Guo, Mingcheng et al.

Patent Trials and Appeals Board

Feb 4, 2020

14110334 - (D) (P.T.A.B. Feb. 4, 2020)

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.
14/110,334 05/08/2015 Mingcheng Guo 092474.023560 1078
52674 7590 02/04/2020
BakerHostetler
1170 Peachtree Street NE
Suite 2400
Atlanta, GA 30309-7676
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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 MINGCHENG GUO and FRANS MERCX
Appeal 2019-000715
Application 14/110,334
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 11–14, 17–26, 28, 29, 31–35,
and 37–40.
We have jurisdiction. 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as SABIC Global
technologies, B.V. Appeal Br. 1.
Appeal 2019-000715
Application 14/110,334

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SUBJECT MATTER
The claims are directed to thermally conductive polymer compositions
exhibiting a flame retardancy of V0 at certain sample thicknesses, as
measured by UL-94. Claim 1 is illustrative of the claimed subject matter,
and is reproduced below:
1. A thermally conductive polymer composition comprising:
(a) from about 20 wt% to about 60 wt% of an organic polymer
comprising aliphatic polyamide, polyester, or polyolefin;
(b) from about 30 wt% to about 70 wt% of a thermal conductive
additive comprising magnesium hydroxide or aluminum oxide
hydroxide; and
(c) from about 1 wt% to about 10 wt% of a polyarylene sulfide;
wherein all weight percent values are based on the total weight
of the composition; and
wherein the composition exhibits a flame retardancy of V0 as
measured by UL-94 at sample thicknesses of 1.5 mm, 1.2 mm,
1.0 mm, and 0.8 mm.
Appeal Br. 13.
The claims also recite methods of improving the flame retardancy of
such compositions, as well as extruded or injection molded articles made
from such compositions. Id. at 16–18.
REFERENCES
Name Reference Date
Wang CN 102070899 A May 25, 2011
Zeng CN 101899209 A Dec. 1, 2010
Taguchi US 4,788,261 Nov. 29, 1988
Landry-Coltrain US 7,211,364 B1 May 1, 2007
Fisher US 7,229,683 B2 June 12, 2007
Herbiet US 2010/0324193 A1 Dec. 23, 2010

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Application 14/110,334

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REJECTIONS2
The following claims are rejected under pre-AIA 35 U.S.C. § 103(a):
I. Claims 1–4, 8, 11–14, 17–26, 28, 29, 31–35, and 37–40 over
Wang, Zeng, Taguchi, and Fischer;
II. Claims 1–3, 5, 6, 8, 11–14, 17–26, 28, 29, 31–35, and 37–40
over Wang, Landry-Coltrain, Taguchi, and Herbiet.
DISCUSSION
Rejection I
Appellant argues this rejection as a group. Appeal Br. 5–11.
Consistent with our rules, we select claim 1 as representative of this group of
rejected claims, and decide the appeal of Rejection I on the basis of claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner undisputedly finds that “Wang discloses an insulating
and heat-conducting polyamide composition” containing a) an aliphatic
polyamide, b) a thermal conductive additive such as aluminum oxide or
magnesium oxide, and c) a polyarylene sulfide, with each component a), b),
and c) in amounts that overlap the ranges claimed. Non-Final Act. 3–4. The
Examiner finds that Wang does not disclose the thermal conductive additive
as magnesium hydroxide, or the claimed flame retardancy rating of V0 at the
recited sample thicknesses. Id. at 4.

2 The Final Action does not contain a full statement of the rejections, but
instead refers back to the Non-Final Action dated October 30, 2017
(hereinafter “Non-Final Act.”). Final Act. 2. Our Decision, therefore,
primarily cites to the findings and conclusions set forth in the Non-Final
Action.
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To account for these differences, the Examiner turns to Zeng,
Taguchi, and Fischer. Non-Final Act. 4–5. Specifically, the Examiner finds,
and Appellant does not dispute, that Zeng teaches the equivalency and
interchangeability of magnesium oxide and magnesium hydroxide as
insulating thermal conductors, and determines that it would have been
obvious for the skilled artisan to substitute the magnesium oxide taught by
Wang for the magnesium hydroxide taught by Zeng. Id. at 4. With respect
to the recited flame retardancy rating, the Examiner finds “Taguchi teaches
that polyarylene sulfide resins are used for their excellent flame retarding
property” and that Fischer “teaches magnesium hydroxide functions as both
a thermally conductive filler and as a fire retardant.” Id. at 4–5.
Based on these disclosures, the Examiner concludes that “one of
ordinary skill in the art would have expected that [] the composition taught
by [the relied-upon prior art] would provide for the claimed V0 compliant
flame retardancy or would have been able to obtain [a] composition having
V0 flame retardancy.” Id. at 5.
Appellant argues that the Examiner has not established a prima facie
case of obviousness by failing to properly consider the limitation requiring
the composition to exhibit a “flame retardancy value of V0 as measured by
UL-94 at sample thicknesses of 1.5 mm, 1.2 mm, 1.0 mm, and 0.8 mm.”
Appeal Br. 5–11. Specifically, Appellant points to data contained within the
Specification that purports to demonstrate “that not all compositions that
contain the claimed percentages of components [i.e., Examples 1, 2, and 3]
possess the claimed V0 properties.” Id. at 7. In view of such data,
Appellant argues that the claimed flame retardancy value is not achieved by
all compositions falling within the claimed ranges, and that it is the
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Examiner’s burden to establish that achieving the claimed flame retardancy
value would have been obvious. Id. (citing In re Stepan Company, 868 F.3d
1342, 1348 (Fed. Cir. 2017)). Appellant argues that the Examiner has failed
to meet that burden. Id. Appellant argues further that the Examiner’s
alternative obviousness rationale––that the skilled artisan would have been
able to “obtain” a composition having the claimed V0 flame retardancy––is
erroneous because the Examiner has not explained how the skilled artisan
would have done so. Appeal Br. 8.
We are unpersuaded that Appellant has identified reversible error in
the rejection. Controlling precedent from our reviewing court is clear:
[S]tructural similarity between claimed and prior art subject
matter, provided by combining references or otherwise, where
the prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and []
the burden (and opportunity) then falls on an applicant to rebut
that prima facie case. Such rebuttal or argument can consist of a
comparison of test data showing that the claimed compositions
possess unexpectedly improved properties or properties the prior
art does not have, that the prior art is so deficient that there is no
motivation to make what might otherwise appear to be obvious
changes, or any other argument or presentation of evidence that
is pertinent.
In re Dillon, 919 F.2d 688, 692–693 (Fed. Cir. 1990) (en banc) (internal
citations omitted).
Here, the Examiner undisputedly finds that Wang discloses a
structurally similar composition with respect to elements (a)–(c) recited in
claim 1, except for the identical “thermal conductive additive” species
claimed (element (b)). Non-Final 3–4. The Examiner also undisputedly
finds that Wang’s thermal conductive additive, e.g., magnesium oxide, is an
art-recognized equivalent to magnesium hydroxide––one of the claimed
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“thermal conductive additives”––and is taught by Zeng to be
interchangeable with Wang’s magnesium oxide. Id. at 4. The Examiner
furthermore determines that, based on the equivalence of magnesium oxide
and magnesium hydroxide as insulating thermal conductors, it would have
been obvious for the skilled artisan to have substituted Wang’s magnesium
oxide with Zeng’s magnesium hydroxide because doing so would have been
“the mere substitution of an equivalent.” Id.
Based on these undisputed findings and determinations, the Examiner
has established a structural similarity between the claimed composition and
the prior art composition disclosed in Wang and Zeng, and has also
identified a reason or motivation to make the claimed composition. Non-
Final 3–4. Such circumstances create a prima facie case of obviousness, and
shifts the burden to Appellant to rebut the prima facie case, e.g., by
“showing that the claimed compositions possess unexpectedly improved
properties or properties the prior art does not have.” Dillon, 919 F.2d at
692–693.
We have reviewed Appellant’s argument and evidence and determine
that it fails to rebut the Examiner’s prima facie case. Appellant’s evidence
appears to demonstrate that not all compositions having claimed elements
(a), (b), and (c) within the claimed amounts exhibit the recited flame
retardancy of V0 at the recited thicknesses of 1.5mm, 1.2mm, 1.0mm, and
0.8mm. Spec. 54 (Table 4), 57 (Table 6). Specifically, Example 1 achieved
a flame retardancy value of V2 at a sample thickness of 0.8 mm, and had a
flammability rating of “non-rated”3 at sample thicknesses of 1.5, 1.2, and 1.0

3 “NR” or “non-rated” appears to be a flammability rating. See Spec. ¶185
(“the flammability rating decreases from V2 to NR (non-rated)”); see also
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mm. Id. at 57. Examples 2 and 3 had a flame retardancy rating of “NR” at
all sample thicknesses recited in claim 1. Id. Examples 7 and 8, however,
each achieved the recited V0 flame retardancy at each claimed thickness. Id.
at 58 (Table 6).
Here, we observe Appellant’s Examples 1, 3, and 8––exhibiting
various flame retardancy ratings of V0, V2, and NR at the recited
thicknesses––fall within the scope of not only elements (a)–(c) of the claims,
but also the prior art composition. Compare Non-Final Act. 3–4 (setting
forth undisputed “weight percent value” conversions of elements (a)–(c) in
the prior art) with Spec. 54–55 (Table 4 setting forth the weight percent
values4 of components (a) [PA1], (b) [MG], and (c) [PPS]). Appellant’s
evidence regarding the Example 8 composition appears to show that the
recited V0 flame retardancy is indeed achieved by the prior art composition.
We are unpersuaded by Appellant’s assertions that the data specific to
Examples 1–3, 7, and 8 exhibits “unexpected properties” or “unexpected
results” of the claimed composition. Appeal Br. 7, 9. It is well-settled that
“when unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art.”
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Appellant’s evidence makes no such showing.
Under these circumstances, Appellant has failed to show that the
claimed “compositions had properties not possessed by the prior art

id. ¶ 186 (“the flammability rating improved from NR (example C2) to
V1”).
4 In discussing the Examples, the Specification indicates that “percentages
referring to composition are in terms of wt%.” Spec. ¶ 178.
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compositions or that they possessed them to an unexpectedly greater
degree.” Dillon, 919 F.2d at 693. We, therefore, do not agree with
Appellant (Appeal Br. 9) that the data provided sufficiently rebuts the
Examiner’s prima facie case of obviousness.
For these reasons, and those provided by the Examiner, we sustain
Rejection I.
Rejection II
In this rejection, the Examiner relies on the identical Wang and
Taguchi references relied on in Rejection I, but substitutes Landry-Coltrain
for Zeng and Herbiet for Fischer. Non-Final Act. 6–7. The Examiner also
relies on the same obviousness rationales advanced for Rejection I. Id. at 7.
For this rejection, Appellant essentially relies on the same arguments
presented for Rejection I. Appeal Br. 11. Because those arguments were
unpersuasive for Rejection I, they are likewise unpersuasive for this
rejection for the same reasons articulated above.
CONCLUSION
The Examiner’s obviousness rejections are affirmed.

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Application 14/110,334

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–4, 8, 11–
14, 17–26,
28, 29, 31–
35, and 37–
40
103(a) Wang, Zeng, Taguchi,
and Fischer
1–4, 8, 11–
14, 17–26,
28, 29, 31–
35, and
37–40

1–3, 5, 6, 8,
11–14, 17–
26, 28, 29,
31–35, and
37–40
103(a) Wang, Laundry–
Coltrain, Taguchi, and
Herbiet
1–3, 5, 6,
8, 11–14,
17–26, 28,
29, 31–35,
and 37–40

Overall
Outcome
1–6, 8, 11–
14, 17–26,
28, 29, 31–
35, and
37–40

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED