Ex Parte Ahmed et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10211162 (B.P.A.I. Sep. 22, 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.
10/211,162 08/01/2002 Sharf U. Ahmed DD-064-US-02 9058
7590 09/22/2010
Julie Post
H.B. Fuller Company
1200 Willow Lake Blvd.
P.O. Box 64683
St. Paul, MN 55164-0683
EXAMINER
NUTTER, NATHAN M
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/22/2010 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
________________

Ex parte SHARF U. AHMED
and ANDUALEM W. EMIRU
________________

Appeal 2009-008120
Application 10/211,162
Technology Center 1700
________________

JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008120
Application 10/211,162

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-21, 23, and 45-48. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
Appellants’ invention is directed to a composition exhibiting a
moisture vapor transmission rate of at least 400 g/m ²/day. Claim 1 is
illustrative:
A composition consisting essentially of:
poly(tetramethylene adipate-co-terephthalate);
plasticizer comprising polar groups; and
optionally tackifying resin,
said composition exhibiting a moisture vapor transmission rate
of at least 400 g/m 2/day.
Claims 1-3, 16-21 and 23 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Buchanan, US Patent 5,446,079, issued
August 29, 1995.
Claims 1-21, 23, and 46-48 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Buchanan in further view of Corzani, US
Patent 6,534,561 B1, issued March 18, 2003.
Claim 45 stands rejected under 35 U.S.C. § 102(e), or in the
alternative 35 U.S.C. § 103(a), as unpatentable over Müller, US Patent
6,239,192 B1, issued May 29, 2001.

Appeal 2009-008120
Application 10/211,162

3
OPINION
The § 102 Rejection
The Examiner contends that Müller teaches the combination of a
plasticizer with an aromatic-aliphatic copolyester. The Examiner found that
column 17 describes suitable plasticizers for the disclosed invention. (Ans.
6-7). According to the Examiner:
The moisture vapor transmission rate would be inherent in the
composition, and the claims would be anticipated, as such, since
nothing is recited in the claim to produce this feature other than the
constituents. Regardless, a skilled artisan, having the disclosure of the
reference for guidance, would expect success in attaining the instantly
claimed invention. As such, the instant claims are deemed to be at
least obvious, if not anticipated, by the teachings of the patent.
(Ans. 7).
Appellants argue that Müller does not actually teach a composition
that includes an aliphatic or aromatic copolyester and a polar plasticizer.
Specifically Appellants state:
Müller et al. do not actually teach a composition that includes
aliphatic-aromatic copolyester and a polar plasticizer, no such
composition exists in Müller et al. It is axiomatic that a nonexistent
composition cannot exhibit inherent properties. In addition,
Appellants' Specification demonstrates that the mere presence of a
polar plasticizer in the same composition as an aliphatic-aromatic
copolyester does not inherently result in a composition that exhibits a
moisture vapor transmission rate of at least 400 g/m ²/day. Therefore,
Müller et al. cannot be deemed to inherently anticipate the
composition of claim 45.
(Appeal Brief 26).

We agree with Appellants. “A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
Appeal 2009-008120
Application 10/211,162

4
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner
has not pointed to the specific teaching in Müller that exhibits a composition
that has a plasticizer in an amount and a type such that the composition has a
moisture vapor transmission rate of it least 400 g/m ²/day as required by
claim 45.
The rejection of the Examiner under § 102 is reversed.
The § 103 Rejections
The dispositive issue for the § 103 rejections on appeal is the
following:
Did the Examiner err in determining that Buchanan describes or
suggests a composition having a plasticizer of a type and in an amount
sufficient for the composition to exhibit a moisture vapor transmission rate
required by the independent claims? We answer this question in the
affirmative.
Appellants argue that for a skilled artesian to arrive at the composition
of independent claim 1 from Buchanan would require a series of selections
including, inter alia, adding a plasticizer of a type in an amount sufficient to
achieve a composition that exhibits a moisture vapor transmission rate of at
least 400 g/m ²/day. (App. Br. 13). Appellants also assert that Buchanan
does not describe or suggest the moisture vapor transmission rate of
independent claims 20 and 46. (See App. Br. 16-17).
According to the Examiner, Buchanan describes “aliphatic aromatic
copolyester in cellulose ester/polymer blends.” (Ans. 5). The Examiner
found that Buchannan discloses additives can be present in amounts ranging
from 0.001 to 50 weight percent, based on the total weight of the
Appeal 2009-008120
Application 10/211,162

5
composition including plasticizers. (Id.). The Examiner recognizes that
Buchanan does not specifically describe the moisture vapor transmission
rate. However, the Examiner concludes “that since Buchanan et al disclose
the (claimed) composition containing (claimed) components in amounts that
are same as or similar to those that [sic] instantly claimed, the composition
as disclosed by Buchanan et al obviously satisfies the limitation of moisture
vapor transmission, as herein claimed.” (Id.).
We agree with Appellants. Buchanan does not provide a reason for
selecting a plasticizer of a type in an amount sufficient to achieve a
composition that exhibits a moisture vapor transmission rate of at least 400
g/m ²/day. The Examiner has identified a broad range for additives to the
composition. Buchanan describes a variety of suitable additives (col. 14, ll.
18-40), that may include plasticizers, which could possibly provide a
composition with the claimed moisture vapor transmission rate. However,
the Examiner has not provided a reason or cited to evidence that establishes
it would have been obvious to select a plasticizer of the type and in an
amount sufficient to achieve a composition having the claimed moisture
vapor transmission rate. “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner relied upon the Corzani for describing tackifying resins
and plasticizers of the dependent claims. Corzani was not cited to establish
the obviousness of utilizing a plasticizer in an amount sufficient to form a
composition that achieves the claimed moisture vapor transmission rate.
Appeal 2009-008120
Application 10/211,162

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For the foregoing reasons the Examiner’s § 103 rejections are
reversed.

DECISION
The 35 U.S.C. § 102 rejection of claim 45 is reversed.

The 35 U.S.C. § 103 rejections of claims 1-21, 23, and 46-48 are
reversed.

REVERSED

bar

JULIE POST
H.B. FULLER COMPANY
1200 WILLOW LAKE BLVD.
P.O. BOX 64683
ST. PAUL, MN 55164-0683