Ex Parte Marschke

Board of Patent Appeals and Interferences

Mar 31, 2008

10456643 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAJENDRA KASHINATH SINGH and
YE-GANG LIN
____________

Appeal 2008-0508
Application 10/604,166
Technology Center 1700
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Decided: March 31, 2008
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 10/604,166

I. BACKGROUND
The invention relates to a fire-retardant transparent polycarbonate
composition. Claim 1 is illustrative of the subject matter on appeal:
1. A polycarbonate composition comprising:

(a) polycarbonate produced in a base-catalyzed melt
polymerization reaction to which an acidic quencher has been
added in a 1 to 30-fold molar ratio with respect to the amount of
initial basic catalyst; and

(b) a flame-retardant component comprising a potassium
perfluoroalkane sulfonate and a cyclic siloxane, wherein
components (a) and (b) work in combination such that the
composition achieves a V0 UL flammability rating at a
thickness of 2 mm and has a haze of no more than 1%.

The grounds of rejection to be reviewed are:
1. The rejection of claims 1-29 under 35 U.S.C. § 112, ¶ 1 for lack of
enablement;
2. The rejection of claims 1-29 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over
Rosenquist et al. (US 6,353,046 issued Mar 5, 2002);
3. The rejection of claims 1-29 under 35 U.S.C. § 103(a) as unpatentable
over Rosenquist in view of Sakashita et al. (US 5,606,007 issued Feb.
25, 1997) and Mestanza (US 6,136,945 issued Oct. 24, 2000); and
4. The rejection of claims 1-29 under 35 U.S.C. § 103(a) as unpatentable
over Mark et al. (US 4,130,530 issued Dec. 19, 1978) in view of
Rosenquist and Nouvertne (US 3,775,367 issued Nov. 27, 1973).

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II. DISCUSSION
Enablement
Turning first to the rejection under 35 U.S.C. § 112, ¶ 1 for lack of
enablement, we note that the initial burden of presenting reasons or evidence
to support this type of rejection rests with the Examiner, and, if met, the
burden shifts to Appellants. See In re Wright, 999 F.2d 1557, 1561-62 (Fed.
Cir. 1993). Specifically, the Examiner must advance acceptable reasoning
inconsistent with enablement. Thereupon, the burden shifts to Appellants to
show that one of ordinary skill in the art could have practiced the claimed
invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229,
1232 (CCPA 1982); see also Wright, 999 F.2d at 1561 (“Although not
explicitly stated in section 112, to be enabling, the specification of a patent
must teach those skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’”).
The Examiner bases the rejection on the fact that Appellants’ claim 1
recites the use of an acidic quencher in a particular range of molar ratios, but
Tables 1 and 2 in the Specification presents results for two specific acidic
quenchers, butyl tosylate and phosphorous acid, within the claimed ratio that
do not result in the claimed V0 UL flammability rating.
As pointed out by Appellants, the examples relied upon by the
Examiner are not within the scope of the claim as they do not meet the V0
UL flammability requirement (Br. 3). The claims require both the molar
ratio and the flammability rating. Only those polycarbonate compositions
meeting both requirements are within the scope of the claim. The fact that
the Specification includes examples outside the scope of the claim does not
alone provide sufficient evidence that the full scope of the claims lack
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enablement. The claim is written to encompass other acidic quenchers and
the molar ratio must be viewed as applying to all known acid quenchers.
The Specification indicates that a range of acids were known in the art and
could be selected (Spec. ¶ 0015). In meeting the initial burden, the
Examiner must take into account the knowledge of those of ordinary skill in
the art and the unpredictable nature of the art. In re Bowen, 492 F.2d 859,
862 (CCPA 1974). The question is whether, once imagined, other
embodiments could be made without difficulty and their performance
characteristics predicted by resort to known scientific laws or whether
unpredictability is such that it would be difficult for the ordinary artisan to
extend the teaching to other embodiments. Id. It appears from the
Specification as a whole, which provides a general discussion of acid
quenchers, their purpose, and guidance on concentration levels, that only
routine experimentation would be required to determine the operable
embodiments.
The Examiner has not provided a basis to conclude that the examples
of Tables 1 and 2 are inconsistent with enablement. Moreover, other
evidence within the Specification supports enablement and the Examiner has
not provided sufficient reasons to doubt those portions of the Specification.
The Rejection over Rosenquist
Turning to the second rejection, i.e., the rejection over Rosenquist, we
find this rejection lacking sufficient support as well. The Examiner
advances two rationales to support the rejection. First, the Examiner relies
upon Example 2 (Tables 2A and 2B) as describing the claimed
polycarbonates even though this example is silent with respect to melt
polymerizing with a base catalyst and adding an acid quencher, shifting the
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burden to Appellants to show that the composition differs from that claimed,
the “difference” being a difference in process rather than a difference in
composition (Ans. 5). Second, the Examiner relies upon Rosenquist’s
suggestion that the process taught by Sakashita was known in the art and
determines that the polycarbonate of Rosenquist would encompass the
claimed polycarbonate (Ans. 5-6).
We agree that it is sometimes acceptable, when a product claim
contains a process limitation, to base a rejection alternatively on either
section 102 or section 103 on the theory that a prior art product reasonably
appears to be either identical with or only slightly different than the claimed
product. But the Examiner must provide sufficient basis in fact or technical
reasoning supporting the determination of identity or substantial identity.
In the present case, however, the claimed melt polymerization process
includes the addition of a catalyst and an acidic quencher. There is no
evidence here that the catalyst completely disappears from the product.
Appellants’ Specification indicates that the acidic quencher in the claimed
amount will neutralize some but not all of the catalyst. Pockets of residual
base sufficient to affect the properties of the composition will remain (Spec.
¶ 0016).
Example 2 of Rosenquist is completely silent with respect to the
process by which the polycarbonate was polymerized. Moreover, the first
paragraph of column 2, indicates that various polymerization processes were
known in the art. While it may have been obvious to one of ordinary skill in
the art to select one of the known processes disclosed in column 2, we
cannot agree that Rosenquist “describes” a polycarbonate with sufficient
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specificity to shift the burden to Appellants to show that the claimed product
is, in fact, different from that of Rosenquist’s Example 2.
With respect to the Examiner’s second basis for rejecting the claims,
i.e., that Rosenquist would encompass the claimed polycarbonate because
the reference discloses that the process of Sakashita was well known in the
art, we also cannot agree that this provides a basis for anticipation.
“[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.’” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). We note that the Examiner has
not, in the context of this rejection, provided an obviousness rationale.
We conclude that the Examiner has not established unpatentability
over Rosenquist in the context of the rejection under 35 U.S.C. § 102(b) or,
in the alternative, under 35 U.S.C. § 103(a).
Obviousness
The rejections based on obviousness over Rosenquist in combination
with Sakashita and Mestanza or those references along with Mark and
Nouvertne stand on different footing. Rosenquist expressly suggests using
the process of Sakashita, a process referenced by Appellants as a base-
catalyzed melt polymerization with acid quenching (Spec. ¶¶ 0011 and
0015), to polymerize polycarbonate. Mestanza also describes a melt
polymerization process meeting the requirements of claim 1. Sakashita
suggests using molar ratios of acidic quencher to basic catalyst
encompassing those claimed (Sakashita, col. 8, ll. 22-26).1 Moreover, the

1 While Sakashita bases the mole ratio on the amount of base catalyst
(alkaline compound) remaining in the polycarbonate, theoretically, that
amount should be roughly the same as the initial base catalyst (the basis of
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prior art evinces a desire to optimize for V0 UL flammability rating while
minimizing haze (retaining the high clarity of the polycarbonate)
(Rosenquist, col. 1, ll. 7-20), haze being minimized by limiting the amount
of perfluoroalkane sulfonate flame retardant (Rosenquist, col. 2, ll. 24-30)
and using cyclic siloxane to synergistically improve the fire-retardant
properties (Rosenquist, col. 3, ll. 5-18).
Appellants are claiming a composition incorporating known
components in known concentrations to yield predictable properties. The
evidence, prima facie, supports a conclusion of obviousness. “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., 127 S. Ct. 1727, 1739 (2007); see also In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003) (“[T]he existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that this
invention would not have been obvious.”); and In re Boesch, 617 F.2d 272,
276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art.”
(Citations omitted)).
We note that both of the Examiner’s obviousness rejections rely upon
Rosenquist, Sakashita, and Mestanza as evidence of obviousness.
Discussion of Mark and Nouvertne is not necessary; we sustain both
obviousness rejections for the reasons given above.
Appellants’ claims). Catalysts are not consumed during reaction. Therefore,
it is reasonable to conclude that the molar ratios of the claims can be directly
compared to those of Sakashita.
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Under the heading “The Evidence is Commensurate with the Scope of
the Claims,” Appellants refer to a “showing” (Br. 8). Appellants’ Briefs do
not identify this “showing,” however, it appears that Appellants are relying
upon the data presented in Tables 1 and 2 located between ¶¶ 0027 and 0028
and ¶¶ 0029 and 0030 of the Specification, respectively.2 Tables 1 and 2 are
reproduced below.

Appellants contend that the evidence is commensurate in scope for
various groups of claims (Br. 8-11).
As a first matter, once a prima facie case of obviousness is
established, the burden of coming forward with evidence and argument in
rebuttal is shifted to the appellant. See In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984). Appellants have not concretely stated how they are relying
upon their data, but it appears they are attempting to show the claimed

2 The Tables are reproduced in the Amendment to the Specification filed
October 26, 2005 submitted with a receipt showing they were filed with the
original Specification.
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compositions possess unexpectedly improved properties. “In order for a
showing of ‘unexpected results’ to be probative evidence of
non-obviousness, it falls upon the applicant to at least establish: (1) that
there actually is a difference between the results obtained through the
claimed invention and those of the prior art, … and (2) that the difference
actually obtained would not have been expected by one skilled in the art at
the time of invention.” In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973)
(citations omitted).
Appellants in their Briefs do not point to any statement declaring what
results would have been considered unexpected. The most relevant
statement we could find is located in the Specification at paragraph 9.
According to this portion of the Specification,
The present invention is based on several surprising
observations. First, it was observed by the inventors that
polycarbonate produced via a base-catalyzed, for example
sodium hydroxide-catalyzed, melt polymerization has a
significantly higher solubility for perfluoroalkane sulfonates
without loss of transparency. Secondly, the flame retardancy of
the perfluoroalkane sulfonate was significantly improved by the
presence of the residual base catalyst. Furthermore, it appears
that there is an optimum range of residual base catalyst that
allows enhancement of flame performance. Excessive base
catalyst can result in the decay of flame performance. In this
invention, the optimum level of residual base catalyst is
achieved by controlling the acid quencher loading to a level
which is in the range of 1-30 fold molar ratio with respect to the
initial base catalyst.

(Spec. ¶ 0009).
Based on the above, it appears that Appellants believe there is a
difference in result (flame retardancy) based upon the presence of residual
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base catalyst from the melt polymerization process. But Appellants’ data
does not compare flame retardancy results between their claimed
polycarbonates and non-base catalyzed polycarbonates. In other words,
Appellants have not compared their claimed polycarbonate with that of the
closest prior art, i.e., Rosenquist. See In re Baxter Travenol Labs, 952 F.2d
388, 392 (Fed. Cir. 1991) (The “difference in results” must be established as
being between the claimed subject matter and the closest prior art.). Nor,
given the prior art discussion of flame retardancy and haze, can we say
Appellants’ statement in the Specification about “surprising observations” is
enough to show the results of Tables 1 and 2 would have been unexpected to
one skilled in the art such that the totality of the evidence supports a
conclusion of non-obviousness. In order to properly evaluate whether a
property would have been unexpected, we must consider what properties
were expected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007). Moreover, “[a]lthough secondary considerations must be taken into
account, they do not necessarily control the obviousness conclusion.” Id.,
480 F.3d at 1372.
The above deficiencies apply to all the claims.
We also agree with the Examiner that Appellants have not established
that the data is commensurate in scope with the claims. In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” (Quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). While
Appellants state that the two acids tested are fairly representative of the
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broad class of acidic compounds encompassed by the broad claims, this
statement is not supported by evidence, it is only attorney argument. See
In re Soni, 54 F.3d 746, 750 (Fed.Cir.1995) (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.”).
Nor is the data commensurate in scope with the claims limited to butyl
tosylate and phosphorous acid. For example, only polycarbonates
containing 0.8 % cyclic octaphenyl siloxane were tested. None of the claims
are limited to this particular siloxane in this amount, nor have Appellants
shown this siloxane to be representative of all the cyclic siloxanes
encompassed by the claims.
Based on the totality of record, including due consideration of the
Appellant’s arguments, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103.
III. CONCLUSION
In summary, we
do not sustain the rejection under 35 U.S.C. § 112, ¶ 1;
do not sustain the rejection under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103(a) over Rosenquist;
sustain the rejection under 35 U.S.C. § 103(a) over Rosenquist
in view of Sakashita and Mestanza; and
sustain the rejection under 35 U.S.C. § 103(a) over Mark in
view of Rosenquist, Nouvertne, Sakashita, and Mestanza.
IV. DECISION
The decision of the Examiner is affirmed.
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V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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MARINA LARSON & ASSOCIATES LLC
RE: LEXAN
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