Ex Parte Mercx et alDownload PDFPatent Trial and Appeal BoardMay 10, 201714090618 (P.T.A.B. May. 10, 2017) Copy Citation 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.” 2 Appeal 2016-001883 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 3 Appeal 2016-001883 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). 4 Appeal 2016-001883 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.” 5 Appeal 2016-001883 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 6 Appeal 2016-001883 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 7 Appeal 2016-001883 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 8 Copy with citationCopy as parenthetical citation