Ex Parte JUNG et alDownload PDFPatent Trial and Appeal BoardAug 27, 201814648934 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/648,934 06/02/2015 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. 160316PCTUS/BMS121091 5509 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 VERA TASCHNER1 Appeal2017---011224 Application 14/648,934 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 Appellants request our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-19. 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 Appellants identify the real party in interest as Covestro Deutschland AG. Appeal2017---011224 Application 14/648,934 1 A composition comprising: A) 48-95 parts by weight of aromatic polycarbonate and/or aromatic polyestercarbonate, B) 1.0-20.0 parts by weight of rubber-modified graft polymer, C) 1.0-20.0 parts by weight of at least one cyclic phosphazene of formula (X): where k is an integer from 1 to 10, the trimer content (k = 1) being from 60 to 98 mol%, based on component C, and 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; C7 to C12-aralkyl; a halogen radical; or an OH radical, D) 1.0 - 7 .0 parts by weight of at least one phosphorus-containing organic flameproofing agent other than C, E) 0- 15.0 parts by weight of one or more rubber- free vinyl ( co )polymer or polyalkylene terephthalates, F) 0 - 15.0 parts by weight of one or more additives and G) 0.05 to 5.00 parts by weight of antidripping agent, all the parts by weight being scaled so that the sum of the parts by weight of all the components A+B+C+D+E+F+G in the composition is 100, and at least 50% of the amount of phosphorus in the composition originating from component C. 2 Appeal2017---011224 Application 14/648,934 The Examiner relies on the following prior art references as evidence of unpatentability: Eckel et al. ("Eckel '568") Eckel et al. ("Eckel '695") Nakano Lim et al. ("Lim") Giintherberg ("Giintherberg") US 2007/0135568 Al US 6,740,695 Bl US 2004/0127734 Al US 2004/0249070 Al US 6,323,279 Bl THE REJECTIONS June 14, 2007 May 25, 2004 July 1, 2004 Dec. 9, 2004 Nov. 27, 2001 1. Claims 1-12, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, and 12-15 of copending Application No. 14/649,047 (Appeal No. 2017---00941). Ans. 2. 2. Claims 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, and 12-15 of copending Application No. 14/649,047 (Appeal No. 2017---00941) in view of Eckel '568. Ans. 2. 3. Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, and 12-15 of copending Application No. 14/649,047 (Appeal No. 2017---00941) in view of Giintherberg. Ans. 3. 4. Claims 1-12, 14, and 15 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. 5. Claims 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 3 Appeal2017---011224 Application 14/648,934 10-15 of copending Application No. 14/649,597 (Appeal No. 2017---010789) in view of Eckel '568. Ans. 3. 6. Claim 18 is 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) in view of Giintherberg. Ans. 3. 7. Claims 1-12, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-14 of copending Application No. 14/649,234 (Appeal No. 2017- 010785). Ans. 4. 8. Claims 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-14 of copending Application No. 14/649,234 (Appeal No. 2017---010785) in view of Eckel '568. Ans. 4. 9. Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-14 of copending Application No. 14/649,234 (Appeal No. 2017---010785) in view of Giintherberg. Ans. 4. 10. Claims 1-12, 14, and 15 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. 4. 11. Claims 16 and 17 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) in view of Eckel '568. Ans. 5. 4 Appeal2017---011224 Application 14/648,934 12. Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 and 10-15 of copending Application No. 14/649,610 (Appeal No. 2017---011225) in view of Giintherberg. Ans. 5. 13. Claims 1-12, 14, and 15 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. 5. 14. Claims 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, and 12-15 of copending Application No. 14/649,686 (now U.S. Patent No. 9,637,634, issued May 2, 2017 (hereafter "Jung")3 in view of Eckel '568. Ans. 5. 15. Claim 18 is provisionally rejected on the ground ofnonstatutory double patenting as being unpatentable over claims 1-7, 9, and 12-15 of copending Application No. 14/649,686 (now U.S. Patent No. 9,637,634, issued May 2, 2017 (hereafter "Jung")4 in view of Giintherberg. Ans. 6. 16. Claims 1-12, 14, and 15 are rejected on the ground ofnonstatutory double patenting as being unpatentable over claims 1-10 and 12-14 of Eckel '695 in view of Nakano. Ans. 6. 2 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to Jung, this provisional rejection is moot. 3 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to Jung, this provisional rejection is moot. 4 Because Application No. 14/649,686 is now U.S. Patent No. 9,637,634 to Jung, this provisional rejection is moot. 5 Appeal2017---011224 Application 14/648,934 17. Claims 16 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-14 of Eckel '695 in view of Nakano and Eckel '568. Ans. 6. 18. Claim 18 is rejected on the ground ofnonstatutory double patenting as being unpatentable over claims 1-10 and 12-14 of Eckel '695 in view of in view of Nakano and Giintherberg. Ans. 6 19. Claims 1-12, 14, 15, and 19 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Eckel '695 in view of Lim and Nakano. Ans. 7-11. 20. Claims 16 andl 7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Eckel '695 in view of Lim and Nakano as applied to claim 1 above, and further in view of Eckel '568. Ans. 11. 21. Claim 18 is rejected underpre-AIA 35 U.S.C. § 103(a) as being unpatentable over Eckel '695 in view of Lim and Nakano, as applied to claim 1 above, and further in view of Guntherberg. Ans. 12. ANALYSIS As an initial matter, on page 2 of the Appeal Brief, Appellants point out that the present application is related to the following applications: 2017---011225 2017---010789 2017---010785 2018---000941 160323PCTUS/BMS121095PCTUS Feb. 20, 2017 160329PCTUS/BMS121093PCTUS Mar. 1, 2017 160324PCTUS/BMS121092PCTUS Mar. 10, 2017 160347PCTUS/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. § 4I.37(c)(l)(vii). 6 Appeal2017---011224 Application 14/648,934 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, with the following emphasis, noting that Rejections 13-15 are moot. Rejections 1-15 Rejections 1-15 are provisional rejections. Appellants state on page 6 of the Appeal Brief 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 15 of the Answer, these rejections remain, and we summarily affirm Rejections 1-12. With regard to provisional rejections 13, 14, and 15, these provisional rejections are moot (see footnotes 2--4, supra). Rejection 16, 17, 18, 19, 20, and 21 Rejections 16, 17, and 18 involve rejections on the ground of nonstatutory double patenting. In each of these rejections, the combination of references includes the primary references of Eckel '695 in view of Nakano. Rejections 19, 20, and 21 involve rejections underpre-AIA 35 U.S.C. § 103. In each of these rejections, the combination of references also includes the primary references of Eckel '695 in view of Nakano. 7 Appeal2017---011224 Application 14/648,934 Appellants argue Rejections 16-21 together as stated on page 6 of the Appeal Brief. In so doing, Appellants' arguments focus on the combination of Eckel '695 in view of Nakano. Hence, our determinations with regard to this particular combination of references is dispositive for Rejections 16-21. 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 16-21 for the same reasons presented in our decision in related Appeal No. 2017---010785 regarding the combination of Eckel '695 in view of Nakano. DECISION Rejections 1-12 are affirmed. Rejections 13-15 are moot. Rejections 16-21 are affirmed. 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 8 Copy with citationCopy as parenthetical citation