Ex Parte LI et al

Patent Trial and Appeal Board

Dec 28, 2016

13160740 (P.T.A.B. Dec. 28, 2016)

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.
13/160,740 06/15/2011 Xiangyang Li BMSl 1201 l/MD 11-07 3972
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
12/30/2016 EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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 and MIKHAIL SAGAL
Appeal 2015-006358
Application 13/160,740
Technology Center 1700
Before GEORGE C. BEST, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 5, 6, 10, 11, and 16—19. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 We cite the Specification (“Spec.”) filed Jun. 15, 2011; Final Office Action
(“Final Act.”) dated Apr. 8, 2014; Appellant’s Appeal Brief (“Br.”); and
Examiner’s Answer (“Ans.”).
2 Appellants identify Bayer MaterialScience LLC and Thermal Solution
Resources, LLC as the real parties in interest. Br. 3.
Appeal 2015-006358
Application 13/160,740
BACKGROUND
The subject matter involved in this appeal relates to thermally
conductive compositions that include expanded graphite particles in
combination with a thermoplastic material. Spec. 1, 4. Claims 1, 6, and 11
are reproduced from the Claims Appendix of the Appeal Brief as follows:
Claim 1. A composition consisting essentially of:
about 90% to about 30% of at least one amorphous
thermoplastic selected from the group consisting of
polycarbonate, polymethylmethacrylate (PMMA) and
polystyrene; and
about 10% to about 70% of expanded graphite,
wherein about 90% of the particles of the expanded
graphite have a particle size of at least about 200 microns and
wherein the composition has a thermal conductivity of between
9.1 w/K-m and 51.9 w/K-m and wherein the composition
excludes polytetrafluoroethylene (PTFE) and potassium
perfluorobutane sulphonate.
Claim 6. A composition consisting essentially of:
about 90% to about 30% of at least one semicrystalline
thermoplastic selected from the group consisting of
polyethylene terephthalate (PET), polypropylene (PP),
polyamide, and liquid crystalline polymers (LCPs); and
about 10% to about 70% of expanded graphite,
wherein about 90% of the particles of the expanded
graphite have a particle size of at least about 200 microns and
wherein the composition has a thermal conductivity of between
9.1 w/K-m and 51.9 w/K-m and wherein the composition
excludes polytetrafluoroethylene (PTFE) and potassium
perfluorobutane sulphonate.
Claim 11. A composition consisting essentially of:
about 10% to about 30% of a blend of at least one
amorphous thermoplastic selected from the group consisting of
polycarbonate, polymethylmethacrylate (PMMA) and
polystyrene and at least one semicrystalline thermoplastic
selected from the group consisting of polyethylene terephthalate
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Application 13/160,740
(PET), polypropylene (PP), polyamide, and liquid crystalline
polymers (LCPs); and
about 10% to about 70% of expanded graphite,
wherein about 90% of the particles of the expanded
graphite have a particle size of at least about 200 microns and
wherein the composition has a thermal conductivity of between
9.1 w/K-m and 51.9 w/K-m and wherein the composition
excludes polytetrafluoroethylene (PTFE) and potassium
perfluorobutane sulphonate.
Claims 5, 10, and 16 also are written in independent form and are
directed to a light emitting diode heat sink comprising the composition
recited in claim 1, 6, or 11, respectively.
REJECTIONS
The Examiner maintained the following grounds of rejection:3
I. Claims 1, 6, 17, and 18 stand rejected under 35 U.S.C. § 102(b) as
unpatentable over Wagener.4
II. Claims 11 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagener.
III. Claims 1, 6, 11, and 17—19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Staal.5
IV. Claims 1, 5, 6, 10, 11, and 16—19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hara.6
3 Ans. 2—10; Final Act. 2—10.
4 US 2004/0217332 Al, pub. Nov. 4, 2004 (“Wagener”).
5 WO 2009/043758 Al, pub. Apr. 9, 2009 (“Staal”), as translated in US
2010/0305253 Al.
6 JP 2007-291267A, pub. Nov. 8, 2007 (“Hara”), as translated.
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Application 13/160,740
DISCUSSION
I
With regard to Rejection I, the Examiner found that Wagener’s
Example 10 discloses a composition “consisting essentially of 85%
[polyphenylene sulfide] polymer and 15% of expanded graphite with a
particle size of at least about 200 microns,” and that the disclosed
composition “does not comprise potassium perfluorbutane sulfonate or
PTFE.” Final Act. 2. The Examiner also found that Wagener discloses the
use of polymers other than polyphenylene sulfide, including, e.g.,
polycarbonate, polystyrene, and polymethylmethacrylate. Id. (citing
Wagener at claim 18).
Appellants contend that “none of the examples of Wagener et al.
contain the instantly recited polymers.” Br. 9. We read Appellants’
contention as an argument that the Examiner erred in finding anticipation by
Wagener based on a combination of teachings that appear only separately in
the reference, and we agree. “Anticipation requires the presence in a single
prior art disclosure of all elements of a claimed invention arranged as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008) (citations omitted); see also In reArkley, 455 F.2d 586, 587 (CCPA
1972) (“[R]ejections under 35 U.S.C. § 102 are proper only when the
claimed subject matter is identically disclosed or described in the prior art.”
(emphasis and internal quotation marks omitted)). The Examiner’s selective
combination of different embodiments taught by Wagener fails to set forth a
factual basis which is sufficient to support a prima facie case of anticipation.
Accordingly, we do not sustain Rejection I.
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II
With regard to Rejection II, the Examiner relied on the same factual
findings discussed above in connection with Rejection I, and concluded that
it would have been obvious to provide Wagener’s composition with a
“mixture of polymer, combining polyamide with one of polycarbonate,
polymethylmethacrylate, or polystyrene,” noting that Wagener identifies
each of these materials as suitable for the same purpose. Final Act. 4. The
Examiner’s reasoning is further supported by Wagener’s identification of the
claimed polymers as suitable for the disclosed composition, Wagener 120,
and statement that “[i]t is also possible to use mixtures or alloys of the
polymers,” id. at 129.
Appellants’ sole argument against Rejection II is a reliance on “the
deficiencies of Wagener” articulated in connection with the anticipation
ground of Rejection I. Br. 11. We therefore consider those arguments in the
context of the obviousness ground of Rejection II.
As noted, Appellants argue that none of the examples of Wagener et
al. contain the instantly recited polymers. Br. 9. That fact, however, does
not negate Wagener’s teaching that the instantly recited polymers are
suitable for use in Wagener’s composition, and that mixtures of the
disclosed polymers may be used. Nor does Appellants’ argument that the
compositions in Wagener’s Example 10 are masterbatches that are used to
produce other compositions refute Wagener’s explicit disclosure of
producing the masterbatches. Appellants also argue that Wagener’s
identification of a D50 value for the graphite particles is insufficient to
determine whether those particles exhibit a size distribution such that about
90% have a particle size of at least about 200 microns. However, as the
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Examiner noted, Ans. 12, Wagener appears to use the same commercial
graphite material that Appellants characterize in the Specification as
satisfying the particle size recitation of the instant claims. Compare
Wagener 1106 with Spec. 12 (each referring to a Conductograph GFG500
graphite material). Appellants additionally argue that Wagener’s silence
regarding addition of potassium perfluorobutane sulfonate or PTFE should
not be equated with an exclusion of those materials. Id. at 9-10. Absent any
evidence that potassium perfluorobutane sulfonate or PTFE would have been
expected to inherently or naturally occur in Wagener’s disclosed
compositions, we agree with the Examiner’s finding that Wagener’s
omission of those materials as ingredients constitutes their absence.
For the foregoing reasons, Appellants do not persuade us of reversible
error in the Examiner’s obviousness reasoning in rejecting claim 11.
Appellants do not separately argue claim 19. Accordingly, we sustain the
rejection of claims 11 and 19 on the grounds set forth in Rejection II.
Ill
With regard to Rejection III, Appellants argue the rejected claims as a
group. Br. 14—15. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
claim 1 as representative, and decide the appeal of Rejection III based on the
representative claim alone.
Germane to the issues raised on appeal in connection with Rejection
III, the Examiner found that Staal discloses a composition comprising the
claimed ingredients, and that it would have been obvious to omit
flameproofmg components other than expanded graphite. Final Act. 4
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(citing Staal Examples; 122).7 In the disclosed Examples, Staal provides
compositions formed from a thermoplastic polymer component A and a
flameproofing component B. Staal H 170-178. Component B includes
exfoliated graphite and PTFE. Id.
Appellants argue that Staal’s exfoliated graphite is “expandable”
whereas the rejected claims recite “expanded graphite.” Br. 14. In response,
the Examiner pointed to evidence in Staal identifying the disclosed
expandable graphite as that which has been exfoliated through a chemical
process. Ans. 14 (citing Staal H 64—68). The Examiner also relied on
Staal’s teaching that heat is applied in producing the disclosed composition,
and that the exfoliated graphite expands upon heating. Id. (citing Staal
1170, 149, 174). The Examiner interpreted these disclosures in Staal as
providing evidence that Staal’s graphite is at least partly expanded due to
exfoliation and heating. Id. at 14—15. The foregoing findings and reasoning
are supported by a preponderance of the evidence. See Staal 17 (identifying
expandable graphite as “exfoliated graphite”); id. at 1 64 (explaining that
exfoliated graphite is obtained by chemical oxidation of graphite); id. at
11 69-70 (teaching that exfoliated graphite expands upon heating); id. at
1149 (disclosing mixing temperatures up to 400 °C). Appellants do not
refute the foregoing findings and explanations in any Reply Brief. Nor do
Appellants point us to any evidence of record or technical reasoning to
support the otherwise conclusory contention that Staal’s exfoliated graphite
is not expanded.
7 We adopt the Examiner’s approach in citing to US 2010/0305253 A1 as an
English language version of Staal.
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Appellants also argue that Staal’s identification of a mean particle size
for the disclosed graphite particles fails to establish the percentage of
particles having a size of at least 200 pm. Br. 14. In response, the Examiner
explains that Staal’s teaching of a composition having 19 wt.% expanded
graphite particles, which particles have a d50 of 465 microns, corresponds to
a composition having 9.5% graphite particles that are 465 microns or larger.
Ans. 15. The Examiner finds the calculated 9.5% value to be within the
range of “about 10%” recited in claim 1. Id. Appellants did not file a Reply
Brief or otherwise contest the Examiner’s calculation or claim interpretation.
On this record, we are persuaded that a preponderance of evidence
supports the Examiner’s finding that Staal’s composition includes expanded
graphite, and that Staal’s composition includes about 10% expanded
graphite particles having a size that is at least 465 microns.
For the foregoing reasons, Appellants do not persuade us of reversible
error in the Examiner’s obviousness reasoning in rejecting claim 1.
Appellants do not separately argue any of claims 6, 11, and 17—19.
Accordingly, we sustain the rejection of those claims on the grounds set
forth in Rejection II.
IV
Appellants also argue the rejected claims as a group with regard to
Rejection IV, Br. 18—19, the propriety of which we decide based on
representative claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants present only two arguments against the Examiner’s
determination of obviousness over Hara: (1) the Examiner erred in
“equating silence regarding PTFE and perfluorobutane sulphonate with a
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teaching to actively exclude those compounds;” and (2) the transition phrase
“consisting essentially of’ in claim 1 excludes the short carbon fibers that
necessarily are present in Hara’s composition.
We find the first argument not persuasive for the same reasons given
above in connection with Rejection II. Appellants’ second argument also is
not persuasive.
By using the term “consisting essentially of,” the drafter
signals that the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.
PPG Indus, v. Guardian Indus., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Here, Appellants do not point us to evidence of record or technical reasoning
to support a determination that short carbon fibers would materially affect
the basic and novel properties of the claimed composition. To the contrary,
Hara’s composition, like that of the instant claims, is thermally conductive.
Compare Hara^f 1 with Spec. 1. Moreover, Appellants’ Specification
contemplates the addition of “additives known for their function in the
context of thermoplastic molding compositions,” e.g., “fillers,” Spec. 11—12,
and that “thermally conductive fillers . . . such as carbon fibers” were
known, id. at 3. Thus, Appellants’ contention that Hara’s short carbon fibers
are precluded by the phrase “consisting essentially of’ in claim 1 is neither
supported by nor consistent with the evidence before us.
For the foregoing reasons, Appellants do not persuade us of reversible
error in the Examiner’s obviousness reasoning in rejecting claim 1 over
Hara. Appellants do not separately argue any of the remaining claims
subject to that ground of rejection. Accordingly, we sustain the rejection of
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claims 1,5,6, 10, 11, and 16-19, which are all the claims on appeal, on the
grounds set forth in Rejection IV.
DECISION
The Examiner’s decision rejecting claims 1,5,6, 10, 11, and 16-19 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.
AFFIRMED
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