Ex Parte Wang et al

Patent Trial and Appeal BoardSep 25, 2018

14185063 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/185,063 02/20/2014 Huanbing Wang 43248 7590 09/27/2018 CANTOR COLBURN LLP - SABIC (LEXAN/CYCOLOY) 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. 13PLAS0199-US-NP 3546 EXAMINER RODD, CHRISTOPHER M ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 09/27/2018 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUANBING WANG, SHUN WAN, YING LI, PEI HELEN SUN, HONGTAO SHI, and DAKE SHEN Appeal 2017-011608 Application 14/185,063 Technology Center 1700 Before BEYERL Y A. FRANKLIN, JENNIFER R. GUPTA, and MICHAEL G. McMANUS, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1 and 23-37, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 In this Decision, we refer to the Specification filed February 20, 2014 ("Spec."), the Non-Final Office Action dated March 25, 2016 ("Non-Final Act.), the Final Office Action dated November 2, 2016 ("Final Act."), the Appeal Brief filed March 10, 2017 ("Br."), and the Examiner's Answer dated June 30, 2017 ("Ans."). 2 Appellant is the Applicant, Sabic Innovative Plastics IP B.V., which, according to the Appeal Brief, is the real party in interest. Appeal Br. 2. Appeal2017-011608 Application 14/185,063 Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal. 1. A composition comprising, based on the total weight of the composition: 46.46 to 69.39 weight percent of an aromatic polycarbonate; 5.00 to 29.69 weight percent of a copolyester comprising cyclohexanedimethylene isophthalate/terephthalate repeat units having the structure 0 II CH2-0-CvÂ· ........... it I -c # * and 2 ,2, 4, 4-tetramethy lcyc 1 o buty lene isophthalate/terephthalate repeat units having the structure 6.70 to 22.89 weight percent of an impact modifier; and 0.3 to 0.5 weight percent of a black colorant; wherein the composition exhibits a haze value of 32.46 to 214.6, and a gloss value of 79 .4 to 101.0, wherein haze and gloss are determined according to ASTM D523-08 using a BYK-Gardner Micro-Haze instrument, a 2.5 millimeter sample thickness, and an angle of 60 degrees. Br. 18 (Claims App.). 2 Appeal2017-011608 Application 14/185,063 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections on appeal: Rejection 1: Claims 1 and 23-37 under 35 U.S.C. Â§ 103 over Stack et al. (WO 2010/101562 Al, published September 10, 2010) ("Stack") in view of Sheu et al. (EP O 460 456 Al, published December 11, 1991) ("Sheu"), DeRudder et al. (US 7,649,057 B2, issued January 19, 2010) ("DeRudder"), and Knepper et al. (US 3,956,008, issued May 11, 1976) ("Knepper"); Rejection 2: Claims 30 and 37 under 35 U.S.C. Â§ 103 over Stack in view of Sheu, DeRudder, Knepper, and Weinberg et al. (US 2003/0171463 A 1, published September 11, 2003) ("Weinberg"); Rejection 3: Claims 1 and 23-37 under 35 U.S.C. Â§ 103 over Stack in view of Grabowski (US 3,130,177, issued April 21, 1964), DeRudder, and Knepper, as evidenced by Sheu; Rejection 4: Claims 30 and 37 under 35 U.S.C. Â§ 103 over Stack in view of Grabowski, DeRudder, and Knepper, as evidenced by Sheu, and further in view of Weinberg; Rejection 5: Claims 1, 23-29 and 31-37 under 35 U.S.C. Â§ 103 over Gaggar et al. (US 2004/0097662 Al, published May 20, 2004)) in view of Stack, Taylor, Jr. (US 5,019,536, issued May 28, 1991) and Ding et al. (US 2003/0207984 Al, published November 6, 2003) ("Ding"); Rejection 6: Claims 30 and 37 under 35 U.S.C. Â§ 103 over Gaggar in view of Stack, Taylor, Jr., Ding, and Weinberg; and Rejection 7: Claim 33 under 35 U.S.C. Â§ 103 over Gaggar in view of Stack, Taylor, Jr., and Ding, and Davis et al. (US 2005/0164023 Al, published July 28, 2005) ("Davis"). Ans. 2-3; Br. 4--5. 3 Appeal2017-011608 Application 14/185,063 DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections .... "). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Non-Final Office Action, the Final Office Action, and the Answer. We add the following. Re} ections 1 and 2 Appellant separately argues claims 1, 28, 36, and 37. Br. 5-11. We address below the claims separately argued and the remaining claims will stand or fall with claim 1, which we select as representative. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that Stack teaches most of the components of claim 1 's composition including the aromatic polycarbonate and copolyester in amounts recited in claim 1, an impact modifier and a colorant, but does not teach the specific amounts of impact modifiers or colorants recited in the claim. Non-Final Act. 3--4 (citing Stack, Abstract, ,r,r 62, 72-74 (Ex. 1, Table 1)). Appellant does not dispute the Examiner's finding that Stack teaches claim 1 's aromatic polycarbonate and copolyester in amounts that fall within the scope of claim 1. Compare Non-Final Act. 4, with Br. 5-11. 4 Appeal2017-011608 Application 14/185,063 Appellant argues that a skilled person would not have been motivated to add a black colorant to Stack's composition because doing so would detract from the clarity that is a key property of Stack's composition. Br. 5. We are unpersuaded by Appellant's argument because as the Examiner finds (Ans. 4; Non-Final Act. 4), Stack explicitly teaches adding colorants and dyes, without restriction as to color, as well as impact modifiers, to its composition. Stack, ,r 62. Moreover, DeRudder teaches that black colorants, such as carbon black, are colorants suitable for use with thermoplastic polycarbonate compositions. DeRudder, 21:37--42; see also Spec. ,r 22 (listing carbon black as a black colorant). Appellant's argument that adding a black colorant to Stack's composition would render its composition unsatisfactory for its intended purpose (Br. 6) is also unpersuasive. Stack does not teach any restrictions as to which colorants or dyes can be added to its composition. Stack ,r 62. Nor has Appellant identified or presented sufficient evidence that adding a black colorant to Stack's composition would prevent the underlying blend from having a combination of clarity and heat resistance as desired by Stack (Stack ,r 14). In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). We are also unpersuaded by Appellant's argument that the cited references do not provide any expectation of the increased gloss and reduced haze of claim 1 's composition. Br. 6. The Examiner has set forth a rationale as to why one of ordinary skill in the art would reasonably expect improved gloss and reduced haze to "naturally flow" from using Stack's polymer blend. Ans. 10, 19-20 (Stack teaches a combination of the recited polycarbonate and copolyester in the recited amounts, and Appellant's 5 Appeal2017-011608 Application 14/185,063 Specification teaches this combination is what is responsible for improved gloss and reduced haze); Final Act. 10-11; see also Br. 10 (admitting that "adding a copolyester to a black-colored impact-modified polycarbonate composition substantially reduces haze and increases gloss."), and Spec. ,r 69 (illustrating that adding a copolyester to an impact-modified polycarbonate composition results in "substantially lower haze and higher glass" when compared to similar compositions without the copolyester). "Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... [The] fairness [of the burden-shifting] is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The Examiner has established that the "claimed and prior art products are identical or substantially identical." See Ans. 10, 19--20; see also Spec. ,r 69. The Examiner's findings are sufficient "to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990) ( emphasis omitted). We are not persuaded by Appellant's contention that the data in the Specification, particularly in Table 2, demonstrates that the haze and gloss values are not inherent properties of the polymer blend. Br. 10; Spec. ,r 69. To the contrary, the evidence in Appellant's Table 2, and Appellant's argument, confirm that reduced haze and increased gloss are indeed properties of the polymer blend. Br. 10; Spec. ,r 69. Thus, Appellant's 6 Appeal2017-011608 Application 14/185,063 evidence falls short of demonstrating that the recited properties are not inherent in Stark's composition. In re Best, 562 F.2d at 1255. Appellant's argument that Stack does not "exemplify" the combination of polycarbonate, copolyester and black colorant (Br. 11) is unpersuasive because Stark's teachings are not limited to what is disclosed in the examples. In re Mills, 470 F.2d 649,651 (CCPA 1972) ("All the disclosures in a reference must be evaluated, including nonpreferred embodiments, ... and a reference is not limited to the disclosure of specific working examples.") (citations omitted); In re Preda, 401 F.2d 825, 826-27 (CCP A 1968) ("[I]n considering the disclosure of a reference, it 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."). Appellant argues that claim 3 7 is further patentable over the cited references because claim 37, which depends from independent claim 23, recites a composition that includes a minimum of 3 0 .1 weight percent of the black colorant (0.1 to 3 wt. %), impact modifier (20 to 30 wt. %), and flame retardant (10 to 15 wt. % ) ("additives), whereas Stack teaches that its additives are present in an amount of0.01 to 25 weight percent. Br. 8. Appellant's argument is not persuasive of reversible error. Stack teaches that its polyester compositions can contain common additives, for example, colorants, flame retardants, and impact modifiers, in an amount from 0.01 to 25 percent by weight of the overall composition. We read Stack's disclosure as teaching that any of the listed additives can be included in an amount of from 0.01 to 25 percent by weight of the overall composition, not that the total content of additives in the composition is 7 Appeal2017-011608 Application 14/185,063 limited to 0.01 to 25 percent, as Appellant's contend. Nevertheless, as the Examiner finds, one of ordinary skill in the art would have been motivated by Sheu's teachings to include 13 to 25 wt.% of an impact modifier in Stack's composition to provide polycarbonate compositions with high impact strength without the expense of melt flow. Non-Final Act. 4--6 (citing Sheu 6, 11. 23-34). The Examiner also finds that DeRudder, which like Stack concerns molded polycarbonate compositions, teaches that colorants are generally used in thermoplastic polycarbonate compositions in amounts of about 0.01 wt.% to about 10 wt.%. Non-Final Act. 7 (citing DeRudder 21 :37-55). Appellant does not identify reversible error in those findings. Appellant argues that a skilled person would not have added Sheu's ABS/SAN blend to the Stack composition because doing so would prevent formation of Stack's miscible polymer blend. Br. 5. Appellant argues that "a skilled person would understand that addition of Sheu's ABS/SAN impact modifier to Stack's composition would not yield a miscible polymer blend." Id. 8. Thus, Appellant contends that "it would have defied logic for a skilled person to have prepared Stack's miscible polymer blend and made it immiscible by adding Sheu's ABS/SAN impact modifier." Id. at 8-9. We are unpersuaded by Appellant's arguments because Appellant fails to provide sufficient evidence to support its contention that the miscibility of Stack's polymer blend would have been adversely affected by the addition of Sheu's impact modifier. In re Pearson, 494 F.2d at 1405. We are also unpersuaded by Appellant's arguments that adding Sheu's ABS/SAN impact modifier to Stack's composition would not yield the compositions of claim 28 and 36 because SAN is not among the specific 8 Appeal2017-011608 Application 14/185,063 impact modifiers recited in those claims. Br. 9; see also claims 28 (reciting "the impact modifier is selected from the group consisting of ... an acrylonitrile-butadiene-styrene copolymer (ABS) .... "), and claim 36 (reciting the impact modifier consists of a copolymer of acrylonitrile, butadiene, and styrene."). As the Examiner points out, Sheu's ABS/SAN mixture is a mixture of two impact modifiers, namely, ABS and SAN. Non- Final Act. 13. ABS is one of the impact modifiers recited in claims 28 and 36. Claims 28 and 36 depend from independent claim 23. Claim 23 uses the traditional phrase "comprising" and thus is open to additional unrecited elements, such as a second impact modifier, for example, SAN in Sheu's ABS/SAN mixture. See id. at 14. Because we are unpersuaded of reversible error in Rejections 1 and 2, we affirm the rejection of claims 1 and 23-37 over Stark, Sheu, DeRudder, and Knepper, and the rejection of claims 30 and 37 over those references further view of with Weinberg. Rejections 3 and 4 Appellant separately argues claims 1 and 3 7. Br. 11-13. We address below the claims separately argued and the remaining claims will stand or fall with claim 1, which we select as representative. 37 C.F.R. Â§ 4I.37(c)(l)(iv). As with Rejections 1 and 2, the Examiner finds that Stack teaches most of the components of claim 1 's composition including the aromatic polycarbonate and copolyester in amounts recited in claim 1, an impact modifier and a colorant, but does not teach the specific amounts of impact modifiers or colorants recited in the claim. Non-Final Act. 22 (citing Stack, Abstract, ,r,r 62, 72-74 (Ex. 1, Table 1)). 9 Appeal2017-011608 Application 14/185,063 Appellant presents two main arguments regarding Rejections 3 and 4: (1) a skilled person would not have been motivated to add a black colorant to Stack's composition because doing so would detract from the clarity that is a key property of Stack's composition, and (2) a skilled person would not have added Grabowski' s graft copolymer of butadiene, styrene, and acrylonitrile to Stack's composition because doing so would prevent formation of Stack's miscible polymer blend. Br. 12. We are unpersuaded by Appellant's first argument for the same reasons as discussed above with respect to Rejections 1 and 2. We are also unpersuaded by Appellant's second argument because Appellant fails to provide sufficient evidence to support its contention that miscibility of Stack's polymer blend would have been adversely affected by the addition of Grabowski's impact modifier. In re Pearson, 494 F.2d at 1405. As with Rejections 1 and 2, Appellant argues that claim 37 is further patentable over the cited references because claim 3 7, which depends from independent claim 23, recites a composition that includes a minimum of 30.1 weight percent of the black colorant (0.1 to 3 wt.%), impact modifier (20 to 30 wt.%), and flame retardant (10 to 15 wt.%) ("additives"), whereas Stack teaches that its additives are present in an amount of 0.01 to 25 weight percent. Br. 13. For the same reasons as discussed above with regard to Rejections 1 and 2, we are unpersuaded of reversible error in the Examiner's rejection of claim 37. 10 Appeal2017-011608 Application 14/185,063 Re} ections 5-7 Appellant does not present separate arguments for the patentability of claims 23-37. Br. 14--16. Thus, we determine that claims 23-37, including separately rejected claims 30 and 37 (Rejection 6), and claim 33 (Rejection 7), will stand or fall with claim 1, which we select as representative. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellant argues that because Gaggar expresses a preference for polyesters prepared from an aliphatic diol and an aliphatic diacid, and Gaggar' s most preferred polyester is poly( cyclohexane-1,4-dimethylene cyclohexane-1,4-carboxylate) (PCCD), a skilled person would not have been motivated to substitute Stack's polyester prepared from 1,4- cyclohexanedimethanol, 2,2,4,4-tetramethyl-l,3-cyclobutanediol, terephthalic acid, and isophthalic acid (CHDM/TMCD/TPA/IPA) for Gaggar' s poly( cyclohexane-1,4-dimethylene cyclohexane-1,4-carboxylate) (PCCD) polyester. Br. 14. Appellant also argues that Gaggar's advantages depend on using a polyester with a refractive index in the range of 1.51 to 1.58, and the Examiner has not provided evidence that Stack's CHDM/TMCD/TP A/IP A polymer has a refractive index in that range. Id. Appellant's arguments are not persuasive of reversible error because Gaggar merely expresses a preference for, but does not require the cycloaliphatic polyesters be based on aliphatic diacids. Gaggar ,r,r 50, 55. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[T]he fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered." ( second alteration in original) ( citation omitted)). Moreover, as the Examiner correctly finds (Ans. 23), Gaggar 11 Appeal2017-011608 Application 14/185,063 teaches using an impact modifier, not a miscibile polymer blend, having a refractive index from about 1.51 to about 1.58 in its composition. Ans. 23; see also Gaggar ,r 13. Because we are unpersuaded of reversible error in Rejections 5-7, we affirm the rejection of claims 1, 23-29, and 31-37 over Gaggar, Stack, Taylor Jr., and Ding, the rejection of claims 30 and 37 over Gaggar, Stack, Taylor, Jr., Ding, and Weinberg, and the rejection of claim 33 over Gaggar, Stack, Taylor, Jr., Ding, and Davis. DECISION The rejection of claims 1 and 23-37 under 35 U.S.C. Â§ 103 over Stack, Sheu, DeRudder, and Knepper is affirmed. The rejection of claims 30 and 37 under 35 U.S.C. Â§ 103 over Stack in view of Sheu, DeRudder, Knepper, and Weinberg is affirmed. The rejection of claims 1 and 23-37 under 35 U.S.C. Â§ 103 over Stack in view of Grabowski, DeRudder, and Knepper, as evidenced by Sheu is affirmed. The rejection of claims 30 and 37 under 35 U.S.C. Â§ 103 over Stack in view of Grabowski, DeRudder, and Knepper, as evidenced by Sheu, and further in view of Weinberg is affirmed. The rejection of claims 1, 23-29, and 31-37 under 35 U.S.C. Â§ 103 over Gaggar in view of Stack, Taylor, Jr., and Ding is affirmed. The rejection of claims 30 and 37 under 35 U.S.C. Â§ 103 over Gaggar in view of Stack, Taylor, Jr., and Ding, and Weinberg is affirmed. The rejection of claim 33 under 35 U.S.C. Â§ 103 over Gaggar in view of Stack, Taylor, Jr., and Ding, and Davis is affirmed. 12 Appeal2017-011608 Application 14/185,063 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 )(1 )(iv). AFFIRMED 13