Ex Parte Fokken et al

Board of Patent Appeals and Interferences

May 16, 2007

10682951 (B.P.A.I. May. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEFAN FOKKEN and WALTHER REITH
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Appeal 2007-1565
Application 10/682,951
Technology Center 1700
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DECIDED: May 16, 2007
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Before TONI R. SCHEINER, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-5. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF CASE
The claimed invention relates to a composition for stabilizing halogen
containing polymers (Specification 3). Claims 1-5, all the pending claims,
stand rejected over prior art (Br. 1). The Examiner relies on the following
evidence of unpatentability:
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Drewes US 5,519,077 May 21, 1996
Reith CA 2,329,303 A1 Nov. 27, 1987
Sugawara JP 62273243A Nov.27, 1987
Yuichi JP 2000273259A Oct. 03, 2000
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Drewes (Answer 3).
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Reith in view of Sugawara or Yuichi (Answer 5).1
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Sugawara or Yuichi in view of Drewes or Reith (Answer 6).
Within each rejection, the claims stand or fall together because
separate arguments for patentability were not provided for any individual
claims. 37 C.F.R. § 41.37(c)(1)(vii). We select claim 1, the broadest claim
on appeal, to decide all the rejections. Claim 1 reads as follows:
1. A stabiliser composition comprising at least one
amino alcohol, at least one halogen-containing salt of an oxy
acid and at least one compound having a structural element of
the general formula I:

1 In a paper dated Jan. 7, 2007, the Examiner provided translations of the JP
publications upon which the Sugawara and Yuichi abstracts were based.
However, both the Examiner and Appellants continue to rely on the abstracts
in this proceeding. Accordingly, we base our decision on only the disclosure
in the abstract.
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wherein n is a number from 1 to 100,000, the radicals R4, R5, R1
and R2 are each independently hydrogen, an unsubstituted or
substituted linear or branched, saturated or unsaturated aliphatic
alkyl radical having from 1 to 44 carbon atoms, an
unsubstituted or substituted saturated or unsaturated cycloalkyl
radical having from 6 to 44 carbon atoms, an unsubstituted or
substituted aryl radical having from 6 to 44 carbon atoms or an
unsubstituted or substituted aralkyl radical having from 7 to 44
carbon atoms, or the radical R1 is an unsubstituted or
substituted acyl radical having from 2 to 44 carbon atoms or the
radicals R1 and R2 are linked to form an aromatic or
heterocyclic system and wherein the radical R3 is hydrogen, an
unsubstituted or substituted, linear or branched, saturated or
unsaturated aliphatic alkyl or alkylene radical or oxyalkyl or
oxyalkylene radical or mercaptoalkyl or mercaptoalkylene
radical or aminoalkyl or aminoalkylene radical having from 1 to
44 carbon atoms, an unsubstituted or substituted saturated or
unsaturated cycloalkyl or cycloalkylene radical or
oxycycloalkyl or oxycycloalkylene radical or
mercaptocycloalkyl or mercaptocycloalkylene radical or
aminocycloalkyl or aminocycloalkylene radical having from 6
to 44 carbon atoms or an unsubstituted or substituted aryl or
arylene radical having from 6 to 44 carbon atoms or an ether or
thioether radical having from 1 to 20 O or S atoms or O and S
atoms, or is a polymer that is bonded to the structural element
in brackets by way of O, S, NH, NR4 or CH2C(O), or the radical
R3 is so linked to the radical R1 that in total an unsubstituted or
substituted, saturated or unsaturated heterocyclic ring system
having from 4 to 24 carbon atoms is formed, wherein the
stabiliser composition is zinc-free.

OBVIOUSNESS OVER DREWES
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Drewes (Answer 3).

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Findings of Fact
1. Drewes teaches polyvinyl chloride (PVC) compositions which have been
stabilized by epoxide compounds, perchlorates, and antioxidants (Drewes,
col. 1, ll. 3-5).
2. Example 33 (Drewes, col. 25, l. 55 to col. 26, l. 20 (Table IX)) describes
a composition containing NaClO4 (sodium perchlorate), Irgastab A 70
(aminocrotonate), and THEIC (tris-hydroxyethyl isocyanurate).
3. Sodium perchlorate is a halogen-containing salt of an oxy acid
(Specification 8-9).
4. Irgastab A 70 (aminocrotonate) is a compound of general formula I
recited in instant claim 1.
5. THEIC is an amino alcohol. (Specification 7-8, 33).
6. The PVC stabilized composition can include further additives, such as
metal soaps (Drewes, col. 11, ll. 3-5).
7. “Metal soaps are principally metal carboxylates” (Drewes, col. 12, l. 60).
“Customary examples are stearates” (Drewes, col. 12, l. 62). “Preference is
given to calcium, magnesium, and zinc carboxylates” (Drewes, col. 13, 35-
37).
8. The composition described in Example 33 (Drewes, col. 25, l. 55 to col.
26, l. 20 (Table IX)) comprises zinc stearate (Drewes, col. 26, l. 6). We
refer to this composition as “composition 33.”
9. Drewes describes PVC stabilized compositions which contain zinc
stearate (Drewes, col. 24, ll. 35-47, Examples 19-22 in Table VI).
10. Drewes describes PVC stabilized compositions which do not contain
zinc stearate, including Examples 16-18 (Drewes, col. 24, ll. 20-25 (Table
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V)) and Example 23 (Drewes, col. 24, l. 60 to col. 25, l. 14 (Table VII);
Answer 7-8).
11. Based on the data in Table VIII, which includes compositions
containing zinc, Drewes states that the “addition of polyol [THEIC, an
amino alcohol] has a particularly favourable effect” (Drewes, col. 25, ll. 50-
55).
12. From the data in Table IX, which includes compositions containing zinc
stearate, Drewes concludes that the epoxide, antioxidant, perchlorate (the
halogen-containing oxy acid salt) and the polyol (THEIC, an amino alcohol)
“give particularly good stabilization” (Drewes, col. 26, ll. 22-23).
13. Based on the evidence as set forth in FF (Findings of Fact) 9-12, the
person of skill in the art would not have considered zinc as an essential
component of Drewes’s stabilizer composition.

Discussion
The issue in this rejection is whether it would have been obvious to
the person of skill in the art to have formulated a stabilizer composition as
recited in claim 1 comprising a halogen-containing salt of an oxy acid, a
compound of general formula I, and an amino alcohol, but which does not
contain zinc.
Appellants do not dispute the Examiner’s findings (Answer 4) that
Drewes describes a composition 33 for stabilizing PVC (Drewes, col. 25, l.
55 to col. 26, l. 20 (Table IX) (FF 1-5)) containing sodium perchlorate,
aminocrotonate, and THEIC, meeting the limitations of claim 1 for a
halogen containing salt of an oxy acid, a compound of general formula I, and
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an amino alcohol, respectively. However, Drewes’s composition 33 also
contains a zinc stearate. Appellants challenge the Examiner’s finding that it
would have been obvious to have prepared composition 33, but without zinc
(Br. 6).
An obviousness determination requires consideration of the entirety of
the disclosure for what it fairly suggests to the person of ordinary skill in the
art. In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 687 (Fed. Cir.
1986); In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 146-47 (CCPA
1976).
In this case, Drewes describes metal soaps as an optional additive to
its stabilizer compositions (Drewes, col. 11, ll. 3-5; col. 12, ll. 60 and 62;
col. 13, 35-37 (FF 6, 7)). Zinc stearate is an example of a metal soap
(Drewes, col. 12, l. 62; col. 13, 35-37; col. 26, l. 6 (FF 7, 8)). Both
compositions which contain zinc stearate (col. 24, ll. 35-47, Examples 19-22
(FF 9)) and which do not contain it (Drewes, col. 24, ll. 35-47; col. 24, l. 60
to col. 25, l. 14 (FF 10)) are disclosed by Drewes. Neither a metal soap, not
zinc stearate in particular, is described by Drewes as essential to stabilize
PVC. For example, for composition 33 which contains all three required
components of claim 1, and in addition zinc stearate, Drewes concludes that
perchlorate (the halogen-containing oxy acid salt) and the polyol (THEIC, an
amino alcohol) “give particularly good stabilization” (Drewes, col. 26, (ll.
22-23 (FF 12)). Drewes also states that the “addition of polyol [THEIC, an
amino alcohol] has a particularly favourable effect” (Drewes, col. 25, ll. 50-
55 (FF 11)). Zinc stearate is not characterized in these examples as essential
or as contributing to the composition’s stabilizer properties.
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Based on this evidence, we agree with the Examiner’s finding that the
disclosure of Drewes, when considered in its entirety, would have
reasonably suggested to a person of skill in the art stabilizer compositions
without zinc (Answer 8), including composition 33 without zinc stearate.
Accordingly, we conclude that the Examiner has set forth sufficient evidence
to establish prima facie obviousness of claim 1.
Appellants contend that Drewes teaches “zinc-containing compounds
are preferred for use in its composition. As such, one of skill in the art,
when considering . . . [Drewes] as a whole would clearly be motivated to use
zinc-containing compounds in the compositions taught therein.” (Br. 7.)
They also argue that Drewes
discloses a general composition and then provides an
exhaustive list of thousands of possible compounds that could
be optional ingredients. To arrive at the presently claimed
invention, the Examiner must pick and choose from the
exhaustive list of optional ingredients at least one amino
alcohol and at least one compound having a structural element
according to the general formula I, all the while specifically
ensuring the composition is free of zinc.
(Br. 9.)
Appellants’ arguments fail to take into account that Drewes describes
a composition which contains all three components required by the stabilizer
composition of claim 1. Picking and choosing is not required to arrive at
this composition because it is expressly disclosed by Drewes. The only
issue is whether it would have been obvious to have omitted the non-
essential and optional ingredient, zinc stearate. We do not find support for
Appellants’ contention that the skilled worker would have been motivated to
have selected zinc containing compounds. To the contrary, compositions
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without zinc are explicitly disclosed (Drewes, col. 24, ll. 20-25 (Table V));
col. 24, l. 60 to col. 25, l. 14 (Table VII) (FF 10); Answer 7-8). Zinc is not
described anywhere in the reference as essential. Moreover, other metal
soaps are also described as preferred, including calcium and magnesium
carboxylates (Drewes, col. 13, ll. 36-41(FF 7)). Thus, even were a metal
soap to be incorporated into the composition, Drewes describes calcium and
magnesium carboxylates as preferred alternatives.
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2-5 fall with claim 1 because separate reasons for their patentability were not
provided.

OBVIOUSNESS OVER REITH IN VIEW OF SUGAWARA OR YUICHI
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Reith in view of Sugawara or Yuichi (Answer 5).
Findings of Fact
1. Reith describes a stabilizer composition for halogen-containing
thermoplastic resins comprising “(a) calcium hydroxide and/or calcium
oxide” and “(b) a hydroxyl group-containing isocyanurate” (Reith, p. 3).
2. A “particularly preferred” isocyanurate is THEIC (Reith, p. 4).
3. THEIC is an amino alcohol (Specification 7-8).
4. In addition to the calcium compound and the isocyanurate, the stabilizer
“may contain at least one further component . . . selected from” a list of
thirteen classes of compounds (Reith, p. 4-7).
5. Aminocrotonic acid is one of the listed thirteen components (Reith, p. 6).
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6. Aminocrotonic acid is a compound of general formula I recited in instant
claim 1.
7. Perchlorate compounds are one of the listed thirteen classes of
components (Reith, p. 7).
8. Perchlorate (ClO4) compounds are halogen-containing salts of oxy acids
(Specification 8-9).
9. Examples A (Reith, p. 8) and B (Reith, p. 10) show compositions
containing THEIC, an amino alcohol, but not with a compound of general
formula I or a halogen-containing salt of an oxy acid.
10. The Sugawara and Yuichi abstracts each “teach stabilizing compositions
for PVC polymers that comprise in part: 1) B[eta]-aminocrotonate
compounds, 2) tris(hydroxyethy1) isocyanurate, 3) lubricants, and 4) other
optional adjuvants” (Answer 6).
11. Beta-aminocrotonate is a compound of general formula I recited in
instant claim 1.
12. Tris(2-hydroxyethyl) isocyanurate is THEIC which is an amino alcohol.
(Specification 7-8).
13. The abstracts do not describe zinc in the stabilized PVC compositions.

Discussion
The Examiner bears the initial burden of showing unpatentability. See,
e.g., In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The Examiner contends that “[i]t would have been obvious to one
having ordinary skill in the art to use the broad disclosure of Reith et al as
strong motivation to actually make a stabilizing composition that comprises
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all of applicant’s claimed components since all of these components are
directly disclosed . . . as being useful” in a stabilizer composition (Answer
5). The secondary references are cited for their teaching of different beta-
aminocrotonates as PVC stabilizers (Answer 6).
Here, the Examiner has relied upon hindsight to arrive at the
determination of obviousness. “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is rendered obvious.”
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
“One cannot use hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed invention.” In re Fine,
837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988). Reith
describes an amino alcohol as a PVC stabilizer, but lists the general formula
I compound and the halogen-containing oxy acid salt required by claim 1 in
a list of 13 optional classes of additional components. Sugawara and Yuichi
describe a composition which contains an amino alcohol and formula I
compound (Answer 6 (FF 10-12)), but does not disclose or suggest a
halogen-containing oxy acid salt. To establish obviousness, there must be
“an apparent reason to combine the known elements in the fashion” recited
in the claims. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, __, 82 USPQ2d
1385, 1396 (2007). The Examiner does not identify any reason in Reith,
Sugawara, or Yuichi which would have led the skilled worker to pick all
three components required by claim 1, and exclude zinc, to have produced
the claimed composition. Consequently, we reverse the rejection of claim 1-
5.
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OBVIOUSNESS OVER SUGAWARA OR YUICHI
IN VIEW OF DREWES OR REITH
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Sugawara or Yuichi in view of Drewes or Reith (Answer 6).2
The Examiner states that Sugawara and Yuichi teach “compositions
for PVC polymers that comprise in part 1) B[eta]-aminocrotonate
compounds [and] 2) tris(hydroxyethy1) isocyanurate” (Answer 6). These
correspond to the general formula I compound and the amino alcohol,
respectively, of instant claim 1. The Examiner contends that
[i]t would have been obvious to one having ordinary skill in the
art to use the disclosure of . . . [Drewes or Reith] as strong
motivation to actually add a perchlorate salt as an additional
components [sic] to the stabilizers compositions taught by
[Sugawara or Yuichi] . . . for the well known stabilizing
enhancements properties that perchlorate compounds give such
composition in their use as stabilizers for PVC polymers.
(Answer 7.)
Appellants argue:
If the Examiner wishes to use [Drewes] and [Reith] to
allegedly show motivation to include a halogen-containing salt
of an oxy acid in a polymer stabilizing composition, the Office
must also admit the disclosed teaching in each reference of
stabilizing compositions including zinc. Such zinc-containing
compositions clearly lead away from the presently claimed
zinc-free compositions. Moreover, the Examiner has in no way
provided any evidence of suggestion or motivation . . . to pick

2 The Examiner relied on either Drewes or Reith as a secondary reference.
In reaching our decision, we consider only Drewes.
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and choose all of the requisite components necessary to arrive
at the claimed composition while still remaining zinc-free.
(Br. 12.)
The Examiner has the better argument. Drewes already has been cited
for its teaching of a composition having three of the positively recited
components. Each of Sugawara and Yuichi teach compositions with two of
these components – a compound of general formula I and an amino alcohol
– but which do not contain zinc. These references thus reinforce what the
Examiner already concluded about Drewes: that zinc stearate is an optional,
non-essential ingredient. As found by the Examiner, Drewes also teaches
the benefit of perchlorate (e.g., Drewes, Abstract; col. 25, l. 23; col. 26, line
22) for PVC stabilization, providing a reason to have added it to the
compositions of Sugawara and Yuichi. Obviousness does not require
“precise teachings directed to the specific subject matter” of the claimed
invention. KSR, 82 USPQ2d at 1396. In view of our affirmance of the
rejection of claims 1-5 over Drewes alone, we agree with the Examiner that
there would have been reason for the person of skill in the art to have further
combined Sugawara or Yuichi with Drewes to have arrived at the claimed
invention. We affirm the rejection of claims 1-5 as obvious over Sugawara
or Yuichi in view of Drewes.
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TIME PERIOD
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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