Ex Parte Eckel et alDownload PDFPatent Trial and Appeal BoardSep 26, 201412338026 (P.T.A.B. Sep. 26, 2014) Copy Citation 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: App App by w arom weig by a weig acid, phos wher grou subg to 6, not m 1 2 eal 2013-0 lication 12 A) 58 to eight of co atic polye B) 0.5 to ht of comp bulk solut C) 0.1 to ht of comp wherein t phinic aci ein Mm+ is p 2, alkalin roup 2, 7 o and where ore than Appellan . Claims 1 § 103(a) patented patented publishe (http://w Jan. 12, . Claim 22 over Bar 00382 /338,026 99.6 parts mponents ster carbon 12 parts b onents A+ ion and/or 30 parts b onents A+ he salt or a d of the fo a metal c e earth m r 8 of the in the ave 80 μm. ts appeal –10, 12, 1 , as being May 16, 2 Apr. 6, 20 d Apr. 12, ww.chemi 2011)). is rejecte ren in view by wt., in A+B+C, ate, y wt., in e B+C, of a bulk-susp y wt., in e B+C, of a t least one rmula (IV) ation of m etals; m = periodic ta rage partic the follow 4–21, 23, unpatentab 000) in vi 04) and C 2007) as e ndustry.co d under 35 of Klatt, 2 each case of an arom ach case b rubber-m ension pol ach case b salt or a m salt of sa ain group 2, or of m ble, wher le size d50 ing rejecti and 24 are le over Ba ew of Kla ostanzi et videnced m/chemic U.S.C. § Costanzi based on atic polyc ased on th odified gr ymerizatio ased on th ixture of id mixture 1, alkali m ain group ein m deno of the pho ons: rejected u rren et al. tt et al. (U al. (US 20 by “Calciu als/05262 103(a) as as evidenc the sum of arbonate a e sum of t aft polyme n process e sum of t salts of a of salts, is etals; m = 3, m = 3, o tes an inte sphinic ac nder 35 U (US 6,063 S 6,716,89 07/008299 m Phosph 93.html (la being unp ed by Calc the parts nd/or an he parts by r prepared , he parts by phosphinic a salt of a 1, main r of ger from id salt is .S.C. ,844, 9 B1, 5 A1, inate” st visited atentable ium 1 Appeal 2013-000382 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 Appeal 2013-000382 Application 12/338,026 4 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, Appeal 2013-000382 Application 12/338,026 5 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. Appeal 2013-000382 Application 12/338,026 6 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). Appeal 2013-000382 Application 12/338,026 7 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 Appeal 2013-000382 Application 12/338,026 8 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.”). Appeal 2013-000382 Application 12/338,026 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 cdc Copy with citationCopy as parenthetical citation