Ex Parte Weber et al

Patent Trial and Appeal Board

May 9, 2016

13040593 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/040,593 03/04/2011
123223 7590 05/11/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Martin Weber
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.
074008-1138-US (286155) 3232
EXAMINER
YOON,TAEH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN WEBER, CHRISTIAN MALETZKO,
SUSANNE ZEIHER, MARK VOLKEL, NORBERT
GUNTHERBERG, and RUDIGER BLUHM
Appeal2014-008037
Application 13/040,593
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
Appellants2 seek review of the Examiner's decision to reject3 claims
1 Our decision refers to Appellants' Specification (Spec.) filed April 19,
2011, the Non-Final Office Action (Non-Final Act.) mailed October 23,
2012, the Final Office Action (Final Act.) mailed April 4, 2013, Appellants'
Appeal Brief (Br.) filed February 4, 2014, and the Examiner's Answer
(Ans.) mailed May 7, 2014.
2 Appellants identify the real party in interest as BASF SE. Br. 2.
3 The provisional nonstatutory obviousness-type double patenting rejections
of claims 19-34 and 36-38 over claims 1-19, 21, and 22 of Application No.
Appeal2014-008037
Application 13/040,593
19-38 under 35 U.S.C. § 103(a) as unpatentable over Weber '3764 in view
of Weber' 122.5 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal relates to thermoplastic molding
compositions (see, e.g., claim 19), as well as processes for producing the
thermoplastic molding compositions and articles including the thermoplastic
molding compositions. Appellants disclose polyarylene ethers are
thermoplastics useful for their high heat resistance and high chemical
resistance. Spec. p. 1, 11. 22-24. Appellants further disclose the
thermoplastic molding composition should have high resistance to fuels,
particularly FAM B, while having good mechanical properties. Spec. p. 3,
11. 17-23.
Independent claim 19, reproduced below from the Claims Appendix
to Appellants' Appeal Brief, is illustrative of the subject matter on appeal.
The limitations at issue are italicized.
19. A thermoplastic molding composition compnsmg the
following components:
(A) at least one polyarylene ether (Al) having an
average of at most 0.1 phenolic end group per polymer chain and
at least one polyarylene ether (A2) having an average of at least
1.5 phenolic end groups per polymer chain,
13/053,872 and of claims 19-38 over claims 15-28 of Application No.
13/473,022 have been withdrawn by the Examiner. Ans. 2.
4 Weber et al., JP 11-158376 A, published June 15, 1999. Appellants and
the Examiner refer to JP 11-158376 A as "Elbl-Weiser." Because Weber is
the first named inventor, we refer to JP 11-158376 A as "Weber '376."
5 Weber et al., US 5,502,122, issued Mar. 26, 1996 ("Weber '122").
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Application 13/040,593
(B) at least one polyarylene sulfide,
(C) at least one functionalized polyarylene ether
comprising carboxy groups,
(D) at least one fibrous or particulate filler, and
(E) optionally further additives and/or processing aids.
Br. 9 (emphasis added).
ANALYSIS
The Examiner finds Weber '376 discloses a blend including at least
one polyarylene ether, at least one polyarylene sulfide, a carboxyl functional
polyarylene ether, an impact modifier, and other additives. Non-Final Act.
3. 6 The Examiner concludes the language "at most 0.1 phenolic end group
per polymer chain" of claim 19 encompasses 0 phenolic end groups as well
as close to 0 phenolic end groups. Final Act. 3. In view of this, the
Examiner determines the polyarylene ether lacking a hydroxyl terminal
group, as disclosed by Weber '376, meets the "at least polyarylene ether
(Al) having an average of at most 0.1 phenolic end group per polymer
chain," recited in claim 19. Non-Final Act. 3.
The Examiner finds Weber '376 does not disclose "a polyarylene
ether (A2) having an average of at least 1.5 phenolic end groups per polymer
chain," as recited in claim 19. However, the Examiner finds Weber' 122
discloses blends comprising a polyarylene ether having at least 0.03 wt% of
terminal hydroxyl groups and a polyarylene ether having less than 0.03 wt%
of terminal hydroxyl groups. Id. The Examiner concludes it would have
6 The Examiner did not restate all of the findings and conclusions supporting
the rejection in the Final Office Action. Therefore, we refer to the findings
and conclusions set forth in the Non-Final Office Action, where appropriate.
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Application 13/040,593
been obvious to modify Weber '376 in view of Weber '122 to provide the
various benefits and improvements disclosed by Weber' 122. Non-Final
Act. 4.
The Examiner notes the relationship between weight percent of
phenolic end groups and the number of phenolic end groups is disclosed in
Appellants' Specification. Final Act. 3. The Examiner further finds the
Specification discloses 0.01 wt% of phenolic end groups would equal 0.1
phenolic end groups and at least 0.15 wt% would equal at least 1.6 phenolic
end groups. Id. In view of this, the Examiner determines a polyarylene
ether having at least 0.03 wt% of terminal hydroxyl groups encompasses 1.6
terminal hydroxyl groups and therefore functions as "at least one
polyarylene ether (A2) having an average of at least 1.5 phenolic end groups
per polymer chain," as recited in claim 19. Final Act. 4.
Appellants contend Weber '3 7 6 and Weber '122 do not disclose "at
least one polyarylene ether (A2) having an average of at least 1.5 phenolic
end groups per polymer chain," as recited in claim 19. Br. 4--5.
Specifically, Appellants assert Appellants' Specification is not sufficient
evidence to show Weber' 122 discloses the recited amount of phenolic end
groups and the Examiner is relying on the possibility of Weber '122
disclosing the recited amount of phenolic end groups rather than the recited
amount being a necessary conclusion. Br. 5---6. Further, Appellants argue
that if the weight percent of phenolic end groups is fixed, the average
number of phenolic end groups varies as average molecular weight varies
and the Specification does not state a fixed average molecular weight. Br. 6.
Therefore, the Examiner's determination of the average number of phenolic
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Application 13/040,593
end groups per polymer chain is a possible conclusion instead of a necessary
conclusion. Id.
Appellants' arguments do not demonstrate a reversible error. The
disclosure of Weber '376 supports the Examiner's finding that Weber '376
discloses a composition including at least one polyarylene ether, at least one
polyarylene sulphide, at least one polyarylene ether containing carboxyl
groups, at least one impact-modified rubber, and further additives. Weber
'376, Abstract. As the Examiner determined, without dispute, polyarylene
ether having zero phenolic end groups meets the "at least polyarylene ether
(Al) having an average of at most 0.1 phenolic end group per polymer
chain" recited in claim 19.
We note Weber' 122 discloses a polyarylene blend similar to that of
Weber '376. The blend of Weber' 122 includes a polyarylene ether having
at least 0.03 wt% terminal hydroxyl groups, polyarylene ethers with less
than 0.03 wt% hydroxyl groups, polyarylene sulfides, fibrous or particulate
fillers, rubber impact modifiers, and other additives or processing assistants.
Weber '122 col. 1, 11. 6-36. In other words, the composition of Weber '122
includes components similar to those of the composition disclosed by Weber
'376. The disclosure of Weber '122 also supports the Examiner's finding
that Weber' 122 discloses a polyarylene ether having at least 0.03 wt%
terminal hydroxyl groups. Weber '122 col. 1, 11. 6-10. The Examiner
further finds Weber '122 discloses 7 the average molecular weight of the
polyarylene ether is 1500 to 60,000 g/mol. Ans. 4--5. Appellants'
Specification discloses the average molecular mass of the polyarylene ethers
7 Weber'122 col. 2, 11. 40-42.
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(Al) and (A2) are generally in the range of 5000 to 60,000 g/mol. Spec. p.
15, 11. 16-18.
The Examiner has determined the average number of phenolic end
groups per polymer chain, based upon the weight percent of phenolic groups
disclosed by Weber' 122. Moreover, in the Answer the Examiner provides
examples of conversions between the phenolic end weight percent values
disclosed by Weber '122 and the number of end groups per polymer chain
for various molecular weights disclosed by Weber' 122. Ans. 5---6.
Appellants have not addressed or otherwise disputed these findings.
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Here, the Examiner has demonstrated the combination of Weber '376 and
Weber '122 suggests a polyarylene ether having an average number of
phenolic end groups per polymer chain that overlaps with the polyarylene
ether (A2) recited in claim 19, which is sufficient to meet the Examiner's
initial burden. As such, the burden has properly shifted to Appellants.
Appellants' arguments that the Examiner's rejection is based upon
possibilities and probabilities instead of necessary conclusions fails to rebut
the Examiner's determinations that the combination of Weber '376 and
Weber '122 suggests a composition falling within the scope of claim 19.
Appellants further argue Weber '376 and Weber' 122 do not disclose
a thermoplastic molding composition having a substantially enhanced
resistance to FAM B. Br. 7. Appellants cite compositions 5, 6, and 8 of
Table 1 in the Specification (Spec. p. 44) as demonstrating a substantially
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Application 13/040,593
less loss of mass in the presence of FAM B as compared to samples lacking
one or more of the components of the inventive composition. Id.
These arguments are not persuasive of reversible error. Claim 19 does
not recite a resistance to FAM B. Moreover, a rationale for combining
references need not be the same as Appellants'. Indeed, "any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). "[T]he motivation in the prior art to combine the references does not
have to be identical to that of the applicant to establish obviousness." In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). "As long as some motivation
or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the
reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992). In addition, to the extent Appellants contend the cited
compositions of Table 1 demonstrate unexpected results, the cited
compositions do not provide a comparison with the closest prior art and are
not commensurate in scope with the claims, as stated by the Examiner. Ans.
8. Appellants have not otherwise responded to the Examiner's
determinations in the Answer.
For the reasons discussed above and for the reasons expressed in the
Answer, Appellants have not identified a reversible error in the Examiner's
rejection of claim 19.
Appellants have not advanced separate arguments for any of claims
20-38. Therefore, the§ 103 rejection of claims 19-38 over Weber '376 and
Weber '122 is sustained.
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DECISION
On the record before us and for the reasons in the Examiner's Answer
and above, we affirm the Examiner's rejections.
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).
AFFIRMED
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