Ex Parte Siripurapu et al

Patent Trial and Appeal BoardApr 22, 2016

12468495 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/468,495 05/19/2009 Srinivas Siripurapu 23413 7590 04/26/2016 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 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. 160562-US-CIP[2] 1059 EXAMINER SELLERS, ROBERT E ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 04/26/2016 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SRINIV AS SIRIPURAPU and THOMAS EBELING 1 Appeal2014-005363 Application 12/468,495 Technology Center 1700 Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and JULIA HEANEY, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1, 3-14 and 17-25 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is SABIC INNOVATIVE PLASTICS IP B.V. Appeal Br. 2. Appeal2014-005363 Application 12/468,495 BACKGROUND Appellants' invention relates to "polycarbonate compositions that include impact modifier compositions." Spec. i-f 2. Independent claim 1 is representative: 1. A composition comprising: from 60 to 85 wt.% of a polycarbonate; from 8 to 20 wt.% of a polycarbonate-polysiloxane copolymer; from 3 to 10 wt.% phosphorus-containing flame retardant, the phosphorus-containing flame retardant being selected from the group consisting of resorcinol tetraphenyl diphosphate, the bis(diphenyl) phosphate ofhydroquinone and the bis(diphenyl) phosphate ofbisphenol-A; from 0.5 to 20 wt.% of an impact modifier; and from 1 to 10 wt.% of a polyetherimide, wherein the polyetherimide is a polyetherimide siloxane copolymer; wherein a 3.2 millimeter thick, 7.6 centimeter square sample of the composition produces a smoke density (Ds) of less than 100 after a 1.5-minute bum, measured according to ASTM E 662-03, wherein a 3.2-mm thick molded NII bar comprising the composition has a notched Izod impact strength of about 250 to about 950 Jim determined in accordance with ASTM D256 at 23Â°C; and wherein the polycarbonate-polysiloxane copolymer provides about 2 .4 to about 4 wt.% siloxane, by weight of the combined weights of the polycarbonate, polycarbonate- polysiloxane copolymer, impact modifier, polyetherimide and flame retardant. Appeal Br. Claims Appendix 20. Claims 17 and 23 are also independent. Id. at 22, 23. The Examiner maintains the following ground of rejection: claims 1, 3-14, and 17-25 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over U.S. Patent Pub. No. 2006/0030647 Al [hereinafter Ebeling] 2 Appeal2014-005363 Application 12/468,495 (published Feb. 9, 2006) and U.S. Patent Pub. No. 2005/0182165 Al [hereinafter Ma] (published Aug. 18, 2005), in view of U.S. Patent No. 4,816,527 [hereinafter Rock] (issued Mar. 28, 1989) and U.S. Patent No. 5,051,483 [hereinafter Rock et al.] (issued Sept. 24, 1991).2 Final Act. 3-4; Answer2-5. All the claims are argued as a group. See Appeal Br. 9-18. Therefore, consistent with the provisions of 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013), all the claims stand or fall together, and we limit our discussion to claim 1. DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants' contentions raised in the Appeal Brief, we determine that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Examiner'sÂ§ 103 rejections for essentially the reasons set out by the Examiner in the Answer. We add the following for emphasis. To summarize, the Examiner's rejection is based on "the obviousness of employing the siloxane-polyetherimide copolymer of Rock and Rock et al. as the thermoplastic resins of Ebeling et al. and Ma et al. in order to retain the impact strength after heat ageing, lower the flammability and improve the resistance to crack propagation." Answer 5. Appellants do not argue that the Examiner failed to make a prima facie case of obviousness. See generally Appeal Br. However, in rebuttal to 2 In the Answer, the Examiner withdrew a rejection of claims 23-25 under 35 U.S.C. Â§ 112, first paragraph. See Answer 1. 3 Appeal2014-005363 Application I2/468,495 that prima facie case, Appellants contend that "the claimed invention demonstrates unexpected results which one of ordinary skill in the art would not reasonably expect to achieve based on the combined teachings of the cited prior art of record when taken as a whole." Appeal Br. I 3. As evidence, Appellants refer to experimental results in the Specification, which are summarized in Tables IA-I, IA-2, and IB on pages 53-55. See id. at I3-I8; Reply Br. 5-IO. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. See In re Geisler, I I6 F.3d I465, I469-70 (Fed. Cir.I997); see also In re Heyna, 360 F.2d 222, 228 (CCPA I966) ("It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property."); In re Klosak, 455 F.2d I077, I080 (CCPA I972) ("[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference."). We have carefully considered the data and arguments presented by Appellants to show unexpected results. However, Appellants have not shown that any of the 2I examples set forth in tables IA-I, IA-2, and IB fall within the scope of claim I. The tables show that Samples I-20 contain PEI-I, which is a polyetherimide. See Spec. 46, 53-55. However, as Appellants acknowledge, PEI- I is not the polyetherimide siloxane copolymer (PEI-3) required by claim I. See Reply Br. 6. The only example in the Specification containing polyetherimide siloxane copolymer (PEI-3) is Sample 21. Spec. 55. However, the Examiner finds that Sample 2 I does not meet the limitation of claim I requiring that "the polycarbonate-polysiloxane copolymer provides about 4 Appeal2014-005363 Application 12/468,495 2.4 to about 4 wt.% siloxane, by weight of the combined weights of the polycarbonate, polycarbonate-polysiloxane copolymer, impact modifier, polyetherimide and flame retardant," Appeal Br. 20. See Answer 7. The Specification states that polycarbonate-polysiloxane copolymer (designated as "PC-Si") contains "about 20 wt% siloxane." Spec. 46. Thus, the Examiner calculates the amount of siloxane provided by PC-Si to be "about 20 wt.% of siloxane per 8.75 wt.% of polycarbonate-polysiloxane copolymer PC-Si," or "about 1.75 wt% of siloxane," which is outside the range of 2.4--4 wt.% required by claim 1. Answer 7 (citing Spec. 46, 55). Appellants argue that the Examiner miscalculated the amount of siloxane for purposes of the limitation in claim 1, and argue that this amount should include the siloxane contribution of polyetherimide-siloxane copolymer (PEI-3), which "has about 34 wt.% siloxane content." Reply Br. 9. Thus, with the 6.25 wt.% of PEI-3 in Sample 21, Appellants calculate the siloxane content to be "3 .63 wt%, which is within the claimed range of from 1 ' I"\ Al ' f\ / ' 1 ' Al ' f\ / .,., T 1 aoom LA wt./o w aoom Lf. wt./o. 1a. We give claim terms their "broadest reasonable interpretation consistent with the specification." In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). The plain meaning and broadest reasonable interpretation of the phrase "the polycarbonate-polysiloxane copolymer provides about 2.4 to about 4 wt.% siloxane," Appeal Br. 20 (emphasis added), is that the limitation includes only siloxane provided by the polycarbonate-polysiloxane copolymer. Therefore, we find no reversible error in the Examiner's finding that Sample 21 falls outside the scope of claim 1, and that the evidence of unexpected results presented by Appellants is not commensurate with the entire scope of the claims. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were 5 Appeal2014-005363 Application 12/468,495 unexpected, Harris needed to show results covering the scope of the claimed range."). In addition, when proving unexpected results as evidence of nonobviousness, "the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Appellants argue that the results are unexpected, in part, because of the presence of more than 8 wt.% ofpolycarbonate-polysiloxane copolymer (PC-Si). See Appeal Br. 13-14. As comparative examples, Appellants point to Samples Cl and C2 of Tables lA-1 and lA-2 of the Specification. See Reply Br. 9. Samples C 1 and C2 do not contain any PC- Si. See Spec. 53. However, the Examiner correctly finds that PC-Si, in amount ranges that overlap the range required by claim 1, is a feature of both Ebeling and Ma, the closest prior art references. See Answer 2-3. Therefore, we find no reversible error in the Examiner's determination that "Comparative Samples Cl and C2 are not representative of the closest prior art exemplified [in] compos1t10ns of Ebeling et al. and ivia et al. since the references show the presence of polycarbonate/polysiloxane not included in the comparative examples." Answer 8. Furthermore, we find no reversible error in the Examiner's finding that Appellants' evidence of unexpected results is insufficient because "[n]one of the evidence holds constant the types and amounts of polycarbonate, polycarbonate-polysiloxane copolymer; resorcinol tetraphenyl diphosphate, hydroquinone bis( diphenyl) phosphate or bisphenol A bis( diphenyl)phosphate, and impact modifier while comparing claimed compositions containing from 1 to 10 wt.% of polyetherimide siloxane copolymer vs. prior art formulations without the polyetherimide siloxane copolymer commensurate in scope with the aforementioned proportion 6 Appeal2014-005363 Application 12/468,495 range." Appellants have a burden to show that the claimed composition causes the asserted improvement over the prior art. However, any understanding of cause and effect in the examples presented by Appellants is "lost here in the welter of unfixed variables." In re Dunn, 349 F.2d 433, 439 (CCPA 1965). For the above reasons, and those expressed by the Examiner, we determine that the evidence of obviousness, on balance, outweighs the evidence of nonobviousness relied upon by Appellants, and we affirm the Examiner's decision to reject claims 1, 3-14 and 17-25. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRiviED 7