BOREALIS AG

Patent Trials and Appeals Board

Dec 10, 2020

2019003035 (P.T.A.B. Dec. 10, 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.
15/104,914 06/15/2016 Ola FAGRELL P9465US00 1034
168042 7590 12/10/2020
Insigne LLP
201 N. Union Street, Suite 110
Alexandria, VA 22314
EXAMINER
HARLAN, ROBERT D
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
docket@insigne.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLA FAGRELL, STEFAN HELLSTROM, BERNT-AKE
SULTAN, PERRY NYLANDER, MARTIN ANKER, KRISTIAN
DAHLEN, and ASA HERMANSSON
Appeal 2019-003035
Application 15/104,914
Technology Center 1700
Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY,
and MONTÉ T. SQUIRE, Administrative Patent Judges.
ANKENBRAND, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision2 to reject claims 12–21. 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(a). Appellant identifies the real party in interest as Borealis AG.
Appeal Br. filed Sept. 18, 2018 (“Appeal Br.”), 1.
2 Final Action, mailed Jan. 18, 2018 (“Final Act.”).
Appeal 2019-003035
Application 15/104,914

2
STATEMENT OF THE CASE
Background
The subject matter on appeal relates to a polymer composition useful
for coating a wire or cable. Specification, filed June 15, 2016 (“Spec.”),
1:4–6. The Specification discloses it is known that crosslinking polymers
improves characteristics like mechanical strength and heat resistance. Id. at
1:8–9. In order to crosslink polymers, crosslinkable groups such as silane
compounds, can be introduced to facilitate crosslinking in the presence of
acidic silanol condensation catalysts. Id. at 1:10–25. Several attributes are
preferable when crosslinking polymers in this manner; namely, catalyst and
polymer compatibility, effective crosslinking degree and speed, and scorch
free production of the polymer article. Id. at 1:26–2:3. Crosslinking the
polymer requires water, but using too much water will initiate crosslinking
early, during extrusion, and will yield undesired crosslinked gels (i.e.,
scorch). Id. at 2:3–8. The object of Appellant’s invention is to reduce the
free water content of the polymer composition, thereby enabling a higher
degree of control during manufacture of a polymer article and a greater
likelihood of scorch-free production. Id. at 2:14–16, 3:3–5. Appellant aims
to control free water content in the composition by using a silanol-containing
drying agent and by limiting the water content of the catalyst. Id. at
3:22–26, 4:21–26. Drying the catalyst and/or using a dry process whereby
the reactants are pre-dried are suitable methods, among others, for lowering
or limiting the catalyst water content. Id. at 4:21–26.
Of the appealed claims, independent claim 12, reproduced below, is
illustrative of the claimed subject matter:
Appeal 2019-003035
Application 15/104,914

3
12. A polymer composition, which is a silanol condensation
catalyst masterbatch, comprising a matrix, a silane containing
drying agent and at least one silanol condensation catalyst,
wherein each catalyst has a water content which is 0.1 % by
weight, or lower, and is selected from:
i) a compound of formula I
ArSO3H (I)
or a precursor thereof, wherein
Ar is an 1 to 4 alkyl groups substituted aryl, wherein the
aryl is phenyl or naphthyl, and wherein each alkyl group,
independently, is a linear or branched alkyl with 10 to 30
carbons, wherein the total number of carbons in the alkyl
groups is in the range of 20 to 80 carbons;
ii) a derivative of i) selected from the group consisting of
an anhydride, an ester, an acetylate, an epoxy blocked
ester and an amine salt thereof which is hydrolysable to
the corresponding compound of formula I; and
iii) a metal salt of i) wherein the metal ion is selected from
the group consisting of copper, aluminum, tin and zinc.
Appeal Br. 10 (Claims App’x).
The Reference
Carisson3 EP 1,862,500 A1 Dec. 5, 2007
The Rejection
The Examiner maintains, and Appellant requests our review of the
Examiner’s rejection of claims 12–21 under 35 U.S.C. § 102(a)(1) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as unpatentable
over Carisson.

3 Although the Examiner and Appellant refer to the reference as the ’500
disclosure, we refer to the reference by the surname of the first-named
inventor, Carisson, according to our established practice.
Appeal 2019-003035
Application 15/104,914

4
OPINION
The Examiner rejects claims 12–21 under 35 U.S.C. § 102(a)(1) as
anticipated by Carisson or, in the alternative, under 35 U.S.C. § 103 as
obvious over Carisson. Final Act. 3. Appellant argues the patentability of
the claims as a group. Appeal Br. 4–9. We select independent claim 12 as
representative of the group, and the remaining claims stand or fall with claim
12. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Carisson discloses a polymer composition, in
the form of a masterbatch, prepared using “an ethylene-acrylate copolymer,
a sulfonic acid catalyst, and a silane as a drying agent.” Final Act. 3 (citing
Carisson ¶¶ 10, 33–36, 64–67). The Examiner further finds that Carisson’s
drying agent deactivates “water present in the composition so that no
measureable free water content exists in the composition.” Id. The
Examiner finds that the “drying agent will allow the deactivation of the
remaining moisture present in the catalyst,” resulting in a polymer
composition identical to the composition recited in claim 12. Id. (emphasis
added). The Examiner determines that due to the substantially identical
polymer composition, one of ordinary skill in the art would have had a
“reasonable basis to believe that the low water content [of] the present
invention is inherent in the catalyst disclosed by [Carisson].” Id. at 4.
In the alternative, the Examiner determines that even if Carisson’s
disclosure does not inherently anticipate the low water content of each
catalyst, it “would have been obvious . . . to arrive at the claimed polymer
composition, because it appears that the claimed polymer compositions are
within the generic disclosure of [Carisson] and a person of ordinary skill in
Appeal 2019-003035
Application 15/104,914

5
the art would have expected all embodiment[s] of [Carisson] to have similar
properties.” Id. at 5–6.
Appellant argues Carisson does not anticipate or render obvious the
claims because Carisson fails to “identically disclose” each and every
element of the claims. Appeal Br. 5. Specifically, Appellant contends that
“according to the present claims, it is necessary that the water content is that
of the crosslinking catalyst, and not that of the composition as a whole.”
Reply Br. 2. Appellant thus asserts the Examiner improperly relies upon
Carisson’s drying agent to necessarily dry the catalyst to meet the limitation
“wherein each catalyst has a water content which is 0.1% by weight, or
lower.” Appeal Br. 5–6.
Regarding the Examiner’s obviousness findings, Appellant argues
“[o]bviousness cannot be predicated on what is unknown,” and that the
Examiner fails to establish obviousness because “the importance of a
pre-dried silanol condensation catalyst in formulating a catalyst master batch
was not known in [Carisson].” Id. at 7–8 (quoting Par Pharm., Inc. v. TWI
Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014)); see also id. at 6 (“The
present application indicates that pre-drying of the silanol condensation
catalyst(s) is advantageous in preventing scorching of the final polymer
product during extrusion.”).
Appellant’s arguments do not persuade us of error in the Examiner’s
rejection. Where patentability rests upon a property of the claimed invention
not disclosed within the prior art, the USPTO has no reasonable method of
determining whether there is, in fact, a patentable difference between the
prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Once the Examiner provides a reasonable basis to believe
Appeal 2019-003035
Application 15/104,914

6
that the characteristic is inherent, the burden shifts to the applicant to
provide that the prior art products do not necessarily possess the
characteristics. Id. at 1254–55 (discussing In re Swinehart, 439 F.2d 210
(CCPA 1971) and In re Ludtke, 441 F.2d 660 (CCPA 1971)).
Here, the Examiner correctly finds that Carisson discloses a
substantially identical polymer composition to the polymer composition
recited in claim 12. Final Act. 3–4; see Answer mailed Jan. 7, 2019
(“Ans.”), 7; Carisson ¶¶ 10, 33–36, 64–67. Even though Carisson does not
disclose the water content of the catalyst used in the composition, Carisson
discloses there is “no measurable free water content” in the polymer
composition after the drying agent is added. Carisson ¶ 12 (“The drying
agent reacts with the water present in the composition. After addition of the
drying agent to the . . . composition no measurable free water content exists
in the composition.”) (emphasis added); see Final Act. 3. That Carisson
does not specifically tie the water content to its catalyst is of no moment.
Because there is “no measurable free water content” in Carisson’s
composition, then the water content of a component of the composition (e.g.,
a catalyst) also necessarily will be less than no measurable free water
content. As a result, the Examiner provides a reasonable basis for finding
that Carisson’s catalyst has a water content of 0.1% by weight, or lower.
This shifts the burden to Appellant to prove that Carisson’s catalyst does not
necessarily have the recited water content.
In that regard, Appellant argues that, even if the Examiner establishes
a prima facie case of anticipation or obviousness, evidence within the
Specification rebuts such a showing. Appeal Br. 6. Appellant points to data
from the Specification to show that a final polymer composition without pre-
Appeal 2019-003035
Application 15/104,914

7
dried reactants may result in heavy scorch even when a drying agent is used.
Id. at 6–7 (citing Spec. 17–18). Specifically, Appellant directs us to an
example that shows two catalyst masterbatch formulations (an inventive and
comparative formulation) differing only in the water content present in the
catalyst component. Id. According to Appellant, the different water
contents yield different final products—only the polymer composition with a
pre-dried catalyst results in a final product with no scorch. Id. at 7 (citing
Spec. 17–18). Thus, Appellant asserts that “the mere presence of a drying
agent . . . is insufficient to reduce [the] water content of the remaining
master batch, and therefore the formulated polymer composition containing
the master batch, to a level which will avoid scorch of the extruded polymer
composition.” Id. (citation omitted); Reply Br. 2.
We do not find Appellant’s evidence persuasive. At most, the
Specification example provides one data point within the recited range
leading to one result (e.g., no scorch) and one data point outside of that
range leading to a different result (e.g., heavy scorch). See Spec. 17–18
(Tables 2 & 6). This evidence, however, is insufficient to show that
Carisson’s composition does not necessarily have the recited catalyst water
content, especially given Carisson’s disclosure that its composition contains
“no measurable free water content” and Carisson’s objective to remove
water to prevent scorch. Carisson ¶¶ 6–9, 12; see also id. ¶ 79 (explaining
that its composition avoids premature crosslinking in the extruder);
Spec. 2:6–8 (describing scorch pre-crosslinked gels formed during
extrusion).
Finally, Appellant argues that a water content of 0.13% by weight in
the catalyst (such as is used in the comparative example in the Specification
Appeal 2019-003035
Application 15/104,914

8
that results in heavy scorch), when used in Carisson’s composition
formulation, “may not have been a ‘measurable’ amount of water.” Reply
Br. 4–5 (citing Carisson ¶¶ 76–77). Appellant’s unsupported attorney
argument about what “may” have been measurable, however, is speculative
and cannot take the place of evidence in the record. In re Schulze, 346 F.2d
600, 602 (CCPA 1965); In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997).
Thus, Appellant’s argument is not persuasive of Examiner error.
Accordingly, we affirm the Examiner’s rejection of claims 12–21
under 35 U.S.C. § 102(a)(1) as anticipated by Carisson or, in the alternative,
under 35 U.S.C. § 103 as having been obvious over Carisson.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12–21 102(a)(1) Carisson 12–21
12–21 103 Carisson 12–21
Overall
Outcome
12–21

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