Ex Parte Parakkal et al

Patent Trial and Appeal Board

Sep 15, 2016

13110101 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/110,101 05/18/2011
52674 7590
Baker & Hostetler LLP
1170 Peachtree Street NE
Suite 2400
Atlanta, GA 30309-7676
09/19/2016
FIRST NAMED INVENTOR
Haseena Aripuram Parakkal
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
26127.000lUl 2816
EXAMINER
HILL, NICHOLAS E
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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 HASEENA ARIPURAM P ARAKKAL,
SRIRAM KRISHNAMURTHY, SAMIK GUPTA,
GAUTAM CHATTERJEE, MATTHEW R. PIXTON, and
WIM STEENDAM 1
Appeal2015-003305
Application 13/110, 101
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHERL. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as SABIC Global
Technologies B.V. Appeal Br. 1.
2 In our opinion below, we reference the Specification filed May 18, 2011
(Spec.), Final Office Action mailed April 24, 2014 (Final), the Appeal Brief
filed September 24, 2014 (Appeal Br.), the Examiner's Answer mailed
November 10, 2014 (Ans.), and the Reply Brief filed January 12, 2015
(Reply Br.).
Appeal2015-003305
Application 13/110,101
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1-3, 5, 6, 9-17, and 21-23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a polymer composition. Claim 1, which we
reproduce from the Claims Appendix of the Appeal Brief, is illustrative:
1. A polymer composition comprising a polycarbonate
component prepared at least partially from a bio-
sourced isosorbide, a phosphorus containing flame
retardant composition, and a styrenic epoxy.
Appeal Br. 8.
The Examiner maintained the following rejections under 35 U.S.C.
§ 103(a) in the Final Office Action:
A. Claims 1, 2, 5, 6, 9-16, and 21 as obvious over Jansen3 in view of
Joncryl; 4
B. Claim 3 as obvious over Jansen in view of Joncryl, and further in
view of Harder, 5 as evidenced by Marzi; 6
C. Claim 17 as obvious over Jansen in view of Joncryl, and further in
view of Szkudlarek; 7
3 Jansen et al., US 7,666,972 B2, issued Feb. 23, 2010.
4 Joncryl, JONCRYL ADR-4368, product data sheet from BASF The
Chemical Company 1-8 (2008).
5 Harder et al., WO 2009/062691 Al, published May 22, 2009; English
equivalent US 2011/0105655 Al, published May 5, 2011.
6 Marzi, Environmental and Toxicological Properties of Exolit Flame
Retardants Based on Alkyl-Phosphinic Acid Salts, Slide Presentation from
Fraunhofer. Slides 1-7.
7 Szkudlarek et al., WO 2010/108964 Al, published Sept. 30, 2010.
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Application 13/110,101
D. Claim 22 as obvious over Jansen in view of Joncryl, and further in
view of Fox; 8 and
E. Claim 23 as obvious over Jansen in view of Joncryl, and further in
view of de Kraker. 9
The Examiner also maintained the following provisional rejections on
the ground of nonstatutory obviousness-type double patenting:
A. Claims 1, 2, 9-12, and 15 as unpatentable over claims 1, 5, and 8-
11 of copending Application 13/110, 102 (claim set dated May 22,
2013) 10 in view of Joncryl; and
B. Claims 1-3 and 13-15 as unpatentable over claim 1 of copending
Application 13/110,107 (claim set dated September 6, 2013) 11 in
view of Harder, as evidenced by Marzi.
OPINION
Obviousness Rejections
With regard to the rejection of claims 1, 2, 5, 6, 9-16, and 21 as
obvious over Jansen in view of Joncryl, Appellants do not argue any claim
apart from the others in the manner required by 3 7 C.F .R. § 41.3 7 ( c )(iv).
See 37 C.F.R § 41.37(c)(iv)(2013) ("Under each heading identifying the
ground of rejection being contested, any claims(s) argued separately or as a
subgroup shall be argued under a separate subheading that identifies the
claims(s) by number."). We select claim 1 as representative for resolving
the issues on appeal.
8 Fox, US 3,221,080, issued Nov. 30, 1965.
9 de Kraker et al., US 2011/0060106 Al, published Mar. 10, 2011.
10 Application 13/110,102 issued as US 8,841,404 on September 23, 2014.
11 Application 13/110,107 issued as US 8,933,170 on January 13, 2015.
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Application 13/110,101
There is no dispute that Jansen teaches an isosorbide-based
polycarbonate composition containing a phosphorous-containing flame
retardant or that Joncryl teaches a styrene epoxy for use as an additive in
polycarbonate compositions. Compare Final 3; Ans. 9 with Appeal Br. 3;
Reply Br. 1-2. Based on the teachings of Jansen and Joncryl, the Examiner
concludes that "[i]t would have been obvious to a person having ordinary
skill in the art at the time of the invention to have added the Joncryl ADR-
4368-F [styrene epoxy] of Joncryl to the isosorbide polycarbonate
composition of Jansen et al." Final 3. The Examiner's conclusion is based
on the finding of a suggestion in Joncryl ADR- 4368-F that styrene epoxy
"is a hydrolytic stabilizer (page 3, Polycarbonates) that is designed to
reverse the degradation of polycarbonates (page 2, lines 1 and 2)." Id.
Appellants contend that the Examiner's finding of a reason to add
Joncryl's styrene epoxy to the isosorbide-based polycarbonate composition
of Jansen is in error, and there is no evidence that one would have predicted
the significantly improved molecular weight retention and flame resistance
demonstrated by Appellants. Appeal Br. 3-6.
After weighing all the evidence, we determine that a preponderance of
the evidence supports the Examiner's findings and conclusions.
Jansen is specifically concerned with the molecular weight of the
isosorbide-based polycarbonate. Polycarbonates, in general, must have
sufficiently high molecular weight for desirable mechanical properties and
sufficiently low glass transition temperatures and flow to be useful in
molding and extrusion applications. Jansen, col. 1, 11. 29-45. Isosorbide-
based polycarbonates are biologically-derived, and the high temperature
processing conditions of extrusion and injection molding can decrease their
molecular weight, which will adversely affect the melt flow and mechanical
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Application 13/110,101
properties of the polycarbonate. Id. Jansen seeks to provide an isosorbide-
based polycarbonate with a balance of properties including "sufficiently high
molecular weight." Jansen, col. 2, 11. 4--9. Jansen selects the monomer units
of the isosorbide-based polycarbonate to obtain a composition with good
molecular weight (Mw) stability. Jansen, col. 3, 11. 48---64.
Joncryl is a product data sheet for Joncryl ADR-4368. It describes the
Joncryl additive as a polymeric chain extender, "a multi-function reactive
polymer designed to reverse the degradation of PET, polycarbonate, nylon,
and other condensation polymers," and "a polymeric coupling agent that
reacts with degraded polymers to restore the original molecular weight as
well as I.V. (intrinsic viscosity) and melt viscosity." Joncryl, pp. 1-2.
Joncryl specifically lists the additive as for use in polycarbonates for
hydrolytic stabilization. Joncryl, p. 3.
Joncryl cautions that "[t]he use of Joncryl ADR-4368 in reactive
extrusion or reactive injection molding operations produces significant
increases in molecular weight of the plastic being modified," that "raises the
melt viscosity, which in tum raises the pressure observed in the equipment."
Joncryl, p. 7. Joncryl tells operators to be aware of these expected pressure
changes and how to adjust the equipment and troubleshoot problems when
unexpectedly high pressures are encountered. Joncryl, pp. 7-8.
We agree with the Examiner that there is ample guidance in the
teachings of Jansen and J oncryl to support a finding of a reason to use
Joncryl ADR-4368 in the polycarbonate of Jansen for the benefits articulated
in Joncryl. Isosorbide-based polycarbonate, like other polycarbonates, are
condensation polymers and those of ordinary skill in the art would have
understood the additive to have the same type of benefits in isosorbide-based
polycarbonate as in other polycarbonates.
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Application 13/110,101
Appellants contend that "the combination of Jansen and Joncryl
would not fairly suggest the molecular weight retention aspect of
Appellants' invention (see, e.g., claim 16)." Appeal Br. 5. It is unclear
whether Appellants are arguing claim 16 separately, given that Appellants
do not address claim 16 under a separate heading, but whether the argument
is directed to the rejection of claim 1 or 16, the answer is the same: the
combination of references, in fact, do suggest that ADR-4368 would result
in molecular weight retention. ADR-4368 is designed to reverse degradation
of polymers such as polycarbonate, and it is said to react with degraded
polymers to restore the original molecular weight. Joncryl, p. 2.
Appellants contend that the ordinary artisan would not have predicted
the significantly improved molecular weight retention and flame resistance
demonstrated by Appellants. Appeal Br. 5---6. Appellants point to the
Specification at paragraphs 129, 132, 139, and 140, and Tables 5, 6, and 8 in
support.
Table 5 is said to report the effect of epoxy selection on the resulting
molecular weight of "Iso ter PC," which according to Table 1 is isosorbide-
bisphenol A polycarbonate-C36 diacid terpolymer in the ratio of 65/28/7.
Spec. i-fi-140, 128. All of the tested compositions are isosorbide-based
polycarbonates. The percent retention of molecular weight is only reported
for one composition containing a styrene epoxy (0.5 wt.% ADR-4368F).
The percent retention reported is 72.77%, which is less than the retention for
a composition containing no styrene epoxy (CAPl 7.5 composition having
75.61 % retention). According to paragraph 129, "[o]f all epoxy materials
evaluated, the sample comprising styrenic epoxy ADR (ADR-4368F)
exhibited a substantial improvement in flame resistance (VO up to 2 mm),
while providing a retention of molecular weight of up to about 85 %." Spec.
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Application 13/110,101
i-f 129 (emphasis added). It is not clear what composition has retention of
molecular weight (Mw) up to 85%. Table 5 does not report any composition
with such a retention.
Table 8 reports results for the addition of styrenic epoxy to a control
sample of petroleum-based BPAPC 105, which according to Table 1 is BPA
polycarbonate resin made by an interfacial process with an MVR at
300°C/1.2 kg. of 5.1-6.9 g.10 min. Spec. ,-r,-r 40, 135, 138, 139. The
molecular weight retention for the composition containing 17 .5 wt.% Exolit
OP 1230 flame retardant and 1 wt.% ADR-4368F was 44.25%. The
Specification states, in paragraph 140, that "[fJor comparison (see Table 6),
the molecular weight retention of Iso ter PC with Exolit OP 1230, when
processed at 220 °C, was significantly higher than that obtained for the
petroleum based BP APC PC 105 control sample with Exolit OP 1230,
processed at 260 °C." Spec. i-f 140. But Table 6 does not report a%
retention of Mw for Iso ter PC with Exolit OP 1230 processed at 220 °C.
Spec. i1131, Table 6. ivforeover, the processing temperature of the
petroleum-based polycarbonate composition is higher (260 °C) than that of
the isosorbide-based polycarbonate composition (220 °C). Compare Spec.
i-f 139, Table 8 with Spec. i-f 131, Table 6. This difference in processing
temperature affects the retention of molecular weight. Spec. i-f 132.
Paragraph 132 reports that lowering the processing temperature improves the
flame resistance and retention of molecular weight and states that "[a ]ddition
of styrenic epoxy further improves the molecular weight retention of up to
93 % at 220 °C." Spec. i-f 132. But, again, it is not clear what composition
has a retention up to 93%. Table 6 does not report the% retention ofMw
for any compositions processed at 220 °C. Spec. i-f 131, Table 6.
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Application 13/110,101
Not only do we agree with the Examiner that the data is not
commensurate in scope with the breadth of the claims, Ans. 10, but we
determine the data in Tables 5, 6, and 8 does not adequately support the
statements in the Specification with regard to the significance of the %
molecular weight retention difference alleged, nor does the data provide
adequate evidence that the difference would have been unexpected by one of
ordinary skill in the art. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)
("It is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.").
The data in Table 5 seems to indicate that the % retention is better for
the composition not containing ADR-4368F (75.61 %) than for the
composition containing 0.5 wt.% ADR-4368F (72.77%). Although the
Specification states that the "[a ]ddition of styrenic epoxy further improves
the molecular weight retention of up to 93 % at 220 °C," Spec. i-1132, it is
not clear what example compos1t10n is being referred to as Table 6 does not
report any% retention of Mw for the compositions processed at 220°C.
Table 8 shows a 44.25 % retention of Mw for a petroleum-based
polycarbonate processed at 260 °C and this is lower than the % retention for
the isosorbide-based polycarbonates processed at 250 °C having 0.5 wt.%
ADR-4368F (Table 5), but there is not enough evidence to indicate that this
difference would have been unexpected to one of ordinary skill in the art.
Because compounds normally vary from one another in properties,
that a compound has a property somewhat "superior" in comparison to
another compound does not necessarily mean the result would have been
unexpected. An appellant must establish that the property would have been
viewed as unexpected by one of ordinary skill in the art. See Pfizer, Inc. v.
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Application 13/110,101
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness," and a proper evaluation considers what properties were
expected).
Remaining Obviousness Rejections
Other than the rejection of claim 17, Appellants do not advance any
separate arguments directed to the rejections of claims 3, 22, and 23.
Appellants have not identified a reversible error in the rejections of claims 3,
22, and 23.
Claim 17 depends from claim 1 and requires the polymer composition
exhibit a heat deflection temperature (HDT) of at least about 80 °C.
Appellants contend the Examiner erred in finding that HDT is a results
effective variable. Appeal Br. 6.
Appellants' argument falls short because it overlooks what those of
ordinary skill in the art would have understood when reading the reference
and instead tries to pigeonhole the Examiner's analysis mto a result effective
variable test. "An obviousness determination is not the result of a rigid
formula disassociated from the consideration of the facts of a case."
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007). There can be no real dispute that it was understood in the art that it
was desirable to formulate isosorbide-based polycarbonate composition with
desired HDTs. Szkudlarek p. 2, 11. 4---6 ("The object of the present invention
is obtaining a resin composition with a relatively low viscosity, while the
thermal stability of the cured objects (as expressed in the HDT) is
maintained or even increased."). Nor can be there any dispute that
Szkudlarek taught how to obtain isosorbide-based polycarbonates with an
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Application 13/110,101
HDT above 80 °C. Szkudlarek, pp. 14--15 (Examples 3---6 having HDTs of
98, 95, 91, and 104 °C).
A preponderance of the evidence supports the Examiner's
determination that there was a desire in the art to maintain or increase HDT
and there was guidance in the prior art (Szkudlarek) on how to obtain HDTs
above 80 °C, which supports a conclusion of obviousness.
Provisional Obviousness-type Double Patenting Rejections
Appellants do not substantively address the provisional obviousness-
type double patenting rejections, but instead state that these matters, along
with other informalities noted in objections by the Examiner "can be
resolved following resolution of the current appeal." Appeal Br. 2, n. 1.
The copending Applications relied upon by the Examiner to support the
rejections have issued as patents. As Appellants do not challenge the
provisional rejections and the status of the claims in the Applications has
changed, we decline to reach the rejections at this time, leaving it to the
Examiner and Appellants to resolve the matter.
CONCLUSION
We sustain the Examiner's obviousness rejections, and do not reach
the provisional obviousness-type nonstatutory double patenting rejections.
DECISION
The Examiner's decision is affirmed.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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