Ex Parte Li

Patent Trial and Appeal Board

Feb 27, 2019

14773849 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/773,849 09/09/2015
157 7590 03/01/2019
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Xiangyang Li
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. CONFIRMATION NO.
BMS132024US 6678
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte XIANGY ANG LI 1
(Applicant: BAYER MATERIAL SCIENCE LLC and COVESTRO LLC)
Appeal2018-004395
Application 14/773,849
Technology Center 1700
Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as Covestro LLC.
Appeal 2018-004395
Application 14/773,849
Appellant requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-7. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is
set forth below:
1. A thermoplastic molding composition consisting of:
A) 50 to 98 parts by weight (pbw) aromatic poly(ester)
carbonate having a weight-average molecular weight of at least
25,000;
B) 1 to 30 parts by weight of thermoplastic polyester;
C) 1 to 20 parts per hundred parts resin (phr) of graft
( co )polymer having a coreshell morphology, including a grafted shell
that contains polymerized alkyl(meth)acrylate and a composite rubber
core that contains interpenetrated and inseparable polyorganosiloxane
and poly(meth)alkyl acrylate components, wherein said core is in the
form of particles having
median particle size of 0.05 to 5 microns and glass transition
temperature below 0°C, and wherein weight ratio of
polyorganosiloxane/ poly(meth)alkylacrylate/rigid shell is 70-90/5-
15/5-15;
D) 1 to 30 parts by weight of polylactic acid;
E) optionally, at least one member selected from the group
consisting of lubricants, mold release agents, nucleating agents,
antistatic agents, thermal stabilizers, light stabilizers,
hydrolytical stabilizers, fillers, reinforcing agents, colorants and
pigments; and
F) optionally, bisphenol diphosphate phenyl ester.
The Examiner relies on the following prior art references as evidence
of unpatentability:
2
Appeal 2018-004395
Application 14/773,849
Seidel
Hayata
Li
US 7,067,567 B2 June 27, 2006
US 7,504,452 B2 Mar. 17, 2009
US 2008/0090961 Al Apr. 17, 2008
THE REJECTIONS
1. Claims 1-7 are rejected underpre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Seidel (US 7,067,567) in view of Li (US 2008/0090961)
and Hayata (US 7,504,452).
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellant's position in the record. We thus reverse the Examiner's
decision for the reasons provided by Appellant in the record, and add the
following for emphasis.
We refer to pages 3-5 of the Answer regarding the Examiner's
rejection of claims 1-7.
Appellant argues, inter alia, that even if a person of skill in the art
would have combined the disclosures to use the compositions of Li in
Seidel, then such a person would necessarily include a fluorinated
polyolefin, which would result in a composition that is excluded from the
present claims. Appeal Br. 5---6. Appellant points out that each of the
claimed compositions are closed compositions, as noted by use of the
transitional phrase, "consisting of." Appellant states that this means that
each component in the composition must be one of A), B), C), D), E) or F).
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Appeal 2018-004395
Application 14/773,849
Thus, any composition that includes a fluorinated polyolefin falls outside of
the present claims. Id.
We are persuaded by the above-mentioned argument. The Examiner
admits on page 6 of the Answer that Li requires the fluorinated polyolefin.
Hence, employment of the teachings of Li would include employment of the
fluorinated polyolefin. Any composition that includes a fluorinated
polyolefin falls outside of the present claims, as stated by Appellant.
In view of the above, we reverse the rejection.
The rejection is reversed.
DECISION
ORDER
REVERSED
4