Ex Parte Doshi et al

Patent Trials and Appeals Board

Mar 19, 2019

12157896 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/157,896 06/13/2008
23906 7590 03/21/2019
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Shailesh Ratilal Doshi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AD7523USNA 9532
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
03/21/2019 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAILESH RATILAL DOSHI and
JEAN-MICHEL PHILIPPOZ
Appeal2018-004475
Application 12/157,896
Technology Center 1700
Before DONNA M. PRAISS, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-13. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is E. I. du Pont de
Nemours and Company. Appeal Br. 3.
Appeal2018-004475
Application 12/157,896
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a flexible multilayer
pipe used to convey liquid media (such as coolant) for automotive
applications. Spec. 1 :7-8, 3 :22-26. Appellants seek to balance in terms of
aging, burst pressure resistance, permeation resistance, and coolant
absorption reduction. Id. Claim 1, reproduced below with emphasis added
to certain key recitations, is illustrative of the claimed subject matter:
1. A multilayer pipe comprising at least two layers,
i) an inside layer comprising
a) from at or about 65 to at or about 90 wt-% of
at least two polymers, one of which is low density
polyethylene (LOPE), very low density
polyethylene (VLDPE), polypropylene, oxr a
combination thereof, and the other is an ethylene
alpha-olefin copolymer, an ethylene propylene
diene rubber (EPDM), or a combination thereof;
and
b) from at or about 10 to at or about 35 wt-% of
at least one functionalized polyolefin, the weight
percentages being based of the total weight of the
inside layer, and
ii) an outside layer comprising:
a) from at or about 50 to at or about 80 wt-% of
at least one aliphatic polyamide derived from
monomers comprising at least one diamine having
2 In this Decision, we refer to the Final Office Action dated August 30, 2012
("Final Act."), the Appeal Brief filed April 30, 2013 ("Appeal Br."), and the
Examiner's Answer dated January 8, 2018 ("Ans."). We note that an April
20, 2017, Petition Decision determined that the Examiner's June 28, 2013,
Answer included an undesignated new ground because it referred to a new
reference (Ciesieleski). It appears that the Examiner chose to submit a
revised answer on January 8, 2018, that removes reference to Ciesieleski.
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Application 12/157,896
6 to 14 carbon atoms and at least one aliphatic
dicarboxylic acid having 9 to 18 carbon atoms;
b) from at or about 10 to at or about 30 wt-% of
one or more functionalized polyolefins or maleic
anhydride grafted ethylene/alpha-olefin copolymer
or maleic anhydride grafted ethylene-propylene
diene rubber or a combination thereof; and
c) from at or about O to at or about 30 wt-% of
linear low density polyethylene (LLDPE),
wherein the weight percentages are based on the total
weight of the outside layer; and
wherein the inside layer contacts the outside layer.
Appeal Br. 20-21 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Krause et al.
("Krause")
Beal et al.
("Beal")
Thullen et al.
("Thull en")
US 6,315,331 Bl
US 2002/0036405 Al
US 2003/0232207 Al
REJECTIONS
The following rejections are before us on appeal:
Nov. 13, 2001
Mar. 28, 2002
Dec. 18, 2003
Rejection 1. Claims 1-10 under 35 U.S.C. § 103 as unpatentable over
Thull en and Beal. Ans. 2.
Rejection 2. Claims 11-13 under 35 U.S.C. § 103 as unpatentable
over Thullen and Beal and further in view of Krause. Id. at 6.
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Application 12/157,896
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants 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 Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellants argue all rejections and claims as a group. See Appeal Br.
13. Therefore, consistent with the provisions of 37 C.F.R. § 41.37( c )(1 )(iv)
(2013), we limit our discussion to claim 1, and all other claims on appeal
stand or fall together with claim 1.
The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable
over Thullen and Beal. Ans. 2. Because Appellants do not dispute the
Examiner's obviousness rationale or most of the Examiner's findings, we
focus on the issue Appellants raise: whether or not the broadest reasonable
interpretation of claim 1 's "ethylene propylene diene rubber EPDM"
recitation encompasses vulcanized EPDM rubber.
The Examiner finds that Thullen teaches a two layer pipe where one
of the layers "comprises a vulcanized ethylene/propylene diene (EPDM)
rubber." Id. at 2-3. Appellants do not dispute this factual finding. Appeal
Br. 14--15. Rather, Appellants' central argument on appeal is that the
Examiner's interpretation of "ethylene propylene diene rubber (EPDM)" as
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encompassing vulcanized EPDM rubber is neither reasonable nor consistent
with the Specification. Id. at 5-14.
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997); see
also Cuozzo Speed Tech., LLC v. Lee,_ U.S._, 136 S. Ct. 2131, 2145
(2016) (noting that the Patent Office has used the broadest reasonable
construction standard for more than 100 years). "[W]ords in a claim are
generally given their ordinary and customary meaning, [but] a patentee may
choose to be his own lexicographer and use terms in a manner other than
their ordinary meaning, as long as the special definition of the term is clearly
stated in the patent specification or file history." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Here, Appellants chose to be their own lexicographer. The
Specification expressly defines EPDM as follows:
The term "ethylene propylene diene elastomers (EPDM)" is
used herein to mean any elastomer that is a terpolymer of
ethylene, at least one alpha-olefin, and a copolymerizable 5
non-conjugated diene such as norbomadiene, 5-ethylidene-2-
norbomene, dicyclopentadiene, 1,4-hexadiene and the like.
Spec. 9:2---6 (emphasis added). As set forth in the Specification, "any"
elastomer meeting this definition is encompassed by EPDM as claimed. The
definition is agnostic as to whether the terpolymer is or is not vulcanized /
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cross-linked. Accordingly, vulcanized terpolymers fall within the "any
elastomer ... " definition that Appellants adopt.
Appellants argue that Comparative Example 2 in the Specification
supports their position that EPDM does not include vulcanized EPDM. In
particular, Appellants argue that the Santoprene® layer component of
Comparative Example 2 is vulcanized and, by virtue of it being a
comparative example, distinguishes vulcanized resins from those claimed.
Appeal Br. 7; see also Spec. 18: 16-19 ( setting forth Comparative Example
2). We understand Appellants' argument as urging that claim 1 should not
be construed so that EPDM includes vulcanized elastomers because such a
construction would cause Comparative Example 2 to fall within the scope of
claim 1 such that Comparative Example 2 would be an inventive example
rather than a comparative example.
On the present record, Appellants have not persuasively established
( or even explicitly argued) that Comparative Example 2 is, in respects other
than the disputed Santoprene® component, within the scope of claim 1.
Rather, on the present record, Comparative Example 2 could be outside the
scope of claim 1 due to, for example, percent weight EPDM and/or its
outside layer composition. Because we cannot discern what makes
Comparative Example 2 "comparative," Appellants' argument does not
persuade us that Comparative Example 2 would have narrowed the
Specification's stated definition of EPDM as understood by a person of
ordinary skill in the art.
Appellants also argue that an absence of any indication that EPDM
includes vulcanized or crosslinked EPDM indicates that vulcanized or
crosslinked EPDM is excluded. Appeal Br. 7. The Specification, however,
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defines EPDM as including "any" elastomer that is a terpolymer as
described. Spec. 9:2-6. The definition thus provides an indication that
EPDM-as defined by the Specification-includes vulcanized or
crosslinked EPDM. Ans. 8 ( explaining that the definition does not indicate
that term is defined as uncrosslinked EPDM).
Appellants and the Examiner also cite various extrinsic evidence
indicating that a person of skill in the art would or would not understand
EPDM as meaning unvulcanized/ uncrosslinked EPDM. Appeal Br. 9-13;
Ans. 9-13. While we have carefully considered the extrinsic evidence
before us, it has little impact on the claim construction issue before us
because Appellants explicitly defined EPDM in the Specification. Even if
the extrinsic evidence suggested a different definition than Appellants'
definition, Appellants' definition would control because Appellants acted as
their own lexicographer. Vitronics Corp., 90 F.3d at 1576. Moreover, at
least some of the extrinsic evidence supports the Examiner's position that
persons of skill in the art use words clarifying their meaning when they
intend to refer to only uncrosslinked / unvulcanized EPDM. See, e.g., Ans.
10-11; Prut et al., Mechanical and Rheological Behavior of Unvulcanized
and Dynamically Vulcanized i-PP/EPDM Blends, Maromol. Symp., 233, 84
(2006) (referring to "unvulcanized EPDM").
On this record, especially in view of Appellants' express definition, it
is neither unreasonable nor inconsistent with the Specification to interpret
"ethylene propylene diene rubber (EPDM)" as including "any elastomer that
is a terpolymer of ethylene, at least one alpha-olefin, and a
copolymerizatible non-conjugated diene ... " (Spec. 9:2-6) whether or not
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crosslinked / vulcanized. Accordingly, Appellants' argument to the contrary
does not identify reversible error.
Appellants also argue patentability of claim 1 based on evidence of
unexpected results. Appeal Br. 15-18. A party asserting unexpected results
as evidence of nonobviousness has the burden of proving that the results are
unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). The
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). "If an
applicant demonstrates that an embodiment has an unexpected result and
provides an adequate basis to support the conclusion that other embodiments
falling within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of the claims." In re
Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). We have carefully
considered Appellants' evidence and arguments, but the profferred evidence
when considered together with the evidence of unpatentability is ultimately
unpersuasive as to error.
Here, we agree with the Examiner that Appellants have not adequately
established unexpected results reasonably commensurate with the scope of
claim 1. Ans. 14. Appellants have not, for example, established unexpected
improvement in both crosslinked and uncrosslinked EPDM rubber.
Appellants have also not explained why unexpected results would be
expected for other species recited in claim 1 such as ethylene alpha-olefin
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copolymer and have not explained why unexpected results would reasonably
be expected for various outside layer configurations within the scope of
claim 1. We also note that Appellants have not shown that the cited results
truly would have been unexpected rather than merely superior. Accordingly,
Appellants' argument regarding unexpected results is not persuasive of
Examiner error.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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