LOTTE ADVANCED MATERIALS CO., LTD.

Patent Trials and Appeals Board

Apr 23, 2021

2020002859 (P.T.A.B. Apr. 23, 2021)

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.
15/543,677 07/14/2017 Dong In HA 1224.271 3143
21176 7590 04/23/2021
Additon, Pendleton & Witherspoon, P.A.
10706 Sikes Place
Suite 350
Charlotte, NC 28277-8202
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/23/2021 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):
additon@ahpapatent.com
docket@ahpapatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG IN HA, SEUNG SHIK SHIN, and
KYUONG SIK CHIN
Appeal 2020-002859
Application 15/543,677
Technology Center 1700
Before LINDA M. GAUDETTE, MERRELL C. CASHION, JR., and
SHELDON M. McGEE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 1 and 4–15.3
We AFFIRM.

1 The following documents are of record in this appeal: Specification filed
July 14, 2017 (“Spec.”); Final Office Action dated Nov. 20, 2018 (“Final
Act.”); Appeal Brief filed Aug. 13, 2019 (“Appeal Br.”); Examiner’s
Answer dated Dec. 26, 2019 (“Ans.”); and Reply Brief filed Feb. 26, 2020
(“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Lotte Advanced Materials
Co., Ltd. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).

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Application 15/543,677

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CLAIMED SUBJECT MATTER
“The . . . invention relates to a thermoplastic resin composition
exhibiting good impact resistance, flowability, external appearance, flame
resistance and the like . . . .” Spec. ¶ 1. The composition may be used to
manufacture electronic device housing parts. Id. ¶ 72. Claims 1, 13, and 14,
reproduced below, are illustrative of the claimed subject matter:
1. A thermoplastic resin composition comprising:
about 100 parts by weight of a polycarbonate resin;
about 1 to about 30 parts by weight of a rubber-modified
aromatic vinyl graft copolymer;
about 1 to about 30 parts by weight of a polyester resin;
about 1 to about 20 parts by weight of a glycol-modified
polyester resin having about 10 mol% to about 60 mol% of a
cyclohexanedimethanol (CHDM) content based on a total
amount of a diol component; and
about 0.5 to about 15 parts by weight of a vinyl
copolymer comprising an epoxy group, wherein a weight ratio
of the polyester resin to the glycol-modified polyester resin
ranges from about 1:0.1 to about 1:1.
13. The thermoplastic resin composition according to claim
1, wherein the thermoplastic resin composition has a melt flow
index (MI) of about 12 g/10 min to about 25 g/10 min as
measured at about 260°C under a load of about 2.16 kg in
accordance with ASTM D1238.
14. The thermoplastic resin composition according to claim
13, wherein the thermoplastic resin composition has a notched
Izod impact strength of about 45 kgf cm/cm to about 60 kgf
cm/cm as measured on an about 1/8" thick specimen in
accordance with ASTM D256, and a melt flow index (MI) of
about 12 g/10 min to about 19 g/10 min as measured at about
260°C under a load of about 2.16 kg in accordance with ASTM
D1238.
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Appeal Br. 29, 31.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Jung I US 2009/0012217 A1 Jan. 8, 2009
Jung II US 2010/0152358 A1 June 17, 2010
Ito US 2010/0253874 A1 Oct. 7, 2010
REJECTIONS
1. Claims 1, 4–11, and 13–15 are rejected under 35 U.S.C. § 103
over Jung I and Jung II. Final Act. 3.
2. Claim 12 is rejected under 35 U.S.C. § 103 over Jung I, Jung II,
and Ito. Final Act. 6.
OPINION
The Appellant contends that the Examiner’s fact finding and
reasoning is insufficient to support a prima facie case of obviousness as to
the appealed claims. More specifically, the Appellant argues that the
Examiner reversibly erred in finding that (1) the ordinary artisan would have
had a reason to include 3 to 20 wt% of glycol-modified polyester resin
containing 5 to 80 mol% of cyclohexane dimethanol in Jung I’s composition
(Appeal Br. 13–15), and (2) the combined teachings of Jung I and Jung II
would have resulted in the claimed composition (id. at 15–17). The
Appellant also contends that even if the Examiner met the burden to
establish a prima facie case of obviousness, the Appellant’s evidence
supports a finding that the claimed and prior art compositions differ and that
the claimed composition exhibits unexpected results. See Appeal Br. 18–24.
These arguments have been fully addressed by the Examiner in the Final
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Office Action and the Answer, and are not persuasive of reversible error in
the Examiner’s obviousness conclusion for the reasons stated therein. We
add the following.
The Appellant argues that “Jung I addresses problems associated with
imparting sufficient flame retardancy to a rubber-modified aromatic vinyl
copolymer resin without using potentially harmful compounds and/or
without deteriorating impact strength.” Appeal Br. 14. The Appellant argues
that because Jung I solves these problems using an epoxy group-containing
rubber modified aromatic vinyl copolymer resin, there would have been no
reason “to further modify Jung I to address a problem stated to have been
solved, much less consider . . . [Jung II, which] does not recognize or
address issues associated with the use of flame retardants.” This argument is
not persuasive because it fails to identify error in the Examiner’s finding that
the ordinary artisan would have modified Jung I to include a glycol-modified
polyester resin containing 5 to 80 mol% of cyclohexane dimethanol based on
Jung II’s disclosure of improved dimensional stability, heat resistance and
weld line strength in a polycarbonate resin composition. See Final Act. 4–5
(citing Jung II ¶¶ 79–81); Ans. 9. The Examiner’s finding that the ordinary
artisan would have sought to further improve Jung I’s composition by
including a glycol-modified polyester resin containing 5 to 80 mol% of
cyclohexane dimethanol are further supported by the following disclosures
in Jung I and Jung II.
Jung I describes its composition as “an environmently friendly
flameproof thermoplastic resin composition which has excellent flame
retardancy and impact resistance” and “suitable for the production of electric
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or electronic housings, computer or office equipment housings, structural
materials and the like.” Jung I ¶¶ 8, 89. Jung I discloses that use of a
“polycarbonate resin may make it easier to impart flame retardancy to the
resin composition. Accordingly, if the amount of the polycarbonate resin is
less than about 30% by weight, flame retardancy and mechanical strength of
the resin composition may be deteriorated.” Id. ¶ 63. Jung I discloses that an
impact modifier can be included in the composition. Id. ¶ 84.
Jung II discloses that “[p]olycarbonate resins are used in a variety of
engineering plastic applications because of their excellent impact resistance,
self-extinguishing properties, dimensional stability and high heat resistance
compared to other engineering plastics.” Jung II ¶ 3. According to Jung II,
“the use of polycarbonate resins is limited in many applications because
polycarbonates can have high notch sensibility and thus can exhibit reduced
impact strength along parts of molded products that are subjected to stress.”
Id. ¶ 4. In addition, “polycarbonate resins require high molding temperatures
due to the low fluidity of polycarbonates, unlike other general thermoplastic
resins. Therefore, physical properties of the polycarbonate resin can be
reduced by thermal decomposition due to over-heating.” Id. Jung II discloses
that
[t]he addition of an impact modifier can significantly prevent
the reduction of the impact resistance of polycarbonate resin,
although residual stress can remain. However, simply adding
only an impact modifier does not improve the fluidity of
polycarbonate resin. Further, the polycarbonate resin can
exhibit discoloration and/or reduced physical properties due to
changes in the impact modifier that can result from exposure to
high temperatures during processing.
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Id. ¶ 6. Jung II describes its composition as improving fluidity and weld
strength of molded articles and, therefore, “suitable for use in outer parts of
cellular phones, computers, door linings and the like which require impact
resistance and have many weld parts.” Jung II ¶ 84. Jung II discloses that the
polycarbonate resin composition may further include one or more additives,
including flame retardants. Id. ¶ 82. Based on these disclosures, the ordinary
artisan would have reasonably expected that including a glycol-modified
polyester resin containing 5 to 80 mol% of cyclohexane dimethanol in Jung
I’s composition would reduce or eliminate the drawbacks associated with
polycarbonate resins and impact modifiers, while maintaining flame
retardancy.
The Appellant argues that comparison data provided in the
Specification and supplemented in an inventor declaration under 37 C.F.R.
§ 1.132 supports a finding that the claimed and prior art compositions differ
and that the claimed composition exhibits unexpected results. Appeal Br.
18–24; see Declaration of Dong In Ha, executed July 31, 2018; Appeal Br.
19 (reproducing the table from Decl. ¶ 7). The Appellant argues that the data
demonstrates that compositions including a polyester resin and a glycol
modified polyester resin in a weight ratio outside of the upper and lower end
points of the claimed ranges exhibit poor processability (melt flow index)
and significantly less Izod impact strength as compared to the claimed
composition. Appeal Br. 19.
We agree with the Examiner that the Appellant’s evidence is
insufficient to rebut the Examiner’s strong prima facie showing of
obviousness. Ans. 11–12; see Sud-Chemie, Inc. v. Multisorb Techs., Inc.,
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554 F.3d 1001, 1009 (Fed. Cir. 2009). As explained by the Examiner,
although the Appellant compared compositions containing the same
components in varying amounts, the Appellant never varied the individual
components. Ans. 11 (“[T]he examples recite specific types and amounts of
polycarbonate resins (A1 and A2), while the present claim[s] recite any type
of polycarbonate resins . . . [and] the examples recite specific type and
amount of vinyl copolymer comprising an epoxy group (E), while the
present claim[s] recite any type of vinyl copolymer comprising an epoxy
group.”).
The Appellant argues that it has “demonstrated that an embodiment
has an unexpected result and there is no basis to expect that other claimed
embodiments will behave differently.” Reply Br. 6. That is not the proper
standard for demonstrating unexpected results. Rather, the Appellant has the
burden to “provide[] an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner” as
the exemplary embodiment. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011); see also Genetics Inst., LLC v. Novartis Vaccines & Diagnostics,
Inc., 655 F.3d 1291, 1308–09 (Fed. Cir. 2011) (“While we have held that
unexpected results must be commensurate in scope with the claims, we have
not required absolute identity of scope; rather, we have rejected unexpected
results where the evidence was plainly disproportionate to the scope of the
claim.”); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (the burden of
analyzing and explaining data to support nonobviousness rests with the
Appellant). The Appellant’s conclusory statements are insufficient to meet
that burden. See Appeal Br. 22 (“The data of record clearly demonstrates a
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trend, based on the weight ratio of a polyester resin to a modified polyester
resin. The skilled artisan also can clearly and reasonably extrapolate or
extend the probative value of the data to other compositions within the scope
of the claims.”).
The Appellant argues that the Examiner’s fact finding and reasoning
is insufficient to establish that the properties recited in claims 11, 13, and 14
are inherent or obvious. Appeal Br. 16, 23. The Appellant argues that the
Examiner’s finding that the Appellant’s data is not commensurate in scope
with the claims is the wrong legal standard for determining inherency
because “inherency considers whether the alleged prior art compositions
necessarily have the claimed properties.” Reply Br. 4–5. The problem with
the Appellant’s argument is that the claims do not require that every
composition falling within the scope of claim 1 have the recited properties.
Rather, claims 11, 13, and 14 may encompass only one particular
composition. See, e.g., Spec. ¶¶ 20, 37, 71 (referring to some embodiments
or exemplary embodiments as having the recited properties).
The Appellant argues that “[w]hen properly read in context, [Jung I
and Jung II] actually teach away from the composition of claim 14.” Reply
Br. 6. In support of its teaching away argument, the Appellant directs us to
Jung II’s example in which Jung indicates that a melt flow index of 19 g/10
min is unacceptable. Id. The Appellant argues that this teaches away from
the claim 14 range which includes 19 g/10 min. Id.
The Examiner fully addresses this argument on pages 17–18 of the
Answer and we agree that it is unpersuasive of reversible error for the
reasons stated therein. We add that, to establish a teaching away, the
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Appellant must explain why “a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The
Appellant has not sufficiently explained why this one example, limited to a
teaching of the undesirability of a melt flow index value at the upper
endpoint of the claimed range of “12 g/10 min to about 19 g/10 min” (claim
14), would have led the ordinary artisan in a direction divergent from the
path that was taken by the Appellant.
The Appellant does not argue the separate rejection of claim 12.
Accordingly, for the reasons stated in the Final Office Action, the Answer,
and above, we sustain the rejections of claims 1 and 4–15.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–11, 13–
15
103 Jung I, Jung II 1, 4–11,
13–15

12 103 Jung I, Jung II, Ito 12
Overall
Outcome:

1, 4–15
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. § 41.50(f).
AFFIRMED