Ex Parte Siripurapu et al

Patent Trial and Appeal Board

Apr 22, 2016

12468495 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/468,495 05/19/2009 Srinivas Siripurapu
23413 7590 04/26/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
160562-US-CIP[2] 1059
EXAMINER
SELLERS, ROBERT E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIV AS SIRIPURAPU and THOMAS EBELING 1
Appeal2014-005363
Application 12/468,495
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3-14 and 17-25 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is SABIC
INNOVATIVE PLASTICS IP B.V. Appeal Br. 2.
Appeal2014-005363
Application 12/468,495
BACKGROUND
Appellants' invention relates to "polycarbonate compositions that
include impact modifier compositions." Spec. i-f 2. Independent claim 1 is
representative:
1. A composition comprising:
from 60 to 85 wt.% of a polycarbonate;
from 8 to 20 wt.% of a polycarbonate-polysiloxane
copolymer;
from 3 to 10 wt.% phosphorus-containing flame
retardant, the phosphorus-containing flame retardant being
selected from the group consisting of resorcinol tetraphenyl
diphosphate, the bis(diphenyl) phosphate ofhydroquinone
and the bis(diphenyl) phosphate ofbisphenol-A;
from 0.5 to 20 wt.% of an impact modifier; and
from 1 to 10 wt.% of a polyetherimide, wherein the
polyetherimide is a polyetherimide siloxane copolymer;
wherein a 3.2 millimeter thick, 7.6 centimeter square
sample of the composition produces a smoke density (Ds) of
less than 100 after a 1.5-minute bum, measured according to
ASTM E 662-03,
wherein a 3.2-mm thick molded NII bar comprising the
composition has a notched Izod impact strength of about 250
to about 950 Jim determined in accordance with ASTM
D256 at 23°C; and
wherein the polycarbonate-polysiloxane copolymer
provides about 2 .4 to about 4 wt.% siloxane, by weight of
the combined weights of the polycarbonate, polycarbonate-
polysiloxane copolymer, impact modifier, polyetherimide
and flame retardant.
Appeal Br. Claims Appendix 20. Claims 17 and 23 are also independent.
Id. at 22, 23.
The Examiner maintains the following ground of rejection: claims 1,
3-14, and 17-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over U.S. Patent Pub. No. 2006/0030647 Al [hereinafter Ebeling]
2
Appeal2014-005363
Application 12/468,495
(published Feb. 9, 2006) and U.S. Patent Pub. No. 2005/0182165 Al
[hereinafter Ma] (published Aug. 18, 2005), in view of U.S. Patent No.
4,816,527 [hereinafter Rock] (issued Mar. 28, 1989) and U.S. Patent No.
5,051,483 [hereinafter Rock et al.] (issued Sept. 24, 1991).2 Final Act. 3-4;
Answer2-5.
All the claims are argued as a group. See Appeal Br. 9-18.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), all the claims stand or fall together, and we limit our discussion to
claim 1.
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions raised in the Appeal Brief, we determine that a
preponderance of the evidence supports the Examiner's conclusion that the
subject matter of Appellants' claims is unpatentable over the applied prior
art. We sustain the Examiner's§ 103 rejections for essentially the reasons
set out by the Examiner in the Answer. We add the following for emphasis.
To summarize, the Examiner's rejection is based on "the obviousness
of employing the siloxane-polyetherimide copolymer of Rock and Rock et
al. as the thermoplastic resins of Ebeling et al. and Ma et al. in order to retain
the impact strength after heat ageing, lower the flammability and improve
the resistance to crack propagation." Answer 5.
Appellants do not argue that the Examiner failed to make a prima
facie case of obviousness. See generally Appeal Br. However, in rebuttal to
2 In the Answer, the Examiner withdrew a rejection of claims 23-25 under
35 U.S.C. § 112, first paragraph. See Answer 1.
3
Appeal2014-005363
Application I2/468,495
that prima facie case, Appellants contend that "the claimed invention
demonstrates unexpected results which one of ordinary skill in the art would
not reasonably expect to achieve based on the combined teachings of the
cited prior art of record when taken as a whole." Appeal Br. I 3. As
evidence, Appellants refer to experimental results in the Specification, which
are summarized in Tables IA-I, IA-2, and IB on pages 53-55. See id. at
I3-I8; Reply Br. 5-IO.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. See In re Geisler,
I I6 F.3d I465, I469-70 (Fed. Cir.I997); see also In re Heyna, 360 F.2d
222, 228 (CCPA I966) ("It was incumbent upon appellants to submit clear
and convincing evidence to support their allegation of unexpected
property."); In re Klosak, 455 F.2d I077, I080 (CCPA I972) ("[I]t is not
enough to show that results are obtained which differ from those obtained in
the prior art: that difference must be shown to be an unexpected
difference.").
We have carefully considered the data and arguments presented by
Appellants to show unexpected results. However, Appellants have not
shown that any of the 2I examples set forth in tables IA-I, IA-2, and IB fall
within the scope of claim I. The tables show that Samples I-20 contain
PEI-I, which is a polyetherimide. See Spec. 46, 53-55. However, as
Appellants acknowledge, PEI- I is not the polyetherimide siloxane
copolymer (PEI-3) required by claim I. See Reply Br. 6.
The only example in the Specification containing polyetherimide
siloxane copolymer (PEI-3) is Sample 21. Spec. 55. However, the
Examiner finds that Sample 2 I does not meet the limitation of claim I
requiring that "the polycarbonate-polysiloxane copolymer provides about
4
Appeal2014-005363
Application 12/468,495
2.4 to about 4 wt.% siloxane, by weight of the combined weights of the
polycarbonate, polycarbonate-polysiloxane copolymer, impact modifier,
polyetherimide and flame retardant," Appeal Br. 20. See Answer 7. The
Specification states that polycarbonate-polysiloxane copolymer (designated
as "PC-Si") contains "about 20 wt% siloxane." Spec. 46. Thus, the
Examiner calculates the amount of siloxane provided by PC-Si to be "about
20 wt.% of siloxane per 8.75 wt.% of polycarbonate-polysiloxane copolymer
PC-Si," or "about 1.75 wt% of siloxane," which is outside the range of 2.4--4
wt.% required by claim 1. Answer 7 (citing Spec. 46, 55).
Appellants argue that the Examiner miscalculated the amount of
siloxane for purposes of the limitation in claim 1, and argue that this amount
should include the siloxane contribution of polyetherimide-siloxane
copolymer (PEI-3), which "has about 34 wt.% siloxane content." Reply Br.
9. Thus, with the 6.25 wt.% of PEI-3 in Sample 21, Appellants calculate the
siloxane content to be "3 .63 wt%, which is within the claimed range of from
1 ' I"\ Al ' f\ / ' 1 ' Al ' f\ / .,., T 1 aoom LA wt./o w aoom Lf. wt./o. 1a.
We give claim terms their "broadest reasonable interpretation
consistent with the specification." In re Translogic Tech. Inc., 504 F.3d
1249, 1256 (Fed. Cir. 2007). The plain meaning and broadest reasonable
interpretation of the phrase "the polycarbonate-polysiloxane copolymer
provides about 2.4 to about 4 wt.% siloxane," Appeal Br. 20 (emphasis
added), is that the limitation includes only siloxane provided by the
polycarbonate-polysiloxane copolymer. Therefore, we find no reversible
error in the Examiner's finding that Sample 21 falls outside the scope of
claim 1, and that the evidence of unexpected results presented by Appellants
is not commensurate with the entire scope of the claims. See In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were
5
Appeal2014-005363
Application 12/468,495
unexpected, Harris needed to show results covering the scope of the claimed
range.").
In addition, when proving unexpected results as evidence of
nonobviousness, "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). Appellants argue that the results are unexpected, in part,
because of the presence of more than 8 wt.% ofpolycarbonate-polysiloxane
copolymer (PC-Si). See Appeal Br. 13-14. As comparative examples,
Appellants point to Samples Cl and C2 of Tables lA-1 and lA-2 of the
Specification. See Reply Br. 9. Samples C 1 and C2 do not contain any PC-
Si. See Spec. 53. However, the Examiner correctly finds that PC-Si, in
amount ranges that overlap the range required by claim 1, is a feature of both
Ebeling and Ma, the closest prior art references. See Answer 2-3.
Therefore, we find no reversible error in the Examiner's determination that
"Comparative Samples Cl and C2 are not representative of the closest prior
art exemplified [in] compos1t10ns of Ebeling et al. and ivia et al. since the
references show the presence of polycarbonate/polysiloxane not included in
the comparative examples." Answer 8.
Furthermore, we find no reversible error in the Examiner's finding
that Appellants' evidence of unexpected results is insufficient because
"[n]one of the evidence holds constant the types and amounts of
polycarbonate, polycarbonate-polysiloxane copolymer; resorcinol
tetraphenyl diphosphate, hydroquinone bis( diphenyl) phosphate or bisphenol
A bis( diphenyl)phosphate, and impact modifier while comparing claimed
compositions containing from 1 to 10 wt.% of polyetherimide siloxane
copolymer vs. prior art formulations without the polyetherimide siloxane
copolymer commensurate in scope with the aforementioned proportion
6
Appeal2014-005363
Application 12/468,495
range." Appellants have a burden to show that the claimed composition
causes the asserted improvement over the prior art. However, any
understanding of cause and effect in the examples presented by Appellants is
"lost here in the welter of unfixed variables." In re Dunn, 349 F.2d 433, 439
(CCPA 1965).
For the above reasons, and those expressed by the Examiner, we
determine that the evidence of obviousness, on balance, outweighs the
evidence of nonobviousness relied upon by Appellants, and we affirm the
Examiner's decision to reject claims 1, 3-14 and 17-25.
DECISION
The Examiner's decision 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)(l )(iv).
AFFIRiviED
7