Ex Parte Chou et al

Board of Patent Appeals and Interferences

Apr 26, 2010

11157895 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD T. CHOU, KYE HYUN KIM
and WAYNE CURTIS WHELCHEL
____________________

Appeal 2010-000004
Application 11/157,895
U.S. Patent Publication 2005/0288440
Technology Center 1700
____________________

Decided: 26 April 2010
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and RICHARD TORCZON and ROMULO H. DELMENDO,
Administrative Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the case 1
E. I. du Pont de Nemours and Company [hereinafter DuPont], the real 2
party in interest, seeks review under 35 U.S.C. § 134(a) of a final rejection 3
(mailed 26 December 2007). 4
The application was filed on 21 June 2005. 5
DuPont claims priority based on Provisional Application 60/581,441, 6
filed 21 June 2004. 7
Claims 1-20 are on appeal. 8

Appeal 2010-000004
Application 11/157,895

2
The Examiner cited the following prior art: 1
Koebisu U.S. Patent 4,663,362 5 May 1987
Hsu U.S. Patent 6,528,550 4 Mar. 2003

Gong

U.S. Patent 7,208,541
24 Apr. 2007, based
on an application filed
22 Aug. 2003
Symons WO 00/15696 23 Mar. 2000
2
Koebisu, Hsu and Symons are prior art under 35 U.S.C. § 102(b). 3
Despite DuPont's argument to the contrary (Appeal Brief, 4
pages 18-19), Gong is prior art under 35 U.S.C. § 102(e). Hazeltine 5
Research, Inc. v. Brenner, 382 U.S. 252 (1965). 6
We also refer to the following DuPont patent mentioned on page 3:10 7
of the specification. 8
Hatch U.S. Patent 5,028,674 2 July 1991
9
Hatch is prior art under 35 U.S.C. § 102(b). 10
We have jurisdiction under 35 U.S.C. § 134(a). 11
B. Findings of fact 12
The following findings of fact are supported by a preponderance of 13
the evidence. 14
Additional findings appear in the Discussion portions of the opinion. 15
DuPont's invention relates to a polymer composition (claim 1) that can 16
be used as a foam composition (claim 3) to make a footwear article 17
(claim 15) produced from the foam composition. Specification, page 1:6-7. 18

Appeal 2010-000004
Application 11/157,895

3
Background 1
Copolymers of ethylene and vinyl acetate (EVA) have been widely 2
used as base resin polymers in foam applications for many years. 3
Crosslinked EVA foams, expanded with chemical blowing agents, are said 4
to provide an attractive balance of resilience, durability and other physical 5
properties required for soling applications in footwear. These properties are 6
provided at low density, which is desirable for lighter weight shoes, and at 7
an attractive cost. EVA may present limitations in attaining a balance of 8
softness (e.g., surface softness), low compression set, and high resilience. 9
Also, as foam processes move more toward one-step injection molding, 10
achieving balanced properties using EVA foam may become difficult. 11
Specification, page 1:16-25. 12
Foams made from ethylene acrylate copolymers (also referred to as 13
ethylene-acrylic acid ester copolymers), such as ethylene-methyl acrylate 14
copolymer (E/MA) with high MA content, are generally soft, have low 15
density and are highly resilient. Specification, page 1:26-27. 16
According to DuPont, an E/MA foam may be weak in mechanical 17
properties, such as tear strength and tensile strength, and may be difficult to 18
crosslink. Specification, page 1:30-31. 19
Further according to DuPont, there is a continued need to (1) develop 20
new products to expand the performance window of known polyolefin 21
foams, such as the foam footwear market, (2) reduce costs, and (3) improve 22
manufacturing process. It is also desirable to improve the crosslinking and 23
mechanical properties while retaining the inherent merits of E/MA foams. 24
Specification, page 1:32 through page 2:2. 25

Appeal 2010-000004
Application 11/157,895

4
DuPont's invention 1
The DuPont invention can readily be understood by reference to 2
Claim 1. 3
Claim 1, which we reproduce from the Claim Appendix of the Appeal 4
Brief, reads [matter in brackets and indentation added]: 5
A composition comprising or produced from: 6
[1] about 40 to about 95 wt% of an ethylene 7
acrylate copolymer, 8
[2] about 5 to 60 wt% of a soft ethylene polymer, 9
and 10
[3] 0.2 to 1.5% of a free radical initiator 11
crosslinking agent 12
wherein 13
[a] the ethylene acrylate copolymer [1] comprises repeat 14
units derived from 15
[i] ethylene and 16
[ii] at least one alkyl acrylate and 17
[b] the soft ethylene polymer [2] comprises 18
[i] copolymer of ethylene and an α-olefin, 19
[ii] copolymer of ethylene and vinyl acetate, or 20
[iii] combinations thereof. 21

Appeal 2010-000004
Application 11/157,895

5
The invention further relates to a composition which can be foamed. 1
Claim 3, which we also reproduce from the Claim Appendix of the 2
Appeal Brief, reads [bracketed matter and indentation added]: 3
The composition of claim 1 wherein 4
[1] the peroxide [sic—free radical initiator?] is a 5
dialkyl peroxide and 6
[2] the composition further comprises [i] about 0.5 7
to about 10% wt% blowing agent(s), [ii] about 0.1 to about 10 8
wt% activator(s), and [iii] optionally, about 0.1 to about 1 wt% 9
co-curing agent(s). 10
We note that there is no antecedent in Claim 1 for "the peroxide" in 11
Claim 3. We will assume that in Claim 3 DuPont intended to refer to the 12
"free radical initiator" mentioned in Claim 1. 13
The invention still further relates to footwear articles made from the 14
composition of Claim 1: 15
Claim 15, which we also reproduce from the Claim Appendix of the 16
Appeal Brief, reads: 17
An article comprises [sic—comprising] or produced from 18
a composition wherein the article includes midsole for 19
footwear, insole for footwear, or both and the composition is as 20
recited in claim 1. 21
The ethylene acrylate copolymer can comprise repeat units derived 22
from ethylene and an ester of an unsaturated carboxylic acid such as a C1 23
to C8 alkyl acrylate. Specification, page 2:23-25. 24

Appeal 2010-000004
Application 11/157,895

6
Examples of alkyl acrylates include (1) C1—methyl acrylate, (2) C2—1
ethyl acrylate and (3) C4—butyl acrylate. Specification, page 2:26-27. 2
DuPont defines "copolymer" to mean a polymer comprising repeat 3
units derived from two or more monomers or comonomers and thus includes 4
terpolymers or tetrapolymers. Specification, page 2:20-22. 5
The ethylene acrylate copolymer can also include another comonomer 6
such as (1) carbon monoxide, (2) glycidyl acrylate, (3) glycidyl 7
methacrylate, and (4) glycidyl vinyl ether, or (5) combinations of two or 8
more thereof. Specification, page 3:4-6. 9
The soft ethylene polymer comprises (1) copolymer of ethylene and 10
an α-olefin copolymer, (2) copolymer of ethylene and vinyl acetate (EVA), 11
or (3) combinations thereof. Specification, page 3:25-27. 12
The crosslinked composition (claim 3) may comprise one or more 13
peroxide crosslinking agents, blowing agents, activators for the blowing 14
agents, and other additives normally associated with such foam 15
compositions. Specification, page 5:31-33. 16
Any free radical initiator crosslinking agent may be used including 17
organic peroxides such as usually dialkyl organic peroxides. Examples of 18
organic peroxides include (1) 1,1-di-t-butyl peroxy-3,3,5-trimethyl-19
cyclohexane, (2) t-butyl-cumyl peroxide, (3) dicumyl-peroxide (DCP), 20
(4) 2,5-dimethyl-2,5-di(tertiary-butyl-propyl)hexane and (5) 1,3-bis(tertiary-21
butyl-peroxy-isopropyl) benzene. Specification, page 6:1-6. 22
DuPont's foam composition can also comprise, about 0.001 to about 23
5% by weight of the composition, a co-curing agent including trimethyl 24
propane triacrylate (or similar compounds), N,N-m-phenylenedimaleimide, 25

Appeal 2010-000004
Application 11/157,895

7
triallyl cyanurate , or combinations of two or more thereof. Specification, 1
page 6:19-21. 2
The specification contains data said to have been obtained as a result 3
of experiments. An E/MA polymer and a MPE polymer are said to have 4
been used to prepare test samples. Specification, page 9:5. 5
An E/MA polymer is a copolymer of ethylene and methyl acrylate. 6
Specification, page 2:27. The E/MA copolymer is said to contain 24 wt% 7
MA having a melt index (MI) of 2.0 and is apparently a copolymer available 8
from DuPont. Specification, page 11:2-3. 9
An MPE polymer is a metallocene-catalyzed polyethylene. 10
Specification, page 4:3. The MPE is said to have been a metallocene 11
catalyst produced ethylene α-olefin copolymer with a density of 0.87 g/cc 12
and a melt index of 1 made by DuPont Elastomers LLC. The α-olefin is not 13
identified. No trade name or other identifying indicia is given for the MPE. 14
Accordingly, one skilled in the art would not be able to readily reproduce the 15
experimental tests reported by DuPont in its specification. 16
DuPont says that the data in the specification shows that foams made 17
from a blend of E/MA and MPE exhibited improved degree of curing 18
vis-à-vis foams made from E/MA. Specification, page 10:8-15. 19
Examiner's rejections 20
The Examiner has maintained the following rejections in the 21
Examiner's Answer. 22
Claims 1-6, 8-11 and 14-20 stand rejected under 35 U.S.C. § 103(a) as 23
being unpatentable over Symons and Hsu. Answer, page 3. 24

Appeal 2010-000004
Application 11/157,895

8
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being 1
unpatentable over Symons, Hsu and Koebisu. Answer, page 9. 2
Claims 12-13 stand rejected under 35 U.S.C. § 103(a) over Symons, 3
Hsu and Gong. Answer, pages 10-11. 4
Claims 1-6 and 8-15 stand "provisionally" rejected based on 5
obviousness-type double patenting over claims in copending DuPont 6
application 11/157,893. According to USPTO records, the copending 7
application stands rejected over the prior art. An appeal has been noted, an 8
appeal brief has been filed, and Examiner's Answer has been mailed, but the 9
appeal has not been docketed at the Board. Answer, page 12. 10
Specific claims argued in the Appeal Brief 11
In the Appeal Brief in connection with the prior art rejections, DuPont 12
argues the separate patentability of Claims 1, 7, 12-13 and 15. The 13
remaining claims stand or fall with the claims addressed by DuPont. 14
Prior art 15
The prior art is discussed in the Part C of this opinion. 16
C. Discussion—unpatentability over the prior art 17
Claims addressed 18
We will limit our discussion to those claims singled out for separate 19
consideration in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(vii) (2009). 20
Scope of Claim 1 21
In patent prosecution, "the name of the game is the claim." In re 22
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). During examination, 23
claims are given the broadest reasonable construction consistent with the 24

Appeal 2010-000004
Application 11/157,895

9
specification. In re Prater, 56 CCPA 1381, 1395-96, 415 F.2d 1393, 1
1404-05 (CCPA 1969). 2
Claim 1 calls for three elements, identified as elements [1], [2] and [3] 3
in Claim 1 as reproduced above. 4
Element [1] is an ethylene acrylate copolymer. 5
Consistent with limitations [a][i] and [a][ii] in Claim 1 as reproduced 6
above, the ethylene acrylate copolymer "comprises" repeating units derived 7
from ethylene (E) and at least one alkyl acrylate. 8
"Comprises" opens the copolymer to have ethylene, an alkyl acrylate 9
and other comonomers. See Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 10
1949), which has been adopted by and followed by our reviewing court. See 11
In re Baxter, 656 F.2d 679, 686 (CCPA 1981). 12
One suitable alkyl acrylate is methyl acrylate (MA). Specification, 13
page 2:26. 14
A possible and representative structure of a copolymer having only 15
randomly repeating units of E and MA could be: 16
―E―E―MA―E―MA―MA―E―E―E ―MA― 17
where E and MA are the repeating units. 18
The number of E units and the number of MA units would depend on 19
the ratio of E to MA used to make the copolymer and its overall molecular 20
weight. 21
DuPont says, however, that a "copolymer" means a polymer 22
comprising repeat units derived from two or more monomers and includes a 23
terpolymer. Specification, page 2:20-22. DuPont specifically states that the 24

Appeal 2010-000004
Application 11/157,895

10
ethylene acrylate copolymer can also include another comonomer. 1
Specification, page 3:4. 2
As will become apparent from an analysis of Hsu, infra, a known 3
comonomer along with ethylene and an alkyl acrylate which can be used to 4
make shoe soles and insoles for footwear is acrylic acid (AA). Col. 2:29-30 5
and col. 7:57. 6
A possible and representative structure of a copolymer having random 7
repeating units of ethylene (E), methyl acrylate (MA) and acrylic acid (A) 8
could be: 9
―E―E―MA―A―E―MA―A―E―E―E―MA― 10
where E, MA and A are the repeating units. 11
The number of E units, MA units and AA units would depend on the 12
ratio of E to MA to AA used to make the copolymer and its overall 13
molecular weight. 14
The "ethylene acrylate copolymer" of Claim 1 which "comprises" 15
repeat units derived from ethylene an "at least one alkyl acrylate" includes a 16
terpolymer of ethylene, methyl acrylate and acrylic acid. 17
Hsu 18
Hsu, owned by DuPont, relates to microcellular foams made from 19
(1) ethylene vinyl acetate and (2) ethylene/acrylic acid copolymers. 20
Col. 1:10-13. 21

Appeal 2010-000004
Application 11/157,895

11
The Hsu invention provides a crosslinked polymer foam composition 1
comprising 2
[1] about 20 to about 98% by weight of ethylene vinyl acetate 3
copolymer; 4
[2] about 2 to about 80% by weight of ethylene/acrylic acid 5
copolymer; 6
[3] about 0.2 to 1.5% by weight of crosslinking agents; 7
[4] about 0.5 to about 10% by weight of blowing agent or 8
agents; and 9
[5] optionally other additives; 10
Col. 2:18-33. 11
Alternatively, the Hsu invention provides a crosslinked polymer foam 12
composition comprising: 13
[A] about 20 to about 98% by weight of ethylene vinyl acetate 14
copolymer or a polyolefin; 15
[B] about 2 to about 80% by weight of ethylene/acrylic acid 16
copolymer or ionomer; 17
[C] about 0.2 to 1.5% by weight of crosslinking agents; 18
[D] about 0.5 to about 10% by weight of blowing agent or 19
agents; and 20
[E] optionally other additives; 21
Col. 2:37-47. 22
The ethylene/acrylic acid copolymer may include a third monomer. 23
Col. 2:60-62. 24

Appeal 2010-000004
Application 11/157,895

12
The third monomer may be included in amounts up to 10 weight 1
percent and may be an alkyl acrylate having an alkyl group with from 1 to 8 2
carbon atoms. Col. 3:3-7. An alkyl acrylate having an alkyl group with 3
1 carbon atom would be methyl acrylate (MA). See, e.g., col. 2:49 of Hatch 4
which is mentioned in the specification at page 3:10. 5
Patentability of Claim 1 vis-à-vis Hsu 6
With reference to language of Claim 1 on appeal, and applying the 7
suggestion of comparing claims to the prior art made in Ex parte Braeken, 8
54 USPQ2d 1110 (BPAI 1999), one skilled in the art would view Hsu as 9
teaching or suggesting the following: 10
A composition {foam composition—col. 2:19} 11
comprising or produced from: 12
[1] about 40 to about 95 wt% {about 2 to about 13
80% by weight} of an ethylene acrylate copolymer, 14
[2] about 5 to 60 wt% {about 20 to about 98% by 15
weight—col. 2:39-40} of a soft ethylene polymer, and 16
[3] 0.2 to 1.5% {about 0.2-1.5 % by weight} of a 17
free radical initiator crosslinking agent {peroxides 18
mentioned at col. 4:36-45, including dicumyl-peroxide 19
(DCP)} 20
wherein 21
[a] the ethylene acrylate copolymer comprises repeat 22
units derived from 23
[i] ethylene {col. 2:27} and 24

Appeal 2010-000004
Application 11/157,895

13
[ii] at least one alkyl acrylate {up to 10% by 1
weight of an alkyl acrylate having an alkyl group with 2
1 to 8 carbon atoms—col. 3:3-7} 3
[b] the soft ethylene polymer comprises 4
[i] copolymer of ethylene and an α-olefin, 5
[ii] copolymer of ethylene and vinyl acetate 6
{col. 2:25}, or 7
[iii] combinations thereof . 8
We hold that Hsu alone is sufficient to render the invention of Claim 1 9
unpatentable under 35 U.S.C. § 103(a). Each element of Claim 1 is taught 10
or suggested as detailed above. The proportions of elements overlap. 11
Where ranges overlap, a prima facie case of obviousness has been made out. 12
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Huang, 100 F.3d 13
135, 139 (Fed. Cir. 1996). We believe that the case is particularly strong 14
where the utility (making footwear in this case) of the prior art and the 15
claimed invention is the same. 16
DuPont maintains that its invention results in unexpected results. 17
Appeal Brief, pages 16-17. According to DuPont, foams made with the 18
composition of Claim 1 have "low compression, high resilience, high 19
softness, and good split tear strength." Appeal Brief, page 16. 20
More particularly, DuPont states (Appeal Brief, pages 16-17) [matter 21
in brackets added]: 22
Appellants [DuPont] plotted a chart by comparing 23
appellants' results [from the replaced data in the specification at 24
page 10:21-37] (squares in the chart [reproduced] below) with 25

Appeal 2010-000004
Application 11/157,895

14
those from Tables I-IV of Hsu [cols. 9-10] (diamonds in the 1
chart [reproduced] below. The chart . . . shows that the 2
hardness of appellants' foams is surprisingly [there is no 3
testimony to support counsel's assertion of "surprisingly"] lower 4
than that of the foams disclosed in Hsu. If it were obvious to 5
employ ethylene acrylate copolymer to replace the acid 6
copolymer disclosed in Hsu, the hardness of the foams made 7
from ethylene acrylate should be comparable [there is no 8
testimony to support counsel's assertion of "comparable"] to 9
that of the foams made from the [Hsu] acid copolymer. 10
11
[Depicted is a chart reporting foam density 12
v. foam hardness] 13
14
The chart . . . [is said to show] that the foam made from 15
appellants' . . . [claimed composition] is much softer [there is no 16

Appeal 2010-000004
Application 11/157,895

15
testimony to support counsel's "much softer" characterization] 1
than that disclosed in Hsu. Appellant's foams are highly 2
resilient with rebound resilience in the range of over 30%. 3
The Examiner declined to credit the evidence because Claim 1 is not 4
limited to a foam. Answer, page 17. In the Examiner's view, the evidence is 5
not commensurate in scope with the breadth of Claim 1. Id. Precedent 6
supports the weight the Examiner assigned to the evidence. In re Tiffin, 7
58 CCPA 1420, 448 F.2d 791 (CCPA 1971) (on rehearing, CCPA held that 8
evidence must be commensurate in scope with the breath of the claims) 9
We add the following observations. 10
The most relevant test of Hsu would appear to be Example 10 11
(col. 8:16-23) involving an EVA polymer (ethylene/vinyl acetate), a E/MAA 12
copolymer and an E/nBA/GMA copolymer (nBA is n-butyl acrylate and 13
GMA is glycidyl methacrylate). The DuPont tests involve an EVA polymer 14
in combination with an MPE (polyethylene made with a metallocene 15
catalyst). DuPont's chart is a comparison of apples to oranges and is not a 16
comparison of the claimed subject matter to the closest prior art. In re 17
Baxter Travenol Lab., 952 F.2d 388, 390 (Fed. Cir. 1991). 18

Appeal 2010-000004
Application 11/157,895

16
It should further be noted that the density and hardness of DuPont's 1
Example 4 (175 ºC/10 min.) vis-à-vis Hsu Example 10 are as follows. 2
Example Hsu
density
DuPont
density
Hsu
hardness
DuPont
hardness
DuPont
Example 4
175 ºC/
10 min.

0.174

55
Hsu Example
10 165/20
0.189 55
Hsu Example
10 175/10
0.181 56
Hsu Example
10 185/10
0.168 55
3
What the data shows is that, depending on the monomers and process 4
conditions used, density and hardness can be made to be essentially the 5
same. A 0.174 DuPont density falls within the Hsu range of 0.168 to 0.189. 6
A 55 DuPont hardness falls within the Hsu range of 55-56. 7
DuPont has not achieved a density v. hardness which differs from the 8
prior art. Nor does Claim 1 recite any particular density or hardness. 9
DuPont's showing of alleged unexpected results is not entitled to 10
much, if any, weight. 11
In connection with Claim 1, we find it unnecessary to discuss 12
Symons. 13
Claim 1 is unpatentable under 35 U.S.C. § 103(a) over Hsu alone. 14
Claim 7 15
DuPont singles out Claim 7 for separate consideration. Appeal Brief, 16
page 18. 17

Appeal 2010-000004
Application 11/157,895

17
Dependent Claim 7—depending indirectly from Claim 1 via Claims 6, 1
4, 2 and then 1—reads: 2
The composition of claim 6 wherein the soft ethylene 3
polymer is the metallocene catalyst-produced ethylene 4
copolymer and the composition further comprises the co-curing 5
agent. 6
Claim 4 calls for the co-curing agent as an optional element. 7
In maintaining that Claim 7 is patentable even if Claim 1 is not 8
patentable, DuPont does not address the "wherein the soft ethylene polymer 9
is the metallocene catalyst-produced ethylene copolymer". Hence, we have 10
no occasion to consider that limitation in connection with Claim 7. 11
Rather, DuPont maintains that Claim 7 is patentable apart from 12
Claim 1 because of the presence of a "co-curing agent." 13
Hsu explicitly teaches that about 0.2 to 1.5% by weight of 14
"crosslinking agents" should be used. Col. 2:44. The phrase "crosslinking 15
agents" is plural. The cross-linking agents may be peroxides. Col. 4:37-39. 16
However, Hsu teaches that any free radical initiator crosslinking agent that is 17
compatible with the foam formulation may be used. Col. 4:36-37. 18
Koebisu teaches that trimethylpropane triacrylate is a crosslinking 19
agent which generates a radical by heating. Col. 4:52-56. The Koebisu 20
teaching is in the context of a foam (col. 2:29) made from (A) a polyvinyl 21
chloride resin. (B) a ethylene copolymer, and (C) a polyolefin resin. 22
Col. 2:34-43. 23
DuPont describes trimethylpropane triacrylate as a suitable co-curing 24
agent. Specification, page 6:19-20. 25

Appeal 2010-000004
Application 11/157,895

18
The Examiner found that it would have been obvious to include 1
trimethylpropane triacrylate, along with a peroxide, to enhance cross-2
linking. Answer, page 10. Trimethylpropane triacrylate has three vinyl 3
groups [―CH═CH2] which would be expected to combine with vinyl 4
groups in the ethylene vinyl acetate and ethylene acrylate polymers. 5
In using a co-curing agent DuPont is using a mixture of two known 6
cross-linking agents each of which is performing its intended purpose. In re 7
Kerkhoven, 626 F.2d 846 (CCPA 1980) (it is generally prima facie obvious 8
to combine two compositions each of which is taught by the prior art to be 9
useful for the same purpose in order to form a third composition which is 10
also used for that purpose). 11
In addition, we would note that Hsu itself by virtue of the use of the 12
language "crosslinking agents" suggests that more than one initiator may be 13
used. 14
DuPont maintains that the rejection of Claim 7 is "flawed" because the 15
Examiner has not explained why a co-curing agent used with PVC 16
(polyvinyl chloride) and polyethylene can be used in a composition having 17
ethylene vinyl acetate and a "soft" polymer. Appeal Brief, page 18. The 18
answer, as noted earlier, is that the vinyl groups would be expected to react 19
with the vinyl groups of the other vinyl-group containing ingredients. 20
DuPont further maintains that an agent used to cure a thermoset 21
elastomer cannot be used for a thermoplastic. Appeal Brief, page 18. 22
Counsel's argument is not evidence. In re Walters, 35 CCPA 1160, 1162, 23
168 F.2d 79, 80 (CCPA 1948). Moreover, Claim 7 is not limited to a 24
"thermoplastic" foam. 25

Appeal 2010-000004
Application 11/157,895

19
Claims 12-13 1
DuPont separately argues Claims 12-13. Appeal Brief, pages 18-19. 2
Claims 13 is argued to stand or fall with claim 12. Id. at 19. 3
Claim 12 reads [bracketed matter and indentation added]: 4
The composition of claim 11 wherein 5
[1] the soft ethylene polymer is a linear low density 6
polyethylene or the metallocene catalyst-produced polyethylene 7
and 8
[2] the ethylene acrylate copolymer comprises about 10 9
to about 40 wt% of methyl acrylate comonomer. 10
Hsu teaches (col. 5:15-20) [bracketed matter added]: 11
The composition may also optionally include a 12
polyethylene selected from the group consisting of [1] low 13
density polyethylene and [2] linear low density polyethylene, 14
including [3] linear low density polyethylene formed using 15
metallocene catalysts. 16
When the Hsu "optional" polyethylene is included, the Hsu 17
composition would have two soft polymers—the ethylene vinyl acetate 18
copolymer and the optional polyethylene. Claim 12 depends from 19
dependent Claim 11 via dependent Claim 10 via dependent Claim 9 to 20
independent Claim 1. Both independent Claim 1 and intermediate 21
dependent Claim 9 explicitly permit a "combination" of ethylene vinyl 22
acetate copolymer and polyethylene. 23
Hsu does not describe the density of the polyethylene as being less 24
than 0.89 g/cc. However, polyethylenes having the required density were 25

Appeal 2010-000004
Application 11/157,895

20
known. Specification, page 11:4-6. See also specification, page 4:19-21 and 1
page 11:4-6. 2
On this record, it appears DuPont is using a known metallocene-3
catalyst formed polyolefin for the purpose stated by Hsu. The use of a 4
combination of ethylene vinyl acetate copolymer and the polyethylene 5
polymer is explicitly taught by Hsu. 6
Hsu does not use the language "methyl acrylate." Rather, Hsu talks in 7
terms of an alkyl acrylate having 1 to 8 carbon atoms. Col. 3:5. An alkyl 8
acrylate having 1 carbon atom would be methyl acrylate. In any event, 9
ethylene methyl acrylate copolymers with 24 wt% methyl acrylate are 10
known. Specification, page 11:2-3. 11
Claim 15 12
DuPont separately argues footwear Claim 15. 13
Claim 15 is reproduced above. 14
DuPont's main argument is that Symons does not describe footwear. 15
However, we have not found it necessary to rely on Symons. 16
Hsu describes use of its polymer composition to make foams useful 17
for making footwear. Col. 2:51-53. 18
Resolution of patentability over the prior art 19
Upon consideration of the record, we agree with DuPont that it is 20
difficult, if not impossible, to combine, Symons with Hsu. 21
Symons seemingly precludes the presence of an initiator. 22
Page 6:16-21. Symons does not describe the presence of an initiator and 23
seems to limit the "addition of normal additives" to "inert" ingredients which 24
do not become involved in any cross-linking. We agree with DuPont that 25

Appeal 2010-000004
Application 11/157,895

21
Symons use of "consisting essentially" (page 6:16) is a layman's use—not 1
necessarily a U.S. patent law use. Symons originated in Australia and we do 2
not know whether Australian patent law attributes the same meaning to 3
"consisting essentially" as U.S. patent law. 4
We also agree with DuPont that the cork foam of Symons is in a 5
sufficiently different field from the footwear foam of Hsu to be considered 6
analogous art. The utilities are entirely unrelated. This is not a case where a 7
problem in one field provides a solution to a similar problem in another 8
field. Cf. Graham v. John Deere Co., 383 U.S. 1, 35 (1966) (discussing a 9
mechanical closure problem associated with the Scoggin patent before the 10
Graham court). 11
Since all of the Examiner's prior art rejections are based on a 12
combination of Symons and Hsu, and because we do not think Symons and 13
Hsu are property combinable, the Examiner's prior art rejections will be 14
reversed. 15
However, since we believe for the reasons discussed above, the prior 16
renders the subject matter on appeal unpatentable under 35 U.S.C. § 103(a), 17
we enter new grounds of rejection. 18
For the reasons given above, Claims 1-20 are rejected under 35 U.S.C. 19
§ 103(a) as being unpatentable over Hsu, Hatch and Koebisu. 20
In entering the new grounds of rejection, we have addressed the 21
claims singled out for consideration by DuPont in its Appeal Brief. Entry of 22
the new grounds of rejection should not be taken as precluding DuPont from 23
arguing other claims should it elect the Bd.R. 41.50(b)(1) option to further 24
proceed before the Examiner. 25

Appeal 2010-000004
Application 11/157,895

22
D. Discussion—obviousness-type double patenting 1
DuPont says that the Examiner also rejected claims 1-20 based on 2
obviousness-type double patenting. Appeal Brief, page 19. 3
Our review of the Examiner's Answer reveals that the Examiner has 4
maintained a double patenting rejection of Claims 1-6 and 8-15 based on 5
obviousness-type double patent over pending DuPont application 6
11/157,893. Answer, page 12. The Examiner addresses limitations of 7
Claims 1-6 and 8-15. Answer, pages 12-14. 8
As noted earlier, an appeal has been noted in pending DuPont 9
application 11/157,893, but the appeal has yet to be docketed at the Board. 10
In the Appeal Brief, DuPont reproduces Claim 1 on appeal and 11
Claim 1 of DuPont pending application 11/157,893. 12
DuPont then goes on to say Claim 1 of pending application 13
11/157,893 "requires an additional element . . . ." Appeal Brief, page 20. 14
DuPont further argues that the application on appeal does not suggest the 15
additional element. Id. The additional element is said to be an acid 16
copolymer or an ionomer of the acid copolymer or both. Id. Hsu, of course, 17
describes the use of acrylic acids. 18
Merely pointing out a difference does not establish non-obviousness. 19
Dann v. Johnston, 425 U.S. 219, 230 (1976). 20
Moreover, saying that the "difference" is not suggested in the 21
application on appeal ignores the fact that double patenting can be based on 22
the claims on appeal in combination with the prior art. 23
The Examiner provides fact-finding and rationale in support of the 24
double patenting rejection in both the Final Rejection (pages 15-18 and 22) 25

Appeal 2010-000004
Application 11/157,895

23
and the Answer (pages 12-14). DuPont has not cogently addressed the 1
specifics of the Examiner's findings and rationale in either the Appeal Brief 2
or the Reply Brief. 3
Under the circumstances, we will affirm the Examiner's double 4
patenting rejection. Our affirmance of the obviousness-type double 5
patenting rejection is without prejudice to DuPont proceeding under 6
MPEP § 804 as requested in the Appeal Brief at page 20. 7
D. Decision 8
Upon consideration of the appeal, and for the reasons given herein, 9
it is 10
ORDERED that the decision of the Examiner rejecting 11
Claims 1-20 over the prior art is reversed. 12
FURTHER ORDERED that the decision of the Examiner 13
rejecting Claims 1-6 and 8-15 based on obviousness-type double patenting is 14
affirmed. 15
FURTHER ORDERED that new grounds of rejection are made 16
of Claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Hsu, 17
Hatch, and Koebisu. 18
FURTHER ORDERED that our decision is not a final agency 19
action. 20
FURTHER ORDERED that within two (2) months from the 21
date of our decision appellant may further prosecute the application on 22
appeal by exercise one of the two following options: 23
1. Request that prosecution be reopened by submitting 24
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1) (2009). 25

Appeal 2010-000004
Application 11/157,895

24
2. Request rehearing on the record presently before the 1
Board. 37 C.F.R. § 41.50(b)(2) (2009). 2
FURTHER ORDERED that no time period for taking any 3
subsequent action in connection with this appeal may be extended under 4
37 C.F.R. § 1.136(a)(1)(iv) (2009). 5

AFFIRMED-IN-PART and REVERSED-IN-PART
New grounds of rejection. 37 C.F.R. § 41.50 (b) (2009)

cc (via First Class mail)
E.I. duPONT de NEMOURS AND COMPANY
LEGAL PATENT RECORDS CENTER
BARLEY MILL PLAZA 25/1122B
4417 LANCASTER PIKE
WILMINGTON, DE 19805