Ex Parte Shuler et al

Patent Trial and Appeal Board

Jul 24, 2018

12796747 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/796,747 06/09/2010 Joe Shuler
25264 7590 07/26/2018
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
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.
COS-1223 RCE 3472
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
tammy.brzozowski@total.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE SHULER, JON TIPPET, JOHN GAUSTAD, and
JOSE SOSA1
Appeal2017-002757
Application 12/796,747
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 8-13, 15, and 18-29. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to processes for forming foamed
polystyrene articles, and to the associated articles themselves. E.g.,
Spec. ,r 1; Claims 8, 9. Claim 8 is reproduced below from page 31 (Claims
Appendix) of the Appeal Brief (some formatting added):
1 According to the Appellants, the real party in interest is FINA
TECHNOLOGY, INC. App. Br. 1.
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8. A process of forming foamed polystyrene articles comprising:
heating and mixing a formed polystyrene with a blowing agent
and a plasticizer in an extruder,
drawing strands of extrusion polystyrene from the extruder
through perforations in a die, and
cutting the strands of extrusion polystyrene into pellets of the
extrusion polystyrene;
wherein the formed polystyrene exhibits
a molecular weight (Mw) of from about 100,000 Daltons
to about 300,000 Daltons; and
a melt flow index of from at least 23 g/10 min and up to
about 30 g/10 min as measured by ASTM D 1238 at 200°C
and a load of 5 kg;
forming the extrusion polystyrene into an expanded polystyrene
in a single stage process utilizing a single expansion cycle,
wherein the expanded polystyrene exhibits a density ranging
from 0.8 lb/ft3 to 10 lb/ft3; and
forming the expanded polystyrene into a foamed article.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 8-13, 15, 18, 19, and 22-26 over Walter (US 5,118,718,
issued June 2, 1992), Applicant Admitted Prior Art (AAPA) or Anderlind
(US 5,267,845, issued Dec. 7, 1993), and Godfrin (US 5,071,882, issued
Dec. 10, 1991);
2. Claims 20, 21, and 27-29 over Walter, AAPA or Anderlind,
Godfrin, Tusim (US 4,866,098, issued Sept. 12, 1989), and Kajimura (US
3,994,840, issued Nov. 30, 1976).
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below;
in the Office Actions dated March 13, 2012, July 6, 2012, April 22, 2014,
September 3, 2014, April 2, 2015, and July 20, 2015 2; and in the Examiner's
Answer.
Rejection 1
Although the Appeal Brief includes subheaders purporting to
separately address a variety of claims, the Appellants present distinct
arguments only for claims 8, 15, 18, and 19. We select claim 8 as
representative of the claims not separately argued, and those claims will
stand or fall with claim 8. We separately address claims 15, 18, and 19
below.
Claim 8.
The Examiner finds that Anderlind and the AAP A each disclose
continuous extrusion processes for forming polystyrene (i.e., heating and
2 Several Office Actions are referenced here because each Office Action
maintains the previously stated rejections for "reasons of record incorporated
herein by reference" and provides additional analysis responsive to
arguments raised by the Appellants, thereby iteratively building upon the
previous Office Actions. A complete statement of the rejection does not
appear in the Final Action dated July 20, 2015. The Examiner's original
discussion of primary reference Walter appears in the Office Action dated
March 13, 2012, in the context of a rejection under 35 U.S.C. § 102(b),
which appears to have been modified into a rejection under 35 U.S.C.
§ 103(a) in the Office Action dated April 22, 2014.
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mixing, drawing strands through a die, cutting into pellets, expanding the
polystyrene, and forming the polystyrene) that fall within the scope of claim
8. April 22, 2014, Office Action at 3--4. The Examiner acknowledges that
Walter teaches forming polystyrene by a batch process rather than by
extrusion, but finds that "it is well known in the art that expandable
polystyrene may be made by either batch process (as disclosed in Walter) or
by extrusion continuous process." Id. The Examiner determines that it
would have been obvious to use a continuous process such as that of
Anderlind or the AAPA to form Walter's polystyrene beads. Id.
The Examiner finds that Walter discloses expanded polystyrene
having a density of "from 0.005 to 0.1 g/cm3, or from about 0.312 lb/ft3 to
about 6.24 lb/ft3," which overlaps the claimed range of 0.8 lb/ft3 to 10 lb/ft3.
April 2, 2015, Office Action at 2-3. The Examiner also finds that "varying
the density of the foams is well known in the art by varying the processing
conditions," and further finds that "Walter expressly discloses using a range
of amounts of the foaming agent, each different amount results in different
foam densities." Id. (internal citation omitted).
The Examiner finds that Walter teaches polystyrenes with molecular
weights "between 180,000 to 26[0],000 which overlaps with the claimed
molecular weight and the melt flow index (MFI) is disclosed as between 7.5
to 3[0] g/10 min." March 13, 2012, Office Action at 3. The Examiner
acknowledges that Walter's disclosed MFI is measured under different
conditions than those recited by claim 8, but finds that, "if measured at the
conditions as measured in the instant specification," Walter's MFI would be
higher and continue to encompass or overlap the claimed MFI range. Id.
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With respect to the requirement that the extruded polystyrene is
expanded "in a single stage process utilizing a single expansion cycle" to
form a "polystyrene exhibit[ing] a density ranging from 0.8 lb/ft3 to 10
lb/ft3," the Examiner finds that "Walter expressly discloses that the pre-
expanded beads may be fully foamed by conventional process, which
conventional process, as well known in the art, includes a single step
foaming and molding pre-foamed beads." April 22, 2014, Office Action at
4. The Examiner also finds that Walter teaches or suggests a process falling
within the scope of claim 8 because Walter "expressly discloses that the
density of the fully formed foamed molded article is the same as the density
of the pre-foamed beads, i.e., from 0.005 to 0.1 g/cm3." Sept. 3, 2014,
Office Action at 2. From this, the Examiner infers that, if the prefoamed
polystyrene (formed by single-stage expansion) and the fully foamed
polystyrene have the same density, then no further expansion has taken place
in route from the "prefoamed" polystyrene to the "fully foamed"
polystyrene. Id.
In view of those findings, the Examiner determines that the subject
matter of claim 8 would have been obvious to a person of ordinary skill in
the art.
The Appellants first argue that "[n]one of Walter, Godfrin, or
Anderlind teaches, discloses or suggests" a "single expansion step from an
extrusion polystyrene, having a blowing agent and a plasticizer, to an
expanded polystyrene." App. Br. 14; see also Reply Br. 3.
That argument is not persuasive. See In re Keller, 642 F.2d 413, 426
(CCP A 1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
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references."). As set forth above, the Examiner relies on Anderlind and/or
the AAPA as disclosing the steps for producing an extrusion polystyrene, on
Godfrin and Walter as disclosing a single expansion step, and on Walter as
disclosing polystyrenes having the properties recited by claim 8. The fact
that Walter and Godfrin may not explicitly teach forming the polystyrene by
die extrusion, see App. Br. 14, is not indicative of error. The Appellants do
not dispute the Examiner's findings that Anderlind teaches extrusion of
polystyrene beads, that "it is well known in the art that expandable
polystyrene may be made by either batch process (as disclosed in Walter) or
by extrusion continuous process," or that it would have been obvious to use
polystyrene beads produced from either a batch process or a continuous
extrusion process in Walter. See April 22, 2014, Office Action at 3--4.
The Appellants' arguments concerning whether the specific working
examples of Walter fall within the scope of claim 8, see App. Br. 15-18;
Reply Br. 7, are likewise unpersuasive. As the Examiner explains in the
Answer, the MFI in Walter's examples was measured under different
conditions than the conditions recited in claim 8, so the MFis in Walter's
table cannot be directly compared to the claimed MFI. See Ans. 5---6. In any
event, "a reference is not limited to the disclosure of specific working
examples." See In re Mills, 470 F.2d 649, 651 (CCPA 1972). The
Appellants have not shown error in the Examiner's findings (1) that Walter
teaches a density range that substantially overlaps the claimed density range
(Walter: 0.312 lb/ft3 to about 6.24 lb/ft3; Claim 8: 0.8 lb/ft3 to 10 lb/ft3), or
(2) that Walter teaches molecular weights and melt flow indices that overlap
the claimed ranges, notwithstanding the fact that Walter discloses slightly
different measurement conditions. See March 13, 2012, Office Action at 3;
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Ans. 7 ("Given the SAME molecular weights disclosed in Walter as in the
instant specification ... and in view of appellants disclosure confirming
known correlation ofMFI and Mw, it is not seen how the polystyrenes
disclosed by Walter can possibl[y] exhibit MFI that do not correspond to the
claimed MFI .... "); cf In re Best, 562 F.2d 1252, 1255 (CCP A 1977)
("Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on
'prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO' s
inability to manufacture products or to obtain and compare prior art
products.").
The Appellants' argument that "[t]he Examiner fails to articulate a
reason why one skilled in the art would be motivated to both select claimed
Mw from the 'whole range' of Mw values in Walter; and select the claimed
MFI from the 'whole range' of MFI values in Walter," App. Br. 19, is also
unpersuasive. As set forth above, the Appellants have not shown error in the
Examiner's findings that Walter discloses Mw and MFI ranges that
substantially overlap the claimed ranges. The prior art's disclosure of Mw
and MFI values that substantially overlap the claimed ranges is sufficient
motivation for a person of ordinary skill to select values that fall within the
disclosed ranges. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
("[E]ven a slight overlap in range establishes a prima facie case of
obviousness."); cf Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) ("That the [prior art] discloses a multitude of effective
combinations does not render any particular formulation less obvious."). In
this case, the Appellants have not persuasively rebutted the prima facie case
established by the overlapping ranges.
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To the extent that the Appellants argue that the prior art does not teach
or suggest the requirement of claim 8 that the extrusion polystyrene be
"form[ ed] ... into an expanded polystyrene in a single stage process
utilizing a single expansion cycle" prior to "forming the expanded
polystyrene into a foamed article," the Appellants have not persuasively
identified reversible error in the Examiner's analysis of those limitations.
The claim requires "forming the extrusion polystyrene into an expanded
polystyrene in a single stage process utilizing a single expansion cycle,
wherein the expanded polystyrene exhibits a density ranging from 0.8 lb/ft3
to 10 lb/ft3" before "forming the expanded polystyrene into a foamed
article." Walter teaches that unexpanded polystyrene beads can be
"prefoamed by conventional methods" to "a density of from 0.005 to 0.1
g/cm3." Walter at 3:48---62. The Examiner finds, and the Appellants do not
dispute, that the density range taught by Walter corresponds to 0.312 lb/ft3 to
about 6.24 lb/ft3, which substantially overlaps the claimed range of 0.8 lb/ft3
to 10 lb/ft3• See April 2, 2015, Office Action at 2-3. Nor do the Appellants
persuasively dispute the Examiner's finding that single stage expansion is a
"conventional method" as contemplated by Walter. See April 22, 2014,
Office Action at 4 (citing Godfrin at 3: 19-34). Thus, the record supports the
Examiner's finding that the combined prior art teaches or suggests a
prefoamed polystyrene with a density range that overlaps the claimed
density range, formed by conventional methods including single stage
expans10n.
Walter teaches or suggests that any additional foaming is either
optional ("[t]he prefoamed particles can then be fully foamed") and/or that it
does not necessarily require further expansion. Walter at 3:48---62 (teaching
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densities for the "prefoamed" article that are the same as the disclosed
densities for the "fully foamed" article, reasonably suggesting prefoamed
and fully foamed articles that have the same density and which, therefore,
have not undergone additional expansion in route from being "prefoamed"
to being "fully foamed"). The Appellants have not persuasively challenged
the Examiner's finding that a "prefoamed" article that has the same density
as a "fully foamed" article has not undergone further expansion.
Even were we to assume arguendo that additional expansion is
required in route from Walter's "prefoamed" polystyrene to its "fully
foamed" polystyrene, the Appellants have not persuasively shown error in
the Examiner's determination that such would still fall within the scope of
claim 8. The steps of claim 8 are introduced with a "comprising" transition,
indicating that steps beyond those expressly recited are not precluded. As
set forth above, Walter teaches or suggests a single-stage prefoaming
expansion step that produces a polystyrene having a density that overlaps the
claimed density range. Even if some additional expansion occurs in a
subsequent step, the Appellants have not persuasively argued that such
would be precluded from the method of claim 8. In other words, the
"forming ... in a single stage process" limitation is reasonably interpreted to
encompass the prefoaming step taught or suggested by Walter, which
suggests a single stage process to produce an expanded polystyrene having a
density range that overlaps the claimed density range. Cf In re Zietz, 893
F.2d 319, 321 (Fed. Cir. 1989) ("[D]uring patent prosecution when claims
can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.").
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On this record, the arguments presented by the Appellants do not
persuade us of reversible rejection in the Examiner's rejection of claim 8.
See 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 .... ").
Claims 15, 18, and 19.
Claims 15, 18, and 19 depend from claim 8 and narrow the Mw range
recited by claim 8. Claim 15 recites an Mw of "about 145,000 Daltons to
about 200,000 Daltons," claim 18 recites "about 145,000 Daltons to about
220,000 Daltons," and claim 19 recites "about 100,000 Daltons to about
145,000 Daltons."
Walter teaches molecular weights for its styrene polymers of
"generally from 150 000 to 300 000, preferably from 180 000 to 260 000."
Walter at 2:37-39.
With respect to each of claims 15, 18, and 19, the Appellants repeat
the arguments discussed above concerning Walter's working examples. See
App. Br. 22. Those arguments are not persuasive for the reasons stated
above.
With respect to claim 19, the Appellants argue that "Walter discloses
an Mw of at least 150,000, and does not teach or suggest an Mw of from
about 100,000 Daltons to about 145,000 Daltons." Id. That argument is not
persuasive because it does not meaningfully address the Examiner's
analysis. The Examiner acknowledges that "about 145,000" does not
literally fall within the scope of the range disclosed by Walter. See Sept. 3,
2014, Office Action at 3. However, the Examiner finds that the subject
matter of claim 19 nevertheless would have been obvious to a person of
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ordinary skill in the art because 145,000 is "so close to the range disclosed
by Walter that one of ordinary skill in the art would expect substantially
similar properties of the claimed and disclosed components." Id.; see also In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("We have also held that
a prima facie case of obviousness exists when the claimed range and the
prior art range do not overlap but are close enough such that one skilled in
the art would have expected them to have the same properties." ( citing
Titanium Metals, 778 F.2d at 783)); see also In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990) ("The law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims ... [ and] in such a situation, the applicant must
show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range."
(citations omitted)). In the Answer, the Examiner further explains that use
of the word "about" in claim 19 permits some variation beyond 145,000. 3
Ans. 8-9. The Appellants' argument fails to address the Examiner's
rationale or otherwise show error in it. See Jung, 637 F.3d at 1365.
Rejection 2
Claim 20.
Claim 20 depends from claim 8 and recites an Mw of "from about
100,000 Daltons to about 125,000 Daltons." The Examiner acknowledges
that 125,000 Daltons is a "molecular weight lower than the Mw disclosed in
3 Because Walter provides no decimal point for its teaching of 150,000
molecular weight (Walter at 2:37-39), and uses the word "about," it is
reasonably understood to encompass numbers that would round to 150,000
(such as 145,000).
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Walter," but the Examiner finds that the "use of [polystyrene] of lower
molecular weight is known in the art of [ expanded polystyrene] as
evidence[d] by Tusim." Sept. 3, 2014, Office Action at 4. The Examiner
also finds that "dependency of the properties of the foams and molded
product on the Mw of the underlying polymers is well known in the art.
Thus use of PS with Mw lower than Mw disclosed in Walter would have
been obvious with reasonable expectation of success." Id.
The Appellants argue that "[t]he goal of Walter is to make
'expandable styrene polymers which are distinguished by a particularly high
expansion value,"' and that [t]he Examiner fails to establish that one skilled
in the art would have a reasonable expectation of success in achieving the
goal of Walter by replacing the polystyrene of Walter with the polystyrene
of Tusim .... " App. Br. 24--25.
That argument fails to identify reversible error in the Examiner's
rejection. As an initial matter, the Appellants fail to identify any disclosure
in Walter indicating that molecular weights of 150,000 or greater (as
opposed to some other feature such as polystyrene structure, blowing agent,
etc.) are critical to achieving a high expansion value. Additionally, Tusim
repeatedly states that its invention concerns "expandable" polymers. E.g.,
Tusim at Abstract. On this record, given that there is no dispute that
polystyrenes having an Mw that falls within the scope of the claim were
known as suitable for use in expandable polystyrenes ( e.g., Tusim at 2:46-
48), and there is no evidence or persuasive argument that a person of
ordinary skill in the art would have considered them unsuitable for use in
Walter's expandable polystyrene, the Appellants have not shown error in the
Examiner's rejection. See Jung, 637 F.3d at 1365; cf In re O'Farrell, 853
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F.2d 894, 903-904 (Fed. Cir. 1988) ("Obviousness does not require absolute
predictability of success .... all that is required is a reasonable expectation
of success."); cf also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21
(2007) (use of known element according to established function unlikely to
result in nonobvious subject matter).
Claim 21.
Claim 21 depends from claim 8 and further recites: "wherein the
expanded polystyrene exhibits a cell size ranging from about 80 microns to
about 250 microns."
The Examiner finds that "Walter does not disclose the cell size of the
resulted foamed molded articles thus implying that the foamed product can
be of any suitable cell size that is consistent wit[h] the density of the foams."
Sept. 3, 2014, Office Action at 4. The Examiner finds that Tusim teaches
that "it is well known in the art to include cell-size regulating additives to
obtain foam with any desired cell size and to obtain[] foam of uniform cell
size. Therefore, any particular cell size may be achieved by using
nucleating/cell-size regulating additives." Id. The Examiner further finds
that Kajimura teaches that cell size influences properties of the foam, and
how to achieve desired cell sizes, and, therefore, that "the claimed size
would have been obvious to achieve [a] foamed product of desired
properties." Id. at 4--5.
The Appellants argue that "Tusim does not teach that 'any particular
cell size may be achieved' using such additives," and that Tusim does not
expressly teach the claimed cell size. App. Br. 25. The Appellants also
argue that the claimed cell size would not be inherent in Walter, and that
"the Examiner's assertion that 'the claimed size would have been obvious to
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achieve foamed product of desired properties' fails to address how such a
cell size would be achieved in Walter." Id. at 26-27.
Those arguments are not persuasive. The record supports ( and the
Appellants do not meaningfully dispute) the Examiner's finding that cell
size is a known result effective variable, and that various methods of
achieving desired cell sizes were known in the art. E.g., Kajimura at col. 2;
Tusim at 3:4--12. Thus, we agree with the Examiner that a person of
ordinary skill in the art would have been motivated to achieve desired cell
sizes, including those falling within the scope of claim 21, using known
methods, to achieve desired results. See In re Applied Materials, Inc., 692
F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective."); see also See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
("[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation."). The Appellants have not identified any criticality or
unexpected results associated with the claimed cell size, nor have the
Appellants argued that the known methods of controlling cell size would
have been inadequate to achieve the claimed cell size.
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 21. See Jung, 637 F.3d at 1365.
Claims 28 and 29.
The Appellants do not raise any new arguments with respect to claims
28 and 29. See App. Br. 27-30. Accordingly, we sustain the rejection of
those claims for reasons stated above.
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CONCLUSION
We AFFIRM the Examiner's rejections of claims 8-13, 15, and 18-
29.
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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