Ex Parte Mercx et al

Patent Trial and Appeal Board

Feb 28, 2017

11034520 (P.T.A.B. Feb. 28, 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.
11/034,520 01/12/2005 Franciscus Petrus Maria Mercx 150701-2-US-NP 8442
52674 7590 03/02/2017
Raker & Hostetler T T P
EXAMINER
1170 Peachtree Street NE KOLLIAS, ALEXANDER C
Suite 2400
Atlanta, GA 30309-7676 ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCUS PETRUS MARIA MERCX,
CARLO PEREGO, and ROBERT PUYENBROEK
Appeal 2015-002326
Application 11/034,5201
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 13, 15, and 173 in the above-identified
application. A hearing was held on February 14, 2017. We have jurisdiction
pursuant to 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants identify SABIC Global Technologies BV. Appeal Br. 1, Sept.
25, 2014.
2 Final Office Action, Mar. 31, 2014 [hereinafter Action]; Examiner’s
Answer, Nov. 6, 2014 [hereinafter Answer].
3 Appeal Br. 1. The Action also rejected claims 1—4, 6, 8, 9, 11, 14, 16, and
18—23. See Action 1. These claims were canceled prior to the appeal. See
Advisory Action 2, July 10, 2014 (entering amendment canceling claims).
Appeal 2015-002326
Application 11/034,520
BACKGROUND
Appellants’ invention relates to “a fiber reinforced flame-retardant
polyamide composition having a combination of good flame retardant
properties, good electrical performance such as arc tracking resistance, and
good mechanical properties.” Spec. 1 5. According to Franciscus Petrus
Maria Mercx, one of the listed inventors, polyamide resins provide
outstanding heat resistance and mold workability, but show poor flame
resistance, making it necessary to add flame retardants when used in
electrical applications. See Mercx Decl. 12, Mar. 17, 2014; accord Spec.
12. It was known in the art to reinforce polyamide materials with glass, but
according to Mr. Mercx, these known materials were unable to meet all
industry requirements, such as a VO rating under the UL-94 flammability
standard. See Marcx Decl. 112; accord Spec. 13. During experimentation,
Mr. Mercx states that the inventors initially found that “it was impossible to
extrude a strand of polyamide containing between 35% and 60% by weight
of glass fibers and a flame retardant additive.” Id. H 14—15. According to
Mr. Mercx, the mixture “cannot be uniformly mixed and extruded into a
uniform strand. The presence of such a large amount of filler causes seizure
of the extruder and thus prevents production of the composition.” Id. 119.
However, the inventors claim to have solved this problem by discovering a
flame-retardant polyamide composition, with 35 wt.% or more of glass filler,
that can be extruded. See id. 116.
Independent claim 13, the sole independent claim on appeal, is
representative of this composition:
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Application 11/034,520
13. A flame-retardant polyamide composition, comprising:
30 to 65% by weight nylon-6, nylon-6,6, or a
combination thereof;
10 to about 40% by weight of a halogen-free flame
retardant system comprising
i) a metal phosphinate of the formula (1) or the metal
diphosphinate salt of the formula (11)
0 r o O 1
, II
R1—P---- O
1
Mx II , IIO--- P----R3—P----O
1 1
1
R2 m R1 R2
(I) (II)
wherein R1 and R2 are each independently hydrogen, a
linear or branched C1-C6 alkyl radical, or aryl radical; R3 is a
linear or branched Ci-Cio alkylene, arylene, aklylarylene, or
arylalkylene radical; M is calcium, aluminum, magnesium,
strontium, barium, or zinc; m is 1, 2, or 3; n is 1 or 3; and x is 1
or 2; and
ii) at least one nitrogen compound selected from the
group consisting of benzoguanine compounds, terephthalic
ester compounds of tris(hydroxyalkyl)isocyanurate, allantoin
compounds, glycoluril compounds, melamine cyanurate,
melamine phosphate compounds, dimelamine phosphate
compounds, melamine pyrophosphate compounds, melem,
melam, and combinations thereof; and
35 to 60% by weight percent glass fiber
wherein all the amounts are based upon the total weight
of components;
wherein a molded sample of the composition exhibits a
rating of VO according to UL-94 at 1.6 millimeters thickness;
wherein the composition exhibits a tensile modulus of at
least about 10.5 GPA measured according to ISO Standard
52711 as measured on a sample having a thickness of 4.0
millimeters; and
wherein the composition exhibits a comparative tracking
index measured according to International Electrotechnical
Commission standard 1EC-60112/3rd of greater than about 400
Volts.
3
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Application 11/034,520
Appeal Br. 16. Claims 15 and 17 depend from claim 13. Id. at 17.
The Examiner maintains the following grounds of rejection4:
1. Claims 13 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steenbakkers-Menting.5 See Action 4, 7—8.
2. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steenbakkers-Menting, in view of Koning.6 See Action
12-14.
In the Appeal Brief, Appellants argue claims 13 and 17 as a group, see
Appeal Br. 5—15, and rely on the same arguments regarding dependent claim
15, see id. at 15. Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv)
(2016), we limit our discussion to claim 13, and claims 15 and 17 stand or
fall with claim 13.
DISCUSSION
The Examiner finds that Steenbakkers-Menting discloses a polyamide
composition comprising 10-95 wt.% of a polyamide, 5^40 wt.% of a
halogen-free flame retardant system comprising a metal phosphinate or
disphosphinate salt and a nitrogen compound, and 0—50 wt.% of glass fiber.
Action 7. While claim 13 requires that the polyamide is either nylon-6 or
nylon-6,6, see Appeal Br. 16, the Examiner finds that Steenbakkers-Menting
4 The Examiner has withdrawn an additional rejection of claims 13, 15, and
17 under 35 U.S.C. § 112, second paragraph. See Answer 2.
5 Steenbakkers-Menting et al., Patent Application Pub. No.
US 2004/0021135 Al (published Feb. 5, 2004).
6 Koning et al., Patent Application Pub. No. EP 0 374 988 Al (published
June 27, 1990).
4
Appeal 2015-002326
Application 11/034,520
teaches a preference for nylon-6, nylon-6,6, or nylon-4,6,7 two of the three
of which are among the choices available for the polyamide component in
claim 13. See Answer 13 (citing Steenbakkers-Menting |378). The
Examiner also finds that Steenbakkers-Menting discloses a preferred flame
retardant component comprising a genus of metal phosphinate or
diphosphinate salts that is a subset of the genus defined in claim 13, part (i).
Id. at 12—13 (citing Steenbakkers-Menting 123). In addition, the Examiner
finds that Steenbakkers-Menting teaches that the flame retardant component
comprises four preferred nitrogen compounds, two of which (melem and
melam), are among the choices available for the nitrogen compound in claim
13, part (ii). Id. at 13 (citing Steenbakkers-Menting 122).
Thus, the Examiner finds that Steenbakkers-Menting teaches the
composition of claim 13, in concentration ranges that overlap the ranges set
forth in the claim. See Action 7. The Examiner recognizes that
Steenbakkers-Menting does not explicitly disclose the property limitations
(rating under the UL-94 standard, tensile modulus, and comparative tracking
index) set forth in the claim’s final three paragraphs. Nonetheless, due to
overlap of the preferred components disclosed in Steenbakkers-Menting, the
Examiner concludes that a prima facie of obviousness has been established.
See id. at 8 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
7 Steenbakkers-Menting refers to nylon-6, nylon-6,6, and nylon-4,6 as
PA (polyamide) 6, PA 66, and PA 46, respectively. See Steenbakkers-
Menting 137.
8 The Examiner cites paragraph 36 of Steenbakkers-Menting, but evidently
intended to cite the next paragraph, which states, “Preferably polyamide 6,
PA 66 or PA 46 are chosen. . . . The polyamide in the flame retardant
polyamide composition according to the invention is in particular polyamide
6.”
5
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Application 11/034,520
According to the Examiner, the claimed properties are inherent in the
teachings of Steenbakkers-Menting. See id.', see also PAR Pharm., Inc. v.
TWIPharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of
inherency when applied to obviousness “is present only when the limitation
at issue is the ‘natural result’ of the combination of prior art elements”). The
Examiner also determines that Steenbakkers-Menting teaches a finite
number of identified, predictable solutions (the preferred embodiments), and
that the invention is obvious because a person of ordinary skill in the art
would have had a reasonable expectation of success in choosing a
composition within the scope of claim 13. See Answer 14 (citing MPEP
§2143).
Appellants argue that the Examiner’s rejection is legally and factually
erroneous, and that the weight of evidence favors patentability. We address
Appellants’ arguments as follows:
1. The Examiner s Prima Facie Case
Appellants argue that the Examiner has not established a prima facie
case of obviousness. First, Appellants argue that Steenbakkers-Menting
teaches a broad genus of compounds, and that to arrive at compounds within
the scope of claim 13 would require “fortuitous picking and choosing based
upon impermissible hindsight.” Reply Br. 2. According to Appellants, “the
fact that a claimed species or subgenus is encompassed by a prior art genus
is not sufficient by itself to establish a prima facie case of obviousness.”
Appeal Br. 5 (citing In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re
Jones, 958 F.2d 347, 350 (Fed. Cir. 1992); MPEP § 2144.08 II); see also
Reply Br. 3.
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Application 11/034,520
This argument does not persuade us that the Examiner reversibly erred
in rejecting claim 13. The mere fact that Steenbakkers-Menting discloses a
multitude of effective combinations does not render any particular
combination less obvious. This is especially true in this case where the
claimed composition is used for the identical purpose taught by the prior art
(i.e., flame retardant polyamide compositions). Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Moreover, while Steenbakkers-Menting discloses a broad genus of
compounds, only a few of which are within the scope of claim 13, the
reference provides teachings that would have guided a person of ordinary
skill in the art toward a mixture of components within the scope of
Appellants’ claimed invention. For example, while Steenbakkers-Menting
discloses many possible polyamide compounds, the reference teaches a
preference for three of them, including nylon-6 and nylon-6,6. See
Steenbakkers-Menting 137. We also note that Steenbakkers-Menting
teaches that the most preferred polyamide is nylon-6. See id. Steenbakkers-
Menting also teaches the metal phosphinate or metal diphosphinate salts of
formulas (I) and (II) of claim 13, see id. H 6—13, and teaches that preferably,
“R1 and R2 are a linear or branched C1-C6 alkyl radical or phenyl” because
this results in better stability of the compound. Id. 123. The reference
teaches that M is preferably “Ca, A1 or Zn,” because “less polymer
degradation takes place in the polyamide composition during preparation
and processing.” Id. 124. Steenbakkers-Menting teaches a preference for
four nitrogen compounds corresponding to component (ii) in claim 13, see
7
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Application 11/034,520
id. 122, and two of these, melam and melem, are among the choices listed in
claim 13, see Appeal Br. 16.9
Thus, a person of ordinary skill in the art, following the preferences
taught by Steenbakkers-Menting, would have needed to make only a very
few choices from among the preferred embodiments to arrive at the chemical
structure of the specific components set forth in claim 13. The facts on this
record are substantially different from In re Baird, where the disclosed
generic formula encompassed more than 100 million different chemical
structures, only one of which was within the scope of the claim at issue. See
16 F.3d at 382. Likewise, in In re Jones, the prior art reference disclosed a
“potentially infinite genus” of compounds, whereas the claim was directed to
a specific compound. See 958 F.2d at 350. The Examiner’s determination
that the combination of chemical components in claim 13 would have been
obvious in view of Steenbakkers-Menting is rationally based on the
teachings and preferences expressed by the reference, and not on fortuitous
picking and choosing based on impermissible hindsight.
The Examiner’s prima facie case of obviousness is also based on the
fact that the concentration ranges for the components disclosed by
Steenbakkers-Menting overlap the ranges specified in claim 13. The range
of 10-95% of polyamide, see Steenbakkers-Menting 130, overlaps the range
of 30-65% in claim 13. The range of 5 40% flame retardant and the
preferred ranges of 10—35% and 15—30%, see Steenbakkers-Menting || 32,
36, overlap the range of 10-40% in claim 13. The range of 0—50% glass
9 Of the four preferred choices, however, the most preferred compound,
melamine, is not listed among the permissible nitrogen compounds in claim
13. See Appeal Br. 16. We do not find this dispositive, given that
Steenbakkers-Menting still expresses a preference for melem and melam.
8
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Application 11/034,520
fiber and the preferable ranges of 10-40% and 20-35%, see Steenbakkers-
Menting H 31, 35, 38, overlap or touch the range of 35—60% glass fiber in
claim 13. Typically, a prima facie case of obviousness exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior art.
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). This is particularly
true here, where not only the broader range of 0-50% glass overlaps that of
claim 13, but the narrower preferred range of 10-40% and the most
preferred range of 20-35%, which touches the range of glass fiber content in
claim 13 at its lower end.
Appellants argue that despite the overlapping ranges for glass fiber
content, Steenbakkers-Menting teaches away from the range of 35—60%
because all the working example in Steenbakkers-Menting, which represent
the reference’s only specific guidance, include only 25% glass fiber; thus, a
person of ordinary skill in the art would have been led on a path divergent
from the upper end of the ranges otherwise disclosed by the reference. See
Appeal Br. 6—7; Reply Br. 6 (citing Teva Pharms. USA, Inc. v. Sandoz, Inc.,
723 F.3d 1363, 1372 (Fed. Cir. 2013)).
Teaching away is a question of fact, see In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005). Based on the facts of this record, including
Steenbakkers-Menting as a whole,10 we do not find Appellants’ argument
persuasive of reversible error. Although Steenbakkers-Menting does not
describe any specific, working examples in which the glass fiber content is
within the range of 35—60%, Appellants have not pointed to evidence
10 See In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (“It is axiomatic
that a reference must be considered in its entirety, and it is well established
that the disclosure of a reference is not limited to specific working examples
contained therein.”).
9
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Application 11/034,520
persuasively showing Steenbakkers-Menting to “criticize, discredit, or
otherwise discourage the solution” in claim 13. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). To the contrary, we read the reference as encouraging
the use of fiber content of up to at least 35%, which is the upper bound of
the most preferred embodiment. See Steenbakkers-Menting 138.
Steenbakkers-Menting also teaches that using glass fiber in a range
extending up to 40% has advantages over the prior art, including “a V-0
rating according to UL 94” and “good mechanical properties, particularly a
high breaking strength and a high elongation at break.” Id. 135.
The Federal Circuit’s holding in Teva v. Sandoz does not require a
different conclusion. In that case, the prior art reference taught that
molecular weights below a certain level were “ineffective for treating
multiple sclerosis,” and therefore the reference taught away from the use of
lower molecular weights. See 723 F.3d at 1372. By contrast, Appellants
have not directed our attention to any teaching in Steenbakkers-Menting that
glass content of 35% or higher would have been ineffective or inoperable.
To the contrary, Steenbakkers-Menting teaches a preference for glass content
in a range extending up to 35% and as high as 40%.
Appellants also argue that “the Examiner has misapprehended and
thus, misapplied the principles of In re Best” in shifting the burden to
Appellants to show that the compositions disclosed in Steenbakkers-Menting
do not necessarily have the properties required by claim 13. See Appeal Br.
7. According to Appellants, the Examiner has failed to provide the required
factual and technical analysis, and has not taken into consideration evidence
from the record (in particular, Table 4 of the Specification); thus, a factual
basis for burden shifting has not been established. See id. at 7—8. Appellants
10
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Application 11/034,520
also argue that the scope of compounds disclosed by Steenbakkers-Menting
is much broader than the scope of claim 13, and the evidence shows that
only a small subset of these compounds have the properties set forth in claim
13. See id. at 11—12.
We do not find these arguments persuasive of reversible error. As
discussed above, a person of ordinary skill in the art, following the
preferences taught in Steenbakkers-Menting, would have been led to specific
components within the scope of claim 13, in amounts that substantially
overlap the scope of claim 13. Therefore, the Examiner has established a
prima facie case of obviousness, and the burden has shifted to Appellants to
produce evidence of non-inherency. See Best, 562 F.2d at 1255.
To rebut the Examiner’s prima facie case, Appellants must point to
evidence that the properties of claim 13 are not necessarily present or “the
natural result of the combination of elements explicitly disclosed by the prior
art.” PAR Pharm., 773 F.3d at 1196; see also Best, 562 F.2d at 1255. We
have considered Appellants’ proposed evidence against inherency on this
record, but do not find this evidence persuasive or sufficient to rebut the
Examiner’s finding of inherency. In particular, Appellants point to Table 4
of the Specification, which is reproduced below:
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Application 11/034,520
Table 4.
Components 17 IS 19 20 21 22 1 23 24 25
PA 6 2(4RV 34.70 29.70 24.70 19.70 35.95 34.70 32.20 28.45 27.20
PA66 2.4RV 34.70 29.70 24.70 19.70 7*} 94 34.70 12.20 28.45 27.20
Glass Fiber 15.00 25.00 35.00 45.00 25 00 25,66 25.00 25.00 25.66
Component A 15.00 15.00 15,00 15.00 2,50 5.00 17.50 20.00
AOl 0.20 " 0.20 0.20 0.20 0.20 0.20 0,20 0.20 0.20
A 02 6. is 0.15 6.15 0.15 0.15 i 0.! 5
1
6.15 0.15 6.15
Mold release 0,25 6.25 0.25 0,25 0.25 0.25 0,25 0.25 6.25
Properties. \
Tensile Modulus
(GPa)
6,8 9.4 12,2 14,1 S.9 8,4 8.9 i 9.5
i
9,7
Tensile Strength
(MPa) 112.0 140.0 166,5 189.3 161,2 153.5 155.0 ..............
138,0 125.0
Iscod notched
impact {KJ/mb 7.4 9,5 . n.2 12.4 8.7 9,2 8.6 j 9.0 j 7.5 I 1
CT1('volts) 600 0 600 600 600 600 600 600 600
GWFi 96(PC (Si
1,0mm
pass pass pass pass fail pass pass pass pass
UL class ijSj Q.Smm V2 V2 VO VO V2 V2 V2 VO VO
UL class @ 1 6mm VO VO VO VO V2 V2 VQ vo
Table 4 shows various properties, including compositions of components
and tensile modulus, for various materials designated as Examples 17—25.
Appellants argue that only Examples 19 and 20 possess a tensile modulus of
at least 10.5 GPa as required by claim 13. Appeal Br. 8. However, the fact
that Examples 17, 18, and 21—25 are shown to have a lower tensile modulus
is not persuasive evidence of non-inherency. These comparative examples
are already outside the scope of claim 13 in terms of their glass fiber
composition, so their tensile modulus is not relevant to the question of
whether or not compounds disclosed by Steenbakkers-Menting with 35—50%
by weight glass fiber would inherently possess a tensile modulus within the
scope of claim 13. Moreover, both examples 19 and 20 have glass fiber
compositions within the broad range of 0-50% disclosed by Steenbakkers-
Menting, and Example 19 is within the preferred range of 10-40%. See id.',
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Appeal 2015-002326
Application 11/034,520
see Answer 7—8 (finding that Example 19 is taught by Steenbakkers-Menting
and necessarily possesses the properties of claim 13). Thus, Table 4 does
not constitute evidence that a tensile strength of 10.5 GPa is not the natural
result of a combination of elements taught by the preferences of
Steenbakkers-Menting.11
In addition, other evidence on this record supports the Examiner’s
finding of inherency. Regarding the requirement in claim 13 that “a molded
sample of the composition exhibits a rating of VO according to UL-94 at 1.6
millimeters thickness,” see Appeal Br. 16, we note that Steenbakkers-
Menting teaches that the disclosed flame retardant polyamide composition
containing 10-40% glass fiber exhibits “a V-0 rating according to UL 94.”
Steenbakkers-Menting 135. Regarding the requirement in claim 13 that
“the composition exhibits a tensile modulus of at least about 10.5 GPA
measured according to ISO Standard 5271112 as measured on a sample
having a thickness of 4.0 millimeters,” see Appeal Br. 17, Steenbakkers-
Menting also provides evidence that such a composition “shows good
11 In addition to finding that Table 4 of the Specification is insufficient
evidence of non-inherency, the Examiner alternatively finds that each of the
compositions within the scope of claim 13 “necessarily must possess the
properties recited in the claims and therefore it is the Examiner’s position
that the properties flow as a consequence of the claimed composition.”
Answer 4. In other words, the Examiner determines that the property
limitations of claim 13 are non-limiting. See id.', see also Appeal Br. 12
(arguing against this determination); Reply Br. 3^4. Because we find that
Steenbakkers-Menting teaches a preferred set of compositions for which the
properties of claim 13 are a natural result, we do not address the Examiner’s
alternative finding as to the scope of claim 13.
12 While the claim refers to “ISO Standard 52711,” the Specification refers
to “ISO Standard 527/1,” Spec. 42, 47, which appears to indicate that claim
13 has a typographical error.
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Application 11/034,520
mechanical properties, particularly a high breaking strength and a high
elongation at break, as measured for example in a tensile test according to
ISO 527-1.” Steenbakkers-Menting 135.
We have considered Appellants’ argument that “the Examiner cites to
no evidence that every possible composition that is described within the vast
genus of Steenbakkers necessarily has the properties of the compositions set
forth in claim 13.” Appeal Br. 11—12. However, we find this argument
unpersuasive of reversible error. Inherency does not require that every
possible composition taught by a prior art reference have the claimed
properties. Inherency is established if the claimed properties are “the natural
result of the combination of elements explicitly disclosed by the prior art.”
PAR Pharm., 773 F.3d at 1196. As discussed above, Steenbakkers-Menting
teaches at least some combinations of elements that fall within the scope of
the compositional limitations of claim 13, and Appellants have not pointed
to any persuasive factual evidence that Steenbakkers-Menting would not
have led a person of ordinary skill in the art to compositions for which the
claimed properties are a natural result.
2. Unexpected Results
Appellants point to evidence in the Specification, and in the Mercx
Declaration, that the composition of claim 13 is nonobvious because it
exhibits unexpected results. See Appeal Br. 3—4, 7—8. In the Specification,
Appellants point to Table 4, comparing Examples 19 and 20 with
comparative Examples 17, 18, and 21—25, as “a factual basis to reasonably
conclude that the compositions of claim 13 are non-obvious over the
exemplified compositions of Steenbakkers[-Menting].” Appeal Br. 8.
According to Appellants, Table 4 shows “compositions within the scope of
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Application 11/034,520
claim 13 that contain at least 35% glass fibers possess an unexpected
increase in tensile modulus than compositions having less glass fiber.” Id. at
9.
For us to find unexpected results, the record must show “(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) (citation
omitted). Although Examples 19 and 20 show an increased tensile modulus,
Appellants do not point to persuasive factual evidence that the increased
tensile modulus would have been unexpected to one of ordinary skill in the
art as compared to the other examples that have less glass fiber content. To
that end, Steenbakkers-Menting teaches that glass fiber content of from 10 to
40% provides good mechanical properties. See Steenbakkers-Menting
1131,35,38.
In addition, establishing unexpected results requires that the
comparative examples are truly comparative, and that the cause and effect
relationship sought to be proven is not “lost... in the welter of unfixed
variables.” In re Dunn, 349 F.2d 433, 439 (CCPA 1965). Examples 19 and
20 differ from the comparative examples by more than just glass fiber
content; for instance, they have lower polyamide content than the
comparative examples. See Spec. Table 4; see also Answer 22 (noting that
Examples 19 and 20 comprise a “different amount of PA 6 2,4RV and PA 66
2,4RV”). Thus, Table 4 does not provide persuasive evidence that the
compositions of claim 13 exhibit unexpected properties in comparison to
compositions taught by Steenbakkers-Menting.
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Appellants point to the Mercx Declaration as “an additional objective
basis upon which it is reasonable to conclude that the claimed subject matter
is unobvious.” Appeal Br. 9. Mr. Mercx expressed the belief that “one of
skill in the art could not predict the properties of a resulting composition if,
for example, the polyamide composition included between 35% and 60% by
weight of filler.” Mercx Decl. 113; see also id. 117. However, this is
contradicted by Steenbakkers-Menting’s teaching that the use of 10-40%
glass fiber has advantages over the prior art, including “a V-0 rating
according to UL 94,” and “good mechanical properties” as measured, for
example by “ISO 527-1.” Steenbakkers-Menting 135.
Mr. Mercx also testifies that during experimentation, the inventors
“found that it was impossible to extrude a strand of a polyamide containing
between 35% and 60% by weight of glass fibers and a flame retardant
additive,” and that “it was practically impossible to extrude a flame-retardant
composition containing compounds that contain glass fibers in amounts
greater than 35% by weight.” Mercx Decl. 114—15. However, Mr. Mercx
does not provide factual evidence to support these conclusions. See In re
Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) (an affidavit fails in its
purpose if it recites conclusions, but few facts to buttress those conclusions).
In addition, Mr. Mercx does not provide evidence that people of ordinary
skill in the art, other than the inventors, had access to experimental evidence
leading to the expectation that extruding such compositions was impossible.
Mr. Mercx also testifies that the claimed invention
exhibits unexpected advantages, namely that increasing the rein­
forcing agent of the composition provides an unyielding electri­
cal performance of the compound while maintaining excellent
mechanical properties and impact resistance. Based on my skill
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Application 11/034,520
and expertise in this field, it is my belief that this improved per­
formance, mechanical properties, and impact resistance is both
unexpected and advantageous. It is also my belief that such ben­
efits cannot be derived from the teachings of the cited references.
Id. ^ 18. However, these statements are not supported by experimental
results in the Declaration, and to the extent that Mr. Mercx is referring to
results set forth in the Specification, Appellants point only to Table 4, which,
as discussed above, is insufficient evidence of unexpected results.
Mr. Mercx further states that no prior art reference recognized or
appreciated that a flame retardant polyamide composition containing
between 35% and 60% of glass fiber filler could be mixed and extruded in a
uniform strand. See id. Tffl 19—21. However, Appellants have not pointed to
evidence that compositions within the full scope of claim 13 exhibit this
allegedly unexpected property. See In re Harris, 409 F.3d 1339, 1343 (Fed.
Cir. 2005) (Even assuming results are unexpected, applicant must show
results covering the scope of the claimed range.) Moreover, we note that
Steenbakkers-Menting teaches that the disclosed compositions may be
molded and extruded. See Steenbakkers-Menting || 41 42.13
Having considered the appeal record as a whole, including Appellants’
evidence of unexpected results, we find that the preponderance of the
evidence weighs most heavily in favor of the Examiner’s conclusion of
obviousness.14
13 Appellants argue that the Examiner improperly discounted the testimony
in the Mercx Declaration regarding extrudability because claim 13, itself, is
not directed to extrudable strands. See Appeal Br. 9, 14; Reply Br. 5.
Because the conclusion of obviousness of claim 13 does not depend on that
determination, we decline to address it in our decision.
14 The Mercx Declaration also includes statements regarding other secondary
considerations of obviousness, including commercial success, copying by
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3. Examiner s New Grounds of Rejection
Appellants argue that the Examiner improperly raised new issues in
the Advisory Action, dated July 10, 2014, and in the Answer. Appeal Br.
14—15; Reply Br. 5—7. In particular, Appellants argue that the Examiner
should have cited three additional references in the statement of the
rejection: Olschewski,15 Machado,16 and Kilboume.17 Appeal Br. 14—15;
Reply Br. 5—6 (citing In reHoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970)).
The Examiner cited these references to show that it was unsurprising
in the art that “the use of glass fiber results in improved tensile strength.”
Advisory Action 7—8; Answer 24. According to the Examiner, these
references are merely evidentiary references cited in rebuttal to Appellants’
arguments of unexpected results, and are not cited as prior art. See Answer
24. However, because the Examiner did not explain in detail how the
references are to be understood as rebutting Appellants’ evidence of
unexpected results, see Advisory Action 7—8, we do not rely on the
references in our analysis.
Appellants also argue that the Examiner improperly raised in the
Answer an “obvious to try” rationale for rejecting claim 13. Reply Br. 7
others, long felt need, and industry acquiescence. Mercx Decl. Tflf 24—31.
Because Appellants do not raise these considerations in the Appeal Brief, we
do not consider these arguments in our analysis. See 37 C.F.R. §§
41.37(c)(l)(iv) (“[A]ny arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.”).
15 Olschewski et al., U.S. Patent No. 4,339,374 (issued July 13, 1982).
16 Machado et al., U.S. Statutory Invention Reg. No. H1021 (published Feb.
4, 1992).
17 Kilboume, U.S. Patent No. 4,376,564 (issued Mar. 15, 1983).
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Application 11/034,520
(citing Answer 14). The question of whether or not the introduction of this
rationale for the first time in the Answer was improper is a petitionable
matter, and was waived because Appellants did not file a petition under 37
CFR § 1.181 (a) within two months from the mailing date of the Answer.
See 37 CFR 41.40(a).
Appellants argue that the Examiner’s “obvious to try” rationale is
erroneous because
there is no reasonable expectation of success of picking a com­
position out the myriad described by Steenbakkers[-Menting]
that falls within the scope of the appealed claims and possesses
the functional properties recited in the claims since evidence of
record establishes that compositions within the scope of Steen-
bakkers[-Menting] do not possess the claimed functional proper­
ties.
Reply Br. 7. Significantly, Appellants do not direct us to any credible
evidence demonstrating that the compositions disclosed in Steenbakkers-
Menting falling within the scope of the claimed composition do not possess
the claimed functional properties. As discussed above, a person of ordinary
skill in the art, following the preferences taught by Steenbakkers-Menting,
would have been led to a very small subset of compounds from among the
larger genus described by the full disclosure. In addition, Steenbakkers-
Menting teaches that success may be achieved by using a glass fiber
composition in the range of at least 10-40%. See Steenbakkers-Menting
135. Therefore, Appellants’ argument does not persuade us that the
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Application 11/034,520
Examiner reversibly erred in rejecting claim 13, in part, on the ground the
invention would have been “obvious to try.”
For the above reasons, we are not persuaded that the Examiner
reversibly erred in rejecting claim 13. Likewise, we are not persuaded of
reversible error in the Examiner’s rejection of claims 15 and 17.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
20