13196028 (P.T.A.B. Aug. 5, 2016)

Ex Parte Jain et al

Patent Trial and Appeal BoardAug 5, 2016

13196028 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/196,028 08/02/2011 123223 7590 08/09/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Sachin Jain 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. 074008-1253-US (286196) 3076 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 08/09/2016 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 SACHIN JAIN, SAMBER NALA WADE, ANDREAS WOLLNY, ANGELIKA HOMES, GERHARD LEITER, and MOTONORI Y AMAMOT0 1 Appeal2014-003743 Application 13/196,028 Technology Center 1700 Before ROMULO H. DELMENDO, MARK NAGUMO, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appellants timely appeal under 35 U.S.C. Â§ 134(a) from a Rejection2 of claims 12, 13, 15, 16, 23, and 24. We have jurisdiction. 35 U.S.C. Â§ 6(b). We affirm substantially for reasons well-stated by the Examiner. 1 The real party in interest is identified as BASF SE. (Appeal Brief, filed October 28, 2013 ("Br."), 2.) 2 Office Action mailed April 29, 2013 ("Final Rejection"; cited as "FR."). Appeal2014-003743 Application 13/196,028 OPINION A. Introduction3 The subject matter on appeal relates to "the use of thermoplastic molding compositions for producing long-fiber-reinforced pellets and to the pellets thus obtainable." (Spec. 1, 11. 16-17.) The pellets produced are said to have improved mechanical properties and impact resistance. (Id. at 1, 11. 36 and 42.) Representative Claim 12 reads: A long-fiber-reinforced pellet material obtainable from a thermoplastic molding composition comprising A) from 10 to 89% by weight of a polyethylene terephthalate or polybutylene terephthalate, B) from 10 to 60% by weight of a fibrous reinforcing material composed of glass fibers with a fiber length of from 2 to 24 mm, C) from 1 to 20% by weight of at least one polyester based on aliphatic and aromatic dicarboxylic acids and on an aliphatic dihydroxy compound, wherein component C) is a copolymer of: C1) from 40 to 60% by weight, based on the total amount of components C1) and C2), of at least one 3 Application 13/196,028, Long-fiber-reinforced polyesters, filed August 2, 2011, claims priority from Provisional Application 61/369,771, filed August 2, 2010. We refer to the '"028 Specification," which we cite as "Spec." 2 Appeal2014-003743 Application 13/196,028 succinic, adipic, or sebacic acid, or ester-forming derivatives thereof, or a mixture thereof, C2) from 40 to 60% by weight, based on the total weight of components C1) and C2), of terephthalic acid, or ester-forming derivatives thereof, or a mixture thereof, C3) from 98 to 102 mol%, based on components C1) and C2), of 1,4-butanediol or 1,3-propanediol, or a mixture thereof, as diol component, C4) from 0 to 1 % by weight, based on component C) of a branching agent, and Cs) from 0 to 2% by weight, based on component C) of a chain extender D) from 0 to 40% by weight of further additives, where the entirety of components A) to D) does not exceed 100% and wherein the pellet material has a L/D ratio of which is 2 to 8. (Claims Appendix, App. Br. 13-14 (emphasis added).) The Examiner maintains the following grounds of rejection:4 A. Claims 12, 13, 15, 16, 23, and 24 stand rejected under 35 U.S.C. Â§ 103(a)5 in view of Mattlach,6 Kadowaki,7 and PPG 3786 Datasheet. 8 4 Examiner's Answer mailed December 5, 2013 ("Ans."). 5 In the Final Rejection (FR 2-3), the Examiner relied on 35 U.S.C. Â§ 102(b) as the statutory basis for rejection, but it appears from context that this was a clerical error as it was corrected in the Examiner's Answer. 6 Claudia Mettlach et al, Polyester Mixture with Improved Flowability & Good Mechanical Properties, U.S. Patent Application Publication No. 2011/0196098 Al, published August 11, 2011 ("Mettlach"). The Mettlach reference claims priority to PCT/EP08/60626 which was filed August 13, 2008. 7 Ryosaku Kadowaki et al, Fiber-Reinforced Thermoplastic Resin Pellets & Manufacturing Method Thereof, U.S. Patent No. 6,620,507 B2, issued September 16, 2003 ("Kadowaki"). 8 PPG Fiber Glass Europe for Chop VantageÂ® HP 3786 ("PPG 3786 Datasheet"). 3 Appeal2014-003743 Application 13/196,028 B. Claims 12, 13, 15, 16, 23, and 24 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting over claims 10-16, 19, and21-23 of co-pending U.S. Patent Application No. 12/673,180 in view ofKadowaki and PPG 3786 Datasheet. B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Rejection A. Claim 129 The Examiner finds that Mettlach discloses a mixture that "can ... be compounded and pelletized." (FR. 2 (citing Mettlach ,-i 150).) This particular mixture may include 64.5% polybutylene terephthalate (PBT), 30% glass fiber with a standard fiber length of 4.5 mm, and 5% semiaromatic polymer which corresponds to the recited copolymer. (FR. 2 (citing Mettlach Example 14, PPG 3786 Datasheet at 2); see also Mettlach ,-i,-i 162-168.) The Examiner also finds that Kadowaki teaches that when producing a pellet, the "preferable relation between the pellet length (L) and the pellet diameter (D)" or "L/D ranges from 1 to 6." (FR. 2 (citing Kadowaki at col. 7, 11. 1-3).) The Examiner notes that the L/D ratio from 1 to 6 is preferable because an "L/D of less than 1 results in vertical cracking of the pellet during pelletizing, causing fluffing of the reinforcing natural fiber, and results in difficulty in handling" whereas "an L/D larger than 6 [may] ... result[] in the breaking of the pellet .... " (FR. 2 (citing 9 Claims 13, 16, and 23 stand or fall with claim 12. (Br. 6.) 4 Appeal2014-003743 Application 13/196,028 Kadowaki at 7, 11. 3-10).) The Examiner accordingly concludes that it would have been obvious to a skilled artisan to apply the prior art L/D ratio when pelletizing Mettlach' s mixture "to prevent vertical cracking, reduced productivity, and breaking of the pellet." (FR. 2-3.) Appellants first argue that there lacks motivation to combine the references. (Br. 7) Appellants argue that Kadowaki discloses using natural discontinuous fibers instead of continuous fibers - such as the glass fibers used in Mettlach to make the reinforced resin. (Id.) "Obviousness does not require absolute predictability of success .... For obviousness underÂ§ 103, all that is required is a reasonable expectation of success." In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). Appellants in this case do not explain why a skilled artisan would have been dissuaded to apply Kadowaki's "preferable L/D" ratio to Mettlach's mixture based on the asserted "distinction between the fibers it teaches to use and the fibers Mettlach teaches to use." (Br. 7.) Appellants do not refute Kadwaki's teaching that glass fibers "have conventionally been used as reinforcing fibers[.]" (See id; see also Kadowaki at col. 1, 11. 26-30.) Appellants do not argue that the "preferable L/D" ratio would be different for pellets with glass fibers. (See Br. 7.) Appellants do not address the Examiner's finding that the L/D ratio is a function of the dimensions rather than the composition of the pellet. (See Ans. 7; see also Reply 4.)10 Appellants do not refute the Examiner's "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" - namely, the skilled artisan would have known to apply Kadowaki's L/D ratio to "to prevent vertical cracking, reduced productivity, and breaking of the pellet." (Ans. 7; See 10 Reply Brief filed February 5, 2014 ("Reply"). 5 Appeal2014-003743 Application 13/196,028 KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Jn re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).) We are not persuaded that the Examiner committed harmful error in this aspect of the obviousness analysis. Appellants next argue that the references fail to teach or suggest a "long-fiber-reinforced pellet material obtainable from [the] thermoplastic molding composition" recited in claim 12. (Br. 8.) While Appellants do not refute Mettlach's teaching to use glass fibers with a length of 4.5 mm to produce an end product pellet, Appellants argue that Mettlach does not teach the end product pellet having "a glass fiber length of 4.5 mm" because Mettlech uses a process to produce the end product pellet which is different from the process disclosed in the Specification. (Id; see also Reply 3 (arguing that Mettlach fails to teach or suggest the limitation at issue because it "makes no mention of any processing technique to make its molding compositions other than conventional techniques").) We are not persuaded that the Examiner erred harmfully here because Appellants' argument is directed toward a limitation that is not in the claims. See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Claim 12 does not recite a particular method to produce the pellet - all that claim 12 requires is that the pellet be "obtainable" from recited compounds. Moreover, claim 12 recites "a "long-fiber-reinforced pellet material" without specifying the particular length of the fiber contained within. To the extent that Appellants assert that the process in Mettlech uses fibers shorter than 4.5 mm, Appellants have not specified the particular length of the fiber included in the pellet, nor have Appellants 6 Appeal2014-003743 Application 13/196,028 explained why the recited range of "a fiber length of from 2 to 24 mm" which includes a fiber length at 2 mm is patentably distinguished over the prior art teachings. Appellants additionally argue that the recited pellet material exhibits unexpected results over those of the prior art. Appellants point to Table 2 of the '028 Specification (reproduced below) in support of this argument. Table 2: Effect of cornponent Con PBT re!nfon::e.d v1li!h SGF and, respectively, LGF r Components Example i E;;~~j;iÂ·;Â·Â·-Â·Â·rÂ·Â·--E~;,;;:;;;;i-eÂ·Â·Â·Â·Â·Â·rÂ·Â·--E~~~~i~;J,;;;Â·Â·Â·Â·Â·Â·Â·1 IJ~0 .. ~?x.~.:::~.!'.!L__________________ _ __ _:1_ __ ~~!!.~t:i ____ J ______ ?.~1-~:.'..e ........ L .... ::~--~~-'.:.'.r ...... J .............. ~ ............... I ! AH) 70 ! 60 j 70 l 60 i 1-=~i} ....... ~~~=:::::::::::::::::::::::::~:~==::::=:~ .............................. J ............................... J.-.--~.-.-.--~-----~~.?_-_-_-_-_-_-_-_-_-_-_-_-_]_Â·_-_-_-_-_-_-_-_-_-_-_-_)Â§_-_-_-_-_-_-_:Â·_-_-_-_-_] , comp Bn SGF 30 ! 30 l l i r--.~F-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.~_-.-.-.-.-.-.-.-.-.=_-.-.-.-.-.-.-.-.-.-.-.~_-.-.-.-.-.-.-.-.-.-.-.-.-.~ ~.-.-.-.-.-.-.-.-.-.-.-.-.-.~-.-.-.-.-.-.-.-.-.-.-.-.-.-.l-.-.-.-.-.-.-.-.-.-.-.~~~_-.-.-.-.-.-.-.-.-.-.-.l-.-.-.-.-.-.-.-.-.-.-.-.-.~-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.~r-Â·.-_::::Â·_::Â·_:-_:Â·~~'.~_:Â·_Â·_Â·_-_-_-_-_-_-_-_-_-_-1 ! Totai -~--~-~---- - 100 i 100 l 100 i 100 i 1------ ...................................................................................................... r ............................. t ...................... -------TÂ·------------_.~~~-----------l ! l\:J/m: