Cecile Gibon et al.

Patent Trials and Appeals Board

Oct 1, 2020

13324296 - (D) (P.T.A.B. Oct. 1, 2020)

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.
13/324,296 12/13/2011 Cecile Gibon 074008-1568-286358 3382
123223 7590 10/01/2020
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
DIGGS, TANISHA
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CECILE GIBON, XIN YANG, CHRISTOF KUJAT,
MARTIN WEBER, LASZLO SZARVAS, DANIEL KLEIN,
PETRA POETSCHKE, and BEATE KRAUSE
__________

Appeal 2019-002789
Application 13/324,296
Technology Center 1700
___________

Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an
Examiner’s decision finally rejecting claims 18, 26, and 29–38. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BASF SE as the real party in interest.
Appeal Brief, filed October 10, 2018 (“Appeal Br.”), 2.
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CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal generally relates to a
thermoplastic molding composition including a polyamide, copolyamide, or
polymer blend comprising polyamide; carbon black, graphite, or a mixture
thereof, and ionic liquids. Specification, filed December 13, 2011 (“Spec.”),
Abstract.
Claims 26 and 35—reproduced below—are the sole independent
claims on appeal.
26. A thermoplastic molding composition comprising, based
on the thermoplastic molding composition,
a) as component A, at least one polyamide or copolyamide
selected from the group consisting of polyamide 66, polyamide
610, polyamide 6, nylon-6/66 copolyamides having from 5 to
95% by weight caprolactam units, and combinations thereof,
b) as component B, from 4 to 8% by weight of carbon black
or graphite, or a mixture thereof,
c) as component C, from 0.3 to 1.2% by weight of ionic liquids;
wherein the cation of the ionic liquid in component C isselected
[sic] from the group consisting of quaternary ammonium
cations, phosphonium cations, imidazolium cations, H-
pyrazolium cations, pyridazinium ions, pyrimidinium ions,
pyrazinium ions, pyrolidinium cations, guanidinium cations, 5-
to at least 6-membered cations which comprise at least one
phosphorus or sulfur atom, the 1,8-diazabicyclo[5.4.0]undec-7-
enium cation and the l ,8-diazabicyclo[4.3.0]non-5-inium
cation, and oligo- and polymers which comprise these cations;
and
wherein the anion in the ionic liquid in component C is selected
from the group consisting of halide, optionally substituted C 1-
4-carboxylate, phosphate, C 1-4-alkyl phosphate, Di-C 1-4-
alkyl phosphate, C 1-4-alkyl sulfate, C 1-4-alkylsulfonate,
hydrogensulfate, triflimide, tetrafluoroborate, triflate, and
mixtures thereof.
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35. A thermoplastic molding composition comprising, based
on the thermoplastic molding composition,
a) as component A, polyamide 6,
b) as component B, 4 to 8% by weight of conductive carbon
black,
c) as component C, from 0.3 to 1.2% by weight of ionic
liquids selected from the group consisting of 1-ethyl-3-methyl-
imidazolium triflimide, 1-ethyl-3-methyl-imidazolium ethyl
sulfate, 1-ethyl-3-methyl-imidazolium tetrafluoroborate, and 1-
ethyl-3-methyl-imidazolium triflate.
Appeal Br. 20, 21–22.
REJECTIONS ON APPEAL
The Examiner maintains the following rejections:
Claims 26, 29, 30–32, and 34–36 stand rejected as unpatentable for
obviousness over Schmidt2 in view of Vathauer3;
Claims 18 and 33 stand rejected as unpatentable for obviousness over
Schmidt in view of Vathauer and Hell4;
Claims 37 and 38 stand rejected as unpatentable for obviousness over
Schmidt in view of Vathauer and Malet5; and
Claims 26, 29, 30–32, and 34–36 stand rejected as unpatentable for
obviousness over Schmidt in view of Weber6;

2 Schmidt et al., US 7,601,771 B2, issued October 13, 2009.
3 Vathauer et al., US 2004/0167264 A1, published August 26, 2004.
4 Hell et al., US 2008/0114105 A1, published May 15, 2008.
5 Malet et al., WO 2010/86574 A2, published August 5, 2010; the Office
relies on the corresponding publication US 2012/0108694 A1, published
May 3, 2012, which use is not contested. Final Office Action, issued May
11, 2018 (“Final Act.”), 5.
6 Weber et al., US 2010/0019210 A1, published January 28, 2010.
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Claims 18 and 33 stand rejected as unpatentable for obviousness over
Schmidt in view of Weber and Hell; and
Claims 37 and 38 stand rejected as unpatentable for obviousness over
Schmidt in view of Weber and Malet.
DISCUSSION7
For any ground of rejection, “the examiner bears the initial burden . . .
of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We consider the record to determine whether
Appellant has identified reversible error in the Examiner’s rejection. See 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,” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential)). An Appellant can also support the patentability of
claims on the basis that the claimed invention imparts unexpected results and
that the unexpected results are reasonably commensurate with the scope of
protection sought by the claim on appeal. In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The Examiner set forth two parallel sets of grounds—Schmidt in
combination with Vathauer (and further references) and Schmidt in
combination with Weber (and further references). Final Act. 2–9. Each of
the two sets of grounds encompass all of the claims on appeal. Id. In its
appeal brief, Appellant addresses the first set of grounds, by way of
arguments as to the combination of Schmidt with Vathauer, but does not

7 We refer to the Specification, the Final Office Action, the Appeal Brief, the
Examiner’s Answer, dated December 17, 2018 (“Ans.”), and the Reply
Brief, filed February 19, 2019 (“Reply Br.”).
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address the combination of Schmidt with Weber. See generally Appeal Br.;
Reply Br. 2 (“While the Schmidt/Weber combination was inadvertently
omitted in the Appeal Brief, the remarks contained therein are equally
applicable to those rejections.”).
Schmidt in combination with Vathauer (and further references)
Schmidt teaches a polymer composition comprising a semicrystalline
polymer having no ionic groups and an ionic liquid as plasticizer. Schmidt,
Abstract. Schmidt teaches that including the ionic liquid improves
thermoplastic processing properties. Id. at 10:19–27. Schmidt also teaches
that including the ionic liquid may also provide antimicrobial properties (id.
at 10:28–37), antistatic properties (id. at 10:38–45), and adhesive properties
(id. at 12:55–59). Schmidt also teaches that “[t]he introduction of the ionic
groups . . . by means of the ionic liquids . . . makes it possible to provide the
polymer composition . . . with . . . in some cases a semiconductive property.”
Id. at 13:16–24. Other means for increasing conductivity in polymer
materials are also disclosed in Schmidt, particularly, the “addition of
conductive particles or fibers modified to be antistatic or conductive” (id. at
13:14–15), including, for example, carbon black or graphite (id. at 12:64–
65), and that polymers including such conductive particles or fibers can be
used as conductive binders or adhesives (id. at 12:61–13:15).
The Examiner relies on Schmidt teaching “a polymer composition
comprising a crystalline polymer and 0.1 to 30 wt%, preferably 1–16 wt% of
an ionic liquid” and that these encompassing or overlapping ranges with
what is claimed establishes a prima facie case of obviousness. Ans. 3 (citing
Schmidt, Abstract, 4:30); see also Final Act. 2–3. As to component A, the
polymer component, the Examiner relies on Schmidt teaching “a preferred
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embodiment comprising polyamides, homopolyamides and copolyamides
. . . such as nylon-6,6 [and] nylon 6.” Id. (citing Schmidt, 7:54–56, 7:1–
8:21); see also Final Act. 3.8 As to component C, the included ionic liquid,
and its composition, the Examiner relies on Schmidt teaching the use of
“quat ammonium, phosphonium, imidazolium, pyrazolium, pyridazinium
cations, 5-6 membered cations comprising sulfur” (Ans. 3 (citing Schmidt,
4:35–6:17)), including “1-ethyl-3-methylimidazoliunium cations” (id. (citing
Schmidt, 5:6, 5:52–54, Examples)), and various anions, including
tetrafluoroborate (id. (citing Schmidt 6:7–10)), such that the claimed 1-ethyl-
3-methyl imidazolium tetrafluoroborate is met (id.). As to component B, the
included carbon black or graphite, the Examiner relies on Schmidt teaching
“the addition of conductive particles” to raise the conductivity of the
polymer blend (id. at 3–4 (citing Schmidt, 13:10–15)), and particularly the
use of “carbon black or graphite as conductivity improving fillers” (id. at 4
(citing Schmidt, 12:64–65)).
Vathauer teaches thermoplastic molding compositions comprising
electrically conductive carbon. Vathauer, Abstract. Determining that
Schmidt fails to specifically disclose the amount of carbon black or graphite
in its composition, the Examiner relies on Vathauer as teaching the use of
“an electrically conductive carbon in particular [sic, particulate] form” (Ans.
4 (citing Vathauer, Abstract)) “for establishing conductivity” (id. (citing
Vathauer ¶ 77)), “in the amount of 5–70 wt%” (id. (citing Vathauer ¶ 82),

8 The Examiner inadvertently refers to “Spec” instead of “Schmidt,” but this,
and other similar mis-citation, including of “Spec” for “Vathauer,” is
deemed harmless because it is manifest that Schmidt, or Vathauer later, is
being referenced and Appellant raises no argument it is not. See generally
Appeal Brief.
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and that this overlapping range with what is claimed establishes a prima
facie case of obviousness (id.). The Examiner concludes, specifically, that it
would have been obvious to one or ordinary skill in the art, informed by the
teachings of Schmidt and Vathauer, to have provided carbon black or
graphite in the amounts claimed, in a polymer composition according to the
claims, to establish conductivity in the composition. Ans. 4 (citing Schmidt,
12:64–65, 13:10–15; Vathauer ¶¶ 77, 82).
Appellant argues against this rejection of independent claims 26 and
35 separately (see, e.g., Pet. 6–16), and further argues the patentability of
dependent claims 29, 30, 32, and 36–38 (see, e.g., id. at 9–10, 17–18).
Appellant raises three general arguments, applicable, to varying degrees, to
all of the claims: (1) that the prior art does not suggest the specific molding
composition in a manner sufficient to establish prima facie obviousness,
emphasizing the particular combination of ionic liquids and carbon black or
graphite; (2) that there is no teaching or suggestion for use of carbon black
or graphite in combination with an ionic liquid, contending that Schmidt
teaches ionic liquid as a preferable alternative and that Vathauer lacks any
suggestion to include an ionic liquid; and (3) that there is an unexpected
synergistic effect, particularly significantly improved conductivity with
inclusion of low amounts of the ionic liquid with relatively low amounts of
carbon black.
Independent Claim 26
Appellant highlights the recited limitations, particularly those added
since the Board’s prior decision affirming the rejection of previously
pending claim 26, and contends “that this specific molding composition is
not suggested by the art in a manner sufficient to form prima facie
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obviousness.” Appeal Br. 2, 6–7; see generally Decision in Appeal No.
2017-000576, dated October 27, 2017 (“Dec.”). Appellant highlights that
the recited components are selected from a smaller group of potential
polyamides, that the recited component B is present in an amount of 4–8%,
rather than 3–20%, and that component C is selected from a specific group
of potential ionic liquids. Id.
Appellant contends that the Examiner erred in determining that
Schmidt and Vathauer disclose the use of carbon black or graphite in
combination with an ionic liquid. Id. at 7–8. Appellant also contends that
Schmidt’s teaching of the use of carbon black or graphite as a conductive
filler is in relation to the prior art and that it teaches, in the next column,
“that conductivity was found through the use of the ionic liquids disclosed
therein.” Id. at 8 (citing Schmidt, 12:64–65, 13:16–24); see also Reply Br. 3
(citing Schmidt, 12:61, 13:8, 13:16–28) (contending “Schmidt does not
invite any researcher to employ additional conductive fillers”). Appellant
contends that this amounts to Schmidt teaching ionic liquids as a preferable
alternative to including “‘conductivity improving fillers’ of the prior art,
such as carbon black or graphite.” Pet. 7–8; see Reply Br. 3.
Appellant also argues that the particular combination required by the
claims, including claim 26, “lead[s] to a combined effect which brings about
high conductivity even at low concentrations of carbon black or graphite.”
Appeal Br. 8–9 (citing Spec. 1:38–2:2, 11:38–12:4). Appellant relies on
“there [being] a significant increase in conductivity (decrease in volume
resistivity), despite the use of only 1% of ionic liquid.” Id. at 9; see also id.
at 15–16 (contending that the results are “unexpected” as to claim 35
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because the contended “synergistic effect between the carbon black and the
ionic liquid is in no way suggested by any of the cited art”).
Appellant’s arguments, detailed above, are not persuasive of
reversible error. First, there is no particular, cogent argument explaining
why the narrower range of options set forth in the claim for components A
and C (and difference in the recited range of component B) would not have
been obvious, or why the Examiner’s rejection should not be affirmed for
the same reasons as set forth in the Board’s earlier decision affirming the
rejection of prior pending claim 26. Rather, Appellant simply asserts the
claim differs from what was rejected earlier. This is not sufficient to address
the Examiner’s position. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ((“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art. Because Lovin did not provide such
arguments, the Board did not err in refusing to separately address claims 2-
15, 17-24, and 31-34.”). As explained in the prior decision, “disclos[ing] a
multitude of effective combinations does not render any particular
combination less obvious.” Dec. 6 (quoting Merck & Co. Inc. v. Biocraft
Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989)).
Second, Appellant’s arguments grounded on Schmidt failing to teach
a polymeric composition that includes both carbon black (and/or graphite)
and an ionic fluid fall short. As set forth by the Examiner, Schmidt
reasonably teaches options for increasing (or adjusting) conductivity of
polymers that include both solid particles, such as carbon black or graphite,
and ionic liquids, such as those recited in the claim. Ans. 10–12. Further, as
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highlighted in the Board’s prior decision, use of both carbon black (and/or
graphite) and an ionic fluid would have been prima facie obvious because
both are taught to be useful for the same purpose and what is recited in the
claim is merely the combination of those to form a composition for that
same purpose. Dec. 8 (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980)). Also, in accord with the Examiner’s reasoning, we discern no
teaching away from a composition that includes both a component B and a
component C. Cf. DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read
into a reference a teaching away from a process where no such language
exists.”).
Third, Appellant’s arguments grounded on contended synergistic
effects of combining component carbon black or graphite with an ionic
liquid fall short because there is no objective evidence of record that such an
effect was, in fact, unexpected at the time of invention. Here, as in the
earlier appeal, Appellant fails to direct us to any statement in the
Specification or elsewhere attesting to the unexpected nature of the results or
to any persuasive evidence that the results would have been unexpected at
the time of the invention. See generally Appeal Br.; Reply Br.; Dec. As set
forth by our reviewing court, arguments by counsel are not sufficient. See
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, 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.’”). Further, Appellant’s reliance on the cited prior
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art as evidencing that the results would have been unexpected, as set forth
for claim 35, is not well-founded. Appeal Br. 15–16. The issue is whether
the results would have been unexpected by the skilled artisan at the time of
invention, not whether the cited prior art suggests the results or does so at a
point in time other than at the time of invention.
Independent Claim 35
As to claim 35, Appellant again highlights the limitations as to recited
components A, B, and C—“PA 6 as component A, . . . conductive carbon
black as component B, and . . . component C” selected from a listing of four
specific compounds. Appeal Br. 10. Appellant highlights the more limited
groups from which components must be selected, and argues that there is no
prima facie case because there is insufficient rationale for making the
particular selections required from what Schmidt discloses to arrive at the
claimed invention, such that the Examiner’s rejection is, accordingly, no
more than impermissible hindsight. Id. at 11 (citing Final Act. 3). Appellant
further argues that it is necessary for the prior art to suggest the desirability
of the modification required to reflect the features of the claimed invention,
and that the listing of components in Schmidt does not suffice due to the
number of different options it reflects. Id. at 11–12. Appellant also
references its earlier argument that Schmidt teaches use of its ionic liquids as
an alternative to prior art conductive filters, such as carbon black. Id. at 10.
Appellant argues in particular that a specific motivation to arrive at
the particular combination set forth in the claim is required. Id. at 13–15
(citing Unigene Labs, Inc. v. Apotex, Inc., 655 F.3d 1352 (2011)). Appellant
relies on Unigene Labs as requiring a person of ordinary skill in the art to
have both a reason to modify a reference composition taught by a reference
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and a reason to select particular components from the prior art in making the
modifications. Id. at 13. Appellant highlights that the court in Unigene
Labs found disclosure in one reference (the ’116 patent) of a formulation
that “included citric acid as a chelating agent and/or absorption agent” and
disclosure in a second reference (Day) “that citric acid is a pH adjuster and a
buffer” as insufficient “reason to choose citric acid from among 50 examples
of chelating agent in the [first reference] to enhance the bioavailability of the
formulation.” Id. Appellant also highlights six particular “adjustments” that
it contends must be made from the Schmidt reference. Id. at 14.
Appellant also relies on a contended “surprising synergistic effect,”
arguing that the specification shows “significant reduction of resistivity” and
that this “is in no way suggested by any of the cited prior art.” Id. at 15.
Appellant relies on both cited prior art references suggesting higher amounts
of ionic liquid and conductivity filler as supporting its contention that the
synergistic effect was unexpected. Id. at 16.
Appellant’s arguments are not persuasive of reversible error. In
Unigene Labs, our reviewing court determined that a reference (the ’315
patent) that discusses the ’116 patent teaches away from using the recited
amount of citric acid such that one of ordinary skill in the art reading the
’315 and ’116 patent would have considered it “undesirable” in the claimed
composition (Unigene Labs, 655 F.3d at 1363) and that despite the Day
reference’s teachings, there was no genuine dispute that one of ordinary skill
in the art would not have considered using the claimed amount of citric acid
in the claimed formulation “because the formulation would not be expected
to perform properly to meet the specificity of a pharmaceutical use.” Id. at
1363–64. In contrast, here, there is no persuasive argument that the prior art
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teaches away from the selected components in the recited amounts, nor that
the resulting synergistic effect would have been unexpected. See generally
Appeal Br.; Reply Br.
As to the more general argument that selecting the particular
components from the multitude of those disclosed is impermissible
hindsight, we are not persuaded the Examiner erred reversibly. Appellant
relies on there being insufficient guidance to render the claimed composition
obvious where there are numerous potential thermoplastic polymers,
hundreds of potential cations, and hundreds of potential anions disclosed in
Schmidt. Appeal Br. 14. Appellant fails, however, to sufficiently account
for the guidance provided in Schmidt and, thus, argues, in effect, against a
rejection that was not made, the obviousness of the composition where the
prior art did not indicate any preference for polyamide polymers nylon 6 and
nylon 6,6, for 1-ethyl-3-methylimidazolium as the cation, or for any
particular anion. As relied on by the Examiner, however, Schmidt
reasonably identifies polyamide polymers nylon 6 and nylon 6,6 as
exemplary thermoplastic polymers for use in its composition. Ans. 3;
Schmidt, 6:47–7:11. Similarly, as to the Examiner’s reliance on Schmidt for
the ionic liquid (component C), Schmidt reasonably identifies 1-ethyl-3-
methylimidazolium as an exemplary cation, including in its disclosure of this
cation as one of only three used in the examples (Schmidt, 13:65–14:14;
Ans. 3 (citing Schmidt, Examples, as support)), and tetrafluoroborate as a
preferred anion in indicating that the anion can be an arylsulfonate, and
“preferably . . . tetrafluoroborate” (Schmidt, 6:17–24; Ans. 3).
Further, as discussed in the Board’s prior decision, it is well-settled
that the prior art is good for all that it discloses, including, as here, each of
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the various combinations manifest in the teaching of various polymers and
compositions of those in combination with ionic liquids and carbon black
and/or graphite. See, e.g., Biocraft Laboratories Inc., 874 F.2d at 807.
Again, as to Appellant’s arguments grounded on contended
synergistic effects being unexpected, the arguments fail because there is no
sufficient showing that the results were unexpected.
Claims 29 and 36
Appellant further argues patentability of claims 29 and 36 separately.
Appeal Br. 17. The arguments raised are grounded solely on unexpected
results, which are not persuasive for the reasons discussed above, namely,
that it is not sufficiently established that the results are, in fact, unexpected.
Claims 37 and 38
Claims 37 and 38 stand rejected over the combination including
Malet. Ans. 5–6. This rejection is identified as grounded on Schmidt in
view of Vathauer, in further view of Malet, but also discusses what is, and is
not, taught by the combination that further includes Hell before addressing
what is added by Malet. Id. at 6. In any case, the Examiner relies on Malet,
identified as being in a similar field of endeavor, teaching a composition
comprising a polymer and an organic salt/ionic liquid including 1-ethyl-3-
methylimidazolium cation with tetrafluoroborate and ethyl sulfate. Id.
(citing Malet, Abstract, ¶¶ 15, 16, 99). The Examiner determines that it
would have been obvious to substitute 1-ethyl-3-methylimidazolium ethyl
sulfate as the ionic liquid as Schmidt discloses the 1-ethyl-3-methyl-
imidazolium cation and alkyl sulfate anion, and doing so is merely the
“simple substitution of one known ionic liquid for another ionic liquid [that]
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would achieve the predictable result of enhancing the antistatic properties of
the composition.” Id.
Appellant’s limited further arguments as to claims 37 and 38 include
the same arguments grounded on unexpected results, but also on the
narrowly recited composition as including PA 6 as component A, 4 to 6% of
conductive carbon black as component B, and 0.3–1.2% 1-ethyl-3-
methylimidazolium ethyl sulfate as component C as “requir[ing] election of
one specific cation and one specific anion of the hundreds of possibilities
given in the reference.” Id. at 17–18. As with the corresponding argument
for independent claim 35, Appellant both fails to establish that the results are
unexpected and to address the ground as set forth by the Examiner in which
the references provide guidance as to what particular components to include
that significantly narrows the breadth of choices and possibilities.
Accordingly, on this record, we are unpersuaded of reversible error in
the Examiner’s rejection of these claims.
Schmidt in combination with Weber (and further references)
The Examiner relies on Schmidt in like manner to the combination
with Vathauer discussed above. Compare Ans. 6–10, with id. at 3–6.
Weber, in like manner as Vathauer, is relied on for its teaching of a
thermoplastic molding comprising polyamide and 0.5–15 % electrically
conductive additive, and that suitable examples are graphite or conductive
carbon black. Ans. 7–8 (citing Weber, Abstract, ¶¶ 130, 138). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to have provided carbon black or graphite in amounts according to
the claims in order to establish conductivity in a polymer as taught by
Schmidt. Id. at 8.
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Appellant raises no argument as to this combination in the Appeal
Brief. See generally Appeal Br.; Reply Br. 2. Further, what argument might
apply that is raised as to Schmidt in arguing against the rejections over
Schmidt in view of Vathauer (and further references) is, as discussed above,
unpersuasive of reversible error.
Appellant’s Reply Brief
In addition to addressing its failure to explicitly address the
combination of Schmidt with Weber, Appellant also raises a number of other
arguments in the Reply Brief that were not raised earlier. Compare Reply
Br., with Appeal Br. Couching it as a response to the Examiner asserting
that Schmidt uses an overlapping generic range for ionic liquid, Appellant
raises an argument as to Schmidt’s “use of ionic liquid as plasticizer [that]
lowers the melting point in glass transition temperature, and thus improves
the thermoplastic processability” and contends that this “strongly encourages
to employ significantly higher amounts.” Reply Br. 2–3 (citing Ans. 10).
Appellant likewise couches a contention that “the main aim of Schmidt is to
improve the adhesion performance of the polymer composition on polar
surfaces or surfaces solvated by ionic liquids” as a response to the
Examiner’s determination that Schmidt teaches including conductivity-
improving fillers to produce conductive systems. Id. at 3 (citing Ans. 11).
Appellant also notes that “the Examiner reiterates that it would have been
obvious to combine Schmidt and Vathauer” and raises an argument
grounded on Vathauer addressing “mechanical properties” and not “the
problem of electrical conductivity.” Id. at 3–4 (citing Ans. 12). In each
case, Appellant fails to show good cause why these arguments could not
have been raised in the Appeal Brief as each addresses a position taken by
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the Examiner in the Final Office Action, namely, that Schmidt’s disclosed
range of the ionic liquid overlaps that claimed, that Schmidt teaches
including conductivity-improving fillers to produce conductive materials,
and that it would have been obvious to combine Schmidt and Vathauer
because Vathauer teaches including electrically conductive carbon for
establishing conductivity. Final Act. 2–3. We therefore deem these
arguments waived for purposes of the present appeal. 37 C.F.R.
§ 41.41(b)(2). “[A]n issue not raised by an [A]ppellant in its opening brief
is waived.” Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989
(Fed. Cir. 2006) (citations omitted) (internal quotations omitted).
As to further arguments addressing claims 29 and 35–38, these
reiterate the arguments raised earlier in the Appeal Brief, as to the
combination of Schmidt and Vathauer and are unpersuasive of reversible
error for the same reasons discussed above for that ground. Further, as to
the grounds relying on the combination of Schmidt and Weber (and further
references), these arguments are properly considered to be waived.
37 C.F.R. § 41.41(b)(2). Further, to the extent the arguments raised as to the
combination of Schmidt and Vathauer constitute any argument as to that of
Schmidt and Weber, the arguments would not be found persuasive for the
same reasons that they fall short as to Schmidt and Vathauer.
On this record, Appellant has failed to identify reversible error in the
rejection of claims 18, 26, and 29–38.
Appeal 2019-002789
Application 13/324,296

18

CONCLUSION
The Examiner’s decision is affirmed.
Claims
Rejected
35
U.S.C. §
Rejection(s) Affirmed Reversed
26, 29, 30–
32, 34–36
103 Schmidt, Vathauer 26, 29–32,
34–36

18, 33 103 Schmidt,
Vathauer, Hell
18, 33
37, 38 103 Schmidt,
Vathauer, Malet
37, 38
26, 29, 30–
32, 34–36
103 Schmidt, Weber 26, 29–32,
34–36

18, 33 103 Schmidt, Weber,
Hell
18, 33
37, 38 103 Schmidt, Weber,
Malet
37, 38
Overall
Outcome
103 18, 26, 29–
38

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