Ex Parte Cortes et al

Patent Trial and Appeal Board

Mar 18, 2019

14622964 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/622,964 02/16/2015 Leonardo Cortes
25264 7590 03/20/2019
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
COS-1339 6797
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
03/20/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
tammy.brzozowski@total.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARDO CORTES, FENGKUI LI, JON TIPPET, KENNETH
PAUL BLACKMON, MARC MAYHALL, LELAND DANIELS, and
JOHN ASHBAUGH
Appeal2018-002916
Application 14/622,964 1
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § l 12(b) and 35 U.S.C. § 103.
We have jurisdiction. 35 U.S.C. § 6.
We affirm, and also enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, Fina Technology, Inc., which is identified as
the real party in interest. App. Br. 1.
Appeal2018-002916
Application 14/622,964
SUBJECT MATTER
The subject matter on appeal is directed to polymeric foams that may
be used in applications such as "lightweight energy management or
cushioning" in "automotive components, packaging, dunnage, thermal
insulation, and safety applications where repeated impact may occur."
Spec. ,r 2.
Representative independent claim 1, copied from the Claims
Appendix of the Appeal Brief, is reproduced below:
1. A polymeric composition comprising:
more than 50 weight % of a polypropylene or styrenic polymer;
a metallic acrylate salt; and
one or more acid neutralizers,
wherein the one or more acid neutralizers are present in an
amount greater than or equal to a weight percentage of the
metallic acrylate salt,
wherein the amount of acrylic acid in the polymer
composition is between 75% and 95% less than as compared to
a polymer composition with an acrylate salt without an acid
neutralizer.
App. Br. 13 (emphasis added).
Remaining independent claims 12 (directed to a foam), 15 (directed to
a process), and 21 ( directed to a polymeric composition) each contains
similar limitations to those in claim 1.
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Appeal2018-002916
Application 14/622,964
REJECTIONS ON APPEAL
I. Claims 1, 3-12, 14--21 2 under 35 U.S.C. § 112(b) as indefinite;
II. Claims 1, 3-12, and 14--20 under 35 U.S.C. § 103 as being
unpatentable over Allmendinger et al. 3 and Austin et al.; 4 and
III.Claim 21 under 35 U.S.C. § 103 as being unpatentable over
Allmendinger, Austin, and one of Glass et al. 5 or Kablitz et al. 6
OPINION
Rejection I
The Examiner determines that the limitation appearing in each
independent claim requiring "the amount of acrylic acid in the polymer
composition is between 75% and 95% less than as compared to a polymer
composition with an acrylate salt without an acid neutralizer" is indefinite
under 35 U.S.C. § 112(b ). Final 2. Specifically, the Examiner states that "it
is not apparent what 'less than as compared to' means." Id.
In response, Appellant asserts that this limitation "is definite when
read in light of the specification (see, e.g., ,r [0032])." App. Br. 3.
Paragraph 32 is reproduced below:
2 Although the rejection heading omits independent claim 21, Appellant
understands, and we agree, that this rejection applies equally to claim 21
because it recites the phrase "between 7 5% and 95% less than as compared
to" that is at issue in the rejection. App. Br. 3. We therefore treat the
Examiner's omission of claim 21 from the heading of this rejection as a
typographical error.
3 US 2010/0273925 Al, published October 28, 2010.
4 US 2013/0053496 Al, published February 28, 2013.
5 US 5,208,362, issued May 4, 1993.
6 US 4,476,297, issued October 9, 1984.
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Appeal2018-002916
Application 14/622,964
It has been found that the inclusion of an acid neutralizer in the
polymeric composition may control odor resulting from the
presence of acids in the polymer foam, such as, for instance,
acrylic acid. In certain embodiments, the acid neutralizer may
reduce the amount of acrylic acid by about 7 5% or more, about
95% or more, or approximately 100% as compared to a polymer
foam with a metallic acrylate salt without the acid neutralizer. In
other embodiments, the acid neutralizer may reduce the amount
of acrylic acid by between 75% and 95% as compared to a
polymer foam with an acrylate salt without an acid neutralizer.
Spec. ,r 32.
Appellant's assertion is unpersuasive because Appellant merely points
to paragraph 32 and makes an assertion regarding compliance with the
definiteness standard without any embellishment. App. Br. 3. Such
conclusory assertions fail the standard set forth in the Rules governing
appellate practice before this Board. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv) ("The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.").
Our own attempt to discern the meaning of the phrase "75% and 95%
less than as compared to" in view of paragraph 32 fares no better. Indeed,
this phrase does not even appear in the referenced paragraph. See Spec.
Under these circumstances, we sustain the Examiner's rejection of
claims 1, 3-12, and 14--21 as indefinite under 35 U.S.C. § 112(b).
We also make a new ground of rejection of claims 1, 3-12, and 14--21
under 35 U.S.C. § 112(b) as indefinite. In so doing, we highlight additional
reasons that these claims are indefinite.
Regarding independent claims 1 and 21, our focus is on the last
wherein clause: "wherein the amount of acrylic acid in the polymer
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Appeal2018-002916
Application 14/622,964
composition is between 75% and 95% less than as compared to a polymer
composition with an acrylate salt without an acid neutralizer." (emphases
added). App. Br. 13, 16.
First, we observe that the phrase "the amount of acrylic acid" recited
in these claims lacks antecedent basis. In fact, neither of these claims
require the generation or presence of acrylic acid. 7
Also, the first recitation of "the polymer composition" has no
antecedent basis. It seems to us that this recitation should refer to "the
polymeric composition."
Moreover, even if acrylic acid were to be generated by mixing the
claimed polymer with a metallic acrylate salt, it is entirely unclear what the
second-recited "polymer composition" -which serves as the basis of the
acrylic acid comparison - contains. Claims 1 and 21 fail to provide any
specifics regarding the "polymer" and "acrylate salt" components in the
"polymer composition" to which the claimed composition is compared.
Similar indefiniteness issues arise when considering independent
claims 12 and 15. Each of these claims recite "wherein the amount of
acrylic acid in the [] foam is between 75% and 95% less than as compared to
a []foam with an acrylate salt without an acid neutralizer." App. Br. 14, 15.
Namely, the phrase "the amount of acrylic acid" again lacks antecedent
basis. Also, if acrylic acid is actually present, it is unclear what the foam is
being compared to because the claim does not specifically recite the
chemical makeup of the comparison "foam."
7 We emphasize that the amount of metallic acrylate salt in claims 1 and 21
is unspecified.
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Appeal2018-002916
Application 14/622,964
Thus, we newly reject independent claims 1, 12, 15, and 21 under 35
U.S.C. § 112(b) as indefinite for these additional reasons. It follows that
dependent claims 3-11, 14, and 16-20 are also indefinite for these same
reasons.
Rejections II & III
When claims are indefinite, rejecting them as obvious based on
speculation and assumptions is legal error. In re Steele, 305 F.2d 859, 862
( CCP A 1962 ). Because we determine that each independent claim is
indefinite for the reasons expressed by the Examiner and above, we reverse
these rejections proforma, expressing no opinion regarding the propriety of
such rejections.
DECISION
Rejection I is affirmed.
Rejections II and III are reversed proforma.
We newly reject claims 1, 3-12, and 14--21 as indefinite under 35
U.S.C. § 112(b).
AFFIRMED
37 C.F.R. § 4I.50(b)
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Appeal2018-002916
Application 14/622,964
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure§ 1214.01.
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