SABIC Global Technologies B.V.

Patent Trials and Appeals Board

Dec 16, 2021

2021000616 (P.T.A.B. Dec. 16, 2021)

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.
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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.
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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.
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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
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“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
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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
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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.”).
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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
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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
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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.
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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
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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
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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,
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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