Ex Parte Siebecker et al

Patent Trial and Appeal Board

Feb 13, 2015

12871190 (P.T.A.B. Feb. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES D. SIEBECKER, WILLIAM R. FIELDING,
JOSHUA U. OTAIGBE
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Appeal 2013-005156
Application 12/871,190
Technology Center 1700
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Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Decision of the
Primary Examiner finally rejecting claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the Real Party in Interest is Chemtura
Corporation. Br. 2.

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STATEMENT OF THE CASE
The claimed subject matter relates to flame retardant additives and
thermoplastic polymer compositions containing such additives. Br. 12–14
(claims 1, 13). According to the Specification, blending a thermoplastic
polymer, such as a polyamide, with both a low glass transition temperature
(Tg) tin fluorophosphate glass and a phosphinate-containing flame retardant
additive produces a melt processable thermoplastic composition having low
shear viscosity and improved flame retardance. Spec. ¶ 10. Claim 1 is
representative of the subject matter on appeal and is set forth below (with
bold added for emphasis):
1. A flame retardant thermoplastic polymer composition,
comprising:
a major amount of a thermoplastic polymer wherein the
thermoplastic polymer is selected from the group consisting of
polystyrenes, polyolefins, polyesters and polyamides;
from about 5 wt% to about 25 wt% of a flame retardant
additive comprising a phosphinic acid salt, a zinc salt and a
melamine salt; and
from about 1 wt% to about 10 wt% of a tin
fluorophosphate glass which comprises from about 40 to 60
mole % SnF2, from about 15 to 25 mole % SnO and from about
25 to 35 mole % P2O5 and has a Tg of from about 100°C to
175°C.
Br. 12 (Claims Appendix).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Borade et al. US 2006/0167143 A1 July 27, 2006
Otaigbe et al. US 2007/0290405 A1 Dec. 20, 2007

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THE REJECTION
Claims 1–16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Borade in view of Otaigbe. Ans. 2.

ANALYSIS
Appellants argue claims 1–16 as a group, relying on limitations
common to independent claims 1 and 13 and presenting no argument for
separate patentability of the dependent claims. Br. 6–10. Therefore, all
appealed claims stand or fall together, and we confine our discussion to
claim 1, which is representative of the independent claims. 37 C.F.R.
§ 41.37(c)(iv).
The Examiner finds that Borade teaches a composition containing
polyamide and all other elements of claim 1, except that, while low melting
glass is disclosed, the particular type of glass described in claim 1 is not
disclosed. Ans. 2 (citing Borade claims 1, 15).2 The Examiner finds that
Otaigbe teaches a composition of polyamide and tin fluorophosphate glass.
Id. (citing Otaigbe claims 1–10). The Examiner concludes that it would
have been obvious to substitute the low melting glass of Otaigbe for the low
melting glass in the composition of Borade in order to take advantage of the
improved miscibility, better flame retardance, strength, creep resistance and

2 Although the rejection does not expressly list a melamine salt, this
component is also disclosed by Borade claims 1 and 15. Compare Ans. 2
with Borade claims 1, 15 (“A flame retardant thermoplastic composition
comprising . . . polyamide . . . a phosphinate . . . melamine polyphosphate,
zinc borate, low melting glass . . .”); see also Br. 6–7 (the Examiner finds
that Borade discloses melamine salt).
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dimensional stability and lower melt viscosity of the polymer/glass
composite, as taught by Otaigbe. Id. (citing Otaigbe Abstract, ¶¶ 3–8).
Appellants contend that the Examiner’s reason for combining the
references is inadequate and contrary to the teachings of the references and
that data in a declaration and the Specification show unexpected results. Br.
6–10. Upon consideration of the evidence presented in this Appeal and each
of Appellants contentions, we are not persuaded that Appellants identify
reversible error, and we find that a preponderance of evidence supports the
Examiner’s conclusion that the subject matter of Appellants’ claims is
unpatentable over the applied prior art. We sustain the rejection of claims
1–16 based on the Examiner’s findings of fact, conclusions of law, and
rebuttals to Appellants’ arguments, as expressed in the Answer. We add the
following for emphasis.
Appellants argue that one skilled in the art would not make the
substitution proposed by the Examiner because, according to Appellants, the
prior art teaches that glass having a Tg that is too low, e.g., less than 200°C,
will not provide the desired flame retardancy, and one skilled in the art
would not replace Borade’s flame retardant glass with one that is taught to
perform poorly. Br. 7–8 (citing Borade ¶ 73 [sic, ¶ 74] and Endou et al.,
US 2004/0167294 A1, Aug. 26, 2004 (“Endou”), ¶ 22). The Examiner,
however, finds that Borade refers to Endou as disclosing “non-limiting
examples of low melting glass,” Ans. 2 (quoting Borade ¶ 74), and that
Endou does not define what Tg is “too low.” Id. (quoting Endou ¶ 22).
After considering the contentions of Appellants and the Examiner and the
cited teachings of Borade and Endou, we are not persuaded that Appellants’
evidence of teaching away is sufficient to outweigh the evidence supporting
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the Examiner’s reasons for combining the teachings of the prior art. In
reaching this conclusion, we are guided by the following principles:
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001) (citation, quotes and ellipses omitted). That general
rule is tempered by the following considerations:
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.”).
Where the prior art contains “apparently conflicting” teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered “for its
power to suggest solutions to an artisan of ordinary skill. . . .
consider[ing] the degree to which one reference might
accurately discredit another.” In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991).
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see
also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“Although a reference
that teaches away is a significant factor to be considered in determining
unobviousness, the nature of the teaching is highly relevant, and must be
weighed in substance.”).
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The paragraph of Endou cited by Appellants teaches that the Tg of
low melting point glass that functions as a flame retardant is “preferably
higher than 200°C.” Endou ¶ 22. Endou further teaches that “[i]f the glass
transition temperature is too low . . . the flame retardancy . . . tends to be
poor.” Id. Based on these disclosures, we agree with the Examiner that
Endou does not define exactly what Tg is “too low” and that a Tg of 200°C
is not taught as an absolute lower limit for low melting glass that has useful
flame retardant properties. Moreover, Endou’s teachings must be viewed in
the context of the prior art as a whole, including Otaigbe, which teaches that
phosphate glass having a Tg as low as 125°C increases the flame resistance
of a nylon (polyamide) composite. Otaigbe Abstract (“The addition of a low
Tg phosphate glass . . . to a nylon matrix results in . . . a decrease in . . .
flammability . . .”); ¶¶ 31, 32 (“We have also observed in our laboratory
some preliminary evidence of the Pglass working to increase the flame
resistance of the hybrid,” where the pure Pglass component in the hybrid has
a Tg around 125°C).
Furthermore, the Examiner determines that one of ordinary skill in the
art would have been motivated by additional advantages (other than flame
retardance) that Otaigbe teaches would result from the addition of low Tg
glass to polyamide, including improved miscibility, strength, creep
resistance and dimensional stability and lower melt viscosity of the
polymer/glass composite. Ans. 2 (citing Otaigbe Abstract, ¶¶ 3–8). Even if
these additional advantages came at the expense of flame retardancy (which
we do not find is the case), that would not nullify the additional advantages
taught by Otaigbe as a basis to modify the disclosure of Borade with the
teachings of Otaigbe. Winner, 202 F.3d at 1340. In view of the apparently
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conflicting prior art teachings regarding the relationship between Tg and the
flame retardant properties of phosphate glass and further in view of
Otaigbe’s teachings regarding additional advantages that result from adding
a low Tg glass to polyamide, we are not persuaded that the Examiner erred
in concluding that the prior art would have provided one of ordinary skill in
the art with a motivation to combine the teachings of Borade and Otaigbe in
the manner claimed by Appellants.
Next, Appellants argue that the compositions of Borade are different
and more complex than the compositions of Otaigbe and that Otaigbe
teaches that the effects of low Tg glass are variable and, consequently, one
of ordinary skill in the art would not have assumed that the addition of
Otaigbe’s glass to the composition of Borade would achieve Otaigbe’s
objectives without negative impact on Borade’s polymer blend. Br. 8 (citing
Borade ¶¶ 29–30 and Otaigbe ¶¶ 5, 8). We agree with the Examiner,
however, that Appellants’ argument is highly speculative and bereft of
proof. Ans. 2. Appellants do not direct us to evidence sufficient to persuade
us that one of ordinary skill in the art would not have had a reasonable
expectation that one or more of the advantages disclosed by Otaigbe and
relied upon by the Examiner, Ans. 2 (citing Otaigbe Abstract, ¶¶ 3–8), could
be achieved by adding the low Tg glass of Otaigbe to the composition of
Borade. In this regard, we note that both Borade and Otaigbe disclose
adding low melting glass to a composition in which a major component is
polyamide, such as nylon-6 or nylon-6,6. Borade ¶¶ 6, 22, 28; Otaigbe ¶¶ 6,
27 (Table 1). In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success. . . . [A]ll
that is required is a reasonable expectation of success.”); see also Medichem,
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437 F.3d at 1165 (“certainty of success” is not required); In re Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot take the place
of evidence).
Lastly, Appellants argue that data in a declaration and the
Specification show that glasses with different Tg have different properties,
that the lower melting glass of Otaigbe provides better flame retardance in
polyamide formulations than the glass of Borade, and that the claimed
composition provides flame retardancy that is unexpected in light of the
cited prior art. Br. 9–10 (citing Declaration under Rule 132 by inventor
Fielding filed Dec. 20, 2011, hereinafter, “Fielding Decl.” and Spec. 12, 16
(Table 3) and ¶¶ 3–5). The Examiner, however, contends that Appellants’
data is not probative because it lacks comparison to the closest prior art, i.e.,
glass having a Tg of 200°C, the data pertains to a flame retardant system that
is different from both Appellants’ claims and Borade, and the range of Tg
that was tested is not commensurate with the scope of Appellants’ claims.
Ans. 2.
We agree with the Examiner’s criticisms and determine that
Appellants’ evidence falls short of establishing that the claimed composition
provides results that are unexpected as compared with the closest prior art.
In this respect, we note that a showing of unexpected results must be
reasonably commensurate in scope with the degree of protection sought by
the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In
re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). To be persuasive of non-
obviousness, the results must be shown to be unexpected compared with the
closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991); In re De Blauwe, 736 F.2d 699, 705, (Fed. Cir. 1984).
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As pointed out by the Examiner, Ans. 2, the data in the Fielding
Declaration does not test glass having a Tg of 200°C, which is the lower
limit of the range disclosed in Borade. Compare Fielding Decl. 3, Table 1
(flame retardancy data for samples containing tin fluorophosphate glass (P
Glass) with a Tg of about 125°C and a sample containing P Glass with a Tg
of 325°C) with Borade ¶ 93 (“The low-melting glass has a glass transition
temperature (Tg) of 200°C to 500°C.”). The data in the Specification suffers
from the same deficiency because the only P Glass tested has a Tg of about
125°C. Spec., ¶¶ 51–56 (Tables 1–3). Appellants assert that they are “under
no obligation to create prior art” by preparing samples containing glass that
is not exemplified in Borade. Br. 9–10. Appellants’ assertion is not,
however, consistent with applicable law, which places the burden of
showing unexpected results on the person who asserts them, In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972), and requires evaluation of a prior art
reference in its entirety, including both generic disclosures and examples, In
re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a
reference must be evaluated, . . . and a reference is not limited to the
disclosure of specific working examples.”) (Citations omitted).
Furthermore, as noted by the Examiner and conceded by Appellants,
the data in the Fielding Declaration was not obtained for the composition of
either Borade or the claimed invention. Ans. 2; Br. 9. For example, unlike
the claimed compositions, the samples that were tested do not contain zinc
salt or melamine salt as recited in Appellants’ claim 1, but instead contain a
brominated polystyrene flame retardant (Br-FR), which the Specification
teaches should be avoided. Compare Fielding Decl. 2–3, Table 1 (flame
retardancy data for samples containing Br-FR) with Br. 12 (claim 1) and
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Spec. ¶ 3 (describing drawbacks of halogenated flame retardants, such as
polymers of dibromostyrene); id. ¶ 5 (“It would be beneficial to have a flame
retardant additive system . . . which avoids the incorporation of halogenated
organic additive compounds . . .”).
Finally, as pointed out by the Examiner, the data in the Fielding
Declaration fails to test a range of Tg that is commensurate with the scope of
Appellants’ claims. Whereas Appellants claim a composition containing
glass having a Tg of from about 100°C to 175°C, Br. 12 (claim 1), the data
in the Fielding Declaration pertains to only a single point within that range,
namely compositions containing P Glass with a Tg of about 125°C, Fielding
Decl., 2–3 (Table 1). The data in the Specification suffers from the same
deficiency. Spec., ¶¶ 51–56 (Tables 1–3). In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected,
Harris needed to show results covering the scope of the claimed range.
Alternatively, Harris needed to narrow the claims.”); In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number
of) species gives unexpected results is inadequate proof, for ‘it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support.’”)
(emphasis added) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
On this record, Appellants do not adequately show that the data they
rely upon are reasonably commensurate in scope with the claims, or that
they provide results that are unexpected as compared with the closest prior
art. Therefore, we are not persuaded that Appellants’ arguments, the
Fielding Declaration, or the Specification examples are sufficient to rebut
prima facie obviousness.
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CONCLUSION OF LAW AND DECISION
The rejections 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)(1).
AFFIRMED

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