ARKEMA FRANCE

Patent Trials and Appeals Board

Nov 3, 2020

2019005685 (P.T.A.B. Nov. 3, 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.
14/650,399 06/08/2015 Fabrice DOMINGUES DOS SANTOS ATOCM-0443 4135
23599 7590 11/03/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABRICE DOMINGUES DOS SANTOS,
THIERRY LANNUZEL, and SHIHAI ZHANG
____________

Appeal 2019-005685
Application 14/650,399
Technology Center 1700
____________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1–3, 5, 7–11, 14, and 15.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Arkema France as the real party in
interest. Appeal Brief, filed March 4, 2019 (“Appeal Br.”) 1.
2 Final Office Action, mailed November 2, 2018 (“Final Act.”).
3 Claims 16–22 have been withdrawn from consideration. Final Act. 2.
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STATEMENT OF THE CASE
Background
The subject matter on appeal relates to terpolymers obtained by
polymerizing vinylidene fluoride (VDF), trifluoroethylene (TrFE), and
chlorotrifluoroethylene (CTFE). Specification, filed June 8, 2015 (“Spec.”),
1:2–5. The Specification discloses that the elastic modulus of conventional
VDF and TrFE based polymers is relatively low and it would be desirable to
provide an electroactive VDF/TrFE-based polymer system having a higher
elastic modulus so the polymer can be easily manipulated and processed,
especially when in the form of very thin films. Id. at 4:23–5:4.
The Specification discloses a polymer comprising VDF, TrFE, and
CTFE, wherein the VDF to TrFE molar ratio in the polymer is 55:45 to
65:35 and the molar proportion of CTFE structural units in the polymer is
from 1.5 to 4.5%. Id. at 5:7–11.
Of the appealed claims, claim 1 is independent. Claim 1 is
representative of the subject matter on appeal, and reproduced below:
1. A polymer comprising vinylidene fluoride,
trifluoroethylene and chlorotrifluoroethylene structural units,
wherein the vinylidene fluoride-to-trifluoroethylene molar ratio
in the polymer is from 55:45 to 65:35, and the molar proportion
of chlorotrifluoroethylene structural units in the polymer is
from 3.6 to 4.5%.
Appeal Br. 9 (Claims App’x).
The References
Sakagami EP 0 039 231 A1 Nov. 4, 1981
Chung US 6,355,749 B1 Mar. 12, 2002
Zhang US 2002/0146567 A1 Oct. 10, 2002

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The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1, 2, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable
over Sakagami;
2. Claims 3, 5, 7, 8, 11, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Sakagami and Zhang;
3. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Sakagami and Chung;
4. Claims 1–3, 5, 7–11, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Sakagami and Zhang; and
5. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Sakagami, Zhang, and Chung.
Final Act. 2–10; Examiner’s Answer, dated May 17, 2019 (“Ans.”) 3–10.
OPINION
Rejection over Sakagami
The Examiner rejects claims 1, 2, 9, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Sakagami. Final Act. 3; Ans. 3. Appellant does not
present separate arguments for claims 2, 9, and 10, which depend from
claim 1. Appeal Br. 2–6. Thus, those claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Sakagami discloses a polymer composed of 30 to
85 mol% VDF and 10 to 65 mol% TrFE. Ans. 3. The Examiner calculates
that these ranges provide a VDF to TrFE molar ratio range of 89:11 to 32:68,
which encompasses the recited range of VDF to TrFE molar ratios. Id. The
Examiner finds Sakagami discloses that the polymer further includes 1 to 25
mol% CTFE, which overlaps the recited range for CTFE. Id. The Examiner
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concludes the claimed polymer composition would have been obvious due to
the overlapping ranges Sakagami discloses. Id.
Appellant contends that although Sakagami “only discloses broad
ranges of amount for the three monomer units forming the polymer,” those
amounts are for the monomers prior to polymerization that do not
necessarily represent the amounts of the corresponding structural units in the
final polymer. Appeal Br. 2. In response, the Examiner finds that
Sakagami’s Example 1 exhibits a yield of 90% and “[t]herefore, it would be
expected that the amounts of the monomers introduced at polymerization
would be similar to the amounts of the monomeric units in the final
product.” Ans. 10.
Appellant asserts in reply that the composition of structural units in
the final polymer is not related to the global yield of polymerization, but to
the reactivity of the monomers, and the reactivity of CTFE is much higher
than the reactivity of VDR or TrFE. Reply Br. 1–4. Based on this,
Appellant contends that one can infer that Sakagami’s Example 1 would
produce a polymer with a higher CTFE molar ratio than the one introduced
in the monomer phase and the polymer would have high compositional
heterogeneity. Id. at 4. Therefore, Appellant argues that Sakagami’s
Example 1 does not disclose a polymer having the claimed molar proportion
of CTFE. Id. at 5.
Appellant’s arguments are unpersuasive. Appellant’s arguments focus
on Sakagami’s Example 1, but do not address whether Sakagami’s monomer
ranges, which Appellant characterizes as “broad,” would produce a polymer
having the claimed composition. Indeed, even if the amount of CTFE in
Sakagami’s polymer would be higher than the amount of CTFE monomer
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before polymerization (e.g., due to the reactivity of CTFE, as Appellant
asserts), the CTFE range Sakagami discloses, which includes values as low
as 1 mol%, would still appear to provide CTFE amounts that overlap the
claimed range. A prima facie case of obviousness arises when the ranges of
a recited composition overlap the ranges disclosed in the prior art. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Appellant further argues that the recited polymer provides unexpected
results. Appeal Br. 2. Specifically, Appellant asserts that the Declaration by
Fabrice Domingues dos Santos (the “Declaration”) demonstrates that when
the amount of CTFE monomer units in the terpolymer increases beyond
3.5% (i.e., 3.6%), the material acts as a relaxor material, whereas
terpolymers having less CTFE act as classical ferroelectric materials. Id. at
2–5. Appellant contends that the claimed CTFE range of 3.6 to 4.5%
provides a terpolymer having relaxor behavior that also has an excellent
elastic modulus. Id. at 3.
Appellant further asserts that the Declaration’s Figure 3 (reproduced
below) provides a trend. Id. at 5.
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Figure 3 of the Declaration
Figure 3 shows the temperature at which a maximum dielectric constant was
reached for the eight compositions tested in the Declaration during a heating
phase and during a cooling phase at different tested frequencies. Declaration
¶¶ 19, 27. Appellant argues that “[e]ven though a single point is shown
within the compositional space recited in the claims, the data shows a clear
trend,” which would be a line connecting the points in Figure 3 to show the
relaxor behavior of the material, which changes with the concentration of
CTFE. Appeal Br. 5–6.
The Examiner finds that the Declaration provides only one example
(Terpo 4.4) within the scope of the claims and a trend has not been shown to
evidence a class of compounds having similar properties. Ans. 10–11. The
Examiner also states that molar ratio of VDF to TrFE must be considered in
addition to the molar proportion of CTFE. Id.
In response, Appellant asserts that the technical effect of the invention
has been sufficiently demonstrated because the claimed ranges “are actually
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very narrow.” Reply Br. 5. Appellant also argues that the Specification
provides two additional inventive examples, Examples 1 and 3, which
exhibit a combination of an elastic modulus above 0.6 MPa and an
electrostrictive strain at 25°C of 0.4% under an electric field gradient of 50
V/µm. Id. at 5–8.4
We agree with the Examiner that the asserted results are not
commensurate in scope with the claimed invention. A showing of
unexpected results generally must be commensurate in scope with a claimed
range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record
does not show that the improved performance would result if the weight-
percentages were varied within the claimed ranges. Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range.”). “Commensurate in scope” means that the evidence
provides a reasonable basis for concluding that untested embodiments
encompassed by the claims would behave in the same manner as a tested
embodiment. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
As the Examiner indicates, although the Declaration tested eight
compositions, only one (Terpo 4.4) had a CTFE content within claim 1’s
composition. This is evident in Appellant’s argument that “[a]s shown in
paragraphs 21 and 23 of the Declaration, there is a dramatic change in

4 When asserting the transition between classic and relaxor behavior as part
of the claimed polymer’s unexpected result, Appellant states “[t]he existence
of such transition for a poly(VDF-ter-TrFE-ter-CTFE) 61/34.6/4.4 mol%
was further demonstrated in Bargain & al. (see in particular section 3.2.b
‘Terpolymers with intermediate amount of CTFE’ and ‘Conclusion’).”
Reply Br. 6. It is unclear from the record whether Bargain is prior art and,
therefore, would have indicated that Appellant’s asserted transition of
classical to relaxor behavior would have been a predictable result.
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behavior between sample 3.5-r and 4.4-r, representative of the change from
3.5 to 4.4% CTFE.” Appeal Br. 3. Even assuming that a transition from
classical to relaxor behavior presents an unexpected result, composition
Terpo 4.4 alone does not provide a reasonable basis that the transition occurs
at a composition including 3.6% CTFE as well as other compositions the full
scope of claim 1 encompasses.
Further, Terpo 4.4 provides only a single VDF to TrFE molar ratio
amongst the range of VDF to TrFE molar ratios that claim 1 recites.
Although Examples 1 and 3 at page 19 of Appellant’s Specification may
provide other VDF to TrFE molar ratios and CTFE contents than Terpo 4.4,
Examples 1 and 3 were not tested for the same property and in the same way
as Terpo 4.4 in the Declaration. For instance, the electrostrictive strain
values for Examples 1 and 3 were determined at 25°C and a field gradient of
50 V/µm, whereas the temperatures at which Terpo 4.4’s maximum
dielectric occurred during a heating phase and a cooling phase and at various
tested frequencies were measured. Compare Reply Br. 5–6, with
Declaration ¶ 27. Therefore, Appellant does not show that Examples 1 and
3 provide the same type of data as the Declaration’s Terpo 4.4 and, as a
result, we cannot determine if the three data points support the same
conclusion.5
Based on the foregoing, the Appellants’ evidence of unexpected
results is entitled to little weight. Considering the evidence cited in the
Examiner’s rejection and Appellant’s asserted evidence of non-obviousness,
a preponderance of the evidence supports the Examiner’s obviousness

5 We also note that neither the Specification nor the Declaration discusses
electrostrictive strain as indicating an unexpected result.
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determination. Accordingly, we affirm the Examiner’s rejection of claims 1,
2, 9, and 10 under § 103(a) over Sakagami.
Rejection over Sakagami and Zhang
The Examiner rejects claims 3, 5, 7, 8, 11, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Sakagami and Zhang. Final Act. 4–6; Ans. 3–
6. Appellant presents arguments for claim 5, but does not present separate
arguments for claims 3, 7, 8, 11, and 14. Appeal Br. 6–7. Thus, those
claims stand or fall with claim 5. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 5 recites “[a] polymer comprising vinylidene fluoride,
trifluoroethylene and chlorotrifluoroethylene structural units, according to
claim 1, which is suitable for being formed into a film having an elastic
modulus of at least 0.6 GPa” and, therefore, depends from claim 1. Appeal
Br. 9 (Claims App’x).
For the rejection of claim 5, the Examiner finds that Sakagami does
not disclose that its polymer is suitable for being formed into a film having
an elastic modulus of at least 0.6 GPa. Ans. 4. The Examiner finds Zhang
discloses a terpolymer that includes VDF, TrFE, and CTFE and has an
elastic modulus of 0.5 GPa and 1 GPa. Id. The Examiner concludes it
would have been obvious to one of ordinary skill in the art to increase the
elastic modulus of Sakagami’s polymer in view of Zhang’s teachings to
obtain polymers that can provide higher elastic energy density and can
withstand high elastic strains. Id. at 4–5 (citing Zhang ¶¶ 25, 29).
Appellant argues that Zhang discloses an elastic modulus of 1 GPa for
only a terpolymer including VDF, TrFE, and chlorofluoroethylene (CFE),
which is a different polymer having different mechanical properties, and
thus does not teach how to achieve the claimed elastic modulus. Appeal
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Br. 7. Appellant contends that none of the applied references suggests
producing a polymer suitable for a film and increasing the polymer’s elastic
modulus up to a value of 0.6 GPa or more. Id.
Appellant’s arguments are unpersuasive. First, Appellant does not
appear to be addressing the Examiner’s rejection, which relies not on any
single reference but, rather, a combination of references—Sakagami and
Zhang—as teaching or suggesting the limitations of claim 5. See Ans. 4–5.
As the Examiner explains, Zhang discloses polymers that include VDF,
TrFE, and CTFE and, therefore, its disclosure is not limited to polymers that
include CFE. Ans. 11–12 (citing Zhang ¶¶ 26–27); see Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (a prior art disclosure is
not limited to its preferred or exemplified embodiments). The Examiner
further explains that Zhang discloses polymerizing the monomers, stretching
the polymer, and annealing the polymer to achieve an elastic energy density
and elastic modulus. Id. at 12 (citing Zhang ¶¶ 18, 25, 27). Thus, Zhang
teaches how to achieve a high elastic modulus for a terpolymer, including
one that uses the monomers VDF, TrFE, and CTFE. Zhang also teaches that
high modulus values are desirable for withstanding elastic strains. See
Zhang ¶ 29. As a result, Zhang’s teachings suggest how to achieve high
elastic modulus values, including the recited values, and provides a reason to
do so.
In addition, the Examiner finds, and Appellant does not dispute, that
claim 5’s recitation that the polymer “is suitable for being formed into a
film” is an intended use. Ans. 4, 12. In any event, Sakagami discloses that
its polymer may be formed into a film. Sakagami 3:21–25. Appellant,
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therefore, fails to identify a reversible error in the Examiner’s rejection of
claim 5.
Accordingly, we affirm the Examiner’s rejection of claims 3, 5, 7, 8,
11, and 14 under § 103(a) over Sakagami and Zhang.
Rejections over Sakagami and Chung, Sakagami and Zhang, and
Sakagami, Zhang, and Chung
The Examiner rejects claim 15 under 35 U.S.C. § 103(a) over
Sakagami and Chung, claims 1–3, 5, 7–11, and 14 under 35 U.S.C. § 103(a)
over Sakagami and Zhang, and claim 15 under 35 U.S.C. § 103(a) over
Sakagami, Zhang, and Chung.
Appellant points to the arguments we discuss above for the rejection
of claim 1 over Sakagami and argues the additional references do not cure
Sakagami’s deficiencies. Appeal Br. 6, 8.6 For the reasons we provide with
regard to the rejection of claim 1 over Sakagami, we find no deficiencies in
the rejection of claim 1 that require curing by Chung or Zhang.
Accordingly, we affirm the Examiner’s rejections of claims 1–3, 5, 7–
11, 14, and 15 under § 103 over Sakagami and Chung, Sakagami and Zhang,
and Sakagami, Zhang, and Chung.
CONCLUSION
We affirm the Examiner’s rejections of claims 1–3, 5, 7–11, 14, and
15 under 35 U.S.C. § 103(a).

6 Appellant also argues “Zhang is primarily directed to terpolymers in which
CFE is a monomer, a material which does not qualify as one of the
monomers in accordance with the present invention” and, therefore, the
proposed combination does not suggest the present claims. Appeal Br. 6.
As we discuss above with regard to the rejection of claim 5 over Sakagami
and Zhang, Zhang also discloses terpolymers that include CTFE. Thus,
Appellant’s argument is not persuasive.
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In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 9, 10 103(a) Sakagami 1, 2, 9, 10
3, 5, 7, 8, 11,
14
103(a) Sakagami, Zhang 3, 5, 7, 8,
11, 14

15 103(a) Sakagami, Chung 15
1–3, 5, 7–11,
14
103(a) Sakagami, Zhang 1–3, 5, 7–
11, 14

15 103(a) Sakagami, Zhang,
Chung
15
Overall
Outcome
1–3, 5, 7–
11, 14, 15

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