Ex Parte Doshi et alDownload PDFPatent Trials and Appeals BoardMar 19, 201912157896 - (D) (P.T.A.B. Mar. 19, 2019) Copy Citation 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. 2 Appeal2018-004475 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. 3 Appeal2018-004475 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 4 Appeal2018-004475 Application 12/157,896 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 / 5 Appeal2018-004475 Application 12/157,896 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, 6 Appeal2018-004475 Application 12/157,896 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 7 Appeal2018-004475 Application 12/157,896 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 8 Appeal2018-004475 Application 12/157,896 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 9 Copy with citationCopy as parenthetical citation