Ex Parte van de Wetering et al

Patent Trial and Appeal Board

Aug 7, 2018

14313112 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/313,112 06/24/2014 Karin van de Wetering
140646 7590 08/09/2018
Cantor Colburn - SABIC General
20 Church Street
22nd Floor
Hartford, CT 06103-3207
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.
13PLAS0084-US-NP 5998
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIN VAN DE WETERING and
ROBERT VAN DE GRAMPEL
Appeal 2017-009611
Application 14/313, 112 1
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3, 4, 6-9, 11-18, 20, 21, and 23-25. We have
jurisdiction. 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant is the Applicant, SABIC Global Technologies B.V., which
according to the Appeal Brief, is also the real party in interest. Appeal Br. 3.
Appeal 2017-009611
Application 14/313, 112
STATEMENT OF THE CASE2
Appellant describes the invention as relating to "dark polycarbonate
compositions that have a combination of low temperature impact resistance,
thin wall flame retardance (FR), good electrical tracking resistance, and
reduced halogen content." Spec. ,r 2. The compositions can be useful for
insulating. Id. "Dark" refers to the dark color of the compositions. Id. ,r 6.
The Specification asserts that, "[ s ]urprisingly, as long as the Ti02:CB ratio
[titanium dioxide to carbon black ratio] is around 4 and EXL and Rimar are
present, all properties (flame retardance, CTI tracking resistance, Color) are
within a desirable range." Id. ,r 132.
Claim 1, reproduced below with emphasis added to certain key
recitations, is illustrative of the claimed subject matter:
1. A flame-retardant polycarbonate blend, comprising: from
about 30 wt% to about 80 wt% of a blend of a high molecular weight
polycarbonate polymer having a Mw above 25,000 and a low molecular
weight polycarbonate polymer having a Mw below 25,000 which when
blended together have an average molecular weight from about 25,000
to about 30,000:
a polycarbonate-polysiloxane copolymer in an amount such that
the blend contains from about 2 wt% to about 5 wt% of siloxane,
wherein the polycarbonatepolysiloxane copolymer is different from the
high molecular weight polycarbonate polymer and the low molecular
weight polycarbonate polymer;
from about 0.01 wt% to about 0.05 wt% of a non-brominated and
non-chlorinated flame retardant;
from about 1 wt% to about 10 wt% of titanium dioxide (Ti02);
and
2 In this Decision, we refer to the Final Office Action dated September 7,
2016 ("Final Act."), the Appeal Brief filed February 7, 2017 ("Appeal Br."),
the Examiner's Answer dated April 27, 2017 ("Ans."), and the Reply Brief
filed June 26, 2017 ("Reply Br.").
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Appeal 2017-009611
Application 14/313, 112
from about 0.2 wt% to about 2 wt% of carbon black;
wherein the ratio of Ti02 to carbon black is from about 4:1
to about 6:1; and wherein the blend has an L-value of 20 or less;
meets CTI PLC 2 standards when measured according to AS TM
D3638; has VO performance at 0.8 mm thickness; and has 100%
ductility at -30°C.
Appeal Br. 13 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Li et al.
("Li '7 51 ")
DeRudder et al.
("De Rudder")
Li et al.
("Li '615")
Aoki
Bos et al.
("Bos")
US 2008/0230751 Al Sept. 25, 2008
US 2009/0036593 Al Feb. 5, 2009
US 2011/0028615 Al Feb. 3, 2011
US 2013/0303672 Al Nov. 14, 2013
WO 2007/098919 Al Sept. 7, 2007
Lexan* 143R Resin, IDES-The Plastics Web, (2011) ("Lexan I43R").
Lexan® HFJ 140, GE Plastics (2000) ("Lexan HFI 140").
UL Component-Plastics, File Number: El 21562, SABIC INNOVATIVE
PLASTICS US LLC (2008) ("Lexan 123").
Lexan® 940A, GE Plastics (2003) ("Lexan 940A").
Lexan * EXL resin, SABIC Innovative Plastics, (2008) ("Lexan EXL").
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Appeal 2017-009611
Application 14/313, 112
DUROTUFFâ„¢ POLYCARBONATE SHEET,
http://www.durotuff.com/pc-tube-and-other-product html, Dec. 2, 2011 ( as
archived by https://web.archive.org/web/20111202023153/
http://www.durotuff.com/pc-tube-and-other-product.html) ("Durotuff ').
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3, 4, 6-9, 11, 12, 14--18, 20, 24, and 25 under
35 U.S.C. § 103 as unpatentable over DeRudder in view of Li '751, Bos, Li
'615, Lexan I43R, Lexan HFI 140, Lexan 123, Lexan 940A, Lexan EXL
Resin, and Durotuff. Final Act. 2.
Rejection 2. Claim 13 under 35 U.S.C. § 103 as unpatentable over
DeRudder in view of Li '751, Bos, Li '615, Lexan I43R, Lexan HFI 140,
Lexan 123, Lexan 940A, Lexan EXL Resin, and Durotuff and further in
view of Aoki3. Id. at 6.
Rejection 3. Claims 21 and 23 under 35 U.S.C. § 103 as unpatentable
over DeRudder in view of Li '751, Bos, Li '615, Lexan I43R, Lexan
HFI 140, Lexan 123, Lexan 940A, Lexan EXL Resin, and Durotuff. Id.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
3 The Examiner uses US Patent Application No. 2013/0303672 Al as the
English equivalent to Aoki, WO 2012/063652.
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Application 14/313, 112
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
We need only address independent claims 1 and 21 to resolve the
issues on appeal. Each of these claims recites, in part, a flame-retardant
polycarbonate blend having titanium dioxide and carbon black within a
recited weight percent range, a ratio of titanium dioxide to carbon black of
about 4:1 to about 6:1, and an L-value of20 or less. Appeal Br. 13, 15
(Claim App.). L-value is the lightness value L * defined by the CIELAB
color space. Spec. ,r 44.
The Examiner finds that DeRudder teaches using overlapping
amounts of titanium dioxide and carbon black but finds that DeRudder fails
to teach the claimed L-value. Final Act. 2. The Examiner finds that Li '751
and Bos teach that the ratio of titanium dioxide to carbon black is a result
effective variable that a person of skill in the art would have understood
could be adjusted to reach a desired L-value. Id. at 3. The Examiner
determines that "[i]t would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to optimize the
amount and ratio of carbon black and titanium dioxide [as] taught by Li et al.
( '7 51) and Bos et al. for a desired L-value in De Rudder et al." Id.
Appellant argues that the cited references do "not teach or suggest that
[ the recited] L-value of 20 or less can be obtained with a titanium dioxide to
carbon black ratio of about 4:1 to about 6:1, as presently claim[ed]." Appeal
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Application 14/313, 112
Br. 8. In particular, Appellant notes that Li '751 desires a very high L-value
and, importantly, Appellant explains that "Bos uses [titanium dioxide to
carbon black] ratios on both sides of the present claims, but none of them
obtain the claimed L-value of 20 or less." Id.; see also Reply Br. 3. The
preponderance of the evidence supports Appellant's position in this regard.
Bos provides one example where a 30: 1 titanium dioxide to carbon black
ratio results in an L-value of 45 and another example where a 2.7:1 ratio
obtains an L-value of 31. Appeal Br. 8; Bos 7:4--26; 10: 1-16.
In the Answer, the Examiner maintains that Bos's broader teachings
of possible amounts of titanium dioxide and carbon black must be
considered (Ans. 4) and maintains that Bos teaches amounts of titanium
dioxide and carbon black that fall within the recited range of claims 1 and 21
(id. at 6). On the present record, however, the Examiner has not adequately
explained why it would have been obvious for a person of ordinary skill in
the art to reach a flame-retardant polycarbonate blend that has both the
recited titanium dioxide to carbon black ratio and the recited L-value.
Rather, the evidence in Bos, as identified by Appellant, indicates that an L-
value of 20 or less is not always present within the recited range of ratios.
It appears that other variables also impact L-value (see, e.g., Spec. ,r 132
(indicating that presence of EXL and Rimar may be important to color)), and
the Examiner has not explained why it would have been obvious to adjust
other variables in a manner that would necessarily reach the recited L-value.
The Examiner's use of additional references does not cure the error
discussed above. See, e.g., Final Act. 4 ( citing, e.g., Lexan data sheets to
show it would have been obvious to reach a desired PLC standard); 6 ( citing
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Application 14/313, 112
Aoki for teaching silicon based coating). We therefore do not sustain the
Examiner's rejections.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1, 3, 4, 6-9, 11-18, 20, 21, and 23-25.
REVERSED
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