Ex Parte Guo et al

Patent Trial and Appeal BoardJan 24, 2019

14023320 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/023,320 09/10/2013 52674 7590 Baker & Hostetler LLP 1170 Peachtree Street NE Suite 2400 Atlanta, GA 30309-7676 01/28/2019 FIRST NAMED INVENTOR Mingcheng Guo 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 ATTORNEY DOCKET NO. 092474.023000 (13PLAS0087 CONFIRMATION NO. 1077 EXAMINER RIETH, STEPHEN EDWARD ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 01/28/2019 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MINGCHENG GUO, Y AQIN ZHANG, and YUN ZHENG Appeal2017-004773 Application 14/023,320 Technology Center 1700 Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (SABIC Global Technologies B.V.) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-7, 9-17, 19, 22, 24--26, 28-36, 38--40, and 48. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The claims are to a blended thermoplastic composition and an article comprising the composition. Claim 1 is illustrative: 1. A blended thermoplastic composition comprising: a. one or more first polycarbonate components, wherein the total amount of the first polycarbonate components in the thermoplastic composition is from about 35 wt% to 50 wt% of [sic]; Appeal2017-004773 Application 14/023,320 b. one or more second polycarbonate components that are branched chain polycarbonate polymers, wherein the total amount of the second polycarbonate components in the thermoplastic compositions is from about 10 wt% to about 15 wt%; c. from about 10 wt% to about 15 wt% of at least one polycarbonate-polysiloxane copolymer component; and d. from about 5 wt% to about 30 wt% of titanium dioxide; wherein the combined weight percent value of all components does not exceed about 100 wt%; wherein all weight percent values are based on the total weight of the composition; wherein a molded sample of the blended thermoplastic composition has a through-plane thermal conductivity when determined in accordance with ASTM EI461 of greater than or equal to about 0.4 W/mK; and wherein a molded sample of the blended thermoplastic composition has an in-plane thermal conductivity when determined in accordance with ASTM EI461 of greater than or equal to about 1.0 W/mK. DeRudder Li Akasawa ( as translated) Hoover van derMee The References US 2007/0135569 Al US 2008/0081860 Al JP 51-37149 A EP O 524 731 Al WO 2012/114309 Al The Re} ections June 14, 2007 Apr. 3, 2008 Mar. 29, 1976 Jan.27, 1993 Aug.30,2012 The claims stand rejected under 35 U.S.C. Â§ I03(a) as follows: claims 1-7, 9, 11-17, 19, 22, 24--26, 29-36, 38--40, and 48 over 1) DeRudder, 2) DeRudder in view of van der Mee, 3) DeRudder in view of Hoover, and 4) DeRudder in view of van der Mee and Hoover; 2 Appeal2017-004773 Application 14/023,320 claim 10 over 1) DeRudder in view of Li, 2) DeRudder in view of van der Mee and Li, 3) DeRudder in view of Hoover and Li, and 4) DeRudder in view of van der Mee, Hoover, and Li; and claim 28 over 1) DeRudder in view of Akasawa, 2) DeRudder in view of van der Mee and Akasawa, 3) DeRudder in view of Hoover and Akasawa, and 4) DeRudder in view of van der Mee, Hoover, and Akasawa. OPINION We affirm the rejections. The Appellant argues the claims as a group (App. Br. 3-15). We therefore limit our discussion to one claim, i.e., claim 1. Claims 2-7, 9-17, 19, 22, 24--26, 28-36, 38--40, and 48 stand or fall with that claim. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2012). DeRudder discloses in Example 16 a blended thermoplastic composition comprising 39.38 wt% co-polycarbonate (Co-poly 2) (which corresponds to the Appellant's first polycarbonate component), 13.12 wt% branched polycarbonate (PC-2) (which corresponds to the Appellant's second polycarbonate component), and 10 wt% polydimethylsiloxane- bisphenol A polycarbonate copolymer (which corresponds to the Appellant's polycarbonate-polysiloxane copolymer component), and a stabilizing package containing 1.59 phr Ti02 (i1i1123 (Table 1), 143 (Table 2), 144). The composition can contain a filler or reinforcing agent which can be Ti02 in an amount of about O to about 100 parts by weight per 100 parts by weight of total polymer (i.e., about Oto about 50 wt%) (i1i193, 94). 3 Appeal2017-004773 Application 14/023,320 The Appellant asserts that claim 1 requires "that the total amount of the one or more branched chain polycarbonate polymers is about 1 Owt% to about 15 wt%" (App. Br. 4). Claim 1 requires that the total amount of the second polycarbonate components, not the total amount of branched chain polycarbonate polymers, is about 10 wt% to about 15 wt%. The claim's "comprising" transition term opens the claim to a third polycarbonate which is a branched chain polycarbonate polymer such as branched polycarbonate PC- I in DeRudder's Example 16. See In re Baxter, 656 F.2d 679, 686 (CCPA 19 81 ). Moreover, the claim does not preclude the one or more first polycarbonate components from being branched chain polycarbonate polymers. The Appellant asserts that claim 1 requires "that the total amount of the one or more first polycarbonate components is about 35 wt% to 50 wt%" (App. Br. 4), and "DeRudder's Example 16 (which includes two polycarbonate [components] totaling 52.51 wt.% of that composition) falls outside the scope of the appealed claims" (Reply Br. 2). Claim 1 's "comprising" transition term opens the claim to one or more fourth polycarbonate components such as co-polycarbonate Co-poly 1 in DeRudder's Example 16. The Appellant asserts that DeRudder's fillers do not include titanium dioxide (App. Br. 9, n. 10). DeRudder discloses that suitable fillers or reinforcing agents include Ti02 (i193) and that the amount of filler or reinforcing agent generally is about O to about 100 parts by weight per 100 parts by weight of total polymer (i.e., about Oto about 50 wt%) (i194). 4 Appeal2017-004773 Application 14/023,320 The Appellant asserts that "DeRudder' s Examples do not characterize the Ti02 as a filler - it is characterized as a component of a 'stabilization package"' (Reply Br. 5). DeRudder is not limited to its examples. See In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649,651 (CCPA 1972). Instead, all disclosures therein must be evaluated for what they would have fairly suggested to one of ordinary skill in the art, see In re Boe, 355 F.2d 961,965 (CCPA 1966). DeRudder discloses that the Ti02 can be a filler and that the amount of filler can be about O to about 100 parts by weight per 100 parts by weight of total polymer (i.e., about O to about 50 wt%) (iTiT 93, 94). The Appellant asserts that "in addition to being referred to as a 'filler or reinforcing agent,' DeRudder also refers to Ti02 as a light stabilizer (paragraph [0098]) and a colorant (paragraph [ 100])" (Reply Br. 5). Those disclosures do not remove the disclosure that Ti02 can be a filler (iT 93) in the disclosed amount which encompasses the amount required by the Appellant's claim 1 (iT 94). The Appellant asserts that comparing the Appellant's Specification's inventive formulations ( 4 and 11) 1 with formulations ( 1-3 and 7-10) which lack the Appellant's branched chain polycarbonate polymer and/or polycarbonate-polysiloxane copolymer shows surprising improvement in 1 The Appellant's statement that formulations 5 and 6 are within claim 1 is incorrect (App. Br. 10). Those formulations contain 20 wt% branched chain polycarbonate copolymer which is outside claim 1 's range of about 10 wt% to about 15 wt%. 5 Appeal2017-004773 Application 14/023,320 notched and unnotched impact strength, tensile elongation, and thermal conductivity (App. Br. 10-13; Reply Br. 6). We have begun anew and determined that for the following reasons the totality of the evidence supports a conclusion of obviousness of the Appellant's claimed invention. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). First, the Appellant's showing of unexpected results does not provide a comparison of the claimed invention with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). DeRudder's Example 16 which includes the Appellant's first and second polycarbonate components and polycarbonate-polysiloxane copolymer component is closer to the claimed composition than the Appellant's comparative examples which lack the second polycarbonate component and/or the polycarbonate-polysiloxane copolymer component. Second, it is not enough for the Appellant to show that the results for the Appellant's invention and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCP A 1972). The Appellant provides mere attorney argument that the results would have been unexpected (App. Br. 10-13), and arguments of counsel cannot take the place of evidence. See Blauwe, 736 F.2d at 705; In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Third, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re Clemens, 622 6 Appeal2017-004773 Application 14/023,320 F.2d 1029, 1035 (CCPA 1980). Claim 1 encompasses linear and branched polycarbonate polymers and polycarbonate-polysiloxane copolymers generally, and about 35-50 wt% of the one or more first polycarbonate components, about 10 to about 15 wt% of the one or more second polycarbonate components, and about 10 to about 15 wt% of the one or more polycarbonate-polysiloxane components, but the Appellant's inventive examples ( 4 and 11) include only two amounts of first polycarbonate component ( 40 and 50 wt%) and one amount (10 wt%) of each of the second polycarbonate and polycarbonate-polysiloxane components. We find in the evidence of record no reasonable basis for concluding that the great number of materials in the amount ranges encompassed by Appellant's claim would behave as a class in a manner comparable to the particular materials tested. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445--46 (CCPA 1971). For the above reasons we are not persuaded of reversible error in the rejections. DECISION The Examiner's decision rejecting claims 1-7, 9-17, 19, 22, 24--26, 28-36, 38--40, and 48 under 35 U.S.C. Â§ 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a). AFFIRMED 7