Ex Parte Jansen et al

Patent Trial and Appeal Board

Sep 27, 2016

13115315 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/115,315 05/25/2011
23413 7590 09/29/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Bernardus Johannes Paulus Jansen
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.
1 OSFS0006-US-CIP 3200
EXAMINER
SHAH,SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte BERNARDUS JOHANNES PAUL US JANSEN,
CHRISTIANUS JOHANNES JACOBUS MAAS,
and ANDRIES ADRIAAN VOLKERS
Appeal2015-001311
Application 13/115,315 1
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-16. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
1 This application is a Continuation-In-Part of application 12/787,448. The
parent application was the subject of Appeal No. 2013-001664 in which the
Board affirmed the Examiner's rejections.
Appeal2015-001311
Application 13/115,315
We AFFIRivL
Appellants' invention is directed to a transparent multilayer sheet
(Spec. ii 6).
Claim 1 is illustrative:
1. A multilayer sheet, comprising:
a first cap layer formed from a first cap composition comprising
polycarbonate and potassium perfluorobutane sulfonate;
a second cap layer formed from a second cap composition comprising
polycarbonate and potassium perfluorobutane sulfonate; and
a core layer formed from a core composition comprising polycarbonate
and without potassium perfluorobutane sulfonate, wherein the core layer is
disposed between the first cap layer and the second cap layer.
Appellants appeal the following rejections:
1. Claims 1, 2, 8, and 10-16 are rejected under 35 U.S.C. § 103(a), as
unpatentable over Agarwal (US 2007 /0048527 Al published March 1,
2007) in view of Davis (US 2007 /0231576 Al published October 4,
2007).
2. Claims 3-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Agarwal in view of Davis and Li (US 2008/0081860 Al published
April 3, 2008).
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Agarwal in view of Davis and the KSS product brochure (KSS-FR
ARiCHEM LLC, Non-Halogen Flame Retardant for Polycarbonate
andfor Combination FR Systems for PC/ABS).
2
Appeal2015-001311
Application 13/115,315
Appellants' arguments focus on the subject matter of claims 1, 3, 7, 8, 11
to 13, and 15 (App. Br. 4-13 2). Accordingly, claims not separately argued
will stand or fall with our analysis of the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
Rejections (1) and (3): Claims 1, 8, 11 to 13, and 15
The Examiner finds that Agarwal teaches a multilayer sheet
comprising layers of polycarbonate that include adding potassium
perfluorobutane sulfonate to the layers as a flame retardant (Final Act. 2).
The Examiner finds that Agarwal does not disclose a core layer formed of
polycarbonate disposed between the first and second layers as recited in
claim 1 (Final Act. 2). The Examiner finds that Davis teaches a multilayer
film with a tie layer 320 (i.e., a core layer) formed from a copolymer of
polycarbonate between two layers of the multilayer film in order to obtain
excellent adhesion between films and a haze value of less than 2% according
to ASTM D1003-00 (Final Act. 3--4). The Examiner finds that Davis does
not require use of potassium perfluorobutane sulfonate in the tie layer, so the
tie layer may be free of potassium fluorobutane sulfonate (Final Act. 3). The
Examiner concludes that one of ordinary skill in the art would have
combined Davis' haze value and tie layer in the multilayer sheet of Agarwal
in order to obtain excellent adhesion between films. (Final Act. 3--4 ).
Appellants argue that Davis does not positively teach that
perfluorobutane sulfonate is not present in the tie layer, so the combined
2 Throughout this decision we refer to the Supplemental Appeal Brief filed
July 24, 2014 to address issues with the initial Appeal Brief noted in the
Notice ofNon-Compliant Appeal Brief mailed June 24, 2014.
3
Appeal2015-001311
Application 13/115,315
teachings of Davis and Agarwal are missing a limitation in the claims (App.
Br. 5-6, 7, 8). This argument is not persuasive because Davis teaches that
perfluorobutane sulfonate "may" be present in the tie layer (Davis paras. 97
and 109). In other words, Davis teaches that the use of perfluorobutane
sulfonate is an optional component to the tie layer. Therefore, it would have
been within the skill of the ordinary artisan, and thus obvious, to omit the
perfluorobutane sulfonate from the tie layer.
Appellants argue that Agarwal is silent as to having the
perfluorobutane sulfonate in either of the layers 1 and 2 of the multilayer
laminate and not in a core layer (App. Br. 5). Appellants contend that
simply because Agarwal and Davis disclose that the perfluorobutane
sulfonate flame retardant "may" be present in the tie layer or cap layers,
there is no reason to add the flame retardant to only the cap layers and not
the core layer (App. Br. 7-8).
Appellants' arguments are unpersuasive because Agarwal teaches that
the layers may include the perfluorobutane sulfonate. Even though there
may be many different combinations of the layers with and without flame
retardant, that does not render any particular combination less obvious.
Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989). Accordingly, it would have been within the skill of the ordinary
artisan based upon the teachings of Agarwal and Davis to form the outer two
layers of the multilayer laminate containing perfluorobutane sulfonate and to
form a core layer (i.e., tie layer) with no perfluorobutane sulfonate.
Appellants contend that the Examiner's finding that one of ordinary
skill would have modified Agarwal' s multilayer laminate with Davis' tie
layer to promote excellent adhesion between the layers is undermined by
4
Appeal2015-001311
Application 13/115,315
Agarwal' s failure to disclose any adhesion problems between the layers
(App. Br. 6). Appellants argue that it is unclear why one of ordinary skill in
the art would add a tie layer having a different composition than the cap
layers to obtain excellent adhesion. Id.
The Examiner finds that Davis' tie layer is being used to provide
excellent adhesion between two polycarbonate layers in a multilayer film
(Ans. 4). In other words, the Examiner finds that one of ordinary skill in the
art would have looked to Davis to improve upon the adhesive strength
between the polycarbonate layers. The preponderance of the evidence
supports the Examiner's finding.
Davis discloses myriad of products that may be produced from the
polycarbonate, multilayer laminate, including roofs, hot tubs, and housings
for a variety of uses such as electrical equipment and air conditioners (Davis
para. 172). Agarwal similarly discloses that the polycarbonate, multilayer
laminate may be used to form housings for handheld electronic equipment,
electrical enclosures, roofs, home appliances including air conditioners, and
swimming pool enclosures (Agarwal para. 119). Based upon the similarity
of products produced and the materials of the multilayer laminate, one of
ordinary skill in the art would have looked to use Davis' tie layer to improve
adhesion between the layers of the multilayer laminate in Agarwal in order
to provide better adhesion between layers for a particular application. KSR
Int'! Co. v. Teleflex Inc., 550 US 398, 420 (2007) ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton.").
Appellants' arguments that Davis and Agarwal are concerned with
different properties of the multi-layer structure are not persuasive. As noted
above, Davis and Agarwal disclose polycarbonate multilayer laminates for
5
Appeal2015-001311
Application 13/115,315
the same and similar uses (e.g., roofs and cases). Davis, like Agarwal,
discloses that flame retardants such as potassium perfluorobutane sulfonate
may be used in the layers of the multilayer laminate (Davis paras. 97, 109).
Accordingly, it would have been obvious to combine the similar multi-layer
laminates of Davis and Agarwal in order to improve adhesion between the
layers and in so doing arrive at the claimed invention. Based upon the
similarity of the multilayer laminates (i.e., each includes polycarbonate
layers) one of ordinary skill would have had a reasonable expectation that
Davis' tie layer would have provided good adhesion between Agarwal' s
polycarbonate layers.
Appellants argue that it is unclear how one of ordinary skill in the art
would use Davis' "haze value" for the tie layer in making the multilayer
article claimed (App. Br. 6). As noted by the Examiner, however, claim 1
does not recite a haze value, so Appellants' argument has no merit with
regard to claim 1. The Examiner explains that the combination proposed is
to use Davis' tie layer having a haze of less than 2% in Agarwal's multilayer
film (Ans. 4).
Regarding claims 11 and 12, Appellants argue that the UL94 rating
and haze value would not have been obvious and are not inherent over
Agarwal and Davis (App. Br. 8). Regarding claim 8, Appellants argue that
Agarwal' s disclosure of the perfluorobutane sulfonate being in any layer in a
range from 0.01 to 25 pbw is not a disclosure of a multilayer sheet having
less than 0.01 wt.% based upon the total weight of the multilayer sheet. Id.
Regarding claims 13 and 15, Appellants argue that Agarwal's thickness
disclosures do not teach or suggest a cap layer thickness of less than or equal
6
Appeal2015-001311
Application 13/115,315
to 200 micrometers and a core layer thickness of less than or equal to 2 mm.
Id.
Appellants' arguments are not persuasive because they fail to address
the Examiner's findings and reasons stated in the rejection. With regard to
claim 8, the Examiner finds that Agarwal' s teaching that the amount of
perfluorobutane sulfonate of between 0.01 and 25 pbw in a layer means that
the amount of perfluorobutane sulfonate when calculated taking into account
the entire multilayer article weight, would have to be less than 0.01 %
because the amount by weight of the perfluorobutane sulfonate would have
to be smaller than the 0.01 pbw when the larger mass of the multilayer
laminate is used as the basis (Final Act. 3). With regard to claims 11 and 12,
the Examiner finds that because Agarwal teaches that the multilayer article
has a UL94 rating at a thickness of 1.5 and 2 mm and Davis teaches that the
multilayer film has a haze value of less than 2% according to ASTM D1003-
00, the combination of Davis' tie layer with Agarwal' s multilayer would
possess the same property recited in claims 11 and 12 (Final Act. 3-4).
Regarding claims 13 and 15, the Examiner finds that Agarwal and Davis
teach thickness ranges that overlap with those recited in the claims 13 and 15
(Final Act. 4). Appellants' mere assertion that the prior does not teach the
limitations in the claims fails to show any reversible error in the Examiner's
findings and conclusions with respect to how the applied prior art teaches
each claim limitation.
Appellants also argue that data on pages 9-13 of the Specification
establish that by using the Rimar salt (i.e., the potassium perfluorobutane
sulfonate) in the cap layers over a polycarbonate core with no Rimar salt in
it, Appellants unexpectedly achieved a transparent polycarbonate multilayer
7
Appeal2015-001311
Application 13/115,315
sheet with acceptable haze value, UL94 flame retardant rating of VO at 2
mm, and a pass of the Glow Wire test at 960°C all while possessing an Eco
VDE label (App. Br. 8-9).
Appellants' mere allegation of unexpected results and citation to
"examples beginning on page 9 of the Specification" fails to explain with
specificity how the evidence evinces unexpected results as it is Appellants'
burden to do (App. Br. 8-9). Ex parte Ishizaka, 24 USPQ2d 1621, 1624
(BP AI 1992). Appellants have not explained how the evidence establishes
unexpected results when compared to the closest prior art (i.e., Agarwal).
Regarding rejection (3) of claim 9, Appellants rely on the same
arguments made regarding claim 1 (App. Br. 12-13). We find these
arguments and evidence unpersuasive for the same reasons discussed supra.
On this record, we affirm the Examiner's § 103 rejection of claims 1,
2, 8, and 10-16 over Agrawal in view of Davis and the§ 103 rejection of
claim 9 over Agrawal in view of Davis and KSS.
Rejection (2): Claims 3 and 7
Appellants argue that Li is silent regarding a first cap composition and
second cap composition comprising a branched, nitrile end-capped
polycarbonate comprising greater than or equal to 3 mole% branching agent
(App. Br. 10). Appellants contend that Li's i-f 67 and Table 2 relate to linear
polycarbonates (App. Br. 10). Appellants argue that the amount of
branching agent disclosed by Li (i.e., 0.5 to 2 wt.%) is outside the range
recited in claim 3 (i.e., greater than or equal to 3 mole%) (App. Br. 11).
The Examiner's rejection is not based solely on Li's disclosures in
paragraphs 67, 68, and Table 15 as alone or individually teaching branched
8
Appeal2015-001311
Application 13/115,315
nitrile end-capped polycarbonates. Rather, the Examiner finds that the
combined teachings in Li at paragraphs 67, 68, and Table 15 would have
suggested the use of branched nitrile end-capped polycarbonate (Ans. 9). In
re Preda, 401F.2d825, 826 (CCPA 1968) ("However, in considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom."). Appellants do not
respond to or otherwise challenge this finding of the Examiner.
Appellants' argument that the amount of branching agent disclosed by
Li (i.e., 0.5 to 2.0 wt.%) is outside the range recited in claim 1 is not
persuasive. As noted by the Examiner, Appellants' argument compares Li's
disclosure regarding weight percent with the claimed mole percent, which
are different measures of concentration or amount (Ans. 10). Appellants
further contend that the Examiner has not established that one of ordinary
skill in the art would have optimized the amount of branching agent in the
branched nitrile end-capped polycarbonate as being result effective (App.
Br. 11 ). Contrary to Appellants' argument, Li discloses in i-f 7 4 that the
relative amount of branching agents will depend on a number of
considerations for example the type of R 1 groups, the amount of
cyanophenol, and the desired molecular weight of the polycarbonate. Li
recognizes that the amount of branching agent is a result effective variable
for controlling molecular weight of the polymer. Moreover, Li's i-f 67
disclosure of 0.05 to 2.0 wt.% of branching agents is not required. Rather,
Li discloses that the branching agents "can" be added at a level of 0.05 to 2.0
wt.%, which is permissive not mandatory as argued by Appellants.
9
Appeal2015-001311
Application 13/115,315
Regarding claim 7, Appellants argue that the Examiner's finding that
chlorine and bromine is optional does not establish that chlorine and
bromine are absent from the cap layers (App. Br. 12). Appellants do not,
however, direct us to any teaching that chlorine and bromine are required in
the cap layers of Agarwal. We understand the Examiner to find that the
applied prior art teaches that chlorine and bromine are optional components
in the cap layers such that it would have been within the skill of the ordinary
artisan to omit the chlorine and bromine if not desired. Appellants have not
shown error with the Examiner's finding or reasoning.
On this record, we affirm the Examiner's § 103 rejection of claims 3-
7 over Agarwal, Davis, and Li.
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(a)(l).
ORDER
AFFIRMED
10