Ex Parte Yang et al

Board of Patent Appeals and Interferences

Apr 23, 2011

10951849 (B.P.A.I. Apr. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHI-JUN YANG and RICHARD ABEL
____________

Appeal 2009-006922
Application 10/951,849
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-6, 8, 9 and 12-15. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2009-006922
Application 10/951,849
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Appellants’ claimed invention is directed to an acrylic polymer
composition including carboxylic acid compounds that are disclosed as
having surprisingly stable UV transmissive properties and articles made
therefrom (Spec. 3). The claimed composition further includes a hindered
amine light stabilizer (HALS).
Claim 1 is illustrative and reproduced below:
1. A stabilized high UV transmission acrylic polymer composition
consisting essentially of:
a) 90 to 99.9 percent by weight of an acrylic polymer or
copolymer comprising 60-100 percent by weight of methyl
methacrylate monomer units;
d) 0.1 to 10 percent by weight of one or more carboxylic acid
compounds as a UV stabilizer, and
e) 0.01-2.0 percent by weight of one or more hindered amine
light stabilizers (HALS), based on the total weight of acrylic
polymer, the total adding to 100 percent.
(There are no limitations b) and c).)
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Craven 4,346,144 Aug. 24, 1982
Toritani 5,169,903 Dec. 8, 1992
Crabb 5,258,423 Nov. 2, 1993
Shiueh 5,432,219 Jul. 11, 1995
Aoki 5,444,809 Aug. 22, 1995
Krieg 5,700,894 Dec. 23, 1997
Servaty 6,716,950B2 Apr. 6, 2004
Chenet 6,787,602B2 Sep. 7, 2004
Kohara 6,883,938B1 Apr. 26, 2005
Claims 1-6, 8, 9, and 12-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Crabb in view of Craven, Toritani, Aoki, Servaty,
Chenet or Kohara, and Shiueh.
Appeal 2009-006922
Application 10/951,849
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We affirm the stated rejection for substantially the reasons set forth in
the Examiner’s Answer. We add the following for emphasis.
Appellants argue the rejected claims as a group (App. Br. 4). We
select claim 1 as the representative claim on which we decide this appeal.
Appellants do not dispute that Crabb teaches or suggests an acrylic
polymer composition including carboxylic acid compounds. Rather,
Appellants argue that the Examiner erred in rejecting the claims because
(App. Br. 4-7):
(1) Claim 1employs the transitional term “consisting essentially of” which
excludes an impact modifier, such as employed by Crabb, from the claimed
subject matter; and
(2) Crabb fails to allow for the inclusion of hindered amine light stabilizer
in addition to a carboxylic acid compound as required by claim 1 and the
other applied references do not remedy this insufficiency in the teachings of
Crabb with respect to Applicants’ claimed subject matter.
We resolve the issues raised by these arguments in favor of the
Examiner primarily for reasons set forth by the Examiner in the Answer.
Concerning the first issue and the claim term “consisting essentially
of”, it is well settled that the term “consisting essentially of” is interpreted as
allowing for the inclusion not only of those ingredients specifically recited,
but also those that do not materially affect the basic and novel characteristics
of a claimed invention. PPG Indus. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998); In re Herz, 537 F.2d 549, 551-52 (CCPA
1976). However, the burden is on Appellants to show what the basic and
novel characteristics are and how they would be materially changed by the
ingredient of the reference sought to be excluded from inclusion by
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Application 10/951,849
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Appellants’ use of this term. See In re De Lajarte, 337 F.2d 870, 873-74
(CCPA 1964); Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).
Here, Appellants argue that “impact modifiers are known to present
hazing, contain surfactants that yellow under prolonged UV radiation, and/or
contain styrene an[d] other monomers that absorb UV radiation” (App. Br.
5). Thus, Appellants contend that “the presence of impact modifier would
be known to one in the art to produce a [d]eleterious [e]ffect on UV
transmission”, and would, thus, preclude impact modifiers as employed by
Crabb.
The Examiner, on the other hand, correctly indicates that Crabb does
not require any minimum amount of impact modifier and that Crabb
discloses impact modifiers that are designed to retain transparency (clarity)
(Ans. 4-5). In this regard, the argued “up to 50 weight percent” of an
impact modifier disclosed by Crabb does not require inclusion of an impact
modifier by Crabb. Rather, Crabb teaches the option of excluding the
impact modifier by describing its use as optional (Crabb, col. 6, ll. 5-59).
Moreover, and while unnecessary to the examiner’s rejection given the
above, we note that Appellants have not otherwise established that including
small amounts of impact modifiers of the types described by Crabb would
necessarily result in a material change to the basic and novel characteristics
of the claimed product by their conclusory references to examples 22-27 of
their Specification. In this regard, Appellants have the burden to produce
evidence that establishes that Crabb necessarily requires the use of particular
impact modifier(s) in an amount that would materially affect the basic and
novel characteristics of the claimed invention. Here, Appellants have not
accomplished such for reasons advanced above and in the Examiner’s
Answer.
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While Crabb discloses that “it is generally not necessary to add a
second ultraviolet light stabilizer” (col. 7, ll. 1 and 2), as argued, this
recognition by Crabb does not teach away from or foreclose the use of a
second ultraviolet light stabilizer for methacrylic polymers of Crabb. This is
particularly so when Crabb is considered together with the applied
secondary references, as urged by the Examiner (Ans. 5-6; Crabb, col. 6, ll.
6, ll. 65-68). In this regard, Appellants acknowledge that using HALS
stabilizers together with acrylic polymers is taught by the applied secondary
references (App. Br. 6). Given that Crabb does not teach away from using a
second light stabilizer as noted above, Appellants argument that the applied
secondary references do not cure this deficiency of Crabb lacks
persuasiveness as this argument is built on an incorrect premise. Thus,
Appellants second argument does not indicate substantive error in the
Examiner’s obviousness rejection.
Appellants have not raised any other substantive arguments that the
Examiner erred harmfully, or that prima facie obviousness is rebutted by
secondary considerations such as unexpected results. It follows that we shall
sustain the Examiner’s obviousness rejection, on this record.

CONCLUSION/ORDER
The Examiner’s decision to reject claims1-6, 8, 9, and 12-15 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Crabb in view
of Craven, Toritani, Aoki, Servaty, Chenet or Kohara, and Shiueh is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

Appeal 2009-006922
Application 10/951,849
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AFFIRMED

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