Ex Parte Delaite et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10480087 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMMANUEL MICHEL DELAITE and
VIRGILE JOEL MAURICE ROUYER
____________

Appeal 2009-004953
Application 10/480,087
Technology Center 1700
____________

Decided: April 19, 2010
____________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-3, 7, 8, and 18-25 (Final Office Action
(“Final”), mailed Nov. 5, 2007, 1), the only claims pending in the
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Application. (Appeal Brief (“Br.”), filed Apr. 25, 2008, 1.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and is reproduced below from the Claims Appendix to the Appeal
Brief:

1. A process for the manufacture of pipes and fittings
comprising:

(a) providing a propylene polymer based composition comprising
organic copolymers consisting essentially of:

at least 80 parts by weight of a crystalline homopolymer of propylene
or of a crystalline statistical copolymer (A) of propylene which may
contain up to 1.5% molar of monomer units derived from ethylene
and/or from an alpha-olefin containing from 4 to 6 carbon atoms, and

at least 3 parts by weight of a statistical copolymer (B) containing
from 40 to 70% molar of monomer units derived from ethylene and/or
from an alpha-olefin containing from 4 to 6 carbon atoms;

wherein the organic copolymers are obtained by a process comprising
at least two successive polymerization stages in the course of which
polymers (A) and (B) are prepared;

wherein the propylene polymer based composition has a melt fluidity
index of about 0.3 to about 0.8 g/10 minutes,
wherein the intrinsic viscosity ratio of polymer (B) to polymer (A) is
about 0.9 to about 2; and

(b) making a pipe or fitting from the aforesaid propylene polymer
based composition; and

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(c) annealing said pipe or fitting by heating for a period of between
about two hours and about forty-eight hours at a temperature between about
120 and about 150°C and;

(d) slowly cooling the annealed pipe or fitting to room temperature.

The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Jul. 9,
2008, 3-6), and Appellants request review of (Br. 2), the following grounds
of rejection:
1. claims 18-22 and 24 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement; and
2. claims 1-3, 7, 8, and 18-25 under 35 U.S.C. § 103 as
unpatentable over Short (US 3,318,976, issued May 9, 1967) in view of
Bremer (US 3,473,833, issued Oct. 21, 1969) and Ito (Annealing of
Commercial Block Polypropylene. I. Thermal and Physical Properties,
Journal of Applied Polymer Science, Vol. 46 (1992) pages 1221-1233).
Rejection of claims 18-22 and 24 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement
ISSUE
The Examiner maintains that claims 18-22 and 24 fail to comply with
the written description requirement of 35 U.S.C. § 112, first paragraph,
because the original disclosure does not support the recited open-ended
ranges, i.e., claims 18-22 and 24 recite only a single endpoint which is
preceded by the language “less than” or “at least.” (Ans. 3.) The Examiner
finds that Tables 1-11 of the Specification only “provide explicit support for
particular values and ranges.” (Ans. 3.)
Appellants concede that “the values provided in Tables 1-11 [] show a
relatively narrow range.” (Br. 3.) However, Appellants contend that one of
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ordinary skill in the art would recognize from the Specification and Tables
that the measured values vary progressively as annealing times increase, and
would understand that the invention encompasses values outside those
explicitly shown in the Tables. (See Br. 3.)
Based on the arguments of the Examiner and Appellants, we consider
the following issue:
Did the Examiner properly take into account the understanding of the
ordinary artisan with respect to changes in properties of pipes as annealing
time is increased in determining that the original claims and Specification
fail to support the open-ended ranges in claims 18-22 and 24?
We answer this question in the affirmative as to each of claims 18-22
and 24 for the reasons explained below.
FINDINGS OF FACT (“FF”)
1. The Specification discloses preparation of four propylene
polymer based compositions having melt fluidity indices of .80 (Exs. 1 and
2) and .45 (Exs. 3 and 4), and intrinsic viscosity ratios of 1.74 (Exs. 1 and 2)
and 1.6 (Exs. 3 and 4). (Spec. 6:6-10; Table 1.) The compositions were
extruded to obtain solid wall 110 mm pipes and structured twin wall 200 mm
pipes which were then subjected to annealing by heat treatment at 140ºC +
0.2ºC for a period between about 3 and 24 hours. (Spec. 7:7-12.) The
physical properties of the pipes were evaluated using standard test methods;
the results are shown in Tables 2-11. (See generally, Spec. 7:18-16:11.)
2. Claim 18 specifies that an annealed pipe manufactured
according to the method of claim 1 has “a longitudinal reversion less than +
0.15%.”
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3. Table 2 (Spec. 8) shows that the longitudinal reversion of 110
mm pipes (extruded from the compositions of Exs. 1-4) after annealing for
12 hours ranged from -0.14 to +0.04. Pipe extruded from the Example 1
composition was annealed at 12 and 24 hours, with longitudinal reversions
measured as -0.04 and -0.06%, respectively.
4. Claim 19 requires an annealed pipe manufactured according to
the method of claim 1 have “a ring stiffness of at least about 5.25 kN/m2 at
23ºC.” Claim 20 specifies that an annealed pipe manufactured according to
the method of claim 1 has “a ring stiffness at least about 10% greater than”
the same pipe prior to annealing and cooling steps.
5. Tables 3 and 4 (Spec. 9) show a minimum ring stiffness of 5.25
kN/m2 at 23ºC for the pipes extruded from the compositions of Exs. 1-4.
According to the Specification, the data shown in Tables 3 and 4 further
evidences that the annealing process results in a marked increase in ring
stiffness, “especially for solid wall pipes, where an increase of about 10 to
15% in ring stiffness is observed.” (Spec. 10:1-5; see also, Table 3, Ex. 3
(showing a 10.0% increase in ring stiffness after 3 hr anneal).) However, the
data in Tables 3 and 4 do not show a progressive increase or decrease in ring
stiffness with increasing anneal time. (See e.g. Table 3, Ex. 2 (ring stiffness
is higher after a 6 hour anneal time than after 3 and 12 hour anneal times).)
6. Claim 21 specifies that an annealed pipe manufactured
according to the method of claim 1 has “a creep ratio reduction of at least
about 20% from” the same pipe prior to annealing and cooling steps.
7. Table 5 (Spec. 10) shows the reduction in creep ratio of a pipe
manufactured using the Ex. 1 composition after annealing for 24 hours. (See
Spec. 11:1 (noting that test results “show that annealing reduces the creep
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ratio by around 20%.”).) Creep ratio is not provided for pipes manufactured
using any other compositions and for anneal times other than 24 hours.
8. Claim 22 requires that an annealed pipe manufactured
according to the method of claim 1 have “a hydrostatic pressure pipe test
increase of at least about 100% greater than” the pipe prior to annealing and
cooling steps.
9. Table 6 (Spec. 11) evidences a minimum 94% mean increase in
hydrostatic pressure pipe tests for annealed pipes versus non-annealed. The
Specification further states that “[a]s in the case of Ring Stiffness
measurements, it can be seen that annealing for just 3 hours at 140ºC is
sufficient to provide the enhancement in stress cracking resistance.” (Spec.
12:8-10.) The data in Table 6 does not show a progressive increase or
decrease in hydrostatic pressure pipe test with increasing anneal time. (See
e.g. Table 6, Ex. 1 (% increase is lower after 6 hour anneal as compared to 3
and 12 hour anneal times).)
10. Claim 24 requires that an annealed pipe manufactured
according to the method of claim 1 have “a [sic] instrumented falling weight
impact test @-30ºC increase of at least about 124% greater than” the same
pipe prior to annealing and cooling steps.
11. Table 9 (Spec. 15) evidences an increase of at least 124% in the
impact resilience at -30ºC of a pipe manufactured using the Ex. 1
composition after annealing for 3 hours. Impact resistance was only tested
over a range of annealing times for pipes manufactured from the Ex. 1
composition and no testing was conducted on pipe annealed for a time of
more than 24 hours.

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PRINCIPLES OF LAW
When the original written description describes something within the
scope of a subsequently amended claim, the Examiner must do more than
simply point out the difference in scope to support a rejection under the
written description requirement of 35 U.S.C. § 112, first paragraph. See In
re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (“[T]hat a claim may be
broader than the specific embodiment disclosed in a specification is in itself
of no moment.”) The Examiner must consider “the knowledge of one
skilled in the art and level of predictability in the field,” Bilstad v.
Wakalopulos, 386 F.3d 1116, 1126 (Fed. Cir. 2004). Taking these factors
into consideration, the Federal Circuit has held that written description
support was provided for a claim amendment adding an open-ended range
(i.e., one in which there was no upper limit) where the original claims and
Specification did not teach materials having a property in excess of the
identified lower limit of the range. Id. at 1124 (citing Ralston Purina Co. v.
Far-Mar-Co, Inc., 772 F.2d 1570, 1575-77 (Fed. Cir. 1985) (affirming “the
trial court's conclusion that the limitation ‘protein content of at least about
that of solvent extracted soybean meal’ was supported by the written
description disclosing solvent extracted soybean meal with a protein content
of about 50%[,] . . . although the parent disclosure did not teach materials
having greater than 50% protein content”)). On the other hand, the Federal
Circuit has also held that disclosure of a species may not provide sufficient
written description support for a later filed claim directed to the genus where
there is “unpredictability in performance of certain species.” Bilstad, 386
F.3d at 1124 (quoting In re Curtis, 354 F.3d 1347, 1355 (Fed. Cir. 2004)).

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ANALYSIS
It is apparent from the Response to Argument that the Examiner did
consider the understanding of the ordinary artisan with respect to changes in
properties of pipes as annealing time is increased. (See Ans. 7-8.) However,
the Examiner concluded, and we agree, that the evidence of record does not
support Appellants’ contention that one of ordinary skill in the art would
have recognized from the Specification, and Tables therein, that the
measured values associated with these properties vary progressively as
annealing times increase (Br. 3). (Ans. 8.) The Tables either fail to show a
particular trend (see FF 5 and 9) or the data contained in the Tables is
insufficient to enable the ordinary artisan to draw any conclusion as to the
effect of anneal time (see FF 3, 7, and 11). Therefore, we are in agreement
with the Examiner that the written description fails to support the open-
ended ranges recited in appealed claims 18-22 and 24.
Accordingly, we sustain the rejection of claims 18-22 and 24 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection of claims 1-3, 7, 8, and 18-25 under 35 U.S.C. § 103
as unpatentable over Short in view of Bremer and Ito
Appellants’ arguments are directed to limitations found in
independent claim 1. (See Br. 5, 2nd para.) Accordingly, we decide the
appeal as to dependent claims 2, 3, 7, 8, and 18-25 on the basis of claim 1.
ISSUE
Appellants contend that the Examiner failed to establish a prima facie
case of obviousness as to appealed claim 1 because the Examiner did not
identify a disclosure of all claim limitations, explain the motivation to
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combine the references, and establish a reasonable expectation of success in
the proposed combination. (Br. 5.) Therefore, the issue presented for our
review is: do the facts and reasons relied on by the Examiner support the
Examiner’s conclusion of obviousness?
We answer this question in the affirmative for essentially those
reasons expressed in the Answer and further explained below.
FINDINGS OF FACT
12. Appellants do not dispute the Examiner’s finding that Short
discloses “providing a propylene polymer based composition” as recited in
step (a) of claim 1 (Ans. 4). (See generally, Br. 3-9.) Nor do they dispute
the Examiner’s finding that the recited “melt fluidity index” of the
composition and “intrinsic viscosity ratio” (claim 1, last two wherein
clauses) “must have necessarily been present in the material of Short by
virtue of its anticipatory composition and preparation method” (Ans. 5).
(See generally, Br. 3-9.)
13. Appellants do, however, contend that the Examiner failed to a
establish a prima facie case of obviousness because Short does not disclose
or suggest using the claimed composition to create pipes or fittings as recited
in step (b) of claim 1 (Br. 5) and “one skilled in the art would not be
motivated to modify Bremer[’s method of making pipes] to arrive at
Applicants’ invention.” (Br. 8-9.)
14. The Examiner concedes that Short does not explicitly disclose a
process of manufacturing pipe. (Ans. 5.) However, the Examiner notes
Short teaches that polypropylene used in the production of extruded articles
such as pipe should have an intrinsic viscosity on the order of 5 dl/g (Short,
col. 1, ll. 47-49) and that Short’s composition would appear to be useful in
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the manufacture of pipes (Short, col. 4, ll. 37-44 (“propylene products
produced according to [the] invention” may have an intrinsic viscosity of
“>3.5” dl/g)). (Ans. 8.) The Examiner, finding that Short “suggest[s] that
the product may be pipes” (Ans. 9), relies on Bremer solely to establish the
known use of polypropylene in forming pipe (col. 1, ll. 30-33) by injection
molding (col. 2, l. 6) or extrusion (col. 2, l. 60). (Ans. 5-6; see also, Ans. 9
and sentence bridging 10-11.)
15. Short discloses annealing at a temperature of 100 ºC for a
period of 16 hours (col. 9, l. 74), which time period is within Appellants’
claimed range of 2 to 48 hours (see claim 1, step (c)). (Ans. 5; see also,
Ans. 9-10.) The Examiner finds that one of ordinary skill in the art would
have been motivated to adjust the temperature in Short’s process to the
claimed range of 120 to 150 ºC based on Ito’s disclosure (e.g. Figure 1) that
annealing polypropylene at temperatures and for time periods within the
claimed ranges improves impact strength (Ito, p. 1221). (Ans. 5-6; see also,
Ans. 10.)
16. Appellants argue that one of ordinary skill in the art would not
have been motivated to adjust the annealing temperature and time of Short’s
process to within the claimed ranges because such temperature changes
would destroy Short’s process. (See Br. 7-8.) Appellants have not identified
any evidence in support of this assertion. (See generally, Br. 3-9.)
17. The Examiner finds that claim 1, step (d) reads on the second
part of Short’s two step annealing sequence in which the polypropylene
product is held at 23 ºC for 24 hours (col. 9, ll. 74-75). (Ans. 4; see also,
Ans. 11.)
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18. Appellants have not explained why this finding is erroneous
(see generally, Br. 3-9), but assert that none of the references, alone or in
combination, disclose step (d) of claim 1 (Br. 9).

PRINCIPLES OF LAW
A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods KSR Int'l.
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
ANALYSIS
We have carefully considered Appellants’ arguments but are not
persuaded of error in the Examiner’s conclusion that the claimed invention
would have been obvious over Short in view of Bremer and Ito.
Appellants assert that certain claim features are not taught or
suggested by the references, but have not explained why the specifically
identified, and relied-upon language in the references does not support the
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Examiner’s factual findings. (Compare FF 13 with FF 14 and FF 17 with FF
18.) Appellants argue that adjusting the annealing temperature in Short
would destroy the process. (FF 16.) However, the Examiner has established
that a process resulting from the proposed combination of prior art
references would be identical to Appellants’ claimed process. (See Ans. 6
(“Thus, in the combination of Bremer and Ito with Short, all composition
and process steps are disclosed, and would cause the claimed material
properties to necessarily flow from the teachings of the applied prior art.”);
FF 12, 14, 15, and 17.) Therefore, the burden is on Appellants to show a
difference in the claimed and proposed prior art process. Appellants have
not met this burden. (See FF 16.)
The remaining arguments advanced by Appellants are not persuasive
because they are directed to limitations which are not found in the claims
(e.g. Br. 8 (discussing increase in impact resistance)) or fail to address the
reasons relied on by the Examiner in rejecting the claims (e.g. Br. 8-9
(arguments regarding Bremer)). Appellants are directed to pages 8-11 of the
Answer wherein these additional arguments are fully addressed by the
Examiner.
In view of the foregoing, we sustain the rejection of claims 1-3, 7, 8,
and 18-25 under 35 U.S.C. § 103 as unpatentable over Short in view of
Bremer and Ito.
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CONCLUSION
Appellants have not persuaded us of error in the Examiner’s rejections
under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 103(a). The
decision of the Examiner rejecting claims 1-3, 7, 8, and 18-25 is affirmed.

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).

AFFIRMED

PL Initial:
sld

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