Ex Parte 7001951 et al

Board of Patent Appeals and Interferences

Nov 19, 2010

95000144 (B.P.A.I. Nov. 19, 2010)

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.
95/000,144 04/14/2006 7001951 060099-5002US 7001
9629 7590 11/19/2010
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/19/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

3M INNOVATIVE PROPERTIES COMPANY
Requester and Respondent
v.
Patent of DUPONT PERFORMANCE ELASTOMERS, L.L.C.
Patent Owner and Appellant
____________

Appeal 2010-009017
Reexamination Control 95/000,144
Patent 7,001,951 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.
Appeal 2010-009017
Reexamination Control 95/000,144
Patent 7,001,951 B2

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The Patent Owner (DuPont Performance Elastomers, LLC) appeals
from the Examiner’s final decision to reject claims 1, 6-9, and 15 (Appeal
Brief filed September 22, 2008, hereinafter “App. Br.”; Right of Appeal
Notice, hereinafter “RAN,” mailed June 23, 2008).2 The Requester (3M
Innovative Properties Company) is a party to this appeal under 35 U.S.C.
§ 315(b)(2) and disputes the Patent Owner’s contentions (Respondent Brief
filed on October 22, 2008, hereinafter “Resp. Br.”). We have jurisdiction
under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM.
The invention of the patent under reexamination (hereinafter ‘951
Patent) relates to fluoropolymer processing aids, which are combined with
interfacial agents, for use in the extrusion of non-fluorinated melt-
processable polymers (e.g., polyolefin extrusion processes for manufacturing
blown films) (col. 1, ll. 14-16; col. 8, ll. 14-67; col. 9, ll. 52-55). Claim 1 is
reproduced as follows:
1. A process aid composition for use in an extrudable
non-fluorinated melt processable polymer at an extrusion
temperature, said process aid composition comprising:
A) at least 1 weight percent, based on total weight of said
process aid composition, of a fluoroelastomer consisting
essentially of vinylidene fluoride and hexafluoropropylene
having a Mooney viscosity, measured per ASTM D1646 at
121° C., large rotor, condition ML 1+10 minutes, of 60 to 80;
and
B) at least 1 weight percent, based on total weight of said
process aid composition, of an interfacial agent in an amount no
more than a 5:1 weight ratio of interfacial agent to

2 Claims 2-5, 10, 11, and 16-20 have been indicated as patentable, while
claims 12-14 have been canceled (RAN, PTOL-2066).
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Patent 7,001,951 B2

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fluoroelastomer, said interfacial agent being a thermoplastic
polymer chemically distinct from said fluoroelastomer and said
interfacial agent having a melting point less than said extrusion
temperature.
(Underlining indicates amendment made during reexamination proceeding
relative to the original patent claim; Examiner’s Answer mailed January 15,
2010 at 17.)
The Examiner relied on the following as evidence of unpatentability:
Chapman 4,904,735 Feb. 27, 1990
Priester 5,587,429 Dec. 24, 1996
Dillon 6,380,313 B1 Apr. 30, 2002
K. Fronek, B. Johnson, T. Blong, J. Kunde & D. Duchesne, Tailoring
Processing Additives for High Density Polyethylene Applications, ANTEC
’90 1172-1177 (exact publication date unknown) (hereinafter “Fronek”).
The Patent Owner refers to a Declaration of Steven R. Oriani filed
May 11, 2007 (App. Br. 9). That Declaration, however, has not been entered
and is therefore not before us (Ans. 3; Decision on Petition mailed
December 31, 2009). The Patent Owner also relies on the disclosure of
United States Patent 4,855,360 issued to Duchesne on August 8, 1989, as
evidence in support of nonobviousness (App. Br. 11-13).
The Examiner rejected the claims as follows:
I. Claims 1, 6-9, and 15 as unpatentable over the combined
teachings of Dillon and Fronek (Ans. 6-8); and
II. Claims 1, 6-9, and 15 as unpatentable over the combined
teachings of Priester, Chapman, and Fronek (Ans. 8-11).

Appeal 2010-009017
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Patent 7,001,951 B2

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ISSUES
The Patent Owner has argued the claims together, focusing primarily
on Rejection I (App. Br. 10-16).3 Accordingly, we confine our discussion to
Rejection I as it relates to claim 1, with all other claims standing or falling
together with claim 1. See 37 C.F.R. § 41.67(c)(1)(vii).
The Examiner found that Dillon describes every limitation of claim 1
except “that the fluoroelastomer may have a Mooney Viscosity of 5 to 120
as opposed to the claimed range of 60 to 80” (Ans. 7). The Examiner
reasoned, however, that a person of ordinary skill in the art would have
found the claimed subject matter including the recited Mooney viscosity
range of “60 to 80” obvious in view of Dillon’s disclosure that the
fluoroelastomer may have a Mooney viscosity of 5 to 120 – a range that
“completely encompasses the claimed range” (Ans. 14). Furthermore, the
Examiner found that Fronek provides an additional reason for using a
fluoroelastomer having a Mooney viscosity of 60 to 80 (Ans. 8).
The Patent Owner does not dispute the Examiner’s factual findings
regarding Dillon’s teachings (App. Br. 10). The Patent Owner asserts,
however, that Fronek’s teachings regarding an optimum Mooney viscosity
of 60 to 80 cannot reasonably be extrapolated to Dillon because Fronek’s
processing aid, unlike that of Dillon, does not contain an interfacial agent
(App. Br. 10-12). According to the Patent Owner, an interfacial agent

3 With respect to Rejection II, the Patent Owner stated: “All of the
arguments presented above with respect to the deficiencies of the conclusion
of obviousness based on the teachings of Fronek are equally applicable to
the combination of references in this rejection . . .” (App. Br. 16).
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“profoundly affects the apparent viscosity of fluoroelastomer-polyethylene
blends” (App. Br. 10). Furthermore, the Patent Owner argues that Fronek
teaches away from the claimed invention (App. Br. 14).
Thus, the dispositive issues are:
(1) Did the Examiner provide some articulated reasoning with
some rational underpinning to support the conclusion that a person of
ordinary skill in the art would have found the claimed subject matter
including the recited Mooney viscosity of 60 to 80 obvious in view of the
applied prior art references?
(2) Did the Patent Owner demonstrate that Fronek teaches away
from the claimed invention?

FINDINGS OF FACT (“FF”)
1. Dillon discloses (col. 7, ll. 28-32):
The molecular weight of a fluoroelastomer
can be described by Mooney Viscosity (ML)
which was measured according to ASTM D1646,
using a 1 minute pre-heat and a 10 minute test at
121° C. Fluoroelastomers useful in the invention
have ML ranging from 5 to 120.
2. Dillon teaches that the poly(oxyalkylene) component of the
disclosed fluoropolymer additive composition provides a
“further improvement in melt processability” (column 9, ll. 56-
65; col. 10, l. 44-45; col. 13, ll. 1-16).
3. Dillon further discloses the fluoropolymer additive composition
was used in manufacturing blown polyethylene films (col. 11,
ll. 37-49).
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4. Fronek discloses processing additives for high density
polyethylene (1172).
5. Fronek teaches that the additives are copolymers of vinylidene
fluoride and hexafluoropropylene (1172).
6. Fronek’s Figure 4 (1176) is reproduced below:

Figure 4 is reproduced above showing that the Mooney
Viscosity of the additive affects the apparent viscosity of the
molding composition and is optimum at approximately 70 for a
high density polyethylene.
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7. The Patent Owner did not rely on any evidence (experimental
or otherwise) demonstrating that the claimed range of 60 to 80
yields unexpected results relative to the prior art range of 5 to
120.
8. Referring to various prior art references including Duchesne,
the ‘951 Patent Specification states that “a second additive,
such as a poly(oxyalkylene) or an ionomer resin, is introduced
in order to improve extrusion processability of the non-
fluorinated polymer” (col. 2, ll. 20-24).
9. Duchesne describes experiments showing that apparent
viscosities may be lowered to varying degrees by adding
various polyethylene glycols into a composition including
polyethylene and fluorocarbon polymer (col. 11, l. 19 to col. 12,
l. 4).
10. Duchesne further discloses additional experiments in which
various conditions and materials were used (col. 6, l. 24 to col.
8, l. 18).

PRINCIPLES OF LAW
When ranges recited in a claim overlap with ranges disclosed in the
prior art, a prima facie case of obviousness typically exists and the burden of
proof is shifted to the applicant to show that the claimed invention would not
have been obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir.
2003). As to selecting a narrow range from a broader range, the court
explained:
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Selecting a narrow range from within a somewhat
broader range disclosed in a prior art reference is no less
obvious than identifying a range that simply overlaps a
disclosed range. In fact, when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even
more compelling than in cases of mere overlap.
Id. at 1329-30.

ANALYSIS
The Patent Owner does not contest the Examiner’s factual findings
that Dillon describes every limitation of claim 1, except that Dillon discloses
a Mooney Viscosity of 5 to 120 instead of the claimed range of 60 to 80
(App. Br. 10; Ans. 7). Rather, the Patent Owner’s arguments focus on the
fact that Fronek’s additive does not include an interfacial agent (App. Br.
10-16).
The Patent Owner’s arguments are misplaced. The claimed range of
60 to 80 falls completely within Dillon’s limited range of 5 to 120 (FF 1).
This alone creates a prima facie of obviousness. Moreover, Fronek provides
substantial evidence that Mooney Viscosity is a result-effective variable that
would affect the apparent viscosity of the molding composition (FF 2-6). In
cases such as the one before us, our reviewing court has stated that “[t]he
normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
set of percentage ranges is the optimum combination of percentages.”
Peterson, 315 F.3d at 1330. Thus, “the existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that his
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invention would not have been obvious.” Id. The Patent Owner failed to
meet that burden (FF 7).
The Patent Owner repeatedly argues that Fronek’s additive
composition lacks an interfacial agent and therefore the results described in
Fronek cannot be extrapolated to Dillon. As support, the Patent Owner
refers to the ‘951 Patent, which refers to Duchesne (App. Br. 11; FF 8-10).
The Patent Owner’s argument is unavailing. First, Dillon explicitly
discloses that an interfacial agent may be combined with fluoroelastomers
having Mooney Viscosities inclusive of those disclosed in Fronek as
optimum (FF 2 and 6). That dispels any notion that Fronek’s teachings
cannot reasonably be extrapolated to the types of composition described in
Dillon. Nonobviousness cannot be established merely by attacking
references individually where the rejection is based on the collective
teachings of the prior art references. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Second, Dillon teaches that the interfacial agent provides a “further
improvement in melt processability” (FF 2). Given Dillon’s teaching, we
find no error in the Examiner’s position (Ans. 12) that one of ordinary skill
in the art would have added an interfacial agent to Fronek’s additive
composition, including those having an optimum Mooney Viscosity of 60-
80, to achieve a further improvement in melt processability of Fronek’s
blown films. Contrary to the Patent Owner’s belief, we have not been
directed to any persuasive evidence that Fronek teaches away from the
claimed invention.
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We have considered the Patent Owner’s proffered evidence
(Duchesne) but do not find it persuasive. As found by the Examiner, the
data reported in Duchesne do “not, in anyway, contradict or refute the
teaching in Fronek that altering the Mooney viscosity of the fluoroelastomer
in the process additive composition affects the apparent viscosity of the host
resin” (Ans. 13; FF 8-10). Rather, Duchesne’s disclosure would have
suggested to one of ordinary skill in the art that a poly(oxyalkylene) may be
“introduced in order to improve extrusion processability of the non-
fluorinated polymer,” as acknowledged by the inventors of the ‘951 Patent
(FF 8).
For these reasons, we affirm.

DECISION
The Examiner’s decision to reject claims 1, 6-9, and 15 is
AFFIRMED.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
AFFIRMED

rvb

cc:

For Patent Owner:
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
Appeal 2010-009017
Reexamination Control 95/000,144
Patent 7,001,951 B2

11

For Third Party Requester:

CHARLES E. VAN HORN
FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP
901 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20001-4413