Ex Parte Desbois et al

Patent Trial and Appeal Board

Jan 9, 2017

13128502 (P.T.A.B. Jan. 9, 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.
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%.
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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”).
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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
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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
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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
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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
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