Ex Parte Konduri

Patent Trial and Appeal Board

Jun 1, 2016

13445117 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/445, 117 04/12/2012
43252 7590 06/03/2016
CANTOR COLBURN LLP - SABIC (CPP)
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Rama Konduri
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.
218475-US-CNT 9347
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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
colleen l .brennan@sabic-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMA KONDURI 1
Appeal2014-001833
Application 13/445, 117
Technology Center 1700
Before HUBERT C. LORIN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 34
and 39 under 35 U.S.C. § 103(a) as obvious over Kochanowski2 in view of
1 Appellant identifies the real party in interest as SABIC Innovative Plastics
IP B.V. Appeal Br. 2.
2 Kochanowski et al., US 4,460,731, issued July 17, 1984.
Appeal2014-001833
Application 13/445, 117
Borman3 and Wallach,4 the STN Search Report, 5 Lewis,6 Hands,7 and
Ogawa.8 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 9
The claims are directed to a talc-filled polyester composition. Claims
34 and 39. The composition is useful for forming optical reflectors, for
example, in automotive headlight extensions, bezels and reflectors, for
indoor illumination, etc. Spec. i-f 2. According to the Specification,
polyesters are often used for such molded items, but because the surface of
the molded articles are rough rather than glossy, the surface is treated with a
primer as an undercoat (also called a base-coat) before vapor depositing a
reflective metal coating to form the reflector. Id. Fillers in the composition
may cause the undesired roughness. Spec. i-f 4. Fillers are often added to
decrease shrinkage as the molded article cools and to improve dimensional
stability. Id. Appellant states that they have found that using a particular
type of talc filler together with a specific blend of polyesters provides
molded articles with low in-mold shrinkage and smooth, defect-free, high-
gloss surfaces that can be satisfactorily metallized without using a base-coat
3 Borman, Molecular Weight-Viscosity Relationships for Poly(l,4-butylene
Terephthalate), 22 J. Applied Polymer Sci. 2119-2126 (1978).
4 Wallach, Viscosity-Molecular Weight Relation and Unperturbed
Dimensions of Polyethylene Terephthalate, 103 Die Makromolekulare
Chemie 19-26 (1967).
5 STN Search Report, http://www.cas.org/legal/infopolicy.html.
6 Lewis, Hawley's Condensed Chemical Dictionary, 12th ed. (1993).
7 Hands, US 4,437,333, issued Mar. 20, 1984.
8 Ogawa et al., US 4,506,043, issued Mar. 19, 1985.
9 In our opinion below, we refer to the Specification filed April 12, 2012
(Spec.), Final Office Action mailed March 15, 2013 (Final), the Appeal
Brief filed August 19, 2013 (Appeal Br.), the Examiner's Answer mailed
September 13, 2013 (Ans.), and the Reply Brief filed November 13, 2013
(Reply Br.).
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Application 13/445, 117
primer. Spec. i-f 11. Claim 34, with one of the limitations at issue
highlighted, is illustrative of the claimed composition:
34. A composition for use in the manufacture of optical
reflectors, the composition consisting of, based on the total
weight of the composition, a combination of
from 50 to 70 weight percent of a thermoplastic
poly(butylene terephthalate) having a weight average
molecular weight of 10,000 to 200,000 Daltons;
from 25 to 3 5 weight percent of a thermoplastic
poly( ethylene terephthalate) having an intrinsic viscosity of 0.5
to 0.8 deciliters per gram, measured in a 60:40 by weight
phenol/I, 1,2,2-tetrachloroethane mixture at 23 °C using a
relative viscometer operating with a closed loop system, which
measures the solvent and sample viscosity simultaneously;
from 8 to 15 weight percent of a talc filler having an
average largest dimension of less than 0.9 micrometers, a
median particle size of less than 0.9 micrometers, or both; and
from 0.2 to 0.4 weight percent of an alkali metal salt, an
alkaline earth metal salt, and/or a C1-12 ester of an aliphatic C24-
36 carboxylic acid,
optionally, a polyester selected from the group
consisting of polyethylene naphthalate, polybutylene
naphthalate, polytrimethylene terephthalate, poly( 1,4-
cyclohexylenedimethylene 1,4-cyclohexanedicarboxylate ),
poly(l ,4-cyclohexylenedimethylene terephthalate ), poly(
cyclohexylenedimethylene-co-ethylene terephthalate ), and
combinations thereof;
optionally, a polycarbonate and/or an aromatic
copolyester carbonate;
optionally, an inorganic phosphorous compound
selected from the group consisting of phosphoric acid,
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Application 13/445, 117
phosphorous acid, and metal salts of phosphoric acid and
phosphorous acid; and
optionally, one or more additives consisting of means
for affecting properties of the composition, wherein the one or
more additives are selected from the group consisting of
antioxidants, flame retardants, heat stabilizers, light stabilizers,
antistatic agents, colorants and combinations thereof;
wherein a metallized surface, formed by vacuum
metallization, on an article, without a basecoat, that is injection
molded from the composition retains 90% or more of its gloss
after heat aging at l 60°C for 1 hour, measured at 20 degrees
using a trigloss meter and wherein an article having a thickness
of 3.2 mm that is injection molded from the composition has a
mold shrinkage of less than 2%, measured in both the flow and
crossflow directions.
Claims Appendix, Appeal Br. 20-21 (emphasis added).
OPINION
There are two claims on appeal, claims 34 and 39. Appellant argues
the claims separately. Thus, we consider the claims separately.
Claim 34
As found by the Examiner, Kochanowski discloses a polyester
composition containing 99-1 parts by weight poly(butylene terephthalate)
(PBT), 1-99 parts polyethylene terephthalate (PET), a small, effective warp-
reducing amount of talc, and a reinforcing amount of a reinforcing agent in
the range of 1-80 parts by weight. Final 3; Kochanowski, col. 2, 11. 9-26.
The Examiner finds that the amounts of PBT, PET, and talc overlap the
ranges of the claims. Id. The Examiner acknowledges that claim 34 is
limited by the transitional phrase "consisting of' and that the claim does not
list reinforcing filler as included. Final 4. However, the Examiner finds
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Kochanowski teaches selecting asbestos or titanium dioxide as the
reinforcing filler. Final 4; Kochanowski, col. 2, 11. 50-57. The Examiner
supplies evidence showing that asbestos was a known flame retardant and
titanium dioxide was a known colorant. Id.; Lewis and Hands.
Several of Appellant's arguments hinge on an interpretation of claim
34 as excluding Kochanowski' s titanium dioxide or asbestos reinforcing
filler. For the reasons articulated by the Examiner, we determine that claim
34 does not exclude the presence of these compounds. We add the
following primarily for emphasis.
Although claim 34 uses the transitional phrase "consisting of," the
claim allows the inclusion of "one or more additives consisting of means for
affecting properties of the composition, wherein the one or more additives
are selected from the group consisting of antioxidants, flame retardants, heat
stabilizers, light stabilizers, antistatic agents, colorants and combinations
thereof." Claim 34 (emphasis added).
There is a dispute between the Examiner and Appellant on the
question of whether "means for affecting properties of the composition," is a
means-plus-function phrase invoking 35 U.S.C. § 112 i-f 6, but that question
is not particularly important to decide here. The claim clause further defines
the means in terms of a Markush group, i.e., "wherein the one or more
additives are selected from the group consisting of antioxidants, flame
retardants, heat stabilizers, light stabilizers, antistatic agents, colorants and
combinations thereof." Even assuming that, as argued by Appellant, § 112
i-f 6 is invoked, we determine that titanium dioxide and asbestos are
encompassed. Looking to the Specification to determine the structures
(compounds) encompassed by the means-plus-function clause and the
Markush group, we find the following:
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Application 13/445, 117
The thermoplastic composition can optionally further
comprise any of the additives and property modifiers that
polyesters are usually combined with, with the proviso that the
additives are selected so as to not significantly adversely affect
the desired properties of the composition, for example,
shrinkage and/or surface gloss. Exemplary additives include,
for example, antioxidants, flame retardants, heat stabilizers,
light stabilizers, antistatic agents, colorants, and the like.
Spec. i-f 30. The Specification further discloses suitable colorants as
including "those known for use in molding compositions," for example
metal oxides and titanates, among others. Spec. i-f 35. The Specification
does not particularly point out any compounds to be used as flame
retardants.
The Examiner finds that titanium oxide, a metal oxide, was a known
colorant, and asbestos was a known flame retardant, citing Lewis and Hands.
Final 4. Appellant does not dispute that titanium oxide and asbestos were
known to function as a colorant and flame retardant, respectively. Appeal
Br. 13. ii.Jthough the Specification states that "the additives are selected so
as to not significantly adversely affect the desired properties of the
composition, for example shrinkage and/or surface gloss," the listing of
using metal oxides, titanates, and flame retardants seems to indicate that
these materials are allowed. Spec. i-f 30. Moreover, the level meeting
"significantly adversely affect" is broad and on the present record not
sharply defined. Considering the minimal guidance provided by the
Specification regarding corresponding structures and equivalents, a
preponderance of the evidence supports the Examiner's determination that
the additive clause of claim 34 sweeps in titanium oxide and asbestos as
those compounds inherently function as required by the claim. See, e.g.,
Ans. i-f 24. The burden is shifted, fairly, to Appellant to prove otherwise.
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"Where ... the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product."
In re Best, 562 F.2d 1252, 1255, (CCPA 1977)(citation omitted).
We are cognizant of the fact that Kochanowski uses titanium oxide
and asbestos to reinforce rather than to color and provide flame retardant
properties. But the colorant and flame retardant properties will still be
present even if Kochanowski selects the compounds for their reinforcing
ability. See In re Papesch, 315 F .2d 381, 391 (CCP A 1963) ("a compound
and its properties are inseparable"). The classification of the compounds as
reinforcing fillers instead of as flame retardant and colorant does not change
the fact that the underlying molecular structure (asbestos and titanium
dioxide) is the same, or the reasonable inference that the same compounds
will have the same properties and functions.
Appellant also contends that the amount of the titanium dioxide or
asbestos reinforcing filler used in Kochanowski' s composition would not be
equivalent means in light of the Specification. But, as pointed out by the
Examiner, claim 34 does not recite a concentration range for the additives,
and the compounds would still inherently be a colorant and flame retardant.
Ans. i-f 25; Kochanowski, col. 2, 11. 64---68. The language of the claim
identifies a classification that encompasses a genus of compounds; it is does
not identify concentrations for the compounds. Appellant has not carried the
burden of showing that the additives suggested by Kolchanowski would not
meet the claim limitations.
Appellant contends that the amount of reinforcing filler required for
reinforcement would affect the gloss properties of the molded article formed
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Application 13/445, 117
using the composition. Appeal Br. 12. But the claims do not have any
limitation on the absolute level of gloss (such as the gloss level of 1700 units
disclosed in the Specification) that can be characterized as a high level of
gloss. Spec. i-fi-136-37. Claim 34. Claim 34 only limits how much gloss is
retained upon heat aging (90% or more). Claim 34. The starting level of
gloss is not a limitation within the claim. The starting article could be very
rough and non-glossy and still retain 90% of that level of gloss upon heat
aging and meet the gloss retention property claimed.
Appellant's Specification includes some data in the Specification
regarding gloss retention upon heat aging. Fig. 1; Spec. i-fi-151-56. But
Appellant's data does not establish that titanium dioxide or asbestos used in
reinforcing filler amounts per the teachings of Kochanowski would result in
a loss of gloss upon heat aging outside the 90% retention range of the
claims. Figure 1 shows gloss properties before and after heat aging for
metallized articles molded from the composition of Table 1 (Ex. IA (with a
base-coat) and lB (without a base-coat)) compared to the composition
having no talc (Ex. 2) and a different polyester (CRASTIN-CE2055) with
13% titanium dioxide filler (Ex. 3). Although Comparative Example 3
shows a gloss retention out of range, Comparative Example 3 is of little
probative value because it uses a different polyester and contains no talc.
Kochanowski contains both a PBT/PET blend and talc. A comparison of
Examples IB and Comparative Example 2 shows that adding talc increases
gloss retention upon heat aging. The evidence is strong enough to require
Appellant show that the claimed gloss retention upon heat aging would not
have been expected when following the teachings of Kochanowski, which
also contains talc.
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Application 13/445, 117
Appellant further contends that Kochanowski teaches away from
Appellant's invention because Kochanowski includes a reinforcing amount
of reinforcing agent. Appeal Br. 5-6. According to Appellant,
one of ordinary skill in the art would appreciate that an article
made from a composition having a reinforcing filler such as
glass fiber, used in the example in Kochanowski, would be
associated with a relatively unsmooth surface, which would
adversely affect the surface smoothness of the article, contrary
to the highly smooth surface that is provided by the
composition of the present composition, necessary for its use in
making an optical reflector having a metallized surface. In other
words, the reinforcing filler in the composition of Kochanowski
would render it unsuitable for providing the high gloss
properties required by claim 34, i.e. a specified gloss when the
composition is molded into an article that is metallized to
produce an optical reflector.
Appeal Br. 5---6 (emphasis added); see also Reply Br. 3--4.
First, this argument overlooks the Examiner's finding that
Kochanowski teaches using titanium dioxide or asbestos as the reinforcing
filler and that those reinforcing fillers also function as colorant and flame
retardant, additives not excluded by the claims. The Examiner relies upon
Kochanowski' s disclosure of using titanium dioxide or asbestos as the
reinforcing filler, not upon the disclosure of glass fiber. The disclosure of
glass fiber reinforcement does not teach away. Disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F .2d 442, 446 n.3
(CCPA 1971).
Second, claim 34 does not require a high gloss surface, it only
requires 90% or more of whatever gloss the metallized surface had before
heat aging be retained after heat aging. In other words, the metallized
surface may have any gloss value before heat aging; it need only retain 90%
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Application 13/445, 117
or more of that value upon heat aging. Given the presence of talc in the
composition of Kochanowski, it is reasonable to presume that
Kochanowski' s compositions would have the claimed gloss retention.
Appellant's own data shows that talc provides gloss retention. Compare
Example lB (base-coat-free lamp bezel formulation with 10 wt% Ultatalc®
609 talc) with Comparative Example 2 (base-coat-free lamp bezel
formulation with no talc), which show a gloss retention of over 90% for
Example lB and, even shows a gloss retention of about 90% for the non-
filled composition of Comparative Example 2. Appellant's evidence shows
that it is the talc that provides the gloss retention upon heat aging. There is
no convincing evidence that adding reinforcing amounts of titanium dioxide
or asbestos, additives appearing to be within the scope of additives
Appellant allows to be added, Spec. i-fi-130, 35, would result in a gloss
retention upon heat aging lower than 90%. Moreover, Appellant is in the
best position to provide data showing that, in fact, reinforcing amounts of
titanium dioxide and asbestos would result in a composition not having the
property claimed.
Appellant contends that Kochanowski teaches away for another
reason: because Kochanowski is not concerned about surface gloss, and the
problem solved by Kochanowski teaches away from the present invention.
Appeal Br. 8. Kochanowski is concerned with reducing warp in polyester
molding compositions and does so by adding talc and a reinforcing amount
of a reinforcing agent, which may be glass fibers, but alternatively may be
titanium dioxide or asbestos. Kochanowski, col. 2, 11. 3-68. As we stated
above, the claims do not require any particular level of high gloss surface;
they require gloss retention upon heat aging. The evidence does not
convince us that Kochanowski' s teaching of adding talc and reinforcing
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Application 13/445, 117
filler to reduce warping would lead one away from forming a composition
with the heat aging property of the claim.
Appellant contends that it would be mere happenstance for
Kochanowski to obtain Appellant's composition because Kochanowski
teaches using talc preferably in particle sizes of less than about 50 microns,
and Appellant's claimed size range of less than 0.9 microns (average largest
dimension or median particle size or both) is less than 2% of Kochanowski's
50 micron preferred range. Appeal Br. 6-7. As evidence that a median
particle size of less than 0.9 microns is not taught by Kochanowski,
Appellant cites "U.S. Patent 4,322,233 [sic, 4,322,333]" 10 and U.K. Patent
Application GB 2061972, which are said to disclose using Translink 445, a
clay filler, which Appellant states is known to have a particle size of
"substantially 1.4 micrometers." Appeal Br. 7.
The fact that other references disclose using Translink 445, a clay
filler, provides little evidence with regard to the size of Kochanowski' s talc
filler. The Kochanowski reference relied upon in the rejection does not
disclose using Translink 445. Appellant has not adequately established a
connection between Translink 445 and the talc filler disclosed in the
Kochanowski reference relied upon by the Examiner. The Kochanowski
reference relied upon by the Examiner discloses using talc of particle size
that may vary widely with a preferred size of less than about 50 microns.
Kochanowski, col. 2, 11. 42--47. It remains that the claimed size range of less
than 0.9 microns is within the less than about 50 microns preferred range of
Kochanowski. A preponderance of the evidence supports the Examiner's
determination that it would have been obvious to select talc of particle sizes
10 We presume "4,322,233" cited in the Brief is a typo as it does not list
Kochanowski as an inventor, and it is not directed polyester compositions.
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within the claimed range given that range is within the range disclosed by
the reference.
Appellant contends that the composition in Kochanowski, contrary to
the finding of the Examiner, is not "identical" or "substantially identical" to
the claimed composition. Appeal Br. 7. According to Appellant, the claims
in effect exclude the glass fibers used in Kochanowski' s examples and
require a specifically selected size of talc which is nowhere mentioned in
Kochanowski, which differences are necessary to obtain the desired and
unexpected properties. Id.
First, Kochanowski does not require glass fibers and the Examiner did
not rely upon Kochanowski's teaching of including glass fibers, which
Kochanowski teaches as a preference but not a requirement, in rejecting the
claims as obvious. Instead, the Examiner finds that Kochanowski teaches
using titanium dioxide or asbestos as reinforcing filler, materials not
excluded by Appellant's claims.
Second, given that the talc particle size of Kochanowski is within the
claimed range, there is a prima face case of obvious.
Appellant contends that Kochanowski does not teach the polymers
used to obtain high gloss. Appeal Br. 9. Although Appellant "concedes that
Kochanowski discloses the poly(butylene terephthalate) component used in
the present composition, based on the Examiner's calculations," Appellant
urges "that Kochanowski is lacking in teaching its combination with the
specified poly( ethylene terephthalate ), hereafter 'PET,' required by the
claimed composition." Id. According to Appellant, Kochanowski' s
exemplified PET does not have an intrinsic viscosity within the claimed
range, and the claimed range overlaps substantially less than a third of the
broader range disclosed in Kochanowski. Appeal Br. 9-10.
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First, we again point out that the claims do not require any gloss level
that can be called "high gloss."
Second, the Examiner has established a reasonable presumption that
Kochanowski's intrinsic viscosity range, which includes 0.4 dl/g as
measured in a 60:40 phenol/tetrachloroethane mixture at 30° C, overlaps the
claimed range of 0.5 to 0.8 deciliters per gram, measured in a 60:40 by
weight phenol/I, 1,2,2-tetrachloroethane mixture at 23 °C. Final 5-7.
Appellant does not offer any convincing evidence to the contrary. Appeal
Br. 9-10.
A preponderance of the evidence supports the Examiner's
determination that Kochanowski suggests a polyester composition having
the claimed compounds in amounts overlapping the claimed ranges such that
a prima face case of obviousness is established.
Turning to the showing in support of unexpected results, Appellant
urges that the claimed composition results in unexpectedly good gloss
retention after heat aging at l 60°C for l hour. Appeal Br. 9. Appellant
relies upon the bar chart of Figure 1 for support. Id. According to
Appellant,
The bar chart shows that, for the composition of Comparative
Example 3, the gloss decreased from about 1800 to about 1520
gloss units upon heat aging at 160°C for one hour, which
represents gloss retention of only 84.4%. The bar chart further
shows that metallization of the claimed composition (Examples
IA and IB) unexpectedly afforded substantially higher gloss
retention than comparative Examples 2 and 3, having no filler
or 13% of a different filler. In comparison, the gloss of
inventive Example IA decreased from about 1820 to about
1790 gloss units upon heat aging at 160°C for one hour, which
represents gloss retention of 98.4%. Likewise, the gloss of
inventive Example 1 B decreased from about 17 40 to about
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1700 gloss units upon heat aging at 160°C for one hour, which
represents gloss retention of 97 .8%.
Id.
A case of obviousness may be overcome by showing unexpected
results over the claimed range as compared to the prior art range, but to be
probative of unexpected results Appellant must "at least establish: ( 1) that
there actually is a difference between the results obtained through the
claimed invention and those of the prior art, ... and (2) that the difference
actually obtained would not have been expected by one skilled in the art at
the time of invention." In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973)
(citations omitted). Such a showing must be based on evidence, not
argument or speculation. In re Mayne, 104 F.3d 1339, 1343--44 (Fed. Cir.
1997); In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
First, the Example 1 A data is not relevant because the data pertain to a
sample prepared with a base-coat. It is the gloss retention of a sample
prepared \vithout a base-coat that is the focus of 1A..ppellant' s contention that
there is an unexpected result. Only Example lB provides data for the gloss
retention of a sample made from a composition within the scope of the
claims and without a base-coat.
Second, Comparative Example 3 is of little evidentiary value because
it employs a polyester (CRASTIN-CE2055) different than the other
examples (containing 19 .4 wt% V ALOX 315, 40.11 wt% PBT 195, 30 wt%
Futura PET) as well as contains 13 wt% titanium dioxide and no talc. Table
1 and Spec. iii! 53-54. It is not known whether CRASTIN-CE2055 contains
either the PBT or PET of the claims or how it differs from the polymer blend
of the other examples. Given the welter of unfixed variables, a proper
comparison cannot be made between Comparative Example 3 and Example
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lB. Comparative examples must be truly comparative to support a showing
of non-obviousness. In re Dunn, 349 F.2d 433, 439 (CCPA 1965).
The comparison between Example lB and Comparative Example 2 is
somewhat more probative. The difference between these two examples is
that Example lB contains 10 wt% talc (Ultratalc 609) and Comparative
Example 2 contains no talc. According to Appellant, the Example lB
sample retains 97 .8% of its gloss upon heat aging. Appeal Br. 9. Appellant
does not state the gloss retention percentage for Comparative Example 2, but
it appears from the bar graph to be about 90%. These results are consistent
with the conclusion that adding any amount of Ultratalc 609 may result in a
gloss retention within the claimed range. Kochanowski discloses including a
small, effective warp-reducing amount of talc and exemplifies adding about
20 wt% talc. Kochanowski, col. 2, 11. 24--25; col. 5, 11. 6-12. Appellant has
not established criticality of their claimed range as compared to the
teachings of Kochanowski, the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.").
Appellant's Specification and arguments also seem to indicate that
factors such as the size of the talc particles and the intrinsic viscosity of the
PET impact the results. Yet Appellant provides no comparative examples
varying these properties. Thus, the impact of these factors is not known.
Moreover, we agree with the Examiner that the showing is not
commensurate in scope with the claims. See In re Greenfield, 571 F.2d
1185, 1189 (CCP A 1978) (concluding that evidence of secondary
considerations was not commensurate with the scope of the claims where
that evidence related to a single compound and there was no adequate basis
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to conclude that other compounds included within the scope of the claims
would exhibit the same behavior). Appellant has tested just one composition
within the scope of their claims and has not adequately explained why the
result provides evidence that the unexpected result extends to the full range
of compositions within the scope of the claim.
Considering the totality of the evidence, we determine that a
preponderance of the evidence supports the Examiner's conclusion of non-
obviousness with respect to the rejection of claim 34.
Claim 39
Claim 39 is similar to claim 34 except it further optionally requires
"colorants consisting in an amount of 0.001to2 parts by weight based of the
polyester," and excludes flame retardants.
Claim 39 excludes asbestos flame retardant.
Appellant contends that claim 39 also excludes the reinforcing amount
of titanium dioxide disclosed by Kochanowski. Appeal Br. 13. The
problem is that Kochanowski teaches titanium dioxide as a reinforcing
agent, and teaches adding reinforcing agent in an amount from 1 to 80 parts
by weight of the total weight of the composition, which the Examiner
calculates is 0.9 to 79.2 parts by weight based on the amount of polyester, an
amount overlapping the 0.001 to 2 parts by weight based on the polyester of
the claim. Ans. i-f 28. Appellant urges that "there is no evidence that
titanium dioxide in such low amounts would produce the desired resistance
to warpage," Appeal Br. 13, but the concentration range disclosed by
Kochanowski provides some evidence that it would work. Appellant also
urges that Comparative Example 3 shows that titanium dioxide would have
adverse effects on gloss if used in higher amounts, Appeal Br. 13, but
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Comparative Example 3 uses a different polyester and includes no talc. We
cannot say that Comparative Example 3 is probative on this point.
Appellant further make a range of arguments that are the same or
related to arguments we already addressed above in relation to claim 34.
Those arguments fail for the reasons already addressed.
We determine that a preponderance of the evidence supports the
Examiner's conclusion of obviousness with respect to claim 39.
DECISION
The decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
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 )(iv).
AFFIRivIED
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