Ex Parte Costeux et al

Patent Trial and Appeal Board

Apr 27, 2017

13504561 (P.T.A.B. Apr. 27, 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.
13/504,561 04/27/2012 Stephane Costeux 67262-US-PCT 5673
109 7590 05/01/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANE COSTEUX, LINGBO ZHU,
CHRISTOPHER M. WEIKART, and THOMAS H. KALANTAR
Appeal 2016-002332
Application 13/504,5611
Technology Center 1700
Before PETER F. KRATZ, WESLEY B. DERRICK, and LILAN REN,
Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1-11 under 35 U.S.C. § 103(a).2 We
have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Appellants identify Dow Global Technologies LLC as the real party in
interest. Appeal Brief filed August 5, 2015 (“Appeal Br.”). 3.
2 Pending claims 12-20 stand withdrawn from examination. Final Office
Action (“Final Act.”), 2.
Appeal 2016-002332
Application 13/504,561
THE INVENTION
Appellants’ appealed claims relate to a polymeric foam article formed
of a thermoplastic polymer matrix. Spec.3 Abstract.
Claim 1—the sole independent claim—is representative.
1. A polymeric foam article comprising a thermoplastic
polymer matrix defining multiple cells therein, wherein the
polymeric foam article has the following characteristics:
a. the thermoplastic polymer matrix contains
dispersed within it nano-sized nucleating additive
particles that have all dimensions that are less than
30 nanometers in length;
b. possesses at least one of the following two
characteristics:
i. has an effective nucleation site density of at
least 3 x 1014 sites per cubic centimeter of
pre-foamed material; and
ii. has an average cell size of 300 nanometers
or less; and
c. has a porosity percentage of more than 50 percent
where the thermoplastic polymer matrix comprises a continuous
thermoplastic polymer that is either a single amorphous
thermoplastic polymer or blend of multiple thermoplastic
polymers that forms a single amorphous phase and wherein the
continuous thermoplastic polymer is 100 weight-percent of the
polymer in the thermoplastic polymer matrix and wherein the
polymeric foam article is further characterized by having a
thickness of greater than one millimeter and by being free of a
non-foamed skin and by having a homogeneous cell size
distribution.
Appeal Br. (Claims Appendix) 15.
3 Specification filed April 27, 2012.
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Application 13/504,561
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
I. Claims 1, 3-9, and 11 over Thiagarajan4 in view of
Mulvaney5 and Ramesh;6
II. Claim 2 over Thiagarajan in view of Mulvaney, Ramesh,
and Rajendran;7
III. Claim 10 over Thiagarajan in view of Mulvaney,
Ramesh, and Handa;8
IV. Claims 1 and 3-11 over Thiagarajan in view of
Mulvaney and Handa; and
V. Claim 2 over Thiagarajan in view of Mulvaney, Handa,
and Rajendran.
DISCUSSION9
Having considered the Examiner’s rejection in light of Appellants’
arguments, we are persuaded that the Examiner has failed to meet the
Office’s burden of establishing the unpatentability of the claims on appeal
For any ground of rejection, “the Examiner bears the initial burden ... of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
We focus our discussion on Rejections I and IV.
4 Thiagarajan et al., US 2009/0148665 Al, published June 11, 2009.
5 Mulvaney, US 3,975,473, issued August 17, 1976.
6 Ramesh et al., US 2005/0042437 Al, published February 24, 2005.
7 Rajendran et al., US 2009/0247654 Al, published October 1, 2009.
8 Handa et al., US 7,045,556 B2, issued May 16, 2006.
9 We refer to the Specification, the Final Office Action, the Appeal Brief, the
Examiner’s Answer issued December 16, 2015 (“Ans.”), and the Reply Brief
filed December 21, 2015 (“Reply Br.”).
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Appeal 2016-002332
Application 13/504,561
Rejection I (and Rejections II & III)
The Examiner relies on Thiagarajan, inter alia, for its disclosure
relating to a polymeric foam article comprised of a thermoplastic polymer
matrix and having cells of from about 10 nanometers to about 500
nanometers. Ans. 2-3 (citing Thiagarajan || 1, 7, 56).
The Examiner relies on Mulvaney for its teaching of nucleating agents
having a particle size of about 0.01 microns (10 nanometers) in a polymeric
foam article to meet the limitation of nano-sized nucleating additive particles
that have all dimensions that are less than 30 nanometers in length. Ans. 3
(citing Mulvaney, col. 1,11. 5-10, col. 3,11. 48-56, col. 4,11. 4-15). The
Examiner further relies on the teaching that Mulvaney’s foam article has
uniform physical properties and porosity to meet the recited homogenous
cell size distribution. Ans. 3 (citing Mulvaney, col. 2,11. 4-12, 55-66).
The Examiner relies on Ramesh for teaching a foam article thickness
of greater than one millimeter and for teaching a foam with a porosity
percentage of more than 50%. Ans. 3^1 (citing Ramesh 3, 7, 8, 11).
Observing that Ramesh recites an average cell size of at least about 0.01
mm, the Examiner further determines that Ramesh’s polymeric foam article
has an average cell size of about 10 nm. Ans. 14 (citing Ramesh 19).
The Examiner further finds that “Thiagarajan, Mulvaney, and Ramesh
are analogous because they disclose a polymeric foam comprising a
thermoplastic polymer.” Ans. 4.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to have incorporated
the nucleating particles of Mulvaney into the polymeric foam article of
Thiagarajan to obtain the benefit of the fine particles as nucleating sites and
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Appeal 2016-002332
Application 13/504,561
to modify the porosity and thickness of the polymeric foam article to that of
Ramesh to obtain a useful foam for various specified purposes. Ans. 4.
Appellants proffer that the Examiner has erred in finding that Ramesh
discloses the level of porosity required by the claims and that the Examiner
has failed to establish the requisite reasonable expectation of success in the
relied on combination. Appeal Br. 7-12.
As to the level of porosity, Appellants’ argument highlights the
Examiner’s error in relying on the disclosed percentages of closed and open
cells (of the total cells) for meeting the limitation of a “porosity percentage
of more than 50 percent.” As maintained by Appellants, porosity is a
measure of void volume within the foam. See, e.g., Spec. 2,1. 12 (“Porosity,
the ratio of void volume to foam volume . . .”); 6,1. 4 (“Porosity serves as a
measure of void volume fraction in a foam article.”). The Examiner’s
maintained reliance on disclosure relating to the percentage of open and/or
closed cells does not address the amount of void within the polymeric foam.
Ans. 16-17.
On this record, accordingly, it is manifest that the Examiner has failed
to articulate the requisite reasoning grounded on fact to establish a prima
facie case. We note, however, that while not relied on by the Examiner,
perhaps due wholly to the error as to the proper meaning of porosity,
Thiagarajan itself includes relevant disclosure as to the porosity of its foam
article. See, e.g., Thiagarajan, Abstract, || 5, 7 (describing articles with a
foam density that is from about 1 or 5 percent to about 50 percent of the bulk
density of the material of the nanocellular foam). As noted above, however,
the rejection before us is not premised on the latter porosity disclosure of
Thiagarajan for teaching or suggesting a porosity value that may correspond
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Appeal 2016-002332
Application 13/504,561
to the claimed porosity limitation and, as indicated below, this is not the only
substantive error in the Examiner’s rejection.
As to the reasonable expectation of success, Appellants identify a
further factual error—the finding that Ramesh discloses a foam with pore
sizes of 10 nanometers—and proffer arguments that highlight the absence of
relied on teachings for a uniform nanocellular foam being formed using
nano-sized nucleating particles or being formed in a thickness of greater than
one millimeter. Appeal Br. 10. We are directed to no evidence that the
foam in Mulvaney was a nanocellular foam or to sufficient explanation by
the Examiner why the nano-sized nucleating particles in Mulvaney would
reasonably be expected to form a nanocellular foam such as that in
Thiagarajan or according to the claims. See generally Final Act.; Ans. In
particular, as to reasonably expecting formation of a nanocellular foam, the
Examiner fails to establish that the nucleating particles in Mulvaney are the
same as those disclosed as suitable in the instant Specification and also fails
to establish any basis why differences in nucleating particles would be
immaterial as to their nucleating and pore forming effect.10 Likewise, in
establishing merely that the polymers in Thiagarajan, Mulvaney, and
Ramesh are thermoplastic polymers, there is insufficient explanation as to
the differing polymers being formed into the nanocellular foams and how the
nano-sized particles in Mulvaney would function as nucleating particles to
provide the claimed foam. See generally Final Act.; Ans.
10 Mulvaney includes a listing of suitable nucleating agents (col. 4,11. 14-19)
which appear to differ from those identified in the Specification as being
particularly suitable (Spec. 9,11. 3-7).
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Application 13/504,561
Because the rejection lacks sufficient explanation as to how the
nucleating particles in Mulvaney would be expected to provide a
nanocellular foam, including, for example, on the basis of similarity to those
used in the instant application, the Examiner’s articulated reasoning falls
short of that necessary for a prima facie case. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not. . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”); In re Sporck, 301 F.2d 686, 690 (CCPA
1962); see also Oetiker, 977 F.2d at 1445.
On this record, accordingly, we are unable to sustain the Examiner’s
Rejection I. Having also persisted in the same errors in Rejections II and III,
we are likewise unable to sustain these rejections. We decline to scour the
record in the first instance for facts that might support the rejection, as our
primary role is review, not examination de novo.
Rejection IV (and Rejection V)
The Examiner relies on Thiagarajan and Mulvaney as explained above
for Rejection I. Compare Ans. 3 4, with id. at 9-11.
The Examiner relies on Handa for its disclosure of a polymeric foam
article comprising a thermoplastic polymer matrix defining multiple cells.
Ans. 10 (citing Handa, col. 1,11. 55-60, col. 2,11. 1-3, col. 6,11. 39-51). The
Examiner determines that the disclosed greater than 85% closed cells read
on the recited porosity percentage of more than 50 percent. Ans. 10 (citing
Handa, col. 6,11. 48-51). The Examiner further relies on Handa for the
recited foam article thickness of greater than one millimeter. Ans. 10-11
(citing Handa, col. 6,11. 39-43). The Examiner further finds the
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Application 13/504,561
thermoplastic matrix in Handa contains dispersed nucleating agents in small
particulate form. Ans. 10-11 (citing Handa, col. 2,11. 1-3, col. 4,11. 25-37).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to have incorporated the
nucleating particles of Mulvaney into the polymeric foam article of
Thiagarajan to obtain the benefit of the fine particles as nucleating sites and
to modify the porosity and thickness of the polymeric foam article to that of
Handa to obtain a stable foam having minimized or no corrugation. Ans. 11.
As to the level of porosity, the Examiner has—as in Rejection I, as
discussed above—erred in citing to disclosure in Handa relating to the
percentage of closed cells for the porosity limitation (Handa, col. 6,11. 48-
51), even though Handa appears to also contain relevant disclosure as to the
percentage of void volume as a percentage of the foam volume within
portions of Handa cited for other purposes (see, e.g., Handa, col. 6,11. 44-
48). Accordingly, while the Examiner has again failed to articulate the
requisite reasoning grounded on fact to establish a prima facie case, we
again note the presence of non-utilized and seemingly more relevant
disclosure as to the porosity of the foam articles of Thiagarajan and of
Handa. Moreover, as indicated below, even if the Examiner would have
rectified this error, there is further deficiency in the stated obviousness
rejection.
As to the reasonable expectation of success, Appellants rely on the
arguments as to Rejection I, and further argue that the foam in Handa is also
not a nanocellular foam as the disclosed foam cell size is approximately 700
micrometers. Appeal Br. 13 (citing Handa, col. 7,11. 14-16).
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Application 13/504,561
The Examiner counters that the cited foam cell size of approximately
700 micrometers is only relevant as to some polyolefin foams and that this
does not restrict Handa to a microcellular foam. Ans. 19-20. The Examiner
fails, however, to direct us to any evidence or sufficient explanation to
support the position that Handa relates to a nanocellular foam. See generally
Final Act.; Ans. Thus, while the nucleating agents set forth in Handa
include inorganic materials in small particulate form of chemical
composition at least similar to those in the Specification (compare Handa,
col. 4,11. 35-37 with Spec. 9,11. 3-7), there is an insufficient basis set forth
for these providing a nanocellular foam or for the applicability of Handa’s
nucleating agents to provide such a foam in the cited prior art (see generally
Final Act.; Ans.). On this record, accordingly, the Examiner has failed to
establish that forming a nanocellular foam according to the claims would
reasonably be expected by use of an included nano-sized nucleating particles
according to Mulvaney for the reasons set forth above in our discussion of
Rejection I.
Thus, the Examiner’s basis for this rejection also falls short of that
necessary for a prima facie case. Warner, 379 F.2d at 1017; Sporck, 301
F.2d at 690; see also Oetiker, 977 F.2d at 1445. Accordingly, on this record,
we are also unable to sustain the Examiner’s Rejection IV (and Rejection V).
CONCLUSION
The Examiner’s decision rejecting claims 1-11 is REVERSED.
REVERSED
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