2020000501 (P.T.A.B. Feb. 8, 2021)

BASF SE

Patent Trials and Appeals BoardFeb 8, 2021

2020000501 (P.T.A.B. Feb. 8, 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. 14/780,569 09/28/2015 Zhenguo Liu 29827/I74833 6637 4743 7590 02/08/2021 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER HOCK, ELLEN SUZANNE ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 02/08/2021 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ZHENGUO LIU, DAI WATANABE, HUI WANG, and SIMON KNIESEL ____________ Appeal 2020-000501 Application 14/780,569 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of our Decision entered November 10, 2020 (“Decision”) affirming the Examiner’s rejection of claims 9–12 under 35 U.S.C. § 103 and designating our affirmance as including new grounds of rejection.1 Request for Rehearing filed January 8, 2021 (“Req. Reh’g”). We grant Appellant’s request for reasons that follow. 1 In our Decision, we affirmed the Examiner’s rejection of claims 9–12 under 35 U.S.C. § 103(a) as unpatentable over Aluplast (EP 2431152 A2, published March 21, 2012) in view of Uno (US 6,660,789 B2, issued December 9, 2003) and Wust et al. (US 2010/0319843 A1, published December 23, 2010), and we designated our affirmance as including new grounds of rejection. We reversed the Examiner’s rejection of claims 6–8 Appeal 2020-000501 Application 14/780,569 2 ANALYSIS An appellant may seek review of a new ground of rejection entered by the Board in a Decision on Appeal in a request for rehearing, and in so doing, the appellant may present new arguments in response to the new ground of rejection. 37 C.F.R. § 41.50(b)(2); 37 C.F.R. § 41.52(a)(3). In the present case, Appellant’s request for rehearing asks us to reconsider our new ground of rejection against claims 9–12 under 35 U.S.C. § 103. We grant Appellant’s request for reasons that follow. As we indicate in our Decision, Aluplast discloses producing an article by co-extrusion molding a first fiber-reinforced plastic material, such as polyvinyl chloride, and a second fiber-reinforced plastic material, such as polybutylene terephthalate, polyethylene terephthalate, or mixtures thereof. Decision 5 (citing Aluplast p. 1, ll. 10–15, p. 4, ll. 128–133, p. 8, ll. 312–313, 320–321; Abst.). As we also indicate in our Decision, Uno discloses a thermoplastic resin composition having excellent alkali resistance used to form an article by extrusion molding. Decision 6 (Uno col. 2, ll. 5–13; col. 7, ll. 18–22). Uno discloses that the resin composition comprises (A) a mixture of a polybutylene terephthalate resin and a polybutylene terephthalate/isophthalate copolymer, (B) a polycarbonate resin, (C) an elastomer, and (D) a fibrous reinforcing material. Decision 6 (citing Uno col. 2, ll. 5–13, 38–55). In the Final Action, the Examiner determines that “it would have been obvious to one of ordinary skill in the art . . . to utilize the blend of polybutylene terephthalate and (polyalkylene under 35 U.S.C. § 103(a) as unpatentable over Aluplast in view of Uno and Wust. Appeal 2020-000501 Application 14/780,569 3 isophthalate)-co-(polyalkylene terephthalate) of Uno as the reinforcing composition of Aluplast motivated by the expectation of forming an article that has enhanced alkali resistance.” Final Act. 3. As we indicate in our Decision, however, Uno’s disclosures as a whole would have suggested to one of ordinary skill in the art that satisfactory alkali resistance is only achieved if all four components of Uno’s thermoplastic resin composition are included in the composition. Decision 10 (citing Uno col. 2, ll. 5–13, 38–55). Our Decision also indicates, however, that claim 9 does not exclude the polycarbonate resin and elastomer disclosed in Uno because although the “consisting of” transition recited in the body of claim 9 requires inclusion of only the explicitly recited materials in composition (a), the “comprising” transition that immediately follows the preamble of claim 9 opens the claim to inclusion of unrecited materials in the claimed article. Decision 7–9. Thus, as we indicate in our Decision, claim 9 does not exclude unrecited materials from being included in the claimed article in combination with composition (a) and one or more additional thermoplastic materials (b) at least one of which is polyvinyl chloride. Decision 9. Nonetheless, upon reconsideration, we are persuaded by Appellant’s argument that one of ordinary skill in the art would not have had a reasonable expectation of success in improving the alkaline resistance of Aluplast’s composition without including both Uno’s polycarbonate resin and Uno’s elastomer in the composition, which are excluded from composition (a) recited in claim 9. Req. Reh’g 2. More specifically, although claim 9 does not exclude the polycarbonate resin and elastomer components of Uno’s thermoplastic resin Appeal 2020-000501 Application 14/780,569 4 composition, these components are excluded from component (a) of claim 9 due to the recitation in claim 9 that component (a) is a “composition consisting of” the recited ingredients. Accordingly, using Uno’s thermoplastic resin composition that includes (A) a mixture of a polybutylene terephthalate resin and a polybutylene terephthalate/ isophthalate copolymer, (B) a polycarbonate resin, (C) an elastomer, and (D) a fibrous reinforcing material as Aluplast’s second plastic material is excluded by claim 9. Furthermore, one of ordinary skill in the art would not have had a reasonable expectation that using only Uno’s mixture of a polybutylene terephthalate resin and a polybutylene terephthalate/isophthalate copolymer (component A) as Aluplast’s second plastic material would yield a resin composition having enhanced alkali resistance. As discussed above, Uno’s disclosures as a whole would have suggested to one of ordinary skill in the art that satisfactory alkali resistance is only achieved if all four components of Uno’s thermoplastic resin composition are included in the composition. Moreover, claim 9 recites that “the shaped article has a composite structure between (i) the composition and (ii) the one or more additional thermoplastic materials.” As Appellant argues in the Request for Rehearing, the plain meaning of “composite” requires components (a) (the composition) and (b) (the one or more additional thermoplastic materials) to be separate, non-blended materials. Req. Reh’g 5 (citing “Composite: made up of disparate or separate parts or elements; compound.” Random House Webster’s College Dictionary, Random House (New York) (1991)). We find no disclosure in Aluplast or Uno that teaches or would have suggested using Uno’s mixture of a polybutylene terephthalate resin and a Appeal 2020-000501 Application 14/780,569 5 polybutylene terephthalate/isophthalate copolymer (component A) as Aluplast’s second plastic material, and co-extruding this material with polyvinyl chloride as disclosed in Aluplast in combination with Uno’s polycarbonate resin (component B) and elastomer (component C). Nor do we find any disclosure in Aluplast or Uno that teaches or would have suggested that such a process would produce a composite article as recited in claim 9. We, accordingly, withdraw our new ground of rejection against claims 9–12 under 35 U.S.C. § 103, and reverse the Examiner’s rejection of claims 9–12 under 35 U.S.C. § 103.2 Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted 9–12 103 Aluplast, Uno, Wust 9–12 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 6–12 103 Aluplast, Uno, Wust 6–12 GRANTED; 37 C.F.R. § 41.50(b) 2 Claim 11 depends from independent claim 6. Our inclusion of claim 11 in the new ground of rejection, and our omission of claim 11 from the claims reversed in our Decision (claims 6–8) was an inadvertent error.