Ex Parte Wu et al

Patent Trials and Appeals Board

Jun 13, 2019

13405774 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/405,774 02/27/2012
52674 7590
Baker Hostetler
1170 Peachtree Street NE
Suite 2400
Atlanta, GA 30309-7676
06/17/2019
FIRST NAMED INVENTOR
Tong Wu
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.
092474.021900 (22Ul) 7028
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONG WU, WILL LI, and DAVID ZOU
Appeal2017-009729
Application 13/405,774
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-7, 10, 11, 13-16, 18, 19,and24-28. 3 Wehavejurisdictionunder
35 U.S.C. § 6(b ).
We AFFIRM.
1 In our Decision, we refer to the Specification filed February 27, 2012
("Spec."); the Final Office Action dated October 31, 2016 ("Final Act."); the
Appeal Brief filed March 2, 2017 ("App. Br."); the Examiner's Answer
dated May 8, 2017 ("Ans."); and the Reply Brief filed July 10, 2017 ("Reply
Br.").
2 Appellants identify SABIC Global Technologies BV as the real party in
interest. App. Br. 1.
3 Claim 23 is allowed. Final Act. 1.
Appeal2017-009729
Application 13/405,774
The claims are directed to polymer compositions having improved
electromagnetic interference ("emi") retention. Claims 1 and 24, reproduced
below from the Claims Appendix of the Appeal Brief, illustrate the claimed
subject matter:
1. A polymer composition comprising:
from about 20 wt.% to 44 wt.% of a thermoplastic
polymer comprising a polybutylene terephthalate,
polyphthalamide, nylon, or combination thereof;
from about 5 wt.% to about 30 wt. % of a stainless steel
fiber;
from greater than O wt% to 4 wt% of a second, polyester
polymer;
from greater than O wt.% to about 15 wt.% of conductive
filler, other than the stainless steel fiber, this amount of
conductive filler representing the total amount of all conductive
filler other than the stainless steel fiber;
from greater than O wt.% to about 30 wt.% of glass fiber;
wherein at least a portion of the second polymer is
crystalline or semi-crystalline or a combination thereof, and
wherein at least a portion of the stainless steel fiber has a
coating; and
wherein the polymer composition exhibits an initial
electromagnetic interference in a range of from about 50 dB to
about 65 dB when tested according to ASTM D4935, over a
frequency range of from 30 MHz to 1500 MHz.
24. A polymer composition comprising:
(a) from about 20 wt.% to 44 wt.% of a thermoplastic
polymer comprising a polybutylene terephthalate,
polyphthalamide, nylon, or combination thereof;
(b) from greater than O wt% to 4 wt% of a second,
polyester polymer,
2
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Application 13/405,774
(c) from greater than O wt.% to about 30 wt.% of glass
fiber;
( d) sum total amount of conductive additives consisting
of
(i) from about 5 wt.% to about 30 wt.% of a
stainless steel fiber; and
(ii) from greater than O wt.% to about 15 wt.% of
a conductive filler, comprising a carbon black;
wherein at least a portion of the second polymer is
crystalline or semi-crystalline or a combination thereof, and
wherein at least a portion of the stainless steel fiber has a
coating; and
wherein the polymer composition exhibits an initial
electromagnetic interference in a range of from about 50 dB to
about 65 dB when tested according to ASTM D4935, over a
frequency range of from 30 MHz to 1500 MHz.
App. Br. 20, 22-23 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Jones
Liu
Merrell et al.
("Merrell")
Cofer et al
("Cofer")
Mitsunaga et al.
("Mitsunaga")
Li et al. ("Li")
Simpson
us 4,272,429
us 4,596,670
us 5,034,157
US 2002/0108699 Al
US 2004/0030021 Al
US 2008/0251769 Al
US 2009/0226696 Al
3
June 9, 1981
June 24, 1986
July 23, 1991
Aug. 15, 2002
Feb. 12,2004
Oct. 16, 2008
Sept. 10, 2009
Appeal2017-009729
Application 13/405,774
REJECTIONS 4
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
1. Claims 1-5, 7, 10, 11, 13-16, and 24--28 over Simpson in view
of Mitsunaga, Liu, Li, and Cofer. Final Act. 3---6.
2. Claim 6 over Simpson in view of Mitsunaga, Liu, Li, and
Cofer, and further in view of Jones. Final Act. 6-7.
3. Claims 18 and 19 over Simpson in view ofMitsunaga, Liu, Li,
and Cofer, and further in view of Merrell. Final Act. 7-8.
OPINION
Rejection 1. The Examiner finds that Simpson teaches an
electromagnetic shielding composition comprising a thermoplastic
polybutylene terephthalate polymer, a second polyester, coated stainless
steel fibers, other conductive filler, and glass particles. Final Act. 3. The
Examiner finds that the amount of stainless steel fiber is 10-90% by weight,
and the total amount of other conductive filler is about 0-45% by weight.
Id. The Examiner finds that the amount of thermoplastic polymer is about
10-90% by weight, determined by subtracting the total amount of filler. Id.
The Examiner finds that the second polyester includes polyethylene
terephthalate, and the thermoplastic polymer also includes nylon. Id. The
Examiner finds that Simpson's composition exhibits an electromagnetic
interference (shielding) of greater than 50 dB. Id.
4 In the Answer, the Examiner withdrew the rejection of claims 24--28 as
obvious over Liu in view of Mitsunaga. Ans. 10.
4
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Application 13/405,774
Appellants argue for patentability of the claims 1-5, 7, 10, 11, and 24
in Rejection 1 as a group. 5 App. Br. 4--12. We identify claim 1 as
representative of the group. Claims 2-5, 7, 10, 11, and 24 will stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on several secondary references to teach various
limitations of claim 1, including, inter alia, weight percentages of claimed
components. See Final Act. 3-6. However, Appellants only specifically
address asserted failures in Simpson's disclosures, arguing that "none of the
secondary references cure the deficiencies of Simpson." See App. Br. 4--9.
Therefore, we tum to Appellants' arguments relating to Simpson.
Appellants argue that Simpson fails to teach the elements of claim 1
(and claim 24, the only other independent claim) that the Examiner attributes
to the reference. App. Br. 4. Appellants further argue that Simpson's
disclosure is so broad as to be practically useless in arriving at the claimed
compositions, and that any specificity in the disclosure teaches away from
the claims. Id. Appellants contend that Simpson discloses "virtually ... the
world of conductive materials," compiling the specific ingredients required
by claim 1 only "by picking and choosing from a myriad of options." Id.
Appellants argue that Simpson describes multiple options for
conductive filler, amounting to a massive array of potential ingredients, but
does not teach or suggest any of the specific combinations of ingredients
claimed in claims 1 or 24. App. Br. 5. Appellants contend, therefore, that
Simpson discloses a prior art genus, which is not sufficient by itself to
5 Appellants argue both independent claims, claims 1 and 24, at the same
time, and make no arguments limited to one claim and not the other. See
App. Br. 4, 8.
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Application 13/405,774
establish a prima facie case of obviousness. Id. According to Appellants,
the breadth of choices and numerous combinations available from Simpson
indicates that the reference would not have rendered the claimed invention
obvious to try. Id. at 6.
Appellants contend that "the only mention of EMI shielding in
Simpson is provided in paragraphs [0086] and [0087]." Id. at 7. Appellants
contend that Simpson fails to identify the physical aspects of the
compositions of claims 1 and 24, and further fails to disclose which of the
myriad compositions disclosed provide the alleged electromagnetic
interference shielding. Id.
We do not agree with Appellants' interpretation of Simpson's
disclosures. As a first point, Simpson in combination with secondary
references is said to render claim 1 obvious. See Final Act. 3---6.
Appellants' argument that "Simpson fails to teach all of the elements of
claims 1 and 24" is, consequently, of no moment, as Simpson is not said to
anticipate the claims. See Sanofi--Synthelabo v. Apotex, Inc., 470 F.3d 1368,
1375 (Fed. Cir. 2006) (internal quotation marks omitted) (If "each and every
limitation is found either expressly or inherently in a single prior art
reference," then the claim is invalid under§ 102 for anticipation.).
In addition, although, as Appellants point out, Simpson broadly
discloses that "the electrically conductive particles comprise both an
electrically conductive material and a magnetic material, which can be the
same or different material" (Simpson ,r 14 ), the reference also teaches that
"[e]xemplary high aspect ratio particles include metal fibers commercially
available from Bekhaert®" which "contain only metal and are stainless steel
fibers available in a variety of alloys" (Simpson ,r 18) ( emphasis added).
6
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Application 13/405,774
Simpson teaches that the electrically conductive polymer foam may
comprise "a total filler content [ ofJ about 10 to about 90 wt%," based on the
total weight of the electrically conductive polymer foam-an amount that
overlaps the claimed range of stainless steel fiber and other conductive filler,
such as carbon black specifically identified in Simpson. See In re Harris,
409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (same). Simpson also includes stainless steel in its claims 4 and 5.
Simpson, 15.
Moreover, Appellants are incorrect in arguing that "the only mention
of EMI shielding in Simpson is provided in paragraphs [0086] and [0087]."
See App. Br. 7. In the Abstract, Simpson teaches that the disclosed polymer
foam layer is useful for electromagnetic shielding. Simpson Abstract. The
reference goes on to describe utility of its polymer foams in applications
requiring electromagnetic interference shielding. Simpson ,r,r 3, 83, 86, 87,
93, 94, and claim 16. Indeed, Simpson claim 16 is directed to a polymer
foam layer having an electromagnetic shielding capacity of greater than or
equal to about 50 dB. Simpson, 15.
"[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). It is also well settled that a reference stands for all of
the specific teachings thereof as well as the inferences one of ordinary skill
in the art would have reasonably been expected to draw therefrom. See In re
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Application 13/405,774
Fritch, 972 F.2d 1260, 1264--65 (Fed. Cir. 1992). On the record before us,
the Examiner's findings regarding Simpson accurately reflect Simpson's
disclosures.
We sustain the Examiner's rejection of claim 1 as obvious over
Simpson in view of Mitsunaga, Liu, Li, and Cofer. We also sustain the
rejection over these references of claims 2-5, 7, 10, 11, and 24, as they were
not argued separately from claim 1.
Appellants argue that that the Examiner made misstatements
regarding Liu and Cofer. App. Br. 9. Appellants contend that the
Examiner's finding that the thermoplastic polymer of Liu provides enhanced
EMI shielding effectiveness is "true on its face," but Liu teaches
compositions outside of claim 24. Id. The Examiner's statement is accurate
and the Examiner has withdrawn the rejection of claims 24--28 as obvious
over Liu in view of Mitsunaga. See Ans. 10. Therefore, whether Liu
teaches compositions outside of claim 24 is moot. Appellants also argue that
Cofer's methods might be used to measure EMI shielding of Simpson's
compositions, but not used to obtain such compositions. App. Br. 9.
The Examiner points out that claim 1 requires EMI shielding be tested
(measured) according to ASTM D4953 over a frequency range of 30-1500
MHz, and Simpson teaches an EMI shielding level but does not specify the
frequency range of testing. Ans. 11. The Examiner finds that Cofer teaches
measuring EMI shielding according to ASTM D4935 over a frequency range
of 30-1500 MHz, as claimed, and that EMI shielding measured by the test
method is suitable to protect most electronic devices from electromagnetic
interference. Id. at 11-12 (citing Cofer ,r,r 3, 4, 65, 86). We view the
Examiner's conclusion as being that one of ordinary skill in the art would
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Application 13/405,774
have found it obvious to use Cofer's testing for the composition resulting
from Simpson and the secondary cited art, and that such testing would show
that the resulting polymer composition exhibits an initial electromagnetic
interference in a range of from about 50 dB to about 65 dB when tested
according to ASTM D4935, over a frequency range of from 30 MHz to 1500
MHz.
Appellants argue that the Examiner's rejection of claims 13-16 and
25-28 are based on a combination of references with Simpson and,
therefore, on a flawed inherency theory. App. Br. 10-12. Claims 13-16
require the polymer composition of claim 1, "capable of retaining at least
about [80% to 95%] of the initial electromagnetic interference after
annealing at about 150°C for at least about 120 hours." Id. at 21-22 (Claims
App'x). Similarly, claims 25-28 require the polymer composition of claim
24 "that retains at least about [80% to 95%] of the initial electromagnetic
interference after annealing at about 150°C for at least about 120 hours." Id.
at 23.
The Examiner finds that the combined art renders the claimed
composition obvious, including components, amounts thereof, and initial
EMI. Ans. 12. "Even if no prior art of record explicitly discusses the
["retaining" limitations in claims 13-16 and 25-28], [Appellants']
application itself instructs that [ the limitations are] not an additional
requirement imposed by the claims on the [claimed invention], but rather a
property necessarily present in [the claimed invention]." In re Kubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009); see also Spec. ,r,r 60-61. The prior art's
teaching to obtain the claimed composition necessarily teaches a skilled
artisan to obtain the properties of that composition.
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Application 13/405,774
"From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing." In re Papesch,
315 F.2d 381,391 (CCPA 1963); see also Sanofi-Synthelabo v. Apotex, Inc.,
550 F.3d 1075, 1086 (Fed.Cir.2008) ("For chemical compounds, the
structure of the compound and its properties are inseparable considerations
in the obviousness determination."). "[I]t is not required ... that the prior
art disclose or suggest the properties newly-discovered by an applicant in
order for there to be a primafacie case of obviousness." In re Dillon, 919
F.2d 688,697 (Fed. Cir. 1990) (en bane); see also In re Kao, 639 F.3d 1057,
1073 (Fed. Cir. 2011) (finding the controlled release formulation of known
drug oxymorphone to be obvious, the further claimed "food effect" was
found to be an inherent property of the drug despite the formulation).
"Where, as here, the claimed and prior art products are identical or
substantially identical, ... the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
When there is a reason to conclude that the structure of the prior art is
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See, e.g., In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). "[W]hen the prior art evidence reasonably
allows the PTO to conclude that a claimed feature is present in the prior art,
the evidence 'compels such a conclusion if the applicant produces no
evidence or argument to rebut it."' In re Crish, 393 F.3d 1253, 1259 (Fed.
Cir. 2004) (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)).
Appellants proffer no argument or evidence that the results are unexpected.
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Application 13/405,774
We sustain the Examiner's rejection of claims 13-16 and 25-28 for
the reasons above.
Rejection 2. The Examiner finds that claim 6 is unpatentable over
Simpson in view of Mitsunaga, Liu, Li, and Cofer, and further in view of
Jones. Final Act. 6-7. Appellants argue that none of the secondary
references cure the deficiencies of Simpson. App. Br. 7.
Having found no deficiencies in the prior art, we sustain the
Examiner's rejection of claim 6.
Rejection 3. The Examiner finds that claims 18 and 19 are
unpatentable over Simpson in view of Mitsunaga, Liu, Li, and Cofer, and
further in view of Merrell. Final Act. 7-8. Appellants argue that none of the
secondary references cure the deficiencies of Simpson. App. Br. 7.
Having found no deficiencies in the prior art, we sustain the
Examiner's rejection of claims 18 and 19.
DECISION
For the above reasons, the Examiner's rejection of claims 1-7, 10, 11,
13-16, 18, 19, and 24--28 is affirmed. 6
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)(iv).
AFFIRMED
6 According to the Final Office Action, claim 23 is allowed. Final Act. 1.
11