Ex Parte Mercx et al

Patent Trial and Appeal Board

May 10, 2017

14090618 (P.T.A.B. May. 10, 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.
14/090,618 11/26/2013 Franciscus Petrus Maria Mercx 12PLAS0220-US-NP 1035
43248 7590 05/12/2017
CANTOR COLBURN LLP - SABIC (LEXAN/CYCOLOY)
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/12/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCUS PETRUS MARIA MERCX1
and Sascha Jan ter Horst
Appeal 2016-001883
Application 14/090,618
Technology Center 1700
Before TERRY J. OWENS, MARKNAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Franciscus Petrus Maria Mercx and Sascha Jan ter Horst (collectively,
“Mercx”) timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2
of all pending claims 1-3 and 5-21. We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 The applicant under 37 C.F.R. § 41.6 is the real party in interest, identified
as Sabic Global Technologies B.V. (Appeal Brief filed June 19, 2015
(“App. Br.”), 2.)
2 Office Action mailed 26 January 2015 (“Final Rejection”; cited as “FR”).
Appeal 2016-001883
Application 14/090,618
OPINION
A. Introduction3
The subject matter of this application is related to the subject matter of
sibling Application 14/090,605, which was filed on the same date, which
claims the benefit of the same preliminary application, and which is the
subject of Appeal 2016-000797, decided concurrently. Notwithstanding the
common priority application, the specifications, while sharing a great deal of
common disclosure, differ in the particular descriptions of the distinct
subject matter.
The subject matter on appeal relates to thermally conductive flame
retardant polymer compositions disclosed to be useful for housings for
personal computers and the like (Spec. 1 [0001]), as well as for heat sinks
and for encapsulation of components in both electrically insulating and
electrically conducting situations {id. at 3 [0010]). The Specification reveals
that the addition of flame retardant additives often reduces the thermal
conductivity and impact resistance of the composition. {Id. at [0003].)
Moreover, to achieve high thermal conductivity, high volume fractions of
fillers, especially ceramic fillers, are added to the polymer compositions.
{Id. at [0004].) Unfortunately, high thermal conductivity ceramics are said
to be expensive and the control of mechanical properties, flow, and heat
stability, is said to be limited. {Id.)
3 Application 14/090,618, Thermally conductive flame retardant polymer
compositions and uses thereof, filed 26 November 2013, claiming the
benefit of 61/737,539, filed 14 December 2012. We refer to the
“’618 Specification,” which we cite as “Spec.”
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Application 14/090,618
The ’618 Specification teaches that these problems can be overcome
by adding a metal hydroxide and a polymeric char-forming agent to a
thermoplastic or thermosetting polymer. The resulting composition is said
to have superior thermal conductivity of at least 0.5 W/m-K [watts per
meter-Kelvin] for through-plane thermal conductivity, and a flame
retardancy of at least V-0 performance at a sample thickness of 1.5 mm or
less per a UL-94 testing standard. (Id. at 2, 5.)
In preferred embodiments, the polymeric char-forming agent
comprises an aromatic polymer as the char-forming agent. (Id. at 5, 18.)
Poly(arylene ethers) and polyetherimides (id. at 6, 19) and aromatic impact
modifiers such as styrene block-copolymers (id. at ^[ 21-22) are disclosed
as useful polymeric char-forming agents. According to the Specification,
“[T]he aromatic polymer forms a polymer char upon being subjected to a
flame. The polymeric char forms structural reinforcement in the thermally
conductive composition when it is subjected to a flame, which prevents the
thermally conductive composition from dripping.” (Id. at 5-6, ^ 18.)
Critically, the Specification teaches that “[t]he polymeric char acts
synergistically with the metal hydroxide to improve flame retardancy.”
(Id. at 6, ^[ 18.) The Specification also teaches that an anti-flame drip agent
may be added, such as fluorinated polyolefin or polytetrafluoroethylene.
(Id. at 7, T| 24.)
Claim 1 is representative and reads:
A thermally conductive composition, comprising:
20 to 80 wt% of a thermoplastic or thermosetting polymer;
10 to 70 wt% of a metal hydroxide; and
0.5 to 10 wt% a polymeric char forming agent, where
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Application 14/090,618
the polymeric char-forming agent provides the thermally
conductive composition with a flame retardancy of V-0
at a thickness of 1.5 millimeter or less when tested as per
a UL-94 testing protocol; where
the weight percents are based on a total weight of the
thermally conductive composition, and where
the polymeric char-forming agent is an organic polymer
that comprises an aromatic group.
(App. Br. 18 (Claims App.); some indentation, paragraphing, and emphasis
added.)
Independent claim 15 is similar, but also specifies an in-plane thermal
conductivity of 0.5 W/mK. (Id. at 20.) Independent claim 19 covers
nominal methods of making such compositions. (Id. at 21.)
The Examiner maintains the following grounds of rejection4,5:
A. Claims 1, 3, 5, 6, 10, 11, and 14 stand rejected under
35 U.S.C. § 103(a) in view of Fukita.4 5 6
A1-A3. Claims 2, 7, 8, 9, 12, and 13 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Fukita and various combinations of three other references.7
4 Examiner’s Answer mailed September 28, 2015 (“Ans.”).
5 Because this application claims the benefit of an application filed before
the 16 March 2013 effective date of the America Invents Act, we refer to the
pre-AIA version of the statute.
6 Hideyuki Yamagishi & Kazuyuki Fukita, Flame retardant resin
composition, JP 09-208,841 (1997). (In the JPO machine translation of
record, the inventors and title not listed; a J-Plat-Pat (Japan Platform for
Patent Information) summary indicates the inventors and the title is as listed
supra. We follow the Examiner and Mercx in referring to this document as
“Fukita”).
7 See FR 2-3 (incorporating by reference the rejections set out in the Office
Action mailed 10 September 2014, ^ 5-8).
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Application 14/090,618
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Mercx focuses its substantive arguments for patentability on claim 1,
with which all claims stand or fall. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
The Examiner finds that Fukita describes flame-retardant
compositions comprising 100 pbw thermoplastic resins, 5-95 pbw char­
forming resin, and 0.01-30 pbw auxiliary components such as hydrated
metal compounds. (FR 2, incorporating by reference the Office Action
entered 10 September 2014, 4.) More particularly, the Examiner finds that
Example 7 of Fukita describes an embodiment comprising 14 wt%
polyphenylene ether as a char-forming agent and 17 wt% aluminum
hydroxide. The Examiner reasons that it would have been obvious to use
amounts of char-forming agents within the range disclosed by Fukita,
including amounts in the range of 0.5 to 10 wt% as recited in appealed
claim 1. {Id.)
Mercx does not contest the Examiner’s findings regarding the
amounts or kinds of materials disclosed by Fukita. For purposes of this
appeal, we hold such arguments waived.8 Rather, Mercx argues first that
there is no reasonable motivation to select 0.5 to 10 wt% of char-forming
agent based on the teachings of Fukita because all of Fukita’s examples use
significantly higher amounts. (Br. 9, 2d full para.) Similarly, Mercx argues
there would have been no reasonable expectation of successfully using the
8 37 C.F.R. § 41.37(c)(l)(iv) (2014), third sentence: “ . . . any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.”
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Application 14/090,618
lower amounts required by the appealed claim. {Id. at para, bridging 9-10.)
These arguments are not persuasive of harmful error in the prima facie case
of obviousness because Fukita does suggest a range overlapping the range
required by appealed claim 1.
Additionally, Mercx urges that the evidence in the Specification
demonstrates unexpected results that rebut any putative case of prima facie
obviousness. {Id. at 10.) More particularly, Mercx points to the
improvement in flammability performance from “borderline” V-0
performance at 1.6 mm to “solid” V-0 performance at 1.2 or 1.0 mm
thickness illustrated in Table 4 (polyphenylene ether (“PPO”) char-forming
agent) and in Table 5 (polyetherimide (“PEI”) char forming agent) at similar
Mg(OH)2 loadings (52 and 45 wt%, respectively). (Br., para, bridging 10-
11; see Spec. 19-21, [0067].) Mercx argues further that Tables 6 and 7
illustrate the necessity of the PPO or PEI for flame retardancy despite the
presence of more than 46% Mg(OH)2 in each example. {Id. at 11.)
Moreover, Mercx argues, the Examiner erred in relying on Fukita because
Fukita tested flame retardancy at a significantly higher thickness. (Id. at 13,
last full para.)
Whether results are unexpected is a question of fact. E.g., In re
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (“An examination for
unexpected results is a factual, evidentiary inquiry . . . ”). We resolve
questions of fact by the preponderance of the evidence of record. In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
Mercx’s arguments are not persuasive because they do not compare
the allegedly unexpected results to Fukita. While they arguably demonstrate
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Application 14/090,618
the necessity of an aromatic polymeric char-forming agent in combination
with a metal hydroxide, Fukita provides such a composition, albeit with
more aromatic char-forming agent than permitted by appealed claim 1. The
UL-94 test appears to be uniform in that a thicker test sample will generally
have the same or better V-rating. However, Mercx has not directed our
attention to credible evidence on the present record indicating that a thinner
sample will necessarily fall below a V-0 rating. We decline to accept
unsupported arguments by counsel as evidence. Thus, the Examiner’s
conclusion that the V-0 rating accorded to each of the 3.2 mm-thick samples
in Tables 1 and 2 would apply to the 1.5 mm-thick sample required by
claim 1 has not been undermined.
Finally, Mercx urges that the Examiner’s criticisms that the showings
are not commensurate in scope with the claimed subject matter are
erroneous. In Mercx’s view, the two aromatic polymeric char-forming
agents demonstrated should be adequate, considering the disclosure of other
polymeric char agents suggested in the Specification, and the results
demonstrate a trend that one skilled in the art could ascertain and reasonably
extend to the full scope of the claims. (Br. 14-15.)
We are not persuaded of harmful error in this aspect of the Examiner’s
analysis. The three components are identified virtually only by function—
thermoplastic and thermosetting polymers cover essentially all polymers, the
only limitation on the polymeric char-forming agent is that it comprise an
aromatic group, and the metal hydroxides comprise a vast group themselves.
Moreover, of the ranges of these materials, 20-80 wt%, 0.5-10 wt%,
and 10-70 wt%, respectively, only the range of char-forming agent appears
to be relatively narrow. Mercx has not explained why two thermoplastic
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Application 14/090,618
polyamides (nylons) would have been accepted as representative of all
thermoplastic and thermosetting polymers in combination with any metal
hydroxides and all polymers comprising an aromatic group as char-forming
agents.
The rejections for obviousness are affirmed.
C. Order
It is ORDERED that the rejections of claims 1-3 and 5-21 are
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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