Ex Parte Eckel et al

Patent Trial and Appeal Board

Sep 26, 2014

12338026 (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte THOMAS ECKEL, VERA BUCHHOLZ,
and ECKHARD WENZ
__________

Appeal 2013-000382
Application 12/338,026
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1–10, 12, and 14–24. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a polycarbonate composition
which comprises a rubber-containing graft polymer prepared by a bulk
polymerization process and a salt of a phosphinic acid (Spec. 1).
Claim 1 is illustrative:
1. A flameproof composition consisting essentially of:
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1
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Application 12/338,026

3
Phosphinate as applied to claims 1–10, 12, 14–21, and 23–34 above
and further in view of Fox (US 3,855,277, patented Dec. 17, 1974).
3. Claim 22 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
4. Claims 1–7, 9–13, and 15–19 are provisionally rejected on the ground
of nonstatutory obviousness-type double patenting over copending
Application No. 12/338,115.
5. Claims 1–6, 10–13, and 15–19 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over
copending Application No. 12/338,416.
6. Claims 1, 3–8, 11–16, 18, and 19 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over
copending Application No. 12/338,270.

REJECTIONS (1) AND (2)
The Examiner finds that Barren teaches the subject matter of claim 1,
except for the particular salt of phosphinic acid and its particular amount
used in their thermoplastic composition (Ans. 6–7). The Examiner finds that
Klatt discloses using 0.1 to 30% by weight of phosphinate salt having the
formula recited in the claims in a thermoplastic composition (Ans. 7–8).
The Examiner concludes that it would have been obvious to employ the
appropriate amount of phosphinate salt as taught by Klatt in the
thermoplastic molding composition of Barren with a reasonable expectation
of successfully preparing desired molded articles (Ans. 8). The Examiner
finds that Costanzi teaches using calcium hypophosphite salt, which is also
known as calcium phosphinate, with an average particle size of less than 20
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mm and as high as 50 mm in order to improve the flame retardant and
mechanical properties of a thermoplastic composition (Ans. 8). The
Examiner concludes that one of ordinary skill in the art would have modified
the composition as suggested by Barren and Klatt to use phosphinic acid
with a particle size as disclosed by Costanzi in order to improve the flame
retardant and mechanical properties of the resulting thermoplastic
composition (Ans. 9–10).
Appellants argue that there is no reason to combine the teachings of
Barren, Klatt, and Costanzi (App. Br. 13–14). Appellants contend that
Barren does not suggest incorporating the phosphinic acid salts and Barren,
Klatt, and Costanzi provide no suggestion for such a modification. Id.
Contrary to Appellants’ argument, the Examiner made specific
findings regarding why one of ordinary skill in the art would have
substituted Klatt’s phosphinic salt for the fire retardant material in Barren’s
composition (Ans. 8, 16). Appellants do not specifically contest or
otherwise show error in the Examiner’s reason for combining (i.e., in order
to successfully prepare molded articles with good mechanical and flame
retardant properties).
Appellants argue that the transitional claim language “consisting
essentially of” in claim 1 and “consisting of” in claim 23 excludes the
organophosphate flame proofing agents of the references (App. Br. 14 and
28–29). Appellants contend that organophosphate flame proofing agents
materially affect the basic and novel characteristics of the claimed invention
(App. Br. 14). Appellants contend that independent claim 20 recites that the
composition is free from phosphorous-containing flameproofing agents
listed in the claims which is contrary to what is disclosed by Barren, Klatt,
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Application 12/338,026

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and Costanzi (App. Br. 26). Appellants contend that Barren’s examples
include organophosphorus compounds and Klatt’s compositions include
organic and inorganic phosphorous compounds (App. Br. 14). Appellants
argue that nothing in Costanzi would have suggested excluding
organophosphates from the composition. Id. Appellants contend that Table
1 on page 18 of the Specification show that organophosphorus compounds
negatively affect the compositions’ properties (App. Br. 15).
Appellants’ showing in Table 1 is, however, limited to a single,
specific organophosphorus compound C-1 (i.e., oligophosphate based on
bisphenol A). Accordingly, Appellants single showing of organophosphate
compound C-1 is insufficient to establish that other organophosphates would
negatively affect the basic and novel characteristics of the claimed invention
(i.e., the mechanical and flame-retardant properties). Nevertheless, the
Examiner is not proposing to add Klatt’s phosphinic salt to a composition
that already contains organophosphate flame retardant. Rather, the
Examiner’s stated rejection is based on substituting Klatt’s phosphinic salt
flame retardant in a particle size as taught by Costanzi for the
organophosphorus flame retardants of Barren (Ans. 17–18). The Examiner
finds and Appellants do not dispute that Barren discloses two embodiments:
(1) a composition with no organophosphorus flame retardants and (2) a
composition having organophosphorus flame retardants. In other words,
Barren includes a broader disclosure that optionally includes flame
retardants such that the combined teachings of Barren, Klatt, and Costanzi
would have suggested using the particular phosphinic salt as the sole flame
retardant in Barren’s composition.
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Appellants argue that Costanzi’s composition may optionally contain
other polymers which would have affected the properties achieved by the
composition as shown in Comparative Example 2 of Table 1 on page 18 of
the Specification (App. Br. 15). Appellants contend that because of the
effect on the properties caused by the additional polymers, one of ordinary
skill in the art would not have looked to Costanzi.
Appellants admit that Costanzi discloses that the addition of the other
polymers is optional (App. Br. 15). So, the additional polymers need not be
used in Costanzi’s composition. Nevertheless, the Examiner’s rejection is
based upon the combined teachings of Barren, Klatt, and Costanzi.
Appellants’ attack on the individual reference fails to appreciate that the
obviousness rejection is based upon the combined teachings of references.
As noted by the Examiner Barren teaches components A and B of the
claimed composition in amounts within the claimed ranges (Ans. 6–7).
Appellants argue that Table 1 of the Specification demonstrates
superior and unexpected results (App. Br. 16). Specifically, Appellants
contend that addition of other phosphorous containing flame proofing agents
such as mono- and oligomeric phosphoric and phosphonic acid esters have a
negative effect when compared with the claimed phosphinic acid salts (App.
Br. 16). Appellants contend that a higher content of component B with the
same flame proofing agent also has a negative effect on physical properties
(App. Br. 16). Appellants contend that the data contained in Table 1 are
representative of the claims and demonstrate that the addition of other
phosphorous-containing flameproofing agents such as mono- and oligomeric
phosphoric and phosphonic acid esters have a negative effect when
compared with phosphinic salts (App. Br. 17).
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The Examiner correctly finds the evidence proffered by Appellants is
directed to two particular compositions and is not commensurate in scope
with the claimed subject matter (Ans. 19–20). Claim 1 includes a myriad of
compositions, while Appellants’ evidence is limited to two compositions.
To be probative of nonobviousness the proffered evidence must be
commensurate in scope with the claimed invention. In re Clemens, 622 F.2d
1029, 1036 (CCPA 1980).
Appellants’ arguments regarding claims 2–10, 12, 14–19, 21, and 24
amount to an allegation that the Examiner has not established that the prior
art teaches the subject matter of these claims (App. Br. 17–29). These
arguments do not address specifically or otherwise show error in the
Examiner’s specific findings or conclusion regarding the applied prior art
(Ans. 20–21; Reply Br. generally).
Regarding Rejection (2) of claim 22 under § 103, Appellants advance
the same arguments made regarding claim 20 from which claim 22 depends.
Specifically, Appellants argue that the claim excludes organophosphates and
the evidence of unexpected results in Table 1 of the Specification overcomes
any prima facie case (App. Br. 27). We are unpersuaded by these arguments
for the same reasons noted above regarding the arguments made regarding
claims 1, 20, and 23.
On this record and for the above reasons, we affirm the Examiner’s
§ 103 rejections.

REJECTION (3): 35 USC § 112: WRITTEN DESCRIPTION
The Examiner finds that the subject matter of claim 22, which recites
an Izod notched impact strength ak of “at least 18” lacks written descriptive
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support (Ans. 6). The Examiner finds that Table 1 of the Specification only
provides written descriptive support for an Izod notched impact strength of
18 to 21 based upon inventive examples 3 and 4 (Ans. 6).
Appellants argue that claim 22 depends from claim 20 and Table 1 in
the Specification includes two compositions within the scope of claim 20
having an Izod notched impact strength of 18 and 21, respectively (App. Br.
30). Appellants contend that the Examiner has not provided any arguments
or evidence showing why a person of ordinary skill in the art would find the
presently-described compositions to be inadequate to support a minimum
Izod notched impact strength of at least 18. Id.
The test for written description is “‘whether the disclosure of the
application . . . reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.’”
Eli Lilly & Co. v. Teva Pharms USA, Inc., 619 F.3d 1329, 1345 (Fed. Cir.
2010). “[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology.” Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010). As with other statutory rejections, the burden in the first instance is
on the Examiner to establish a prima facie case. See Hyatt v. Dudas, 492
F.3d 1365, 1369 (Fed. Cir. 2007) (“In the prosecution of a patent, the initial
burden falls on the PTO to set forth the basis of any rejection, i.e., a prima
facie case.”).

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9
Claim 22 depends from the composition of claim 20. Claim 20
includes many compositions including the two compositions (examples 3
and 4) in Table 1 with Izod notched impact strengths of 18 and 21. The
Examiner states there is only support for claiming the Izod notched impact
strength from 18 to 21. However, the Examiner has not established that the
much broader claim 20, whose subject matter is included in claim 22, is
limited solely to Izod notched impact strengths between 18 and 21 as
exemplified by the two compositions in Table 1. Indeed, the Examiner has
not argued or shown that the Izod notched impact strength range of claim 22
is not representative of the compounds of claim 20 from which it depends.
Accordingly, the Examiner has failed to present a prima facie case of lack of
written descriptive support for subject matter of claim 22.
On this record, we reverse the § 112, first paragraph, lack of written
description rejection.

REJECTIONS (4) TO (6): Obviousness-type Double Patenting Rejections
According to the Patent Office’s electronic database (eDAN), terminal
disclaimers dated September 27, 2012 and approved October 5, 2012, have
been filed in the present application disclaiming any term beyond any patent
that may issue in applications 12/338,115, 12/338,416, and 12/338,270.
Accordingly, the provisional obviousness-type double patenting rejections
are moot.

DECISION
The Examiner’s decision is affirmed.

Appeal 2013-000382
Application 12/338,026

10
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).

ORDER
AFFIRMED

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