Ex Parte Eipper et al

Patent Trial and Appeal Board

Aug 3, 2016

13446332 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/446,332 04/13/2012
123223 7590 08/05/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Andreas Eipper
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074008-0608-1-US-286088 5228
EXAMINER
SELLERS, ROBERT E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS EIPPER, BERND BRUCHMANN, CARSTEN WEIB,
MARK VOLKEL, KURT HOFLI, and CHRISTOPHE GINSS
Appeal2014-007274
Application 13/446,332
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
RAEL YNN P. GUEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1--4, 11-15, 18-20, 25, 26, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Clark. 1 See Appeal Brief ("Br.") 4; Advisory
Action, dated December 12, 2013. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention relates to a thermoplastic molding composition
comprising hyperbranched polycarbonate that exhibits "good flowability
1 US 5,510,398, issued April 23, 1996, to Angelika H. Clark, et al. ("Clark")
Appeal2014-007274
Application 13/446,332
together with good mechanical properties, in particular impact resistance. In
particular, the additive (or the additive combination) is intended neither to
exude nor to have any tendency to form mold deposit." Specification 2:37-
41. Claim 1 is illustrative:
1. A thermoplastic molding composition, comprising
A) from 10 to 98.9% by weight of at least one
thermoplastic polyester,
B) from 0.01 to 20% by weight of at least one
hyperbranched polycarbonate with an OH number of from 50 to
550 mg KOH/g of polycarbonate (DIN 53240, Part 2), and
wherein B) has a glass transition temperature of from -80 °C to
140 °c·
'
wherein a degree of branching of B) is from 10 to 99.9%,
and
wherein B) has both structural and molecular non-
uniformity;
D) [sic C)] from 0.1 to 40% by weight of a thermoplastic
polyester elastomer,
D) from 0 to 60% by weight of other additives,
where the total of the percentages by weight of
components A) to D) is 100%.
Br. 9, Claim App'x.
II. DISPOSITIVE ISSUE
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: does the evidence support the Appellants'
view that the Examiner erred in concluding that Clark teaches or suggests a
thermoplastic molding composition comprising a hyperbranched
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polycarbonate as recited in the claims? We answer this question in the
negative.
III. DISCUSSION
We adopt the Examiner's findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
The Examiner finds that Clark teaches a thermoplastic molding
composition comprising components A) through D), with the exception that
Clark is silent as to the OH number, glass transition temperature, degree of
branching, and structural and molecular non-uniformity of the taught
branched polycarbonate. Examiner's Answer ("Ans.") 2.
The Examiner finds that the prior art branched polycarbonate
"inherently possesses an OH number, glass transition temperature, degree of
branching as well as structural and molecular and non-uniformity" because
Clark's polycarbonate (1) uses the same tris-p-hydroxyphenyl ethane
branching agent at an equivalent concentration as the polycarbonate in the
Specification, (2) has the same viscosity as the polycarbonate in the
Specification, and (3) has a molecular weight that overlaps the molecular
weight recited in claim 2 and as the polycarbonate in the Specification. Id.
at 3. Further, the Examiner finds "no evidence of record differentiating
between the branched polycarbonate of Clark et al. and the claimed
hyperbranched polycarbonate." Id. at 4.
Where the Examiner has reason to believe that a claimed property
may, in fact, be an inherent characteristic of the prior art product, an
Examiner possesses the authority to require applicant to prove that the
subject matter shown to be in the prior art does not in fact possess the
property. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Fitzgerald,
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619 F.2d 67, 70 (CCPA 1980); Jn re Best, 562 F.2d 1252, 1254-55 (CCPA
1977). However, before applicant can be put to this burdensome task, the
Examiner must provide enough evidence or scientific reasoning to establish
that the Examiner's belief that the property is inherent is a reasonable belief.
Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BPAI 1990); Ex parte Skinner, 2
USPQ2d 1788, 1789 (BP AI 1986).
The Examiner's findings of fact and reasoning is sufficient to shift the
burden to Appellants to show that the polycarbonate of Clark does not have
the recited properties. This burden is not met by Appellants.
As an alternative position, the Examiner determined that the similarity
in viscosity, molecular weight and amount of branching agent used is the
"reason or suggestion for the prima facie obviousness of the branched
polycarbonate" and "impliedly suggests and provides the necessary direction
or incentive as well as a degree of predictability that the branched
polycarbonate" is obvious under 35 U.S.C. § 103(a) over the branched
carbonate of Clark. Ans. 7.
The Examiner has provided a sufficient rationale based on the
teachings of the prior art as to why one skilled in the art would have arrived
at the claimed invention. We are not persuaded otherwise by Appellants'
arguments.
Appellants contend that "[h ]yperbranched polycarbonates with the
claimed degree of branching cannot be produced by the reaction disclosed in
Clark. It is only possible to get some side arms into the polymer chain with
such a reaction." Br. 5. Appellants also contend that "[f]ollowing the
suggestions in Clark or using the particular LEXAN® polycarbonates
mentioned therein do not result in hyperbranched polycarbonates having the
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claimed combination of properties." Id. Appellants provide no evidentiary
support for these contentions or provide any explanation as to why this
would be the case in light of the substantially identical process for forming
the polycarbonate as explained by the Examiner. Attorney argument cannot
take the place of evidence in the record. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
Appellants point to additional advantages of using the recited
hyperbranched polycarbonate, namely, good flowability, good mechanical
properties, good impact resistance, and does not exude or have any tendency
to form mold deposit. Br. 4. Appellants contend that there is no
predictability of success in achieving these properties in the teachings of
Clark. Id. at 6-7.
Initially, these features are not recited in the claims and, thus, cannot
be the basis for patentability. See Constant v. Advanced Micro-Devices,
Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); In re Self, 671F.2d1344, 1348
(CCPA 1982) ("Many of appellant's arguments fail from the outset
because ... they are not based on limitations appearing in the claims.").
Appellants have not argued or produced any evidence to find that these
properties would have been unexpected to the skilled artisan. Moreover,
these arguments are also conclusory. Appellants provide no evidentiary
support for these contentions or provide any explanation as to why this
would be the case in light of the substantially identical process for forming
the polycarbonate as explained by the Examiner. Pearson, 494 F.2d at 1405.
The skilled artisan would have expected the properties of the thermoplastic
molding compositions to be substantially the same, including polycarbonates
obtained by a substantially identical process.
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The weight of the evidence taken as a whole supports the Examiner's
conclusion of obviousness under the law.
VI. CONCLUSION
On the record before us, we sustain the rejection maintained by the
Examiner.
VII. DECISION
The decision of the Examiner is AFFIRMED.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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