Ex Parte Tadros et al

Board of Patent Appeals and Interferences

Apr 30, 2007

09682749 (B.P.A.I. Apr. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAFWAT E. TADROS
and PETER H. TH. VOLLENBERG
____________

Appeal 2006-3155
Application 09/682,749
Technology Center 1700
____________

Decided: April 30, 2007
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 5, 7, 9,
11-18 and 20-25, the only claims pending in this application. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

Appeal No. 2006-3155
Application 09/682,749

Appellants’ invention relates to a layered composition which includes
three defined layers in a defined spatial relationship, namely an upper layer,
an intermediate layer and a substrate layer. The upper layer consists
essentially of a cycloaliphatic polyester and certain specified types of UV
stabilizers. The intermediate layer consists essentially of a cycloaliphatic
polyester, and may also include Ti02, or a dye, pigment or special effects
additive. Br. 4. According to Appellants, they have discovered that the
intermediate layer has a significant affect on the retention of gloss when the
material is weathered. Br. 6.
The Examiner relies on the following prior art references to show
unpatentability:
Susi US 4,619,956 Oct. 28, 1986
MacGregor US 6,136,331 Oct. 24, 2000
The Examiner rejected claims 5, 7, 9, 11-18, and 20-25 under
35 U.S.C § 103(a) as unpatentable over McGregor in view of Susi.1
ISSUES
The Examiner contends that it would have been prima facie obvious
to apply more than one layer of the cycloaliphatic polyester composition to
MacGregor’s layered composition to amplify the weatherability and solvent
resistant properties. Appellants contend that the Examiner has failed to
show that the prior art teaches or suggests a multilayered composition
having upper and intermediate layers consisting essentially of a
cycloaliphatic polyester. The issue for us to decide is: Has the Examiner
made sufficient factual findings to establish a prima facie case of

1 A copy of appealed claims 5, 7, 9, 11-18 and 20-25 may be found in the
Claims Appendix of Appellants’ Brief.
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Application 09/682,749

obviousness, and, if so, does Appellants’ comparison testing provide
persuasive evidence of unexpected results?
FINDINGS OF FACT
1) MacGregor discloses a multilayer plastic article comprising a
thermoplastic substrate and at least one layer of a cycloaliphatic
polyester. Col. 1, ll. 54-58. MacGregor teaches that a layer of the same
cycloaliphatic polyester may be laminated or adhered to both sides of the
substrate. Col. 1, ll. 38-43.
2) MacGregor also discloses a multilayer article comprising a
substrate, an intermediate film of the same material as the substrate and a
top layer of a cycloaliphatic polyester, such as PCCD. Claim 23; col. 10,
ll. 44-48.
3) MacGregor’s substrate may be a polycarbonate, polyester or blend
thereof. Col. 1, ll. 31-37. The polyester used in the substrate may be a
cycloaliphatic polyester. Col. 8, ll. 48-50; Claim 8.
4) MacGregor discloses that a preferred cycloaliphatic polyester is
poly(1,4-cyclohexane-dimethanol-1,4-cyclohexanedicarboxylate)
(PCCD), but there is no explicit teaching that this preference is directed
to the intermediate layer. Col. 4, ll. 46-59.
5) According to MacGregor, suitable cycloaliphatic polyesters are
those characterized by optical transparency and improved weatherability
compared to the substrate alone. Col. 2, ll. 62-65.
6) MacGregor found that “[c]ycloaliphatic polyester resins . . . have
better weatherability than polycarbonate alone.” Col. 6, ll. 20-21.
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Application 09/682,749

7) MacGregor discloses the use of ultraviolet light absorbers,
including triazine (col. 6, l. 29), to improve the polycarbonate light
stability. Col. 6, ll. 21-23
8) MacGregor also discloses incorporating a hindered amine light
stabilizer (HALS) in a cycloaliphatic polyester layer on the
polycarbonate surface to increase weatherability of the structure. Col. 6,
ll. 34-36.
9) Light stabilizers may be incorporated in PCCD, for example, in an
amount of .05 to about 10 weight percent. MacGregor, col. 6, ll. 50-51.
10) Susi discloses a method of stabilizing polymer film coatings or
molded articles against light by incorporating a synergistic mixture of
tris-aryl-s-triazine UV absorber and HALS compound into a polymer
binder (Abstract) such as polyester. Col. 4, ll. 48-57.
ANALYSIS AND CONCLUSIONS
Appellants argue that the Examiner failed to make a prima facie
showing of obviousness because: (1) “MacGregor does not disclose an
upper layer that consists essentially of a cycloaliphatic polyester and the UV
stabilizers as recited in the claim” and (2) “there is no disclosure of an
intermediate layer within the scope of the invention.” Br. 4.
We disagree. The Examiner found that MacGregor’s multilayer
structure includes a substrate layer and an upper layer which may be a
cycloaliphatic polyester. Answer 3; FF 1. As pointed out by the Examiner,
a decorative intermediate layer may be located between the substrate and
surface layer (Answer 3) and may be made of same material as the substrate
(Answer 4). FF 2. MacGregor explicitly discloses that the substrate may be
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Appeal No. 2006-3155
Application 09/682,749

a cycloaliphatic polyester. FF 3. Therefore, the Examiner properly
concluded that the intermediate layer may be a cycloaliphatic polyester.
Appellants point out that MacGregor indicates a preference for using a
blend of cycloaliphatic polyester and polycarbonate in the upper layer. This
argument is not persuasive since a reference must be evaluated for all that it
fairly teaches and not only for what is indicated as preferred. See In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). In this
case, MacGregor clearly teaches an upper layer which may be a
cycloaliphatic polyester and/or a polycarbonate, a UV-stabilizer and
hindered amine light stabilizer as claimed. Answer 3, 6-7; FF 1, 7, 8.
Appellants assert that the Examiner has not explained the motivation
for selecting the various layers to achieve the claimed structure. In our view,
the Examiner’s rationale for selecting a cycloaliphatic polyester for both the
intermediate and upper layers is reasonable and properly based on
MacGregor’s explicit disclosure of using a cycloaliphatic polyester for the
individual layers and the Examiner’s determination that such structure would
improve weatherability and solvent resistance (Answer 4; FF 6). See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Appellants also argue that the Examiner’s proposed modification of
MacGregor to include a mixture of UV absorber and HALS compound as
taught by Susi is based on improper hindsight reasoning. Answer 5-6.
Contrary to Appellants, we find that the Examiner has properly identified
motivation, in the prior art, for combining the teachings of the references
(see Answer 5).
Appellants attempt to overcome the Examiner’s prima facie showing
of obviousness through evidence of unexpected results. According to
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Appeal No. 2006-3155
Application 09/682,749

Appellants, the examples in the Specification and supplemental test results
submitted by declaration demonstrate that the compositions of the invention
show surprising superiority with respect to surface gloss, and maintain a
shiny, un-dulled finish when exposed to weathering conditions compared to
compositions in which a PCCD/PC blend is used in the top and/or
intermediate layer. Br. 6
We are in agreement with the Examiner that Appellants’ evidence
fails to demonstrate unexpected results as to those claims which broadly
recite a cycloaliphatic polyester because, inter alia, testing is limited to
PCCD and, therefore, is not commensurate in scope with the claims.
Answer 8. However, we find Appellants’ evidence sufficient to establish
unexpected results with respect to dependent claims 24 and 25 which are
limited to PCCD. We note, in particular, that the Examiner has failed to
explain why Appellants’ evidence is not considered persuasive with respect
to these claims given Appellants’ third declaration under 37 C.F.R. § 1.132
stating that all testing was performed using structures having the same layer
thicknesses and using the same PCCD material. See Answer 9.
Accordingly, the rejection is affirmed as to claims 5, 7, 9, 11-18 and
20-22, and reversed as to claims 24 and 25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(vi)(effective Sept.
13, 2004).
AFFIRMED-IN-PART

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Appeal No. 2006-3155
Application 09/682,749

cam

Marina Larson & Associates, LLC
Attn: GE-VALOX
P. O. Box 4928
Dillion, CO 80435-4928
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