Ex Parte Eibeck et alDownload PDFBoard of Patent Appeals and InterferencesMay 31, 201111815723 (B.P.A.I. May. 31, 2011) Copy Citation 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 Appeal 2010-011785 Application 11/815,723 2 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). Appeal 2010-011785 Application 11/815,723 3 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. Appeal 2010-011785 Application 11/815,723 4 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 Appeal 2010-011785 Application 11/815,723 5 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. Appeal 2010-011785 Application 11/815,723 6 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. Appeal 2010-011785 Application 11/815,723 7 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 Appeal 2010-011785 Application 11/815,723 8 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. Appeal 2010-011785 Application 11/815,723 9 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 bar Copy with citationCopy as parenthetical citation