SABIC GLOBAL TECHNOLOGIES B.V.

Patent Trials and Appeals Board

Mar 29, 2021

2020000003 (P.T.A.B. Mar. 29, 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.
15/023,083 03/18/2016 Maria del Mar DIEZ DIAZ 13PLAS0146-US-PCT 1006
23413 7590 03/29/2021
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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 MARIA DEL MAR DIEZ DIAZ,
JOSHUA ARIE VAN DEN BOGERD,
MATTEO TERRAGNI, and ANDREA GOBBETTO
_______________
Appeal 2020-000003
Application 15/023,083
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20 of Application 15/023,083. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6.

1 In our Decision, we refer to the Specification filed March 18, 2016
(“Spec.”) of Application 15/023,083 (“the ’083 Application”); the Final
Office Action dated November 19, 2018 (“Final Act.”); the Appeal Brief
filed April 15, 2019 (“Appeal Br.”); the Examiner’s Answer dated July 30,
2019 (“Ans.”); and the Reply Brief filed September 30, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies SABIC Global Technologies B.V. as
the real party in interest. Appeal Br. 2.
Appeal 2020-000003
Application 15/023,083

2
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’083 Application relates to dark colored polycarbonate
compositions that have reduced energy absorption when exposed to sunlight.
Spec. ¶ 1. The ’083 Application describes that these dark colored
polycarbonate compositions include an infrared reflective additive, which
results in the composition absorbing less infrared energy. Id. The ’083
Application describes that the dark colored polycarbonate compositions are
useful for forming exterior automotive parts, which can be exposed to
prolonged periods of direct sunlight. Id.
Claim 1 represents the ’083 Application’s claims and is reproduced
below from the Claims Appendix of the Appeal Brief.
1. A polycarbonate composition for an exterior automotive
layer, comprising:
a polycarbonate polymer;
an infrared reflective additive;
a heat stabilizer;
an anti-oxidant; and
a UV-additive;
a dye;
wherein the polycarbonate composition has an L-value of
20 or below when measured in the CIELAB color space under
DREOLL conditions, and has an Energy Absorption (AE) of
less than 90% when measured according to ISO 9050.
Appeal Br. 17 (Claims App.) (emphasis added).
Appeal 2020-000003
Application 15/023,083

3
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Loucka et al.
(“Loucka”) US 6,579,356 B2 June 17, 2003
Faber et al.
(“Faber”) US 2007/0225416 A1 Sept. 27, 2007
Walker US 2008/0138609 A1 June 12, 2008
Momose et al.
(“Momose”) US 7,727,418 B2 June 1, 2010
Peter et al.
(“Peter”)3 CN 1882656 B Jan. 26, 2011
REJECTIONS
The Examiner maintains the following rejections4:
1. Claims 1, 2, 4–14, 19, and 20 under 35 U.S.C. § 103 as
unpatentable over Faber, in view of Walker, and further in view of
Loucka. Final Act. 3.
2. Claim 3 under 35 U.S.C. § 103 as unpatentable over Faber, in view
of Walker and Loucka, and further in view of Momose. Final
Act. 7.
3. Claims 15–18 under 35 U.S.C. § 103 as unpatentable over Faber,
in view of Walker, Loucka, and further in view of Peter. Final
Act. 8.

3 The Examiner relies on a machine translation of Peter, to which Appellant
does not object. See Appeal Br. 14–15.
4 Because this application claims priority to an application filed after the
March 16, 2013 effective date of the America Invents Act, we refer to the
AIA version of the statutes.
Appeal 2020-000003
Application 15/023,083

4
DISCUSSION
Ground 1: Rejection of claims 1, 2, 4–14, 19, and 20 as obvious over
Faber, Walker, and Loucka
The Examiner rejects claims 1, 2, 4–14, 19, and 20 as unpatentable
under 35 U.S.C. § 103 over Faber, in view of Walker, and further in view of
Loucka. Final Act. 3.
Appellant argues claims 1, 2, 7, 9, and 11–14 as a group, and argues
claims 4–6, 8, 10, 19, and 20 separately. Appeal Br. 5–13. We select claim
1 as representative of the group. Claims 2, 7, 9, and 11–14 will stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We discuss claims 4–6, 8, 10, 19,
and 20 separately.
Claim 1
The Examiner finds that Faber teaches each component of the claimed
polycarbonate composition, except that Faber does not teach: (i) that the
infrared reflective additive is a complex inorganic colored pigment (CICP)
comprising a mixed metal oxide, or (ii) the amount of the infrared reflective
additive. Final Act. 3–4. The Examiner finds Walker teaches that the
infrared reflective pigment can be a CICP, which is present in amounts of no
more than about 5 wt% in the plastic composition. Id. at 4 (citing Walker
¶ 37). The Examiner determines that it would have been obvious to one of
ordinary skill in the art to use Walker’s CICP as the infrared reflective
additive in amounts of no more than 5 wt% in Faber’s composition “to
produce a desired color in the visible range and reflect a significant portion
of the IR radiation outside of the visible range, to keep objects cooler under
solar ra[dia]tion[,] and to exhibit much less heat build-up and much higher
infrared radiation reflectance” as taught by Walker. Final Act. 5.
Appeal 2020-000003
Application 15/023,083

5
The Examiner finds that the proposed modification of Faber’s
composition with Walker’s teachings would not have resulted in a CICP
comprising a mixed metal oxide such as chromium iron oxide or CICP
Brown 29. Final Act. 5. However, the Examiner finds that Loucka teaches
a brown CICP pigment comprising chromium oxide and iron oxide and that
the pigment includes CICP Brown 29. Id. (citing Loucka Abstract; col. 1, ll.
64–67; col. 2, ll. 21–24 and 30–33). The Examiner determines that it would
have been obvious to one of ordinary skill in the art to use Loucka’s brown
CICP pigment comprising chromium oxide and iron oxide as the CICP
pigment in Faber’s composition, as modified by Walker,
to provide CICP pigment with high pigment strength, good
weathering characteristics, high tinting strength, high
temperature resistance, small particle size, stab[ility] during
handling, stab[ility] to oxidation and high[] dispersibility[,] as
well as to provide strong and bright brown color[,] while not
degrading the integrating and uniformity of the film.
Final Act. 6–7. With respect to the claimed L-value and AE properties, the
Examiner reasons that because Faber’s composition, as modified by Walker
and Loucka, “is identical to that presently claimed,” Faber’s modified
composition would have exhibited the presently claimed property. Id. at 7.
Appellant argues that Faber’s concern with transparent compositions
having a low haze establishes a teaching away from the claimed dark
compositions having L-values of 20 or below. Appeal Br. 6.
Appellant’s argument lacks persuasive merit. Teaching away requires
that a reference “criticize, discredit, or otherwise discourage the solution
claimed” by Appellant. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Faber, however, discloses the use of infrared reflective additive along with
colorants, such as carbon blacks and Pigment Brown 24, in amounts of 0.01
Appeal 2020-000003
Application 15/023,083

6
to 10 wt%, which would have resulted in a composition that is dark and
transparent. See Ans. 10 (citing Faber ¶ 67)). We agree with the Examiner
that Faber does not teach away from dark compositions. Ans. 10.
Appellant contends that one of skill in the art would not have added
Walker’s infrared reflective CICP colorant to the transparent polycarbonate
composition of Faber because “Walker exemplifies that their compositions
comprising their reflective CICP colorant were ‘nominally black in color,’”
i.e., not transparent. Appeal Br. 7–8 (citing Walker ¶ 53). But Appellant
relies not on Walker’s full disclosure, rather on only one of two examples;
Walker’s other example discloses that the compositions were “nominally
gray in color.” Walker ¶ 57. “A reference must be considered for everything
that it teaches, not simply the described invention or a preferred embodiment.”
In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012).
Consideration of the entirety of Walker demonstrates that the reference is not
limited to a disclosure of a black, non-transparent composition. Appellant’s
argument is not supported by the record.
Appellant argues that there is no motivation to modify Faber with
Loucka’s colorant because such modification “would similarly change the
principle operation of Faber.” Appeal Br. 8. No further explanation of how
Faber’s principle of operation would be altered is provided. We find the
argument unpersuasive.
Appellant points out that claim 1 of the ’083 Application recites a
polycarbonate composition with a L-value of 20 or below, stating that “such
an L-value indicated a black colored composition.” Appeal Br. 8. Appellant
then contends that Loucka teaches away from black colored compositions
because Loucka’s inventive examples possess higher L-values of 60. Id.
(citing Loucka col. 9, ll. 22–32, Table 1). The argument is not persuasive
Appeal 2020-000003
Application 15/023,083

7
for at least three reasons. First, as mentioned above, teaching away requires
that a reference “criticize, discredit, or otherwise discourage the solution
claimed” by Appellant. See Fulton, 391 F.3d at 1201. We find no such
criticism, discrediting, or discouragement in Loucka. Second, contrary to
Appellant’s suggestion, the ’083 Application states that “the present
polycarbonate composition has a dark color,” not a black color. Appeal Br.
5–6 (citing Spec. ¶¶ 54, 94) (emphasis added). Thus, Appellant’s position is
unsupported by the Specification. Finally, as discussed in relation to Walker
above, Loucka’s disclosure is not limited to its examples, but must be
considered for all that it teaches. There is no teaching away to be found
here.
Appellant contends that the claimed L-value and energy absorption
are not inherent in the composition of Faber or in the combination of
references cited. Appeal Br. 6, 8–9. However, “[f]or chemical compounds,
the structure of the compound and its properties are inseparable
considerations in the obviousness determination.” Sanofi-Synthelabo v.
Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008); see also In re Papesch,
315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing.”). Where the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, 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. In re Best, 562 F.2d 1252, 1255 (Fed. Cir. 1977)
(“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, [or]
on ‘prima facie obviousness’ under 35 U.S.C. § 103, . . . the burden of proof
Appeal 2020-000003
Application 15/023,083

8
is the same.”). Appellant merely states that “the artisan would not have
expected the presently claimed ‘dark’ composition having an L-value of 20
or below to be capable of achieving the claimed Energy Absorption (AE) of
less than 90% as this feature is difficult to achieve.” Appeal Br. 9.
Appellant’s comparison of its invention to commercially available materials
in Table 2 of the Specification (rather than to the prior art cited) fails to meet
the burden of proof. This argument is unpersuasive.
Appellant’s unexpected results argument is also unavailing. See
Appeal Br. 7, 12. Appellant contends that evidence that the composition
possess superior and unexpected properties in one of a spectrum of common
properties can be sufficient to rebut a prima facie case of obviousness. Id. at
12. “[T]he burden of showing unexpected results rests on he who asserts
them.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). “It is well settled
‘that objective evidence or non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support.’” In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983) (quoting In re Tiffin, 448 F.2d 791
(CCPA 1971)). Claim 1 encompasses polycarbonate compositions much
broader in scope than the single inventive composition in the Specification
whose energy absorption is disclosed, thus the evidence offered is not
commensurate in scope with claim 1. Compare Appeal Br. 17 (Claims
App.), with Spec. ¶ 105 (Table 2). In addition, when used as evidence of
nonobviousness, the results must be shown to be unexpected compared to
the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991). Instead, Appellant only compares a single composition to
“commercially available materials.” See Spec. ¶ 105 (Table 2). Appellant
fails to meet its burden of showing unexpected results.
Appeal 2020-000003
Application 15/023,083

9
We sustain the rejection of claim 1, and, for the same reasons, the
rejection of claims 2, 7, 9, and 11–14 over Faber, Walker, and Loucka.
Claims 4–6 and 20
Appellant argues that Walker and Loucka fail to teach that a
composition comprising Walker’s complex or Loucka’s brown iron-
chromium pigment having an L-value of about 57 or more would have
resulted in a composition having an L-value of 20 or below and an AE of
less than 90% (Appeal Br. 11).
We are not persuaded by these arguments because each improperly
attacks the references individually instead of addressing what the combined
teachings of the applied prior art would have suggested. See In re Keller,
642 F.2d 413, 426 (CCPA 1981). As set forth above, because the combined
teachings of Faber, Loucka, and Walker render obvious the claimed
compound, the combined teachings also render obvious the properties of the
claimed compound. See Papesch, 315 F.2d at 391.
We sustain the rejection of claims 4–6 and 20 over Faber, Walker, and
Loucka.
Claim 10
Appellant contends that Faber fails to provide any motivation for one
of skill in the art to specifically select the claimed components from “a
laundry list of potential thermal stabilizers . . . and a laundry list of potential
UV absorbing additives.” Appeal Br. 11 (citing Faber ¶¶ 57, 60).
That a reference “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 taught by
the prior art.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Appeal 2020-000003
Application 15/023,083

10
Cir. 1989)); see also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art teaching that
“hydrated zeolites will work” in detergent formulations, even though “the
inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the disclosure 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”). In this case, Faber discloses thermal
stabilizers and UV absorbing additives that are presently claimed. Faber
¶¶ 57, 60. Each of the claimed components are disclosed or suggested in
Faber as useful for forming the polycarbonate composition. Id.
We sustain the rejection of claim 10 over Faber, Walker, and Loucka.
Claims 8 and 19
Appellant argues that claims 8 and 19 further limit the amounts of the
respective components of the infrared reflective additive and the dye, but
Faber “discloses extremely broad ranges of amounts that these components
could be without offering any indication that the components in these
specific amounts could result in a composition having an L-value of 20 or
below and an Energy Absorption (AE) of less than 90%.” Appeal Br. 11–
12.
Appellant’s argument lacks persuasive merit by attacking Faber
individually when the rejection is based on the combined teachings of Faber,
Walker, and Loucka. See Keller, 642 F.2d at 426. The Examiner relies
upon Walker for teaching the claimed amount of infrared reflective additive.
The Examiner finds that Faber teaches an amount of dye, which overlaps the
Appeal 2020-000003
Application 15/023,083

11
claimed range. Final Act. 4. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“A prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art.”). Appellant fails to overcome the obviousness rejection. See Ans. 17–
18, 25–27. As set forth above, because the combined teachings of Faber,
Loucka, and Walker render obvious the claimed compound, the combined
teachings also render obvious the properties of the claimed compound. See
Papesch, 315 F.2d at 391.
We sustain the rejection of claims 8 and 19 over Faber, Walker, and
Loucka.
Ground 2: Rejection of claim 3 as obvious over Faber, Walker,
Loucka, and Momose
Claim 3 depends from claim 1, and recites “wherein the dye
comprises Solvent Green 3 and Solvent Red 135.” Appeal Br. 17 (Claims
App.). The Examiner rejects claim 3 as unpatentable under 35 U.S.C. § 103
over Faber in view of Walker and Loucka, and further in view of Momose,
on which the Examiner relies for teaching a dye comprising Solvent Green 3
and Solvent Red 135. Final Act. 7.
Appellant repeats its argument that Faber teaches away from dark
composition having L-values of less than or equal to 20. Appeal Br. 14.
However, as set forth above, Faber’s modified composition would have
resulted in a composition that is dark and transparent, thus Faber does not
teach away.
Appellant also argues that one of skill in the art would not have
modified Faber, which is directed to polycarbonate compositions having a
high transmission of visible light, by incorporating Momose’s dye because it
Appeal 2020-000003
Application 15/023,083

12
would have rendered Faber’s composition obsolete for its intended purpose.
Appeal Br. 14. We understand Appellant’s argument to be that
incorporating Momose into Faber would result in a composition having “less
than or equal to 15% transmission of visible light.” See id. at 8 (citing
Momose 1:55–60). But “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference.” Keller, 642 F.2d at 425. “Combining
the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Use of
the two dyes as disclosed by Momose in Faber involves the simple
substitution of one known element for another, and does not lead to
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
We sustain the rejection of claim 3 as obvious over Faber, Walker,
Loucka, and Momose.
Ground 3: Rejection of claims 15–18 as obvious over Faber, Walker,
Loucka, and Peter
The Examiner rejects claims 15–18 as unpatentable under 35 U.S.C.
§ 103 over Faber in view of Walker and Loucka, and further in view of
Peter. Final Act. 8.
Appellant argues that these claims are patentable because Peter fails to
cure the deficiencies of Faber, Walker, and Loucka. Appeal Br. 14. Having
found no deficiencies in Faber, Walker, and Loucka, we sustain the rejection
of claims 15–18 as obvious over Faber, Walker, Loucka, and Peter.
Appeal 2020-000003
Application 15/023,083

13
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 2, 4–14,
19, 20
103 Faber, Walker,
Loucka
1, 2, 4–14, 19,
20

3 103 Faber, Walker,
Loucka, Momose
3
15–18 103 Faber, Walker,
Loucka, Peter
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). See
37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED