Ex Parte Weber et al

Patent Trial and Appeal Board

Apr 22, 2016

13630658 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/630,658 09/28/2012
123223 7590 04/26/2016
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.
074008-1464-US (286287) 4304
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
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):
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, and
FLORIAN HENNENBERGER1
Appeal2014-007878
Application 13/630,658
Technology Center 1700
Before JEFFREY T. SMITH, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 10-19 under 35 U.S.C. § 103(a) over
Weber '1222 in view of Weber '3 71. 3, 4 We have jurisdiction pursuant to 3 5
U.S.C. § 6.
We AFFIRM.
1 Appellants identify BASF SE as the Real Party in Interest. App. Br. 2.
2 Weber et al. (US 5,502,122, issued March 6, 1996) ("Weber '122").
3 Weber et al. (US 2003/0069371 Al, published April 10, 2003) ("Weber
'371 ").
4 Weber'122 and Weber '371 list Martin Weber as an inventor.
Appeal2014-007878
Application 13/630,658
BACKGROUND
Appellants' claimed invention is directed to high strength molding
compositions containing a polyarylene ether sulfone, a thermotropic
polymer, a polyarylene ether having predominantly -OH end groups, and
fibrous or particulate filler. Spec. Abstract. The polyarylene ether can be,
and preferably is, a polyarylene ether sulfone. Spec. 3 :29-4:7, 11 :25-27,
35-38. Independent claims 10 and 19 are directed to a composition
comprising or consisting essentially of, respectively, the same recited
constituents in the same specified amounts. Claims 10, 19.
Independent claim 10 is illustrative:
10. A molding composition comprising
a. from 29 to 89% by weight of at least one polyarylene
ether sulfone having an average number of phenolic end groups
per chain of from 0 to 0.2,
b. from 0.5 to 20% by weight of a thermotropic polymer,
c. from 0.5 to 10% by weight of a polyarylene ether having
predominantly OH end groups,
d. from 10 to 70% by weight of at least one fibrous or
particulate filler,
e. from 0 to 40% by weight of additives or processing aids,
where the total of the proportions by weight does not exceed
100% by weight, based on the thermoplastic molding
composition.
App. Br. 12 (Claims Appendix).
Appellants argue the patentability claims 10-18 on the basis of claim
10 and separately argue the patentability of claim 19, contending that the
transitional phrase "consists essentially of' excludes any added component
that materially changes the characteristics of the claimed invention.
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DISCUSSION
Upon consideration of the evidence and opposing contentions of the
Appellants and the Examiner, we are unpersuaded the Examiner erred in
rejecting claims 10-19 as unpatentable for obviousness over Weber '122 and
Weber '371. 5 We add the following.
Weber '122 is directed to molding materials comprising polyarylene
ethers having terminal hydroxyl groups, polyarylene ethers having non-
hydroxyl terminal groups, polyarylene sulfides, and fibrous or particulate
fillers. Weber '122 Abstract, col. 1, 11. 1-25. As used in Weber '122,
polyarylene ether sulfones are polyarylene ethers. See, e.g., Weber '122
col. 1, 11. 1-25, col. 5, 11. 49-67.
Weber '371 is directed to molding materials comprising polyarylene
ether sulfone, thermoplastic polyamide, thermoplastic polymer, and fillers.
Weber '371 Abstract.
The Examiner relies on Weber' 122 for its disclosure of the recited
constituents of claim 10 where polyarylene ether sulfones are identified as
preferred polyarylene ethers. Ans. 2-3 (citing Weber '122 col. 1, 11. 1-25,
col. 2, 11. 15-20). As to the recited polyarylene ether sulfones having zero to
0.2 terminal phenolic groups on average and a specified fraction-0.5 to
10% by weight-of the composition being a polyarylene ether having
predominantly-OH end groups, the Examiner determines Weber' 122
discloses an overlapping or encompassed range of values. Ans. 3--4.
5 We refer to the Final Office Action (mailed September 27, 2013), the
Appeal Brief (filed March 19, 2014), the Examiner's Answer (mailed May
5, 2014), and Reply Brief (filed July 7, 2014).
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Application 13/630,658
The Examiner relies on Weber '371 for its disclosure of 0.1 to 30% by
weight of a thermotropic polymer, which range encompasses the claim's
range of 0.5 to 20%, in concluding the amount was prima facie obvious.
Ans. 4. The Examiner concludes one of ordinary skill at the time of the
invention would have found it obvious to include the thermotropic polymer
of Weber '3 71 in the composition of Weber '122 in order to improve the
flowability of the thermoplastic molding composition and stability during
processing. Ans. 4-5, 13.
As to the transitional phrase "consisting essentially of' in claim 19,
the Examiner determines there is no evidence of record that any additional
components in the compositions of Weber '122 and Weber '3 71 would
materially affect the basis and novel characteristic of the claimed invention
such that the combination would not suggest the invention. Ans. 8, 11.
Claims 10-18
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness of claim 10 and that, if established, it is rebutted
by the surprisingly improved results of the composition.
Appellants argue that the selection of the polyarylene ether sulfones
would not have been obvious because of the many possibilities for
component A-corresponding to the "at least one polyarylene ether sulfone
having an average number of phenolic end groups per chain of from 0 to
0.2"-and component C-corresponding to "a polyarylene ether having
predominantly OH end groups"-in Weber '122. App. Br. 6-7. Appellants
further argue-without elaboration-that "selecting two different
polyarylene ether sulfones, and then adjusting to have the OH or phenolic
end groups as required" would not have been obvious. App. Br. 7.
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Appellants' argument is not persuasive for the reasons set forth by the
Examiner (Ans. 11-12), including that Weber '122 provides direction and
guidance to use polyarylene ether sulfones for component A (Ans. 12). In
this regard, we further note the focused disclosure in Weber '122 of
"particularly preferred polyarylene ethers A" that are polyarylene ether
sulfones. Weber' 122 col. 5, 11. 49-67. As to the argued difficulty in
selecting a second polyarylene ether sulfone, the argument falls short
because the claim does not require the second polyarylene ether to be a
polyarylene ether sulfone. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998). As to the required-OH and phenolic groups, Appellants fail to
elaborate on the assertion it would not have been obvious or offer any
specific criticism of the Examiner's detailed findings. App. Br. 7. Cf In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
Appellants argue that the Examiner has failed to set forth sufficient
reason or rationale for one of ordinary skill in the art to add a thermotropic
polymer to the composition of Weber' 122. App. Br. 7. Appellants do not
squarely address that Weber '371 discloses that including thermotropic
polymer improves the flowability of the thermoplastic molding composition
and stability during processing, but rather argue that larger differences
resulting from substitution of a different component would render one of
ordinary skill in the art to more likely alter that component rather than to
include thermotropic polymer. App. Br. 7.
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Appellants' argument is without merit because it is unpersuasive of
any error in the Examiner's determination that Weber '371 discloses
improved properties of its Examples 1 and 2 to Example 1 c where 1 or 2
parts in 49 of a polyarylene ether sulfone Al was replaced with 1 or 2 parts
thermotropic polymer Fl, respectively (Weber '371,-i,-i187, 202, Table 1) or
that those improved properties would be desired-a fact explicit in
Appellants' argument itself. Appellants proffer no evidence as to whether
Weber '371 would have led one of ordinary skill in the art away from use of
the thermotropic polymer. Cf DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) ("We
will not read into a reference a teaching away from a process where no such
language exists."). Further, as aptly explained by the Examiner, the
substitution of the different component on which Appellants' argument is
grounded results in a composition that can reasonably be expected to have
lower stability than desired. Ans. 13.
For these reasons, we find the Examiner's prima facie case of
obviousness well-founded.
Appellants contend there are unexpected results establishing the non-
obviousness of the claims. Appellants rely on Examples from the
Specification and compare Examples 4 and 8 (both according to the
invention) with Comparative Examples 1-3, 5-7, 9, and 10 highlighting the
modulus of elasticity, tensile strength at break and ultimate tensile strength.
App. Br. 8 (citing Spec. Table 2). Appellants contend that "only through the
instantly claimed combination of components A through D [corresponding
to a through d in claim 1 OJ that compositions have the surprising
combination of high modulus of elasticity and high tensile strength" and
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characterize the result as a synergistic effect. App. Br. 8-9; see also Reply
Br. 3.6
Having considered the record, we do not find Appellants' contention
that there are unexpected results supporting the patentability of the claims
well-founded. Appellants bear the burden of showing the claimed invention
imparts unexpected results. In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) ("the burden of showing unexpected results rests on he who asserts
them."). As highlighted by the Examiner, Appellants' proffered evidence
does not directly compare compositions according to the claims with
compositions from Weber '122. The comparisons between Example 4 and
Comparative Example 2 and between Example 8 and Comparative Example
6 are apt, however, as these are comparisons between compositions with or
without thermotropic polymer component B where the basis of the rejection
was to include the thermotropic polymer of Weber '371 in the composition
of Weber' 122. Ans. 2-5.
The pertinent comparisons that can be made, however, do not alone
meet Appellants' burden to establish patentability. In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973) (to show unexpected results, applicant must
establish: "( 1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art, ... and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention") (citation omitted). Appellants do not point
to any evidence indicating the differences in properties between Example 4
and Comparative Example 2 and between Example 8 and Comparative
6 We refer to Reply Brief' s pages in sequential order as the Reply Brief lacks
page numbering.
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Example 6 cited from Table 2 are significant. App. Br. 8-9; Reply Br. 2-3.
Appellants similarly do not direct us to any statement in the Specification
attesting to the unexpected nature of the results or to any persuasive
evidence that the results obtained would have been unexpected at the time of
the invention. Absent such Appellants cannot meet their burden. See, e.g.,
In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (finding inadequate "a
statement by Geisler' s counsel ... that Geisler' s results were 'surprising."').
Appellants also do not explain why the limited showing drawn to two
Examples with particular components Al or A2, B, Cl, and Dare
reasonably commensurate with the scope of the claims not limited to those
particular components or the amounts used. In re Grasselli, 713 F .2d 731,
743 (Fed. Cir. 1983) (objective evidence of non-obviousness must be
commensurate in scope of the claims at issue.).
For these reasons, we are unpersuaded of reversible error in the
Examiner's conclusion that the subject matter of claims 10-18 would have
been obvious over the cited prior art.
Claim 19
Appellants argue that the Examiner erred in rejecting claim 10
because they contend polyarylene sulfide in the composition of Weber' 122
materially affects the claimed invention. App. Br. 9-11. Specifically,
Appellants contend that a composition having "high stiffness, even at high
temperatures, but also to have good flowability" is characteristic of the
inventive composition. App. Br. 10 (citing Spec. 2). Appellants maintain
this character is reflected "in a high elastic modulus and also a high tensile
strain at break." App. Br. 10. Appellants rely on Weber' 122's disclosure
that polyarylene sulfide has an effect on elasticity and melt flow index in its
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composition (Weber '122 Table 1) and Comparative Example 10
demonstrating significantly lower values for elastic modulus and tensile
strength than Examples 4 and 8 (Spec. Table 1 ). App. Br. 10.
"[T]he phrase 'consisting essentially of' limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition." In re Herz, 537 F.2d 549, 551-52
( CCP A 197 6). Appellants bear the burden of showing that a component in a
reference would materially affect the basic and novel characteristics of a
claimed composition. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
On this record, including consideration of the portions of the
Specification cited by Appellants, we are not persuaded that high stiffness
and good flowability are basic and novel characteristics of the claimed
composition rather than merely being benefits provided by some
compositions according to the invention such that they give rise to any
further limitation to the claimed composition. In re Herz, 537 F.2d at 551-
52. ("[I]t is necessary and proper to determine whether [the] specification
reasonably supports a construction" that would exclude or include particular
ingredients.); see also PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351,
1354-357 (Fed. Cir. 1998) (patentees "could have defined the scope of the
phrase 'consisting essentially of' for purposes of its patent by making clear
in its specification what it regarded as constituting a material change in the
basic and novel characteristics of the invention. The question for our
decision is whether PPG did so.").
On this record, Appellants' proffered evidence is also inadequate to
establish that polyarylene sulfide materially changes the properties of the
claimed composition. While Weber' 122 discloses that including
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polyarylene sulfide (component C) has at least some effect on the
compositions disclosed in Weber '122 (see Table 1 ), the compositions in
Weber '122 differ from those of the instant claims in at least that there is no
thermotropic polymer. Comparative Example 10 from the instant
application relied on by Appellants includes polyphenylene sulfide, but lacks
both component B [the thermotropic polymer] and component C [polyether
sulfone with predominantly-OH end groups]. App. Br. 10 (citing Spec.
Table 1 ). While acknowledging the differences between the composition of
Examples 4 and 8 and the reference compositions identified above,
Appellants fail to adequately explain how the evidence establishes including
polyarylene sulfide in a composition according to claim 19 would alter its
properties. App. Br. 9-11; Reply Br. 4-5. Furthermore, the compositions
including polyphenylene sulfide Appellants rely on include it in amounts of
14% (Spec. Table 2) and 20% (Weber '122 Table 1) while Weber '122
discloses its inclusion in amounts as low as 4% (Weber '122 col. 1, 1. 29)
and Appellants fail to adequately explain how lesser amounts, including
amounts within the range disclosed by Weber '122, would materially change
the properties of the claimed composition.
For these reasons, we are unpersuaded of reversible error in the
Examiner's conclusion that the subject matter of claim 19 would have been
obvious over the cited prior art.
CONCLUSION
The Examiner's rejection of claims 10-19 under 35 U.S.C. § 103 is
AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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