Ex Parte Kumanan et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813740092 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/740,092 01/11/2013 52674 7590 Baker & Hostetler LLP 1170 Peachtree Street NE Suite 2400 Atlanta, GA 30309-7676 08/23/2018 FIRST NAMED INVENTOR Anton Kumanan 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. 092474.022380 (12PLAS0167 CONFIRMATION NO. 5929 EXAMINER YOUNG, WILLIAM D ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTON KUMANAN, REEMA SINHA, SUSANTA MITRA, and UCHIYAMA TATSUYA 1 Appeal2017-010682 Application 13/740,092 Technology Center [1700] Before BRADLEY R. GARRIS, BRIAND. RANGE, and DEBRA L. DENNETT, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant maintains the subject appeal under 35 U.S.C. § 134 in response to the Examiner's new grounds of rejection under 35 U.S.C. § 103(a) of claims 13-15 and 17 as unpatentable over Bhatt (US 2010/0078194 Al, published Apr. 1, 2010) and of claims 18, 20, and 23 as unpatentable over Bhatt in view of Yu (US 2009/0209695 Al, published 1 Appellant is the Applicant SABIC Global Technologies, B.V., which is identified as the real party in interest (App. Br. 1 ). Appeal2017-010682 Application 13/740,092 Aug. 20, 2009) (Subsequent Answer (dated 29 June 2017) ("Ans.") 3---6, Reply Br. 1). 2 We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellant claims an electrostatic dissipative composite comprising a continuous thermoplastic polymer phase and a dispersed filler phase comprising a conductive carbon black and a non-conductive polymer such as styrene-acrylonitrile, wherein the composite exhibits a particular tolerance level range (independent claims 13 and 23) as well as a particular surface resistivity range (claim 13), and wherein the amount of the non-conductive polymer ranges from 15 to 25 weight % relative to a total filler loading (claim 23). A copy of representative claims 13 and 23, which are the only independent claims on appeal, appears below. 13. An electrostatic dissipative composite, comprising (a) a continuous thermoplastic polymer phase; and (b) at least one dispersed filler phase comprised of a filler composition, comprising (i) a conductive carbon black; and (ii) a non-conductive polymer wherein at least one non-conductive polymer is selected from the group consisting of one of a styrene- acrylonitrile copolymer and an ultra-high molecular weight polymer and mixtures thereof; 2 The Examiner withdraws the grounds of rejection in the Final Office Action under 35 U.S.C. § 102(b )/§ 103(a) of claims 13-15 and 17 over Bhatt and under§ 103(a) of claims 18, 20, and 23 over Bhatt in view of Yu (Subsequent Answer (dated 29 June 2017) ("Ans.") 3). 2 Appeal2017-010682 Application 13/740,092 wherein the composite exhibits a surface resistivity in the range of from 106 ohm/ sq to 109 ohm/ sq; wherein the composite exhibits a tolerance level in the range of from ±0.37 to ± 1.0. 23. An electrostatic dissipative composite, comprising (a) a continuous thermoplastic polymer phase comprising at least one polymer selected from the group consisting of polybutylene terephthalate and polycarbonate; and (b) at least one dispersed filler phase comprised of a filler composition, comprising (i) a conductive carbon black; and (ii) at least one non-conductive polymer selected from one of the group consisting of styrene-acrylonitrile copolymer encapsulated polytetrafluoroethylene and ultra-high molecular weight polyethylene polymer; wherein the non-conductive polymer is present in an amount in the range of from 15 to 25 weight % relative to a total filler loading; and wherein the composite exhibits a tolerance level in the range of from ±0.37 to±l.O. The§ 103 rejections of claims 13 and 23 depend upon the Examiner's finding that the compositions of Bhatt's Figure 2 (see also Table 5) possess the claimed tolerance level range (Ans. 4--5). However, Appellant correctly points out that these compositions of Bhatt do not correspond to the claimed compositions and accordingly argues that "the Examiner errs by relying upon the data of Bhatt's Fig. 2 as meeting the claimed tolerance level values" (Reply Br. 3; see also App. Br. 8). 3 Appeal2017-010682 Application 13/740,092 This well taken argument is convincing, particularly because the Examiner fails to address it in the Response to Argument section of the Answer (see Ans. 6-9). For this reason alone, the Examiner's§ 103 rejections are not sustainable. These rejections also cannot be sustained for the additional reasons which follow. In the§ 103 rejection of claim 13, the Examiner finds that the compositions of Bhatt's Figures 2 and 3 (see also Table 5) possess the claimed surface resistivity range (Ans. 4). Similar to the above argument, Appellant contends that the Examiner's finding is erroneous because these compositions of Bhatt do not correspond to the claim 13 compositions due to Bhatt's compositions not including, for example, the claimed non-conductive polymer (Reply Br. 4; see also App. Br. 9). In responding to this contention, the Examiner maintains the surface resisitivity finding but fails to address Appellant's observation that Bhatt's compositions do not include the non-conductive polymer of claim 13 (Ans. 7). In the Response to Argument section of the Answer, the Examiner additionally responds by concluding that the claimed surface resistivity range would have been obvious (id. at 8). However, this obviousness conclusion is not presented in the § 103 rejection advanced in this appeal (see id. at 3-5). Therefore, we take no position on the Examiner's inappropriately submitted conclusion of obviousness. See Ex parte Frye, 2010 WL 889747, *6 (BPAI 2010) precedential opinion ("The Examiner in the present case has not based any of the rejections for our review on a 4 Appeal2017-010682 Application 13/740,092 theory that [the claimed subject matter] ... would have been obvious ... , and thus we take no position on this issue in the present opinion."). In summary of the foregoing, the§ 103 rejection of claim 13 also cannot be sustained because the Examiner errs in finding that the above identified compositions of Bhatt possess the claimed surface resistivity range. The rejection of claim 23 is based on the findings that Bhatt fails to disclose the claimed filler (i.e., TSAN) in the claimed amount (i.e., 15 to 25 weight% relative to a total filler loading) but that Yu teaches using TSAN as an anti-drip agent in an amount which, in combination with Bhatt's filler amount, yields a TSAN amount range encompassing the claimed range (Ans. 5---6). The Examiner concludes that a person of ordinary skill in the art would have been motivated to combine the TSAN of Yu with the composition of Bhatt "in order to obtain a conductive polymer composition containing an anti-drip agent" (id. at 6). Appellant argues "neither [Bhatt nor Yu] teaches that TSAN is a filler or that TSAN is present as a filler in an amount between 15 and 25 wt. % relative to a total filler loading as claimed" (Reply Br. 5; see also App. Br. 9-10). The Examiner rebuts this argument by reiterating the finding that combining Yu's anti-drip amount with Bhatt's filler amount yields an amount of TSAN "which encompasses the claimed range of 15-25 %" (Ans. 8). Concerning the use of TSAN as a filler, the Examiner states "TSAN is 5 Appeal2017-010682 Application 13/740,092 known in the art as a filler" and cites a non-applied reference (i.e., U.S. Pat. 6,414,084) in support of this statement (id. at 9). The Examiner's rejection of claim 23 contains reversible error in multiple respects. First, the Examiner provides no articulated reasoning with rational underpinning to support the determination that Yu's anti-drip amounts would have been combined with Bhatt's filler amounts to yield a range encompassing the claimed range. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Second, the Examiner improperly relies on a non-applied reference as support for concluding that it would have been obvious to use TSAN as a filler. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970) (holding that a reference relied on to support a rejection should be positively included in the statement of the rejection). Third, the Examiner's proposed use of TSAN in the claimed amount as a filler in Bhatt's composition is incompatible with the determination made in the rejection that an artisan would have been motivated to combine Bhatt and Yu in order to obtain a composition "containing [TSAN as] an anti-drip agent" (Ans. 6 (emphasis added)). Under the circumstances recounted above, we do not sustain the Examiner's§ 103 rejections of the appealed claims. 6 Appeal2017-010682 Application 13/740,092 The decision of the Examiner is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation