Ex Parte JUNG et al

Patent Trial and Appeal Board

Aug 27, 2018

14649234 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/649,234 06/03/2015
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.
160324PCTUS/ BMS 12092 4285
PCT
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 SVEN HOBEIKA 1
(Applicant: Covestro Deutschland AG)
Appeal2017---010785
Application 14/649,234
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and
AVEL YN M. ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge
DECISION ON APPEAL
1 Appellants identify the real party in interest as Covestro Deutschland AG.
Appeal2017-010785
Application 14/649,234
Appellants request our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-16. We have jurisdiction over the appeal under 35
U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth
below:
1. A composition comprising:
A) 60- 95 parts by weight of aromatic polycarbonate and/or
aromatic polyestercarbonate,
B) 1.0- 15.0 parts by weight of rubber-modified graft polymer,
C) 1.0 - 14.5 parts by weight of at least one cyclic phosphazene of
formula (X):
R .R
.t~: ... ~
c·•,
:&~, ' t.~--., . ·t-t
s~: / ·~.- ....
Li~<:~ ~\ .. , ~
;,~ •,R:
where
k is 1 or an integer from 1 to 10,
the trimer content (k = 1) being from 60 to 98 mol%, based on
component C, and where
R are in each case identical or different and are an amine radical,
C1- to Cs- alkyl; C1- to Cs- alkoxy; Cs- to C6-cycloalkyl; C6- to C20-
aryloxy; C1- to C12-aralkyl; a halogen radical; or an OH radical,
D) 0-15.0 parts by weight of rubber-free vinyl (co)polymer or
polyalkylene terephthalate,
E) 0 - 15.0 parts by weight of one or more additives, wherein the at
least one additive is selected from the group consisting of
flameproofing synergistic agents, lubricants and demoulding agents,
nucleating agents, stabilizers, antistatic agents, dyestuffs, pigments,
fillers and reinforcing agents, and
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Application 14/649,234
F) 0.05 to 5.00 parts by weight of antidripping agent.
The Examiner relies on the following prior art references as evidence of
unpatentability:
Eckel
Nakano
US 6,740,695 Bl
US 2004/0127734 Al
THE REJECTIONS
May 25, 2004
Jul. 1, 2004
1. Claims 1-8, 11, 13, and 14 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. 2017---000941). Ans. 2.
2. Claim 9 is provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claim 1 of copending Application No.
14/649,047 (Appeal No. 2017---000941) in view of Eckel.
3. Claims 1-9, 11, 13, and 14 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-7 and 10-15 of
copending Application No. 14/649,597 (Appeal No. 2017---010789). Ans. 3.
4. Claims 1-8, 11, 13, and 14 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.
5. Claim 9 is 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 of Eckel. Ans. 3.
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Application 14/649,234
6. Claims 1-9, 11, 13, and 14 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-7 and 10-15 of
copending Application No. 14/649,610 (Appeal No. 2017---011225). Ans. 3.
7. Claims 1-9, 11, 13, and 14 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, issued May
2, 2017 (hereafter "Jung")). 2 Ans. 4.
8. Claims 1, 3, 4, 8, 11, 13, and 14 are rejected on the ground ofnonstatutory
double patenting as being unpatentable over claims 1-10 and 12-14 of Eckel. Ans.
4.
9. Claims 2 and 5-7 are rejected on the ground of nonstatutory double patenting
as being unpatentable over claims 1-10 and 12-14 of Eckel in view of Nakano. Ans.
4.
10. Claims 1-9, 11, and 13-16 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Eckel in view ofNakano. Ans. 5-11.
ANALYSIS
As an initial matter, on page 2 of the Appeal Brief, Appellants state that the
following applications are related to the instant application:
2 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to Jung,
this provisional rejection is moot.
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Appeal2017-010785
Application 14/649,234
Attorney Docket No. Notice of Appeal Filed Appeal No.
2017---011225
2017---011224
2017---010789
2018---000941
160323PCTUS/BMS121095PCTUS February 20, 2017
160316PCTUS/BMS121091PCTUS February 28, 2017
160329PCTUS/BMS121093PCTUS March 1, 2017
160347PCTUS/BMS121090PCTUS March 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. § 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 conclusions that the subject matter of Appellants' claims
are 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 (but see footnote 2, supra, with regard to Rejection 6).
Rejections 1-7
With regard to Rejections 1-6, 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 13 of the Answer, these rejections remain, and we thus summarily
affirm Rejections 1---6.
With regard to Rejection 7, see footnote 2, supra.
Rejections 8, 9, and 10
Appellants argue these rejections together (in other words, these rejections are
not argued separately), on pages 9-11 of the Appeal Brief. Therein, Appellants
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Application 14/649,234
discuss the combination of Eckel in view of Nakano. Our analysis addresses this
line of argument, detailed below. 3
We agree with the Examiner's stated response regarding the combination of
Eckel and Nakano as set forth on pages 13-16 of the Examiner's Answer, which we
incorporate herein. Therein, the Examiner reiterates that Eckel teaches a cyclic
phosphazene having the structure of formula (X) as recited in Appellants' claims,
but is silent as to the trimer content (k= 1) being from 60 to 98 mol %. In other
words, the Examiner states that the cyclic phosphazene as recited in claim 1
is taught in the primary reference of Eckel, wherein the trimer species is used in
working Example 1. Ans. 13. The Examiner relies upon Nakano for teaching the
recited trimer content. Ans. 13-14.
Appellants disagree with the Examiner that it would have been obvious to use
Nakano's cyclic phosphazene in Eckel's compositions. Appellants argue that the
crosslinking agents taught in Nakano are different from the cyclic phosphazene
recited in the claims. Appeal Br. 9-10. Appellants state that Nakano discloses
cyclic phosphazene and linear species in ,r,r [0033] and [0034], and Example 1 of
Nakano uses a mixture comprising 72% trimer used to synthesize a crosslinked
phosphazene. Appeal Br. 10. Appellants argue that Nakano fails to teach or suggest
this mixture relates to a cyclic or linear structure. Appellants submit that thus
Nakano's Example 1 does not teach or suggest the cyclic phosphazenes recited in
the claims. Appeal Br. 10.
3 We note that on page 13 of the Answer, in specific response to Appellants'
position set forth on pages 9 and 10 of the Appeal Brief, the Examiner inadvertently
refers to a 35 U.S.C. § 103 rejection involving a combination of Eckel in view of
Lim and Nakano, which is not a pending rejection. The pending 35 U.S.C. § 103
rejection is Rejection 10, which concerns the rejection of claims 1-9, 11, and 13-16
as being obvious over Eckel in view of Nakano (as set forth by the Examiner on
pages 5-11 of the Answer).
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We agree with the Examiner's stated response that this argument is
unpersuasive because there is no reason to believe that the treated cyclic
phosphazenes would necessarily lead to a compound outside the scope of the
claimed invention (Ans. 14), as Appellants do not refer to adequate evidence in the
record to support their stated position. As pointed out by the Examiner, the cyclic
phosphazene of Nakano also comprises an adsorbent and/ or a reagent,
which improves stability and discoloration (i1i1 [0021 ]-[0022] Nakano). Ans. 14.
The Examiner states that adsorbents and reagent are equivalent to additives of a
stabilizer and colourant, respectively ( which is not disputed by Appellants), and that
this does not necessarily lead to a cyclic phosphazene outside the scope of the
claims, given that Appellant's claims do not exclude further crosslinking and/or
additives and stabilizers in addition to the cyclic phosphazene, which may
further react with the cyclic phosphazene. Id. The Examiner states that more
importantly, a cyclic structure is taught in both Nakano (i-f [0032] Nakano) as well as
Eckel (col. 2, 11. 1-23 Eckel). Id. Appellants have not persuaded us otherwise.
Absent such supporting evidence, Appellants' assertions amounts to a mere
conclusory statement that is entitled to little, if any, probative weight. See, e.g., In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellants next argue that Nakano does not teach the use of the mixture as
such in polycarbonate compositions, but, rather, Nakano teaches the mixture is
reacted with sodium phenolate at ,r [0180]. Appeal Br. 10. Appellants then stated
that after this, the mixture it is used in a PC/ ABS blend having an approximate
composition of [N+p (-O-p=Ph-0-)0.15 (-0-Ph)l.7]. Appeal Br. 10.
We agree with the Examiner's response made on page 14 of the Answer.
Therein, the Examiner states that this argument is not found persuasive because both
Eckel and Nakano are directed to polycarbonate/ABS compositions (i-f [0102]
Nakano and throughout Eckel). The Examiner states that Nakano teaches the cyclic
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Application 14/649,234
phosphazene, wherein the composition comprising a mixture of cyclic and linear
species (i-f [0045] Nakano), which is further crosslinked in Example 1 (i1i1 [O 129]-
[0138] Nakano). The Examiner also states that a cyclic phosphazene having the
structure in ,r [0045] of Nakano that is further treated and crosslinked is still
a composition comprising a cyclic phosphazene of that recited in ,r [0045]. The
Examiner states that therefore, Nakano suggests, at least, a mixture comprising
cyclic phosphazenes, which is further crosslinked. We agree.
Appellants next argue that Nakano is not concerned with the
phenoxyphosphazenes as such, but, rather, further treatment of these species with at
least one absorbent and at least one reagent. See Nakano claim 1. Appeal Br. 10.
Appellants argue that the useful properties of the treated phosphazenes are described
in ,r [0125] of Nakano. Appellants state that this paragraph discloses
"phenoxyphosphazenes prepared by the process of the present invention." See also
Nakano at ,r [0124]. Appellants also state that according to claim 1 of Nakano, even
different phosphazenes can be treated such as cyclic, linear or crosslinked
phosphazenes. Appellants thus submit that Nakano fails to teach or suggest the
features of the cyclic phosphazenes recited in the subject claims. Appeal Br. 10.
In response, the Examiner states that this argument is not found persuasive
because the cyclic phosphazene of Nakano also comprises an adsorbent and/or a
reagent, which improves stability and discoloration (i1i1 [0021 ]-[0022] Nakano). The
Examiner reiterates that hence, the adsorbents and reagent are equivalent to
additives of a stabilizer and colourant, respectively, and this does not necessarily
lead to a cyclic phosphazene outside the scope of the claims, given that the claims
do not exclude further crosslinking and/or additives and stabilizers in addition to the
cyclic phosphazene, which may further react with the cyclic phosphazene. The
Examiner also reiterates that, more importantly, a cyclic structure is taught in both
Nakano (i-f [0032] Nakano) as well as Eckel ( col. 2, 11. 1-23 Eckel). Ans. 15.
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Appellants next argue that Example 1 of Nakano teaches a crosslinked
phosphazene, and the trimer content is only related to the starting materials in the
process of Nakano, and not to the specific crosslinked product. See Nakano at ,r
[0130]. Appeal Br. 10-11. Appellants argue that one skilled in the art would
incorporate Nakano's crosslinked product, not the starting material. Appeal Br. 11.
We agree with the Examiner's stated response made on page 15 of the
Answer. Therein, the Examiner states that this argument is not found persuasive
because the crosslinked product of Nakano comprises the cyclic structure disclosed
by Nakano, which is within the scope of the claims. Hence, it is the
Examiner's position that incorporation of the treated cyclic phosphazene having the
trimer content is nonetheless a composition that comprises the cyclic phosphazene
compound having the claimed trimer content. Ans. 15. We agree as Appellants
have not persuaded us otherwise. Absent such supporting evidence, Appellants'
assertions amounts to a mere conclusory statement that is entitled to little, if any,
probative weight. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellants next argue that Nakano fails to remedy Eckels deficiencies, since
it is unclear whether Example 1 of Nakano employs cyclic or linear adducts as the
flame retardant additive. Appeal Br. 11. We agree with the Examiner that this
argument is not found persuasive because Nakano comprises a flame retardant
additive that comprises the structure of that recited in the claims, wherein the trimer
content is disclosed prior to further treatment of the cyclic phosphazene. Hence, it is
the Examiner's position that incorporation of the treated cyclic phosphazene having
the trimer content is nonetheless a composition that comprises the
cyclic phosphazene compound having the claimed trimer content. Ans. 15-16.
DECISION
Rejections 1-6 and 8-10 are affirmed.
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Rejection 7 is moot.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
ORDER
AFFIRMED
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