ARKEMA FRANCE

Patent Trials and Appeals Board

Apr 9, 2020

14683238 - (D) (P.T.A.B. Apr. 9, 2020)

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.
14/683,238 04/10/2015 Pascal NICOL 0078840-000170 7946
21839 7590 04/09/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
ROSEBACH, CHRISTINA H.W.
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte PASCAL NICOL and JACQUES COCHET
____________
Appeal 2019-003212
Application 14/683,238
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–10 and 13–20 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/683,238 filed Apr. 10, 2015; the Final Office Action dated Dec. 8, 2017
(“Final Act.”); the Appeal Brief filed Sept. 4, 2018 (“Appeal Br.”); the
Examiner’s Answer dated Jan. 15, 2019 (“Ans.”); and the Reply Brief filed
Mar. 15, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ARKEMA
FRANCE. Appeal Br. 2.
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Application 14/683,238
2
14/683,238, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
A hearing was held in this appeal on March 6, 2020.3
For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to processes for preparing
expandable polystyrene. Spec. 1. Aqueous suspension polymerization is a
known method for producing expandable polystyrene polymers. Spec. 1.
The process typically involves two or more monomer-soluble
polymerization initiators used with a rising stepwise, continuous, or
combination temperature profile. Spec. 1. Initiators are selected on the
basis of their half-life temperatures to provide a measured supply of radicals
at selected points along the temperature profile. Spec. 1. According to
Applicant, initiator decomposition performance for styrene polymerization is
described in terms of one hour half-life temperature, defined as that
temperature sufficient to cause decomposition of one half of the starting
concentration of initiator over a one hour time period. Spec. 1.
Traditionally, the process involves two different temperature stages
and two initiators. Spec. 1–2. Dibenzoyl peroxide (“BPO”) is often used as
the first stage initiator at a reaction temperature of about 82°C to 95°C in
traditional processes. Spec. 2. The second stage (finishing stage) uses a
different initiator at 115°C to 135°C to minimize residual monomer in the
expandable polystyrene. Spec. 2. Applicant describes characteristic
shortcomings of the traditional process as including long reaction times to

3 A transcript of the hearing was made of record on Mar. 30, 2020.
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Application 14/683,238
3
obtain adequate conversion in the first stage and relatively high finishing
temperatures. Spec. 2.
Applicant describes U.S. Patent 6, 608,150 to Wicher as disclosing an
improved process for preparation of expandable polystyrene that uses
intermediate temperature peroxides—those having one hour half-life
temperatures of 101°C to 111°C—as initiators. Spec. 2. Wicher discloses
using a blowing agent to render the polystyrene beads expandable. Spec. 2.
Applicant explains, however, that use of a blowing agent such as pentane
leads to a decrease in the molecular weight, which is undesired. Spec. 2–3.
According to Applicant, they discovered that using a specific initiator
peroxide allows acceleration of the preparation of expandable polystyrene
while using a blowing agent, and still obtaining polystyrene having a
particularly high molecular weight. Spec. 3. Applicant also reports the
discovery that continuous addition of the specific initiator peroxide during
the polymerization reaction can accelerate the preparation of expandable
polystyrene. Spec. 3.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, represents the claimed subject matter:
1. Process for the preparation of expandable polystyrene
comprising the following steps:
i°)a) preparing an aqueous suspension comprising styrene
monomer;
i°)b) heating the suspension at a polymerization
temperature ranging from 100°C to 120°C;
i°)c) adding continuously, during and/or after step i°)b) at
least one organic peroxide initiator of formula (I) 1-alkoxy-1-t-
alkylperoxycyclohexane in which the alkoxy group contains 1
to 4 carbon atoms, the t-alkyl group contains 4 to 12 carbon
atoms, and the cyclohexane ring may optionally be substituted
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with 1 to 3 alkyl groups, each independently having 1 to 3
carbon atoms, at most 40% by weight (%w/w) of the organic
peroxide based on the total weight of the peroxide used during
the polymerization, is present before step i°)b), while the
remainder is added continuously over a period of at least 1 hour
during or after step i°)b); and
ii°) adding a blowing agent selected from the group
consisting of alkanes having from 4 to 6 carbon atoms and
mixtures thereof.
Appeal Br. (Claims App. 1).
REFERENCES
The Examiner relies on the following prior art in rejecting claims 1–
10 and 13–20 as obvious under 35 U.S.C. § 103(a):
Name Reference Date
Wicher US 6,608,150 B1 Aug. 19, 2003
Boevenbrink et al.
(“Boevenbrink”)
US 7,132,485 B2 Nov. 7, 2006
Rolf-Dieter Klodt & Brad Gougeon (2003), Modern Styrenic
Polymers: Polystyrenes and Styrenic Copolymers, Particle
Foam Based on Expandable Polystyrene (EPS), John Wiley &
Sons, Ltd. (“Klodt”)

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REJECTIONS4,5
The Examiner maintains the rejection of claims 1–10 and 13–20 as
obvious under 35 U.S.C. § 103(a)6 over Wicher in view of Klodt, further in
view of Boevenbrink. Final Act. 3.
DISCUSSION
Appellant argues the claims as a group, but also argues separately for
the patentability of claims 13 and 14. Appeal Br. 4–13. We select claim 1,
the sole independent claim, as representative of the group. Claims 2–10 and
15–20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We address
Appellant’s additional arguments regarding claims 13 and 14 separately.
We review the appealed rejections for error based upon the issues
identified by Appellant 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 [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the

4 The Examiner objects to claims 11 and 12 as dependent on a rejected base
claim. Final Act. 7. The Examiner indicates that claims 11 and 12 would be
allowable if rewritten in independent form including all limitations of the
base claim and any intervening claims. Id.
5 The Examiner withdrew a nonstatutory double patenting rejection in view
of Appellant’s filing of a terminal disclaimer. Ans. 7.
6 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
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Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Claim 1
With respect to claim 1, the Examiner finds that Wicher describes a
process for producing an expandable polystyrene with initiators that fall
within the scope of claimed formula (I) at a temperature within the claimed
temperature range, and the use of blowing agents. Final Act. 4. Wicher is
silent regarding a specific blowing agent, but the Examiner finds that Klodt
describes a process of producing expandable polystyrene beads and blowing
agents including isopentanes, which fall within the claimed blowing agents.
Id. The Examiner finds that Boevenbrink describes adding the initiator of a
polystyrene suspension process continuously from the point at which most
preferably none of the monomer has been polymerized for at least an hour.
Id. The Examiner finds that Wicher and Boevenbrink both teach initiators
with a half-life of at most 60 minutes at the polymerization temperature. Id.
Boevenbrink states, according to the Examiner, that the continuous dosing of
its initiator results in a product with an adequate molecular weight and
shortened polymerization time. Id. at 4–5.
The Examiner determines that one of ordinary skill in the art at the
time of the invention would have been motivated to dose Wicher’s initiator
according to Boevenbrink’s continuous dosing schedule to produce a
product with adequate molecular weight in a shortened polymerization time.
First, Appellant argues that the skilled artisan would have had no
motivation to modify Wicher with the teachings of Boevenbrink. Appeal
Br. 5–8. Specifically, Appellant argues that Wicher’s objectives are
accomplished by either partially or entirely replacing conventional peroxide
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initiators like BPO with Wicher’s initiators, which have a one hour half-life
that is higher than that of BPO. Id. at 6. Appellant points out that Wicher
does not teach continuous or semi-continuous dosing of peroxide initiator.
Id. Appellant argues that Boevenbrink discloses a process of raising the
polymerization temperature and dosing initiator continuously or semi-
continuously. Id. at 6–7. Appellant contends that Boevenbrink, however,
does not teach use of an organic peroxide initiator of claimed formula (I),
but instead teaches use of BPO as the initiator. Id. at 7. Thus, Appellant
argues that Wicher teaches away from combining its conventional process
and unconventional peroxide initiator with Boevenbrink’s unconventional
process (raising polymerization temperature and continuous dosing of
initiator) and conventional peroxide initiator, e.g., BPO. Id. at 8.
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection.
As the Examiner points out, both Wicher and Boevenbrink address
suspension polymerization of polystyrene. Ans. 8. They are analogous art,
and Appellant does not argue otherwise. See Hearing Tr. 5:17–20.
It is an object of Wicher’s invention to employ specific organic
peroxide initiators in a specific half life temperature range—optionally in
combination with conventional peroxide initiators such as BPO—to produce
expandable styrene polymers at accelerated conversion rates. Wicher 3:5–9.
Boevenbrink teaches continuous or semi-continuous dosing of initiators such
as BPO at raised polymerization temperatures produces a product with an
average molecular weight similar to that of the conventional product in a
shortened polymerization time. Boevenbrink 3:56–4:3.
Wicher teaches employing organic peroxide initiators with a one hour
half life temperature range of 101°C–110°C (“intermediate” temperature
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initiators) substantially enhances the conversion rate over typical suspension
polymerization processes for styrene that use conventional first stage
initiators of lower half life temperatures like BPO or higher half life
temperatures like tertiary butyl peroxybenzoate (TBP). Wicher 3:5–9, 3:21–
25, 4:56–62. Wicher discloses that partially or completely replacing BPO or
other first stage initiators with similar half life temperature with an
“intermediate” temperature peroxide initiator allows use of “higher process
temperatures which materially benefit conversions rates.” Id. at 5:10–18.
The maximum temperatures disclosed in Wicher’s inventive Examples are
between 112°C and 120°C. Id. at Table 2, 12:37–13:13.
Boevenbrink teaches employing peroxide initiators such that when the
initiator is present in the reaction mixture at the polymerization temperature,
it decomposes for 50% or more on a molar basis in 60 minutes or less.
Boevenbrink 3:34–38. Boevenbrink discloses multiple preferred initiators,
which include BPO. See id. at Table 1. The majority of the Examples in
Boevenbrink employ a maximum polymerization temperature of 120°C. Id.
Boevenbrink discloses that the combination of raising the polymerization
temperature and dosing a conventional peroxide initiator shortens the
polymerization time while maintaining a desirable average molecular weight
of the product. Id. at 3:56–4:3.
Both references teach use of peroxide initiators and higher than
typical polymerization temperatures (Wicher recites 112°C to 120°C;
Boevenbrink recites 120°C (claim 1 recites 100°C to 120°C)) to polymerize
styrene in a shortened process that maintains a desirable average molecular
weight of the product. See Wicher 3:5–9, 3:21–25, 4:56–62; Boevenbrink
3:56–4:3, Table 1. Although the references employ different peroxide
initiators, Wicher states that BPO (as taught as an initiator in Boevenbrink)
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may be used in combination with its “intermediate” temperature peroxide
initiators. Wicher 3:21–25. Boevenbrink teaches the advantage of dosing
the initiator in combination with a higher polymerization temperature.
Boevenbrink 3:56–4:3.
The Examiner’s explanation of the reasons a person of ordinary skill
in the art would have had to combine the prior art teachings is sufficient
when an allowance is made for “the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). “[A] combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 401. Wicher’s process and
“intermediate” peroxide initiators and Boevenbrink’s dosing schedule are
such known methods. Appellant identifies nothing that suggests the results
of the combination of teachings from the references are unpredictable.7
Moreover, if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond that person’s skill. Id. “A court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. In this case, it is not. “Evidence of a
motivation to combine prior art references ‘may flow from the prior art
references themselves, the knowledge of one of ordinary skill in the art, or,
in some cases, from the nature of the problem to be solved.’” Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)(citation omitted).

7 The Hemelryck Declaration and its conclusions—which do not concern the
use of Boevenbrink’s initiator dosing—are discussed below.
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Indeed, the expert declaration of Bruno Van Hemelryck (“Hemelryck
Decl.”) submitted by Appellant supports combination of the processes and
initiators disclosed in the references. The declaration indicates that adding
unconventional initiators (such as those described in Wicher) all at once
causes a very large release of heat during the heating step, making control of
the reaction difficult. See Hemelryck Decl. ¶¶ 11–14. In light of the
concrete, specific teachings of Wicher and Boevenbrink, the skilled artisan
had motivation to seek every reasonable expectation of success in achieving
the claimed invention. See In re Kubin, 561 F.3d 1351, 1361 (Fed. Cir.
2009).
We disagree with Appellant’s argument that Wicher teaches away
from combining its teachings with those of Boevenbrink. See Appeal Br. 8.
Teaching away requires that a reference “criticize, discredit, or otherwise
discourage the solution claimed” by Appellant. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Wicher’s disclosure of partially or entirely replacing
conventional peroxide initiators like BPO with the initiators described in the
reference does not “criticize, discredit, or otherwise discourage” dosing the
initiators, as taught by Boevenbrink. See id. Teaching an alternative or
equivalent method, does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). “Whether or not a
reference teaches away from a claimed invention is a question of fact.” In re
Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995)). On the record before us, Wicher does not teach
away from a combination with Boevenbrink. “We will not read into a
reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).
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For the reasons above, we affirm the rejection of claim 1 as obvious
over Wicher, Klodt, and Boevenbrink. For the same reasons, we affirm the
rejection of dependent claims 2–10 and 15–20.
Claims 13 and 14
Appellant argues that claims 13 and 14 are patentable for reasons in
addition to those argued for claim 1. Appeal Br. 13. Claim 13 depends from
claim 1 and further requires “wherein the organic peroxide is added
continuously over a period of at least 2 hours.” Id. (Claims App. 3).
Claim 14 depends from claim 1 and further requires “wherein the organic
peroxide is added continuously over a period of 2–4 hours.” Id.
With regard to claims 13 and 14, the Examiner finds that Boevenbrink
describes adding the initiator continuously until all of the monomer is
polymerized, and Wicher describes the process as taking around two hours.
Final Act. 6.
Appellant argues that the portion of Wicher cited by the Examiner
(Wicher 12:11) is only part of a series of steps in Example 2 at which a
mixture is held for various amounts of time, ultimately amounting to five
hours total reaction time. Appeal Br. 13. Appellant argues that none of the
steps described continuous addition of an initiator. Id.
We note that claims 13 and 14 recite the amount of time over which
an initiator is continuously added. See Appeal Br. (Claims App. 3).
Boevenbrink teaches, inter alia, that an initiator is dosed continuously over a
period of at least 0.5, more preferably at least 1 hour. Boevenbrink 2:9–44.
Boevenbrink teaches that for larger quantities of polymer made in a
batchwise fashion, a continuous addition time of up to five hours or more is
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possible. Id. at 2:44–46. Thus, Boevenbrink teaches continuous addition of
initiator from at least 0.5 hours to 5 or more hours.
“A prima facie case of obviousness typically exists when the ranges
of the claimed composition overlap the ranges disclosed in the prior art.” In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Malagari,
499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed invention was
rendered prima facie obvious by a prior art reference whose disclosed range
(0.020-0.035% carbon) overlapped the claimed range (0.030-0.070%
carbon)). Appellant has not shown that the claimed range of time is critical,
thus does not overcome obviousness of the claimed time periods. See In re
Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997) (“When an applicant
seeks to overcome a prima facie case of obviousness by showing improved
performance in a range that is within or overlaps with a range disclosed in
the prior art, the applicant must ‘show that the [claimed] range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.’” (quoting In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990))).
We affirm the Examiner’s rejection of claims 13 and 14 as obvious
over Wicher, Klodt, and Boevenbrink.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1–10, 13–
20 103(a)
Wicher, Klodt,
Boevenbrink 1–10, 13–20
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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).
AFFIRMED