Ex Parte Midkiff et alDownload PDFPatent Trial and Appeal BoardMar 21, 201612493276 (P.T.A.B. Mar. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/493,276 0612912009 David Grant Midkiff 111049 7590 03/22/2016 DORITY & MANNING, PA and KIMBERLY-CLARK WORLDWIDE, INC. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 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. 64481552US01 9068 EXAMINER FITZSIMMONS, ALLISON G ART UNIT PAPER NUMBER 1778 MAILDATE DELIVERY MODE 03/22/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID GRANT MIDKIFF, HEATHER M. RICHMOND, and NINA FRAZIER Appeal2014-005136 Application 12/493,276 Technology Center 1700 Before CHUNG K. PAK, ROMULO H. DELMENDO, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Action mailed April 23, 2013 ("Final Act."), finally rejecting claims 1, 2, 4--8, and 11-22. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We affirm. 1 According to Appellants, the real party in interest is Kimberly-Clark Worldwide, Inc. (Appeal Br. 3). Appeal2014-005136 Application 12/493,276 CLAHvIED SUBJECT ivIATTER Appellants' invention is directed to a multilayer web having at least a first layer and a second layer (Abstract). The second layer is attached to the first layer and comprises a blend of a thermoplastic polymeric component and a functionalized polymeric component (id.). Appellants state that the claimed web is particularly suited for filtration media (id.). Details of the claimed invention are set forth in representative claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. A multilayer web comprising a first layer; and a second layer attached to the first layer, the second layer comprising fibers produced from polymeric composition comprising a blend of a thermoplastic polymeric component and a functionalized polymeric component, said functionalized polymeric component comprises at least one functional end group and said functionalized polymeric component comprises about 35% to about 80% by weight of the polymeric components in the polymeric composition, vvherein said functionalized polymeric component provides delamination resistance between the first and second layers. REJECTIONS2 I. Claims 1, 2, 4--8, 11-17, 21, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Myers3 in view of Tse. 4 2 The Examiner indicates that all rejections set forth in the Final Action which relied on McManus et al. (U.S. Patent No. 7,672,208 B2, issued January 5, 2010), were withdrawn (Ans. 5). 3 Myers et al., U.S. Patent No. 6,573,205 Bl, issued June 3, 2003. 4 Tse et al., U.S. Patent Pub. 2006/0293424 Al, published December 28, 2006. 2 Appeal2014-005136 Application 12/493,276 IL Claims 18-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Myers in view of Tse as evidenced by Pike. 5 DISCUSSION The Examiner finds that Myers teaches a multilayer web comprising a first layer and as second layer, where the second layer is produced from a blend of a thermoplastic polyolefin and a functionalized polymer component (Final Act. 2). The Examiner further finds that each element of claim 1 is disclosed in Myers, except that Myers suggests that its functionalized polymeric component comprises up to 25% by weight of the polymeric portion of the polymeric components, instead of the claimed range of 35% to 80% by weight (Final Act. 2-3). The Examiner further finds that Tse shows that the weight percentages of a polymer blend and functionalized end groups are result effective variables (Final Act. 3--4). The Examiner also finds that Tse's goal is to provide effective adhesion6 and that to accomplish that goal teaches that the polymer may be functionalized to include about 30%-80% of functionalized components, a value which overlaps with the claimed range of about 35% to about 80% by weight (Ans. 6, citing Tse, i-f 205). The Examiner states that "[ c ]ourts have held that discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art" and implicitly concludes that it would have been obvious to vary the 5 Pike et al., U.S. Patent No. 5,721,180, issued February 24, 1998. 6 Ans. 6, citing Tse, i-f 5 ("To provide effective adhesion, it may be preferable that good bonding strength or intimate integrity between the layers be achieved for most applications.") 3 Appeal2014-005136 Application 12/493,276 percentage of the functionalized polymer in the composition of ivlyers to arrive at the claimed composition (Final Act. 4). Appellants make four basic argument urging reversal of the obviousness rejection of claims 1 and 7: (1) the prior art teaches away from the claimed invention; (2) the prior art does not disclose with sufficient specificity the range of the claimed functionalized polymeric component, (3) the claimed composition provides unexpectedly improved properties, and ( 4) the Examiner has not provided an adequate basis for modifying/combining the prior art to arrive at the claimed invention (Appeal Br. 4). Whether a reference teaches away from a claimed invention is a question of fact. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference ... would be led in a direction divergent from the path that was taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tee Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). "When a piece of prior art 'suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant' the piece of prior art is said to 'teach away' from the claimed invention." Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). However, "[t]he 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 4 Appeal2014-005136 Application 12/493,276 otherwise discourage the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants contend that Myers teaches away from using a functionalized polymer component ranging from about 35% to about 80% by weight of the polymeric components in the polymeric composition (Appeal Br. 6). Appellants argue that Myers limits the amount of the functionalized thermoplastic polymer (telomer) from 0.5% to about 25%, and that other dependent claims and examples in Myers further suggest that 25% is the upper limit for the functionalized thermoplastic polymer (Appeal Br. 6-8, Reply Br. 2---6). Therefore, according to Appellants, Myers would have discouraged a person of skill in the art from increasing the amount of functionalized thermoplastic polymer above 25% by weight into the claimed range of about 35% to about 80% by weight (Appeal Br. 9). This argument is not persuasive. While Myers states that "the second thermoplastic polymer desirably comprises from about 0.1 to about 25% by weight of the composite[,]" it does not state that only the desired amount of the second thermoplastic polymer can be used in its blend (2:52-54, emphasis added; see also, Myers 4:3--4). Thus, Myers "does not criticize, discredit, or otherwise discourage" using more than 25%. In re Fulton, 391 F.3d at 1201. Accordingly, Appellants have not shown error in the Examiner's finding that Myers does not teach away from the use of more than 25% by weight of the functionalized thermoplastic polymer. Appellants also contend that Myers in view of Tse "fails to disclose with sufficient specificity the claimed functionalized polymer component range of 35 to 80% of the total weight of the polymeric material" (Appeal 5 Appeal2014-005136 Application 12/493,276 Br. 9). Appellants argue that Tse discloses an adhesive composition having a functionalized polymer component present in an amount from 1 to 99.9%, and thus provides that essentially any amount of functionalized polymer component may be used (Appeal Br. 10). Therefore, according to Appellants, a person of ordinary skill in the art would not reasonably have considered using the claimed range of 35% to 80% (id.). However, as found by the Examiner, Tse specifically teaches the use of 30% to 80% of the functionalized polymer (Tse, i-f 205), which almost exactly co-extensive with the range of 35% to 80% recited in the claim. Therefore, we determine that Tse does disclose with sufficiently specificity the amount of functionalized polymer recited in the claims. Moreover, we note that the sufficient specificity requirement referred to by Appellants is applicable to the issue of anticipation, rather than obviousness. See, e.g., Atofina v. Great Lakes Chemical Corp., 441F.3d991, 999 (Fed. Cir. 2006)( explaining that "no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim.") Next, Appellants argue that the claimed range provides unexpected results not present in the cited art (Appeal Br. 8-12). In order for a showing of "unexpected results" to be probative evidence of non-obviousness, it falls upon the applicant to at least establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the [closest] prior art, In re Klosak, 455 F .2d 1077, 59 CCP A 862 (1972); and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention, Id.; In re D 'Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971). 6 Appeal2014-005136 Application 12/493,276 In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (bold italics added). Appellants also must provide evidence of unexpected results commensurate in scope with the claimed subject matter. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims."); In re Greenfield, 571 F .2d 1185, 1189 (CCP A 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Unexpected results is a factual determination. In re Mayne, 104 F.3d 1339, 1343 (Fed.Cir.1997). In this instance, the evidence relied upon by Appellants are statements in the Specification that having at least 26% by weight of the functionalized polymeric material produced a material which resisted lamination between the first and second layers and provided a second layer that was more abrasion resistant, while maintaining high filtration efficiency at a low pressure drop (Appeal Br. 9, citing Spec. i-fi-16, 34). We determine that the cited statements are insufficient to overcome the prima facie case of obviousness. First, Appellants' statements in the Specification or arguments in the Brief cannot take the place of any objective evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Second, Appellants have not provided factual evidence or statements showing that the entire range of 35% to 80% recited in claim 1 produces unexpected results. Thus, the cited 7 Appeal2014-005136 Application 12/493,276 statements, even if credited, would not address entire limitations in the claims. Third, Appellants have not provided factual data or information to illustrate the alleged improvement in results at 35% versus about 25%, the closest prior art. Without such a showing, the allegation of improved results at that cut-off point is unpersuasive. Finally, even if there were factual data showing an improvement at that percentage cut-off, Appellants have not presented persuasive evidence that such results would have been considered surprising or unexpected by one of ordinary skill in the art. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that Geisler failed to carry the burden of establishing unexpected results because "Geisler made no such assertion [of unexpected results] in his application ... [or] submit[ ted] any such statement [of unexpected results] through other evidentiary submissions, such as an affidavit or declaration .... ") (citing In re Orfeo, 440 F.2d 439, 441(CCPA1971)). Appellants also assert that Tse is not directed to an adhesive for preventing delamination resistance between layers, alleging that "Tse admits that adhesive materials do not provide inherent delamination resistance between layers" (Appeal Br. 11 ). However, Tse makes no such explicit admission, and the Examiner has provided an explanation of why it would be reasonable to expect that the Tse adhesive composition would "provide delamination resistance" between the layers (Ans. 6). Appellants have not persuasively challenged this explanation. Finally, Appellants argue that the Examiner has failed to provide a reason to modify the composition of Myers to increase the amount of functionalized polymeric component within a range of 35% to 80% as 8 Appeal2014-005136 Application 12/493,276 required by claim 1 (Appeal Br. 12-14). In order to make out a prima facie case of obviousness, 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). In this instance, the Examiner has explained why a person of skill in the art would have considered the weight percentage of the functionalized polymeric component to be a result effective variable (Ans. 4). Discovery of an optimum value of a result effective variable is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA 1955). Thus, we conclude that the Examiner has met his burden in providing a reason to modify the composition of Myers. Appellants present essentially identical arguments urging reversal of the rejection of claim 17. These arguments are not persuasive for the reasons set forth above. Though claim 1 7 limits the range of functionalized polymeric component from about 35% to about 60% (rather than 80%, as set forth in claim 1 ), Tse discloses a range of 30% to 80%, which significantly overlaps with the range in claim 17. Thus, without a showing of unexpected results for an upper limit of 60%, as explained supra, Appellants do not show error in the rejection. Finally, Appellants present separate arguments with respect to claims 18-20, which are the subject of Rejection II, arguing that the Examiner has not provided a rational basis for supporting a conclusion of obviousness. These arguments are not persuasive, for the reasons articulated by the Examiner (Ans. 7). 9 Appeal2014-005136 Application 12/493,276 CONCLUSION We AFFIRM the rejection of claims 1, 2, 4--8, 11-17, 21, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Myers in view of Tse. We AFFIRM the rejection of claims 18-20 under 35 U.S.C. § 103(a) as being unpatentable over Myers in view of Tse as evidenced by Pike. 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)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation