SABIC Global Technologies B.V.Download PDFPatent Trials and Appeals BoardDec 16, 20212021000616 (P.T.A.B. Dec. 16, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/117,558 08/09/2016 Zhenke Wei 12PLAS0304-US-PCT 1058 140646 7590 12/16/2021 Cantor Colburn - SABIC General 20 Church Street 22nd Floor Hartford, CT 06103-3207 EXAMINER LEE, DORIS L ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 12/16/2021 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@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ZHENKE WEI, HONGTAO SHI, DAKE SHEN, and YEGANG LIN ____________ Appeal 2021-000616 Application 15/117,558 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 17 and 20.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies Sabic Global Technologies B.V. as the real party in interest. Appeal Brief filed May 26, 2020 (“Appeal Br.”), 2. 2 Although claims 1–20 stand finally rejected (Final Office Action entered January 2, 2020 (“Final Act.”) at 1), the Appellant does not contest the Examiner’s rejection of claims 1–16, 18, and 20, and appeals only the rejection of claims 17 and 20. Appeal Br. 2. Appeal 2021-000616 Application 15/117,558 2 We AFFIRM. CLAIMED SUBJECT MATTER Claim 17 illustrates the subject matter on appeal, and reads as follows: 17. The polyalkylene terephthalate flame retardant composition of claim 16, that comprises: (a) about 45 to about 60 parts by weight of the polybutylene terephthalate; (b) about 7 to about 15 parts by weight of brominated polystyrene or poly(pentabromobenzylacrylate); (c) about 1 to about 2.5 parts by weight of Sb2O3; (d) about 0.75 to about 2.25 parts by weight of the bisphenol A diphenyl phosphate; (e) 1.7 to 2.3 parts by weight of the talc; (f) 0.05 to 0.15 parts by weight of the sodium or potassium carbonate; and (g) 25 to 35 parts by weight of the glass fiber. Appeal Br. 12–13 (Claims App.) (emphasis added). Claim 16, from which claim 17 depends, depends from independent claim 1. REJECTIONS3 The Examiner maintains the following rejections in the Examiner’s Answer entered September 1, 2020 (“Ans.”): I. claims 1–8, 16, 17, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Gopal et al. (US 2007/0275242 Al, published November 3 The Examiner states in the Final Action that the rejections are “adequately set forth in paragraph 4 of the Office Action mailed on July 18, 2019,” which “is incorporated here by reference.” Final Act. 2. Citations to the Examiner’s rejections, therefore, refer to the Non-Final Action entered July 18, 2019. Appeal 2021-000616 Application 15/117,558 3 29, 2007) in view of Sakai et al. (WO 2012/073904 Al, published June 7, 2012);4 and II. claims 9–15 and 18 under 35 U.S.C. § 103 as unpatentable over Gopal in view of Sakai and Bhat et al. (US 2009/0111943 Al, published April 30, 2009). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we affirm the Examiner’s rejection of claims 17 and 20 under 35 U.S.C. § 103 for reasons set forth in the Final Action, the Answer, and below. We summarily sustain the Examiner’s rejections of claims 1–16, 18, and 20 under 35 U.S.C. § 103 without further comment because the Appellant does not contest the rejection of these claims. Appeal Br. 2; 37 C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 4 On the record before us, the Appellant does not challenge the Examiner’s reliance on Sakai et al., US 2013/0253145 Al, published September, 26, 2013 as an English equivalent of Sakai et al., WO 2012/073904 Al, published June 7, 2012. Citations to “Sakai” in this decision, therefore, refer to the published U.S. application rather than the published PCT application. Appeal 2021-000616 Application 15/117,558 4 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). The Appellant presents arguments contesting the Examiner’s conclusion that claim 17 would have been obvious over Gopal in view of Sakai, and asserts that claim 20, which depends from claim 17, also would not have been obvious by virtue of its dependency from claim 17. We, accordingly, limit our discussion to claim 17. Appeal Br. 3–8; 37 C.F.R. § 41.37(c)(1)(iv)(2019). The Appellant does not dispute the Examiner’s de facto finding that Gopal discloses a polybutylene terephthalate flame retardant composition comprising (a) polybutylene terephthalate, (b) brominated polystyrene, (c) Sb2O3, (d) bisphenol A diphenyl phosphate, (e) talc, (g) glass fiber, and (h) polycarbonate, in amounts that overlap, encompass, or fall within the respective ranges recited in claim 17, or in the case of polycarbonate, the respective range recited in claim 1. Compare Non-Final Act. 2–3, with Appeal Br. 3–8; see also Gopal ¶¶ 14–16, 94, 98, 103, 120, 122, 123, 134– 136, 144, 146. The Examiner finds that Gopal does not disclose including sodium or potassium carbonate in Gopal’s polybutylene terephthalate composition. Non-Final Act. 3. Sakai, however, discloses a composition comprising a polyester resin and a terminal-modified polybutylene terephthalate crystal nucleating agent. Sakai ¶¶ 23, 28. Sakai discloses that the composition may include additional additives, such as crystal nucleating agents other than terminal-modified polybutylene terephthalate. Sakai ¶¶ 78, 79. Sakai discloses that suitable Appeal 2021-000616 Application 15/117,558 5 “other crystal nucleating agents” include sodium carbonate and talc, and Saki indicates that the “other crystal nucleating agent” “is used in such an amount that the total amount of the crystal nucleating agents that are used in the present invention becomes 0.001 to 1 part by mass with respect to a total of 100 parts by mass” of the polyester resin and terminal-modified polybutylene terephthalate. Sakai ¶¶ 109, 110. Sakai discloses that inorganic fillers, such as talc, may also be included in Sakai’s polyester resin composition in an amount of 0.01 to 400 parts by mass with respect to a total of 100 parts by mass of the polyester resin and terminal-modified polybutylene terephthalate. Sakai ¶¶ 89, 90, 92. The Examiner determines that “[i]t would have been obvious to a person of ordinary skill in the art at the time of the invention to use the sodium carbonate of Sakai in [the] composition of Gopal . . . to receive the expected benefit of promoting crystal nucleation within the composition.” Non-Final Act. 3 (citing Sakai ¶ 109). The Appellant argues that Sakai discloses that the total amount of crystal nucleating agent present in Sakai’s composition, including both the terminal-modified polybutylene terephthalate and the “other” crystal nucleating agent, is 0.001 to 1 parts by mass, and Sakai “does not fairly teach using 0.001 to 1 part by mass of sodium carbonate.” Appeal Br. 5–6 (citing Sakai ¶¶ 23, 109, 110). The Appellant argues that it would not have been obvious to one of ordinary skill in the art to add 0.05 to 0.15 parts by weight sodium carbonate as recited in claim 17 to Gopal’s composition because Sakai discloses that talc is also an “other” crystal nucleating agent, and Gopal discloses including talc in Gopal’s composition in an amount that exceeds the total amount of nucleating agent required by Sakai. Appeal Appeal 2021-000616 Application 15/117,558 6 Br. 6. The Appellant argues that “no additional nucleating agent [would be] needed [in Gopal’s composition] to promote crystal nucleation.” Appeal Br. 6; see also Reply Br. 2. The Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. Gopal discloses a composition comprising a modified polybutylene terephthalate random copolymer (polyester resin) and a filler—such as talc—in an amount of at least 1 weight percent. Gopal ¶¶ 14–16, 94, 98, 103. As discussed above, Sakai discloses including a terminal-modified polybutylene terephthalate crystal nucleating agent, an “other crystal nucleating agent,” such as sodium carbonate or talc, and an inorganic filler—such as talc—in Sakai’s polyester resin composition. Sakai ¶¶ 28, 90, 109. Sakai discloses including the filler in an amount of 0.01 to 400 parts by mass. Sakai ¶ 92. Sakai thus discloses the suitability of including both talc as an inorganic filler, and sodium carbonate as an “other crystal nucleating agent,” in Sakai’s composition. We find no disclosure in Sakai indicating that sodium carbonate should not be included in Sakai’s composition as an “other crystal nucleating agent” if talc is present in the composition as a filler, and the Appellant does not direct us to any such disclosure in Sakai. As the Appellant points out, Sakai discloses only the total amount of crystal nucleating agent present in Sakai’s composition, which includes both the terminal-modified polybutylene terephthalate crystal nucleating agent and any “other crystal nucleating agent.” Sakai ¶ 110. Sakai thus does not disclose the amount of the “other crystal nucleating agent” that should be Appeal 2021-000616 Application 15/117,558 7 included in Sakai’s composition, leaving it to one of ordinary skill in the art to determine a suitable amount. By virtue of disclosing that sodium carbonate functions as an “other crystal nucleating agent,” however, Sakai implicitly indicates that the amount of sodium carbonate included in Sakai’s composition affects the rate or extent of crystallization of the polyester resin present in the composition. Sakai thus implicitly indicates that the amount of sodium carbonate included in Sakai’s polyester resin composition is a result-effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”). One of ordinary skill in the art seeking to promote, or enhance the extent or rate of, crystallization of the polybutylene terephthalate random copolymer (polyester resin) present in Gopal’s composition reasonably would have been led from Sakai’s disclosure of using sodium carbonate as a crystal nucleating agent for polyester resin composition—that may contain a talc filler—to include sodium carbonate in Gopal’s polybutylene terephthalate (polyester resin) composition—that also may contain a talc filler. The ordinarily skilled artisan would have arrived at a suitable amount of sodium carbonate to incorporate into Gopal’s composition to promote a desired level of nucleation, such as an amount as recited in claim 17, through nothing more than routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Appeal 2021-000616 Application 15/117,558 8 The Appellant does not provide any objective evidence to support the Appellant’s assertion that one of ordinary skill in the art would have understood from Gopal’s disclosure of including talc as a filler in Gopal’s composition that an “other” nucleating agent would not be needed in Gopal’s composition, particularly in view of Sakai’s disclosure of the suitability of including both talc as an inorganic filler, and sodium carbonate as an “other crystal nucleating agent,” in Sakai’s composition. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). The Appellant argues that “to promote crystal nucleation of a composition containing” talc as disclosed in Gopal, one of ordinary skill in the art would have added Sakai’s terminal-modified polyethylene terephthalate crystal nucleating agent to the composition rather than sodium carbonate, because Sakai discloses that sodium carbonate and talc are “other” nucleating agents, while terminal-modified polyethylene terephthalate functions as an improved crystal nucleating agent that solves problems associated with other known nucleating agents. Appeal Br. 6. Appellant is correct that Sakai discloses that Sakai’s terminal- modified polybutylene terephthalate crystal nucleating agent solves problems associated with conventional crystal nucleating agents. Sakai ¶¶ 21, 23. Sakai nonetheless also discloses using the terminal-modified polybutylene terephthalate crystal nucleating agent in polyester resin compositions in combination with “other crystal nucleating agents,” such as sodium carbonate. Sakai ¶¶ 78, 79, 109. One of ordinary skill in the art Appeal 2021-000616 Application 15/117,558 9 seeking to enhance the extent or rate of crystallization of the polybutylene terephthalate random copolymer (polyester resin) present in Gopal’s composition reasonably would have been led from this disclosure to include Sakai’s terminal-modified polybutylene terephthalate crystal nucleating agent in Gopal’s composition in combination with sodium carbonate. Claim 17 does not exclude inclusion of both such elements in the recited composition, and, therefore, encompasses Gopal’s composition as so modified. Gillette Co. v. Energizer Holdings, Inc. 405 F.3d 1367, 1371– 1372 (Fed. Cir. 2005) (“The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open- ended.”); In re Baxter, 656 F.2d 679, 686–87 (CCPA 1981) (“As long as one of the monomers in the reaction is [the claimed] propylene, any other monomer may be present, because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”). The Appellant argues that Sakai “mentions sodium carbonate in passing among a long list of other nucleating agent[s] . . . [and] [t]here is no teaching for one skilled in the art to select sodium carbonate as the other nucleating agent especially in view of the fact that the other nucleating agent (talc) has already been included in the composition in a significant amount.” Appeal Br. 6. As discussed above, however, Sakai explicitly discloses the suitability of using sodium carbonate as an “other” crystal nucleating agent in polyester resin compositions. Sakais’ disclosure of numerous suitable “other crystal nucleating agents” in addition to sodium carbonate that could be used in combination with Sakai’s terminal-modified polybutylene terephthalate crystal nucleating agent in a polyester resin composition does not render any Appeal 2021-000616 Application 15/117,558 10 of the disclosed “other” crystal nucleating agent any less obvious. Rather, Sakai would have suggested the suitability of using any of the described “other” crystal nucleating agents to promote or enhance nucleation in a polyester resin composition—including the explicitly disclosed sodium carbonate. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant’s generic claims and [was] of a class of chemicals to be used for the same purpose as appellant’s additives”). The Appellant argues that “the particular combination of claimed elements results in unexpectedly beneficial properties” because the “Appellant has found that using sodium or potassium carbonate in the small amount as recited in the claims (0. 05 to 0.15 part by weight), together with bisphenol A diphenyl phosphate and talc, provides a polyalkylene terephthalate composition with excellent flame retardant properties while reducing the amount of organobromide flame retardants and antimony- containing flame retardant synergists,” as shown by the results presented in Table 6 of the Specification, particularly the results for examples CE1-1, CE1-2, CE2-1, and E1-1. Appeal Br. 6–7 (citing Spec. ¶¶ 2–5; Abstr.; Table 6. The Appellant argues that the “technical effects achieved by the claimed composition are surprising and not taught or suggested by Gopal or Sakai.” Appeal Br. 7. Appeal 2021-000616 Application 15/117,558 11 The burden of establishing unexpected results rests with the Appellant. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[T]he burden of showing unexpected results rests on he who asserts them.”). To meet this burden, the Appellant must provide objective evidence of results commensurate in scope with the claimed subject matter that would have been unexpected by one of ordinary skill in the art relative to the closest prior art. In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). The Appellant does not satisfy the Appellant’s burden of establishing unexpected results, for the following reasons. First, the experimental results the Appellant relies upon are not commensurate in scope with claim 17. For example, the compositions set forth in Table 6 include a single amount of only one of two types of polybutylene terephthalates (“Changchun PBT 1200D” or “Changchun PBT 1100X”), and a single amount of one type of brominated polystyrene (“SAYTEX 621”) or of poly(pentabromobenzylacrylate). Spec. ¶¶ 93, 99. None of the compositions includes potassium carbonate, and only a single amount of sodium carbonate is included in those compositions that contain sodium carbonate. Spec. ¶ 99. And only a single amount of talc is included Appeal 2021-000616 Application 15/117,558 12 in those compositions containing talc. Id. The relied-upon polyalkylene terephthalate compositions set forth in Table 6, therefore, are far more limited in scope than the compositions encompassed by claim 17. The Appellant does not provide an explanation grounded in objective evidence or technical reasoning for why the results generated from the limited compositions tested would extend to, or are representative of, the full scope of the compositions encompassed by claim 17. In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (explaining that “objective evidence of nonobviousness must be commensurate in scope with the claims,” meaning that the relied-upon evidence must provide a reasonable basis for concluding that untested embodiments encompassed by the claims would behave in the same manner as the tested embodiments). Second, it is unclear from the information presented in Table 6 whether the differences in flame retardance and flow (MVR) exhibited by the tested compositions is due to inclusion of sodium carbonate in the compositions in combination with bisphenol A diphenyl phosphate and talc, as the Appellant argues. While the compositions of experimental examples E1-1 (first), E1-1 (second), E2-1, E2-2, E2-3, and E2-4 each include sodium carbonate, bisphenol A diphenyl phosphate (BPADP) and talc, the compositions of comparative examples CE1-1 and CE2-1 do not include any of these three components, the composition of comparative example CE1-2 contains bisphenol A diphenyl phosphate (BPADP) but no sodium carbonate or talc, and the composition of comparative example CE2-1 contains both sodium carbonate and talc but no bisphenol A diphenyl phosphate (BPADP). Spec. ¶ 99. None of the comparative compositions, for example, contains both bisphenol A diphenyl phosphate (BPADP) and talc—but not sodium Appeal 2021-000616 Application 15/117,558 13 carbonate—so as to isolate the effect of including sodium carbonate on the properties of the compositions. Furthermore, the compositions of examples CE1-1, CE1-2, E1-1 (first), and E1-1 (second) include Changchun PBT (polybutylene terephthalate component) and poly(pentabromobenzylacrylate), while the compositions of examples CE2-1, CE2-2, E2-1, E2-2, E2-3, and E2-4 include both Changchun PBT 1200D and Changchun PBT 1100X (polybutylene terephthalate components) and SAYTEX 621 (brominated polystyrene component). Spec. ¶¶ 93, 99. The effect of including sodium carbonate in combination with bisphenol A diphenyl phosphate and talc, therefore, cannot be ascertained from the compositions tested because the cause-and-effect relationship between inclusion of these three components in combination and the flame retardance and flow (MVR) exhibited by the compositions is lost in a “welter of unfixed variables.” In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While we do not intend to slight the alleged improvements, we do not feel it an unreasonable burden on appellants to require comparative examples relied on for nonobviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables.”). Finally, although the Appellant argues that the relied-upon results set forth in Table 6 would have been unexpected, the Appellant does not direct us to any persuasive evidence or averment evincing that the results actually would have been unexpected by one of ordinary skill in the art at the time of filing. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, Appeal 2021-000616 Application 15/117,558 14 such as an affidavit or declaration under Rule 132 . . . . Instead, the only reference to unexpected results was a statement by Geisler’s counsel . . . that Geisler’s results were ‘surprising.’”). Therefore, considering the totality of the evidence relied upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness for claim 17. We, accordingly, sustain the Examiner’s rejection of claims 17 and 20 under 35 U.S.C. § 103. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 16, 17, 19, 20 103 Gopal, Sakai 1–8, 16, 17, 19, 20 9–15, 18 103 Gopal, Sakai, Bhat 9–15, 18 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation