Ex Parte van der Mee et al

Patent Trial and Appeal Board

May 25, 2018

13874700 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/874,700 05/01/2013 Mark Adrianus Johannes van der Mee
23413 7590 05/30/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
13PLAS0086-US-NP 6865
EXAMINER
RIETH, STEPHEN EDWARD
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ADRIANUS JOHANNES VAN DER MEE,
ROLAND SEBASTIAN ASSINK,
ROBERT DIRK VAN DE GRAMPEL,
and PAUL DEAN SYBERT
Appeal2017-003952
Application 13/874,700
Technology Center 1700
Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and
JANEE. INGLESE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
Appeal2017-003952
Application 13/874,700
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-17, 22-38, and 43--49. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
STATEMENT OF THE CASE
The subject matter on appeal relates to molded, formed, or extruded
interior train components, such as seats and claddings, that comprise a
thermoplastic composition having low smoke density and low heat release
properties. Spec. 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A railway component,
wherein the component is a molded or extruded seat
component, comprising a thermoplastic composition comprising,
based on the total weight of the composition:
69 to 90 wt.% of a first polymer comprising bisphenol A
carbonate units and monoaryl arylate units, or a second polymer
comprising bisphenol A carbonate units, monoaryl arylate units,
and siloxane units, or a combination comprising at least one of
the foregoing polymers;
10 to 30 wt. % of a polyetherimide;
1 In our Decision we refer to the Specification filed May 1, 2013 ("Spec."),
the Final Office Action appealed from dated September 30, 2014 ("Final
Act."), the Appeal Brief filed June 29, 2015 ("Appeal Br."), and the
Examiner's Answer dated August 18, 2017 ("Ans.").
2 Appellants are Applicants, SABIC Innovative Plastics IP B.V. According
to the brief, the real party in interest is SABIC Global Technologies B.V.
Appeal Br. 2.
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Application 13/874,700
optionally, up to 5 wt.% of an additive selected from a
processing aid, a heat stabilizer, an ultra violet light absorber, a
colorant, or a combination comprising at least one of the
foregoing; and
optionally, 2 to 12 wt.% of an organophosphorus
compound in an amount effective to provide O .1 to 1. 0 wt.% of
phosphorus, based on the total weight of the thermoplastic
polymer composition,
wherein
the bisphenol A carbonate units are of the formula
the monoaryl arylate units are of the formula
wherein each Rh is independently a halogen atom, a C1-10
hydrocarbyl and n is Oto 4; and
the siloxane units are of the formula
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Application 13/874,700
or a combination compnsmg at least one of the foregoing,
wherein E has an average value of 2 to 90;
wherein a sample of the thermoplastic composition has:
a smoke density after 4 minutes (Ds-4) of equal to or less
than 150 measured in accordance with ISO 5659-2 on a 3 mm
thick plaque at 50 kW/m2,
an integral of the smoke density as a function of time up
to 4 minutes (VOF4) of equal to or less than 300 measured in
accordance with ISO 5659-2 on a 3 mm thick plaque at 50 kW/m2
a maximum average heat release (MAHRE) of equal to or
less than 90 kW/m2 measured in accordance with ISO 5660-1 on
a 3 mm thick plaque at 50 kW/m2, and
a ductility in multiaxial impact of 80% to 100%, measured
at 23°C at an impact speed of 4.4 m/second in accordance with
ISO 6603 on 3 .2 mm thick discs.
Appeal Br. 19-20 (Claims App 'x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1-17, 22-38, and 43--49 stand rejected under 35
U.S.C. § 103 as unpatentable over Colborn3 in view of
Siripurapu. 4 Final Act. 2.
B. Claims 1-17, 22-38, and 43--49 stand rejected under 35
U.S.C. § 103 as unpatentable over Colborn in view of
Quinn. 5 Id. at 4.
3 Colborn et al., US 2007/0129492 Al, published June 7, 2007 ("Colborn").
4 Siripurapu et al., US 2009/0306258 Al, published December 10, 2009
("Siripurapu").
5 Clayton B. Quinn, US 4,430,484, issued February 7, 1984 ("Quinn").
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Application 13/874,700
C. Claims 1-17, 22-38, and 43--49 stand rejected on the
ground of nonstatutory double patenting as being
unpatentable over claims 1, 2, 4--24 and 26-49 of
copending Application No. 13/874,746 in view of
Siripurapu or Quinn. Id. at 6.
D. Claims 1-17, 22-38, and 43--49 stand rejected on the
ground of nonstatutory double patenting as being
unpatentable over claims 1, 3-20, 22-24, and 33-36 of
copending Application No. 13/915,710 in view of
Siripurapu or Quinn. Id. at 6-7.
Appellants seek our reversal of Rejections A-Band do not address
Rejections C-D. Appeal Br. 9. Because the basis for our reversal of
Rejection A (no reason to combine Colborn and Siripurapu) and Rejection B
(no prima facie case of obviousness) is common to all claims, we focus our
discussion below on claim 1.
OPINION
Rejection A - Obviousness (claims 1-17, 22-38, and 43--45)
The Examiner rejects claims 1-17, 22-38, and 43--45 as obvious over
Colborn in view of Siripurapu. Final Act. 3. The Examiner finds that
Colborn teaches a first polymer and a second polymer having siloxane units,
as claimed. Ans. 2-3. The Examiner also finds that, while optionally
claimed, Colborn additionally teaches additives such as heat stabilizers,
ultraviolet light absorbers, and colorants, as well as an organophosphorus
compound, in concentrations within or overlapping the claimed ranges. Id.
at 3. The Examiner acknowledges that Colborn does not include a
polyetherimide, but further finds that Siripurapu, also describing
polycarbonate compositions for articles within trains, includes
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Application 13/874,700
polyetherimide in a range that overlaps with the claimed range. Id. at 4.
The Examiner reasons that the person of skill in the art would have reason to
incorporate the polyetherimide of Siripurapu into the polycarbonate
composition of Colborn "because doing so would result in increased
superior smoke density and flame resistance as taught by Siripurapu." Id.
The Examiner further finds that because "the compositions of Colborn
would possess the same components in the same concentrations once the
polyetherimides of Siripurapu are incorporated" and "Colborn utilizes
molding and extrusion which are the same processes utilized by the
applicant," the additional claimed properties relating to smoke density,
average heat release, and ductility, would be expected to be present." Id. at
5.
Appellants present several arguments in support of claim 1. See
Appeal Br. 9-16. Appellants first contend that "[i]n view of the excellent
smoke and heat resistant properties achieved by the compositions disclosed
in Colborn, there is no motivation for one skilled in the art to further lower
the smoke density levels, particularly at the potential expense to other
properties." Id. at 10. Second, Appellants assert that the synergistic effects
between the homopolymer of Siripurapu, containing only carbonate units,
and the copolymer of Colborn, including carbonate, siloxane, and ester units,
would be unpredictable because of the structural differences between the
polymers. Appeal Br. 11. Lastly, Appellants argue that certain surprising
and unexpected results are achieved though the combination recited in
claims 16, 17, 37, and 38. Appeal Br. 13-16. We find Appellants' first
argument persuasive and therefore, we do not address Appellants' remaining
arguments.
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The Examiner's reason to combine Colborn and Siripurapu-i.e.,
because Siripurapu describes "superior smoke density and flame resistance
is observed when the polyetherimides are incorporated at a concentration of
2-15 wt% ofpolyetherimide" (Ans. 4 and 22}-fails to provide an adequate
reason to modify Colborn to include the polyetherimide of Siripurapu
because, as Appellants note (Appeal Br. 9), Colborn describes polycarbonate
compositions that "already have excellent smoke and heat release
properties." Id. For example, Colborn states that "[t]he polysiloxane
copolymer composition also desirably meets the FAR requirements for low
smoke density and levels of toxic combustion by-products" (Colborn ,r 28)
and good heat release performance (see id. ,r,r 7 and 103). Thus, while
Siripurapu teaches improved smoke density and flame resistance values, the
Examiner identifies no teaching in Siripurapu to suggest that including
polyetherimide would further reduce the smoke density and flame resistance
below that achieved by Colborn alone, or that a further reduction in smoke
density and flame resistance would be desirable. Therefore, there is no
apparent reason of record to add the polyetherimide of Siripurapu to the
polycarbonate composition of Colborn.
On this record, we cannot affirm the Examiner's rejection of claims
1-17, 22-38, and 43--49 over Colborn in view of Siripurapu.
Rejection B- Obviousness (claims 1-17, 22-38, and 43--45)
The Examiner rejects claims 1-17, 22-38, and 43--45 as obvious over
Colborn in view of Quinn. Final Act. 4. In addition to the findings above
relating to Colborn (supra p. 5), the Examiner finds that Quinn "teaches
polyestercarbonate compositions comprising polyetherimide ... at a
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polyestercarbonate:polyetherimide ratio of 1:99 to 99:1." Ans. 10-12. The
Examiner reasons that incorporating the polyetherimides of Quinn into the
compositions of Colborn would have been obvious to the person of ordinary
skill in the art "because doing so would result in improved heat distortion
temperatures, flexural strength, and tensile strength as taught by Quinn." Id.
at 12. The Examiner further finds that "the compositions of Colborn would
possess the same components in the same concentrations once the
polyetherimides of Quinn are incorporated" and that "Colborn utilizes
molding and extrusion which are the same processes utilized by the
applicant," therefore, the Examiner finds that the additional claimed
properties would be expected to be present. Id. at 12-13.
Appellants argue6 that "Quinn discloses ranges so broad that the
skilled artisan would have lacked sufficient guidance to arrive at the
instantly claimed composition." Appeal Br. 17. Appellants assert that the
range of polyestercarbonate to polyetherimide of 99: 1 to 1:99 "provides no
guidance whatsoever as to suitable amounts of the polyetherimide and the
first polymer, or a second polymer, or a combination" of the polymers and
that such a broad range cannot establish a prima facie case. Id. Appellants
further contend that the weight percentages recited in the claims "provide
particular functional properties and advantages neither recognized nor taught
by Colborn or Quinn. Appeal Br. 17. In particular, "Appellants have found
that compositions with higher polyetherimide contents have significantly
worse ductility levels and/ or impact energy than the compositions containing
6 Similar to Rejection A, Appellants argue unexpected results are achieved
by the combination recited in claims 16, 17, 37, and 38. Appeal Br. 17-18.
Because we reverse Rejection Bon different grounds, we do not reach
Appellants' secondary arguments relating to unexpected results.
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only polycarbonate copolymer. In addition, compositions with higher
polyetherimide contents have significantly higher Vicat values, which is
typically not beneficial for forming extruded articles." Id. Therefore,
Appellants reason that the broad range of 1-99% polyetherimide content of
Quinn does not suggest the claimed range of 10-30%. Id. at 18.
Appellants' argument persuades us of a reversible error in this case.
While Quinn does suggest a ratio of polycarbonate copolymer to
polyetherimide that would fall within the claimed range, the breadth of
Quinn's disclosure (i.e., a ratio of 99: 1 and 1:99) suggests that any and all
possible ratios are permissible. The fact that a claimed species may be
encompassed by a prior art genus, is not by itself, sufficient to establish a
prima facie case of obviousness. In re Baird, 16 F.3d 380, 382 (Fed. Cir.
1992). Here, the Examiner identifies no particular teaching in Quinn that
would lead the skilled artisan to select the claimed weight percentages of
polycarbonate copolymer and polyetherimide. In re Jones, 985 F.2d 347,
351 (Fed. Cir. 1992)("Conspicuously missing from the record is any
evidence other than the PTO' s speculation ... that one of ordinary skill in
the art ... would have been motivated to make the modifications of the prior
art salts necessary to arrive at the claimed 2-(2'aminoethoxy)ethanol sale.").
Therefore, without more, we find the Examiner has failed to establish
a prima facie case of obviousness and we do not sustain the Examiner's
rejection of claims 1-17, 22-38, and 43--49 over Colborn in view of Quinn.
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Rejection C-D- Nonstatutory Double Patenting
(claims 1-17, 22-38, and 43--45)
The Examiner provisionally rejects claims 1-17, 22-38, and 43--45 on
the ground of nonstatutory double patenting as being unpatentable over
claims 1, 2, 4--24, and 26-49 of copending Application No. 13/874,746, now
US 9,352,755 (issued May 31, 2016), in view of either Siripurapu or Quinn.
Final Act. 5. The Examiner further provisionally rejects claims 1-17, 22-38,
and 43--45 on the ground of nonstatutory double patenting as being
unpatentable over claims 1, 3-20, 22-24, and 33-36 of copending
Application No. 13/915,710, now US 9,650,496 (issued May 16, 2017), in
view of either Siripurapu or Quinn. Id. at 6.
Appellants do not argue the merits of the Examiner's nonstatutory
double patenting rejections. See generally Appeal Br. However, we observe
that U.S. Application Nos. 13/874,746 and 13/915,710 have since issued as
US Patents 9,352,755 and 9,650,496. Because the scope of the claims in the
issued patents may be different than the claims in the applications used in
the provisional obviousness-type double patenting rejections, we decline to
reach the merits of these rejections. We leave it to the Examiner to
determine the propriety of the rejections upon return of jurisdiction to the
Examiner. Ex parte Jerg, 2012 WL 1375142, *3 (BPAI 2012) (informative)
("Panels have the flexibility to reach or not reach provisional obviousness-
type double-patenting rejections.").
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CONCLUSION
Appellants identified a reversible error in the Examiner's rejection of
claims 1-17, 22-38, and 43--49 under 35 U.S.C § 103 as unpatentable over
Colborn in view of Siripurapu.
Appellants identified a reversible error in the Examiner's rejection of
claims 1-17, 22-38, and 43--49 under 35 U.S.C § 103 as unpatentable over
Colborn in view of Quinn.
We decline to reach the provisional nonstatutory double patenting
rejections.
DECISION
For the above reasons, the Examiner's rejections of claims 1-17, 22-
38, and 43--49 under 35 U.S.C. § 103 are reversed.
REVERSED
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