Tong Wu et al.

Patent Trials and Appeals BoardAug 5, 2019

14295551 - (D) (P.T.A.B. Aug. 5, 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. 14/295,551 06/04/2014 Tong Wu 092474.022822 (79U3) 1352 52674 7590 08/05/2019 BakerHostetler 1170 Peachtree Street NE Suite 2400 Atlanta, GA 30309-7676 EXAMINER CAI, WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 08/05/2019 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TONG WU, MINGCHENG GUO, JIWEN WANG, YAQIN ZHANG, and YUXIAN AN ____________________ Appeal 2018-008377 Application 14/295,551 Technology Center 1700 ____________________ Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL1 1 The record on appeal includes the Specification filed June 4, 2014 (“Spec.”), the Examiner’s Non-Final Action of May 22, 2017 (“Non-Final Act.”), the Examiner’s Final Office Action of September 15, 2017 (“Final Act.”), Appellants’ Appeal Brief of March 6, 2018 (“Appeal Br.”), the Examiner’s Answer of June 15, 2018 (“Ans.”), and Appellants’ Reply Brief of August 15, 2018 (“Reply Br.”). Appeal 2018-008377 Application 14/295,551 2 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 7, 8, 11–14, 16–22, 27–34, and 37. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The Specification states that the invention provides “ultrahigh performance thermoplastic polymer compositions which integrated thermally conductivity performance with laser direct structuring function, thus greatly expanding the scope of laser direct structuring technology.” Spec. ¶ 4. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A blended thermoplastic composition comprising: a. from about 30 wt% to about 90 wt% of a polymer component, wherein the polymer component comprises a plurality of polymers wherein at least one of the plurality of polymers is a polyamide66 or comprises a plurality of polyamide polymers; b. from greater than 20 wt% to about 69.95 wt% of a thermally conductive filler; and c. from greater than about 0.05 wt% to less than about 5 wt% of a laser direct structuring additive; wherein the combined weight percent value of all components does not exceed about 100 wt%; wherein all weight percent values are based on the total weight of the composition; wherein a molded sample of the blended thermoplastic composition has a through plane thermal conductivity of at least 2 “SABIC Global Technologies B.V.” is identified in the Appeal Brief as the real party in interest. Appeal Br. 1. Appeal 2018-008377 Application 14/295,551 3 about 0.40 W/mK when determined in accordance with ASTM E1461; and wherein a molded sample of the blended thermoplastic composition exhibits a plating index value of at least about 0.5. Claims Appendix.3 REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: I’Abee Stoppelmann US 2012/0217434 A1 US 2014/0066560 A1 Aug. 30, 2012 Mar. 6, 2014 REJECTION Claims 1, 2, 7, 8, 11–14, 16–22, 27–34, and 37 are rejected under 35 U.S.C. § 103 as unpatentable over Stoppelmann and I’Abee. Final Act. 2. OPINION We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After having considered the evidence presented in this Appeal and each of Appellants’ contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejection for the reasons expressed in 3 Filed with Supplemental Appeal Brief of May 7, 2018. Appeal 2018-008377 Application 14/295,551 4 the Final Office Action and the Answer. We add the following primarily for emphasis. In rejecting claim 14, the Examiner finds that Stoppelmann describes a composition having the recited components including “0-20 wt% of a filler such as aluminum oxide, boron nitride, or aluminum nitride.” Non-Final Act. 4 (citing Stoppelmann ¶¶ 131–133). The Examiner also finds that I’Abee describes a composition that includes thermally conductive fillers “to reduce fire hazard” and determines that a skilled artisan would have combined the references to arrive at the recited composition for the advantage of fire hazard reduction. Id. (citing various parts of I’Abee); see also Ans. 3 (repeating the findings with regard to Stoppelmann and I’Abee). On appeal, Appellants first argue that the Examiner reversibly erred because Stoppelmann does not teach or suggest a composition having “greater than 20 wt% to about 69.95 wt% of a thermally conductive filler.” Appeal Br. 7. Appellants argue that although Stoppelmann describes a composition having “0-20% by weight of further fibrous fillers, which are . . . not based on glass and are selected from the group: carbon fibres, graphite fibres, aramid fibres, nanotubes,” Stoppelmann does not describe these fillers as thermally conductive fillers. Id. (citing Stoppelmann ¶ 19). The record before us shows that the Examiner finds Stoppelmann undisputedly describes a composition having “0-20 wt% of a filler such as aluminum oxide, boron nitride, or aluminum nitride” (Non-Final Act. 4 (citing Stoppelmann ¶¶ 131–133)) and that I’Abee provides that aluminum 4 Appellants do not present separate arguments for claims 2, 7, 8, 11–14, 16– 22, 27–34, and 37 and those claims, therefore, stand or fall with claim 1. See Appeal Br. 5–10; see also 37 C.F.R. § 41.37(c)(1)(iv)(2013). Appeal 2018-008377 Application 14/295,551 5 nitride as well as graphite, carbon fiber, and carbon nanotubes are thermally conductive fillers (I’Abee ¶ 83). Appellants’ argument attacks the references individually, rather than considering what the combined references of Stoppelmann and I’Abee would have suggested to the person of ordinary skill in the art — which forms the basis of the Examiner’s rejection. See Final Act. 3 (pointing out that the I’Abee teaches the recited thermally conductive filler); see also Non-Final Act. 4 (explaining that the rejection is based on the combined teachings of the prior art). “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellants’ argument does not dispute Stoppelmann’s teachings, does not address the Examiner’s finding with regard to I’Abee, and does not identify reversible error in the Examiner’s findings in support of the rejection. Appellants next argue that “[t]here is no guidance between Stoppelmann and I’Abee” to make the selection of recited components to arrive at the composition of claim 1. Appeal Br. 8. Appellants, however, do not address the Examiner’s rationale that, based on I’Abee’s teaching of using thermally conductive fillers to reduce fire hazard, a skilled artisan would have combined I’Abee with Stoppelmann for this advantage. Compare Appeal Br. 8, with Final Act. 4–5; see also Ans. 3 (stating the same rationale). Given that the Examiner’s legal conclusion of obviousness is supported by “articulated reasoning with some rational underpinning” consistent with the prior art teachings, we are not persuaded that reversible Appeal 2018-008377 Application 14/295,551 6 error has been identified here. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellants also argue that the Examiner reversibly erred in finding that the prior art composition would have exhibited the recited properties. Appeal Br. 65, 8–9. “The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, cannot impart patentability to claims to the known composition.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The recited composition is not structurally distinguished from those in the prior art. The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Where, as here, the Examiner establishes a reasonable belief that the property or characteristic recited in the claims would have been inherent to the composition, the burden of proof shifts to Appellants to show that this characteristic or property is not possessed by the prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants next argue that the unpredictability of the art is evidenced by Stoppelmann. Appeal Br. 9 (citing Stoppelmann ¶ 143). The cited paragraph 143 of Stoppelmann states, in its entirety: If an LDS additive, such as copper chromite (black spinel), is then added to these moulding compositions in a concentration of 4%, the mechanical properties of all moulding compositions considered thus worsen, sometimes drastically. However, mechanical properties of the moulding compositions (B1 and 5 Although under the heading “Claim construction,” Appellants’ sole argument in part “B” of the Appeal Brief is that the Examiner “did not satisfy this initial burden” “to show that achieving the recited property would have been obvious to a person of ordinary skill in the art.” Appeal Br. 5–6. Appeal 2018-008377 Application 14/295,551 7 B2) reinforced with the S-glass fibre and with flat E-glass fibres decrease less severely than the moulding composition based on conventional E-glass (VB1). Appellants do not explain why this paragraph of Stoppelmann shows that the art is unpredictable. In any case, “[o]bviousness does not require absolute predictability of success.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Appellants lastly argue that the Examiner “misconstrued the [S]pecification data” showing unexpected results. Appeal Br. 9 (emphasis omitted). Appellants, however, do not address the Examiner’s finding that the data shown in the Specification is not reasonably commensurate in scope with the claim. Compare Ans. 4–5, with Reply Br. 4. More specifically, the Examiner points out that the inventive data only contains 30 parts of a few specific examples of a thermally conductive filler and 3 parts of one specific laser direct structuring additive, which does not encompass the entire scope of the claim requiring “from greater than 20 wt% to about 69.95 wt% of a thermally conductive filler” and “from greater than about 0.05 wt% to less than about 5 wt% of a laser direct structuring additive.” Ans. 5. We are not persuaded that the Examiner reversibly erred in determining that the data in support of Appellants’ unexpected results argument is inadequate. The evidence must show that the unexpected results extend throughout the claimed subject matter but do not extend into the prior art teachings that fall outside of the claimed subject matter, i.e., that the claimed ranges are critical for obtaining the unexpected result. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the Appeal 2018-008377 Application 14/295,551 8 results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.”). DECISION The Examiner’s decision is affirmed. 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