Ex Parte Janssen

Board of Patent Appeals and Interferences

Mar 29, 2011

10587267 (B.P.A.I. Mar. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/587,267 07/26/2006 Robert Hendrik Catharina Janssen 4662-218 4733
23117 7590 03/29/2011
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
03/29/2011 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 ROBERT HENDRIK CATHARINA JANSSEN
________________

Appeal 2010-003707
Application 10/587,267
Technology Center 1700
________________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003707
Application 10/587,267

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A. Introduction1
Robert Hendrik Catharina Janssen (“Janssen”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 1-13, which are all of
the pending claims. We have jurisdiction. 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to halogen-free, flame retardant
thermoplastic polyester compositions.
Claim 1 is representative and reads:
1. Halogen free flame-retarded thermoplastic polyester
moulding composition which consists of:
(A) a polymer composition consisting of a
a) 30-67 mass % of at least one thermoplastic
polyester polymer, and
b) 0-15 mass % other polymers, of which other
polymers 0-0.5 mass % is a fluorine polymer,
(B) a flame retardant system consisting of
a) 33-55 mass % melamine cyanurate,
b) 0 to less than 2 mass % of a phosphorous [sic:
phosphorus] containing flame retardant not
comprising elementary phosphorous [sic], and

1 Application 10/587,267, Halogen-Free Flame-Retarded Polyester
Composition, filed 26 July 2006 as the national stage of an international
application filed 28 January 2005, and claiming the benefit of an EPO
application filed 30 January 2004. The specification is referred to as the
“267 Specification,” and is cited as “Spec.” The real party in interest is
listed as DSM IP Assets B.V. (Appeal Brief, filed 8 September 2009
(“Br.”), 2.)
2 Office action mailed 6 April 2009.
Appeal 2010-003707
Application 10/587,267

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c) 0-5 mass % of an inorganic flame retardant
synergist not comprising phosphorous [sic], and
(C) 0-10 mass % other additives, of which other
additives 0-5 mass % are fibrous reinforcing agents, and
wherein the sum of components (A) - (C)
totals 100 mass % and all the mass percentages are
relative to the total mass of the composition.
(Claims App., Br. 16; indentation and paragraphing added.)
The Examiner has maintained the following grounds of rejection:3
Claims 1-13 stand rejected under 35 U.S.C. § 103(a) in view
of each of Mogami,4 Yamamoto,5 Saiki,6 Yoshihara,7 or
Tanaka.8
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.

3 Examiner’s Answer mailed 13 October 2009 (“Ans.”).
4 Kenji Mogami et al., Additive for Thermopolastic Resins and Flame
Retardant Resin Composition, U.S. Patent 5,684,071 (1997).
5 Masanori Yamamoto and Shintarou Kishimoto, Fire Retardent Polyester
Resin Composition and Process for Producing the Same, U.S. Patent
5,770,644 (1998).
6 JP 09-14346 (1997) (The Examiner has relied only on the abstract:
Ans. 4).
7 JP 11-080519 (1999) (The Examiner has relied only on the abstract:
Ans. 4).
8 JP 2003-076088/ (2003) (The Examiner has relied only on the abstract:
Ans. 4).
Appeal 2010-003707
Application 10/587,267

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The Examiner finds that the claims of Yamamoto encompass
compositions comprising a thermoplastic polyester and melamine cyanurate
within the scope of the amounts recited in claim 1, and that the other
additives can be present in amounts that are within the limits recited in
claim 1. (Ans. 3.)
Similarly, the Examiner finds that flame retardant polyester resin
compositions recited in claim 9 of Mogami include compositions in which
the relative amounts of components meet the limitations recited in appealed
claim 1.
The Examiner finds further that the abstracts of each of Saiki,
Yoshihara, and Tanaka recite compositions encompassing amounts of
polyester resin and melamine cyanurate required by the appealed claims.
(Ans. 4.)
The Examiner concludes that it would have been obvious to select
melamine cyanurate in amounts sufficient to yield a flame-retardant
polyester composition. (Ans. 4.)
Janssen argues Yamamoto requires more phosphorus compound than
the appealed claims permit. (Br. 10.) Moreover, according to Janssen, all
the examples in Yamamoto suggest that much lower amounts of melamine
compound and much higher amounts of phosphorus compounds be used in
fire retardant polymer compositions. (Id. at 11, 2d full para.) Janssen argues
further that Yamamoto discloses the presence of many optional components,
such as glass fibers, that exceed the amount allowed by the appealed claims.
((Id. at 10-11.)
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Application 10/587,267

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The Examiner responds that the lower limit of 2.05 parts phosphate
[i.e., parts (C) and (D)] in Yamamoto claim 1 “is sufficiently close to the
‘less than 2 wt. %’” recited in appealed claim 1 that the lower recited
amount would have been obvious. (Ans. 4.) Notwithstanding the
characterization of 2.0 parts of a phosphoric ester compound (D) as a lower
limit by Yamamoto, we are not persuaded that persons having ordinary skill
in the art would have concluded that the properties of polyester compositions
having slightly less than 2.0 parts of phosphorus compounds would have
been significantly less fire-retardant, particularly when other fire-retardant
materials, such as the melamine cyanurate [part (G)], are also present.
Janssen has not directed our attention to credible evidence in the record that
a disproportionate change in properties occurs at 2.0 parts of this component.
Janssen’s arguments based on the examples are not persuasive of
harmful error. It is well-settled that disclosures are not limited to the
examples. In re Inland Steel Co., 265 F.2d 1354, 1361 (Fed. Cir. 2001).
It is also well-settled that a reasonable expectation of success suffices to
support a case of prima facie obviousness. In re O'Farrell, 853 F.2d 894,
903-04 (Fed. Cir. 1988). Moreover, patented subject matter is
presumptively supported by an enabling disclosure for the entire scope of the
claims. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355
(Fed. Cir. 2003) (“[W]e hold a presumption arises that both the claimed and
unclaimed disclosures in a prior art patent are enabled.”) In any event,
Janssen has not disputed the Examiner’s findings that Yamamoto’s claims
encompass compositions covered by the appealed claims. Nor has Janssen
argued, much less proved, that persons having ordinary skill in the art would
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Application 10/587,267

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not have been provided with a reasonable expectation of successfully
making and using fire-retardant compositions throughout the full range
claimed by either Yamamoto or Mogami.
In response to Janssen’s argument that the amount of polyester resin is
not disclosed, the Examiner argues that 50% melamine cyanurate
[component (B)], based on thermoplastic polyester [component (A)] leads
to 66.66 % by weight polyester and 33.33% by weight melamine cyanurate.
(Ans. 5.) Janssen has not shown why this simple explanation is incorrect.
Janssen’s remaining arguments against the Examiner’s reliance on Mogami
again focus on the examples provided by Mogami. (Br. 12.) These
arguments are not persuasive of harmful error for the reasons discussed
supra.
Finally, we note that Janssen has not supported its very brief
arguments based on unexpected results (Br. 11 and 12) with credible
evidence commensurate in scope with the appealed subject matter.
The remaining rejections are problematic. Janssen argues that the
references applied in these rejections “are even further removed from the
present invention,” and questions their relevance. (Br. 13.) Janssen does
little, however, to explain these remarks.
On the other hand, the Examiner finds that the Tanaka abstract
“recite[s] 60-85 weight % polyester” (Ans. 4). Upon review of the abstract
of record, we agree with Janssen that “Tanaka does not disclose at all the
amount of thermoplastic polyester” (Br. 13). The abstract describes the
range of melamine cyanurate as 15-40 % with respect to the total weight.
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Application 10/587,267

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The Examiner has not explained why the polyester necessarily comprises the
remainder of the composition, or enough of the remainder as to make up,
necessarily, 30-67 mass% of the total composition as required by the
appealed claims. We therefore reverse the rejection in view of Tanaka.
As for Saiki and Yoshihara, the official record of the 267 application
available in the eDAN database does not appear to contain abstracts of Saiki
or Yoshihara, much less translations of those documents. As the abstracts
that the Examiner and Janssen discuss have not been placed before us and
are not otherwise identified in the Examiner’s Answer or the Brief on
Appeal, we conclude that the Examiner has failed to present a prima facie
case of obviousness.9
C. Order
We AFFIRM the rejections of claims 1-13 under 35 U.S.C. § 103(a)
in view of Mogami or Yamamoto.
We REVERSE the rejections of claims 1-13 under 35 U.S.C. § 103(a)
in view of Saiki, Yoshihara, or Tanaka.
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

9 In view of the error demonstrated in the Examiner’s characterization of the
Tanaka abstract, we decline to assume the Examiner’s characterizations of
the other abstracts are accurate.
Appeal 2010-003707
Application 10/587,267

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sld

NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON VA 22203