Ex Parte Midkiff et al

Patent Trial and Appeal Board

Mar 21, 2016

12493276 (P.T.A.B. Mar. 21, 2016)

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.
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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.")
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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
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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
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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).
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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
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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
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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).
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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
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