Ex Parte JUNG et al

Patent Trial and Appeal Board

Aug 27, 2018

14649047 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/649,047 06/02/2015
26285 7590 08/29/2018
K&L GA TES LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Mathieu JUNG
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.
160347PCTUS I
BMS121090 P
CONFIRMATION NO.
2269
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIEU JUNG, THOMAS ECKEL,
and VERA TASCHNER1
(Applicant: Covestro Deutschland AG)
Appeal2018---000941
Application 14/649,047
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and
AVEL YN M. ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Covestro Deutschland AG,
by assignment. (App. Br. 2).
Appeal2018---000941
Application 14/649,047
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1-8 and 10-21. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A composition comprising
A) from 55 to 95 parts by weight of aromatic polycarbonate
and/or aromatic polyester carbonate,
B) from 1.0 to 20.0 parts by weight of rubber-modified graft
polymer comprising
Bl) optionally at least one graft polymer prepared by
the emulsion polymerisation process, and
B2) at least one graft polymer prepared by the mass,
suspension or solution polymerisation process,
wherein B2) is present in an amount of at least
50wt.%, based on component B,
C) from 1.0 to 20.0 parts by weight of at least one cyclic
phosphazene according to formula (X)
R R ; I
' P-N 'l .\',
,11 P-R =ti f .,
A Ji 'R
L~~Jk .
\ .. ·R).
R
(X),
Wherein
k represents 1 or an integer from 1 to 10, wherein the
trimer content (k=l) is from 60 to 98 mol%, based
on component C,
and wherein
2
Appeal2018---000941
Application 14/649,047
R is in each case identical or different and represents an
amine radical; C1- to Cs-alky 1, each optionally
halogenated; C1- to C8-alkoxy; C5- to C6-
cycloalkyl each optionally substituted by alkyl,
and/or by halogen; C6- to C20-aryloxy, each
optionally substituted by alkyl, optionally, and/or
by halogen, and/or by hydroxy; Cr to C12-aralkyl,
each optionally substituted by alkyl, and/or by
halogen; or a halogen radical; or an OH radical,
D) from Oto 15.0 parts by weight of rubber-free vinyl
( co )polymer or polyalkylene terephthalate,
E) from Oto 15.0 parts by weight of one or more additives,
wherein the at least one additive is selected from the
group consisting of flame-retardant synergists, lubricants
and demoulding agents, nucleating agents, stabilisers,
antistatics, colourants, pigments and fillers and
reinforcing materials,
F) from 0.05 to 5.0 parts by weight of one or more
antidripping agents,
wherein all the parts by weight are optionally so normalised
that the sum of the parts by weight of all the components
A+B+C+D+E+F in the composition is 100.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Eckel et al. ("Eckel '695")
Nakano et al. ("Nakano")
Eckel et al. (Eckel '568)
US 6,740,695 Bl
US 2004/0127734 Al
US 2007/0135568 Al
THE REJECTIONS
May 25, 2004
July 1, 2004
Jun. 14,2007
1. Claims 1-8, 12, and 14--20 are provisionally rejected on the ground
of nonstatutory double patenting as being unpatentable over claim 1-8 and
10-14 of copending Application No. 14/649,234 (Appeal No. 2017-
010785).
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Application 14/649,047
2. Claims 10 and 11 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-8 and
10-14 of copending Application No. 14/649,234 (Appeal No. 2017---010785)
in view of Eckel '568.
3. Claims 1-8, 12, and 14--20 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-7 and
11-15 of copending Application No. 14/649,597 (Appeal No. 2017-
010789).
4. Claims 10 and 11 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-7 and
11-15 of copending Application No. 14/649,597 (Appeal No. 2017---010789)
in view of Eckel '568.
5. Claims 1-8, 12, and 14--20 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-7 and
11-15 of copending Application No. 14/648,934 (Appeal No. 2017-
011224).
6. Claims 10 and 11 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-7 and
11-15 of copending Application No. 14/648,934 (Appeal No. 2017---011224)
in view of Eckel '568.
7. Claims 1-8, 12, and 14--20 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claim 1-8 and 10-
14 of copending Application No. 14/649,686 (now U.S. Patent No.
9,637,634, published May 2, 2017). 2
2 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to
Jung, this provisional rejection is moot.
4
Appeal2018---000941
Application 14/649,047
8. Claims 10 and 11 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-8, 10-14
of copending Application No. 14/649,686 (now U.S. Patent No. 9,637,634,
published May 2, 2017) in view of Eckel '568. 3
9. Claims 1-8, 12, and 14--20 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claim 1-8 and 10-
15 of copending Application No. 14/649,610 (Appeal No. 2017---011225).
10. Claims 10 and 11 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-8, and
10-15 of copending Application No. 14/649,610 (Appeal No. 2017---011225)
in view of Eckel '568.
11. Claims 1-8, 12, and 14--20 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 13, 14, and
23 of copending Application No. 15/027,736.
12. Claims 10 and 11 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 13, 14, and
23 of copending Application No. 15/027,736 in view of Eckel '568.
13. Claims 1-8 and 14--20 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-10 and 12-14 of Eckel
'695 in view of Nakano.
14. Claims 10-12 are rejected on the ground ofnonstatutory double
patenting as being unpatentable over claims 1-10 and 12-14 of Eckel '695
in view of Nakano and Eckel '568.
3 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to
Jung, this provisional rejection is moot.
5
Appeal2018---000941
Application 14/649,047
15. Claims 1-8 and 13-20 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Eckel '695 in view of Nakano.
ANALYSIS
As an initial matter, on page 2 of the Appeal Brief, Appellants state
that the following appeals are related to the instant application:
Appeal No. Attorney Docket No. Notice of Appeal filed
2017---011225 160323PCTUS/BMS121095PCTUS February 20, 2017
2017---011224 160316PCTUS/BMS121091PCTUS February 28, 2017
2017---010789 160329PCTUS/BMS121093PCTUS March 1, 2017
2017---010785 160324PCTUS/BMS121092PCTUS March 10, 2017
To the extent that Appellants has presented substantive arguments for
the separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 4I.37(c)(l)(vii).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner's findings and conclusion that
the subject matter of Appellants' claims is unpatentable. Accordingly, we
sustain each of the Examiner's rejections on appeal essentially for the
reasons set forth in the Final Office Action and in the Answer, noting that
Rejections 7 and 8 are moot. We add the following for emphasis.
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Application 14/649,047
Rejections 1-12
Rejections 1-12 are provisional rejections. On page 8 of the Appeal
Brief, Appellants state that they reserve the right to either file terminal
disclaimers or abandon ( or any combination thereof) the applied
applications. As such, as pointed out by the Examiner on page 14 of the
Answer, these rejections remain, and we summarily affirm Rejections 1--4.
With regard to Rejections 7 and 8, these provisional rejections are
moot (see footnotes 2-3, supra).
Rejections 13-15
Each of Rejections 13, 14, and 15 include the combination of Eckel
'695 in view of Nakano. Appellants argue these rejections together as stated
on page 8 of the Appeal Brief. In so doing, Appellants focus on the
combination of Eckel '695 in view of Nakano. Appeal Br. 8-11. Hence,
our determinations with regard to this particular combination of references is
dispositive for Rejections 13-15.
Appellants' arguments are similar to the arguments addressed in our
decision rendered in related Appeal No. 2017---010785. Hence, we refer to
our analysis therein and affirm Rejections 13-15 for the same reasons
presented in our decision in related Appeal No. 2017---010785 regarding the
combination of Eckel '695 in view of Nakano.
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Application 14/649,047
DECISION
Rejections 1-6 and 9-12 are affirmed.
Rejections 7 and 8 are moot.
Rejections 13-15 are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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