Ex Parte Eibeck et al

Board of Patent Appeals and Interferences

May 31, 2011

11815723 (B.P.A.I. May. 31, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/815,723 08/07/2007 Peter Eibeck 12810-00543-US 1897
30678 7590 05/31/2011
CONNOLLY BOVE LODGE & HUTZ LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
SHEH, ANTHONY H
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
05/31/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER EIBECK, JOCHEN ENGELMANN,
RALF NEUHAUS, MICHAEL FISCHER, and
BERND BRUCHMANN
__________

Appeal 2010-011785
Application 11/815,723
Technology Center 1700
____________

Before MICHAEL P. TIERNEY, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-6, and 8-19. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b). Oral arguments were heard in this appeal on May 13, 2011.
We AFFIRM.
Appellants’ invention is said to be directed to a thermoplastic molding
compositions having good flowability with simultaneously good mechanical
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properties and also distinctly improved thermal aging resistance (Spec.
17:12-14).
Claim 1 is illustrative:
1. A thermoplastic molding composition comprising
A) from 10 to 99% by weight of at least one
thermoplastic polyamide,
B) from 0.1 to 5% by weight of at least one
polyethyleneimine homo- or copolymer,
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 0 to 60% by weight of further additives,
the sum of the percentages by weight of components A)
to E) adding up to 100%.

Appellants appeal the following rejections:
1. Claims 1-3, 5, 6, 8-10, 13, 14, 16, 17, and 19 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Dames (US 2003/0195296
A1 published Oct. 16, 2003) in view of Gittinger (US 2002/0077403
A1 published June 20, 2002).
2. Claims 4, 11, 12, 15, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dames in view of Gittinger and Götz (US
Patent 5,468,530 issued Nov. 21, 1995).

Regarding rejection (1), we select claim 1 as representative because
Appellants’ arguments focus on claim 1 (App. Br. 3-6).
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Regarding rejection (2), Appellants do not specifically argue any claim
under rejection (id. at 6). Rather, Appellants simply argue that Götz does
not cure the deficiency of Dames1 (id.). Accordingly, claims 4, 11, 12, 15,
and 18 of rejection (2) will stand or fall with our assessment of claim 1.

ISSUES
1. Did the Examiner reversibly err in determining that the disclosures of
Dames and Gittinger would have rendered obvious the subject matter
of claim 1 that includes a thermoplastic composition containing
polyamide and a copper-containing stabilizer? We decide this issue in
the negative.
2. Does Appellants’ evidence of “improved results” in flow properties,
thermal behavior, and mechanical properties of the polymer
composition of claim 1 establish that the results are unexpected such
that Appellants’ evidence of nonobviousness outweighs the
Examiner’s evidence of obviousness? We decide this issue in the
negative.

1 Appellants argue the rejection as if Gittinger is not part of the rejection of
claims 4, 11, 12, 15, and 18 (App. Br. 6). Appellants note that the Final
Office Action dated September 1, 2009 does not include Gittinger as part of
the rejection (Reply Br. 1 n.1). The omission of Gittinger from the second
rejection in the Final Office Action is harmless error because the Non-Final
Office Action dated February 27, 2009 and the Answer all include Gittinger
as part of the rejection of claims 4, 11, 12, 15, and 18 (Non-Final Office
Action 6; Ans. 6). Accordingly, Appellants were fully apprised of the prior
art applied in the rejection.
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FINDINGS OF FACT AND ANALYSES
Issue (1)
The Examiner finds that Dames teaches all the limitations of claim 1,
except for the copper-containing stabilizer (Ans. 3-4). The Examiner finds
that Dames teaches that a polyamide may be used as the thermoplastic
polymer of the composition (id. at 3). The Examiner finds that Gittinger
teaches using a thermal-aging resistant polyamide composition having a
copper-containing stabilizer that protects the composition from thermal-
oxidative aging (id. at 4). Citing In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980), the Examiner concludes that it would have been obvious to
combine the thermal resistant polyamide compositions of Dames and
Gittinger to form a third thermal-aging resistant polymer composition
(Ans. 4).
Appellants argue that Dames and Gittinger fail to describe or suggest
the claimed thermoplastic molding composition (App. Br. 4). Appellants
contend that Dames provides no guidance or suggestion on selecting any
particular polyamide in the claimed amounts as the thermoplastic polymer
portion of the composition or using copper-containing stabilizers (id. at 5).
Appellants contend that Dames does not teach that polyamides are preferred
thermoplastic polymers in the composition such that selection of a
polyamide as the thermoplastic part of the composition would have been
merely a fortuitous selection and would not have been obvious2 (Reply
Br. 2).

2 Appellants cited to EP 1065236, which is discussed on page 1 of their
Specification, as demonstrating that molding compositions comprised of
polyamide, polyethyleneimine and oligocarboxylic acids did not possess
adequate thermal aging stability (Reply Br. 2). However, the only copy of
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Contrary to Appellants’ argument, Dames discloses that preferred
thermoplastic polymer includes polyamides (Dames, paras. [0020] and
[0085] to [0095]). Dames plainly teaches that polyamides are preferred
thermoplastic materials for use in Dames’ composition.
Appellants further argue that Gittinger fails to teach using
polyethyleneimine (PEI) in combination with the copper-containing
stabilizer system such that there is no apparent reason to combine the
disclosures of Dames and Gittinger to arrive at the claimed invention (App.
Br. 5-6).
Appellants’ arguments attack the references individually instead of
properly addressing what the combined teachings of the references would
have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is . . . what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”). Therefore, that Gittinger does not teach PEI as part of
Gittinger’s composition is not dispositive because Dames teaches the
combination of polyamide and PEI.
Appellants’ allegation that Gittinger’s failure to teach PEI
demonstrates that there is no reason to combine Gittinger with Dames, fails
to address specifically the Examiner’s reason for combining the teachings of
the references which is based on Gittinger and Dames each teaching
polyamide compositions useful for the same purpose (i.e., thermal

EP 1065236 present in the record is in the German language. Appellants’
counsel indicated during oral argument that no English language translation
is of record. Lacking an English translation in the record, we are not in a
position to credit Appellants’ attorney argument that the identified molding
compositions lack adequate thermal aging stability.
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resistance) such that it would have been obvious to combine the two
compositions to arrive at a third composition useful for the same purpose
(Ans. 4).
The Examiner did not reversibly err in determining that the teachings
of Dames and Gittinger taken as a whole would have rendered obvious the
subject matter of claim 1. We now consider the Examiner’s treatment of
Appellants’ evidence of “improved results.”

Issue (2): Unexpected Results
Appellants allege that the declaration of Peter Eibeck3 (hereinafter the
“Eibeck Declaration”) demonstrates unexpected results in regard to thermal
aging, flowability, and mechanical properties (Reply Br. 3). Appellants
contend that the evidence in the Eibeck Declaration is commensurate in
scope with the claims (id. at 4).
The Examiner finds that Appellants’ evidence fails to demonstrate
that the improvement in thermal aging, flowability, and mechanical
properties is unexpected (Ans. 9). The Examiner agrees with the conclusion
drawn by Appellants regarding the improvement in flow behavior and
thermal stability of the composition presented in the Eibeck Declaration, but
in light of the teachings of Gittinger and Dames with regard to PEI and the
copper-containing stabilizer, the Examiner views the obtained results as
being expected (id.). The Examiner further finds that the evidence is not

3 The photocopy of the Eibeck Declaration of record included columns of
blacked-out data. Appellants’ counsel provided the panel with a color copy
of the Eibeck Declaration at the hearing that showed the data was contained
in color-shaded columns that apparently did not photocopy well. We
reference the color copy of the Eibeck Declaration provided by Appellants in
this Decision. The color copy will be entered in the official record.
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fully comparable to the claimed invention because the evidence is not
commensurate in scope with the claims that include a vast number of
compositions (id.).
We agree with the Examiner.
We begin by noting that declarant Eibeck merely indicates that the
results obtained are “improved” and not that the results are unexpected.
Indeed, the opening Brief merely argued and the Eibeck Declaration merely
states that the evidence shows “improved results” (App. Br. 6; Eibeck
Dec. 4). The only allegation that the results obtained were not merely an
improvement but an unexpected improvement appears on page 3 of the
Reply Brief as attorney argument. Appellants have the burden of
establishing the results obtained are unexpected. In re Nolan, 553 F.2d
1261, 1267 (CCPA 1977).
We agree with the Examiner that the teachings of Dames and
Gittinger as a whole disclose that copper-containing stabilizers and
polyethyleneimine polymers or copolymers provide improved thermal
stability to molding compositions (Ans. 9; Dames para. [0005]; Gittinger
paras. [0001] and [0007]). Therefore, the applied prior art indicates that
when a copper-containing stabilizer and polyethyleneimine are present in a
molding composition, an improvement in thermal stability and thus aging
would have been expected. These prior art disclosures support that the
resulting improvement in thermal aging shown in the Eibeck Declaration
would have been the expected result.
Though the Dames reference is silent regarding the effect of
polyethyleneimine on the flowability of the composition, we note that
Dames’ molding composition contains polyethyleneimine, the compound
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that Appellants allege improves flowability of the mixture, in an amount that
overlaps Appellants’ claimed range. Accordingly, it is reasonable to expect
that the polyethyleneimine in Dames’ composition would impart the flow
property to the molding composition. In re Papesch, 315 F.2d 381, 391
(CCPA 1963) (“A compound and all of its properties are inseparable; they
are one and the same thing.”).
The Examiner further finds that the evidence fails to establish
unexpected results for the claimed invention because the evidence is not
commensurate in scope with the claimed invention. Indeed, only Example
B1 in the Eibeck Declaration which contains 1 wt.% polyethyleneimine and
0.2 wt.% copper-containing stabilizer is within the scope of the claimed
invention. However, as correctly stated by the Examiner, claim 1 includes a
vast array of compositions that contain, inter alia, from 0.1 to 5%
polyethyleneimine and from 0.05 to 3% copper-containing stabilizer.
Appellants have not established the “improved” results are unexpected and
occur over the entire claimed polyethyleneimine and copper-containing
stabilizer ranges. In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980).
Moreover, Appellants have failed to provide an adequate basis that other
embodiments falling within the scope of the claim will behave in the same
manner as the tested compositions. In re Kao, No. 2010-1308, 2011 WL
1832537, at *8 (Fed. Cir. May 13, 2011).
On this record, we agree with the Examiner that the preponderance of
the evidence weighs in favor of obviousness. For the above reasons, we
affirm the Examiner’s § 103 rejections over Dames in view of Gittinger and
Dames in view of Gittinger and Götz.

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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.

ORDER
AFFIRMED

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