14649610 (P.T.A.B. Aug. 27, 2018)

Ex Parte JUNG et al

Patent Trial and Appeal BoardAug 27, 2018

14649610 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/649,610 06/04/2015 26285 7590 08/29/2018 K&L GA TES LLP-Pittsburgh 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 FIRST NAMED INVENTOR Mathieu JUNG 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. 160323PCTUS/BMS121095PCTU 1031 EXAMINER BUTCHER, ROBERT T ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATHIEU JUNG, THOMAS ECKEL, and VERA TASCHNER1 Appeal2017---011225 Application 14/649,610 Technology Centerl 700 Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and AVEL YN M. ROSS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-11 and 13-18. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: 1 Appellants identify the real party in interest as Covestro Deutschland AG. Appeal 2017-011225 Application 14/649,610 1. A composition comprising A) from 60 to 95 parts by weight of aromatic polycarbonate and/or aromatic polyester carbonate, B) from 1.0 to 15.0 parts by weight ofrubber- modified graft polymer with a graft base selected from the group consisting of silicone rubber, silicone-acrylate rubber and acrylate rubber, C) from 1.0 to 20.0 parts by weight of at least one cyclic phosphazene according to formula (X) wherein k represents 1 or an integer from 1 to 10, wherein the trimer content (k=l) is from 60 to 98 mol%, based on component C, and wherein R is in each case identical or different and represents an amine radical; Cl- to Cs-alkyl; C1- to Cs- alkoxy; Cs- to C6- cycloalkyl; C6- to C20-aryloxy; C7- to C12-aralkyl; a halogen radical; or an OH radical, D) from Oto 15.0 parts by weight of rubber-free vinyl ( co )polymer or polyalkylene terephthalate, E) from Oto 15.0 parts by weight of one or more additives, wherein the one or more additives are selected from the group consisting of flame-retardant synergists, lubricants and demolding agents, nucleating agents, stabilizers, antistatics, colorants, pigments, and fillers and reinforcing materials, F) from 0.05 to 5.0 parts by weight of one or more antidripping agents. 2 Appeal 2017-011225 Application 14/649,610 The Examiner relies on the following prior art references as evidence of unpatentability: Eckel et al. ("Eckel") Nakano et al. ("Nakano") US 6,740,695 Bl US 2004/0127734 Al THE REJECTIONS May 25, 2004 Jul. 1, 2004 1. Claims 1-8 and 14--18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7, 9, and 12-15 of copending Application No. 14/649,047 (Appeal No. 2018- 000941). Ans. 2. 2. Claims 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 14/649,047 (Appeal No. 2018---000941) in view ofFeldermann. Ans. 2. 3. Claims 1-8 and 14--18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 11- 15 of copending Application No. 14/648,934 (Appeal No. 2017---011224). Ans. 3. 4. Claims 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 14/649,934 (Appeal No. 2017---011224) in view ofFeldermann. Ans. 3. 3 Appeal 2017-011225 Application 14/649,610 5. Claims 1-8 and 14--18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 11-15 of copending Application No. 14/649,597 (Appeal No. 2017- 010789). Ans. 3. 6. Claims 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 14/649,597 (Appeal No. 2017---010789) in view ofFeldermann. Ans. 3. 7. Claims 1-8 and 14--18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 11-15 of copending Application No. 14/649,234 (Appeal No. 2017- 010785). Ans. 4. 8. Claims 1-8 and 14--18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-15 of copending Application No. 14/649,686 (now U.S. Patent No. 9,637,634, published May 2, 2017). 2 Ans. 4. 9. Claims 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending 2 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to Jung, this provisional rejection is moot. 4 Appeal 2017-011225 Application 14/649,610 Application No. 14/649,686 (now U.S. Patent No. 9,637,634, published May 2, 2017) in viewofFeldennann. 3 Ans. 4. 10. Claims 1, 3, 4, 8, 14--16, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-14 of Eckel. Ans. 4. 11. Claims 2, 5-7, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Eckel in view of Nakano. Ans. 5. 12. Claims 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Eckel in view of Feldermann. Ans. 5. 13. Claims 1-9 and 14--18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Eckel in view ofNakano. Ans. 5-11. 14. Claims 10 and 11 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Eckel and Nakano, as applied to claim 1 above, and further in view of Feldermann. Ans. 10-13. 3 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to Jung, this provisional rejection is moot. 5 Appeal 2017-011225 Application 14/649,610 ANALYSIS As an initial matter, on page 2 of the Appeal Brief, Appellants state that the following applications are related to the instant application: Appeal No. 2017---011224 2017---010789 2017---010785 2018---000941 Attorney Docker No. Notice of Appeal filed 160316PCTUS/BMS121091PCTUS Feb. 28, 2017 160329PCTUS/BMS121093PCTUS Mar. 1, 2017 160324PCTUS/BMS121092PCTUS Mar. 10, 2017 1160347PCTUS/BMS121090PCTUS Mar. 10, 2017 To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claim on appeal, we will address each separately consistent with 37 C.F.R. Â§ 4I.37(c)(l)(vii). Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports the Examiner's findings and conclusion that the subject matter of Appellants' claims is unpatentable. Accordingly, we sustain each of the Examiner's rejections on appeal essentially for the reasons set forth in the Final Office Action and in the Answer, and affirm, and add the following for emphasis, noting that Rejections 8 and 9 are moot. Rejections 1-9 Rejections 1-9 are provisional rejections. On page 8 of the Appeal Brief, Appellants state that they reserve the right to either file terminal disclaimers or abandon ( or any combination thereof) the applied applications. As such, as pointed out by the Examiner on page 17 of the Answer, these rejections remain, and we summarily affirm Rejections 1-7. 6 Appeal 2017-011225 Application 14/649,610 With regard to provisional Rejections 8 and 9, these provisional rejections are moot (see footnotes 2 and 3, supra). Rejections 10-14 Appellants argue Rejections 1-14 together as stated on page 11 of the Appeal Brief. In so doing, Appellants focus on the combination of Eckel in view of Nakano. Appeal Br. 11-14. Hence, our determinations with regard to this particular combination of references is dispositive for Rejections 10- 14. Appellants' arguments are similar to the arguments addressed in our decision rendered in related Appeal No. 2017---010785. Hence, we refer to our analysis therein and affirm Rejections 10-14 for the same reasons presented in our decision in related Appeal No. 2017---010785 regarding the combination of Eckel in view of Nakano. DECISION Rejections 1-7 are affirmed. Rejection 8 and 9 are moot (see footnotes 2 and 3, supra). Rejections 10-14 are affirmed. 7 Appeal 2017-011225 Application 14/649,610 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). ORDER AFFIRMED 8