2020004880 (P.T.A.B. Jul. 30, 2021)

3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals BoardJul 30, 2021

2020004880 (P.T.A.B. Jul. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/022,842 03/17/2016 Claude Lavallée 74569US011 5533 32692 7590 07/30/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER CAI, WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 07/30/2021 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLAUDE LAVALLÉE and SHIREEN A. MAMUN Appeal 2020-004880 Application 15/022,842 Technology Center 1700 Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 1 In this Decision, we refer to the Specification filed March 17, 2016 (“Spec.”); the Final Office Action dated May 1, 2019 (“Final Act.”); the Appeal Brief filed March 3, 2020 (“Appeal Br.”); and the Examiner’s Answer dated April 13, 2020 (“Ans.”). Appeal 2020-004880 Application 15/022,842 2 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–11, 19, 21, 23, and 26–28.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a composition. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composition comprising: a polyolefin made by homogenous catalysis; a polymer processing additive selected from the group consisting of a fluoropolymer and a silicone-containing polymer; and a polymer processing additive synergist comprising a polyethylene glycol and a metal salt of an aliphatic carboxylic acid, an aliphatic sulfonic acid, or an alkyl sulfate, wherein the polyethylene glycol is present at least at 85% by weight, based on the total weight of the polymer processing additive synergist. Appeal Br. 11 (Claims App.). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant identifies the real party in interest as 3M Company (formerly known as Minnesota Mining and Manufacturing Company) and its affiliate 3M Innovative Properties Company. Appeal Br. 2. 3 Claims 1, 7, 22, and 26 are objected to by the Examiner. Final Act. 2, 4. We do not consider the objections in this appeal because an objection is a petitionable matter under 37 C.F.R. § 1.181 and is not within the jurisdiction of the Patent Trial and Appeal Board. See 37 C.F.R. § 1.181 (2019). Appeal 2020-004880 Application 15/022,842 3 REJECTIONS The Examiner maintains the following rejections on appeal: I. Claims 1–3, 5, 6, 8, 9, 11, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Lavallee4 and Bamberger;5 II. Claims 1, 2, 4, 7, 10, 21, 23, and 26–28 are rejected under 35 U.S.C. § 103 as unpatentable over Oriani6 and Bamberger. DISCUSSION After review of the cited evidence in light of the Appellant’s and the Examiner’s opposing positions, we determine that Appellant has not identified reversible error in the Examiner’s rejections. We therefore sustain the Examiner’s rejections for the reasons presented by the Examiner in the Final Office Action and Answer. In doing so, we adopt the Examiner’s well- reasoned, well-articulated response to arguments presented in the Answer, and add the following for emphasis. Rejection I – Obviousness over Lavallee and Bamberger Lavallee teaches claim 1’s composition including a linear low density polyethylene (LLDPE), a polyolefin made by homogenous catalysis, a fluoropolymer, polyethylene glycol (PEG), zinc stearate, and an antioxidant. Final Act. 2–3 (citing Lavallee ¶¶ 81–84, 108). 4 Lavallee et al., US 2010/0311906 A1, published Dec. 9, 2010. 5 Bamberger et al., WO 94/26816, published Nov. 24, 1994. 6 Oriani et al., US 2004/0192818 A1, published Sept. 30, 2004. Appeal 2020-004880 Application 15/022,842 4 Regarding claim 1’s recitation “made by homogenous catalysis,”7 the Examiner finds that Bamberger teaches LLDPEs made from metallocene catalysts have better properties than conventional LLDPEs. Final Act. 3 (citing Bamberger 1–3). Based on Bamberger’s teaching, the Examiner determines that it would have been obvious to one of ordinary skill in the art to use metallocene LLDPE in Lavallee’s composition for its beneficial properties. Final Act. 3. Appellant argues that a skilled artisan would understand that zinc stearate in Lavallee’s Example 6 is added to stabilize the polyolefin and would not have expected that zinc stearate would improve the thermal stability of the PEG. Appeal Br. 4. Appellant’s argument does not persuade us of reversible error in the Examiner’s rejection. Appellant does not dispute the Examiner’s finding that Lavallee teaches claim 1’s composition, including the combination of PEG and metal salts. See Appeal Br. 3–6. Because the compositions are the same, Lavallee’s composition, like claim 1’s composition, would have a higher thermal stability than PEG alone. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition.”). For the foregoing reasons and those the Examiner presents, we sustain the obviousness rejection of claims 1–3, 5, 6, 8, 9, 11, and 19. 7 Claim 1 is a composition claim. The recitation “made by homogenous catalysis” is a process limitation and thus not further limiting of claim 1. Appeal 2020-004880 Application 15/022,842 5 Rejection II – Obviousness over Oriani and Bamberger As with Rejection I, the Examiner finds that Oriani teaches claim 1’s composition. Final Act. 3 (citing Oriani ¶¶ 25, 27, 30). The Examiner finds that Oriani also teaches claim 1’s content of PEG, i.e., at least 85% by weight based on the total weight of PEG and metal salt. Id. (citing Oriani ¶ 30). Appellant argues that the formulations of Oriani’s examples, e.g., masterbatch MB-7 (Oriani ¶ 47 (Table 5)), include an amount of PEG that is “never higher than 80%.” Appeal Br. 8. Appellant also argues that the Examiner’s interpretation of Oriani’s paragraph 30 is erroneous because paragraph 30 refers to extrudable, not masterbatch compositions, and thus it cannot be relied upon to establish that Oriani’s composition includes 85% by weight PEG. Id. at 7–8. Appellant’s argument does not persuade us of reversible error in the Examiner’s rejection because Oriani’s teachings are not limited to the examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” (citations omitted)). Although Oriani’s paragraph 30 teaches that “the weight ratio of the interfacial agent to total fluoroelastomers in the extrudable compositions is typically between 5:1 to 1:2” (emphasis added), paragraph 30 also explicitly teaches the masterbatch compositions may contain an interfacial agent. Oriani ¶ 30. On this record, Appellant does not direct us to sufficient evidence that the weight ratio of interfacial agent to fluoroelastomers is different in the masterbatch and extrudable composition. Appeal 2020-004880 Application 15/022,842 6 For the foregoing reasons and those the Examiner presents, we sustain the obviousness rejection of claims 1, 2, 4, 7, 10, 21, 23, and 26–28. CONCLUSION The Examiner’s decision to reject claims 1–11, 19, 21, 23, and 26–28 is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 6, 8, 9, 11, 19 103 Lavallee, Bamberger 1–3, 5, 6, 8, 9, 11, 19 1, 2, 4, 7, 10, 21, 23, 26–28 103 Oriani, Bamberger 1, 2, 4, 7, 10, 21, 23, 26–28 Overall Outcome 1–11, 19, 21, 23, 26– 28 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED