyurethane is the reaction product
of reactants comprising a polymeric diol and a diisocyanate;
and
5 to 50 weight percent of a particulate engineering
plastic;
wherein the particulate engineering plastic comprises a
polyarylethersulfone, a polyimide, a poly(phenylene sulfide), a
semi-crystalline polyamide, or a combination thereof;
wherein the particulate engineering plastic has a glass
transition temperature or a crystalline melting point greater than
or equal to 200 °C;
wherein the particulate engineering plastic has a mean
particle size of 5 to 600 micrometers; and
wherein the weight percent values are based on the total
weight of the composition.
Appeal Br. 13.
Appeal 2019-002748
Application 14/015,044
3
II. REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1–
8, 10, 11, and 13–16 are rejected under 35 U.S.C. § 103 as unpatentable over
Thompson-Colon.2 Final Act. 6.
III. DISCUSSION
Appellant presents two arguments for reversal of all pending claims:
(1) the lack of a motivation to select the specific particulate material from
the list of materials described by Thompson-Colon, Appeal Br. 4–9, and
(2) the lack of a reasonable expectation of success, see id. at 9–12. Because
Appellant did not differentiate among the claims in making these arguments,
we select claim 1 as representative of the claims on appeal for the purposes
of these two arguments. 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appellant also
presents additional arguments3 for reversal of the rejection of claims 2 and
16. Appeal Br. 9. We address these arguments separately below.
A. Rejection of claims 1–8, 10, 11, and 13–16 as unpatentable
over Thompson-Colon
In rejecting claim 1, the Examiner found that Thompson-Colon
describes a composition comprising a thermoplastic polyurethane and
particulate engineering plastic materials. Final Act. 6–7 (citing Thompson-
Colon ¶¶ 21, 24–26, 53). The Examiner found that Thompson-Colon’s

2 US 2007/0093602 A1, published April 26, 2007.
3 We note that Appellant’s Appeal Brief does not comply with our rules
regarding claims separately argued. See 37 C.F.R. § 41.37(c)(1)(iv) (2018)
(“Under each heading identifying the ground of rejection being contested,
any claim(s) argued separately or as a subgroup shall be argued under a
separate subheading that identifies the claim(s) by number.”). In the future,
Appellant’s counsel would do well to comply with the board’s rules.
Appeal 2019-002748
Application 14/015,044
4
engineering plastic materials comprise polyethersulfone, polyimide,
polyimide, poly (phenylene sulfide), and mixtures thereof which are the
same materials as recited in claim 1. Id. at 7. The Examiner also found that
Thompson-Colon’s engineering plastic materials would have the claimed
properties because Thompson-Colon in claim 1 recite identical or
substantially identical chemical compounds. Id. The Examiner found that
Thompson-Colon describes its particles as having a mean particle size of
less than 1000 µm, and preferably from 10 to 200 µm which overlaps the
claimed size range. Id. (citing Thompson-Colon ¶ 50).
The Examiner found that Thompson-Colon does not specifically teach
the relative amounts of polyurethane and particulate engineering plastic
material in its composition. Id. at 8. The Examiner, however, found that
Thompson-Colon teaches the amount of the particulate
plastic material is less than 50% by weight of the
polyurethane (para [0051]). Thompson-Colon teaches that the
particulate plastic material may be present in the compositions
in an amount ranging between any combination of these argues
inclusive of the recited values (para [0051]).
Id.
Based on these findings of fact, the Examiner concluded that, absent a
showing of criticality with respect to the relative amounts of polyurethane
and engineering plastic particles and the size of the particles, the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art at the time of the invention. Id. at 8–9.
As discussed above, Appellant presents two arguments for the reversal
of the rejection of claim 1. We address these arguments separately below.
Appeal 2019-002748
Application 14/015,044
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1. Appellant’s argument regarding motivation to select
claimed polyarylethersulfone, polyimide, and
poly(phenylene sulfide), semi-crystalline polyamide, or a
combination of thereof as the organic particulate material
Appellant argues that claim 1 is patentable over Thompson-Colon
because Appellant argues that Thompson-Colon provides no reason to select
any of the claimed particulate engineering plastics from among the dozens of
organic particulate materials it describes. Appeal Br. 5. Appellant maintains
that the person having ordinary skill in the art would have to do much
picking and choosing from Thompson-Colon’s vast lists of materials to
arrive at the claimed invention. Id. Appellant asserts that the rejection should
be reversed because Thompson-Colon gives no indication or direction that
would lead a person of skill in the art to select the claimed materials. Id. at
5–9 (citing In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)).
We are not persuaded by this argument. As the Federal Circuit has
held, the fact that a reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious.”
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see
also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection
affirmed where the disclosure of the prior art was “huge, but it undeniably
include[d] at least some of the compounds recited in appellant’s generic
claims and [was] of a class of chemicals to be used for the same purpose as
appellant’s additives”).
Appellant’s claims are directed to a selection from the broadly
disclosed organic particulate materials in Thompson-Colon. Appellant’s
claims may be patentable if they are directed to compositions that provide
unexpected results relative to the closest prior art. Appellant does not point
Appeal 2019-002748
Application 14/015,044
6
us to any evidence supporting such a finding. We, therefore, cannot reverse
the rejection of claim 1 on this basis.
2. Appellant’s argument regarding the expectation of
success for 5–600 µm polyarylethersulfone, polyimide,
poly(phenylene sulfide), or semi-crystalline polyamide
particles
Appellant argues that claim 1 is patentable over Thompson-Colon
because “[the] reference provides no expectation of success for the use of a
polyarylethersulfone, polyimide, poly(phenylene sulfide), semi-crystalline
polyamide, or a combination thereof having a mean particle size range of 5
to 600 µm.” Appeal Br. 9. In particular, Appellant argues that its inventor
determined that improvements in one or more of tensile strength, heat
resistance, hardness, and char formation are imparted to thermoplastic
polyurethanes by incorporating particulate engineering thermoplastics with a
mean particle size between 5 and 600 µm. Id. at 10 (citing Spec. ¶¶ 10, 78–
81).
Appellant asserts that Thompson-Colon was not concerned with
providing compositions having improved tensile strength, heat resistance,
hardness, and/or char formation. Id. at 11. Appellant argues that Thompson-
Colon’s lack of disclosure regarding these properties means that a person of
ordinary skill in the art would not have had a reasonable expectation of
success in improving any of these properties. Id.
We are not persuaded by Appellant’s argument. The reasonable
expectation of success inquiry looks to “likelihood of success in combining
references to meet the limitations of the claimed invention.” Intelligent Bio-
Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016). As the Examiner notes, claim 1 does not recite the properties
Appellant argues. Ans. 12. The art suggests the recitations of claim 1, as we
Appeal 2019-002748
Application 14/015,044
7
explain above, and thus indicates that the recitations of claim 1 could be
successfully reached. Id. Appellant does not present persuasive argument or
evidence to the contrary. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d
1186, 1198 (Fed. Cir. 2014). (“The reasonable expectation of success
requirement for obviousness does not necessitate an absolute certainty for
success.”).
Moreover, “[u]nexpected properties . . . do not necessarily guarantee
that a new compound is nonobvious.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). Rather, these
unexpected properties are objective evidence of nonobviousness and must be
sufficient to outweigh any evidence of obviousness that might exist when all
the evidence for and against patentability is weighed together. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[P]atentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”); In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976) (“When prima facie obviousness is
established and evidence is submitted in rebuttal, the decision-maker must
start over.”).
In this case, Appellant has not provided us with any evidence
comparing the properties of the claimed compositions to the closest prior
art—i.e., the compositions exemplified in Thompson-Colon. Because
Appellant has not provided evidence of any differences, let alone unexpected
differences, we do not reverse the rejection of claim 1.
B. Appellant’s additional arguments for reversal of the rejection
of claims 2 and 16
Appellant presents additional arguments for reversal of the rejection
of claims 2 and 16. Appeal Br. 9. In particular, claim 2 specifies that the
Appeal 2019-002748
Application 14/015,044
8
particulate engineering plastic is a polyarylethersulfone, and claim 16
specifies a particular polyarylethersulfone. Id. Appellant argues that the
Examiner erred by finding that Thompson-Colon describes or suggests the
polyurethane compositions including these specific particulate engineering
plastic additives. Id.
We do not reverse the rejection of either claim 2 or claim 16. As
discussed above, Thompson-Colon renders the compositions recited in either
of these claims prima facie obvious. Appellant has not provided any
evidence comparing the claimed compositions to the closest prior art, which
is the compositions exemplified in Thompson-Colon. Thus, we affirm the
rejection of claims 2 and 16 as obvious.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–8, 10, 11, 13–16 103 Thompson-Colon 1–8, 10, 11, 13–16
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