Ex Parte Rogunova et al

Patent Trials and Appeals Board

May 3, 2019

12565167 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/565, 167 09/23/2009
157 7590 05/07/2019
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Marina Rogunova
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.
BMS092030 MD09-09-12 9944
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARINA ROGUNOV A, NICOLAS SUNDERLAND,
JAMES P. MASON, HANS FRANSSEN, and BERIT KRAUTER
Appeal2018-004302
Application 12/565, 167
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-004302
Application 12/565,167
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 36-502. We have jurisdiction over the Appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants' invention is directed to optically clear, flame retardant
polycarbonate compositions and methods of making the compositions.
(Spec. 1 :5-6; claims 36, 37 (Claims Appendix)).
Claim 36 is illustrative of the issues on appeal:
36. A flame-retardant, low haze, optically clear thermoplastic
molding composition consisting of:
A) about 60 pbw to about 97 pbw of an aromatic
polycarbonate;
B) about 1 pbw to about 20 pbw of bromine-substituted
oligocarbonate;
C) about 1 pbw to about 20 pbw of a phosphorus-containing
compound wherein the phosphorus-containing compound
conforms structurally to formula (V),
wherein
1 The Appeal Brief on page 1 indicates that "Covestro LLC" is the assignee
of record.
2 This Application was the subject of Appeal 2012-004182 in which the
Board affirmed the Examiner's 35 U.S.C. § 103(a) rejections that included
Brenner as a secondary reference.
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Application 12/565,167
R1, R2, R3 and R4 independently represents Ci-Cs-alkyl, or Cs-
C6-cycloalkyl, C6-C20-aryl or C7-C12-aralkyl,
n independently denotes O or 1, and
Xis a mono- or poly-nuclear aromatic radical having from 6 to
30 carbon atoms, or an aliphatic radical having from 2 to 30
carbon atoms;
D) about 0.01 pbw to about 1 pbw of at least one compound
selected from the group consisting of sodium
perfluoromethylbutane sulphonate, potassium
perfluoromethylbutane sulphonate, tetraethyl ammonium
perfluoromethylbutane sulphonate; sodium perfluoromethane
sulphonate, potassium perfluoromethane sulphonate, tetraethyl
ammonium perfluoromethane sulphonate; sodium
perfluoroethane sulphonate, potassium perfluoroethane
sulphonate, tetraethyl ammonium perfluoroethane sulphonate;
sodium perfluoropropane sulphonate, potassium
perfluoropropane sulphonate, tetraethyl ammonium
perfluoropropane sulphonate; sodium perfluorohexane
sulphonate, potassium perfluorohexane sulphonate, tetraethyl
ammonium perfluorohexane sulphonate; sodium
perfluoroheptane sulphonate, potassium perfluoroheptane
sulphonate, tetraethyl ammonium perfluoroheptane sulphonate;
sodium perfluoroctanesulphonate, potassium
perfluoroctanesulphonate, tetraethyl ammonium
perfluoroctanesulphonate; sodium perfluorobutane sulfonate,
potassium perfluorobutane sulfonate, tetraethyl ammonium
perfluorobutane sulfonate; sodium diphenylsulfone-sulphonate,
potassium diphenylsulfone-sulphonate, and tetraethyl
ammonium diphenylsulfone-sulphonate; and
E) optionally, one or more additives selected from the group
consisting of lubricants, mold release agents, nucleating agents,
antistatic agents, antioxidants, thermal stabilizers, light
stabilizers, hydrolytic stabilizers, fillers, reinforcing agents,
colorants, pigments, flame retarding agents and drip
suppressants,
wherein the flame-retardant, optically clear thermoplastic
molding composition is free of fluorinated polyolefin, has a
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haze value of less than 1 % and is rated 5V A at 3. 00 mm and
V-0 at 1.5 mm according to UL-94.
Appellants appeal the following rejections3:
1. Claims 36, 38--40, and 42--48 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brenner (US 6,740,697 Bl; May 25, 2004) in view
of Singh (US 2005/0009968 Al; Jan. 13, 2005) and UL94
(UNDERWRITERS LABORATORIES INC., TEST FOR FLAMMABILITY OF
PLASTIC MATERIALS FOR PARTS IN DEVICES AND APPLICANCES ( 5th ed.
1996) ("UL94")).
2. Claims 49 and 50 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brenner in view of Singh, UL94, and Fischer4 (WO
01/98402 Al; Dec. 27, 2001).
3. Claims 36--48 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Brenner in view of Singh, UL94, and Claesen 5 (WO 90/03417;
Apr. 5, 1990).
3 The Examiner withdrew the 35 U.S.C. § I03(a) rejections based on Krauter
because Appellants submitted a Rule 131 declaration that effectively swore
behind the effective filing date of the Krauter reference (Advisory Action 2).
4 Hongkyu Kim is the first named inventor on this publication. For
consistency with the Examiner's naming of the references in the Office
Actions, we will use the second inventor's name, John Michael Fischer, to
denominate this publication.
5 Johannes Comelis Gosens is the first named inventor on this publication.
For consistency with the Examiner's naming of the references in the Office
Actions, we will use the fourth inventor's name, Christianus Adrianus
Amoldus Claesen, to denominate this publication.
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Application 12/565,167
4. Claims 49 and 50 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brenner in view of Singh, UL94, Claesen, and
Fischer.
5. Claims 36-48 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Brenner in view of Singh, UL94, Claesen, and Eckel (US
2002/0115761 Al; Aug. 22, 2002).
6. Claims 49 and 50 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brenner in view of Singh, UL 94, Claesen, Eckel,
and Fischer.
Appellants' arguments focus on the subject matter common to
independent claims 36 and 37. Accordingly, we select claim 36 as
representative of the arguments on appeal. Claims not argued separately
will stand or fall with our analysis of the rejections of claim 36 set forth in
rejections (1 ), (3), and (5).
FINDINGS OF FACT & ANALYSIS
Rejection ( 1)
The Examiner's findings and conclusions regarding Brenner, Singh,
and UL94 are located on pages 16 to 24 of the Non-Final Action dated
September 27, 20166•
Appellants argue that the combined disclosures of Brenner and Singh
would not have led one of ordinary skill in the art to the three different flame
6 The Examiner refers in the Final Action to the Non-Final Action dated
September 27, 2016 for a full statement of the rejections (Final Act. 2).
Accordingly, we cite to the Non-Final Action for the Examiner's finding and
conclusions regarding the applied prior art.
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retardants recited in the claimed composition (App. Br. 5). Appellants
contend that neither Brenner nor Singh teaches a composition having three
different flame retardant compounds in the specific amounts as recited in
components (B), (C), and (D) of the claim (App. Br. 9). Appellants contend
that Brenner teaches using either one or two flame retardant compounds as
shown by the examples in Brenner's patent (App. Br. 9). Appellants
acknowledge that Brenner teaches that mixtures of flame retardants may be
used, but Appellants contend that Brenner does not use the particularly
claimed flame retardants (B), (C), and (D) as recited in the claims (App. Br.
9). Appellants contend that Brenner's disclosures regarding the flame
retardants is very broad and would not have led one of skill in the art to a
flame retardant mixture of the flame retardants (B), (C), and (D) recited in
claim 36 (App. Br. 10). Appellants argue there is no reason in Brenner to
combine the flame retardants as in the claim (App. Br. 10). Appellants
argue that Singh does not teach or suggest a composition having three flame
retardants, much less the three flame retardants in the present claim, and in
the claimed amounts in a single composition (App. Br. 10). Appellants
contend that the Examiner has not provided any reasoning on how a person
skilled in the art is supposed to arrive at the claimed invention (App. Br. 11 ).
There is no dispute that Brenner teaches flame retardants (C) and (D)
(App. Br. generally). Appellants argue that Brenner fails to teach a
bromine-substituted oligocarbonate (i.e., flame retardant (B) in claim 36)
(App. Br. 10; Reply Br. 1). In that regard, Appellants contend that
Brenner's disclosure that brominated compounds are preferred over chlorine
compounds refers to the brominated compounds listed in column 8, lines
46-65 of Brenner (Reply Br. 2). The Examiner finds that Brenner's
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disclosure that bromine-substituted compounds are preferred would have
suggested substituting bromine for the chlorine in the listed compounds,
including the oligocarbonate (Non-Final Act. 17). We agree with the
Examiner. Appellants do not specifically address the Examiner's conclusion
that substituting bromine for chlorine in Brenner's oligocarbonate compound
(i.e., 2,2-bis(3,5-dichloro-4-hydroxyphenyl)propane oligocarbonate) would
have been obvious based upon a preference for using bromine-substituted
flame retardants. Rather, Appellants simply argue that Brenner does not
disclose the bromine-substituted embodiment of the oligocarbonate
compound.
Moreover, we find that Brenner at column 8, lines 46-65 includes a
list of chlorinated and brominated compounds. The compounds listed
include a brominated version of the compound and a chlorinated version of
each of the compounds (Brenner, col. 8, 11. 46-65). For example, Brenner
discloses" ... ;chlorinated and brominated bisphenols such as 2,2-bis(3,5-
dichloro-4-hydroxyphenyl)propane and 2,2-bis(3,5-dibromo-4-
hydroxyphenyl)propane; 2,2-bis(3 ,5-dichloro-4-hydroxyphenyl )propane
oligocarbonate and 2,2-bis(3,5-dichloro-4-hydroxyphenyl)propane
oligocarbonate having an average degree of polycondensation (Mn) of from
2 to 20 . . . . Bromine compounds are preferred to chlorine compounds"
( col. 8, 11. 60-66 ( emphasis added)). In other words, Brenner's column 8
disclosure includes a chlorinated and brominated version of each of the
disclosed compounds with a teaching that bromine-substituted compounds
are preferred. We find that Brenner at column 8, lines 60-64 discloses the
same compound (i.e., 2,2-bis(3,5-dichloro-4-hydroxyphenyl)propane
oligocarbonate) twice. This double disclosure of the same compound
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Application 12/565,167
logically makes no sense and does not comport with the disclosure in
column 8, lines 46-59, where chlorinated and brominated versions of each
compound are disclosed. Therefore, we find this Brenner disclosure is a
typographical error and that one of ordinary skill in the art would have read
Brenner's column 8 as disclosing a 2,2-bis(3,5-dichloro-4-
hydroxyphenyl)propane oligocarbonate and 2,2-bis(3,5-dibromo-4-
hydroxyphenyl)propane oligocarbonate.
We are unpersuaded by Appellants' argument that the combined
teachings of Singh and Brenner would not have suggested the claimed
mixture of flame retardants. The Examiner finds that Brenner teaches that
mixtures of known flame retardants may be used in the composition (Non-
Final Act. 18; Ans. 6). The Examiner finds that Brenner also teaches or
would have suggested each of the three flame retardants used in the
composition (Non-Final Act. 18; Ans. 6). The preponderance of the
evidence supports the Examiner's finding that the combined teachings of
Brenner and Singh teach or would have suggested each of the three flame
retardants. Brenner teaches using mixtures of known flame retardants ( col.
4, 11. 26-27). Brenner does not put a limit on the number of flame retardants
that may be used in the mixture. Brenner teaches the composition includes
"at least one flame retardant in the form of a fully or partially halogenated
sulfonic acid salt" (Abstract). Brenner further discloses that "mixtures of a
plurality of phosphates [flame retardants]" may be used (col. 8, 11. 34--41).
Singh teaches providing a mixture of two flame retardants to a
polycarbonate composition (i1 19). Therefore, the combined teachings of
Brenner and Singh would have suggested a mixture of a plurality of flame
retardants. Brenner may disclose many flame retardants, and such
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disclosure amounts to a myriad of effective flame retardants that may be
used as mixtures for uses in polycarbonate compositions. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious."). The Examiner correctly finds that
Appellants have not proffered any evidence of criticality or unexpected
results with respect to the combination of the three flame retardants or their
amounts (Ans. 5).
We are not persuaded by Appellants' argument that the Examiner has
not provided any reason why one of ordinary skill in the art would have
selected the three flame retardants in the amounts recited in the claims. The
Examiner reasonably finds that all three flame retardants are taught or would
have been suggested by Brenner and Singh (Non-Final Act. 16-23). The
Examiner further finds, and Appellants do not specifically address, that
Brenner teaches that the amount of flame retardants can be widely varied but
generally the total amount of flame retardant should be between O.001 to 5
wt.% (Non-Final Act. 22-23). The Examiner finds that although the specific
amounts for the phosphate ester or halogenated oligocarbonate are not taught
by Brenner, one of ordinary skill in the art would have reasonably arrived at
a suitable amount based upon routine experimentation using Brenner's total
flame retardant amount range and Singh's flame retardant amount (i.e., 0.02
to 0.1 phr) as a guide (Non-Final Act. 23). Appellants do not specifically
address the Examiner's routine experimentation rationale for arriving at the
claimed amounts of each of the three flame retardants. The Examiner
provides a reason for using a mixture of the three flame retardants based
upon the teachings of Brenner and Singh (Non-Final Act. 18-19).
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Appellants' arguments fail to show reversible error with the Examiner's
stated reason for the combination.
We affirm the Examiner's§ 103(a) rejection over Brenner in view of
Singh and UL94.
REJECTIONS (3) AND (5)
The Examiner's findings and conclusions regarding Brenner, Singh,
Claesen and UL 94 are located on pages 28 to 36 of the Non-Final Action.
The Examiner relies on Brenner and Singh for the same findings as in
Rejection (1 ). The Examiner relies on Claesen to teach a combination of
tetrabromobisphenol-A with phosphate esters to prevent deterioration of
properties in polymer mixtures (Non-Final Act. 29-31 ). The Examiner finds
that Brenner teaches using tetrabromobisphenol-A, like Claesen, and
Brenner refers to Claesen in the disclosure (Non-Final Act. 30-31). The
Examiner concludes that it would have been obvious to combine Brenner's
tetrabromobisphenol-A with the phosphate flame retardants as taught by
Claesen in order to prevent deterioration of properties in polymer mixtures
(Non-Final Act. 31).
Appellants argue that there is no reason to combine Claesen with
Brenner and Singh because the flame retardant properties are no better than
those already achieved by Brenner and Singh (App. Br. 13). Appellants
contend that Brenner already achieves the desired flammability rating of VO
so there would have been no reason to use Claesen' s teachings with Brenner
and Singh (App. Br. 14). We are not persuaded by Appellants' argument of
reversible error in the Examiner's rejection. The Examiner relies on
Claesen's teaching of using a tetrabromobisphenol-A with phosphate flame
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retardants to prevent deterioration of properties in polymer mixtures (Non-
Final Act. 31 ). Appellants do not address this reason for the combination 7,
instead focusing on the flammability rating achieved.
Appellants argue that Claesen discloses using a styrene polymer
which is excluded by the consisting of transitional claim language (App. Br.
14). This argument is not persuasive because the argument improperly
requires a bodily incorporation of Claesen's teachings into the Brenner. The
Examiner's rejection based on using Claesen's teaching to combine the
phosphate and tetrabromobisphenol-A flame retardants, which are also
disclosed by Brenner, as a basis for combining the two flame retardants in
Brenner's composition (Non-Final Act. 31 ).
Appellants argue that there is no synergistic effect of using a
brominated polymer with a phosphate (App. Br. 14). Appellants contend
that based on the lack of synergy, there is no motivation to add any
sulphonate compound to the flame retardant mixture and polycarbonate
composition because the table on page 10 of Claesen shows that a VO rating
is achieved when a bromine-substituted flame retardant (i.e., Br.PC) is
omitted as shown by comparison of Examples II and III (App. Br. 14).
7 Appellants untimely contest the Examiner's reason for combining the
teachings of Brenner, Singh, and Claesen (Reply Br. 5). Although the
Examiner finds in the Answer that Appellants do not challenge the reason
for Brenner with the teachings of Singh and Claesen, the Examiner has not
expounded on the position taken in the Final Action or otherwise added a
new finding. Appellants' argument is not made in response to an argument
or new position by the Examiner in the Answer. There is no reason why this
argument could not have been presented earlier in prosecution. We will not
consider this untimely argument. 37 C.F .R. § 41.41 (b )(2).
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The Examiner finds that Appellants do not respond to the reasoning
and motivations provided by the Examiner in the rejections (Ans. 9). The
Examiner finds that Claesen at page 3 teaches using one or more flame
retardants, retardants including those taught by Brenner and Singh, with a
phosphate ester (Ans. 10). The Examiner finds that Claesen's page 10
disclosure does not undermine this broader teaching (Ans. 11 ). We agree.
Claesen teaches that bromine-substituted flame retardants may be
used to achieve a suitable VO flame retardancy, but that no synergism is
observed by using the bromine flame retardant (Claesen 10). In other words,
Claesen teaches to use bromine-substituted flame retardants for an
acceptable flame retardancy (i.e., a VO rating) but not to expect a synergistic
result as achieved in Example II. Claesen's teaching on page 10 does not
teach away from using a sulphonate salt with a bromine-substituted flame
retardant. In fact, Claesen does not include an example in the page 10
disclosure where a bromine-substituted flame retardant and a sulphonate salt
were used. In other words, the nature of Claesen' s teachings do not amount
to a teaching away from using a sulphonate salt and a bromine-substituted
flame retardant.
Regarding rejection (3), Appellants argue that Eckel requires an
acrylonitrile butadiene styrene (ABS) graft polymer as part of the
composition which is excluded by the claim language "consisting of' (App.
Br. 16). This argument is not persuasive because, as with Claesen, this
argument is based on the bodily incorporation of all of Eckel' s teachings
with Brenner. The Examiner relies on Eckel to teach the combination of
oligomeric phosphates that are effective for flame retardance (Non-Final
Act. 42--43). The Examiner finds that Eckel teaches phosphorus containing
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flame retardants according to formulas of both Brenner and Claesen (Non-
Final Act. 42). The Examiner concludes that one of ordinary skill in the art
would have selected bisphenol-A based poly(aryl-arylene phosphates)
suggested by both Brenner and Claesen because Eckel teaches that
bisphenol-A derived oligomeric phosphates of Brenner and Claesen's
formula are particularly advantageous because they have a particularly low
proneness to plate out during processing by injection molding, high
hydrolysis resistance, and a particularly high heat resistance may be
achieved with said flame retardants (Non-Final Act. 44). Appellants'
arguments do not convince us of reversible error in the Examiner's rejection.
Appellants argue that there is no teaching, suggestion, or motivation
to combine two additional flame retardants with Eckel's composition (App.
Br. 16). Appellants contend that Eckel' s composition already achieves a VO
rating and so there is no reason to combine the additional flame retardants
with Eckel's composition (App. Br. 16). We disagree.
The Examiner's rejection is based on modifying Brenner's
composition with Eckel's teachings, not vice versa (Non-Final Act. 41--49).
Accordingly, Appellants' argument about the effect of the combination on
Eckel' s composition are misdirected. We find that the Examiner provides a
reasonable basis for the findings and conclusions regarding Brenner, Singh,
Claesen, Eckel, and UL94.
On this record, we affirm the Examiner's rejections (1) to (5).
DECISION
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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