Ex Parte Weber et al

Patent Trial and Appeal BoardOct 19, 2016

13053872 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/053,872 03/22/2011 123223 7590 10/21/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Martin Weber 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. 074048-0085-US (287516) 9041 EXAMINER BUTCHER, ROBERT T ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 10/21/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN WEBER, CHRISTIAN MALETZKO, SUSANNE ZEIHER, MARK VOLKEL, NORBERT GUNTHERBERG, RUDIGER BLUHM, and BERND BRUCHMANN Appeal2015-004359 Application 13/053,872 Technology Center 1700 Before LINDA M. GAUDETTE, MICHELLE N. ANKENBRAND, and JULIA HEANEY, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-004359 Application 13/053,872 Appellants1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision2 finally rejecting claims 1, 3-19, and 21-23. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. The invention relates to thermoplastic molding compositions which are based on polyarylene ethers, and are said to have improved flowability and good mechanical properties, and an improvement in anisotropy in respect to stiffness. Specification filed June 6, 2011 ("Spec.") 2: 17-22. In particular, the compositions are said to have high stiffness (modulus of elasticity), high impact resistance, high tensile strain at break, and high ultimate tensile strength. Id. at 2:22-23. Claim 1, the sole independent claim on appeal, reads as follows: 1. A thermoplastic molding composition comprising the following components: (Al) from 20 to 89 .9% by weight of at least one polyarylene ether having an average of at most 0.5 phenolic end groups per polymer chain, (A2) from 0 to 10% by weight of at least one polyarylene ether having an average of at least 1.5 phenolic end groups per polymer chain, (B) from 5 to 65% by weight of at least one polyarylene sulfide, (C) 0.5 to 3% by weight of at least one hyperbranched polymer selected from hyperbranched polycarbonates and hyperbranched polyesters based on the entire amount of components (A) to (F), (D) from 0 to 15% by weight of at least one functionalized polyarylene ether comprising carboxy groups, 1 Appellants identify the real party in interest as BASF SE. Appeal Brief filed November 14, 2014 ("Br."), 2. 2 Final Office Action mailed June 19, 2014 ("Final Act."). 2 Appeal2015-004359 Application 13/053,872 (E) from 5 to 70% by weight of at least one fibrous or particulate filler, and (F) from 0 to 40% by weight of further additives and/or processing aids; wherein the total of the% by weight values for components (A) to (F) is 100% by weight. The claims stand rejected as follows (see Final Act. 3-14): 1. Claims 1, 3-12, 16-19, and 21-23 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weber et al. (U.S. 5,502, 122, published Mar. 26, 1996 ("Weber")) in view ofMettlach et al. (U.S. 2008/0207812 Al, published Aug. 28, 2008 ("Mettlach")) and Eipper et al. (U.S. 2007/0244227 Al, published Oct. 18, 2007 ("Eipper") ). 2. Claims 11-15 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weber in view of Mettlach and Eipper, and further in view of Weber et al. U.S. 6,051,661, issued Apr. 18, 2000 ("Weber '661")). 3. Claims 1, 3-19, and 21-23 stand rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over Weber claims 1---6 in view of Mettlach and Eipper. 4. Claims 1, 3-19, and 21-23 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over: (1) claims 1-18 of US 13/040,593 in view of Mettlach and Eipper; (2) claims 1-18 of US 13/473,022 in view of Mettlach and Eipper and; and (3) claims 13, 16, 19, 20, 23-25, 28, and 30 of US 13/069,839 in view of Weber. Rejections of claims 1, 3-19, and 21-23 under 35 U.S.C. Â§ 103(a) The Examiner finds Weber teaches or suggests a thermoplastic molding composition comprising a polyarylene ether sulfone, as recited in claim 1, with the 3 Appeal2015-004359 Application 13/053,872 exception of component (C): "at least one hyperbranched polymer selected from hyperbranched polycarbonates and hyperbranched polyesters" (claim 1 ). Final Act. 4---6. The Examiner finds Mettlach discloses a thermoplastic molding composition comprising a thermoplastic polymer, such as a polyarylene ether sulfone (Mettlach i-f 19) and at least one hyperbranched polymer selected from hyperbranched polycarbonates or hyperbranched polyesters. Final Act. 5---6. The Examiner finds "Mettlach doesn't specify exactly why the hyperbranched polycarbonate/polyester is added to the composition." Id. at 6. The Examiner notes, however, that Mettlach describes the composition as having good flowability and mechanical properties. Id. (citing Mettlach i-fi-1 314--315). The Examiner finds Eipper discloses a thermoplastic molding composition comprising a thermoplastic polyester, a hyperbranched polycarbonate/polyester, and a minor amount of an impact modifier. Id. The Examiner finds Eipper discloses that the composition has improved flowability and good mechanical properties, and that one of ordinary skill in the art would have recognized these advantages are provided by the hyperbranched polycarbonate/polyester component of the composition. Id. Based on a review of the teachings of Weber, Mettlach, and Eipper, the Examiner finds one of ordinary skill in the art at the time of Appellants' invention would have been motivated to add Mettlach's hyperbranched polycarbonate/polyester to Weber's thermoplastic molding composition to achieve the advantage of good flowability and mechanical properties as taught by Eipper. Id. at 6-7. The Examiner finds the incorporation of Mettlach's hyperbranched polymer in Weber's composition would have resulted in a composition as recited in claim 1. Id. at 5---6. 4 Appeal2015-004359 Application 13/053,872 Appellants contend the evidence does not support the Examiner's finding that the ordinary artisan would have been motivated to include Mettlach's hyperbranched polycarbonate/polyester in Weber's thermoplastic molding composition for the purpose of improving mechanical properties. See Br. 10-11. Appellants argue that, contrary to the Examiner's contention, the ordinary artisan would have understood from Mettlach that the addition of a hyperbranched polymer would result in a composition having a lower tensile modulus of elasticity (reduced stiffness) and lower impact resistance. Id. (citing Mettlach, Tables 2--4). Appellants likewise argue "Eipper does not show high stiffness, reduced anisotropy and improved impact resistance of a thermoplastic molding composition comprising a hyperbranched polyester or a hyberbranched polycarbonate." Id. at 11. Appellants rely on the examples in Table 2 of Eipper (id. at 11-12; Ex. A) as evidence that the ordinary artisan would have understood from Eipper that "the polycarbonate component has very little effect on the modulus of elasticity of the thermoplastic molding composition" (id. at 11 ). Appellants additionally rely on Specification Table 2 (Ex. B) as evidence of unexpected results. Id. at 12. Specifically, Appellants argue Specification Table 2 shows that "the modulus of elasticity improve[d] significantly, by values in the range of 400-10 700 MPa," "the anisotropy of the modulus of elasticity [was] reduced, [and] the impact resistance [was] slightly improved" in compositions that included a hyperbranched polycarbonate. Id. The Examiner, in response, maintains the ordinary artisan would not have been dissuaded from using a hyperbranched polymer in Weber's composition, but would have viewed the addition of a hyperbranched polymer as desirable because Mettlach Table 4 evidences that an improvement in MVR (250 Â°C) and flow spiral is achieved by use of the hyperbranched polymer. Ans. 18. The Examiner also 5 Appeal2015-004359 Application 13/053,872 points out that "the Examples of Eipper, like Mettlach, show an improvement in the MVR (250 Â°C)." Id. at 19. With respect to Appellants' evidence of unexpected results, the Examiner notes that the examples in Table 2 of the Specification are limited to compositions containing a polyether sulfone (components Al/A2), a specific hyperbranched polycarbonate (component C), and a specific functionalized polyarylene ether comprising carboxy groups (component D). The Examiner contends, therefore, that the evidence is not commensurate in scope with claim 1, which is directed more broadly to any polyarylene ether, hyperbranched polyesters or polycarbonates, and any functionalized polyarylene ether comprising carboxy groups. Id. at 20. Having fully considered the respective positions of Appellants and the Examiner, we are not convinced of error in the Examiner's conclusion of obviousness. Appellants contend the Examiner failed to identify a teaching or suggestion that the addition of a hyperbranched polymer to Weber's composition would lead to improvements in impact resistance and stiffness. Br. 10. As explained by the Examiner, however, "[t]he reason or motivation to modify [a] reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant." Ans. 14 (citing In re Kahn, 441F.3d977, 987 (Fed. Cir. 2006)); see also In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the ... [limitation], [Appellants'] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]."). We have considered Appellants' argument that Mettlach teaches tensile modulus of elasticity and impact resistance are affected negatively by the 6 Appeal2015-004359 Application 13/053,872 addition of a hyperbranched polymer (Br. 10), but are persuaded by the Examiner's argument that the ordinary artisan, concerned with improving flowability, would have been motivated to make the proposed modification due to Mettlach's showing that addition of a hyperbranched polymer improved MVR (250 Â°C) and flow spiral (Ans. 18 (citing Mettlach Table 4)) and Eipper's showing of improved MVR by addition of a hyperbranched polymer (id. at 19 (citing Eipper Example 1 )). Appellants have not explained convincingly why the Examiner erred in this finding. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (explaining it is error to "assum[ e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem"). Any additional arguments raised by Appellants in their Brief, but not discussed explicitly in this Decision, have been fully addressed by the Examiner in the Answer and we concur in the Examiner's determination that these arguments are unpersuasive of nonobviousness for the reasons stated in the Answer. See Ans. 14--20 (Response to Argument). In general, Appellants' arguments are directed to alleged deficiencies in the teachings of the individual references and fail to identify error in the Examiner's fact finding and reasoning with respect to the combined teachings of the references. See, e.g., Ans. 14 (addressing Appellants' argument (Br. 7-8) that Eipper does not teach that a hyperbranched polymer would be compatible with the components of Weber's composition: "[T]he relevant question of patentability is if one skilled in the art, at the time the invention was made, would combine Weber, Mettlach, and Eipper, as a whole, to arrive at the instant invention."); Ans. 17-19 (explaining Appellants' arguments regarding the teachings of Mettlach and Eipper, individually, fail to address the Examiner's 7 Appeal2015-004359 Application 13/053,872 findings with respect to the understanding of the ordinary artisan upon consideration of the combined teachings of Weber, Mettlach, and Eipper). In sum, the evidence on the record before us, including Appellants' evidence of nonobviousness, weighs in favor of obviousness. We, therefore, sustain the Examiner's rejections of claims 1, 3-19, and 21-23 under 35 U.S.C. Â§ 103(a). Rejection of claims 1, 3-19, and 21-23 on the ground of nonstatutory obviousness-type double patenting as unpatentable over Weber claims 1-6 in view of Mettlach and Eipper Appellants rely on the same arguments made in traversing the Examiner's rejection under 35 U.S.C. Â§ 103(a). Br. 13. We are not persuaded of error in the Examiner's nonstatutory obviousness-type double patenting rejection for the reasons discussed above. Accordingly, we likewise sustain this ground of rejection. Provisional rejection of claims 1, 3-19, and 21-23 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-18 of US 131040,593 in view of Mettlach and Eipper Appellants rely on the same arguments made in traversing the Examiner's rejection under 35 U.S.C. Â§ 103(a). Br. 13-14. We are not persuaded of error in the Examiner's nonstatutory obviousness-type double patenting rejection for the reasons discussed above. Accordingly, we likewise sustain this ground of rejection. Provisional rejection of claims 1, 3-19, and 21-23 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-18 of US 131473,022 in view of Mettlach and Eipper We note that US 13/473,022 issued as US 9,296,872 on March 29, 2016. Accordingly, we decline to reach the rejection based on this application, as it is no longer co-pending with the present application. 8 Appeal2015-004359 Application 13/053,872 Provisional rejection of claims 1, 3-19, and 21-23 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 13, 16, 19, 20, 23-25, 28, and 30 of US 131069,839 in view of Weber Appellants request that this ground of rejection "be held in abeyance until the claims are otherwise allowable, at which point a terminal disclaimer will be filed if still necessary." Br. 13. US 13/069,839 went abandoned on September 18, 2014. We, therefore, reverse this ground of rejection. 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). AFFIRMED 9