Shan, Wei

Patent Trials and Appeals Board

Nov 8, 2019

14378145 - (D) (P.T.A.B. Nov. 8, 2019)

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.
14/378,145 09/30/2014 Wei Shan 12PLAS0067-US-PCT 3451
43249 7590 11/08/2019
CANTOR COLBURN LLP - SABIC (NORYL)
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
CHAU, LINDA N
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
11/08/2019 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 WEI SHAN
____________

Appeal 2019-001360
Application 14/378,145
Technology Center 1700
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1 and 3–17. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to polymer compositions (see,

1 Our Decision refers to the Specification filed Aug. 12, 2014 (“Spec.”), the
Final Office Action dated Jan. 25, 2018 (“Final Act.”), the Appeal Brief
dated June 26, 2018 (“Appeal Br.”), the Examiner’s Answer dated Oct. 5,
2018 (“Ans.”), and the Reply Brief dated Dec. 5, 2018 (“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.
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e.g., claims 1 and 17). According to the Specification, polyvinyl chloride
(PVC) has been used to make cable insulation and jacketing materials, but
recent changes in health and environmental policies and a sharper focus on
sustainability have forced a shift toward the use of non-PVC jacketing and
insulating materials. Spec. ¶ 1. The Specification states that new materials
should maintain the favorable appearance, texture, and performance qualities
of PVC, but meet regional standards. Id. One such standard, the standard
for the European Community, has a stringent requirement for full cable
smoke density. Id. To address these issues, the Specification discloses a
polymer composition including 10–40 weight percent of a poly(phenylene
ether)-polysiloxane copolymer, 5–25 weight percent of a hydrogenated
block copolymer of an alkenyl aromatic compound and a conjugated diene,
0–10 weight percent of a polybutene, 30–60 weight percent of magnesium
hydroxide, 0–10 weight percent of an anti-UV agent, 1–40 weight percent of
a copolymer of ethylene and a C3-C12 alpha-olefin, and 0–30 weight percent
of a polyolefin homopolymer. Id. ¶ 3.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A polymer composition, comprising:
(a) 10 to 40 weight percent of a poly(phenylene ether)-
polysiloxane copolymer; wherein the poly(phenylene ether)-
polysiloxane copolymer is a mixture of a poly(phenylene ether)
homopolymer and a poly(phenylene ether)-poly(phenylene ether)-
polysiloxane block copolymer;
(b) 5 to 25 weight percent of a hydrogenated block copolymer
of an alkenyl aromatic compound and a conjugated diene;
(c) 0 to 10 weight percent of a polybutene;
(d) 30 to 60 weight percent of magnesium hydroxide;
(e) 0 to 10 weight percent of an anti-UV agent;
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(f) 1 to 40 weight percent of a copolymer of ethylene and a C3-
C12 alpha-olefin; and
(g) 0 to 30 weight percent of a polyolefin homopolymer.

Appeal Br. 8 (Claims App’x.).

REJECTIONS ON APPEAL
I. Claims 1, 3, 4, 8, and 13–17 as being unpatentable under
35 U.S.C. § 103(a) over Guo;3
II. Claims 5 and 9–12 as being unpatentable under
35 U.S.C. § 103(a) over Guo in view of Klei;4
III. Claim 6 as being unpatentable under 35 U.S.C. § 103(a)
over Guo in view of Kim;5 and
IV. Claim 7 as being unpatentable under 35 U.S.C. § 103(a)
over Guo in view of Klei and Kim.

DISCUSSION
Rejection I
Claims 1, 3, 4, 8, and 13–17 are rejected as being unpatentable under
35 U.S.C. § 103(a) over Guo.
Appellant argues claims 1, 3, 4, 8, 16, and 17 as a first group and
claims 13–15 as a second group. Appeal Br. 4–6. We select claim 1 as

3 Guo et al., US 2010/0139944 A1, published June 10, 2010 (“Guo”).
4 Klei et al., US 2008/0206449 A1, published Aug. 28, 2008 (“Klei”).
5 Nam et al., WO 2011/102581 A1, published Aug. 25, 2011. The Examiner
and Appellant refer to this reference as “Kim.” Final Act. 6; Appeal Br. 3–
4, 6. We note that the first named inventor for WO 2011/102581 A1 is Gi-
Joon Nam. WO 2011/102581 at [75]. However, to avoid confusion, we
continue the practice set forth in this proceeding of referring to WO
2011/102581 as “Kim.”
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representative of the first group and claim 13 as representative of the second
group. Claims 3, 4, 8, 16, and 17 stand or fall with claim 1 and claims 14
and 15 stand or fall with claim 13. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1, 3, 4, 8, 16, and 17
The Examiner finds Guo discloses a polymer composition comprising,
among other things, a poly(phenyl ether)-polysiloxane copolymer, a
hydrogenated block copolymer of an alkenyl aromatic compound and a
conjugated diene, polybutene, magnesium hydroxide, an anti-UV agent, a
copolymer of ethylene and a C3-C12 alpha-olefin, and a polyolefin
homopolymer. Final Act. 3. The Examiner finds Guo does not disclose all
of the claimed compositional ranges, but concludes it would have been
obvious to have selected the claimed ranges from the overlapping portions
Guo discloses, finding that overlapping ranges present a prima facie case of
obviousness. Id.
Appellant’s arguments for claim 1 focus on the limitation of “30 to 60
weight percent of magnesium hydroxide.” Appeal Br. 4–5. Specifically,
Appellant asserts that Guo discloses a polymer composition, but that the
composition includes 2 to 25 weight percent of flame retardant (e.g.,
magnesium hydroxide). Id. at 4 (citing Guo ¶¶ 8, 50, 58, 64). Appellant
further argues that Guo’s examples include magnesium hydroxide as a flame
retardant only in amounts of 20 and 25 weight percent. Id. at 5.
Appellant acknowledges that Guo teaches that the “specific amount of
the flame retardant can depend on factors including the flame retardant type,
the total polyolefin content of the composition, and the intended use of the
composition” and that when “the flame retardant consists primarily of metal
hydroxide, the total flame retardant amount can be 20 to 40 weight percent,
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specifically 25 to 35 weight percent” in paragraph 64. Id. at 4. Appellant,
however, contends the latter sentence is a typographical error because it is
inconsistent with Guo’s other teachings. Id. at 5; Reply Br. 2.
Appellant’s arguments are unpersuasive because they do not provide
sufficient reasoning to explain why Guo’s disclosure of 20–40 weight
percent of metal hydroxide as a flame retardant in paragraph 64 is a
typographical error. As Appellant acknowledges (Appeal Br. 4), Guo
teaches that the specific amount of flame retardant depends on various
factors, such as the type of flame retardant, total polyolefin content, and the
intended use of the composition. Guo ¶ 64. This suggests that the weight
percent of flame retardant can vary in light of a given situation. Indeed, Guo
discloses various compositional ranges for various flame retardants,
including a total flame retardant amount of 20 to 40 weight percent when the
flame retardant is primarily metal hydroxide. Id. As a result, Appellant’s
arguments have not identified a reversible error in the Examiner’s rejection
of claim 1.
Claims 13–15
Claim 13 recites “[a]n extrusion coated article comprising the
composition of claim 1.” Appeal Br. 11 (Claims App’x.). The Examiner
finds Guo discloses an extrusion-coated article. Final Act. 4 (citing Guo ¶¶
77, 109).
Appellant argues that Guo’s examples in Table 9 would have
indicated that magnesium hydroxide is a poor choice for a flame retardant
for an extrusion-coated article. Appeal Br. 5. Appellant contends that Guo’s
Tables 6 and 8 include many examples that pass the flame out time for
extruded wires, but the flame retardant for all of these examples includes
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phosphorous and is present in lower amounts, whereas the examples of
Table 9 include magnesium hydroxide but fail the flame out time test for an
extruded wire. Id.
“[A]ppellant’s arguments fail from the outset because . . . they are not
based on limitations appearing in the claims.” In re Self, 671 F.2d 1344,
1348 (CCPA 1982). Claims 13–15 do not recite a flame retardancy for the
claimed articles or process.
Nevertheless, we consider the merits of Appellant’s arguments for
completeness. As the Examiner explains, Guo’s examples in Table 9
include magnesium hydroxide contents of 20 and 25 weight percent, but this
does not reflect the full range of magnesium hydroxide content (i.e., 20–40
wt%) suggested in paragraph 64. Ans. 6–7. Appellant does not direct us to
evidence that a magnesium hydroxide content greater than 25 weight percent
(e.g., as much as 40 weight percent) would fail the flame out test or
otherwise lack flame retardancy for an extruded coating. In contrast, the
Examiner finds Guo discloses an extrusion-coated article. Final Act. 4.
Indeed, Guo teaches that its composition is useful for an extruded article.
Guo ¶¶ 5, 76. Guo further teaches that its composition has flame retardancy
when used to coat a single copper wire, specifically an average flame out
time of less than or equal to 20 seconds.6 Id. ¶ 77. Therefore, Guo’s
disclosure supports the Examiner’s findings.
Appellant also contends that one of ordinary skill in the art would not
have expected an increase in the amount of magnesium hydroxide to be
successful in producing an extruded article with a desired flame resistance

6 The testing standard and specimen type disclosed in paragraph 77 is the
same as that taught for the examples, as noted in paragraph 129.
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because Guo’s examples show an increase from 20 to 25 weight percent
magnesium hydroxide made little difference in flame retardance for an
extruded wire. Appeal Br. 5. Appellant also asserts that such an increase
would have increased the amount of solid particles in a thermoplastic, which
can increase polymer viscosity that, in turn, leads to issues with extruding
the thermoplastic and its ability to flow evenly throughout an extruded
article. Id. at 5–6.
These arguments are also not persuasive of reversible error because
they are unsupported with evidence. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”). Appellant does not cite evidence that increasing the content of
magnesium hydroxide (e.g., as high as 40 weight percent, as Guo teaches)
would have made little difference in flame retardance or would have
increased the viscosity of the polymer composition to the point that it could
not have been successfully used for an extruded article. As discussed above,
Guo suggests that its composition can be used for an extruded article, and
that the extruded article has flame retardancy. Guo ¶¶ 5, 76, 77. As a result,
a preponderance of the evidence in the record supports the Examiner’s
rejection of claims 13–15.
For these reasons, and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103(a) rejection of claims 1, 3, 4, 8, and 13–17
over Guo.

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Rejection II–IV
Claims 5 and 9–12 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Guo in view of Klei.
Claim 6 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Guo in view of Kim.
Claim 7 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Guo in view of Klei and Kim.
Appellant argues the additional references cited in the rejections of
claims 5–7 and 9–12 do not overcome the issues argued above with regard to
the rejection of claims 1, 3, 4, 8, and 13–17 over Guo. Appeal Br. 6. For the
reasons set forth above, Appellant does not persuade us of any deficiency in
the rejection of claim 1. Therefore, we sustain the Examiner’s § 103(a)
rejections of claims 5–7 and 9–12.

CONCLUSION
The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1, 3, 4, 8,
13–17 103(a)
Guo 1, 3, 4, 8,
13–17

5, 9–12 103(a) Guo, Klei 5, 9–12
6 103(a) Guo, Kim 6
7 103(a) Guo, Klei, Kim 7
Overall
Outcome 103(a)
1, 3–17

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED