Ex Parte Mullen

Board of Patent Appeals and Interferences

Mar 7, 2011

11845459 (B.P.A.I. Mar. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN D. MULLEN
__________

Appeal 2010-009394
Application 11/845,459
Technology Center 1700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a
thermoplastic composition. The Examiner has rejected the claims as

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/845,459

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obvious in view of the prior art. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-22 are on appeal. Claim 1 is representative, and is directed
to a thermoplastic composition comprising (1) a polymeric compound
comprising at least two epoxy groups and (2) a polymer component that
comprises (a) a polyestercarbonate copolymer made up of specified ester
units and carbonate units and (b) a branched polycarbonate copolymer
comprising carbonate units and specified branching units. Claim 1 is
reproduced in the Claims Appendix of the Appeal Brief (pages 16-18).
Claim 18, which was rejected separately, is similar but more narrowly
defines the components of the claimed composition. Claim 18 is also
reproduced in the Claims Appendix of the Appeal Brief (page 23).
I.
Issue
The Examiner has rejected claims 1-17 and 19-22 under 35 U.S.C.
§ 103(a) as obvious based on Fonseca2 and Siclovan3 (Answer 3-4). The
rejected claims have not been argued separately and therefore stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Fonseca
teaches a composition comprising an aliphatic polyester, a branched
polycarbonate, and a styrene-acrylic acid copolymer containing epoxy
groups (Answer 3). The Examiner finds that Fonseca’s composition does
not contain a polyestercarbonate polymer (id.) but that Siclovan discloses a

2 Fonseca et al., US 2005/0143532, June 30, 2005
3 Siclovan et al., US 6,559,270, May 6, 2003
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polyestercarbonate comprising the units recited in claim 1 (id.). The
Examiner concludes that it would have been obvious “to have replaced the
aliphatic polyester of Fonseca et al. with the polyestercarbonate of Siclovan
et al.” because Siclovan teaches that mixtures of polycarbonate and aliphatic
polyesters, like Fonseca’s, have low transparency because they are
immiscible (id.).
Appellant contends that Fonseca teaches away from including an
epoxy-containing copolymer in its composition because its data show that
one such copolymer (JoncrylTM) promotes cracking (Appeal Br. 9).
Appellant also contends that Siclovan does not state that substituting a
polyestercarbonate for the polyester in a carbonate/polyester blend would
solve the miscibility problem (id. at 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that it would have been obvious to
combine the components recited in claim 1 based on Fonseca and Siclovan?
Findings of Fact
1. We adopt the Examiner’s fact-finding regarding the disclosures of
Fonseca and Siclovan (Answer 3).
2. Fonseca discloses that “[p]referably a styrene-acrylic copolymer is
utilized for additional enhanced chemical resistance. . . . Various types of
epoxy-based materials have been used in this current study, such as . . .
Joncryl ADR 4368 (a styrene-acrylate copolymer with epoxy functionality).”
(Fonseca 2, ¶ 22.)
3. Siclovan discloses that “[o]ther polymers have been blended with
polycarbonates and/or polyesters to improve their resistance to degradation
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by ultraviolet radiation and loss of gloss, hereinafter sometimes collectively
designated ‘weatherability’” (Siclovan, col. 1, ll. 43-46).
4. Siclovan discloses that “[e]xamples of blends of this type are
weatherable blends of polycarbonates with copolyesters. . . . However, such
blends are typically immiscible and their use is, therefore, limited to
situations in which transparency is not required.” (Id. at col. 1, ll. 46-53.)
5. Siclovan discloses “a class of block copolyestercarbonates having
excellent weatherability. Blends of said copolyestercarbonates with other
polymers, specifically polycarbonates and polyesters, are resistant to loss of
gloss and have excellent physical properties.” (Id. at col. 2, ll. 2-7.)
6. Siclovan discloses that its copolyestercarbonates “hav[e] excellent
physical properties. Their light transmitting properties are similar to those
of polycarbonates. Thus, they are substantially transparent.” (Id. at col. 14,
ll. 27-30).
Analysis
We agree with the Examiner that a person of ordinary skill in the art
would have considered it obvious to substitute the copolyestercarbonate
disclosed by Siclovan for the aliphatic polyester in Fonseca’s composition,
because Siclovan discloses that blends of its copolyestercarbonates and
polycarbonates have excellent weatherability and physical properties,
including transparency.
Appellant argues that, while Siclovan discloses that a blend of
polycarbonate and polyester is immiscible, it does not state that substituting
a copolyestercarbonate for the polyester would make the blend miscible
(Appeal Br. 8). This argument is unpersuasive because Siclovan expressly
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states that blends of its copolyestercarbonate and other polymers,
specifically polycarbonates, have “excellent physical properties” (FF 5) and
that the “excellent physical properties” of its copolyestercarbonates include
transparency (FF 6).
Appellant also argues that “Fonseca et al., teaches away from the
addition of a styrene-acrylic acid copolymer additive such as JoncrylTM”
(Appeal Br. 9). This argument is also unpersuasive, because Fonseca states
that its compositions preferably contain a styrene-acrylic acid copolymer
such as JoncrylTM for enhanced chemical resistance (FF 2). The results in
Fonseca’s Table 1 are not to the contrary, since all of the compositions
tested contained Joncryl ADR4368. The table shows the superior chemical
resistance of compositions that include branched, instead of linear,
polycarbonates (see Fonseca 4, ¶ 39). Fonseca does not suggest that
omitting the Joncryl ADR4368 from its compositions would improve them.
Finally, Appellant argues that including Siclovan’s copolyester-
carbonate in Fonseca’s composition would not have been expected to
produce a composition having the claimed properties (Appeal Br. 10), and
that such properties would not be inherent to the composition suggested by
the prior art (Appeal Br. 11).
This argument is also unpersuasive, because the Examiner has shown
that the prior art would have made obvious a composition meeting all of the
structural limitations of the claimed composition, and Appellant has not
provided an adequate basis for concluding that a composition having the
same structure as what is claimed would not also have the same properties.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that it
would have been obvious to combine the components recited in claim 1
based on Fonseca and Siclovan.
II.
Issue
The Examiner has rejected claim 18 under 35 U.S.C. § 103(a) as
obvious based on Fonseca and Motz4 (Answer 5). The Examiner finds that
Fonseca teaches a composition comprising an aliphatic polyester and the
branched polycarbonate and styrene-acrylate polymers recited by claim 18,
but not a polyestercarbonate polymer (id.). The Examiner finds that Motz
teaches the polyestercarbonate required by claim 18, and concludes that it
would have been obvious “to have added the polyestercarbonate of Motz to
the composition of Fonseca et al., . . . as Motz suggests, to produce
transparent articles at increased polyester content” (id.).
Appellant contends that Motz would not have suggested adding its
polyestercarbonate to Fonseca’s composition (Appeal Br. 12).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that it would have been obvious to
add Motz’s polyestercarbonate to Fonseca’s thermoplastic composition?

4 Motz, US 4,226,961, Oct. 7, 1980
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Additional Findings of Fact
7. We adopt the Examiner’s fact-finding regarding the disclosure of
Motz and U.S. Patent 3,169,121, which Motz incorporates by reference
(Answer 5).
Analysis
As found by the Examiner, Fonseca discloses a composition
comprising the branched polycarbonate and styrene-acrylate polymer recited
in claim 18 and a polyester, and Motz discloses that the polyestercarbonate
polymer recited in claim 18 is a preferred embodiment that “allows the
production of transparent molded articles with molding compositions having
polyester concentrations significantly greater than 10 to 12 percent by
weight” (Motz, col. 1, ll. 38-41; and col. 2, ll. 10-14). We agree with the
Examiner that these disclosures would have made it obvious to a skilled
worker to include Motz’s polyestercarbonate polymer in Fonseca’s
composition, in order to allow the production of transparent articles with
increased polyester content, which Motz discloses to be desirable.
Appellant argues that the portion of Motz cited by the Examiner as
disclosing “polyester concentrations … greater than 10 to 12 percent by
weight, . . . is referring to the polyalkylene terephthalate, not the polyester
carbonate. . . . Motz et al., in the cited portion, does not suggest increasing
the amount of polyester carbonate.” (Appeal Br. 12.)
This argument is unpersuasive. The Examiner’s rejection is based on
adding the polyestercarbonate of Motz to the composition of Fonseca.
Neither claim 18 nor the Examiner’s rationale for the rejection require
adding more than 10-12% polyestercarbonate to Fonseca’s composition.
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Appellant also argues that “Motz et al. does not disclose that the
molar ratio of ester units to carbonate units is 20:80 to 80:20” (Appeal Br.
12). This argument is also unpersuasive because, as the Examiner has
pointed out, Motz incorporates by reference U.S. Patent 3,169,121, which
exemplifies polyestercarbonates having carbonate contents ranging from
55-80 mol% (Answer 5); i.e., ester:carbonate unit ratios of 45:55 to 20:80.
Finally, Appellant argues that adding Motz’s copolyestercarbonate to
Fonseca’s composition would not have been expected to produce a
composition having the claimed properties (Appeal Br. 13), and that such
properties would not be inherent to the composition suggested by the prior
art (id. at 14).
This argument is also unpersuasive. The Examiner has shown that the
composition made obvious by the prior art meets the structural limitations of
claim 18, and the claim does not recite any functional limitations.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that it
would have been obvious to add Motz’s polyestercarbonate to Fonseca’s
thermoplastic composition.
SUMMARY
We affirm both of the rejections on appeal.
Appeal 2010-009394
Application 11/845,459

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TIME PERIOD FOR RESPONSE
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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