Ex Parte LI

Patent Trial and Appeal Board

Apr 25, 2017

11447581 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
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.
11/447,581 06/06/2006 Xiangyang Li PO8825/MD05-124 3945
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
GODENSCHWAGER, PETER F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANGYANG LI
Appeal 2016-000551
Application 11/447,5811
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35U.S.C. § 134 from the non-final rejection
of claims 2, 3, 5—7, 10, 11, 14, 15, and 17. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to a stabilizer composition that
stabilizes a polymer against hydrolysis (Spec. 1:8—10). The stabilizer
composition contains carbodiimide and a costabilizer of aluminum oxide or
aluminum oxyhydroxide (Spec. 1:8—10, 2:23—26).
1 The real party in interest is identified as Bayer MaterialScience LLC (Br.
3). As noted by the Examiner, this application was the subject of Appeal
2010-012553 in which the Board affirmed the Examiner’s rejections (Ans.
10; prior Board Decision dated March 1, 2012).
Appeal 2016-000551
Application 11/447,581
Claim 3 is illustrative:
Claim 3. A hydrolytic stabilizer mixture for stabilizing a
polymeric material system against hydrolysis, the mixture
comprising as component i) at least one carbodiimide selected
from the group consisting of
where n is 5 to 50, and as component
ii) co-stabilizer selected from the group consisting of
aluminum oxide and aluminum oxyhydroxide, wherein the
polymeric material system is one selected from the group
consisting of a polyamide, a blend of polycarbonate and
polyester, or a blend of polycarbonate and a rubber modifier.
Appellant appeals the following rejection:
Claims 2, 3, 5—7, 10, 11, 14, 15, and 17 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Wit (US 2006/0074155 Al; published
Apr. 6, 2006) in view of Rogers (US 5,804,626; issued Sept. 8, 1998).
Appellant’s arguments focus on subject matter common to
independent claims 3, 10, and 17. We select claim 3 as representative of the
where R1 — R14 independently one of the others denote a member
selected from the group consisting of hydrogen, halogen,
aliphatic, aromatic, cycloaliphatic and alkoxy radicals and n is 1
to 500
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Appeal 2016-000551
Application 11/447,581
group with the remaining claims standing or falling with our analysis of the
rejection of claim 3.
Appellant argues that Wit does not teach combining boehmite and
carbodiimide as part of a stabilizer (Br. 12). Appellant contends that the
Examiner’s rejection appears to be based upon the faulty premise that a lack
of teaching to do something is a reason to make such a modification. Id.
Appellant does not specifically contest the Examiner’s findings or
conclusions regarding the substitution of Rogers’ carbodiimide as the
carbodiimide in Wit’s composition (Br. 12—13; Ans. 3). Accordingly, the
focus of our decision is on the Examiner’s analysis regarding Wit.
We have fully considered Appellant’s arguments and find ourselves in
agreement with the Examiner’s positions stated on pages 2—12 of the
Answer, which we adopt as our own.
Regarding Appellant’s argument that Wit does not teach an
embodiment that combines boehmite and carbodiimide, Wit teaches that the
polyester composition includes “at least one compound selected from a
mineral-like stabilizer and an organic compound comprising at least one
functional group” (Wit | 5). The plain language of Wit teaches that the
polyester composition may include both a mineral-like stabilizer and an
organic compound. Wit further teaches that the mineral-like stabilizer may
be boehmite and the organic compound may include a carbodiimide
functional group (Tflf 5, 16, 43, 44). Wit further teaches that the preferred
amount of mineral-like stabilizer is between 0.5 to 5% by weight of the
amount of polyester and the preferred amount of organic compound is
between 0.5 to 10% by weight of the polyester (| 47). In other words, Wit
teaches that both a mineral-like stabilizer and an organic compound are part
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Appeal 2016-000551
Application 11/447,581
of the composition. The Examiner finds that the lists of the mineral-like
stabilizers and organic compounds are small, such that one of ordinary skill
in the art would have immediately envisaged the selection of boehmite as the
mineral-like stabilizer and carbodiimide as the organic compound (Ans. 11—
12). Appellant does not dispute this finding of the Examiner.
For the above reasons and on this record, we affirm the Examiner’s
rejection.
DECISION
The Examiner’s decision is affirmed.
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).
AFFIRMED
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