Ex Parte Weber et al

Patent Trial and Appeal Board

Sep 25, 2013

11917552 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/917,552 12/14/2007 Martin Weber 33064-00020 (PF56802) 7633
23416 7590 09/25/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MARTIN WEBER,1
Klaus Muhlbach, Peter Ittemann, Stefan Grutke, and
Nicolas Inchaurrondo
________________

Appeal 2012-008626
Application 11/917,552
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JAMES C. HOUSEL, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Martin Weber, Klaus Muhlbach, Peter Ittemann, Stefan Grutke, and
Nicolas Inchaurrondo (“BASF”) timely appeal under 35 U.S.C. § 134(a)

1 The real party in interest is listed as BASF SE. (Appeal Brief,
filed 14 October 2011 (“Br.”), 2.)
Appeal 2012-008626
Application 11/917,552

2
from the final rejection2 of claims 12, 15, 16, 18, and 20-30.3 We have
jurisdiction under 35 U.S.C. § 6. We affirm.
OPINION
A. Introduction4
The subject matter on appeal relates to molding compositions said to
provide high heat resistance, good flowability, and high impact resistance.
(Spec. 2, ll. 29-34.)
Claim 12 is representative and reads:
A molding composition comprising:
a composition (I) present in an amount of 10 to 100% by
weight, based on the molding composition, wherein the
composition (I) comprises:
as component (A) 40 to 95% by weight, based on the
composition (I), of a copolymer comprising:
α-methylstyrene in an amount of 55 to 90% by weight,
acrylonitrile in an amount of at least 10% by weight, and
one or more other monomers in an amount of 0 to 5% by weight,
wherein the percentages by weight of the α-methylstyrene,
the acrylonitrile and the one or more other monomers are
based on the weight of component (A) and total 100%;

2 Office action mailed 14 February 2011.
3 Claims 13, 14, 17, 19 were canceled in an amendment filed after the final
rejection. (Br. 2.)
4 Application 11/917,552, Reinforced Thermoplastic Molding Compounds,
filed 14 December 2007, as the national stage of an international application
filed 13 June 2006, claiming the benefit of an application filed in Germany
on 14 June 2005. The specification is cited as “Spec.”
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Application 11/917,552

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as component (B) at least 2.5% by weight, based on the
composition (I), of a polymer comprising:
a vinylaromatic monomer in an amount of 60 to 90% by weight,
acrylonitrile in an amount of 8.01 to 39.8% by weight, and
maleic anhydride in an amount of 0.5 to 1.5% by weight,
wherein the percentages by weight of the vinylaromatic
monomer, the acrylonitrile and the maleic anhydride are
based on the weight of component (B) and total 100%; and
as component (C) at least 2.5% by weight, based on the
composition (I), of glass fibres,
wherein components A, B and C total 100% by weight of the
composition (I).
(Claims App., Br. 12; some indentation and emphasis added.)
The Examiner maintains the following grounds of rejection:5
A. Claims 12, 15, [16],6 18, and 20-30 stand rejected under
35 U.S.C. § 102(b) in view of Weber.7
B. Claims 12, 15, [16], 18, and 20-30 stand rejected under
35 U.S.C. § 103(a) in view of Weber.

5 Examiner’s Answer mailed 14 February 2012 (“Ans.”).
6 Claim 16 is not listed in the formal heading of the rejection, nor is it
discussed by the Examiner, but we presume this is a typographical oversight
only, given BASF’s discussion of this claim (e.g., Br. 7).
7 Martin Weber et al., Thermoplastic molding compositions,
WO2004/055107 A1 (2004). Martin Weber, the first named inventor in this
appeal, appears to be the first named inventor on this reference. We
presume BASF AG, listed as the applicant, is thoroughly familiar with the
teachings of this reference.
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Application 11/917,552

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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Anticipation, § 102(b)
Anticipation requires that a prior art reference disclose all elements of
the claim within the four corners of the document, arranged as in the claim.
E.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). More particularly,
a prior art range that overlaps, but is not wholly included within, a range
recited in a claim generally does not anticipate that range. Atofina v. Great
Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006).
As BASF argues, Weber discloses a molding composition in which
component d3), disclosed to be preferably maleic anhydride (Weber 17,
ll. 3-4), comprises “from 0.2 to 4% by weight, particularly preferably
from 0.3 to 3.5% by weight, in particular from 0.3 to 3% by weight, based
on the total weight of components d1) to d3), which give 100% by weight in
total” of component D (id. at ll. 6-8). All of these ranges are broader than
the range recited for maleic anhydride in component (B) of the
composition (I), of 0.5 to 1.5% by weight recited in claim 12. The Examiner
has not relied on any other disclosure as evidence of an anticipatory
description of this component by Weber.
We therefore reverse the rejection for anticipation.
Appeal 2012-008626
Application 11/917,552

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Obviousness, § 103(a)
BASF urges that the Examiner failed to establish a prima facie case of
obviousness because “there is nothing on the record or in the reference to
substantiate the position that one of ordinary skill in the art would arrive at
the claimed invention by ‘utilizing the preferred compounds of Weber.’”
(Br. 9, ll. 14-16.) More specifically, BASF argues that compound (B),
which corresponds to compound D of Weber, “is a specifically less preferred
embodiment of Weber, and component (C)[8] is an optional component of
Weber.” (Br. 9, ll. 16-17.) This argument is without merit because all
disclosures in a reference, including non-preferred embodiments, must be
evaluated for what they fairly teach one of ordinary skill in the art. In re
Inland Steel Co., 265 F.3d. 1354, 1361 (Fed. Cir. 2001).
Weber discloses a broad class of molding compositions similar to
those presently claimed, including, as component A, a preferred
α-methylstyrene-acrylonitrile copolymer having a composition closely
encompassing the required 55% to 90% by weight α-methylstyrene and at
least 10% by weight acrylonitrile copolymer required by claim 12.
(Weber 3, ll. 19-22 and ll. 28-29.) Similarly, Weber terpolymer D,
component d1) [a vinyl aromatic monomer] is present at 60 to 84.7% by
weight, preferably from 61.5 to 89.7% by weight, in particular
from 68 to 84.7% by weight (id. at 17, ll. 10-13), all entirely within the
required 60% to 90% by weight in component (B). Moreover, Weber
component d2), for which “[a]crylonitrile alone is particularly preferably

8 Component (C) is the glass fibres recited in claim 12
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used” (id. at 16, l. 36), is present at 5 to 36% by weight, preferably
from 10 to 35% by weight, in particular from 15-29% by weight (id. at 17,
ll. 13-15). The general range substantially overlaps, and the preferred ranges
are entirely within the range of 8.01 to 39.8% by weight required by
claim 12. Weber component F (fibrous fillers, particularly glass fibers), may
be present from 3 to 55% by weight in a preferred embodiment. (Id. at 19,
ll. 25-27.)
BASF urges that nothing in Weber “would have suggested the use of
α-methylstyrene as opposed to styrene would produce the improved
mechanical traits exhibited in the claimed invention.” (Br. 10, ll. 3-4.)
A difficulty with this argument for patentability based on unexpected results
is that it is well-established that unexpected results must be shown to be
commensurate with the scope of exclusive protection sought by the claims.
E.g., In re Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir. 2003) (citing
precedent). Recited Composition I comprises as little as 10% by weight of
the claimed molding compositions. BASF has not explained why a person
having ordinary skill in the art would have considered the nine compositions
described in Table 1 of the Specification are reasonably representative of the
scope of molding compositions encompassed by claim 12.
We conclude harmful error in the rejection of the appealed claims for
obviousness has not been demonstrated.
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C. Order
We reverse the rejection of claims 12, 15, 16, 18, and 20-30 under
35 U.S.C. § 102(b) in view of Weber.
We affirm the rejection of claims 12, 15, 16, 18, and 20-30 under
35 U.S.C. § 103(a) in view of Weber.
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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