Ex Parte LI

Patent Trial and Appeal Board

Feb 28, 2017

13905243 (P.T.A.B. Feb. 28, 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.
13/905,243 05/30/2013 XiangyangLi BMS132026US/MD09-18-US 1033
157 7590 03/02/2017
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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 2016-000215
Application 13/905,243
Technology Center 1700
Before TERRY J. OWENS, JULIA HEANEY, and MONTE T. SQUIRE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 1—10.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Final Office Action appealed from, mailed
August 22, 2014 (“Final Act.”); the Appeal Brief dated April 22, 2015
(“App. Br.”); and the Examiner’s Answer to the Appeal Brief dated August
13,2015 (“Ans.”).
2 Appellant identifies Bayer Material Science LLC as the Real Party in
Interest. App. Br. 3.
Appeal 2016-000215
Application 13/905,243
The Claimed Invention
Appellant’s disclosure relates to a flame-retardant thermoplastic
molding composition made from an aromatic polycarbonate, an impact
modifier, a bis-phenol-A oligophosphate, and glass fibers; and wherein the
composition is free from halogenated flame retardants. Abstract; Spec. 4, 5.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief (App. Br. 9) (key
disputed limitation italicized):
1. A flame-retardant thermoplastic molding composition
comprising:
an aromatic polycarbonate;
an impact modifier;
a bisphenol-A oligophosphate, and glass fibers,
wherein the aromatic polycarbonate content is between
50 to 85 pbw (parts by weight), the impact modifier content is
between 2 to 15 pbw, the bisphenol-A oligopho[s]phate content
is between 5 to 25 pbw, and the glass fiber content is between 3
to 45 pbw, wherein the ratio of polycarbonate to bisphenol-A
oligophosphate is less than about 7.5, wherein the ratio of glass
fibers to bisphenol-A oligophosphate is less than about 2.5,
wherein the composition is rated VO at 1.5 mm according to
UL-94, and wherein the composition is free from halogenated
flame retardants.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Lee et al., US 5,952,408 Sep. 14, 1999
(hereinafter “Lee”)
Lujiguchi et al., US 6,613,820 B2 Sep. 2,2003
(hereinafter “Lujiguchi”)
Li et al., US 2008/0090961 Al Apr. 17, 2008
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Appeal 2016-000215
Application 13/905,243
(hereinafter “Li ’961”)
Jang et al.,
(hereinafter “Jang”)
Rogunova
Li et al.,
(hereinafter “Li ’562”)
US 2009/0143513 Al Jun. 4, 2009
US 7,709,562 B2 May 4, 2010
US 2009/0118402 Al May 7, 2009
Ebeling et al.,
(hereinafter “Ebeling”)
Li et al.,
(hereinafter “Li ’096”)
US 7,799,855 B2 Sep. 21,2010
US 8,552,096 B2 Oct. 8, 2013
Zhao et al.VI
(hereinafter “Zhao”)
US 2013/0317149 Al Nov. 28,2013
The Rejections
On appeal, the Examiner maintains the following rejections3: Claims
1—10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee
or Fujiguchi or Ebeling or Li ’096 or Jang or Zhao, in view of Li ’562 or Li
’961 or Rogunova.4 Ans. 2.
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief, which
3 The Examiner has withdrawn Nodera et al., U.S. Patent No. 6,448,324
(issued Sep. 10, 2002) (“Nodera”) as a prior art reference in rejecting the
claims on appeal. App. Br. 4. We note that Nodera was previously included
as a reference in the Examiner’s Statement of Rejection provided at page 2
of the Final Office Action.
4 The Examiner’s rejections are based severally on Lee, Fujiguchi, Ebeling,
Li ’096, Jang, or Zhao each as “primary references” and Li ’562, Li ’961, or
Rogunova each as “secondary references.” Ans. 2.
OPINION
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Appeal 2016-000215
Application 13/905,243
we adopt as our own. We highlight and address specific findings and
arguments for emphasis.
Appellant argues claims 1—10 as a group. App. Br. 4. We select
claim 1 as representative and the remaining claims stand or fall with claim 1.
37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that the combination of prior art references, as
stated, suggests a flame-retardant thermoplastic molding composition
satisfying all of the limitations of claim 1 and concludes that the
combination would have rendered claim 1 obvious. Ans. 2, 3; Final Act. 2,
3.
Based on the findings regarding the teachings of the prior art, the
Examiner concludes that:
It would have been obvious to one having ordinary skill in the
art, at the time the invention was made, to use the impact
modifier of the secondary references in the composition of the
primary references because it is the preferred impact modifier
for phosphate containing polycarbonate compositions.
Ans. 3.
Appellant argues that the Examiner’s rejection should be reversed
because the claimed compositions are patentably distinguishable from the
cited combination of references. App. Br. 7. In particular, Appellant argues
that none of the cited references teach the compositions of the present
invention because the “inventive compositions are halogen free” and exclude
“any halogen containing flame retardants such as fluoro-olefms.” Id. at 7.
Appellant essentially argues that the cited prior art does not teach or suggest
the limitation “wherein the composition is free from halogenated flame
retardants” as recited in claim 1.
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Appeal 2016-000215
Application 13/905,243
Appellant contends that, in contrast to the claimed composition,
Li ’961, Jang, and Rogunova each teaches the use of a fluorinated polyolefin
and that there is “no teaching or suggestion to one of ordinary skill in the art
to combine these references with the others while removing the halogenated
compound.” App. Br. 7. Appellant also contends that the other cited
references disclose compositions “missing essential components of the
composition of the present invention.” Id.
We are not persuaded by Appellant’s arguments. On the record
before us, we find that a preponderance of the evidence and sound technical
reasoning support the Examiner’s obviousness conclusion and determination
(Ans. 2, 3) that the cited combination of prior art suggests all of the
limitations of claim 1, including “wherein the composition is free from
halogenated flame retardants.” Lee, col. 7,11. 19—23, claims 1 and 9;
Fujiguchi, col. 6,11. 32—56, claim 1; Ebeling, col. 11,11. 21—22, col. 15,11.
40-41, col. 16,11. 36—38, claim 1; Li ’096, col. 18,11. 50-55, claim 15; Jang
51, 66, claims 1 and 4; Zhao H 79, 80, 85, claims 1,3, and 19; Li ’9611
40, claim 1; Rogunova, Abstract, claim 1; Li ’562, col. 22,1. 37, col. 24,11.
4-7, 65-67, col. 25,11. 29-30, col. 26,11. 5-7.
The Examiner also provides a reasonable basis and identifies
sufficient evidence in the record to evince why one of ordinary skill would
have combined the teachings of the cited references to arrive at Appellant’s
claimed invention. Ans. 3 (explaining that one of ordinary skill would have
had reason to use the impact modifier of the secondary references in the
composition of the primary references because it is the preferred impact
modifier for phosphate containing polycarbonate compositions).
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Appeal 2016-000215
Application 13/905,243
Appellant fails to direct us to adequate evidence or provide a
persuasive technical explanation to show why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed).
We do not find Appellant’s arguments that the “inventive
compositions are halogen free” and the claims exclude “any halogen
containing flame retardants such as fluoro-olefms” (App. Br. 7) persuasive
for the well-stated reasons provided by the Examiner at pages 5 through 9 of
the Answer. In particular, as the Examiner correctly points out (Ans. 6),
claim 1 does not exclude any halogen containing compound. In re Van
Geuns, 988 F.2d 1181, 1184-85 (Fed. Cir. 1993). Rather, the claim recites
that “the composition is free from halogenated flame retardants” and thus,
excludes only halogenated flame retardants—and not any and all
halogenated compounds, as Appellant’s argument suggests.
Appellant’s arguments regarding the use of a fluorinated polyolefin
and that the fluoro-olefms disclosed in the prior art are flame retardants
(App. Br. 7) are not persuasive because they are conclusory and unsupported
by sufficient evidence in the record. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Moreover, as the Examiner finds (Ans. 7—9), the prior art of record
actually teaches that PTFE and fluoro-olefms similar to PTFE are used as
anti-dripping agents (e.g., Fee, col. 6,1. 63—col. 7,1. 18; Ebeling, col. 15,11.
5—34). Appellant does not identify or direct us to any persuasive teaching in
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Application 13/905,243
the record that such fluoro-olefm compounds are used or considered as
flame retardants in the prior art compositions. As the Examiner notes (Ans.
6), Appellant’s own Specification is consistent with the Examiner’s findings
in this regard. See Spec. 2,11. 2-4 (disclosing that the “flame retardant
composition may include additives and fillers, in particular, fluorine-
containing ethylene polymers which exhibit a resin melt dropping preventing
effect”) (emphasis added). Appellant’s arguments, without more, are
insufficient to rebut or otherwise establish reversible error in the Examiner’s
analysis and factual findings in this regard.
Accordingly, we affirm the Examiner’s rejection of claims 1—10 under
35 U.S.C. § 103(a) as unpatentable over the combination of Lee or Fujiguchi
or Ebeling or Li ’096 or Jang or Zhao, in view of Li ’562 or Li ’961 or
Rogunova.
DECISION/ORDER
The Examiner’s rejections of claims 1—10 are affirmed,
ft is ordered that 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).
AFFIRMED
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