Ex Parte Kumanan et al

Patent Trials and Appeals Board

Aug 21, 2018

13740092 - (D) (P.T.A.B. Aug. 21, 2018)

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).
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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).
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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
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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
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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.
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Appeal2017-010682
Application 13/740,092
The decision of the Examiner is reversed.
REVERSED
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