Ex Parte Cai et al

Patent Trial and Appeal Board

Oct 17, 2017

14047342 (P.T.A.B. Oct. 17, 2017)

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.
14/047,342 10/07/2013 Kevin Cai TEK-AC-2 6691
28862 7590 10/17/2017
HUDAK, SHUNK & FARINE, CO., L.P.A.
2020 FRONT STREET
SUITE 307
CUYAHOGA FALLS, OH 44221
EXAMINER
JOHNSTON, BRIEANN R
ART UNIT PAPER NUMBER
1768
MAIL DATE DELIVERY MODE
10/17/2017 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
Ex parte KEVIN CAI, YUNDONG WANG, RYSZARD BRZOSKOWSKI,
PRASHANT A. BHADANE, BASIL D. FAVIS, and ALAIN PERREAULT
(Applicants: TEKNOR APEX COMPANY and CERESTECH, INC.)
Appeal 2016-007295
Application 14/047,3421
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 2, 4,
7, 11, and 19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real parties in interest are identified as “TEKNOR APEX
COMPANY” and “CERESTECH, INC.” (Appeal Brief filed January 18,
2016, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 4—11; Reply Brief filed July 21, 2016, hereinafter “Reply Br.,”
1—6; Final Office Action mailed June 23, 2015, hereinafter “Final Act.,” 3—
9; Examiner’s Answer mailed May 31, 2016, hereinafter “Ans.,” 2—13.
Appeal 2016-007295
Application 14/047,342
I. BACKGROUND
The subject matter on appeal relates to a thermoplastic elastomer
composition and to an article comprising such a composition (Specification
filed October 7, 2013, hereinafter “Spec.,” 12). Representative claim 1 is
reproduced from page 14 of the Appeal Brief (Claims Appendix), with key
limitations emphasized, as follows:
1. A thermoplastic elastomer composition, comprising:
a styrenic block copolymer comprising at least one
controlled distribution copolymer block having a conjugated
diene and a mono alkenyl arene;
a biorenewable softener comprising a natural ester, and
at least one synergistic additive comprising one or more of
starch, thermoplastic starch, a biorenewable polar polymer, and
a high molecular weight styrenic block copolymer, wherein the
high molecular weight styrenic block copolymer has a number
average molecular weight greater than 300,000 g/mol.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under pre-AIA 35
U.S.C. § 103(a):3
3 In the Final Office Action (Final Act. 3—5), claims 1, 2, 4, 7, 11, and 19
were also provisionally rejected under the judicially-created doctrine of
obviousness-type patenting as unpatentable over claims 1, 2, 12, 14—17, and
19 of co-pending Application 14/047,190. That rejection was withdrawn in
view of a Terminal Disclaimer filed on October 5, 2015 (Ans. 6). We note
further that an Appeal Brief was filed on January 18, 2016 in Application
14/047,190 (Appeal No. 2016-007292) and, therefore, that appeal should
have been identified in the current Appeal Brief in the “Related Appeals”
section. See 37 C.F.R. § 41.37(c)(1)(h).
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Application 14/047,342
A. claims 1, 2, 7, 11, and 19 as unpatentable over Date (WO
2011/135927 Al, published November 3, 2011),4 Lysenko et al.
(US 2010/0298486 Al, published November 25, 2010,
hereinafter “Lysenko”), and Zhao (WO 2010/134915 Al,
published November 25, 2010); and
B. claim 4 as unpatentable over Date, Lysenko, Zhao, and
White (US 5,955,163, issued September 21, 1999).
(Final Act. 5—9; Ans. 2—14.)5
III. DISCUSSION
Rejection A. The Appellants provide arguments under separate sub­
headings for each claim (Appeal Br. 4—10). In this opinion, however, we
address a claim individually only to the extent that the argument(s) for the
claim comply with 37 C.F.R. § 41.37(c)(l)(iv). Under this rule, merely
pointing out what a claim recites or asserting that the prior art references do
not disclose or suggest a claim limitation is not an argument for separate
patentability requiring our separate consideration. In re Lovin, 652 F.3d
1349, 1356—57 (Fed. Cir. 2011). Furthermore, absent a showing of good
cause or a new point raised in the Answer, we decline to consider any new
4 With respect to Date, the Appellants do not object (Appeal Br. 4—11) to the
Examiner’s reliance on Date (US 8,658,727 B2, issued February 25, 2014)
as an English language equivalent (Final Act. 5). Therefore, for the
purposes of this opinion, any discussion of the Date reference will be based
on the English language equivalent.
5 The Appellants contend that claims 14—18 and 20, which were withdrawn
from further consideration pursuant to an election of species requirement
(Ans. 13), should have been considered on the merits in the Final Office
Action (Appeal Br. 11). This issue, however, should have been raised by
way of a timely-filed petition as our jurisdiction does not extend to deciding
whether a restriction or election of species requirement is proper. See
generally 37 C.F.R. §§ 1.141-1.146; M.P.E.P. §§ 809.02(a), 1002.02(c).
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Application 14/047,342
or modified argument in the Reply Brief not previously raised in the Appeal
Brief. See 37 C.F.R. § 41.41(b)(2).
1. Claim 1
The Examiner finds that Date describes an example in which a
composition comprises, inter alia: 40 parts KRATON RP6935 tri-block S-
EB/S-S copolymer (corresponding to the inventors’ “styrenic block
copolymer comprising at least one controlled distribution copolymer block
having a conjugated diene and a mono alkenyl arene”); 60 parts KRATON
G 1633 SEBS block copolymer having a Mn of 400,000 g/mol; and 180 parts
mineral oil softener (Ans. 2—3) (citing Date Table 1, Example 4). To
account for the “biorenewable softener comprising a natural ester” limitation
missing from Date, the Examiner relies on Lysenko (Ans. 3). Specifically,
the Examiner finds that Lysenko teaches certain advantages in substituting
mineral oil with non-mineral oils as plasticizers in compositions comprising
monovinylidene aromatic polymers including styrene-diene copolymers
(id.). In particular, Lysenko describes the use of vegetable oils—which are
disclosed in the current Specification as suitable biorenewable softeners—as
acceptable substitutes for mineral oils (id.). Based on these findings, the
Examiner concludes that a person having ordinary skill in the art would have
found it obvious to use a non-mineral oil, such as vegetable oil, in lieu of
Date’s mineral oil because Lysenko “teaches that the vegetable oils are
capable of the same function but are less expensive, also teaching that they
can be used in smaller amounts while improving the heat distortion
temperature and the tensile strength than that of mineral oil” (id. at 3 4).
The Appellants contend that “the problems encountered by the
[inventors] would not have led one of ordinary skill in the art to arrive at the
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invention set forth in independent claim 1, based on the scope and content of
the references cited, absent impermissible hindsight using [the inventors’]
claims as guide” (Appeal Br. 6). The Appellants argue further that Date
describes mineral oil as “essential” and, therefore, a person having ordinary
skill in the art would not have made the proposed substitution of mineral oil
with vegetable oil (id.). In addition, the Appellants argue that “one of
ordinary skill in the art would not be led to specifically select [Date’s]
example 4 utilized in the Office Action out of the 30 examples and then
further to substitute the required essential mineral oil softener thereof, with
the non[-]mineral oil of Lysenko” (id.). Regarding Lysenko, the Appellants
argue that the reference does not disclose styrenic block copolymers as
required by claim 1 and, therefore, “[t]here is no unambiguous disclosure
within Lysenko that would lead one of ordinary skill in the art to select the
non[-]mineral oil thereof and then incorporate the same into Date to arrive at
the invention set forth in claim 1” (id. at 7). As for secondary
considerations, the Appellants rely on comparative experimental data
presented in the Specification—namely, Example 1 and Comparative
Examples 2 and 3 (Table 1), Examples 6 and 7 and Comparative Example 5
(Table 3), and Examples 8, 11, and 12 and Comparative Example 6 (Table
4) (Appeal Br. 5—6).
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Supreme Court of the United States emphasized that patent
examiners need not “look only to the problem that the [applicant] was trying
to solve” in conducting an obviousness analysis. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). “The question is not whether the
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combination was obvious to the [applicant] but whether the combination was
obvious to a person with ordinary skill in the art.” Id.
Under the correct obviousness standard set forth in KSR, we discern
no error in the Examiner’s findings, analysis, and conclusion of law.
Specifically Date describes an elastomer composite material suitable as a
plug for a medical vessel, such as a bag for infusion fluid, wherein the
composite includes a block copolymer A, a block copolymer P, a softener B
such as mineral oil, a propylene copolymer C, and an aromatic polymer D as
“essential components” (col. 1,11. 6—12; col. 3,11. 23—26; col. 9,11. 55—61).
In Table 1 (cols. 17—18), Date discloses a working example (Example 4) in
which the composite includes 60 parts by weight KRATON G1633 (a
hydrolyzed SEBS block copolymer having a Mn of 400,000 g/mol), 40 parts
by weight RP6935 (a hydrolyzed controlled distribution S-EB/S-S block
copolymer, 180 parts by weight KAYDOL softener, 20 parts by weight PM
600A propylene polymer, and 20 parts by weight KRISTALEX 3100
aromatic polymer (col. 13,1. 60-col. 15,1. 7). Thus, Date’s exemplified
composite as described in Example 4 differs from the claimed composition
only in that KAYDOL is used instead of “a biorenewable softener
comprising a natural ester,” as specified in claim 1.
Lysenko teaches that it was known that “in appropriate amounts,
mineral oil provides improvement to the bulk polymer [in particular,
monovinylidene aromatic polymer] in terms of, among other things, flow”
(Lysenko | 6). Lysenko further teaches that “non-mineral oil, with or
without mineral oil, typically exhibit the same melt flow rate (MFR) and a
higher Vicat heat distortion temperature as similar composition containing
twice as much plasticizer of only or mostly mineral oil” and “typically
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exhibit the same elongation at rupture and a higher tensile strength than do
similar polymers mixed with twice as much of. . . mineral oil” {id. 111).
According to Lysenko, the non-mineral oils include vegetable oils such as
“those derived from peanuts, cottonseed, olives, rapeseed, high-oleic
sunflower, palm and com” (Lysenko 133), which are identical to
compounds disclosed in the current Specification as suitable biorenewable
softeners (Spec. 72, 81—82).
Given these facts, we agree with the Examiner that a person having
ordinary skill in the art would have been prompted to substitute Lysenko’s
non-mineral oils for at least some of Date’s mineral oil to obtain the
advantages explicitly disclosed in Lysenko. The mere fact that Lysenko’s
reasons for using non-mineral oils corresponding to the inventors’
biorenewable softener differ from the inventors’ reasons (Spec. 118) does
not preclude an obviousness rejection. KSR, 550 U.S. at 420 (“[A]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”).
Although Date teaches that mineral oil is an “essential” component
(col. 3,11. 23—26), we agree with the Examiner’s finding (Ans. 12) that
Lysenko would have suggested a combination of mineral oil and vegetable
oil would also be advantageous (Lysenko 133). Here, claim 1 recites the
transitional term “comprising” and, therefore, does not exclude Date’s
mineral oil. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as
one of the monomers in the reaction is propylene, any other monomer may
be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”).
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As for the Appellants’ argument that Date’s Example 4 is one out of
30 different examples, Date explicitly teaches that each of the composites
described in these examples has “excellent heat resistance, anti-leakage, and
needle retaining properties” (col. 25,11. 58—61). Merck & Co. v. Biocraft
Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference]
discloses a multitude of effective combinations does not render any
particular formulation less obvious.”). See also id. (“[I]n a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)); In reMouttet, 686 F.3d 1322, 1333-34 (Fed. Cir. 2012).
(“[J]ust because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.”).
We discern no persuasive merit in the Appellants’ argument that
Fysenko does not disclose styrenic block copolymers. Fysenko teaches that
the monovinylidene aromatic copolymers can be blended or grafted with one
or more rubbers to form a high impact monovinylidene aromatic polymer or
copolymer and that the preferred rubbers include block copolymers of 1,3-
butadiene and monovinylidene aromatic monomer (Fysenko ^fl[ 29—31).
Turning to secondary considerations, we are in complete agreement
with the Examiner’s assessment that the proffered evidence is insufficient to
establish unexpected results (Ans. 6—12). Because the Examiner’s findings
in this regard are well-supported, we adopt them as our own. Significantly,
the proffered evidence does not include a comparison between the claimed
composition against the closest prior art, Date, which differs only in terms of
the “biorenewable softener comprising a natural ester” limitation. That is,
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the Appellants fail to establish that this difference gives rise to any
unexpected result. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where
the offered secondary consideration actually results from something other
than what is both claimed and novel in the claim, there is no nexus to the
merits of the claimed invention.”).
Moreover, even if we assume that the evidence is sufficient to
demonstrate unexpected results, the showing is far from being
commensurate in scope with claim 1, as broadly recited. See, e.g., In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“With respect to appellants’
broad claims to a catalyst with ‘an alkali metal,’ the experiments detailed in
Friedrich III, being limited to sodium only, are not commensurate in scope,
and are, therefore, insufficient to rebut the prima facie case.”).
For these reasons, we sustain the Examiner’s rejection of claim 1.
2. Claim 2
The Appellants contend that neither Lysenko nor Zhao teaches a
styrenic block copolymer composition (Appeal Br. 8—9). As we discussed
above, Lysenko teaches such block copolymers.
3. Claim 7
The Appellants point out that claim 7 “defines a particular weight
range of the high molecular weight styrenic block copolymer and also
defines that the composition further includes a polyolefin” and then provide
only a skeletal argument that one of ordinary skill in the art would not have
modified Date’s Example 4 in view of Lysenko without using impermissible
hindsight (Appeal Br. 9-10). Such a skeletal argument is insufficient to
warrant our separate consideration. Lovin, 652 F.3d at 1356—57.
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4. Claim 11
The Appellants argue that “[o]ne would first have to somehow arrive
at Example 4 of Date out of the 30 examples set forth therein and thereafter
recognize a need to replace the required mineral oil softener thereof’ and,
therefore, the rejection is based on impermissible hindsight (Appeal Br. 10).
We have already addressed this argument in our discussion concerning the
rejection of claim 1.
5. Claim 19
The Appellants’ skeletal argument (Appeal Br. 10) does not require
our separate consideration.
6. Claim 4
Claim 4 depends from claim 2, which depends from claim 1, and
recites that “the composition further includes a functionalized styrenic block
copolymer” (Appeal Br. 14). The Appellants argue that “[ajbsent
impermissible hindsight, one of ordinary skill in the art would not be lead to
consider White nor specifically select the functionalized styrenic block
copolymer thereof, and then incorporate the same with isolated features from
the other cited references in order to arrive at claim [4]” {id. at 11).
We disagree. The Examiner articulates a sufficient reason supporting
a conclusion that a person having ordinary skill in the art would have
combined Date with Lysenko and White (Ans. 5). The Appellants’ bare
assertion that the rejection is based on impermissible hindsight fails to
identify a reversible error in the Examiner’s factual findings, analysis, or
legal conclusion.
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IV. SUMMARY
Rejections A and B are affirmed. Therefore, the Examiner’s final
decision to reject claims 1, 2, 4, 7, 11, and 19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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