Ex Parte Datta et al

Patent Trial and Appeal Board

Aug 11, 2016

13006042 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/006,042 01/13/2011
23455 7590 08/15/2016
EXXONMOBIL CHEMICAL COMPANY
5200 BA YW A Y DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
FIRST NAMED INVENTOR
Sudhin DATTA
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.
2011EM004 3688
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
chem.law. prosecution@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUD HIN DATTA, LIEHPAO 0. F ARNG, VERA MINAK-
BERNERO, ERIC B. SIROTA, DIANA SMIRNOVA, and
RAINER KOLB 1
Appeal2015-001697
Application 13/006,042
Technology Center 1700
Before JEFFREY T. SMITH, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections claims 1-24. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' claimed invention is directed to polymer blend
compositions for use as viscosity modifiers comprising at least three
1 Appellants identify the real party in interest as ExxonMobil Chemical
Patents Inc. and state that it is a wholly owned affiliate of Exxon Mobil
Corporation. Appeal Br. 3.
Appeal2015-001697
Application 13/006,042
ethylene-based copolymer components, and to lubricant compositions
including a lubricating basestock and the polymer blend compositions.
Spec. Abstract.
Independent claims 1 and 9 are directed to polymer blend
compositions and Independent claims 17 and 21 are directed to lubricant
compositions including the viscosity modifiers. Independent claims 1 and
17 recite the ethylene content of each of the at least three ethylene-based
copolymers. Independent claims 9 and 21 recite the first melt heat of fusion
of the at least three ethylene-based copolymers.
Independent claims 1 and 9 are illustrative:
1. A polymer blend composition comprising a first
ethylene-based copolymer, a second ethylene-based copolymer,
and a third ethylene-based copolymer, wherein:
(a) the first copolymer has an ethylene content from
about 35 to about 55 wt%;
(b) the second copolymer has an ethylene content from
about 55 to about 71 wt%;
( c) the third copolymer has an ethylene content from
about 71 to about 85 wt%;
( d) the ethylene content of the second copolymer is at
least about 15 wt% greater than the ethylene content of
the first copolymer and the ethylene content of the third
copolymer is at least about 5 wt% greater than the
ethylene content of the second copolymer;
( e) the first, second, and third copolymers have a weight-
average molecular weight (Mw) less than or equal to
about 130,000;
(f) the ratio of the melt index of the first copolymer to the
melt index of the second copolymer is less than or equal
to about 3.0 and the ratio of the melt index of the first
copolymer to the melt index of the third copolymer is
less than or equal to about 3.0; and
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Application 131006,042
(g) the composition comprises from about 15 to about 85
wt% of the first copolymer, based on the total weight of
the first, second, and third copolymers.
9. A polymer blend composition comprising a first
ethylene-based copolymer, a second ethylene-based copolymer,
and a third ethylene-based copolymer, wherein:
(a) the first copolymer has a first melt heat of fusion from
about 0 to about 30 Jig;
(b) the second copolymer has a first melt heat of fusion
from about 30 to about 50 Jig;
( c) the third copolymer has a first melt heat of fusion
from about 50 to about 85 Jig;
( d) the heat of fusion of the third copolymer is at least
about 5 Jig greater than the heat of fusion of the second
copolymer;
( e) the first, second, and third copolymers have a weight-
average molecular weight (Mw) less than or equal to
about 130,000;
(f) the ratio of the melt index of the first copolymer to the
melt index of the second copolymer is less than or equal
to about 3.0 and the ratio of the melt index of the first
copolymer to the melt index of the third copolymer is
less than or equal to about 3.0; and
(g) the composition comprises from about 15 to about 85
wt% of the first copolymer, based on the total weight of
the first, second, and third copolymers.
Appeal Br. (Claims Appendix) 13-14.
REJECTIONS
The Examiner maintains the following grounds of rejection:
Claims 1-24 stand provisionally rejected for nonstatutory
obviousness-type double patenting over claims 1-20, 25, and 26 of
Application No. 13/178, 185.
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Application 13/006,042
Claims 1-24 stand rejected for nonstatutory double patenting over
claims 1-24 of U.S. Patent No. 8,389,452.
Claims 1-24 stand provisionally rejected for nonstatutory
obviousness-type double patenting over claims 1-24 of Application No.
13/006,057.
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) over Mishra2
alone, or in combination with Ikeda. 3
DISCUSSION4
Appellants proffer arguments as to each ground of rejection. See
generally, Appeal Br.
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prim a facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011) (explaining that even ifthe Examiner had failed to make
a prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the examiner's rejection).
We exercise our discretion whether to reach provisional obviousness-
type double patenting rejections and decline to reach the rejections over the
2 Mishra et al., US 6,753,381 B2, issued June 22, 2004.
3 Ikeda et al., US 7,915,358 B2, issued March 29, 2011.
4 We refer to the Final Office Action mailed August 1, 2013, the Appeal
Brief filed January 10, 2014, and the Examiner's Answer mailed April 1,
2014.
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Application 13/006,042
cited claims of Application Nos. 131178,185 and 13/006,057. See Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010). In both of these relied on co-
pending applications, the claims have been amended since the rejections
were made. Further, Application No. 13/178, 185 has since matured into an
issued patent-U.S. Patent No. 8,999,907 B2. We leave it to the Examiner
to consider the patentability of the claims over the cited claims in the event
of further prosecution.
As to the remaining grounds of rejection, we tum first to the rejection
of claims 1-24 under 35 U.S.C. § 103(a) over Mishra alone, or in
combination with Ikeda.
Appellants argue the rejection of claims as a group. We, therefore,
limit our discussion to claim 1 and decide the appeal as to all claims as a
group. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on Mishra for disclosing a polymer blend,
containing a high ethylene content ethylene-propylene copolymer and a
lower ethylene content ethylene-propylene copolymer, useful for preparing
viscosity index improvers with improved low temperature properties that can
be added to a lubricating base oil basestock. Ans. 4-5. Mishra's lower
ethylene content copolymer has an ethylene to propylene mole ratio from
35/65 to 65/35 and the higher ethylene content copolymer has an ethylene to
propylene mole ratio from 65/3 5 to 85/15. Ans. 5 (citing Mishra col. 3,
11. 26--42).
The Examiner finds the higher ethylene content ethylene-propylene
polymer disclosed in Mishra meets the limitations of both the second
copolymer-having an ethylene content from about 55 to about 71 wt.%-
and the third copolymer-having an ethylene content from about 71 to about
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85 wt. %-of the claimed polymer blend. Ans. 6. Reasoning "that it is
obvious to combine equivalents known for the same purpose," the Examiner
concludes it would have been obvious to include two higher ethylene content
ethylene-propylene polymers, one having an ethylene content from about 55
to about 71 wt.% and one having an ethylene content from about 71 to about
85 wt.%. Ans. 6-7.
The Examiner relies on Ikeda for disclosing typical heats of fusion
values for ethylene-based copolymers suitable for use as viscosity index
improvers. Ans. 5-6 (citing Ikeda col. 2, 11. 30-59, col. 5, 11. 25-30).
Appellants argue the Examiner has erred in relying on Mishra
because, being directed to polymer blends of two components-a high
ethylene-propylene polymer ("HEOCP") and a lower ethylene content
ethylene-propylene polymer ("LEOCP"), it fails to disclose or suggest using
two different higher ethylene content ethylene-propylene polymers such as
the claimed second and third polymer components. Appeal Br. 7-10.
Appellants contend that the Examiner has failed to articulate the requisite
reasoning why one of ordinary skill in the art would have used two HEOCPs
instead of one as taught by Mishra and why the two selected would be the
second copolymer and third copolymer set forth in claim 1. Appeal Br. 9-
10. Appellants further contend the Examiner relied on impermissible
hindsight in rejecting the claims. Appeal Br. 10.
On this record, Appellants have not persuaded us that the Examiner
erred reversibly. In teaching the use of a higher ethylene content copolymer
with an ethylene to propylene mole ratio from 65/35 to 85/15, Mishra
discloses that any of the copolymers within the range can be used in its two
component blend. Ans. 6-7. Mishra, accordingly, teaches two component
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blends with copolymers corresponding to the instant first copolymer and
instant second copolymer and two component blends with copolymers
corresponding to the first copolymer and instant third copolymer. See, e.g.,
In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]t is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom."). It follows that three component blends with copolymers
corresponding to the instant first, second, and third copolymers of claim 1
are prima facie obvious because, as the Examiner explains:
Case law holds that "It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be
useful for the same purpose in order to form a third composition
to be used for the very same purpose ... The idea of combining
them flows logically from their having been individually taught
in the prior art."
Ans. 6-7 (quoting In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)).
Appellants' further arguments that the Examiner has failed to set forth
the necessary rationale for the third polymer are unpersuasive of reversible
error for reasons set forth by the Examiner. Ans. 7-8 (citing KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007)); cf In re Fracalossi, 681 F.2d 792,
794 n. l (CCPA 1982) (A prior art reference's disclosure is not limited to its
examples.); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (A prior art
reference is not limited to its preferred embodiments, but is available for all
that it discloses and suggests to one of ordinary skill in the art.).
For these reasons, it also follows that Appellants' further contention
that the Examiner relied on impermissible hindsight is unpersuasive of
reversible error. If the Examiner has articulated a reason having rational
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underpinnings for making a proposed modification or combination of prior
art teachings, then that articulated reasoning demonstrates the combination is
not based on hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") (cited with approval in KSR,
550 U.S. at 418).
Appellants also argue that the two component polymer blend of
Mishra teaches away from the claimed three component polymer blend.
Appeal Br. 10-11. Appellants' argument is grounded on Mishra being
"solely directed towards shear blending two polymer components ... to
form a polymer blend" and on compositions failing a "blend study test"
when the ethylene content of the high ethylene polymer component had an
ethylene content of less than 80 mole% ethylene. Appeal Br. 10-11 (citing
Mishra col. 10, 11. 26-28). Appellants argue that one of ordinary skill in the
art would not have been motivated to use a high ethylene polymer
component having an ethylene content of 55-71 % like the second polymer
component of the claim. Appeal Br. 10-11.
On this record, Appellants have not established a teaching away from
the instant invention. See, e.g., DyStar Textilfarben Gmbh & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
("We will not read into a reference a teaching away from a process where no
such language exists."). While "a reference will teach away if it suggests
that the line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant," In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994), we find no such suggestion in the portion
of Mishra cited by Appellants. Even if we were to take the cited "blend
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study test" to disclose a failure and to be a teaching, it would only teach
away from a blend that does not include a polymer component with an
ethylene content of 80 mole % and so it does not teach away from the instant
invention which includes a third polymer component with an ethylene
content from about 71 to about 85 wt%. Further, Appellants' position lacks
sufficient support as to where it would have led one of ordinary skill when
there is no explanation of its significance and no evidence of its import. In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ...
cannot take the place of evidence.").
For the reasons above, we are unpersuaded the Examiner erred
reversibly in rejecting the claims over Mishra alone, or in further
combination with Ikeda, and we will sustain the rejection of claims 1-24.
Turning to the rejection of claims 1-24 on the ground ofnonstatutory
double patenting over claims 1-24 of U.S. Patent No. 8,389,452 ("the '452
patent"), we are likewise unpersuaded of reversible error. As explained by
the Examiner, the claims of the '45 2 patent are directed to compositions and
lubricating oils, wherein the compositions:
comprise a first ethylene-based copolymer having a weight
percent of ethylene-derived units ranging from about 35 wt.%
to less than 60 wt.% which overlaps the first claimed ethylene
copolymer, and second ethylene-based copolymer having a
weight percent of ethylene-derived units ranging from about 35
wt.% to less than about 85 wt.% which overlaps the second and
third claimed ethylene copolymers, and lubricating oils
containing the polymeric compositions.
Ans. 3.
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The Examiner concludes there is obviousness where the second
polymer component and third polymer component are encompassed by the
second ethylene copolymer of the patent. Ans. 3.
Appellants contend the claimed composition that recites three distinct
components is not obvious over the claims reciting two polymer
components. Appeal Br. 11-12. As explained in addressing the rejection of
the claims over Mishra alone, or in view of Ikeda, this difference does not
support Appellants' position that the claims are not prima facie obvious.
Accordingly, we will sustain the Examiner's nonstatutory double
patenting rejection of claims 1-24 over claims 1-24 of the '452 patent.
CONCLUSION
The Examiner's rejections of the claims under 35 U.S.C. § 103(a) is
AFFIRMED.
The Examiner's rejection of the claims on the ground of nonstatutory
obviousness-type double patenting is AFFIRMED.
We decline to reach the Examiner's provisional rejections of the
claims on the ground of nonstatutory obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
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