Ex Parte Sumi et al

Board of Patent Appeals and Interferences

May 24, 2010

10728334 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROYUKI SUMI and TOSHIKAZU KOBAYASHI
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Appeal 2010-000525
Application 10/728,334
Technology Center 1700
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Decided: May 24, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-16. We have
jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:

Appeal 2010-000525
Application 10/728,334

1. A flame resistant, laser weldable polyester resin composition,
comprising:

(A) 10 to 90 weight percent thermoplastic polyester;

(B) 1 to 35 weight percent phosphorus containing flame retardant;

(C) 1 to 25 weight percent phenolic polymer; and

(D) 1 to 25 weight percent thermoplastic acrylic polymer;

the above stated percentages being based on the total weight of the
components A-D.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Takahashi 4,742,109 May 03, 1988
Harashina WO 01/48086 July 05, 2001

Appellants’ claimed invention is directed to a flame resistant resin
composition comprising a thermoplastic polyester, a phosphorus containing
flame retardant, a phenolic polymer and a thermoplastic acrylic polymer.
The composition is laser weldable.
Appealed claims 1-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Harashina in view of Takahashi
Appellants do not present separate arguments for any particular claim
on appeal. Accordingly, all the appealed claims stand or fall together with
claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner’s
reasoned analysis and application of the prior art, as well the Examiner’s
cogent and thorough disposition of the arguments raised by Appellants.
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Appeal 2010-000525
Application 10/728,334

Accordingly, we will adopt the Examiner’s reasoning as our own in
sustaining the rejection of record, and we add the following for emphasis
only.
There is no dispute that Harashina, like Appellants, discloses a flame
retardant resin composition comprising a thermoplastic polyester, a
phosphorous containing flame retardant and a phenolic polymer in the
claimed amounts. The resin compositions of Harashina do not contain the
claimed thermoplastic acrylic polymer. However, Appellants have not
contested the Examiner’s finding that Takahashi discloses a flame retardant
composition comprising a thermoplastic polyester and a thermoplastic
acrylic polymer for the purpose of overcoming a decrease in the impact
resistance of the composition due to the presence of the flame retardant.
Accordingly, based on the collective teachings of Harashina and Takahashi,
we find no error in the Examiner’s legal conclusion that
it would have been obvious for one of ordinary skill in the art
at the time the invention was made to include at least 0.1 to
20 % by wt. of polyacrylate resin in the polyester resin
compositions disclosed by Harashina et al. and thereby arrive
at the presently cited claims.

(Ans. 5, first para.). Appellants have not presented any reason why one of
ordinary skill in the art would have been dissuaded from adding the
thermoplastic acrylic polymer of Takahashi to the flame retardant
composition of Harashina in order to maintain the impact resistance of the
Harashina composition. Nor have Appellants presented any objective
evidence which demonstrates that flame retardant compositions within the
scope of the appealed claims produce unexpected results.
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Appeal 2010-000525
Application 10/728,334

Appellants maintain that “the compositions of the present invention
possess a unique combination of properties in that they are simultaneously
flame retardant, laser weldable, and have good impact resistance” (Br. 9, last
para.). Appellants contend that no hint is given in the disclosures of
Harashina and Takahashi that the combination of the claimed components
“would have this highly desirable and difficult to attain combination of
properties” (Br. 10, second full para.). However, as pointed out by the
Examiner, it is not necessary for a conclusion of obviousness that the prior
art appreciate all the advantages associated with a claimed composition. The
obviousness of the claimed composition is predicated upon the rationale that
one of ordinary skill in the art would have found it obvious to include the
thermoplastic acrylic polymer in the composition of Harashina to maintain
its impact resistance.
Appellants cite Example 3 and Comparative Examples 3 and 4 of the
present Specification to show that “the use of traditional halogenated flame
retardant systems leads to compositions that are not laser weldable” (Br. 10,
first full para.). However, the relevancy of this comparative data is not
apparent inasmuch as both of the applied references disclose polyester resin
compositions comprising the claimed phosphorus containing flame
retardants. Appellants have not presented objective evidence which
establishes that compositions within the scope of the appealed claims
produce unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

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Appeal 2010-000525
Application 10/728,334

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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