Ex Parte Stahl et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201512173992 (P.T.A.B. Feb. 5, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/173,992 07/16/2008 Gad Stahl 133649.05401 7843 21269 7590 02/09/2015 PEPPER HAMILTON LLP ONE MELLON CENTER, 50TH FLOOR 500 GRANT STREET PITTSBURGH, PA 15219 EXAMINER PAK, HANNAH J ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 02/09/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte GAD STAHL, MARC LEBEL, and DIETER FREITAG ________________ Appeal 2013-002994 Application 12/173,992 Technology Center 1700 ________________ Before CHARLES F. WARREN, TERRY J. OWENS, and WESLEY B. DERRICK, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–7 and 9–7. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a polymer composition and an article produced from it. Claim 1 is illustrative: 1. A polymer composition comprising: an engineering plastic; melamine or a derivative or salt thereof; and Appeal 2013-002994 Application 12/173,992 2 a linear or branched polyphosphonate or copolyphosphonate or combination thereof having a weight average molecular weight (Mw) of at least about 20,000. The References Joswig US 4,970,249 Nov. 13, 1990 Schulz-Schlitte US 5,216,113 June 1, 1993 Bienmuller US 2003/0149145 A1 Aug. 7, 2003 Freitag US 2007/0129511 A1 June 7, 2007 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1– 3, 5–7, 9 and 12–17 over Bienmuller in view of Freitag, claim 4 over Bienmuller in view of Freitag and Joswig and claims 10 and 11 over Bienmuller in view of Freitag and Schulz-Schlitte. OPINION We affirm the rejections. The Appellants argue the claims as a group (App. Br. 9–21). Although additional references are applied in the rejections of claims 4, 10 and 11, the Appellants do not provide a substantive argument as to the separate patentability of those claims (App. Br. 20–21). We therefore limit our discussion to one claim, i.e., claim 1. Claims 2–7 and 9–17 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2011). Bienmuller discloses a polymer composition comprising a polyester, melamine cyanurate and at least one phosphorus-containing flameproofing agent which may “be produced by transesterification reactions of phosphonic acid esters with bifunctional phenols (see DE-A 29 25 208)” (¶¶ 2–7, 129). Schmidt (US 4,322,520), which the Examiner relies upon as an English language equivalent of DE-A 29 25 208 (Ans. 9), discloses Appeal 2013-002994 Application 12/173,992 3 polyphosphonatocarbonates which have a number average molecular weight of at least 11,000, particularly preferably 20,000 to 80,000, and “are thermoplastics which are highly fire-repellent and very tough and can be shaped, without thermal damage, in processing units customary in industry, such as injection-moulding machines and extruders” (col.1, ll. 26–31; col. 2, ll. 50–55).1 Freitag discloses a poly(block-phosphonato-ester) which can be made using a polyphosphonate having a number-average molecular weight of about 2,000 to about 35,000 g/mol and, possibly due to the chemical linkage between the blocks, may exhibit superior impact strength, thermal stability and/or flame retardance compared to blends including polyphosphonate and polyester prepared by a conventional method such as melt mixing (which is the method used by Bienmuller (¶ 195)) (¶¶ 26, 30). Like Bienmuller’s polymer (¶ 197), Freitag’s polymer is useful in the electronics sector (¶ 29). The Appellants argue that Bienmuller is limited to phosphorus- containing flameproofing agents having a molecular weight of at most 7,000 and that Bienmuller relies upon Schmidt only for a disclosure of a method for making an oligomeric polyphosphonate having such a molecular weight (App. Br. 11–12; Reply Br. 2). Bienmuller, the Appellants argue, “makes no reference to using any polyphosphonates allegedly described by DE-A 29 25 208.” Id. Bienmuller discloses that the method for making organic phosphorus compounds having a molecular weight of 500–7,000 is disclosed in 1 The Appellants’ copolyphosphonates include Schmidt’s polyphosphonatocarbonate (Spec. ¶ 20). Appeal 2013-002994 Application 12/173,992 4 DE-A 20 36 173 (¶ 125) and that the polymeric phosphonate disclosed in DE-A 29 25 208 is one of the “[f]urther halogen-free-polymeric phosphorus compounds that may be contained in the molding compositions according to the invention” (¶ 129). Bienmuller, therefore, indicates that Bienmuller’s flameproofing agent is not limited to one having a molecular weight of at most 7,000 but, rather, can be Schmidt’s polyphosphonatocarbonate having a number average molecular weight of at least 11,000, particularly preferably 20,000 to 80,000 (col. 1, ll. 26–31). The Appellants argue that Freitag discloses a flame retardant polymer, not a flameproofing agent for another polymer (App. Br. 12;Reply Br. 2–3). Freitag’s disclosure that the flame retardant poly(block-phosphonato- ester) can be blended with another polymer which can be a polyester (¶ 13) would have led one of ordinary skill in the art, through no more than ordinary creativity, to use Freitag’s poly(block-phosphonato-ester) as the flameproofing agent for Bienmuller’s polyester. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellants argue that Bienmuller is limited to phosphorus- containing flameproofing agents having a molecular weight of at most 7,000 and that, therefore, one of ordinary skill in the art would not have known the effect of Freitag’s higher-molecular-weight poly(block-phosphonato-ester) on Bienmuller’s polyester (App. Br. 13-14). Bienmuller’s disclosure (¶ 129) that the flameproofing agent can be Schmidt’s polyphosphonatocarbonate having a number average molecular Appeal 2013-002994 Application 12/173,992 5 weight of at least 11,000, particularly preferably 20,000 to 80,000 (col. 1, ll. 26–31), would have provided one of ordinary skill in the art with a reasonable expectation of success in using, as Bienmuller’s flameproofing agent, Freitag’s poly(block-phosphonato-ester) having a number-average molecular weight as high as about 35,000 g/mol (¶ 30). See In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success …. For obviousness under § 103, all that is required is a reasonable expectation of success.”). The Appellants argue, based upon their interpretation of Bienmuller as being limited to phosphorus-containing flameproofing agents having a molecular weight of at most 7,000, that Martin (US 2002/0156160) and the Declaration under 37 C.F.R. § 1.132 of Jan-Pleun Lens indicate that one of ordinary skill in the art would have considered a flameproofing agent having a molecular weight that low to be required for achieving adequate flexibility and surface quality of Bienmuller’s product and that, therefore, such a person would not have used Freitag’s poly(block-phosphonato-ester) having a number-average molecular weight above 7,000 (¶ 30) as Bienmuller’s flameproofing agent (App. Br. 14-20). As pointed out above, Bienmuller is not limited to phosphorus- containing flameproofing agents having a molecular weight of at most 7,000 but, rather, indicates that Schmidt’s polyphosphonatocarbonates having a number average molecular weight of particularly preferably 20,000 to 80,000 (col. 1, ll. 26–31) and, accordingly, Freitag’s poly(block- phosphonato-ester) having a number-average molecular weight as high as about 35,000 g/mol (¶ 30) are suitable as Bienmuller’s flameproofing agent. Appeal 2013-002994 Application 12/173,992 6 Thus, we are not persuaded of reversible error in the rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1–3, 5–7, 9 and 12–17 over Bienmuller in view of Freitag, claim 4 over Bienmuller in view of Freitag and Joswig and claims 10 and 11 over Bienmuller in view of Freitag and Schulz-Schlitte are affirmed. It is ordered that 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). AFFIRMED tc Copy with citationCopy as parenthetical citation