11237326 (B.P.A.I. Jan. 11, 2011)

Ex Parte Ma et al

Board of Patent Appeals and InterferencesJan 11, 2011

11237326 (B.P.A.I. Jan. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SHIPING MA and WAYNE YAO ____________ Appeal 2010-008059 Application 11/237,326 Technology Center 1700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1, 4-7, 10-13, 16- 19, and 21-26, the only claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). The Examiner rejected claims 1, 4-7, 10-13, 16-19, and 21-26 under 35 U.S.C. § 103(a) as unpatentable over the combination of Campbell2 and 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. 2 Campbell et al., US 2004/0034132 A1, published February 19, 2004. Appeal 2010-008059 Application 11/237,326 2 Bixler.3 Appellants do not separately argue their claims. Composition claim 1 is representative and is reproduced in Appendix A of Appellants’ Brief (App. Br. 13). Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of claim 1 is unpatentable in view of the combination of Campbell and Bixler. Accordingly, we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the Answer (pages 3-4), which we incorporate herein by reference. Claims 4-7, 10-13, 16-19, and 21-26 fall together with claim 1. We make the following comments solely for emphasis. We disagree with Appellants’ contention that the Examiner’s finding that the claimed invention encompasses a subgenus containing hundreds of compounds is a mischaracterization of the facts on this record (Cf. App. Br. 10-11 and Ans. 5-6). Appellants fail to identify an evidentiary basis on this record that supports a conclusion that the six specific silane coupling agents recited in their claims will exhibit the asserted unexpected properties when placed in combination with any reagent falling within the scope of (a) a polycarbonate resin; (b) a fluoropolymer encapsulated by a rigid copolymer; (c) a filler that is mica, wollastonite, silica, quartz, glass or combinations thereof with or without talc and clay; and (d) an impact modifier that is MBS, Bulk ABS, AES, ADA, MABS, and combinations thereof with or without ABS, as set forth in Appellants’ claimed invention. Accordingly, we are not persuaded by Appellants’ intimation that their asserted unexpected results are limited specifically to what Appellants identify as the point of novelty of their 3 Bixler, US 3,471,439, issued October 7, 1969. Appeal 2010-008059 Application 11/237,326 3 claimed invention, specifically “the use of specific silane coupling agents in polycarbonate compositions” (App. Br. 10-11). For the foregoing reasons, we agree with the Examiner’s finding that Appellants’ evidence of unexpected results is not commensurate in scope with the invention claimed (Ans. 5). Accordingly, we do not reach the merits of the Examiner’s findings as to the asserted correlation between tensile elongation and the toughness of a composition (id.). TIME PERIOD FOR RESPONSE 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 alw SABIC - CYCOLOY SABIC Innovative Plastics - IP Legal ONE PLASTICS AVENUE PITTSFIELD, MA 01201-3697