Ex Parte Gibon et al

Patent Trial and Appeal Board

Oct 25, 2017

13324296 (P.T.A.B. Oct. 25, 2017)

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.
13/324,296 12/13/2011 Cecile Gibon 074008-1568-286358 3382
123223 7590 10/27/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
DIGGS, TANISHA
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CECILE GIBON, XIN YANG, CHRISTOF KUJAT,
MARTIN WEBER, LASZLO SZARVAS, DANIEL KLEIN,
PETRA POETSCHKE, and BEATE KRAUSE
Appeal 2017-000576
Application 13/324,2961
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 13, 18-21, 26, and 27.2 We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify BASF SE as the real party in interest. Appeal Br. 2.
2 Pending claims 22-24 stand withdrawn from examination.
Appeal 2017-000576
Application 13/324,296
THE INVENTION
The subject matter of the claims on appeal relates to a thermoplastic
molding composition comprising: at least one polyamide or copolyamide, or
one polymer blend comprising polyamide; a quantity of carbon black or
graphite, or a mixture thereof; and a quantity of ionic liquids. Specification
filed December 13, 2011 (“Spec.”), Abstract.
Claim 26—the sole independent claim—is representative.
26. A thermoplastic molding composition comprising, based
on the thermoplastic molding composition,
a) as component A, at least one polyamide or copolyamide
made from monomers consisting of monomers selected from
the group consisting of dicarboxylic acids, diamines, salts made
from dicarboxylic acids or diamines, aminocarboxylic acids,
aminonitriles, lactams, and mixtures thereof,
b) as component B, from 3 to 20% by weight of carbon black or
graphite, or a mixture thereof,
c) as component C, from 0.3 to 1.2% by weight of ionic
liquids.
Appeal Brief filed May 17, 2016 (“Appeal Br.”), Claims Appendix 10-11.
REJECTIONS
The Examiner maintains the following grounds of rejection:
Claims 13, 18-21, 26, and 27 stand provisionally rejected for non-
statutory obviousness-type double patenting over claims 12-20 of
Application No. 13/332,424 (“the ’424 application”) (issued in the name of
Gibon et al. as US 9,721,695 B2 on August 1, 2017) in view of Schwitter.3
3 Schwitter et al., US 2008/0057246 Al, published March 6, 2008.
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Claims 13, 19-21, 26, and 27 stand rejected under 35 U.S.C. § 103(a)
over Schmidt4 in view of Vathauer.5
Claim 18 stands rejected under 35 U.S.C. § 103(a) over Schmidt in
view of Vathauer, in further view of Hell.6
DISCUSSION7
Appellants proffer arguments as to the provisional rejection for non-
statutory obviousness-type double patenting and for the obviousness
rejection under 35 U.S.C. § 103(a). See generally Appeal Br. Appellants
further contend both that there are surprising results and that they are
sufficient to overcome any prima facie case of obviousness. Substantive
argument as to the rejection under § 103 is limited to the ground of Schmidt
in view of Vathauer (Appeal Br. 6), particularly as applied to claim 26 {id. at
4-6). All claims stand or fall, accordingly, with claim 26, which we deem
representative. 37 C.F.R. § 41.37(c)(l)(iv).
In exercising our discretion to reach provisional obviousness-type
double patenting rejections, we decline to reach the rejection over the cited
claims of Gibon in view of Schwitter. See Ex parte Moncla, 95 USPQ2d
1884 (BPAI 2010). The claims of the relied on copending ’424 application
have been amended since the rejection was made, and the application has
4 Schmidt et al., US 7,601,771 B2, issued October 13, 2009.
5 Vathauer et al., US 2004/0167264 Al, published August 26, 2004.
6 Hell et al., US 2008/0114105 Al, published May 15, 2008.
7 In this discussion, we refer to the Specification, the Final Office Action
dated January 29, 2016 (“Final Act.”), the Appeal Brief, the Examiner’s
Answer dated August 8, 2016 (“Ans.”), and the Reply Brief filed October 7,
2016 (“Reply Br.”).
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Application 13/324,296
since matured into an issued patent. We leave it to the Examiner to consider
the patentability of the claims over the cited claims in view of Schwitter in
the event of further prosecution.
Turning to the rejection under § 103, we have reviewed the grounds of
rejection set forth by the Examiner, Appellants’ arguments and proffered
evidence, and the Examiner’s response. On this record, we are unpersuaded
that the Examiner erred reversibly and we determine that a preponderance of
the evidence supports the Examiner’s conclusion of obviousness for the
reasons expressed by the Examiner in the Final Office Action and the
Examiner’s Answer. We add the following.
Prima Facie Obviousness
The Examiner relies on Schmidt’s disclosure of, inter alia, a polymer
composition comprising a crystalline polymer that can be hot molded by
injection molding, extrusion or blow-molding. Ans. 4-5; Schmidt col. 11,
11. 50-52. As to component A, the Examiner finds Schmidt teaches
preferred embodiments comprising polyamides, homopolyamides, and
copolyamides, including polyamides made from dicarboxylic acid and/or
diamines. Ans. 5 (citing Schmidt col. 6,11. 54-56, col. 7,1. 1-col. 8,1. 21).
As to component C, the Examiner finds Schmidt teaches including 0.1 to 30
wt% of an ionic liquid in the polymer composition and determines that the
claimed, encompassed range of 0.3 to 1.2 % by weight is prima facie
obvious. Ans. 5 (citing Schmidt Abstract, col. 4,1. 30, col. 4,1. 35-col. 6,
1. 17). As to component B, the Examiner finds Schmidt teaches the use of
material in the composition which raises the conductivity of the polymer
blend, i.e., the addition of conductive particles, including the addition of
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carbon black or graphite as known conductivity improving fillers. Ans. 5
(citing Schmidt col. 2,11. 64-65, col. 13,11. 10-15); see also Final Act 6.
As to the amount of carbon black or graphite to be included in the
composition, the Examiner relies on Vathauer’s disclosure of amounts of
electrically conductive carbon, such as carbon blacks and/or graphites, in its
thermoplastic molding composition. Ans. 6 (citing Vathauer ]fl[ 77, 82,
Abstract). The Examiner finds Vathauer to teach including the conductive
carbon black or graphite—added to establish conductivity—in amounts of 5
to 70 wt% and determines that the claimed, overlapped range of 3 to 20 wt%
of carbon black, graphite, or a mixture thereof would have been prima facie
obvious. Ans. 6; Vathauer 82.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have provided carbon
black or graphite in the amounts according to the claims in Schmidt’s
composition in order to establish conductivity as taught by Vathauer and
because Schmidt’s broad teaching encompasses incorporation of carbon
black and/or graphite. Ans. 6.
Appellants contend that there is no prima facie case because “there is
no reason or rationale presented . . . [to] lead a person of ordinary skill in the
art to select” the specific components being claimed in the specific amounts
and that “[i]t is not enough that the generic disclosure include [sic] general
descriptions of what may or may not be included, there must actually be
some reason or rationale given to make the particular selections to arrive at
the claimed invention.” Appeal Br. 5. Appellants further argue that “the
Examiner cannot selectively pick and choose from the disclosed parameters
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without proper motivation as to a particular selection” and that the rejection
is grounded on impermissible hindsight. Appeal Br. 6.
Appellants also argue that “the Schmidt reference provides no reason
to combine carbon black or graphite with its compositions” because “[t]he
relied on section is generally discussing compositions in the prior art.”
Reply Br. 2.
On this record, we are unpersuaded that the Examiner erred reversibly
in concluding that one of ordinary skill in the art, armed with the knowledge
of Schmidt and Vathauer, would have been led to the claimed subject matter
within the meaning of 35 U.S.C. § 103. Contrary to Appellants’ position
that there is no prima facie case because there is no reason to select the
specific components being claimed from the broader disclosure of these
among other components in Schmidt, it is well-settled that the prior art is
good for all that it discloses, including, as here, each of the various possible
combinations manifest in the teaching of various polymers, including those
according to claim 26, and compositions of those in combination with ionic
liquids and carbon black and/or graphite. Merck & Co. Inc. v. Biocraft
Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[D]isclos[ing] a
multitude of effective combinations does not render any particular
formulation less obvious.”); see also In re Lamberti, 545 F.2d 747, 750
(CCPA 1976) (A reference’s disclosure is not limited to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art.).
As to the amounts of the carbon black and/or graphite and of the ionic
fluid, Appellants’ argument is inapposite as the rejection is grounded on the
prior art disclosing an overlapping and encompassing range, respectively.
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As explained by our reviewing court, “[i]n cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness.” In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) {citing In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990); In re Malagari, 499 F.2d 1297, 1303
(CCPA 1974)).
An overlapping range, as relied on in this rejection, thus, is sufficient
to establish a prima facie case of obviousness absent a showing that the
particular range is critical. See, e.g., Woodruff, 919 F.2d at 1578 (citations
omitted, emphasis in original) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.”).
As to Appellants’ further argument in the Reply Brief as to Schmidt
“providing] no reason to combine carbon black or graphite with its
compositions” (Reply Br. 2), there is no good cause for why it could not
have been raised in the Appeal Brief as it addresses a position taken by the
Examiner not only in the Answer, but also in the Final Office Action
{compare Ans. 5 with Final Act. 6). We deem the argument waived for
purposes of the present appeal. 37 C.F.R. § 41.41(b)(2). “[A]n issue not
raised by an [Ajppellant in its opening brief... is waived.” Optivus Tech.,
Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citations
omitted) (internal quotations omitted); Cf. McBride v. Merrell Dow and
Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations
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omitted) (“Considering an argument for the first time in a reply brief... is
not only unfair to the appellee but also entails the risk of an improvident or
ill-advised opinion on the legal issues tendered.”).
Furthermore, even if the argument was properly before us, we would
not find it persuasive of harmful error in light of Schmidt’s teachings that
including carbon black and/or graphite and including an ionic fluid both
improve the conductivity of polymeric materials and provide antistatic
properties. See, e.g., Schmidt col. 10,11. 38^45, col. 12,11. 64-65, col. 13,
11. 10-24. “It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to
form a third composition which is to be used for the very same purpose.” In
re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) {citing In re Susi, 440 F.2d
442, 445 (1971); In re Crockett, 279 F.2d 274, 276-77 (CCPA I960)).
Further, we are apprised of no error because, as properly applied, “the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill would
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”). On this record, a preponderance of the evidence supports the
Examiner’s determination of obviousness over the combination of Schmidt
and Vathauer.
Appellants’ further contention that the Examiner's rejection is
grounded on improper hindsight is not persuasive where, on this record, we
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are unpersuaded of any deficiency in the Examiner's articulated reasoning.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) {cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
Proffered Unexpected Results
Appellants maintain that the present record establishes the claimed
invention achieves surprising, unexpected results, particularly in the
“surprising maintenance of conductivity, even where the amount of carbon
black or graphite is kept relatively low.” Appeal Br. 5; see also Reply Br.
2-3. Relying on results set forth in the Specification (Spec. 14, Table 1),
Appellants refer to “results showing] that 1 % by weight [ionic liquid]
demonstrates a surprising effect on the resistivity of the composition.”
Appeal Br. 5.
Having considered the proffered evidence, we do not find it sufficient
to rebut the prima facie case. It is well established that Appellants bear the
burden of showing that the claimed invention imparts unexpected results. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In reKlosak, 455 F.2d
1077, 1080 (CCPA 1972). To meet this burden, Appellants must show that
the results actually would have been unexpected, and that the unexpected
results are reasonably commensurate with the scope of protection sought by
the claim on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In
re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080.
As to the results being unexpected, Appellants do not direct us to any
statement in the Specification or elsewhere attesting to the unexpected
nature of the results or to any persuasive evidence that the results would
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have been unexpected at the time of the invention. See generally Appeal
Br.; Reply Br. The contentions of “surprising results” and of “unexpected
results” are not sufficient to bear Appellants’ burden. See, e.g., Geisler, 116
F.3d at 1471 (“Geisler made no such assertion [that results were unexpected]
in his application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132
. . . Instead, the only reference to unexpected results was a statement by
Geisler's counsel. . . that Geisler's results were ‘surprising.’”).
As to the results being commensurate with the claim, Appellants fail
to sufficiently explain how, or if, the tests performed comparing inventive
and reference compositions establish unexpected results over the breadth of
the claim on appeal. In particular, the testing is limited to comparing
compositions formed of Nylon-6 as component A, Printex XE2B conductive
carbon black as component B, and 1-ethyl-3-methyl-imidazolium ethyl
sulfate as component C. Spec. 13,11. 1-3, 7-3, 17; 14, Table 1. There is a
single amount (1%) of component C tested for each inventive compound.
Spec. 14, Table 1. Appellants’ argue that the claimed range of component C
(0.3 to 1.2%) is narrow, such that a person of ordinary skill in the art would
expect the results for 1% to be seen for the entire range (Appeal Br. 5), but
this is neither evidence that the result is provided over the claimed range nor
that one of ordinary skill in the art would expect the results over the claimed
range. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument. . . cannot take the place of evidence.”).
Further, there is no explanation how the limited testing is reasonably
commensurate with the breadth of the claim. Specifically, there is no
explanation how testing a composition including Nylon-6 as the “at least one
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polyamide or copolyamide made from monomers . . . selected from the
group consisting of dicarboxylic acids, diamines, salts made from
dicarboxylic acids or diamines, aminocarboxylic acids, aminonitriles,
lactams, and mixtures thereof’ (claim 26) is reasonably commensurate with
the scope of the claim. Nor is there any explanation how 1-ethyl-3-methyl-
imidazolium ethyl sulfate, as component C, is representative of “ionic
liquids” without further limitation.
For these reasons, Appellants have not shown evidence of unexpected
results commensurate with the scope of claim 26. See In re Harris, 409 F.3d
1339, 1343 (Fed. Cir. 2005) (holding that the applicant must show
unexpected results covering the scope of the claimed range or narrow the
claims).
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness of claim 26. Claims 13, 18-21,
and 27 have not been separately argued and therefore fall with claim 26.
DECISION
The Examiner’s rejections of the claims under 35 U.S.C. § 103(a) are
AFFIRMED.
We decline to reach the Examiner’s provisional rejection of the claims
on the ground of non-statutory obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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