BOREALIS AG

Patent Trials and Appeals Board

May 3, 2021

2021000642 (P.T.A.B. May. 3, 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.
14/782,576 10/05/2015 Katja Klimke MPG-024796US PCT 1725
26294 7590 05/03/2021
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATJA KLIMKE, MARKUS GAHLEITNER,
DAVIDE TRANCHIDA, ALBRECHT DIX,
JAMES ELLIOTT ROBINSON, ANN WATSON, and
AUDREY FRENOT JOHANSSON
Appeal 2021-000642
Application 14/782,576
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
HASTINGS, 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 1–10 and 12–15. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Borealis AG. Appeal
Br. 2.
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Application 14/782,576

2
CLAIMED SUBJECT MATTER
The claims are directed to a cable having an insulation layer
comprising a polymer composition. Spec. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A cable having a conductor and at least one insulation
layer comprising a polymer composition (PC) comprising:
(a) at least 98 wt.%, based on the total weight of the
polymer composition (PC), of a crystalline polypropylene (PP)
homo- or copolymer having a melt flow rate according to ISO
1133 (230°C/2.16 kg) in the range of 1.0 to 10.0 g/10 min, a ratio
of the weight and number average molecular weight Mw/Mn as
calculated from the molecular weight distribution determined by
size exclusion chromatography according to ISO 160140 in the
range of from 2.2 to 6.0, and a comonomer content of below 5.0
wt.%, wherein the comonomers are ethylene and/or a C4 to C10
α-olefin,
(b) 0.5 up to 2.0 wt.%, based on the total weight of the
polymer composition (PC), of an adhesion promoter (AP) being
a maleic anhydride modified polypropylene homo- or copolymer
and/or an acrylic acid modified polypropylene homo- or
copolymer having a melt flow rate MFR2 (230°C/2.16 kg) in the
range of from 2 to 500 g/10 min,
(c) 0.0001 to 1.0 wt.%, based on the total weight of the
polymer composition (PC), of a polymeric α-nucleating agent
(pNA), and
(d) optionally 0.02 to 1.0 wt.%, based on the total weight of
the polymer composition (PC), of a soluble α-nucleating agent
(sNA),
wherein the crystalline polypropylene (PP) homo- or
copolymer, the maleic anhydride modified polypropylene homo-
or copolymer and/or an acrylic acid modified polypropylene
homo- or copolymer, and the polymeric α-nucleating agent
(pNA) are the only polymer components in the polymer
composition (PC).
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Application 14/782,576

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Independent claim 12 recites a process for producing the cable
according to claim 1, including forming the polymer composition (Claims
App. 22, 23).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mehta US 2003/0092816 A1 May 15, 2003
Wasserman US 2005/0241820 A1 Nov. 3, 2005
Leboeuf US 2007/0004860 A1 Jan. 4, 2007
Hughes US 2010/0285253 A1 Nov. 11, 2010
Pham US 2011/0266027 A1 Nov. 3, 2011
Nakashima US 2012/0217037 A1 Aug. 30, 2012

REJECTIONS
Claims 1‒10, 12, and 14‒152 are rejected under 35 U.S.C. § 103 as
being unpatentable over Wasserman, Hughes, Leboeuf, Pham, and Mehta.
Final Act. 3.
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over
Wasserman, Hughes, Leboeuf, Pham, Nakashima, and Mehta. Final Act. 7.

OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere

2 It is harmless error that the Examiner did not include claim 6 in the
statement of the final rejection (Final Act. 3), as this claim is addressed in
the rejection (Final Act. 6).
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conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
conclude that the preponderance of the evidence supports Appellant’s
position that the Examiner has not met the burden in this case for
substantially the same reasons as set forth by Appellant in the Briefs.
Accordingly, we reverse the Examiner’s § 103 rejections of all the claims on
appeal.
The Examiner finds that Wasserman teaches a cable having a
conductor and at least one insulation layer comprising a polymer
composition, where the polymer composition comprises a polypropylene
homo- or copolymer and nucleating agents (Ans. 4‒5). The Examiner relies
on Hughes for the teaching of a propylene polymer useful in wire and cable
sheathing, where the polymer is at least 60 wt.% propylene and between 0
and 40 wt.% ethylene (Ans. 5). The Examiner also relies upon the polymer
of Hughes for its Mw/Mn and melt flow ratio to meet the corresponding
claim limitations. Id. The Examiner relies on Leboeuf to teach the recited
adhesion promoter (Ans. 5). Pham is brought in to teach the recited
polymeric α-nucleating agent (Ans. 6).
To establish a prima facie case of obviousness, an examiner must
show that each and every limitation of the claim is described or suggested
by the prior art or would have been obvious based on the knowledge of those
of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
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1988). “[T]he Examiner bears the burden of establishing a prima facie case
of obviousness based upon the prior art. ‘[The Examiner] can satisfy
this burden only by showing some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’” In
re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted).
Notably, a preponderance of the evidence supports Appellant’s
position that the Examiner reversibly erred in finding a reason within the
prior art to include the adhesion promoter of Leboeuf in the polymeric
composition of Wasserman (Appeal Br. 15; Reply Br. 9, 10). The
Examiner’s obviousness conclusion is based on the finding of a suggestion
within Leboeuf that the presence of the adhesion promoter that is a maleic
anhydride modified polypropylene homo- or copolymer and/or an acrylic
acid modified polypropylene homo-or copolymer in a polymeric
composition provides a polymeric composition with rheology properties
efficient for use in co-extrusion processes (Ans. 6). The Examiner further
asserts that the polymeric composition comprising the maleic anhydride
modified polypropylene homo- or copolymer and/or an acrylic acid modified
polypropylene homo-or copolymer adheres well to metal films (Ans. 13‒14).
The teachings of Wasserman and Lebouef relied upon by the
Examiner (Final Act. 4‒5) fail to provide the necessary suggestion to
support the obviousness conclusion and, thus, the Examiner’s proposed
combination appears to be based on improper hindsight reasoning rather
than a preponderance of the evidence from within the prior art and/or the
technical skill of the ordinary artisan. The Examiner’s position is that one of
ordinary skill would have included the adhesion promoter of Leboeuf in the
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polymeric composition of Wasserman to promote the adherence of the
polymeric composition to metal, and improve the rheological properties of
the polymeric composition (Ans. 6, 14).
However, Wasserman is directed to a polypropylene cable jacket
(Title). Wasserman provides no indication that an adhesion promoter is
contemplated as part of the inventive polypropylene polymer composition
(generally Wasserman). Nor does Wasserman speak to adhering the
polypropylene polymer composition to a metal film. Id. The disclosure of
Leboeuf is directed to metallized films, primarily for use in food packaging,
where the presence of the maleic anhydride modified polypropylene homo-
or copolymer and/or an acrylic acid modified polypropylene homo-or
copolymer provides a polymeric composition promotes adhesion to a metal
film substrate (Leboeuf ¶¶ 2, 3, 9, 14). Indeed, the jacketed cables of
Wasserman may include fiber optic cables (Wasserman ¶ 11), where
adherence to metal would be of no concern. In light of these circumstances,
the preponderance of evidence does not supports the Examiner’s
determination that one would have included the additive of LeBoeuf into the
cable jacket insulation layer of Wasserman.
A preponderance of the evidence also supports Appellant’s position
that the Examiner has not adequately explained how the combination of
Wasserman and Hughes provides a polymer composition comprising at least
98 wt.%, based on the total weight of the polymer composition (PC), of a
crystalline polypropylene (PP) homo- or copolymer and a comonomer
content of below 5.0 wt.%, wherein the comonomers are ethylene and/or a
C4 to C10 α-olefin (Appeal Br. 11‒13; Reply Br. 7‒9).

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The Examiner does not establish that the additional reference applied
in the § 103 rejection of dependent claim 13 cures these deficiencies and/or
otherwise provides another rationale that cures these deficiencies.
Accordingly, we reverse the § 103 rejections of claims 1‒10 and 12‒
15 which all rely upon an impermissible hindsight reconstruction of the
polymer composition of Wasserman to include the adhesion promoter of
Leboeuf.
CONCLUSION
The Examiner’s § 103 rejections are REVERSED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12, 14,
15
103 Wasserman,
Hughes, Leboeuf,
Pham, Mehta
1–10, 12, 14,
15
13 103 Wasserman,
Hughes, Leboeuf,
Pham, Nakashima,
Mehta
13
Overall
Outcome
1–10, 12–15

REVERSED