EMS-PATENT AG

Patent Trials and Appeals Board

Jun 18, 2020

2019004822 (P.T.A.B. Jun. 18, 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.
14/680,608 04/07/2015 Etienne AEPLI P47505 1003
7055 7590 06/18/2020
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
DIGGS, TANISHA
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte ETIENNE AEPLI and PIERRE DUEBON
____________
Appeal 2019-004822
Application 14/680,608
Technology Center 1700
____________
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 5, 6, 8–10, 12–15, 17–20, and 22–34
of Application 14/680,608, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/680,608 filed April 7, 2015 (“’608 App’n”); the Non-Final Office Action
dated September 4, 2018 (“Non-Final Act.”); the Appeal Brief filed Feb. 25,
2019 (“Appeal Br.”); the Examiner’s Answer dated Mar. 27, 2019 (“Ans.”);
and the Reply Brief filed May 28, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as EMS-Patent
AG. Appeal Br. 3.
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Application 14/680,608
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For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to electrically conductive
molding materials and molded bodies made therefrom, and the use of
particulate fillers for increasing the electrical conductivity of polyamide
molding materials containing carbon fibers. Spec. ¶ 2. According to the
Specification, carbon fiber reinforced plastic materials are used in
lightweight construction in aviation and astronautics or for sports appliances
due to their light weight and outstanding mechanical properties. Spec. ¶ 3.
In the Specification the term “polyamide” (“PA”) is a generic term which
comprises homopolyamides and copolyamides as well as mixtures thereof.
Spec. ¶ 15. Specific polyamides are identified in accordance with ISO
standard 1874-1:1992(E). Spec. ¶ 15,
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A polyamide molding material, having the following
composition:
(a) 25 to 50% by weight of at least one semi-crystalline
polyamide selected from the group consisting of PA 46,
PA 6, PA 66, PA 11, PA 12, PA 610, PA 1212, PA 1010,
PA 10/11, PA 10/12, PA 11/12, PA 6/10, PA 6/12, PA
6/9, PA 8/10, PA 612, PA 66/6, PA 4T/4I, PA 4T/6I, PA
5T/5I, PA 6T/6I, PA 6T/6I/6, PA 6T/66, PA 6T/610,
PA10T/106, PA 6T/612, PA 6T/10T, PA 6T/10I, PA
10T, PA 12T, PA 10T/10I, PA 10T/12, PA 10T/11, PA
6T/9T, PA 6T/12T, PA 6T/10T/6I, PA 6T/6I/6, PA
6T/6I/12, PA 10T/612, PA 10T/610, and/or mixtures,
blends or alloys of said polyamides;
(b) 4 to 18% by weight of carbon fibers with a fiber diameter
in the range of 2 to 10 μm;
(c) 20 to 50% by weight of at least one particulate mineral or
saline filler;
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Application 14/680,608
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(d) 3 to 30% by weight of at least one amorphous polymer
with a glass transition temperature of at least 45°C
determined according to ISO 11357; wherein if the at
least one amorphous polymer comprises polyphenylene
ether, the polyamide molding material contains 5 to 9%
by weight of the polyphenylene ether;
(e) 0 to 20% by weight of carbon black;
(f) 0 to 20% by weight of at least one further additive and/or
addition agent;
wherein the components (a) to (f) add up in total to 100% by
weight, and
wherein the molding material has a specific surface resistance
of 1x10-1 to 1x104 ohms.
Appeal Br. 24 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:3
Name Reference Date
Uchida et al.
(“Uchida”)
US 2009/0098325 A1 Apr. 16, 2009
Yasue et al. (“Yasue”) 4 JP 03093855 A Apr. 18, 1991

3 The Examiner relies on the Antron Technical Bulletin as evidence that
crystalline polyamides disclosed in Yasue are not 100% crystalline. See
Non-Final Act. 6.
4 The Examiner relies on an English-language translation of the reference
without objection from Appellant.
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REJECTIONS5
The Examiner maintains the rejection of claims 1, 5, 6, 8–10, 12–15,
17–20, and 22–34 under 35 U.S.C. § 103 as obvious over Yasue in view of
Uchida, as evidenced by Antron Technical Bulletin. Non-Final Act. 6–9.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error in the Examiner’s
rejection.
In arguing against the Examiner’s rejection of claims 1, 5, 6, 8–10,
12–15, 17–20, and 22–34 as obvious over Yasue in view of Uchida, as
evidenced by Antron Technical Bulletin, Appellant does not argue any claim
apart from the others. See Appeal Br. 20–22. We select claim 1 as
representative for resolving the appeal. Claims 5, 6, 8–10, 12–15, 17–20,
and 22–34 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
With regard to claim 1, the Examiner finds that Yasue discloses the
invention “substantially as claimed.” Non-Final Act. 6. More specifically,

5 In the Answer, the Examiner withdrew the rejection of claims 1, 5, 6, 8–10,
12–15, 17–20, and 22–34 under 35 U.S.C. § 103 as obvious over Uchida.
Ans. 6.
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the Examiner finds that Yasue discloses (A) 15–98 wt% of crystalline
polyamide (reading on component (a) of claim 1); and (B) 1–70 wt% of
polyphenylene ether and (C) 1–50 wt% of amorphous polyamide having a
glass transition temperature of at least 100°C (both reading on component
(d) of claim 1). Id. The Examiner finds that Yasue teaches that its resin
composition can contain further additives such as reinforcing agent, carbon
fiber, talc, calcium carbonate, and mica. Id. The Examiner finds that Yasue
does not disclose (1) the specific claimed ranges of (A), (B), or (C); (2) the
carbon fiber diameter and amount of carbon fiber in the composition; (3) the
particulate filler and amount in the composition; (4) carbon black; (5) the
additive; or (6) the claimed surface resistivity of the molding. Id. at 6–7.
The Examiner relies on Uchida as teaching addition of (i) resin
reinforcing fibers such as carbon fiber having a diameter of 3–30 µm in 10–
200 parts per 100 parts of polyamide resin; (ii) fillers such as calcium
carbonate, talc, and mica in an amount of 200 parts by mass or less per 100
parts by weight polyamide; (iii) 3–30 parts carbon black per 100 parts by
mass of semi-aromatic polyamide resin; (iv) additives which satisfy claim
component (f); and (v) an electrical surface resistance of 1x106 ohm/sq or
less. Id. at 7.
The Examiner finds that the ranges of (A), (B), and/or (C) disclosed in
Yasue overlap the ranges of components (a) and (f) claimed in claim 1. Id.
at 7–8. The Examiner also finds that the ranges of carbon fiber amount,
carbon fiber diameter, filler amount, carbon black amount, and specific
surface resistivity disclosed in Uchida overlap the claimed ranges of
components (b), (c), and (e) in claim 1. Id.
The Examiner determines that it would have been obvious one of
ordinary skill in the art at the time of the invention to combine the teachings
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of Yasue and Uchida to improve mechanical strength and slidability of the
Yasue’s resin, and provide electrical properties and stability to the
composition. Id. at 8.
Appellant argues that the claimed amount of “at least one particulate
mineral or saline filler” (component (c) of claim 1) is not disclosed by Yasue
or Uchida. Appeal Br. 24. However, the Examiner finds correctly that
Yasue teaches “talc, calcium carbonate, and mica” as components of the
resin composition (Non-Final Act. 6), all of which are identified as
particulate mineral or saline fillers in the ’608 App’n (Spec. ¶ 24).
Moreover, Uchida discloses calcium carbonate, talc, and mica as specific
examples of fillers, and states that “[o]ne or more” of the identified fillers
may be employed. Uchida ¶ 85. Thus, Uchida teaches that 200 parts by
mass or less with respect to 100 parts by mass of resin may be used as a
filler. See id. Contrary to Appellant’s assertion, this disclosure teaches an
amount that overlaps the claimed “20 to 50% by weight of at least one
particulate mineral or saline filler” in claim 1.
Uchida’s disclosure is sufficient to create a prima facie case of
obviousness of the limitation. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (a prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art). This prima facie case of obviousness can be overcome if Appellant
shows either (i) that the prior art teaches away from the claimed invention or
(ii) that there are new and unexpected results relative to the closest prior art.
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). Here, Appellant does not
neither.
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Appellant’s argument that Uchida’s examples do not contain
particulate mineral or saline filler (Appeal Br. 21) is unpersuasive of
reversible error. The teaching of Uchida is not limited to the examples. In
re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to
the disclosure of specific working examples.”); see also In re Mercier, 515
F.2d 1161, 1165 (CCPA 1975) (“[A]ll of the relevant teachings of the cited
references must be considered in determining what they fairly teach to one
having ordinary skill in the art.”); In re Lamberti, 545 F.2d 747, 750 (CCPA
1976) (“all disclosure of the prior art, including unpreferred embodiments,
must be considered”). Furthermore, disclosed examples do not constitute a
teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971).
According to Appellant, “Uchida appears to indicate that a specific
surface resistance of 1x106 Ω/sq or less is a general goal . . .” Appeal Br. 22
(citing Uchida ¶ 132). Uchida discloses “[t]he electrical resistance (specific
surface resistance) is preferably 1x106 Ω/sq or less,” which completely
encompasses the claimed range of specific surface resistance, i.e., 1x10-1 to
1x104 ohms. See Uchida ¶ 132. As with the particulate mineral or saline
filler limitation, the teaching of an amount that overlaps the claimed amount
creates a prima facie case of obviousness of the claimed specific surface
resistance. Peterson, 315 F.3d at 1329. In an effort to overcome
obviousness, Appellant argues both teaching away from the limitation and
unexpected results for the composition. See Appeal Br. 22; Reply Br. 2–5.
Regarding teaching away, Appellant contends that Uchida imposes
strict guidelines and limitations on how much conductive filler can be used
in the composition by disclosing the desirability of adding as small an
amount of conductive filler as possible, as “long as the target electrical
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conductivity is obtained.” Reply Br. 2 (quoting Uchida ¶ 119). According
to Appellant, Uchida teaches away from a specific surface resistance below
1x106 Ω/sq because “the conductive additives that Uchida teaches are
necessary to obtain low surface resistance harm the physical properties of
the composition.” Id. at 3. Appellant focuses on the examples in Uchida,
rather than on the full disclosure in the reference. As discussed supra,
disclosed examples do not constitute a teaching away from a broader
disclosure, Susi, 440 F.2d at 446 n.3.
Uchida states:
The polyamide resin composition constituting the pipe joint of
the present invention may further comprise a conductive filler.
In this manner, electrical conductivity can be imparted to the
obtained pipe joint. In the polyamide resin composition, when
the amount of the conductive filler added is too low, the effects
of improving electrical conductivity are not satisfactory.
Therefore, in order to obtain sufficient antistatic properties, it is
preferable that the conductive filler be added in an amount such
that the specific volume resistivity of a molded article obtained
by melt-extruding a polyamide resin composition comprising the
conductive filler added thereto is 109 Ω-cm or less, and
particularly 106 Ω-cm or less. However, the addition of the
conductive filler significantly decreases various physical
properties of the polyamide resin composition, in particular,
strength, elongation and impact resistance, and is likely to
deteriorate the flowability. Therefore, it is desirable that the
amount of the conductive filler added be as small as possible so
long as a target electrical conductivity level is obtained.
Uchida ¶ 119 (emphasis added).
Thus, Uchida teaches too little conductive filler does not provide the
desired electrical conductivity, and too much decreases physical properties.
Uchida teaches that the target electrical conductivity is 106 Ω-cm or less,
which overlaps the specific surface resistance claimed in claim 1. Uchida,
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therefore, does not “criticize, discredit, or otherwise discourage the solution
claimed” by Appellant (In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)),
and does not teach away.
Finally, Appellant attempts to show that the claimed composition has
new and unexpected results. See Appeal Br. 21, 22; Reply Br. 4–5. “[T]he
burden of showing unexpected results rests on he who asserts them.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant argues that the
Specification contains sufficient data points inside and outside the claimed
range of particulate mineral or saline filler to overcome prima facie
obviousness of the range. Reply Br. 4. We find that it does not.
The Specification discloses 14 examples, all but two of which contain
either 35% or 40% by weight of calcium carbonate. Spec. ¶ 77. Two
examples—VB4 and VB5—contain no calcium carbonate. Spec. ¶ 77. The
12 examples containing 35% or 40% by weight of calcium carbonate show
specific surface resistance (ohm) of 1.2x102 to 3.5x1010. Spec. ¶ 78. VB4
and VB5 show specific surface resistance (ohm) of 1.3x105 to 2.4x106.
Spec. ¶ 78. Therefore, the examples do not support that 35% to 40% by
weight of calcium carbonate—much less 20 to 50% by weight of calcium
carbonate—unexpectedly produces the claimed specific surface resistance.
“When an applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a range that is within or
overlaps with a range disclosed in the prior art, the applicant must ‘show that
the [claimed] range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.’” Geisler, 116
F.3d at 1470–71 (quoting Woodruff, 919 F.2d. at 1578); see also Peterson,
315 F.3d at 1330 (An applicant must show that whatever property they are
asserting is unexpected throughout the claimed range, but not outside that
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critical range.) Here, Appellant fails to demonstrate that even the range of
35% to 40% by weight of calcium carbonate is critical, and provides no
evidence for compositions comprising 20% to 35% or 40% to 50% by
weight of calcium carbonate. Appellant fails to demonstrate any criticality
for the claimed range of “20 to 50% by weight.”
Moreover, the results provided are limited to a single specific filler
(calcium carbonate), while the claimed scope is to any combination of any
particulate mineral or saline fillers. See Appeal Br. 24 (Claims App’x).
Unexpected results must be “commensurate in scope with the degree of
protection sought by the claims on appeal.” In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005); see also In re Graselli, 713 F.2d 731, 743 (Fed. Cir.
1983) (“It is well settled ‘that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.’”). “Commensurate in scope” means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Claim
1 is much broader in scope than the single filler tested and the much
narrower amount of that filler. There is no adequate basis for reasonably
concluding that the number and variety of compositions included by claim 1
would behave in the same manner as the tested compositions.
For the reasons above, we sustain the rejection of claim 1 over Yasue
in view of Ochida. For those same reasons, we also sustain the rejection of
claims 5, 6, 8–10, 12–15, 17–20, and 22–34 over the same references.

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DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § 
Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8–
10, 12–15,
17–20, 22–
34
103
Yasue, Ochida,
Antron Technical
Bulletin
1, 5, 6, 8–10,
12–15, 17–
20, 22–34

TIME PERIOD FOR RESPONSE
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