Ex Parte Alting et al

Patent Trial and Appeal Board

Feb 28, 2017

12302298 (P.T.A.B. Feb. 28, 2017)

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.
12/302,298 11/25/2008 Kirsten Alting 334288US0PCT 5846
22850 7590 03/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRSTEN ALTING, ROLAND WURSCHE,
HARALD HAGER, and MARTIN WIELPUTZ
Appeal 2016-000606
Application 12/302,298
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 6—18 and 20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 We refer to the Specification (“Spec.”) filed Nov. 25, 2008; Final Office
Action (“Final Act.”) dated Sep. 18, 2014; Appellants’ Appeal Brief (“App.
Br.”) dated Feb. 25, 2015; Examiner’s Answer (“Ans.”) dated Aug. 13,
2015; and Appellants’ Reply Brief (“Reply Br.”) dated Oct. 13, 2015.
2 Appellants identify Evonik Degussa GmbH as the real party in interest.
App. Br. 1.
Appeal 2016-000606
Application 12/302,298
BACKGROUND
The subject matter on appeal relates to a multilayer polyamide-based
film which includes an adhesion promoter for coupling to a molding
composition. Spec. 1. Sole independent Claim 6 is reproduced below from
the Claims Appendix of the Appeal Brief (emphasis added to show the
disputed recitations):
Claim 6: A film which comprises:
a first layer comprising a molding composition which
comprises at least 60 % by weight of a polyamide, the
monomer units of which comprise an average of at least 8
carbon atoms; and
a second layer formed directly on the first layer, the
second layer comprising a molding composition which
comprises a polyamide composition (a) in an amount of from
50 to 99 parts by weight and a copolymer (b) in an amount of
from 1 to 50 parts by weight with respect to a total amount of
the polyamide composition (a) and the copolymer (b),
wherein the polyamide composition (a) comprises a
polyamide (a) in an amount of from 40 to 100 % by weight and
a polyamide (P) in an amount of 0 to 60 % with respect to a
total amount of the polyamide (a) and the polyamide (P),
the polyamide (a) is PA612,
the polyamide (P) is at least one selected from the group
consisting of PA6, PA66, PA6/66, and a copolyamide, where
the copolyamide is obtained from PA6, PA66 and PA6/66 and
comprises at most 50% of total monomer units replaced by
aromatic monomer units,
the copolymer (b) comprises a first monomer unit in an
amount of from 70 to 99.9 % by weight and a second monomer
unit in an amount of 0.1 to 30 % by weight,
the first monomer unit is a monomer unit of at least one
vinyl compound selected from the group consisting of an
acrylic compound, a methacrylic compound, an a-olefm and a
vinylaromatic compound, and
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Application 12/302,298
the second monomer unit comprises a functional group
selected from the group consisting of a carboxylic anhydride
group, an epoxy group, and an oxazoline group.
REJECTIONS
The Examiner maintains the following grounds of rejection:3
I. Claim 20 stands rejected under 35U.S.C. § 112, first paragraph, for
lack of adequate written description.
II. Claims 6—14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Montanari4 and Bellet.5
III. Claims 6—18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Wursche,6 Montanari, and Bellet.
IV. Claims 6—18 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Flepp7 and Gotz.8
V. Claims 6—8, 11—18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wursche and Flepp.
VI. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wursche, Flepp, and Gotz.
3 Final Act. 2—11; Ans. 2—10.
4 US 2006/0014035 Al, published Jan. 19, 2006 (“Montanari”).
5 WO 2006/066944 Al, published June 29, 2006 (“Bellet”).
6 WO 2005/123384 Al, published Dec. 29, 2005 (“Wursche”). Appellants
do not contest the Examiner’s reliance upon US 2007/0166560 Al,
published July 19, 2007, as an English-language equivalent of Wursche.
Compare Final Act. 5 with App. Br. 3—8; Reply Br. 1^4.
7 WO 01/94110 Al, published Dec. 13,2001 (“Flepp”).
8 U.S. 5,468,530, issued Nov. 21, 1995 (“Gotz”).
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Appeal 2016-000606
Application 12/302,298
DISCUSSION
Rejection I
We summarily sustain the § 112, first paragraph, rejection of claim 20
set forth in Rejection I because Appellants have not contested this ground of
Rejection in either the Appeal Brief or the Reply Brief and, for that reason,
have not identified any error in the Rejection.
Rejections II, III
Claim 6 recites, “the polyamide (a) is PA612.” (Emphasis added).
Pursuant to European Standard DIN EN ISO 1874-1, PA612 identifies a
homopolycondensate based on hexamethylenediamine and dodecanedioic
acid.9 The Examiner relies upon Montanari’s teaching of “co-PA6/12” as
satisfying the claimed PA612 material. Final Act. 4, 6 (citing Montanari ||
148, 151). Appellants argue that, pursuant to the above-mentioned Standard,
Montanari’s co-PA6/12 identifies copolymers based on e-caprolactam and
laurolactam, not a homopolycondensate based on hexamethylenediamine
and dodecanedioic acid. Appellants also point to the Specification at p. 2,
where the identifier “PA6/66” is characterized as a copolymer of PA6 and
PA66—notation which is consistent with that shown in the relied-upon
Standard.10 Id. at 6.
In response, the Examiner agrees that Montanari’s CO-PA6/12
copolymer and the homopolycondensate PA612 under the European
9 European Standard EN ISO 1874-1, Polyamide (PA) moulding and
extrusion materials, Sep. 2000 (submitted during prosecution on July 10,
2014).
10 Tables 1 and 2 in the European Standard DIN EN ISO 1874-1, as
submitted, identifies “PA 66/6” as a copolymer of materials separately
identified as “PA 66” and “PA 6”.
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Appeal 2016-000606
Application 12/302,298
Standard are fundamentally different. Ans. 13. However, the Examiner
interprets the claimed “PA612” not pursuant to the above-mentioned
standard, but as encompassing Montanari’s co-PA6/12 copolymer formed
from caprolactam and laurolactam. Id. at 14. In support of that
interpretation, the Examiner refers to the Handbook of Plastics Joining
(“Handbook”) and Ullmann’s Encyclopedia of Industrial Chemistry
(“Encyclopedia”). Id. Particularly, the Examiner finds that the Handbook
“states that ‘PA 612’ is made by polycondensation of 1,12-dodecanedioic
acid with hexamethylenediamine.” Id. That explanation is consistent with
what is stated in the European Standard and, therefore, tends to support
Appellants’ position. The Examiner’s finding that the Encyclopedia “refers
to polyamide ‘612’ as a copolymer, not a homopolymer” is neutral, and fails
to demonstrate that one skilled in the art would understand the nomenclature
to mean something other than what is expressly provided in the Standard.
On this record, we are persuaded that the Examiner’s finding that
Montanari’s co-PA6/12 satisfies the claimed PA612 is not supported by a
preponderance of the evidence before us. Accordingly, we do not sustain
either Rejection II or III.
Rejections IV—VI
Appellants argue the rejected claims as a group. App. Br. 7—8. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 6 as
representative and decide the appeal based on the representative claim alone.
Appellants argue, in response to Rejections IV—VI, that Flepp
“contains an EVOH layer between two polyamide layers” and, therefore,
fails to provide a second polyamide-based layer formed directly on the first
polyamide-based layer. Id. at 8. This argument is not persuasive of
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Application 12/302,298
reversible error. The Examiner found that Flepp discloses an adhesion-
promoting layer comprising homopolyamide 612 provided between a
“neighboring” polyamide layer and the above-mentioned EVOH layer.
Final Act. 7. The Examiner characterized Flepp’s neighboring layer as
corresponding to the claimed first layer and Flepp’s adhesion-based layer as
corresponding to the claimed second layer. Id. In response to Appellants’
argument, the Examiner reiterated that the relied-upon layers in Flepp are
the “adhesion promoting layer of polyamide 612 directly attached to at least
one of the polyamide layers.” Ans. 15. Appellants do not address the
Examiner’s response in the Reply Brief.
Thus, Appellants’ contention that Flepp provides an EVOH layer
between the relied-upon first and second polyamide-based layers is not
supported by the facts expressly identified and relied upon by the Examiner.
As such, we are not persuaded of reversible error, and we sustain Rejections
IV-VI.
SUMMARY
Rejection I as applied to claim 20 is sustained.
Rejections II and III as applied to claims 6—18 are not sustained.
Rejections IV—VI as applied to claims 6—18 and 20 are sustained.
DECISION
The Examiner’s decision rejecting claims 6—18 and 20 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.
AFFIRMED
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