Ex Parte Thompson et al

Patent Trial and Appeal Board

Nov 13, 2017

13804678 (P.T.A.B. Nov. 13, 2017)

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.
13/804,678 03/14/2013 Jennifer Leigh Thompson AD7983USNP 1061
23906 7590 11/15/2017
E I DU PONT DE NEMOURS AND COMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER LEIGH THOMPSON,
ROBERT J. PALMER, TOSHIKAZU KOBAYASHI, and
STEVEN CHARLES WERKHEISER1
Appeal 2016-006740
Application 13/804,678
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
BRIAN D. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1,3,4, 6, 7, and 11.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
1 The real party in interest is E. I. du Pont de Nemours and Company.
2 In explaining our Decision, we cite to the Specification dated March 14,
2013 (Spec.), Final Office Action dated March 18, 2015 (Final), the Appeal
Brief dated August 17, 2015 (Br.), and the Examiner’s Answer dated April
14, 2016 (Ans.).
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Application 13/804,678
1. The rejection of claims 1, 3, 4, 6, and 11 as obvious over Palmer3 in
view of Wang4;
2. The rejection of claim 7 as obvious over Palmer in view of Wang and
further in view of Qin5;
3. The rejection of claims 1,3,4, 6, 7, and 11 as obvious over Palmer in
view of Qin; and
4. The rejection of claims 1,3,4, 6, 7, and 11 as obvious over Palmer in
view of Hagiwara6.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a thermoplastic polyamide composition.
See, e.g., claim 1. The thermoplastic polyamide composition is useful for
forming molded and extruded thermoplastic polyamide articles having
improved aging properties. Spec. 1.
According to the Specification, high temperature polyamide-based
compositions are particularly well-suited for automotive and
electrical/electronic applications subjected to high temperatures. Spec. 1.
High temperatures for prolonged times causes heat aging, i.e., the decrease
of mechanical properties by thermo-oxidation. Id. It was known in the art
to add polyhydric alcohols, such as pentaerythritol (PE), dipentaerythritol
(DPE), and tripenaerythritol (TPE), to significantly improve heat aging
3 US 2010/0029819 Al, published Feb. 4, 2010.
4 US 6,072,001, issued June 6, 2000.
5 US 2010/0120959 Al, published May 13, 2010.
6 US 2011/0014833 Al, published Jan. 20, 2011.
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characteristics. Spec. 1 (citing Palmer), 24; Palmer || 2, 93, 102.7
However, as articles molded from the polyamide compositions age in high
humidity environments, their surfaces tend to undesirably whiten. Spec. 1.
Appellants add an anti-whitening agent to decrease the surface whitening.
Spec. 2. The Specification defines anti-whitening agents as follows:
Herein anti-whitening agents are materials, that when present in
the thermoplastic compositions in the presence of lubricants
disclosed herein, significantly impede or prevent the whitening
of molded or extruded parts upon ageing. Herein ageing is
performed at 85 °C and 85 % relative humidity for periods of
time, typically 1 day and 7 days.
Spec. 13. Appellants measure whitening with a spectrophotometer and
report the result as an L value, which according to the Specification is a
common measure of whiteness on the CIELAB colorspace. Spec. 16. The
change in color from darker to lighter over the 1 and 7 day time periods is
reported as a AL value. Id.
Appellants claim a thermoplastic polyamide composition containing
an anti-whitening agent, which may be a polyethylene glycol, added in an
amount of 0.5 to 5 weight percent. Id. The resulting composition must have
a AL that is 25 percent less than that of the same composition absent the
anti-whitening agent. Claim 1 is illustrative:
1. A thermoplastic polyamide composition comprising
a) a polyamide selected from the group consisting of poly(e-
caprolactam), poly(hexamethylene
hexanediamide/hexamethylene terephthalamide),
poly(hexamethylene terephthalamide/hexamethylene
7 The Palmer reference is assigned to the real party in interest, E. I. Du Pont
Nemours and Company, and Palmer is listed as an inventor in both the
reference and the current application on appeal.
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hexanediamide), poly(hexamethylene hexanediamide), and
mixtures of these;
b) 1.0 to 5 weight percent of one or more polyhydric alcohols
selected from the group consisting of pentaerythritol,
dipentaerythritol, tripentaerythritol, and mixtures of these;
c) 0.5 to 5 weight percent of one or more anti-whitening agents
selected from the group consisting ofpoly(ethylene glycol),
polyethylene glycol) diesters, styrene-isoprene-styrene
block copolymers; and mixtures of these;
d) 0.02 to 1 weight percent of a lubricant selected from the
group consisting of: fatty acid esters, fatty acid amides, fatty
acid metal salts, and mixtures of these;
e) 10 to 60 weight percent of one or more reinforcement agents
selected from the group consisting of glass fiber and
noncircular glass fiber; and
f) 0 to 50 weight percent of a polymeric toughener comprising
a reactive functional group and/or a metal salt of a
carboxylic acid; and
g) a copper heat stabilizer;
wherein 5 in x 3 in X 2 mm test plaques prepared from
said thermoplastic polyamide composition, when exposed at a
test temperature at 85 °C and relative humidity of 85 %, for a
test period of 7 days in an atmosphere of air, had a A L value,
versus an untreated control of identical composition,
determined at 110 ° reflection with a multi-angle
spectrophotometer, of at least 25 percent less than that of the
same composition absent the anti-whitening agent', and
with the proviso that the thermoplastic composition
comprises less than 15 weight percent magnesium hydroxide
and less than 0.20 weight percent zinc compounds, said zinc
compounds selected from the group consisting of zinc borate
and zinc oxide; and
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with the further proviso that at least 2 weight percent of
styrene-isoprene-styrene block copolymers are present when no
other anti-whitening agents selected from the group in c) are
present; and
wherein all weight percentages are based on the total
weight of the polyamide composition.
Claims Appendix, Appeal Br. 27 (formatting and emphases added).
OPINION
Rejections 1 and 2
The Examiner rejects claims 1, 3, 4, 6, and 11 as obvious over Palmer
in view of Wang and adds Qin to reject claim 7. Final 2—3, 6. The
Examiner finds column 2, lines 19—68 of Wang teaches adding about 3 to
about 15 wt%, or 1—10 wt%, of polyethylene glycol to polyamide
compositions as an antistatic agent. Final 2. However, as pointed out by
Appellants, the formula in column 2 of Wang contains non-ethylene glycol
repeating units. Wang col. 2,11. 44—57 (repeating units m).
The question is whether the polymer disclosed in column 2 of Wang
would have been understood by those of ordinary skill in the art to be a
polyethylene glycol as that term is used in the Specification. A
preponderance of the evidence8 indicates that the polymer of Wang would
not be so understood.
According to Hawley’s Chemical Dictionary, polyethylene glycol is
defined as “[a]ny of several condensation polymers of ethylene glycol with
8 The Examiner refused entry of Appellants’ Exhibits A—E (Ans. 3), thus, we
do not consider those Exhibits.
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the general formula HOCH2(CH2OCH2)nCH2OH or H(OCH2CH2)nOH”.
Hawley's Condensed Chemical Dictionary 1102 (16th Ed. 2016).
The use of “polyethylene glycol” in the Specification is consistent
with the meaning defined in Hawley’s Chemical Dictionary. The
Specification states the term polyethylene glycol) includes “those materials
often referred to as polyethylene oxides,” states that PEG 6000J, a
poly(ethylene glycol) made by Lion Corporation, Japan is useful, and lists
polyethylene glycol) diester, a modified poly(ethylene glycol) separately
rather than as encompassed by the genus of polyethylene glycols. Spec. 13;
see also Claim 1 (separately listing poly(ethylene glycol) and poly(ethylene
glycol) diesters). The polyethylene glycol used in the examples is PEG
6000J, PEG from Polysciences Inc., or PEG 20,000. Spec. 22—23; Tables
11-13.
The evidence supports Appellants’ argument that the genus of
polyethylene glycols encompassed by component (c) of claim 1 does not
encompass the copolymer recited in Wang’s column 2. The genus is limited
to condensation polymers of ethylene glycol with the general formula
HOCH2(CH2OCH2)nCH2OH or H(OCH2CH2)nOH. Those ordinary skill in
the art would have understood Wang’s “polyethylene glycol polymer”
recited in column 2 to be a copolymer of ethylene glycol and the m repeating
unit. Wang uses the more descriptive term “copolymer” in column 3. Wang
col. 3,11. 40-41. The fact that Wang uses the word “polymer” in column 2
instead of copolymer does not transform the polymer into polyethylene
glycol.
Because the rejections relying upon Wang are predicated on the
Examiner’s erroneous finding that Wang’s copolymer recited in column 2 is
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polyethylene glycol, the rejections relying upon Wang are in error. Thus, we
do not sustain Rejections 1 and 2.
Rejection 3
The rejection of claims 1,3,4, 6, 7, and 11 as obvious over Palmer in
view of Qin stands on a different footing. The Examiner finds, and
Appellants do not dispute, that although Palmer is silent with regard to
including polyethylene glycol in the polyamide composition of that
reference, Palmer teaches including all the other components in the required
concentrations of the claimed thermoplastic polyamide composition.
Compare Br. 10—19, with Final 4. Further, the Examiner finds, and
Appellants do not dispute, that Qin teaches adding a concentration of 1 to 8
parts by weight polyethylene glycol to polyamide as part of a heat stabilizer
package. Compare Br. 10-19, with Final 4. The Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made to add 1 to 8 parts by weight of polyethylene glycol
as taught by Qin et al. to the composition of Palmer et al. to increase the heat
stability of the composition.” Final 4.
Appellants attack the Examiner’s reason for combining the references,
the Examiner’s findings regarding the AL property, and rely upon a showing
of unexpected results. Br. 1—23. Considering Appellants’ arguments in light
of the Examiner’s findings of fact and conclusions of law, we articulate the
arising issues as follows:
1. Have Appellants identified a reversible error in the Examiner’s
finding of a suggestion within the prior art for using polyethylene
glycol in the composition of Palmer within a heat stabilizer
package?
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2. Have Appellants identified a legal error in the Examiner’s
inherency analysis regarding the AL value?
3. Have Appellants identified a reversible error in the Examiner’s
determination that Appellants’ showing of unexpected results is
inadequate to support a conclusion of non-obviousness?
As Appellants do not argue any claim apart from the others, we select
claim 1 as representative for deciding the issues. For the reasons set forth
below, we determine that Appellants have not identified an error in the
Examiner’s findings of fact, application of the law, or ultimate conclusion of
obviousness.
Issue 1
With regard to the suggestion to combine, Appellants contend that:
(1) neither Palmer nor Qin suggest using polyethylene glycol as an anti­
whitening agent, (2) the references do not provide adequate guidance for the
use of the specific combination for improving heat stability, and (3) the
Examiner’s combination is based on impressible hindsight. Br. 10—19.
Appellants have not identified an error. The most relevant facts are as
follows.
Palmer teaches a polyamide composition for use in molded and
extruded thermoplastic articles having improved long-term high temperature
aging characteristics. Palmer || 2, 12—16. The composition includes
polyhydric alcohols, reinforcement agents, and optionally, a polymeric
toughener. Palmer || 12—16.
Palmer uses the polyhydric alcohols to improve the heat stability of
polyamide compositions. Palmer || 102, 154. Palmer provides a long list of
useful polyhydric alcohols that includes those of claim 1, component (b),
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i.e., pentaerythritol, dipentaerythritol, tripentaerythritol, and mixtures of
these. Palmer 191. Pentaerythritol, dipentaerythritol, and tripentaerythritol
are among those preferred, with dipentaerythritol and/or dipentaerythritol
being more preferred, and dipentaerythritol being most preferred. Palmer
193.
Palmer discloses using polyhydric alcohols in the range of 1—4 weight
percent of the total weight of the polyamide composition. Palmer 194.
Palmer’s range is squarely within the 1.0—5 wt% range recited for the
polyhydric alcohol of component (b) of claim 1.
Palmer does not list polyethylene glycol as a polyhydric alcohol
useful for providing heat stability, but Qin provides evidence that it was
known in the art that polyethylene glycol, along with other polyhydric
alcohols including pentaerythritol, dipentaerythritol, tripentaerythritol, and
mixtures of these, provides heat stability in polyamide compositions. Qin H
15, 40. Qin discloses these polyhydric alcohols as conventionally used in
the art. Qin 140.
Qin suggests using 1—8 parts by weight polyhydric alcohol and, most
preferably, 3—6 parts by weight. Qin H 16, 40. The concentrations
suggested by Qin largely overlap or lie within the 1.0—5 and 0.5—5 wt%
ranges of the polyhydric components (b) and (c) of claim 1.
Qin teaches using the polyhydric alcohol together with a transition
metal ion-modified clay, such as a copper ion-modified clay, as a heat
stabilizer. Qin H 8, 14. The transition metal ion-modified clay is an
alternative to other known heat stabilizers such as copper iodide, which is
taught by Palmer as a copper stabilizer. Qin 14; Palmer H 4, 99, 126.
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Palmer discloses adding other additives, such as other heat stabilizers
like copper stabilizers, and lubricants to the polyamide composition. Palmer
1198-99.
A preponderance of the evidence supports the Examiner’s finding of a
suggestion within the prior art for using polyethylene glycol in combination
with pentaerythritol, dipentaerythritol, tripentaerythritol, and mixtures of
these in a heat stabilizer package for polyamide compositions. All these
polyhydric alcohols are specifically enumerated as useful heat stabilizers.
Prima facie obviousness can be established where the claimed species is
specifically named, even if the claimed species is disclosed among a
multitude of effective combinations. Merck & Co. Inc. v. Biocraft Labs.
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Issue 2
Appellants contend that the Examiner’s finding of inherency is legally
erroneous. Br. 19—20. This argument is directed to the Examiner’s finding
that the obvious composition resulting from adding polyethylene glycol to
the composition of Palmer would possess the AL value of claim 1. Br. 19-
20; Final 4—5.
The Examiner’s finding that the AL is inherently present in the
obvious composition is predicated on the determination that polyethylene
glycol has an anti-whitening property, i.e., that a chemical compound and its
properties are inseparable and polyethylene glycol would have the anti­
whitening property whether or not one of ordinary skill in the art knew it
possessed that property. Final 4. This determination is supported by
Appellants’ Specification, which describes polyethylene glycol as an anti­
whiting agent that counteracts whitening caused by polyhydric alcohols such
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as dipentaerythritiol (DPE) in the composition. Spec. 1, 24. Based on this
fact, it is reasonable to conclude that adding polyethylene glycol in the
concentrations required by the claims inherently results in the AL property
recited in claim 1. Because this property is inseparable from the anti­
whitening agent, it adds nothing of patentable consequence to the claim and
does not confer patentability even though the property was unknown given
there was another reason for adding the component having the property in an
amount within or overlapping the concentration of the claims. See Alcon
Research, Ltd. v. ApotexInc., 687 F.3d 1362, 1369 (Fed. Cir. 2012); In re
Huai-Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011); and In reKubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009).
We agree with Appellants that inherency and obviousness are
different legal questions. Br. 19—20. We also agree that “something that
may be inherent is not necessarily known, and obviousness cannot be
predicated on what is unknown.” Br. 20. For this reason, great care must be
taken to separate the obviousness analysis from any determination of
inherency. Here, the Examiner performed an obviousness analysis and
correctly based it on what was known to those of ordinary skill in the art:
namely, that it was known in the art to use polyethylene glycol in amounts
overlapping the range of the claim as a heat stabilizer in polyamide
compositions. This established the obviousness of the composition.
Although the Examiner did not find that the anti-whitening property was
known, the fact that those of ordinary skill in the art would have found it
obvious to add polyethylene glycol to heat stabilize the composition also
establishes that the anti-whitening property would also occur, whether the
artisan knew it or not. This is because the anti-whitening property is an
inherent property of polyethylene glycol whether the artisan knew it or not.
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Appellants have not persuaded us that the Examiner legally erred in
the finding of inherency.
Issue 3
Appellants also rely upon a showing of unexpected results as evidence
of non-obviousness. Br. 20-23. The burden of showing unexpected results
rests on Appellants. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To
reach the ultimate conclusion of obviousness, we set aside the initial
conclusion of prima facie obviousness and reevaluate all the evidence anew
under the requirements of 35 U.S.C. § 103(a). In re Johnson, 747 F.2d
1456, 1460 (Fed. Cir. 1984).
Appellants have not persuaded us that the Examiner reversibly erred
in determining that the totality of the evidence supports a conclusion of
obviousness.
Appellants rely upon Specification examples C13 vs. El 1, C19 vs.
El5, C24 vs. E17, and C30 vs. E27 as showing an improvement in AL value
of at least 25 percent. Br. 21; see Spec. 27, 29, 30, 33. Although each of
these comparisons show an improvement in AL value of at least 25 percent,
only E27 includes polyethylene glycol, which is the component of the
closest prior art. This one example at 1 weight percent concentration does
not provide evidence that the entire scope of concentrations of polyethylene
glycol of claim 1 (0.5 to 5 weight percent) provides the improvement,
particularly given the mismatch in breath between the other components of
claim 1 as compared to the E27 example. Moreover, the comparisons do not
cover the full scope of the component (b) concentrations of 1 to 5 weight
percent, but are limited to 1.5 and 3 weight percent.
Moreover, although Appellants state in their arguments that the
improvement is unexpected, arguments in the brief cannot take the place of
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evidence. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). It is not
enough to show that results are obtained that differ from those obtained in
the prior art: that difference must be shown to be an unexpected difference.
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007); In re
DAncicco, 439 F.2d 1244 (CCPA 1971).
A totality of the evidence supports the Examiner’s conclusion of
obviousness. Appellants have not identified a reversible error in the
Examiner’s rejection. We sustain the rejection of claims 1,3,4, 6, 7, and 11
as obvious over Palmer in view of Qin.
Rejection 4
To reject claims 1, 3, 4, 6, 7, and 11 as obvious over Palmer in view of
Hagiwara, the Examiner relies upon Palmer in the same capacity as in the
other rejections. Final 6—7. The Examiner relies upon Hagiwara for the
teaching of polyethylene glycol as a known lubricant for use in polyamide
compositions. Final 7.
Appellants contend that one of ordinary skill in the art looking for
lubricants for high heat stable polyamides, such as those Appellants use in
molded or extruded articles, would not look to Hagiwara because Hagiwara
discloses lubricants for use in low melting point copolymerized polyether
polyamides to be coated onto fabrics or fibers. Br. 25.
Palmer is directed to improving heat aging in molded and extruded
thermoplastic polyamide articles used in, for instance, high performance
under-the-hood automotive parts. Palmer || 2—3. Palmer suggests adding
lubricants to the composition and does not particularly limit the composition
of the lubricant. Palmer 198.
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Hagiwara is directed to a polyether polyamide copolymer for coating
or impregnating a woven or knitted airbag fabric. Hagiwara H 1, 9.
Hagiwara discloses that the polyether polyamide copolymer may be
compounded with a wide variety of additives including lubricants.
Hagiwara 151. Hagiwara exemplifies a large number of lubricants
including polyethylene glycol of 200 to even more than 10,000 molecular
weight. Hagiwara 158.
Although Hagiwara is directed to polyether polyamide copolymer
compositions for coating or impregnating airbag fabric, Hagiwara provides
evidence that the exemplified lubricants were known in the art generally as
lubricants. Given the teaching in Palmer of adding lubricants without any
specific guidance, and the indication in Hagiwara that polyethylene glycol of
200 to even more than 10,000 molecular weight was among the genus of
compounds known to have lubricant properties, a preponderance of the
evidence supports the Examiner’s rejection. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398,416 (2007).
We sustain the rejection of claims 1, 3, 4, 6, 7, and 11 as obvious over
Palmer in view of Hagiwara.
CONCLUSION
We do not sustain the Examiner’s rejection of claims 1,3,4, 6, and 11
as obvious over Palmer in view of Wang.
We do not sustain the Examiner’s rejection of claim 7 as obvious over
Palmer, Wang, and Qin.
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We sustain the Examiner’s rejection of claims 1,3,4, 6, 7, and 11 as
obvious over Palmer in view of Qin.
We sustain the Examiner’s rejection of claims 1,3,4, 6, 7, and 11 as
obvious over Palmer in view of Hagiwara.
DECISION
Because all of the claims remain under rejection, the Examiner’s
decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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