Ex Parte Ponticiello et al

Patent Trial and Appeal Board

Feb 12, 2019

12935388 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/935,388 11/02/2010 Antonio Ponticiello
22850 7590 02/14/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
367802USOXPCT 3960
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO PONTICIELLO, DARIO GHIDONI, and
RICCARDO FELISARI
Appeal2017-004047
Application 12/935,388
Technology Center 1700
Before N. WHITNEY WILSON, JEFFREY R. SNAY, and
SHELDON M. MCGEE, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 5, 6, 29, 33-35, 38--45, and 48. 2 An oral hearing
was held on January 29, 2019. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 We cite to the ("Spec.") filed September 29, 2010; Final Office Action
("Final Act.") dated February 22, 2016; Appellants' Appeal Brief ("App.
Br.") dated August 19, 2016; Examiner's Answer ("Ans.") dated November
25, 2016; and Appellants' Reply Brief ("Reply Br.") dated January 13, 2017.
2 Rejected claims 3, 4, 36, and 37 are canceled. See Amendment and
Request for Reconsideration, filed August 19, 2016.
Appeal2017-004047
Application 12/935,388
BACKGROUND
The subject matter on appeal relates to compositions of expandable
vinyl aromatic polymers having reduced thermal conductivity. Spec. 1. The
disclosed compositions may be used to form thermal insulation products. Id.
at 2. To increase the thermal insulation property of expanded materials,
"suggestions have been made to fill the polymer with athermanous materials
such as graphite, carbon black or aluminum." Id. According to the
Specification, enhanced thermo-insulating properties can be achieved by
using coke as an athermanous material. Id. at 4. Claim 1 is illustrative:
1: A composition, comprising an expandable vinyl
aromatic polymer comprising:
(a) a polymeric matrix (a) obtained by polymerizing a
base comprising 50-100% by weight of at least one vinyl
aromatic monomer and 0-50% by weight of at least one
co-polymerizable monomer;
(b) 1-10% by weight, calculated with respect to the
polymeric matrix (a), of an expandable agent (b) englobed in
the polymeric matrix (a); and
(c) 0.05-25% by weight, calculated with respect to the
polymeric matrix (a), of at least one coke selected from the
group consisting of a needle coke and a calcined coke, in
particle form with an average diameter of particles ranging
from 0.5 to 100 µm and with a surface area, measured
according to ASTM D-3037 /89 (BET), ranging from 5 to 50
m2/g.
App. Br. 18 (Claims Appendix) (emphasis added to highlight a key
recitation in dispute).
2
Appeal2017-004047
Application 12/935,388
REJECTIONS 3
I. Claims 1, 5, 6, 29, 33-35, 38--45, and 48 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Glueck, 4 Gluck '713, 5 or Gluck '242, 6
in view of either BASF7 or Berghmans, 8 and further in view of Asbury. 9
II. Claims 29 and 33 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Glueck, Gluck '713, or Gluck '242, in view of either
BASF or Berghmans, and further in view of Asbury and Lanfredi. 10
OPINION
Rejection I
With regard to Rejection I, Appellants argue claims 1, 5, 6, 29, 33, 38,
39, 42, and 43 as a group and separately argue claims 34, 35, 40, 41, 44, 45,
and 48. We select claim 1 as representative of the group and decide the
propriety of Rejection I as applied to the grouped claims based on
3 The Examiner's rejection under 35 U.S.C. § 112 is withdrawn. Advisory
Action dated October 20, 2016. The Examiner's provisional obviousness-
type double patenting rejections over two previously-pending applications
are moot because those applications are abandoned.
4 US 6,130,265, issued October 10, 2000.
5 US 6,340,713 Bl, issued January 22, 2002.
6 US 6,362,242 Bl, issued March 26, 2002.
7 WO 2007/023091 Al, published March 1, 2007. We cite to US
2008/0234400 Al, published September 25, 2008, which the Examiner
identifies, and Appellants do not contest, as an English language equivalent.
8 US 6,455,599 Bl, issued September 24, 2002.
9 Asbury Carbon Technical publication,
http://web.archive.org/web/20080307191009/http://www.asbury.com/Cokes.
html.
10 US 2005/0222357 Al, published October 6, 2005.
3
Appeal2017-004047
Application 12/935,388
representative claim 1. Claims 5, 6, 29, 33, 38, 39, 42, and 43 stand or fall
with claim 1. Separately argued claims are separately addressed below.
Claim 1
Relevant to Appellants' arguments, the Examiner finds that each of
Glueck, Gluck '713, and Gluck '242 discloses expandable polymer
compositions containing athermanous graphite particles that serve to reduce
thermal conductivity, but does not disclose coke as an athermanous material.
Non-Final Action, dated October 1, 2012, 7-8. 11 The Examiner further finds
that BASF teaches that coke can be used as an athermanous material for
reducing thermal conductivity in expandable polymers, 12 and that Asbury
identifies calcined needle coke as a commercially available coke material.
2013 Final Act. 3--4. The Examiner reasons that, in light of these prior art
disclosures, it would have been obvious to one of ordinary skill in the art to
use calcined needle coke as a commercially available athermanous material
in the Glueck, Gluck '713, or Gluck '242 compositions to reduce thermal
conductivity.
11 The Examiner's reasoning with regard to Glueck, Gluck '713, Gluck '242,
BASF, and Berghmans in support of Rejection I is provided at pages 7-9 of
the 2012 Non-Final Action (hereafter, "2012 Non-Final"). The Examiner's
further reasoning with regard to Asbury is provided at pages 3--4 of the Final
Office Action, dated January 16, 2013 (hereafter, "2013 Final Act.").
Appellants acknowledge the Examiner's reliance on reasoning set forth in
these earlier Office Actions. App. Br. 10.
12 The Examiner relies on Berghmans' disclosure of coke as a nucleating
agent as an alternative to reliance on BASF's disclosure of coke as
athermanous material. Because we affirm the Examiner's reasoning based
on BASF, we need not reach the Examiner's alternative reasoning based on
Berghmans.
4
Appeal2017-004047
Application 12/935,388
Appellants argue that BASF fails to distinguish between different
types of coke and, for that reason, does not suggest use of calcined coke or
needle coke. App. Br. 11-12. Appellants further argue that Asbury
characterizes calcined needle coke as substantially different from other types
of coke, and that, according to Appellants, "calcinated needle coke needs to
undergo a significant structure change in order to be like graphite." Id. at
12-13. See also Reply Br. 3. For those reasons, Appellants urge that the
Examiner has not shown that calcined coke or needle coke would have been
functional equivalents of Glueck's graphite. Id. at 13.
These arguments are not persuasive of reversible error. Glueck
teaches various athermanous materials, including carbon black, graphite,
metal oxides, and metal powder or pigments, that are known for use in
reducing thermal conductivity in expandable polymers, such as expandable
styrene polymers. Glueck 1:26-28, 2:3-7, 20-22. 13 BASF identifies carbon
black, graphite, aluminum, and coke as athermanous materials suitable to
reduce thermal conductivity in polystyrene foam. BASF ,r,r 26, 27. These
teachings support the Examiner's finding that one of ordinary skill would
have had a reason to use coke as an athermanous material in Glueck's
composition. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007)
(In assessing the obviousness of claims to a combination of prior art
elements, the question to be asked is "whether the improvement is more than
the predictable use of prior art elements according to their established
functions."). Appellants' argument that Asbury provides different
characterizations of certain different types of commercially available coke
13 Appellants do not argue any distinction between Glueck, Gluck "713, or
Gliick'242. For convenience, we cite only to Glueck.
5
Appeal2017-004047
Application 12/935,388
neither contends nor demonstrates that any of the identified coke materials
would have been unsuitable for use as an athermanous material. The fact
that Asbury provides different descriptions for each of four coke materials is
not persuasive of error in the Examiner's finding that one of ordinary skill in
the art would have held a reasonable expectation of success in using
Asbury' s offered needle coke, in light of BASF' s teaching that it was known
to provide coke as an athermanous material to reduce thermal conductivity.
Appellants point to the Declaration of Antonio Ponticello ("Deel."),
filed on July 23, 2013, as evidence that coke and graphite impart different
thermal conductivity properties to polystyrene. App. Br. 13. According to
Appellants, the Declaration demonstrates that "expanded polystyrene that
contains graphite has a much higher conductivity than the expanded
polystyrene that contains an equal amount of coke." Id. at 14. However, the
contention that coke may exhibit better thermal conductivity reduction than
graphite does not negate BASF's express teaching that both graphite and
coke were known materials for use in reducing thermal conductivity in
expandable polymer compositions.
Rejection I as applied to claims 1, 5, 6, 29, 33, 38, 39, 42, and 43 is
sustained.
Claims 34, 35, 40, 41, and 48
Appellants argue that each of claims 34, 35, 40, 41, and 48 requires
the coke material to be homogenously dispersed, whereas BASF describes
providing the athermanous compound within a polymer coating applied to
pre-foamed foam particles. App. Br. 15; Reply Br. 5. Appellants' argument
fails to consider the totality of the prior art references relied upon by the
Examiner. Particularly, the Examiner finds that Glueck discloses
6
Appeal2017-004047
Application 12/935,388
homogenous dispersion of the athermanous material. Ans. 9--10. BASF is
relied upon solely for its recognition that coke was known in the art as
another athermanous material for the same purpose of reducing thermal
conductivity in expandable polymer compositions. Id. Appellants'
characterization of BASF in isolation is not persuasive of reversible error.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references .... [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole." In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). See also In re Keller, 642 F.2d
413,425 (CCPA 1981).
Rejection I as applied to claims 34, 35, 40, 41, and 48 is sustained.
Claims 44 and 45
Claims 44 and 45 require the recited coke to be present at 4 to 25% by
weight. Appellants argue that Berghmans discloses coke as a nucleating
agent at a concentration that is "less than the minimum 4 wt% recited in
Claims 44 and 45." App. Br. 15; Reply Br. 5-6. As noted, this decision
does not address the Examiner's alternative citation to Berghmans. Supra n.
12. In rejecting claims 44 and 45, the Examiner finds that both Glueck and
BASF teach use of athermanous material at concentrations that render the
claimed concentrations obvious. See Non-Final Action, dated September 17,
2015, p. 3; Ans. 10. See also Glueck 2:4--5 ("0.05 to 25% by weight of
homogenously distributed graphite particles"); BASF claim 2 ("carbon
black, coke, aluminum powder or graphite as athermanous compound in
amounts of from O .1 to 10% by weight"). Appellants' argument addressing
only Berghmans neither addresses nor refutes the Examiner's findings as to
7
Appeal2017-004047
Application 12/935,388
Glueck and BASF with regard to concentration of athennanous material. As
such, Appellants do not persuade us of reversible error.
Rejection I as applied to claims 44 and 45 is sustained.
Rejection II
Appellants do not argue Rejection II except to rely on the arguments
presented in connection with Rejection I. See App. Br. 16. Accordingly,
Rejection II is sustained for the reasons given above in connection with
Rejection I.
DECISION
The Examiner's rejection of claims 1, 5, 6, 29, 33-35, 38--45, and 48
is 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