Ex Parte Minkwitz

Patent Trial and Appeal Board

Jan 8, 2018

13169368 (P.T.A.B. Jan. 8, 2018)

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.
13/169,368 06/27/2011 Rolf Minkwitz 074055-0053-US (287648) 1849
123223 7590 01/10/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
CAI, WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
01/10/2018 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF MINKWITZ
Appeal 2017-001570
Application 13/169,368
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 19, 24-26, 29-31, 34, and 39-42. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification (“Spec.”) filed September 1, 2011; Non-Final
Office Action (“Non-Final Act.”) dated September 24, 2015; Final Office
Action (“Final Act.”) dated February 18, 2016; Appellant’s Appeal Brief
(“App. Br.”) dated September 8, 2016; Examiner’s Answer (“Ans.”) dated
October 18, 2016, and Appellant’s Reply Brief (“Reply Br.”) dated
November 8, 2016.
2 Appellant identifies Styrolution Group GmbH as the real party in interest.
App. Br. 1.
Appeal 2017-001570
Application 13/169,368
BACKGROUND
The invention relates to weather-resistant thermoplastic molding
compositions. Spec. 1,11. 5-11. Claim 19 is illustrative:
19. A thermoplastic molding composition comprising:
a) from 20 to 70% by weight of one or more styrene
copolymers as component A, wherein component A comprises
a styrene-acrylonitrile copolymer,
b) from 15 to 40% by weight of one or more impact­
modifying graft rubbers having no olefmic double bond in the
rubber phase as component B, wherein component B is an
acrylate-styrene-acrylonitrile (ASA) graft polymer with an
average particle diameter of from 50 to 1200 nm, and which
comprises from 55 to 80% by weight, based on B, of an
elastomerically crosslinked acrylate polymer Bl, and from 45
to 20% by weight, based on B, of a graft shell B2 made of
styrene and acrylonitrile monomer, wherein component B has a
swelling index from 7 to 15,
c) from 0.3 to 0.6% by weight of a compound of the
formula (I) as component C:
O
d) from 0.2 to 0.7% by weight of a mixture of the formula
(II) as component D:
e) from 0 to 0.5% by weight of a compound of the formula
(III) as component E:
s \
.......V V \
\ N
2
Appeal 2017-001570
Application 13/169,368
or from 0 to 0.5% by weight of a compound of the
formula (IV):
/\\ A
V\/ * •/i
Q—\ / \ /< y
o../N
~Q
-0
/ J
* CH?”Xr
en7
n “ NH
(IV)
>?
AiL"oV
where X* \ AM, / '
/ \\0
/••"O
Q'-V
or from 0 to 0.5% by weight of a compound of the
formula (V):
of
(V)
or from 0 to 0.5% by weight of a compound of the
formula (VI):
■5%
Ja. % N
K
-M JSf- •N ■Vft
•K. H..
\N
3
Appeal 2017-001570
Application 13/169,368
f) from 0 to 10% by weight of one or more additives, where
these differ from components C, D, and E, as component
F, and
g) from 0 to 40% by weight of fibrous or particulate fillers
as component G,
wherein the ratio by weight of component C to component D is
in the range from 4:1 to 1:4 and where each of the % by
weight values is based on the sum weight of components
A to G, and the sum of these values does not exceed
100% by weight, and the thermoplastic molding has a
penetration (Nm) as determined in accordance with ISO
6603-2 on plaques (60 x 60 x 2 mm), produced to ISO
294 in a mold family at a melt temperature of 260 °C and
at a mold temperature of 60°C, after a weathering time of
1500 hrs, of from 11.7 to 13.4.
App. Br. (Claims Appendix).
Independent Claim 42 is directed to a composition consisting
essentially of components that are the same as or similar to those recited in
paragraphs a-d above.
Each of the remaining claims depends from claim 41.
4
Appeal 2017-001570
Application 13/169,368
REJECTIONS3’4
I. Claims 19, 24-26, 30, 31, 34, and 39^12 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Dearmitt5 and Kikkawa.6
II. Claims 19, 24-26, 29-31, 34, and 39^12 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Dearmitt and Gugumus.7
OPINION
Rejection I
With regard to Rejection I, Appellant argues the claims as a group,
except that additional separate arguments are presented for each of claims 40
and 41. App. Br. 11-25. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we
decide the appeal based on the representative independent claims 19 and 42.
Separately argued claims 40 and 41 are separately addressed.
Relevant to Appellant’s arguments on appeal, the Examiner finds that
Dearmitt discloses a molding composition that includes: (1) a styrene-
3 Final Act. 3. The Examiner points to paragraphs 9-10 of the September
24, 2015 Non-Final Office Action for a full statement of the reasoning in
support of the rejections. Id. Appellant canceled claim 27 after issuance of
the Final Office Action.
4 Claims 19, 24-26, 29-31, 34, and 39^12 were rejected under 35 U.S.C.
§112, first paragraph. Final Act. 3—4. The Examiner withdraws this ground
as applied to all the rejected claims except claim 42. Ans. 2. However, the
claim language on which the rejection was based does not appear in claim
42, and the Examiner fails to articulate a reason for the rejection with regard
to claim 42 in either the Final Office Action or the Answer. We, therefore,
consider the identification of claim 42 amongst the claims previously
rejected under § 112 (now withdrawn) to have been an inadvertent error.
5 WO 2008/031719 Al, published March 20, 2008 (“Dearmitt”), as
translated.
6 US 4,957,953, issued September 18, 1990 (“Kikkawa”).
7 US 2003/0225191 Al, published December 4, 2003 (“Gugumus”).
5
Appeal 2017-001570
Application 13/169,368
acrylonitrile copolymer; (2) a graft core/shell polymer having an elastomeric
acrylate monomer core and a styrene-acrylonitrile copolymer shell; and (3)
one or more hindered amine UV stabilizers. Non-Final Act. 5-6. The
Examiner further finds, and Appellant does not dispute, that Dearmitf s
disclosed UV stabilizers include hindered amines that satisfy formulas I and
II recited in paragraphs (c) and (d), respectively, in the independent claims.
Compare Non-Final Act. 5 with, App. Br. 13 (“Appellant submits that each
of the hindered piperdyl compounds recited in claim 19 can be found in the
Dearmitt listings.”) Dearmitt teaches that mixtures of the listed hindered
amine stabilizers can be used. Dearmitt 7.8
The Examiner finds that Kikkawa also teaches providing a mixture of
hindered amines to form an enhanced UV stabilizer system in synthetic
resins. Non-Final Act. 6-7. The Examiner finds that Kikkawa’s examples
include a mixture of bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate
(corresponding to Appellant’s formula I) and 2,2,6,6-Tetramethyl-4-
piperidinyl stearate (corresponding to Appellant’s formula II), at a ratio from
5:1 to 1:2. Id. The Examiner finds that one of ordinary skill in the art would
have had a reason to provide the above-mentioned hindered amines in
Dearmitt at a ratio within the range taught by Kikkawa to obtain improved
weathering properties. Id. at 7.
Appellant argues that Kikkawa lists more than sixty polymers to
which the disclosed stabilizer system may be applied, but fails to teach the
specific styrene-acrylonitrile copolymer and acrylate-styrene-acrylonitrile
graft polymer required by the independent claims. App. Br. 15. Appellant
8 Appellant does not raise any issue concerning the Examiner’s reliance on
the Dearmitt translation of record. We cite to the translation.
6
Appeal 2017-001570
Application 13/169,368
points out that Kikkawa’s examples that include the claimed combination of
hindered amine stabilizers are directed to polypropylene, and that other
examples in Kikkawa demonstrate that the claimed combination of
stabilizers is not “the best performing combination.” Id. at 16. Appellant
further argues that Dearmitt’s examples include TiCE as a UV stabilizer to
reduce yellowing. Id. at 18. These arguments are not persuasive of error.
Here, Dearmitt, not Kikkawa, is relied upon for disclosure of the claimed
styrene-acrylonitrile copolymer and acrylate-styrene-acrylonitrile graft
polymer. Moreover, Dearmitt already teaches that it was advantageous to
provide a mixture of piperdyl compounds as hindered amine UV stabilizers.
Dearmitt 7. To the extent, if any, that Dearmitt requires the additional use of
TiCE, we note that Appellant fails to argue any basis on which TiCE would
be precluded from the claims. On this appeal record, we are persuaded that
the Examiner’s determination that it would have been obvious to use
Kikkawa’s mixed hindered amine stabilizers in Dearmitt’s molding
composition for the desired purpose of enhancing weather resistance is
supported by a preponderance of the evidence.
Appellant also argues that a “person of ordinary skill would not
possess a reasonable expectation of a success that an AB resin of Dearmitt
with the 1-4:11-1 stabilizer system of Kikkawa would necessarily possess the
recited penetration data.” App. Br. 19. Because claim 42 does not recite a
penetration property, this argument plainly is not persuasive with regard to
that claim. Concerning claim 19, the Examiner finds that because the
molding composition suggested by the prior art includes the claimed
components in the claimed amounts, the claimed penetration property
inherently would have been present. Non-Final Act. 7.
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Application 13/169,368
Where the claimed and prior art products are identical or substantially
identical, an Applicant may be required to prove that the prior art products
do not necessarily or inherently possess the characteristics of the claimed
product. In re Best, 562 F.2d at 1255; see also In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.”). See also. In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) (stating “[e]ven if no prior art of record
explicitly discusses the [limitation], [applicant's] application itself instructs
that [the limitation] is not an additional requirement imposed by the claims
on the [claimed invention], but rather a property necessarily present in [the
claimed invention]”);
Here, Appellant does not point to persuasive evidence or credible
technical reasoning sufficient to show that the molding composition
suggested by the prior art would not yield the claimed penetration
characteristic. Although Appellant is correct that the Examiner does not
identify any express recognition of penetration values in the prior art, that
alone is insufficient to refute the reasonable presumption that material
having the claimed composition would exhibit the claimed properties.
Appellant’s argument that the references also fail to recognize the more
narrowly recited penetration values recited in claims 40 and 41 is not
persuasive for the same reasons.
Appellant also argues that Dearmitt fails to teach the claimed graft
polymer swelling index. The Examiner finds that Dearmitt teaches the same
graft polymer components, including type and amount of crosslinking agent,
as Appellant discloses in the Specification. Non-Final Act. 6. Because the
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Appeal 2017-001570
Application 13/169,368
swelling index is a measure of crosslinking, the Examiner finds that
Dearmitf s graft polymer inherently would have exhibited a swelling index
within the recited range. Id. Appellant agrees with the Examiner’s finding
that Dearmitt teaches all of the recited ingredients, amounts, and
substantially similar process of making. App. Br. 20-21. Appellant’s
argument that Dearmitt does not expressly recognize the graft polymer’s
swelling index, alone, is not persuasive of error in the Examiner’s inherency
finding. Stated differently, the fact that Appellants may have recognized
another property which would flow naturally from following Dearmitf s (and
Kikkawa’s) teaching or suggestion for the amounts of the components of the
composition cannot be the basis for patentability when the differences, if
any, would otherwise have been obvious. In re Kao, 639 F.3d 1057, 1070
(Fed. Cir. 2011) (“Maloney's express teachings render the claimed
controlled release oxymorphone formulation obvious, and the claimed ‘food
effect’ adds nothing of patentable consequence.”).
For the foregoing reasons, Appellant does not persuade us of
reversible error in the Examiner’s rejection of claims 19, 24-26, 30, 31, 34,
and 39^12 as obvious over Dearmitt and Kikkawa. Accordingly, Rejection I
is sustained.
Rejection II
With regard to Rejection II, Appellant acknowledges that Gugumus
discloses a mixture of compounds meeting formulas I and II, including in a
weight ratio of 1:1, used to stabilize organic materials against degradation
caused by light, heat, or oxidation. App. Br. 26. Appellant relies on the
same arguments against Rejection II as are presented against Rejection I.
Particularly, Appellant argues that Gugumus discloses various organic
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Application 13/169,368
materials other than the recited styrene-acrylonitrile copolymer and acrylate-
styrene-acrylonitrile graft polymer. Id. at 27-28. Appellant also argues that
Gugumus, like Kikkawa, additionally teaches stabilizer mixtures that
purportedly are superior to mixtures of compounds of formulas I and II. Id.
at 27. We find these arguments unpersuasive for the same reasons given in
connection with Rejection I.
Accordingly, Rejection II also is sustained.
DECISION
The Examiner’s decisions 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
10