Ex Parte Wanzke et al

Patent Trial and Appeal Board

Jul 26, 2017

12920917 (P.T.A.B. Jul. 26, 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.
12/920,917 09/03/2010 Wolfgang Wanzke 133649.05611 9058
21269 7590 07/28/2017
PFPPFR HAMTT TON T T P
EXAMINER
500 GRANT STREET ZEMEL, IRINA SOPJIA
SUITE 5000
PITTSBURGH, PA 15219-2507 ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
docketingpgh @ pepperlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFGANG WANZKE, SEBASTIAN HOEROLD,
MARC-ANDRE LEBEL, and KARL DIETER FREITAG
Appeal 2015-008051
Application 12/920,917
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
November 4, 2014 decision finally rejecting claims 1—23 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real parties in interest as FRX Polymers, Inc. and
Clariant International, Ltd. (Appeal Br. 3).
Appeal 2015-008051
Application 12/920,917
CLAIMED SUBJECT MATTER
Appellants’ invention is a composition which is said to be a mixture of
flame retardants for thermoplastic polyesters based on a phosphinate salt,
phosphonate oligomers, polymers or copolymers and a melamine derivative
(Abstract). The compositions are said to exhibit an excellent combination of
processing characteristics, thermal and mechanical properties, and are flame
retardant (id.). Details of the claimed invention are set forth in representative
claim 1, which is reproduced below from the Claims Appendix of the Appeal
Brief:
1. A plastic molding composition comprising at least
one of each of the following constituents: 1) a thermoplastic
polyester, 2) a phosphinate salt, 3) melamine, a melamine
derivative, or melamine salt and 4) 1% to 25% by weight
phosphonate component comprised of an oligomeric
phosphonate, polyphosphonate or copolyphosphonate.
REJECTIONS
I. Claims 1—11 are provisionally rejected on the grounds of
nonstatutory obviousness-type double patenting over claims 1—8 of Application
12/730,057.
II. Claims 1—23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bauer2 in combination with any of one of Vinciguerra,3
Freitag,4 or Joswig.5
2 Bauer et al., US 2006/0084734 Al, published April 20, 2006.
3 Vinciguerra et al., US 6,861,499 B2, issued March 1, 2005.
4 Freitag, US 2007/0129511 Al, published June 7, 2007.
5 Joswig et al., US 4,970,249, issued November 13, 1990.
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Application 12/920,917
DISCUSSION
Rejection I. Appellants do not offer any arguments in connection
with Rejection I. Accordingly, we summarily affirm the provisional
obviousness-type double patenting rejection. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (holding that the Board need not consider the
merits of an uncontested ground of rejection).
Rejection II. The Examiner finds that Bauer discloses a plastic
molding composition comprising at least one of each of the following
constituents: 1) a thermoplastic polyester, 2) a phosphinate salt, and 3)
melamine, a melamine derivative, or melamine salt (Non-Final Act.6 4).
The Examiner further finds that while Bauer also discloses that its
compositions may contain additional flame retardant additives, it does not
disclose the instantly claimed phosphonate component (id.). The Examiner
finds that each of the secondary references — Vinciguerra, Freitag, and
Joswig — discloses the claimed phosphonates and their functionality as
effective flame retardants for polyester-based compositions (id. 4—5). The
Examiner concludes that it would have been obvious to use the
phosphonates from the secondary references in Bauer’s compositions with a
“reasonable expectation to achieve at least cumulative results” (id.).
Appellants argue that (1) the Examiner has not made out a prima facie
case of obviousness, and (2) the claimed composition exhibits unexpected
6 Non-Final Action mailed October 3, 2012. More recent Office Actions
state that the rejections stand “as per reasons of record” (Final Act. 3). The
October 3, 2012 Office Action is the most recent to set forth the details of
the rejection.
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Appeal 2015-008051
Application 12/920,917
results sufficient to overcome the prima facie case of obviousness (Appeal
Br. 6).
Argument (1). Appellants argue that the Examiner has failed to show
that using the phosphonates of the secondary references in Bauer’s
compositions would yield predictable results (Appeal Br. 13—19). In
particular, Appellants rely on Bauer’s disclosure that its phosphinate salts
were thought to be “insufficiently compatible with the polymers in which
they are to be used” (Appeal Br. 13, citing Bauer | 8). Because, according
to Appellants, the polyphosphonates described in the secondary references
are polymers and there is no evidence of record that they are compatible
with phosphinate salts, a person of skill in the art would have had no reason
to think that the polyphosphonates of the secondary references could
successfully be used with the phosphinate salts of Bauer (id.).
We have considered the arguments and evidence raised by Appellants
on this matter (Appeal Br. 13—19) and determine, essentially for the reasons
set forth by the Examiner (Ans. 7—12), that Appellants have not
demonstrated reversible error in the prima facie case of obviousness. We
note particularly that the Examiner finds, and Appellants do not dispute, that
Bauer discloses that the polyester and the phosphinates are compatible with
each other, and that Joswig discloses compositions comprising polyesters
and polyphosphonates having improved flame retardancy (Ans. 8—9).
Therefore, according to the Examiner, a person of skill in the art would have
reasonably expected that the polyphosphonates could be used with the
phosphinates, particularly as additives to a polyester matrix (id.).
Appellants have not demonstrated reversible error in this reasoning.
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Appeal 2015-008051
Application 12/920,917
Thus, we conclude that Appellants have not shown reversible error in
the prima facie case of obviousness.
Argument (2). The burden of showing unexpected results rests on
the person who asserts them by establishing that the difference between the
claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing
of unexpected results must be commensurate in scope with the claims. See
In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
In this instance, Appellants appear to rely on the data set forth in
Table 1 of the Specification (Spec. 148) in seeking to overcome the prima
facie case of obviousness. Appellants argue that because Bauer shows that
the use of phosphinate salts with a thermoplastic polyester results in a
decrease in processability (as measured by a reduction in solution viscosity
(SV)) as compared to the thermoplastic polyester alone, a “person of
ordinary skill in the art would not expect processability of compositions
including phosphinic salt to ever be equivalent to or better than the
processability of compositions containing [polyester] alone” (Appeal Br. 7).
Consequently, according to Appellants, because the data in Table 1
(Examples 5—8) shows that a combination of both the phosphinate salt
(DEPAL) and polyphosphonate FRX-100) improves the processability of the
compositions versus a composition with phosphinate salts alone (Example
2), they have shown that their invention is surprising effective in improving
the processability of the compositions as compared to the prior art (id.).
However, as explained by the Examiner, prior art compositions which
use a polyphosphonate in combination with a polyester, have greatly
improved processability as compared with the polyester alone (compare SV
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Application 12/920,917
of Example 1 with SV of Example 3). Accordingly, a person of skill in the
art would have understood that adding phosphinate salts to the polyester
would have resulted in a decrease in processability, while adding
polyphosphonate to a polyester would have resulted in an increase in
processability. Therefore, as explained by the Examiner (Ans. 4—5), it
would not have been surprising that a composition containing both a
phosphinate salt and a polyphosphonate would have a processability
between that of a composition containing only a phosphinate salt and a
composition containing only a polyphosphonate. This is exactly what the
data shows (compare SV of Examples 2 and 3 with those of Examples 5—8).
Therefore, we conclude that Appellants have not met their burden of
demonstrating that the results of the claimed invention would have been
surprising to a person of ordinary skill in the art. Thus, this cited data cannot
overcome the prima facie case of obviousness. Klosak, 455 F.2d at 1080.
Moreover, even if the Appellants had shown that the improvements in
processability were surprising (i.e., unexpected), the data is not
commensurate in scope with the claims at issue. Specifically, the data does
not show improved results over a sufficiently broad range of concentrations
for the various components. In particular, claim 1 does not recite a specific
amounts of the phosphinate salts or the melamine component, but the
examples relied on by Appellants (Examples 5—8), only have the
phosphinate salt present in an amount from 5—15 percent by weight, and
only a single example relied on by Appellants (Example 8) contains
melamine. Moreover, Claim 15 requires the presence of about 15% to
about 30% by weight of glass fibers, but all of the examples relied on
contain 30% glass fibers.
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Application 12/920,917
Finally, all of the examples relied on use of the same thermoplastic
polyester, phosphinate salt, melamine, and polyphosphonate (see, Spec. |48,
Table 1). However, the claims are not limited to those specific compounds,
but instead cover a much broader range of compositions (Spec. 7—8, 11—
18, and 21).
Accordingly, we determine that Appellants showing is not
commensurate in scope with the scope of the claims and thus is not
sufficient to overcome the prima facie case of obviousness. Peterson, 315
F.3d at 1330-31.
CONCLUSION
We AFFIRM the provisional rejection of claims 1—11 on the grounds of
nonstatutory obviousness-type double patenting over claims 1—8 of Application
12/730,057.
We AFFIRM the rejection of claims 1—23 under 35 U.S.C. § 103(a) as
being unpatentable over Bauer in combination with any of one of Vinciguerra,
Freitag, or Joswig.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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