Ex Parte Chundury et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10884007 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEENADAYALU CHUNDURY, SUSAN T. SCHMIDT,
DANIEL L. EVANS and CHRISTOPHER J. BRENNER
____________

Appeal 2009-002532
Application 10/884,007
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before ALLEN R. MACDONALD, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002532
Application 10/884,007

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. (Appeal Brief filed November 14, 2007,
hereinafter “App. Br.,” 5). We have jurisdiction pursuant to 35 U.S.C. §
6(b).
We AFFIRM.
THE INVENTION
Appellants describe methods of forming talc or calcium carbonate
filled polymer blend compositions including fiberglass fibers having an
average length of from about 1.0 mm to about 1.7 mm or from about 0.9 mm
to about 1.4 mm, and a diameter of from about 11 microns to about 17
microns. (Spec. [0010], [0011], and [0021]). Claims 1 and 11, reproduced
below, are representative of the subject matter on appeal.
1. A method of forming a talc-filled polymer blend
composition comprising melt mixing from about 40% to about
80% by weight of a polypropylene impact copolymer, from
about 10% to about 40% by weight talc, and from about 1% by
weight to about 10% by weight of a masterbatch composition
comprising from about 20% to about 40% by weight of
fiberglass fibers having, prior to melt-mixing, an average length
of from about 1.0 mm to about 1.7 mm and a diameter of from
about 11 microns to about 17 microns, dispersed in a carrier
comprising polypropylene, together to form a melt mixture that
when processed and tested in accordance with ASTM D2457-
03 exhibits a 60° specular gloss value of less than about 3.0.

11. A polymer blend composition comprising: from about 40%
by weight to about 80% by weight of a polypropylene impact
copolymer; from about 10% by weight to about 40% by weight
talc; and from about 0.5% to less than about 2.0% by weight of
fiberglass fibers having an average length of from about 0.9
mm to about 1.4 mm, a diameter of about 11 microns to about
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17 microns, and an aspect ratio of at least about 10, wherein the
polymer blend exhibits a 60° specular gloss value of less than
about 3.0 according to ASTM D2457-03.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sobajima 4,603,153 Jul. 29, 1986
Chundury 5,969,027 Oct. 19, 1999

The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Sobajima in view of Chundury.
In rejecting the claims on appeal, the Examiner found that the only
difference between the claims on appeal and Sobajima is that “the claims
limit the glass fiber diameter to be ‘from about 11 microns to about 17
microns. [’] Sobajima et al. identifies 10 microns as the maximum preferred
fiber diameter.” (Examiner’s Answer entered February 6, 2008, hereinafter
“Ans.,” 3). However, the Examiner determined that “[t]he difference here is
less than a micron and could be understood to overlap in scope as the term
‘about’ imparts a degree of flexibility.” (Ans. 4). The Examiner also
determined that the specular gloss limitations are property limitations and
that it would be reasonable to expect that prior art would possess the claimed
properties. (Ans. 4). The Examiner also cited Chundury for disclosing
similar compositions to those disclosed in Sobajima with glass fibers having
a diameter of 5 to 25 microns. (Ans. 4).
Appellants contend that there is no suggestion in the prior art to select
the claimed ranges from the broad ranges of Sobajima to obtain the low
gloss recited in the claims. (App. Br. 10). Appellants argue that “about 11
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microns” does not include 10 microns. (App. Br. 11). Appellants contend
that Sobajima teaches away from the claimed glass fiber diameters because
with diameters above 10 microns, the increase in mechanical strength is
small and the amount of warp increases, such that the modification
suggested by the Examiner would frustrate the purpose of Sobajima. (App.
Br. 12, 13, and 16). Appellants additionally argue that Sobajima teaches that
the glass fiber length is not critical and includes any lengths over 0.1 mm
such that the references would not lead to optimization within Appellants’
range without undue experimentation. (App. Br. 13-16). Appellants also
contend that Sobajima does not disclose the specific masterbatch
compositions recited in the claims. (App. Br. 13).

ISSUE
The issue is: Have Appellants shown that the Examiner reversibly
erred in determining that it would have been obvious to one of ordinary skill
in the art to include fiberglass fibers having the lengths and diameters within
the recited ranges in view of Sobajima and Chundury?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification is silent with respect to the meaning of
“about” in the recitation “a diameter of from about 11 microns to
about 17 microns.” (See generally, Specification).
2. Appellants’ examples do not present any results where the
properties of the fiberglass fibers are varied or where the
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composition of the masterbatch is varied. (Spec. 9-11, Examples
1-3).
3. Sobajima describes glass fiber reinforced resin compositions where
the average diameter of the glass fiber is “10µ [microns] or less
and preferably from 2 to 10µ [microns].” (Col. 4, ll. 51-53).
4. Sobajima discloses that for the glass fibers, “it is preferred to use
chopped strands of length about 1 to 8 mm.” (Col. 5, ll. 20-24).
5. Sobajima discloses that the components of the composition may be
partially blended to form masterbatches prior to blending with a
propylene polymer. (Col. 9, ll. 21-39).

PRINCIPLES OF LAW
The “word ‘about’ does not have a universal meaning in patent
claims.” Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed.
Cir. 1995). Instead, it “must be interpreted in its technologic and stylistic
context” by considering how the word “was used in the patent specification,
prosecution history, and other claims.” Id. Appellants must offer sufficient
evidence that the scope of term “about” does not include the prior art. See
BJ Services Co. v. Halliburton Energy Services Inc., 338 F.3d 1368, 1372
(Fed. Cir. 2003).
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 . . . We therefore
conclude that a prior art reference that discloses a range
encompassing a somewhat narrower claimed range is sufficient
to establish a prima facie case of obviousness. That is not to
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Application 10/884,007

say that the claimed composition having a narrower range is
unpatentable. Rather, the existence of overlapping or
encompassing ranges shifts the burden to the applicant to show
that his invention would not have been obvious.

In re Peterson, 315 F.3d 1325, 1330 (Fed Cir. 2003) (emphasis in original).

ANALYSIS
Appellants have grouped claims 1-10 and claims 11-20 separately.
However, Appellants rely on similar if not the same arguments for each
group of claims. Accordingly, we confine our discussion to appealed claim
1, which contains claim limitations representative of the arguments made by
Appellants, and address claim 11 to the extent necessary. Claims 2-10 and
12-20 stand or fall with claims 1 and 11 pursuant to 37 C.F.R. §
41.37(c)(1)(vii).2
Initially, we agree with the Examiner that a glass fiber diameter of
“about 11 microns” recited in the claims reasonably includes Sobajima’s
glass fiber diameters of 10 microns or less. (Ans. 4; FF 3). Appellants have
provided no experimental results to support their arguments that that the
term “about” is intended to express “insubstantial differences” from 11
microns, “such as, for example, 10.7 microns or 11.2 microns.” (App. Br.
11). Appellants have also failed to provide any persuasive evidence that one
of skill in the art would not read about 11 microns to include 10 microns.
(Id.). Moreover, Appellants’ Specification does not provide a definition for

2 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
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the term “about.” (FF 1). Thus, Appellants have not sufficiently
demonstrated that the Examiner, in giving the appealed claims their broadest
reasonable interpretation, erred in reading “about 11 microns” to include
glass fiber diameters of 10 microns as disclosed in Sobajima. Accordingly,
Appellants’ arguments that Sobajima “teaches away” from the glass fiber
diameters recited in the claims and that Sobajima discloses a “genus” of
glass fiber diameters that fails to anticipate or render obvious the claimed
“species” are not persuasive.
We are likewise unpersuaded by Appellants’ argument that the recited
glass fiber lengths would not have been obvious in view of the range of glass
fiber lengths disclosed in Sobajima. Sobajima discloses a preferred range of
glass fiber lengths of 1 to 8 mm. (FF 4). This range completely
encompasses Appellants’ range of “about 1.0 mm to about 1.7 mm” recited
in claim 1 and significantly overlaps Appellants’ range of “about 0.9 mm to
about 1.4 mm” recited in claim 11. We do not agree with Appellants that
Sobajima’s range of glass fiber lengths creates a “genus” that fails to
anticipate or render obvious Appellants’ “species” of glass fiber lengths.
Sobajima discloses only an 8 mm range for the glass fiber length (FF
4), which encompasses or significantly overlaps Appellants’ claimed ranges.
Therefore, Sobajima’s preferred glass fiber length range does not present a
“genus-species” problem with respect to the recited glass fiber length ranges.
See In re Harris, 409 F.3d 1339 (Fed. Cir. 2005) (the court determined that
the prior art ranges cited against the claims on appeal did not pose a genus-
species problem, because the prior art ranges were more narrow than the
prior art ranges applied against the claims in In re Peterson, some of which
contained no upper limits).
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Thus, because Sobajima’s glass fiber length encompasses or
significantly overlaps Appellants’ claimed ranges, the burden properly was
shifted to Appellants to rebut the Examiner’s prima facie case of
obviousness. Although Appellants contend that the fiber lengths and
diameters are critical, we agree with the Examiner that the comparative
results in Appellants’ Specification are not sufficient to rebut the Examiner’s
prima facie case. (Ans. 5). Appellants have provided no comparative results
where the diameter and length of the glass fibers are variables, or a
comparison of the recited glass fibers to the closest prior art. (See FF 2).
Appellants’ argument that Sobajima fails to disclose the specific
masterbatch formulations recited in the claims is without merit. Appellants
provide no evidentiary support for the mere argument that one skilled in the
art would have to engage in undue experimentation to arrive at Appellants’
recited masterbatch compositions from Sobajima’s disclosure. We agree
with the Examiner that Appellants provide no unexpected results related to
the specific masterbatch compositions claimed. (Ans. 7). Appellants’
comparative examples only show the differences between the presence and
absence of masterbatches and not whether the particular constituents or
amounts of glass fibers in the masterbatches have any effect on the polymer
blend composition.
Therefore, because we agree with the Examiner that Sobajima
discloses glass fiber diameters within the range of “about 11 microns” as
recited by Appellants, we affirm the Examiner’s decision to reject claims 1-
20 as being obvious over Sobajima in view of Chundury.

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Appeal 2009-002532
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CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that it would have been obvious to one of ordinary skill
in the art to include fiberglass fibers having the lengths and diameters within
the recited ranges in view of Sobajima and Chundury.

ORDER
We affirm the Examiner’s decision rejecting claims 1-20 under 35
U.S.C. § 103(a) as being unpatentable over Sobajima in view of Chundury.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

tc

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