Ex Parte Lee et al

Patent Trial and Appeal Board

Oct 30, 2013

12431825 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/431,825 04/29/2009 Eun-Joo LEE 7020.012 5900
21176 7590 10/30/2013
Additon, Higgins, Pendleton & Ashe, P.A.
11610 North Community House Road
Suite 200
Charlotte, NC 28277-2199
EXAMINER
LEE, DORIS L
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
10/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EUN-JOO LEE and CHANG-MIN HONG
____________

Appeal 2012-007589
Application 12/431,825
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007589
Application 12/431,825

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Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 1-4, 6-13, and 15 as
unpatentable over Yamamoto EP 437 (EP 0 489 437 A2 published June 10,
1992) in view of Bauer (U.S. 2006/0020064 A1 published Jan. 26, 2006)
and of claim 5 as unpatentable over these references in combination with
Yamamoto US 754 (U.S. 5,306,754 issued Apr. 26, 1994). We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM based on NEW GROUNDS OF REJECTION.

Appellants claim a flame retardant thermoplastic resin composition
comprising a mixed resin including an aromatic polyamide resin and a
polyphenylene sulfide resin and further comprising about 5 to about 30 parts
by weight of a phosphinic acid metal salt flame retardant wherein the
composition discharges out-gas in a range of about 0.1 to about 1.5
weight % (claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A flame retardant thermoplastic resin composition
comprising:
(A) about 100 parts by weight of a mixed resin including
about 10 to about 90 wt% of an aromatic polyamide resin (A-1)
and about 10 to about 90 wt% of a polyphenylene sulfide resin
(A-2);
(B) about 5 to about 30 parts by weight of a phosphinic
acid metal salt flame retardant; and
(C) about 10 to about 100 parts by weight of a filler,
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Application 12/431,825

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wherein the composition discharges out-gas in a range of
about 0.1 to about 1.5 wt% when its weight decrease is
measured with TGA (thermogravimetric analysis) at 320°C for
30 minutes.
Appellants' arguments relate to the limitations recited in claim 1 only
(App. Br. 10-21). As a consequence, claims 2-13 and 15 will stand or fall
with claim 1.
We fully share the Examiner's conclusion that it would have been
prima facie obvious to provide the resin composition of Yamamoto EP 437
with a phosphinic acid metal salt flame retardant in an amount from 0.5 to
45 weight % in order to obtain the expected benefit of flame retardant
properties as taught by Bauer (Ans. 5).1
Appellants' arguments against this conclusion of prima facie
obviousness (see, e.g., App. Br. 11-12) are not persuasive. "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). One with ordinary skill in this
art would have combined the Yamamoto EP 437 composition with the type
and amount of flame retardant taught by Bauer in order to obtain the
predictable result of flame retardation.

1 In the "Response to Argument" section of the Answer, the Examiner
attempts to reinforce the above conclusion of prima facie obviousness by
stating that a number of the phosphorus compounds listed by Yamamoto
EP 437 as stabilizers "such as triphenyl phosphate are known phosphorous
flame retardants" (Ans. para. bridging 8-9). This statement is not supported
by evidence, and we do not rely on it in determining that the above
combination of Yamamoto EP 437 with Bauer would have been prima facie
obvious.
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We further share the Examiner's determination that the above
combination of prior art teachings would have yielded a composition having
the ingredients and amounts required by claim 1 and, therefore, also having
the inherent property of the claim 1 out-gas discharge rate (Ans. 6).
Appellants argue that their claimed out-gas discharge rate is not an
inherent property of the modified Yamamoto EP 437 composition (App. Br.
14). In support of this argument, Appellants contend the comparative data in
the § 1.132 Lee Declaration of record shows that the property is possessed
by compositions having the claimed flame retardant amounts but not by
compositions having flame retardant amounts above the claimed range yet
within the amounts taught by Bauer (id. at 14-18).
We perceive no convincing merit in Appellants' argument. As
indicated above, the proposed combination would have yielded a
composition having the ingredients and amounts required by claim 1. The
proffered Declaration evidence supports rather than undermines the
Examiner's determination that such a composition inherently possesses the
claimed out-gas discharge rate. Contrary to Appellants' belief, it is
irrelevant to the issue of prima facie obviousness that the applied prior art
also would have suggested other compositions which are outside the scope
of claim 1 and which would not possess the claimed discharge rate. See
Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir.
2003) ("a prior art product that sometimes, but not always, embodies a
claimed method nonetheless teaches that aspect of the invention").
Finally, Appellants argue their Declaration evidence shows that the
claimed compositions unexpectedly exhibit reduced out-gas discharge (App.
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Application 12/431,825

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Br. 18-19). In this regard, Appellants emphasize that it was they, not the
applied prior art, who recognized outgassing as a problem (id. at 20-21).
Appellants' Declaration evidence of an unexpected out-gas discharge
benefit has several infirmities.
In particular, the evidence is limited to a specific aromatic polyamide
resin, a specific polyphenylene sulfide resin, and a specific phosphoric acid
metal salt flame retardant (see Decl. para. 6 and Table 1; Spec. 25:9-26:7)
whereas claim 1 encompasses all types of such ingredients. Similarly, the
evidence is limited to specific amounts of these resins (see Decl. Table 1)
whereas claim 1 defines a broad range of such amounts. For these reasons,
it appears that Appellants' evidence is not commensurate in scope with
argued claim 1. Significantly, Appellants do not provide the record of this
appeal with an explanation why the scope of their evidence should be
considered commensurate with claim 1.
Additionally, it is unclear why Appellants regard Supplemental
Comparative Example 1 of this evidence as yielding unacceptable results.
The only result or property of this comparative example, which differs from
the inventive examples, is a UL 94 flame retardancy of V-1 rather than V-0
of the inventive examples. However, the Specification discloses a number
of inventive examples having a V-1 flame retardancy (see inventive
examples 3-4 at Spec. 27-28, inventive example 5 at Spec. 29, and inventive
examples 6-7 at Spec. 31). This lack of clarity undermines Appellants'
position that the inventive and comparative examples of the Declaration
evince unexpected benefits with respect to claim 1.
It is also unclear why Appellants regard the claimed out-gas discharge
range of about 0.1 to about 1.5 weight % as acceptable and concomitantly
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why Appellants regard the 1.6 weight % discharge rate of their Declaration
Supplemental Comparative Example 2 as unacceptable. Based on the record
before us, Appellants' characterization of the claimed range as acceptable
appears to be arbitrary. For all we know, the 1.6 weight % discharge rate of
Supplemental Comparative Example 2 is not meaningfully less acceptable
(e.g. in terms of corrosive impact) than the claimed maximum of about
1.5 weight %. Again, Appellants' unexpected-benefits argument is
undermined by this lack of clarity.
Under these circumstances, we consider Appellants' evidence of
nonobviousness in the form of unexpected benefits to be weak relative to the
Examiner's strong reference evidence of obviousness. It is our
determination, therefore, that the evidence of record on balance weighs most
heavily in favor of an ultimate conclusion of obviousness. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("[W]e hold that even if
Pfizer showed that amlodipine besylate exhibits unexpectedly superior
results, this secondary consideration does not overcome the strong showing
of obviousness in this case. Although secondary considerations must be
taken into account, they do not necessarily control the obviousness
conclusion.").
For the above stated reasons, we sustain the Examiner's § 103
rejections of argued independent claim 1 as unpatentable over Yamamoto
EP 437 and Bauer and of non-argued claims 2-13 and 15 as unpatentable
over these references alone or in combination with additional prior art.
Our reasons for considering Appellants' Declaration evidence to be
unpersuasive differ significantly from those given by the Examiner (see Ans.
9-10 ("it appears from the data[] that the outgassing simply depends upon
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the amount of phosphinic acid metal salt")). Accordingly, we denominate
the sustained rejections on appeal as new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

The decision of the Examiner is affirmed.

AFFIRMED
(37 C.F.R. § 41.50(b))
bar