Ex Parte Eckel et al

Board of Patent Appeals and Interferences

Sep 28, 2007

09911268 (B.P.A.I. Sep. 28, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS ECKEL,
NICOLAUS JANKE, UWE PEUCKER, ANDREAS SWIDEL, and
DIETER WITTMANN,
APPELLANTS
____________
Appeal 2007-4316
Application 09/911,2681
Technology Center 1700

____________

Decided: September 28, 2007
____________

Before RICHARD E. SCHAFER, TEDDY S. GRON, and MARK
NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application filed 23 July 2001. The real party in interest is listed as Bayer
MaterialScience AG. (Appeal Brief filed 7 February 2005 ("Br.") at 2.)
Appeal 2007-4316
Application 09/911,268

A. Introduction
Applicants ("Eckel") appeal under 35 U.S.C. § 134 from the final
rejection of claims 1–17, all of the pending claims, as unpatentable under 35
U.S.C. §§ 102(b), (e), and 103(a) in view of prior art. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
The subject matter on appeal relates to flame resistant polycarbonate
compositions characterized by a low quantity of a particular
organophosphate impurity.
Claim 1 is representative and reads as follows:
1. A polycarbonate composition comprising a phosphorus
compound represented by the general formula (I),
{The figure from claim 1 is reproduced below:}2

{The Figure is said to show an oligophosphate compound}
in which
R1, R2, R3 and R4 are each independently selected from
the group consisting of (i) C1 to C8 alkyl optionally
substituted by halogen, (ii) C5 to C6 cycloalkyl, (iii) C6 to
C10 aryl and (iv) C7 to C12 aralkyl, each of (ii), (iii) and
(iv) being optionally and independently substituted by at
least one of halogen and C1 to C4 alkyl;

2 The text in curly braces before and after Figures and Tables in this
Decision is provided to ensure compliance with section 508 of the U.S.
Rehabilitation Act for publication of this Decision on the USPTO website
pursuant to the Freedom of Information Act. It is not part of the Decision.
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Appeal 2007-4316
Application 09/911,268

n is 0 or 1
q is 0, 1, 2, 3, or 4;
N is 0.1 to 5
R5 and R6 are each independently selected from the group
consisting of C1 to C4 alkyl and halogen; and
Y denotes isopropylidene,
wherein the phosphorous compound represented by general
formula (I) comprises less than 1 wt% of isopropenyl phenyl
phosphate, based on the weight of said phosphorus compound
represented by formula (I).
(Br. Claims App'x. at 12.)
The Examiner has maintained the following rejections3:
(1) Claims 1–17 have been rejected under 35 U.S.C. § 102(e),
alternatively under § 103(a) in view of Eckel 9304. (Answer at 3.)
(2) Claims 1–17 have been rejected under 35 U.S.C. § 102(e) in
view of Gaggar5.
(3) Claims 1–17 have been rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Eckel 930 and Castelnuovo6.

3 Examiner's Answer mailed 18 January 2006 ("Answer").
4 Thomas Eckel et al., Flame and Stress Crack Resistant Polycarbonate
Molding Compositions, U.S. Patent 6,569,930 B1, issued to issued 27 May
2003, assigned to Bayer AG.
5 Satish Kumar Gaggar and Fuh-Cheng Fred Chen (General Electric
Company), Flame Retardant Polycarbonate Blends Comprising Graft
Copolymers, EP 0 771 851 A2, published 5 July 1997.
6 Lucio Castelnuovo and Andrea Mattiussi, Impact Resistant Polyesters
Comprising a Crosslinked Rubbery Polymer, U.S. Patent 3,919,353, issued
11 November 1975.
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Appeal 2007-4316
Application 09/911,268

B. Findings of Fact (FF)
The 268 Application
1. Application 09/911,268 ("268 Application") was filed on 23 July
2001, claiming the benefit under 35 U.S.C. § 119(a) of German application
100 36 057.2, filed 25 July 2000.
2. According to the inventors, polycarbonate compositions with
oligophosphates based on bisphenol A as flame retardant additives are well
known but suffer from increasing deterioration of mechanical properties and
yellowing under prolonged thermal stress. (268 Application at 1–2.)
3. The inventors disclosed that polycarbonate compositions comprising
oligophosphate compounds that contain less than 1 wt% of
isopropenylphenyl phosphate ("IPP") compared to the total phosphorus
compound employed exhibit and maintain good mechanical properties and
high heat resistance under prolonged thermal stress. (268 Application
at 2:18–26.)
4. According to the inventors, commercially available oligophosphates
based on bisphenol A contain IPP as an impurity due to breakdown during
synthesis, transportation, or storage, up to about 10 wt%. (268 Application
at 3:1-9.)
5. The inventors disclose that the IPP content may be kept low by
maintaining relatively low reaction temperatures, short reactor residence
times, and suitable catalysts. (268 Application at 21:26–31.)
6. Alternatively, the inventors state that prior to use as a flame retardant,
IPP samples may be subjected to art-recognized purification and separation
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Appeal 2007-4316
Application 09/911,268

processes such as chromatography or solvent extraction. (268 Application
at 22:1–5.)
7. A particular example of an oligophosphate is shown in formula (V), in
which R1, R2, R3 and R4 are all phenyl, n and q are 0, and N, the
oligomerization index, is 1.1. (Y, isopropyldene, is -C(CH3)2-).
(268 Application at 27:10–19.)
8. The inventors provide in Table 2 a comparison of the physical
properties of a sample of polycarbonate containing an oligophosphate having
9 wt% IPP with an otherwise identical polycarbonate containing an
oligophosphate having 0.1 wt% IPP. (268 Application at 30.)
9. The properties are said to have been determined according to various
standards listed in the 268 Application at 29.
10. According to Table 2, the polycarbonate sample having less IPP has a
higher notched impact strength, higher heat resistance, higher flame
resistance, and exhibits less yellowing upon aging. (268 Application at 30.)
Eckel 930
11. Eckel 930 describes flame resistant polycarbonate molding
compositions. (Eckel 930 at 2:26–3:11.)
12. The Eckel 930 compositions comprise, inter alia, component D that is
an oligophosphate comparable to the oligophosphates described in the
268 Application, but for the limitation on the amount of IPP (Id. at 8:1–54).
13. In particular, Eckel 930 oligophosphate D.1 is within the scope of
formula (I) of the 268 Application, and is nearly the same as the
oligophosphate of formula (V) used in the example of the 268 application
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Application 09/911,268

(the oligomerization index N is 0.85 in D.1 versus 1.1 in formula (V) of the
268 Application). (Eckel 930 at 12:15–28.)
14. Polycarbonate compositions taught by Eckel 930 comprise an
additional component F, which is finely divided inorganic compounds such
as AlO(OH) (aluminum oxide hydroxide). (Eckel 930 at cols. 9–10.)
15. According to Eckel 930, component F "equalizes" the disadvantage of
poorer flame proofing caused by the use of oligophosphate D.1. (Eckel 930
at 13:Table 1 and ll. 45–58.)
16. Eckel 930 does not describe how oligophosphate D.1 was prepared or
whether it was purified.
Gaggar and Castelnuovo
17. We do not find it necessary to describe Gaggar or Castelnuovo
separately.
The Rejections and Counterarguments
18. The Examiner finds that Eckel 930 anticipates or renders obvious the
claimed subject matter because all the components are taught. (Answer
at 4.)
19. In particular, the Examiner finds that phosphorus compound D.1
meets oligomer formula (I). (Answer at 4.)
20. The Examiner reasons that "[s]aid compound D.1 has a definite
chemical structure and thus is [free] from [/] of other homolog or derivative.
Therefore, said compound D.1 meets the instant phosphorous compound
having less than 1 wt% of isopropenyl phenylphosphate." (Answer at 4.)
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Application 09/911,268

21. In a separate rejection, the Examiner finds that Castelnuovo teaches
graft polymers having a graft base with Tg less than 10°C, and concludes
that the claimed subject matter would have been obvious to one of ordinary
skill in the art because Eckel 930 cites Castelnuovo's teachings to use such
graft polymers. (Answer at 5.)
22. The Examiner also finds that Gaggar teaches compositions within the
scope of the 268 Application claims, the phosphate oligomer being taught
at 6:1–10, with the bisphenol-A moiety a preferred R9 connecting group.
(Answer at 5.)
23. The Examiner finds that "[said preferred bisphenol A as R9 does not
include the instantly recited isopropenylphenyl phosphate," and finds that
the claimed subject matter lacks novelty over Gaggar. (Answer at 5.)
24. Applicants argue that Eckel 930 does not teach or suggest that there
should be less than 1% IPP in its phosphorus compositions or the
polycarbonate, and that the declaration by Dr. Eckel, the inventor, shows
that commercially available phosphates corresponding to their formula (I)
had more than 1% IPP. (Br. at 5.)
25. Applicants do not argue for the separate patentability of any claim on
appeal.
26. The Examiner responds that Eckel 930 does not teach that
compound D.1 was commercially available, in contrast to compounds D.2
and D.3. (Answer at 5–6.)
27. The Examiner points further to a commercial product, NcendX P-30,
identified by Dr. Eckel, that has a low IPP content, and concludes that Dr.
Eckel's declaration is entitled to little weight. (Id. at 6.)
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Appeal 2007-4316
Application 09/911,268

28. Moreover, the Examiner points out that the Eckel declaration did not
show that the Eckel 930 D.1 phosphorus compound contained less
than 1 w% IPP. (Id.)
C. Discussion
"A claim is anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference." Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374, 58 USPQ2d 1508, 1512
(Fed. Cir. 2001). "In general, a limitation or the entire invention is inherent
and in the public domain if it is the 'natural result flowing from' the explicit
disclosure of the prior art." Schering Corp. v. Geneva Pharm., Inc., 339
F.3d 1373, 1379 (Fed. Cir. 2003).
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990). Our reviewing court has long accepted the
practice of making rejections under § 102 or § 103 in the alternative as long
as the applicant is fully apprised of the grounds of rejection. Id. at 708 n.2,
15 USPQ2d at 1658 n.2.
Obviousness is a legal conclusion based on underlying findings of
fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1778 (Fed.
Cir. 2000). It follows that if a limitation of a claim is neither met nor
suggested by the prior art, the conclusion of obviousness cannot stand.
Applicants have chosen to attack only the critical part of the
Examiner's rejections, i.e., the Examiner's findings that the disclosures of a
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Appeal 2007-4316
Application 09/911,268

particular chemical structure for an oligophosphate in the Eckel 930 and
Gaggar specifications indicate that IPP is present as an impurity at less than
1 w%, as required by Applicants' claims. (Answer at 4 and 5.) Because
Applicants have not made any arguments regarding the separate patentability
of any of the claims, we need not address the claims separately. Moreover,
arguments not made in the principal appeal brief have been waived.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner has not offered any other explanation of why it appears
that Eckel 930 and Gaggar describe compositions that are the same or
substantially the same as the presently claimed subject matter. In particular,
the Examiner has not directed our attention to any disclosure in either
Eckel 930 or in Gaggar regarding the synthesis of oligophosphates or their
purification prior to use as a flame retardant. Nor has the Examiner directed
our attention to any properties of the oligophosphate or the polycarbonate
blends that might provide reason to presume that the prior art compositions
describe or reasonably would have suggested Applicants' claimed subject
matter. Thus, we conclude that the Examiner's theory of the case must be
based on inherency.
Anticipation by inherency, however, is proven only if the allegedly
inherent property is inevitably present in the prior art. Applicants argue (Br.
at 5), that Dr. Eckel's declaration shows that commercially available
bisphenol A diphenylphosphate, which is said to be the common name for
the compound of formula (V) of the 268 Application, can contain as much as
15 w% IPP. (Br., Evidence App'x. at 4.) Accordingly, it is not inevitable
that compound D.1 contained less than 1 w% IPP. The presence of IPP in
commercially available oligophosphates within the scope of Applicants'
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Application 09/911,268

formula (I) is evidence that regular users of such oligophosphates either do
not need to worry about the presence of IPP, or, if they do, they routinely
purify the oligophosphates before use. The Examiner has not, however,
directed our attention to any evidence in Eckel 930, Gaggar, or other prior
art of record, that the presence of IPP was recognized to be a problem. The
silence of a reference, particularly as to a substance that is apparently an
impurity arising in the synthesis of a component used in the reference, is
very weak evidence—to the extent that it is evidence at all—that the
impurity is absent. On the present record, Applicants have come forward
with sufficient evidence to outweigh the Examiner's weak support for
anticipation.
Castelnuovo does not address the IPP content of phosphate fire-
retardant compositions, so it cannot cure the defect of Eckel 930. Thus the
Examiner's case for obviousness also must fail.
Accordingly, we REVERSE the Examiner's rejections.
In the event of further prosecution, we invite the Examiner and
Applicants to consider the Table at column 13 of Eckel 930. The Table
appears to show that the polycarbonate compositions that contain
oligophosphate D.1, namely, composition 1 (comparative) and
compositions 4 and 5, have Vicat B heat deflection values and notch impact
strength ak comparable to values obtained by Applicants (see Table 2 in the
Specification at 30.) These data may suggest that IPP is present at a low
level, e.g., at less than 1 w%. On the other hand, Table 2 also shows that the
flame resistance (UL 94V 1.6 mm) is superior for Examples 4 and 5 and
inferior for comparative example 1. The Eckel 930 inventors attribute this
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Appeal 2007-4316
Application 09/911,268

superiority to the presence of the finely divided inorganic material F, which
is absent from comparative example 1. According to Eckel 930, component
F counteracts the deleterious effects of the organophosphate. (FF 16;
Eckel 930 at 13:45–58.) Moreover, the present inventors attribute a flame
resistance of V-1 to the presence of 9 w% IPP. (Specification at 3:14–16.)
Thus, the flame resistance value for Comparative example 1 in Eckel 930
may support a conclusion that IPP is present at a significant level, i.e., at a
level higher than 1 w%. We also recognize—as apparently did the Examiner
(Answer at 6)—that Dr. Eckel did not say what the IPP content of the
Eckel 930 D.1 compound was. This is a curious omission, since Dr. Eckel
was the first-named inventor on the Eckel 930 patent and presumably knows
or is in a position to determine the IPP content and the source of the D.1
compound. In view of these various facts that weigh for and against the
level of IPP in the Eckel 930 reference, and the incomplete record, we
decline to exercise our discretion under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection. Instead, we leave the development of these issues to the
Examiner and Applicants in the first instance.
D. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 1–17 under 35 U.S.C.
§ 102(e), alternatively under 35 U.S.C. § 103(a) over Eckel 930 is
REVERSED;
FURTHER ORDERED that the rejection of claims 1–17 under
35 U.S.C. § 102(b) over Gaggar is REVERSED; and
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Appeal 2007-4316
Application 09/911,268

FURTHER ORDERED that that the rejection of claims 1–17
under 35 U.S.C. § 103(a) in view of the combined teachings of Eckel 930
and Castelnuovo is REVERSED.
REVERSED

SCHAFER, Administrative Patent Judge, dissenting.

I would affirm the rejections.
Applicants have failed to show that the specific compositions relied
upon by the examiner do not have less than 1% IPP. The fact that the
reference is silent on the presence of IPP provides a sufficient basis to place
on applicants the burden of presenting evidence that the relevant Eckels 930
compositions had 1% or more IPP .

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