SABIC Global Technologies B.V.

Patent Trials and Appeals Board

Jul 24, 2020

2019005147 (P.T.A.B. Jul. 24, 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.
14/150,314 01/08/2014 Mark Berix 12PLAS0368-US-NP 7132
23413 7590 07/24/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
ORTMAN JR., KEVIN C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
07/24/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BERIX, NELA STAFIE,
HENDRIKUS PETRUS CORNELIS VAN HEERBEEK,
and FRANK HUIJS
Appeal 2019-005147
Application 14/150,314
Technology Center 1700
Before KAREN M. HASTINGS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–8, and 10–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as SABIC
GLOBAL TECHNLOGIES B.V. Appeal Br. 2.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to polymer armatures for
lighting fixtures. Spec. ¶¶ 2–5. Appellant states that armatures must meet
flammability standards, that the armature should be aesthetically acceptable,
and that light from the light source should not be visible through the
armature. Id. Claim 1 is illustrative:
1. An armature for an illuminant, comprising:
walls formed from an armature composition, wherein the
armature composition comprises
an armature polymer, wherein the armature polymer
comprises polycarbonate;
10 wt% to 20 wt% coated titanium dioxide; wherein the
coated titanium dioxide has a coating comprising a
polysiloxane; and
greater than zero to 0.001 wt% carbon black;
wherein the weight percentages are based upon a total weight of
the armature composition;
wherein, at a thickness of greater than or equal to 3 mm, the
armature has a reflection at 700 nm of greater than or equal to 93%.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Marugan et al. US 2005/0085580 A1 Apr. 21, 2005

2 In this Decision, we refer to the Final Office Action dated September 24,
2018 (“Final Act.”), the Appeal Brief filed January 28, 2019 (“Appeal Br.”),
the Examiner’s Answer dated April 22, 2019 (“Ans.”), and the Reply Brief
filed June 20, 2019 (“Reply Br.”).
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(“Marugan”)
Li et al.
(“Li”)
US 2008/0230751 A1 Sep. 25, 2008

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 10 and 11 under 35 U.S.C. § 112 as indefinite. Ans. 3.
B. Claims 1–4, 6–8, and 10–21 under 35 U.S.C. § 103 as obvious over Li
in view of Marugan. Id. at 4.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error except where we
otherwise indicate below. Thus, where we affirm the Examiner’s rejections,
we do so for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Objections. The Examiner objects to the term “the thermoplastic
composition” in the Specification as lacking an antecedent basis. Final Act.
2 (citing Spec. ¶ 23). The Examiner objects to claim 22 as having unmatched
parenthesis. Id. Appellant refutes these objections. Appeal Br. 5–6.
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Decisions an examiner makes during examination of a discretionary,
procedural, or nonsubstantive nature not directly connected with the merits
of issues involving rejections are reviewable by petition under 37 CFR
§ 1.181 to the Director, not by appeal. In re Berger, 279 F.3d 975, 984‒85
(Fed. Cir. 2002). Such is the case here. We, therefore, decline to address the
Examiner’s objections.
Rejection 1, Section 112 indefiniteness. The Examiner rejects claims
10 and 11 as indefinite. Each of these claims depend from claim 1. The
Examiner determines that it is not clear whether the components recited by
claims 1 and 11 are “in addition to the polycarbonate of claim 1, or if they
further limit the polycarbonate with claim 1.” Ans. 3. Appellant argues that
claims 10 and 11 are clear and are open to either scenario. Appeal Br. 6
(citing Spec. ¶¶ 19 and 35).
We agree with Appellant and the Examiner that, based on the plain
language of claims 10 and 11, the claims are open to either of the two
scenarios the Examiner identifies. This, however, makes the claims broad
rather than unclear. In re Gardner, 427 F.2d 786, 788 (CCPA 1970)
(“Breadth is not indefiniteness.”). Because the Examiner does not adequately
establish that claims 10 and 11 are impermissibly unclear, we do not sustain
this rejection.
Rejection, Section 103 obviousness. The Examiner rejects claims
1–4, 6–8, and 10–21 under 35 U.S.C. § 103 as obvious over Li in view of
Marugan. Ans. at 4. The Appellant argues the claims in three groups: claim
1; claims 10, 11, and 19; and claims 12 and 13. Appeal Br. 7, 11, 12. We
address each group of claims below. All remaining claims stand or fall with
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the claim from which from which they depend. 37 C.F.R. § 41.37(c)(1)(iv)
(2013).
Group one, claim 1: With regard to claim 1, the Examiner finds that
Li teaches a light shielding polymer armature for an illuminant. Ans. 4. The
polymer comprises a blend of silicon-free polycarbonate polymer, a
polycarbonate-polysiloxane copolymer, a titanium dioxide, and a non-white
colorant. Id. at 4–5 (citing Li). The Examiner finds that Li teaches the
titanium dioxide as having an organic coating to reduce surface reactivity
and improve handling characteristics. Id. (citing Li ¶ 72). The Examiner
finds that Li does not expressly teach that the titanium dioxide’s coating
comprises polysiloxane. Id. at 6. The Examiner finds, however, that
Marugan also teaches polycarbonate-siloxane compositions with titanium
dioxide and teaches using polysiloxane as a coating for titanium dioxide. Id.
(citing Marugan). The Examiner determines that it would have been obvious
to choose the polysiloxane of Marugan for the titanium dioxide coating of Li
“for the purpose of reducing surface reactivity and [to] improve handling
characteristics of the titanium dioxide.” Id.
Appellant argues that a person of skill in the art would not have
modified Li with the Marugan’s coated titanium dioxide to arrive at claim
1’s composition (i.e., a composition having 10 wt% to 20 wt% of
polysiloxane coated titanium dioxide). Appeal Br. 7; see also Reply Br. 3–5.
Appellant argues that Marugan discloses that increased titanium dioxide
results in decreased p(FTP) values and argues that, based on this disclosure,
a person of skill in the art would consider that the distribution of the titanium
dioxide of Marugan worsens with increasing concentration of titanium
dioxide in the composition. Appeal Br. 7. Appellant further argues that a
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person of skill in the art would not have any reason to think that a siloxane
coating would reduce aggregation in the claimed amount of 10 to 20 wt%
(id. at 8–9), that a person of skill in the art would not know whether or not
such coated titanium dioxide could successfully obtain the low transmission
rate Li desires (id.), and that a person of skill in the art would not have a
reasonable expectation of success in utilizing Marugan’s coated titanium
dioxide at a higher amount. Id. at 9–10.
Based on a preponderance of the evidence and the totality of the
record before us, Appellant’s arguments are unpersuasive. Appellant places
undue emphasis on the teachings of Marugan while failing to persuasively
address the teachings of Li. In particular, Li teaches a titanium oxide
whitener in an amount greater than 0 to about 20 parts per hundred parts of
polymer. Li ¶ 72. Appellant does not dispute that Li teaches an amount of
titanium dioxide that overlaps with claim 1’s recited amount. Li further
teaches that its titanium oxide particles may be beneficially coated:
“Titanium dioxide particles may further comprise an organic coating to
reduce surface reactivity and improve handling characteristics.” Id.
Furthermore, Li’s teachings suggest that coated titanium dioxide is
acceptable for Li’s composition. Li ¶ 72. Because Li does not specify a
coating material, it reasonably suggests that any coating material recognized
in the art for titanium oxide is acceptable. The preponderance of the
evidence, therefore, weighs against Appellant’s arguments that a person of
skill in the art would not have had a reasonable expectation of success in
utilizing polysiloxane coated titanium oxide with Li to achieve a low
transmission rate with a reasonable expectation of success.
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Appellant’s argument that Marugan teaches away from use of
polysiloxane coated titanium oxide as Li’s suggested coated titanium oxide
is unpersuasive because Marugan does not in any way discourage or
otherwise address coated titanium oxide in Li’s particular composition. “The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed in the
’198 application.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant focuses on Table 5, Figure 1, and paragraph 65 of Marugan,
and argues that these portions of Marugan teach that distribution of titanium
dioxide worsens with increasing titanium dioxide concentration. Appeal Br.
7–8. We disagree. These portions of Marugan teach that increasing titanium
dioxide “decreases the p(FTP) value.” Marugan ¶ 63. Marugan explains that
p(FTP) is the probability of a first time pass of a particular UL94 vertical
burning test. Marugan ¶ 57. Marugan thus suggests that increased titanium
dioxide harms flammability properties. Appellant has not adequately
established why a person of skill in the art would have doubted Li’s
teachings that coating titanium dioxide “reduce[s] surface reactivity and
improve[s] handling characteristics” (even at the amounts of titanium
dioxide taught by Li) based upon the teachings of Marugan. Li ¶ 72.
Appellant has also not established that it is the polysiloxane coating of
Marugan in particular that would lead to a lower p(FTP) value.
Because the portions of Marugan that Appellant emphasizes, at most,
would have led a person of skill to consider that increased titanium oxide
could harm flammability properties, those passages do not teach against
using polysiloxane as the coating taught by Li. Moreover, even if the cited
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Marugan passages would have indicated to a person of skill in the art that
higher titanium dioxide concentrations could lead to increased flammability,
the person of skill in the art would have weighed this disadvantage against
the advantages of titanium dioxide that Li teaches. Li ¶ 72 (explaining that
titanium dioxide at zero to twenty parts per hundred parts of polymer serves
as a whitener and prevents light from passing through the polymer); see also
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine”). We also note
that Li teaches that flame retardants may be incorporated into its polymer (Li
¶ 83), and this could compensate for higher titanium dioxide amounts.
Appellant also argues unexpected results. Appeal Br. 10–11; Reply
Br. 5–6. Our reviewing court has explained that “an applicant may overcome
a prima facie case of obviousness by establishing that the [claimed] range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” Peterson, 315 F.3d at 1330 (internal
quotes and citation omitted). Evidence of unexpected results also must also
be reasonably commensurate with the scope of the claims. In re Peterson,
315 F.3d 1325, 1330–31 (Fed. Cir. 2003) (explaining that applicant may
overcome a prima facie case of obviousness by showing unexpected results
but the showing of unexpected results “must be commensurate in scope with
the claims which the evidence is offered to support”) (internal quotes and
citation omitted).
Here, we have carefully considered Appellant’s evidence, but we
agree with the Examiner that the evidence is not commensurate with the
scope of claim 1. Appeal Br. 16–17. In particular, Appellant alleges
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unexpected results based upon sample TiO2 C having a good melt volume
flow rate (MVR (see Spec. ¶ 14)) whereas uncoated titanium dioxide
samples (TiO2 A and TiO2 B) could not be molded into a plaque. Appeal Br.
10–11. Appellant’s data, however, provides data for only one sample having
an advantageous result. Spec. ¶ 148, Table 1. Claim 1 is broader. Appellant
has not adequately established that the advantageous result would reasonably
be expected to occur across the titanium dioxide weight percentages, carbon
black weight percentages, thicknesses, permissible polycarbonate types, and
possible additives allowed within the scope of claim 1.
We further note that Appellant has not compared inventive examples
against the closest prior art (Li with coated titanium oxide) and has not
presented evidence that the asserted benefits are unexpected. In re Soni, 54
F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled the unexpected results
must be established by factual evidence. Mere argument or conclusory
statements . . . do[] not suffice.”) (internal quotes and citation omitted).
Based on all evidence before us, Appellant has not established error in
the Examiner’s obviousness analysis. We, thus, sustain the Examiner’s
rejection of claims 1–4, 6–8, and 14–18.
Group 2, claims 10, 11, and 19–22: Claims 10 and 19 each recite
“wherein the armature polymer comprises . . . a bromine-containing polymer
in an amount effective to provide 9 to 13 wt% of bromine, based on the total
weight of the armature polymer.” Appeal Br. 15–16 (Claims App.). Claim
11 is different and recites “wherein the armature composition comprises 35
to 50 wt% of a bromine-containing polymer based on the total weight of the
armature polymer.” Id. at 15. Claims 20 and 21 depend from claim 19.
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Relevant to claims 10 and 19, the Examiner finds that “Li does not
expressly teach the bromine containing polymer in an amount effective to
provide 9–13 wt% of bromine, based on the total weight of the polymer.”
Ans. 8. The Examiner determines, however, that it would have been obvious
“to modify the composition to comprise a sufficient amount of bromine-
containing polymer in the taught workable ranges, and thus include[e] the
effective bromine amounts from 9 wt.% to 13 wt.% based on the armature
polymer, depending on the end use application of the light armature
polymer, absent a showing of criticality.” Ans. 9.
Appellant argues that although Li discloses that a bromine substituted
aromatic dihydroxy compound may be used, Li does not teach that bromine
should be present in 9–13 wt% based on total weight of the polymer. Appeal
Br. 12. As explained above, the Examiner does not dispute that Li does not
explicitly teach percent bromine as total weight of polymer. Ans. 8.
Moreover, the Examiner does not calculate or otherwise explain why 9–13
wt% bromine as total weight of polymer would necessarily be reached by
using bromine substituted compounds in the amounts Li teaches.
Because the Examiner does not explain how a person of skill in the art
would have reached the bromine percentages overlapping those of claims 10
and 19 by following Li’s teachings, our understanding is that the Examiner
relies on a result effective variable theory of obviousness. Ans. 17
(determining that a composition comprising “a sufficient amount of
bromine-containing polymer in the taught workable ranges, and thus
including the effective bromine amounts of from 9 wt.% to 13 wt.%” would
have been obvious). As Appellant argues, however, the Examiner has not
established that the art recognizes total amount of bromine as a result-
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effective variable. Reply Br. 6; see also In re Antoine, 559 F.2d 618, 620
(CCPA 1977) (reversing Board’s affirmance of a rejection based on
optimization of a parameter where “the parameter optimized was not
recognized to be a result-effective variable.). We agree with Appellant that,
absent some evidence that amount of bromine is result-effective, a result-
effective theory of obviousness is insufficient. We, therefore, do not sustain
the Examiner’s obviousness rejection of claims 10 and 19. We also do not
sustain the rejections of claims 20 and 21 because each of those claims
depends from claim 19.
Our analysis is different with respect to claim 11. The Examiner finds
that Li teaches 2–98 wt% silicon-free polycarbonate and finds that the
polycarbonate can contain bromine. Ans. 4 (citing Li ¶¶ 42, 71). Appellant
does not persuasively dispute these findings. The Examiner, thus, adequately
establishes that Li teaches an amount of, as claim 11 recites, “bromine-
containing polymer” that completely overlaps claim 11’s “35-50 wt%”
recitation.
Our reviewing court has explained that overlapping ranges create a
rebuttal presumption of obviousness:
[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of
obviousness. But the presumption will be rebutted if it can be shown:
(1) that the prior art taught away from the claimed invention, In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) that there are
new and unexpected results relative to the prior art, In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990).
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004); see also In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003)
(“Selecting a narrow range from within a somewhat *1330 broader range
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disclosed in a prior art reference is no less obvious than identifying a range
that simply overlaps a disclosed range.”). Here, as explained above,
Appellant does not persuasively establish a teaching away or unexpected
results in a manner that outweighs the evidence above. Appellant’s
argument, thus, does not establish reversible error with respect to claim 11,
and we sustain the Examiner’s rejection of this claim.
Group 3, claims 12 and 13. Claims 12 and 13 recite, respectively, an
18 cm3/10 min (claim 12) and a 20 cm3/10 min (claim 13) minimum melt
volume flow rate (MVR) for the armature polymer. Appeal Br. 15 (Claims
App.); see also Spec. ¶ 14 (defining MVR as melt volume flow rate). The
Examiner finds that Li teaches that its polymers have an overlapping flow
rate of 0.5 to about 50 cm3/10 min. Ans. 9 (citing Li ¶ 44). Appellant argues
that Li’s teachings are directed merely to “useful” polycarbonates and of a
particular co-polymer rather than MVR of a composition.
The preponderance of the evidence weighs against Appellant’s
position. In particular, Li states, “In a specific embodiment, a useful
polycarbonate composition has an MVR … of from about 0.5 to about 50
cc/10 min.” Li ¶ 44. The phrase “specific embodiment” refers to
embodiments of the Li invention. We thus agree with the Examiner that a
person of skill in the art would have understood Li paragraph 44 as teaching
that compositions embodying Li’s inventive compositions have a melt flow
rate from 0.5 to about 50 cm3/10 min. See also Li ¶¶ 1–7 (suggesting that
Li’s inventive compositions are “useful” and would thus fall within the
paragraph 44 description of “a useful polycarbonate composition”).
Because Appellant’s arguments do not identify error, we sustain the
Examiner’s rejection of claims 12 and 13.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10, 11 112 Indefiniteness 10, 11
1–4, 6–8,
10–21
103 Li, Marugan 1–4, 6–8,
11–18
10, 19–21
Overall
Outcome
1–4, 6–8,
11–18
10, 19–21

As explained above, we decline to address the Examiner’s objections.

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 IN PART