95000611 - (R) (P.T.A.B. Jun. 13, 2013)

Ex Parte 6,663,738 et al

Patent Trials and Appeals BoardJun 13, 2013

95000611 - (R) (P.T.A.B. Jun. 13, 2013)

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. 95/000,611 12/17/2010 6,663,738 HZC020 2698 27885 7590 07/21/2014 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 07/21/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ THE HAARTZ CORPORATION Requester and Respondent v. BENECKE-KALIKO AG Patent Owner and Appellant ____________ Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 Technology Center 3900 ____________ Before LORA M. GREEN, RICHARD M. LEBOVITZ, and JEFFREY N. FREDMAN, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING This is a Request for Rehearing (“Req. Reh’g”) by Patent Owner under § 41.77(b)(2) of the PTAB Decision of June 13, 2013 (“Decision” or “App. Dec.”) which affirmed the Examiner’s rejections of claims 1-6 and 8-17 under Grounds B- Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 2 F. App. Dec. 2-3. A response to the Request for Rehearing was filed by the Requester on July 25, 2013. First, Patent Owner points out that we erred in the Summary of the Decision by stating that Ground A was affirmed. Req. Reh’g 2. We agree this was an error because Ground A was reversed. Page 24 of the Decision is modified as follows: “We affirm the Examiner’s decision that claims 1-6 and 8-17 are not patentable in view of Grounds B through F supra.” We thus grant-in-part the Rehearing in order to correct this error. Patent Owner contends that the Decision erred in a number of its findings and conclusions. We address each below. Teaching away Claim 1 is directed to a “method for the preparation of a shaped body with an embossed surface from a mass including non-interlaced polyolefins, a stablizer [stabilizer] and optional further additives.” The method comprises “the preparation of a foil” and treating the foil to have a “gel content of approximately 15 to 65%.” In the rejection, the Examiner had found that the Scholz publication described all the steps of the claimed method, but not a foil with the claimed gel content. RAN 13-14. However, the Examiner found that it would have been obvious to make a foil with a gel content of 15-65% in view of the teachings of Kopytko, McKay, and Deanin. Id. at 14-17. With respect to McKay, Patent Owner argued that that McKay teaches away from the combination of Scholz and Kopytko. Appeal Br. 19-20. Patent Owner acknowledged that both Scholz and Kopytko describe “articles formed from compositions comprising crystalline materials such as EPM and EPDM” which Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 3 correspond to the claimed polyolefins. Id. at 20. However, Patent Owner argued that McKay teaches that EPM and EPDM have “’undesirable properties.’” Id. Patent Owner concluded that “McKay solves the problems associated with the materials of Scholz and Kopytko by using different materials.” Id. Citing In re Gurley and In re Fulton, the “teaching away” argument was rejected in the Decision. While such compositions, and methods of making them, might have been inferior, that alone does not by itself constitute a teaching away from using them, as long as the material was taught in the prior art as "usable" and had "been used" for the stated purpose. In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994). A "finding that prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). App. Dec. 11-12. In this Request for Rehearing, Patent Owner attempts to distinguish Gurley from the claimed subject matter: For example, the Federal Circuit stated that “[Gurley's] epoxy is not otherwise described or limited” beyond what was already disclosed in Yamaguchi. Id. at 552. Furthermore, “Gurley did not offer ... improved properties ...” of the epoxy. Id. at 553. In contrast, the gel content limitation in the present reexamination proceeding is a property of Appellant's polymer composition. “Gel content” refers to the weight percentage of polymer chains that are no longer soluble because they have been linked together to form an insoluble macromolecule. This property is not taught for the EPM and EPDM materials that McKay disparages and teaches away from. Req. Reh’g 3. To address this argument, we cite the pertinent portions of McKay: The inventive materials have a superior balance of properties, as compared to EPM and EPDM based materials. Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 4 McKay, Abstract While EPM and EPDM materials are advantageous in that they have applicability in higher temperature applications, EPM and EPDM elastomers suffer the disadvantages of low green strength (at lower ethylene contents), of a higher susceptibility of the cured elastomer to attack by oils than characteristic of styrene butadiene rubbers, and of resistance of the cured elastomer to surface modification. McKay at col. 2, ll. 8-15 (emphasis added). Examples of thermoplastic vulcanizates include EPM and EPDM thermoset materials distributed in a crystalline polypropylene matrix. Such thermoplastic vulcanizates are disadvantageous, in that they are susceptible to oil degradation. Thermoplastic vulcanizates which are more resistant to oil are desired. McKay at col. 2, ll. 31-36. Thus, EPM and EPDM materials are expressly described by McKay as “advantageous” in some circumstances, while possessing “disadvantages” in other circumstances. Indeed, Patent Owner pointed to this disclosure in their Brief. App. Br. 20. McKay therefore is not a universal teaching that EPM and EDM materials should not be used, particularly in those conditions where it would be considered “advantageous.” Moreover, while McKay teaches that its own materials have a “superior balance of properties,” this teaching does not address or dispute the teachings in Scholz (RAN 12) and Kopytko (id. at 14-15) are useful for the purposes disclosed in these publications, such as for an automobile dashboard (id. at 13) and films for the automobile industry (id. at 14). Consequently, we are not persuaded that one of ordinary skill in the art would have been discouraged by McKay from using EPM and EPDM materials. Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 5 Kopytko Patent Owner contends that Kopytko fails to teach a gel content within the claimed range. Reg. Reh’g 4. Patent Owner contends that the Board erroneously cited to Kopytko’s disclosure of “30% crosslinked” which is not equivalent to a gel content of 30%. Patent Owner argues: the term "gel content" refers to the weight percentage of polymer chains that are no longer soluble because they have been linked together to form an insoluble macromolecule. Gel content does not provide information about the number of crosslinks between one polymer chain and another. . . In comparison, degree of crosslinking describes the relative number of crosslinks present in a defined volume. Req. Reh’g 4. The Examiner’s findings in the RAN are as follows: Kopytko teaches that the degree of crosslinking is determined by measuring the gel content, and can be done according to DIN 16892 (see col. 2, lines 11-29). Indeed, in the note at the bottom of Table II at cols. 5-6, Kopytko states “Gel content = degree of crosslinking of the EPDM rubber in the TPE (DIN 16892).” In other words, as is well known in the art, the degree of crosslinking, i.e., the parameter that Scholz and Kopytko seek to optimize, is quantified by gel content. RAN 15. To rebut the Examiner’s finding, Patent Owner cited paragraph 4 of a declaration by Volker Hülsewede, dated February 8, 2012, in which he testified (Req. Reh’g 4): Gel content is not equal to degree of crosslinking. Gel content is also not merely determined by the degree of crosslinking. Instead, these are independent values. Gel content is measured as described in U.S. Patent No. 6,663,738. The degree of crosslinking must be determined in a completely separate way. Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 6 Patent Owner also argues “Kopytko’s ‘30%’ disclosure is for a single component of Kopytko's multi component film. This disclosure does not refer to an entire foil as required by the gel content range recited in the present claims.” Req. Reh’g 5. Even if we disregard the Examiner’s statement that 30% gel content is taught by Kopytko, this still does not undermine the rejection. McKay teaches gel content within the claimed range. RAN 12; App. Dec. 14 and 18-19 (FF8). Patent Owner did not identify a defect in McKay’s teaching about gel content. Thus, we find Patent Owner’s arguments unavailing. To the extent McKay’s gel content disclosure was not expressly discussed in Rejections B, C, E, and F, we make it clear that McKay’s teaching about gel content is applicable to all the obviousness rejections in which McKay is a part (Rejections B-F) since the Examiner had relied upon it for this purpose (RAN 14). Scholz Patent Owner argues that Scholz provides no motivation to select a different gel content. Req. Reh’g 6. Patent Owner contends “Scholz did not recognize gel content as a result-effective variable. Accordingly, a skilled artisan with knowledge of Scholz would not have sought out secondary references that disclose various gel contents at the time of invention.” Id. The Examiner cited McKay’s teaching that “characteristics of the substantially random interpolymer, such as molecular weight, molecular weight distribution, comonomer content” as evidence that gel content was a “was a well known . . . parameter” RAN 16; App. Dec. 18-19 (F8). Consequently, one of Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 7 ordinary skill in the art would have had reason to vary the gel content to achieve the desired amount of cross-linking. Id. Sitaram Declaration Patent Owner contends that the Sitaram Declaration was found to be defective, but was relied upon as a basis for the obviousness rejection set forth in Grounds D, E, and F. Req. Reh’g 6. The Decision affirmed the obviousness rejections without reference to the Sitaram Declaration. The Examiner also did not appear to explicitly rely on the Sitaram Declaration in making the obviousness rejections, but rather relied upon it making anticipation rejection over in Scholz. Consequently, we consider the issue involving the Sitaram Declaration to be moot. Summary The Rehearing is granted to the extent to modify the Summary of the Decision on Appeal. It is denied on all other grounds. REQUEST GRANTED-IN-PART Appeal 2013-001137 Reexamination Control 95/000,611 Patent 6,663,738 B2 8 Patent Owner: FAY SHARPE LLP 1228 Euclid A venue, 5th Floor The Halle Building Cleveland, OH 44115 Third Party Requester: Steven J. Grossman, Ph.D. GROSSMAN,TUCKER,PERREAULT & PFLEGER,PLLC 55 South Commercial Street Manchester, NH 03101