Ex Parte Bogerd et alDownload PDFPatent Trial and Appeal BoardJun 22, 201610955038 (P.T.A.B. Jun. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/955,038 0913012004 Jos van den Bogerd 43248 7590 06/24/2016 CANTOR COLBURN LLP - SABIC (LEXAN/CYCOLOY) 20 Church Street 22nd Floor Hartford, CT 06103 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 147241-2-US-NP 3815 EXAMINER NERANGIS, VICKEY M ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 06/24/2016 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@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOS VAN DEN BOGERD, REIN MOLLER US FABER, and CHRISTIANUS J.J. MAAS Appeal2014-007388 Application 10/955,038 1 Technology Center 1700 Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) the final rejection of claims 5-9, 12, 13, 16, 20, 21, 26, 28, 32, 34, 37--40, 42, and 43. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants' invention is directed to an article comprising a composition comprising a polycarbonate, an inorganic infrared absorbing additive comprising lanthanum boride and a ultraviolet (UV) absorbing 1 This application was subject to previous appeal 2011-001884 in which the Board affirmed the Examiner. Appeal2014-007388 Application 10/955,038 additive comprising benzotriazole (Claim App'x, claim 5). Appellants allege that the combination of the UV absorber and infrared absorbing compound synergistically interact to reduce hydrolytic degradation of the infrared absorbing material (Spec. i-f 9). Claim 5 is illustrative: 5. An article comprising: a composition comprising: 70 wt% to 99.9 wt% of a material based upon a total weight of the composition wherein the material comprises aromatic polycarbonate and is selected from a bisphenol A polycarbonate, a copolyestercarbonate, or a blend of polyester with polycarbonate; 0.02 parts per million to 70 parts per million of an inorganic infrared absorbing additive comprising lanthanum boride; and an UV absorbing additive comprising benzotriazole, wherein the UV absorbing additive is present and is present in an amount of 0.05 wt% to 5 wt%, based upon a total weight of the composition. Appellants appeal the following rejections: L Claims 5; 12; 13; 16; 20; 21; 26; 28; 32; 34; 39; 40; 42; and 43 are rejected under 35 U.S.C. § 103(a) as obvious over Fujita et al. (US 2004/0028920 Al, published Feb. 12, 2004) ("Fujita") in view of Fisher (US 2002/0086926 Al, published July 4, 2002) and Naarmann et al. (US 6,063,854, issued May 16, 2000) ("Naarmann"). 2. Claims 5-9 are rejected under 35 U.S.C. § 103(a) as obvious over Fujita in view of Fisher, Naarmann, and Brunelle et al. (US 6,265,522 B 1, issued July 24, 2001) ("Brunelle"). 3. Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as obvious over Fujita in view of Fisher, Naarmann, and Lundy et al. (US 4,804,692, issued Feb. 14, 1989) ("Lundy"). 2 Appeal2014-007388 Application 10/955,038 FTI'-JDINGS OF FACT AND ANALYSES REJECTION (1) Appellants argue the subject matter of independent claims 5 and 34 and claims 39, 42, and 43 (App. Br. 5-14). We select claims 5, 39, 42, and 43 as representative. 37 CPR §41.37(c)(l)(iv) (2013). The Examiner's findings and conclusions regarding Fujita, Fisher, and Naarmann are located on pages 3--4 of the Answer. Appellants argue that N aarmann is directed to bathroom fittings whereas Fujita and Fisher are directed to windows and roofing materials so that there is no apparent reason why one of ordinary skill in the art would have used Naarmann's amount of UV absorber that is appropriate for bathroom fittings in Fujita's window (App. Br. 9). Appellants contend that Fujita, Fisher, and Naarmann are non-analogous references that address different problems. Id. Appellants argue that the Examiner provides no reason, absent hindsight, why one skilled in the art would have modified Fujita' s composition to achieve lanthanum boride concentrations of lower than 0.01 % by weight (100 ppm) as allegedly disclosed by Fisher (App. Br. 9). Appellants contend that Fujita's polymer and Naarmann's polymer are different and there is no basis to believe that additives (or amounts thereof) optionally employed in [a] composition will interact and effect the other composition in the same manner and without adversely affecting the desired properties of that second composition, or that the amounts disclosed in one reference would be sufficient to attain the desired result in another reference using wholly different materials. (App. Br. 10). 3 Appeal2014-007388 Application 10/955,038 Fujita teaches a window or roofing material made by diluting a master batch that contains from 0.01to20 parts by weight (pbw) of lanthanum boride (Fujita i-fi-f 16, 17). Although Fujita exemplifies diluting the master batch to 0.01 wt% lanthanum boride in the window composition (Table 1), Fujita further discloses that the disclosure is not limited by the exemplified embodiments (Fujita i-fi-1 46, 63). Fujita teaches that UV stabilizers, such as triazole, may be added to the composition but is silent as to the amount (Fujita i1 43). Fisher teaches that the lanthanum boride salt may be used as an infrared absorbing material in polyvinyl butyral polymer used in making windows, but that other resins may be used. (Fisher i-fi-13, 5, 15, 21). Fisher teaches that if lanthanum boride is the only infrared absorbing salt used then an effective amount is from 0.005% to about 0.1 % (i.e., 50 to 1000 ppm) (Fisher i-f 15). Fisher teaches that UV stabilizers may be added to the composition but is silent as to the amount (Fisher i125). Naarmann teaches a polymer blend that has UV stabilizers in the polymer blend in amounts of up to 2% by weight (Naarmann, col. 12, 11. 3- 12). Naarmann teaches that the polymer blend is used for making bathroom fittings and sanitary articles (Naarmann, col. 12, 11. 60----67; col. 13, 11. 1-27). Naarmann includes a wide variety of products that may be made from the resin composition (Naarmann, col. 12, 11. 60----67; col. 13, 11. 1-27). Naarmann teaches that the molding composition made from polycarbonates has good aging and yellowing resistance upon exposure to UV radiation (Naarmann, col. 13, 11. 34--43). The preponderance of the evidence supports the Examiner's determination that the combined teachings of Fujita, Fisher, and Naarmann 4 Appeal2014-007388 Application 10/955,038 would have suggested using an amount of lanthanum boride that is less than 70 ppm and using a UV stabilizer in an amount of about 2 wt.%. Fujita's teaching to dilute the master batch that contains about 100 ppm lanthanum boride in combination with Fisher's teaching that using lanthanum boride in amounts around 50 ppm to provide windows with infrared absorbing protection would have suggested to the ordinary skilled artisan that lanthanum boride amounts less than 70 ppm are acceptable. Naarmann teaches using a UV stabilizer in a polymer composition includes amounts of up to 2 wt.%. As Fujita and Fisher are silent as to the amount of UV stabilizer, an ordinarily skilled artisan would have looked to similar resins for suitable amounts of UV stabilizer. N aarmann provides guidance to a person skilled in the art on the amount of UV stabilizer acceptable for a resin composition with a wide variety of uses. Based on Naarmann's teachings an ordinarily skilled artisan would have been able to determine suitable concentrations of UV stabilizers for use in Fujita's and Fisher's compositions. Although Appellants contend that one of ordinary skill would not have used Naarmann's disclosure regarding the amount of UV stabilizer in bathroom fittings in Fujita's or Fisher's composition having UV stabilizers in windows or roofing, Appellants' argument overlooks that Fujita and Fisher disclose using UV stabilizers as additives. The Examiner uses Naarmann's teaching regarding what is known as an acceptable amount of UV stabilizer in a polymeric composition. It would seem that Fujita's use of the polymer composition in a window would have required greater amounts of UV stabilizer due to its constant exposure to the sun and the ordinary artisan would have been able to determine through routine experimentation the amount of UV stabilizer required using N aarmann' s 5 Appeal2014-007388 Application 10/955,038 amount as a starting point. Accordingly, a person of ordinary skill in the art would have been able to determine suitable UV stabilizer amounts for use in Fujita's composition based upon the teachings of Fisher and Naarmann. The Examiner has not engaged in impermissible hindsight as argued by Appellants. Indeed, determining the optimum amount or concentration of a component of a composition via routine experimentation is generally within the skill of the art and that when patentability is based upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical (i.e., unexpected results). In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants' argument that Fujita, Fisher, and Naarmann are non- analogous art is not persuasive. To the extent that Appellants mean that the teachings of the applied prior art are not combinable, we addressed that argument above. If Appellants' argument is directed to whether Fujita, Naarmann, and Fisher are analogous to the claimed invention, Appellants have not shown that any of these references are in a different field of endeavor or not reasonably pertinent to Appellants' problem (i.e., providing better weathering resistance to a polymeric composition). In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). In any event, what is considered analogous art is measured relative to the claimed subject matter. Id. at 658. In the present appeal, the claims are directed to an "article" which is not limited to any particular field of endeavor. Accordingly, Fujita's and Fisher's polymeric window material and Naarmann's polymeric bathroom fittings are in the same field of endeavor as Appellants' broadly claimed 6 Appeal2014-007388 Application 10/955,038 "article." ivforeover, Fujita, Fisher, and Naarmann all seek to provide better weathering resistance to the polymeric material, so they are also reasonably pertinent to Appellants' problem. Therefore, we find that the Examiner has established a prima facie case of obviousness over Fujita, Fisher, and Naarmann with regard to the subject matter of claim 5. We now reconsider the Examiner's evidence of obviousness along with Appellants' evidence of unexpected results. Appellants contend that the evidence in Tables 1 and 2 on pages 28 and 29, respectively, of the Specification as explained in the Declaration of Reimo Faber2 (hereinafter the "Faber Declaration") establishes that the combination of the UV stabilizer and the IR absorbing additive results in greater retention of the IR absorbing additive (App. Br. 11-13). The Faber Declaration explains that the master batch used to prepare the comparative samples (i.e., Samples 1 to 3) includes a very small amount (i.e., 0.004 wt%) of UV absorbing additive; no additional UV absorbing additive is included in the comparative samples (App. Br. 11; Deel. i-f 7). Appellants contend that the evidence shows that upon addition of further UV absorbing additives better retention of the IR absorbing additive is achieved. Contrary to Appellants' argument that the evidence is commensurate in scope, the proffered evidence fails to show unexpected results over the entire range of UV absorbing additive amount (i.e., 0.05 to 5 wt%), IR absorbing additive amount (i.e., 0.02 to 70 ppm), and aromatic polycarbonate amount (i.e., 70 to 99.9 wt%). In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The data only includes polycarbonate amounts of 97 .31 % to 97 .66%, IR absorbing additive (i.e., LaB6) amounts of 0.00631 to 2 Declaration of Reimo Faber, dated July 27, 2009. 7 Appeal2014-007388 Application 10/955,038 0.00697%, and UV absorbing additive (i.e., Tinuvin® and Irgafos® additives) amounts of0.1to0.3%. Appellants contend that they are not required to show data at every amount within the ranges for the various components (App. Br. 13; Reply Br. 15). Although Appellants are not required to test every embodiment within the scope of the claims, the evidence must be reasonably commensurate in scope with the claims and Appellants must provide an adequate basis to support a conclusion that the embodiments falling within the claims lacking evidentiary data will behave in the same manner as the actual embodiments shown in evidence. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). In the present case, Appellants do not provide any explanation or evidence to support that embodiments including UV absorbing additives, IR absorbing additives, and polycarbonate amounts outside the amounts included in the Specification evidence would behave in the same manner. No trend in the Specification data has been explained or provided by Appellants. For the above reasons, we find that Appellants' evidence fails to establish unexpected results over the entire claimed range. Regarding claims 39, 42, and 43, Appellants contend that particular recited IR absorbing additive retention and IR absorption properties recited in these claims are not taught or suggested by Fujita, Fisher or Naarmann (App. Br. 12-13; Reply Br. 15). The Examiner's rejection is not based upon the prior art explicitly teaching the properties of claims 39, 42, and 43 (Ans. 3--4). Rather, the Examiner determines that once Naarmann's amount of UV absorbing additive and Fisher's amount of IR absorbing additive are combined with Fujita's composition, the IR absorption retention and reduced decrease in IR absorbing additive after 1000 hours of exposure to a Xenon 8 Appeal2014-007388 Application 10/955,038 weathering source would result (Ans. 4). In other words, once Fujita's composition is modified to include the UV absorbing amounts and IR absorbing amounts of the prior art, the IR absorbing additive retention would flow naturally therefrom. Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985). Appellants' argument does not address or show error with this position of the Examiner. On this record, we affirm the Examiner's § 103 rejection of claims 5, 12, 13, 16, 20, 21, 26, 28, 32, 34, 39, 40, 42, and 43 over Fujita, Fisher, and Naarmann. REJECTION (2): Claim 9 Appellants argue that there is no reason for using Brunelle' s light transmitting resorcinol arylate polyesters and block copolyestercarbonates as the resin material in Fujita (App. Br. 14--15). The Examiner finds that Fujita does not limit the material used as the resin of the window material as long as the resin is a transparent, thermoplastic resin having high light transmission properties (Ans. 5). Brunelle discloses a transparent resin that may be used to make windows and roofing like Fujita (Brunelle, col. 22, 11. 24--26). Based on these disclosures, the preponderance of the evidence supports the Examiner's obviousness conclusion. Substituting Brunelle' s transparent polyacrylate resin for making windows for Fujita's transparent resin for making windows appears to be nothing more than the predictable use of a prior art element (i.e., Brunelle's transparent resin) according to its established function. KSR Int 'l Co. v. Teleflex Inc., 550 US 398, 417 (2007). 9 Appeal2014-007388 Application 10/955,038 We affirm the Examiner's§ 103 rejection of claims 5-9 over Fujita in view of Fisher, Naarmann and Brunelle. REJECTION (3): Claim 38 Appellants argue that Lundy is directed to plastics for use in the medical arts that require exposure to gamma radiation (App. Br. 15-16). Appellants contend that one skilled in the art would not have looked to Lundy to provide a UV stabilized polycarbonate composition as in Fujita (App. Br. 16). The Examiner's rejection, however, is based not upon physically combining Lundy's polycarbonate with Fujita (Ans. 5---6, 9-10). Rather, the Examiner finds that Lundy and Fujita both teach using a bisphenol-A polycarbonate composition such that it would have been obvious to use a bisphenol-A polycarbonate with a molecular weight within the range recited in claim 38 as taught by Lundy in Fujita's composition. Id. In other words, the Examiner finds that modifying Fujita's polycarbonate to have a molecular weight within the claimed range as taught by Lundy would have been obvious. The preponderance of the evidence favors the Examiner's obviousness conclusion. Lundy teaches that polycarbonates having the molecular weight range have suitable melt flow indices (Lundy, col. 2, 11. 15-19; col. 4, 11. 18-27). Accordingly, Lundy teaches polycarbonates having molecular weights overlapping Appellants' claimed range are known to be used to make molded articles. Using a known polycarbonate resin having a molecular weight within the claimed range would have been obvious as nothing more than the predictable use of a prior art element (i.e., polycarbonate) according to its intended use (i.e., forming molded articles). 10 Appeal2014-007388 Application 10/955,038 KSR, 550 US at 417. Appellants proffer no evidence of criticality for the molecular weight range. On this record, we affirm the Examiner's § 103 rejection of claims 37 and 38 over Fujita in view of Fisher, Naarmann, and Lundy. 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)(l )(iv). ORDER AFFIRMED 11 Copy with citationCopy as parenthetical citation