Ex Parte Desbois et alDownload PDFPatent Trial and Appeal BoardJan 9, 201713128502 (P.T.A.B. Jan. 9, 2017) Copy Citation 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. 13/128,502 08/09/2011 Philippe Desbois 074008- 1183-US (286173) 1114 123223 7590 01/11/2017 Drinker Biddle & Reath LLP (WM) 222 Delaware Avenue, Ste. 1410 Wilmington, DE 19801-1621 EXAMINER LISTVOYB, GREGORY ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 01/11/2017 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): IPDocketWM @ dbr.com penelope. mongelluzzo @ dbr. com DB RIPDocket @ dbr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIPPE DESBOIS, MARTIN KLATT, and SACHIN JAIN Appeal 2014-005775 Application 13/128,502 Technology Center 1700 Before ROMULO H. DELMENDO, DONNA M. PRAISS, and WESLEY B. DERRICK, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 1 This decision makes reference to the Specification filed May 10, 2011 (“Spec.”), the Final Office Action mailed June 13, 2013 (“Final Act.”), the Appeal Brief filed Nov. 6, 2013 (“Br.”), and the Examiner’s Answer mailed Feb. 5, 2014 (“Ans.”). Appeal 2014-005775 Application 13/128,502 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 12—22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter of this appeal relates to “thermoplastic molding compositions” for use in “producing fibers, films and moldings of any type” including “intake tubes (intake manifolds) for the automotive sector.” Spec. 1:5—21; Br. 5. Claim 12 is illustrative (disputed elements italicized): 12. A thermoplastic molding composition comprising A) from 10 to 98. 7% by weight of at least one thermoplastic polyamide having a viscosity number (VN) to ISO 307 of at least 150 ml/g, B) from 1 ppm to 0.95% by weight of at least one branched polyethyleneimine polymer having a ratio of primary/secondary/tertiary amines of from 1/0.7—1.4/0.3— 1.1 to 1/0.8—1.3/0.5—0.9, C) from 0.05 to 3 % by weight of a lubricant, D) from 0.05 to 3 % by weight of a copper-containing stabilizer, E) from 1 to 50% by weight of a fibrous or particulate filler, or mixtures thereof, F) from 0.1 to 5% by weight of a nigrosine, G) from 0 to 30% by weight of further additives, the sum of components A) to G) does not exceed 100%. 2 Appeal 2014-005775 Application 13/128,502 The Examiner maintains,2 and Appellants3 appeal, the rejection of claims 12—22 under 35 U.S.C. § 103(a) as unpatentable over Eibeck4 in view of Sukata.5 Ans. 2; Br. 4. Appellants argue the subject matter of independent claim 12, and rely on those same arguments for claims 13—22. Br. 4—9. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 13—22 will stand or fall together with claim 12 on which they depend either directly or indirectly. OPINION The dispositive issues for this appeal are whether the Examiner erred in finding (1) that Eibeck suggests the claimed composition including nigrosine and (2) that Sukata suggests the claimed amount of nigrosine in the composition. After review of the arguments and evidence presented by both Appellants and the Examiner, we affirm the stated rejection. It is the Examiner’s position that the combination of Eibeck and Sukata suggests the subject matter of claims 12—22 for the reasons stated on page 4 of the Final Action and pages 2—6 of the Answer. In the Appeal Brief, Appellants argue that the Examiner erred in combining Eibeck with Sukata because “[njone of the examples of Eibeck utilize nigrosine” and “Eibeck discloses nigrosine generally as one of numerous potential additives, including numerous potential pigments or 2 The rejection of claims 12—22 for obviousness-type double patenting over claims 1—8 and 14 of US 8,268,920 stands withdrawn in view of the terminal disclaimed submitted with the Appeal Brief. Ans. 4; Final Act. 3; Br. 4. 3 Appellants identify the real party in interest as BASF SE. Br. 2. 4 Eibeck et al., US 2008/0262133 Al, published Oct. 23, 2008 (“Eibeck”). 5 Sukata et al., Influence of the Nigrosine Dye on the Thermal Behavior of Polyamide 66, 101 J. Applied Polymer Sci. 3270-3274 (2006) (“Sukata”). 3 Appeal 2014-005775 Application 13/128,502 dyes.” Br. 8. Appellants also argue that “Sukata deals with a very particular question, namely the reduction of crystallization point in pure polyamide-66 while melting point is maintained relatively constant, and what potential causes there may be.” Id. According to Appellants, because Sukata “deals only with pure polyamide-66,” it does not suggest to a person of ordinary skill in the art “that such an amount would be effective with the claimed multi-component composition in lieu of the described pure polyamide-66, or that use of any nigrosine at all would be beneficial.” Id. at 8—9. Appellants also contend that the examples in the Specification evidence “surprisingly improved results over (a) use of a polyetherimine outside of the claimed concentration, and (b) use of a polyetherimine which does not meet the claimed ratio of primary/secondary/teriary amines.” Id. at 7 (citing example 2 and tables 3 and 5). The Examiner responds that “Eibeck uses the same commercial polyethyleneimine as the one used in the instant Application (i.e. LUPASOL with primary to secondary to tertiary amino groups ratio of 1:1.1:0.7 and M=25000 g/mol, see 0123 [sic, 0124]).” Ans. 4—5 (citing Spec. 17:11—16, Table 1, entry 3 for Lubasol WF). The Examiner finds that Eibeck also discloses the use of nigrosine as a dye, which suggests to an artisan “an amount[] sufficient to achieve a required color.” Id. at 5. The Examiner further responds that Figure 2 of Sukata discloses a drop of 15 degrees in the crystallization point (Tc) of molten PA-66 (polyamide 6,6) when nigrosine is added to a concentration of 3.3 weight %. Id. (citing Sukata, Fig. 2). Regarding Figure 2 suggesting utilizing less than 3.3% of nigrosine, the Examiner responds that “use of excessive amount of nigrosine (i.e. more than 3—5%) has an adverse effect on the plastic properties.” Id. Finally, the 4 Appeal 2014-005775 Application 13/128,502 Examiner finds that “total behavior of the entire composition is a sum of interaction of all components, unless synergic effect is present.” Id. at 6. We are not convinced that the Examiner erred in combining the teachings of Eibeck and Sukata for the reasons stated by the Examiner in the Final Action and Answer. Ans. 2—7; Final Act. 2—7. We add the following primarily for emphasis. Appellants’ arguments are not persuasive for a number of reasons. First, Eibeck explicitly teaches including nigrosine in a composition having the other claimed components, including a polyethyleneimine. Eibeck Abstr., || 113, 124; Ans. 2, 4—5. Second, Appellants’ argument that Eibeck does not include nigrosine in its examples is unpersuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). Moreover, “a reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted). Third, Appellants’ argument that Eibeck discloses nigrosine among “numerous potential pigments or dyes” is not supported by the record. Eibeck discloses a limited number of colorants in the categories of dyes and organic or inorganic pigments. Cf. Br. 8 with Eibeck 1113 (“It is possible to add inorganic pigments such as titanium dioxide, ultramarine blue, iron oxide and carbon black, and also organic pigments such as phthalocyanines, quinacridones and perylenes, and also dyes such as nigrosine and anthraquinones as colorants.”). Fourth, Appellants’ argument that Sukata’s disclosure of the effect of nigrosine on 5 Appeal 2014-005775 Application 13/128,502 polyamide 6,6 does not provide a reason to combine these teachings with the disclosure of Eibeck is not persuasive because Appellants do not direct us to any evidence that Eibeck’s disclosure is limited to polyamides other than polyamide 6,6, nor do Appellants direct us to any evidence that the benefit of adding nigrosine to polyamide 6,6 disclosed by Sukata would not be expected also in such compositions that included the additional components required by claim 12. The Examiner’s finding that the “total behavior of the entire composition is a sum of interaction of all components” absent the presence of a synergic effect (Ans. 6) is not disputed by Appellants. Fifth, Appellants’ assertion of surprising and unexpected results is unpersuasive because Appellants merely direct us to one comparative example in the Specification that allegedly shows unfavorable viscosity and decreased weld line strength compared to other examples that utilize a polyethyleneimine with the claimed ratios. Br. 7—8. Such evidence is insufficient to establish surprising results commensurate with the scope of claim 12 and also in comparison to the closest prior art, i.e. Eibeck, which discloses the same polyethyleneimine identified in Appellants’ Specification as Lupasol® WF. It is well settled that Appellant has the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellants to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 12 on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied 6 Appeal 2014-005775 Application 13/128,502 upon by Appellants must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Furthermore, it is only in the Appeal Brief that Appellants state that the results are unexpected using a polyethyleneimine having the claimed ratio of primary/secondary/tertiary amines, but such a statement by the attorney is not enough. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot take the place of evidence). Rather than describing any surprising results with respect to comparative example 2, the Specification describes the distribution of the amino groups “is preferably from 1/0.7—1.4/0.3—1.1 to 1/0.8—1.3/0.5—0.9.” Spec. 4:16—18. A preference does not adequately indicate that the results obtained would have been unexpected. Moreover, what would have been expected is not clear from the Specification. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007) (A proper evaluation of a showing of unexpected results considers what properties were expected). For the foregoing reasons, we affirm the Examiner’s rejection under 35U.S.C. § 103(a). 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)(v). AFFIRMED 7 Copy with citationCopy as parenthetical citation