Ex Parte DuBois

Board of Patent Appeals and Interferences

Jun 30, 2009

11010906 (B.P.A.I. Jun. 30, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT BRUNNER, MICHAEL HAISCH,
and ULRICH NAEGELE
____________

Appeal 2009-001593
Application 11/010,906
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 the page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001593
Application 11/010,906

2
Appellants’ invention is a polymer composition useful as an adhesive
(Spec. 1:5-10). Representative claim 1 reads as follows:

1. A block copolymer composition comprising:

a. a tetra-branched block copolymer (IV) represented by the
general formula (A-B)4X;

b. a tri-branched block copolymer (III) represented by the
general formula (A-B)3X;

c. a di-branched block copolymer (II) represented by the
general formula (A-B)2X; and

d. a linear diblock copolymer (I) represented by the general
formula A-B; where:

i. A represents a polymer block of a mono alkenyl arene;

ii. B represents a polymer block of a mixture of isoprene and
1,3-butadiene having a random distribution in a weight ratio of
isoprene to butadiene from 70:30 to 40:60;

iii. X represents the residue of a multi-functional coupling agent
selected from silicon halides, siloxanes, epoxy alkoxysilanes,
esters of monohydric alcohols with carboxylic acids,
epoxidized oils, epoxides and divinylaromatics;

iv. the weight percent of A blocks is from 14% to 22%;

v. the relative amounts of copolymers IV, III, II, and I are from
0 to 20 weight percent IV, from 50 to 80 weight percent III,
from 0 to 20 weight percent II and from 20 to 50 weight percent
I, where the total of I, II, III and IV equals 100 weight percent;
and

vi. the melt flow rate of the polymer composition is at least 2.0
3
g/10 minutes at 200°C/5kg as measured by ASTM D1238 (D
condition).

The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as
unpatentable over Asahara2 in view of Halasa3 or Rodgers4. The Examiner
alternatively rejected claims 1-16 under 35 U.S.C. § 103(a) as unpatentable
over Asahara in view of Halasa or Rodgers, further in view of Spence5 and
Diehl.6
ISSUE
The issue before us is whether Appellants have shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. § 103(a).
The issue turns on whether Asahara and the other cited prior art teach or
suggest “a random distribution of isoprene and 1,3-butadiene and that the
weight ratio of isoprene to butadiene is from 70:30 to 40:60” as required in
claim 1.
We answer this question in the affirmative.
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In order to establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested
by the prior art or would have been obvious based on the knowledge of

2 EP 669,350 A1 published Aug. 30, 1995 or US 5,532,319 published July 6,
1996. It is undisputed that these are equivalent documents (App. Br. 3, 13;
Ans. 8). They will be collectively referred to as Asahara. All references
herein will be made to pages of EP 669,350.
3 US 5,239,009, published Aug. 24, 1993
4 US 5,272,220, published Dec. 21, 1993
5 US 5,552,493, published Sep. 3, 1996
6 US 5,372,870, published Dec. 13, 1994
4
those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
1988)). “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc.,550 U.S. 398, 418 (2007)).
The mere fact that the prior art could be modified as proposed by the
Examiner is not sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). The Examiner must
explain why the prior art would have suggested to one of ordinary skill in
the art the desirability of the modification. See id.
ANALYSIS and FACTUAL FINDINGS
We need only discuss independent claim 1.
The Examiner correctly found that claim 1 encompasses
compositions wherein the amount of the tetra-branched block copolymer
(IV) and the di-branched block copolymer (II) may be 0% (Ans. 3, 4).
The Examiner also correctly found that Asahara teaches a block
copolymer composition for a pressure sensitive adhesive with 20-90 wt.%
of a tri-block copolymer of the formula (S-I-B)nX wherein "n" is an integer
of 2-4 and X is a residue of a bi-tri- or tetrafunctional coupling agent, and
80-10 wt.% of a linear block copolymer (S-I-B) (Asahara, p. 5, ll. 37-40;
Ans. 3, 4).
The Examiner relies upon Halasa or Rodgers to illustrate that
polymers comprising styrene, isoprene, and butadiene for use in tire treads
may be processed to obtain the monomers in a random order or distribution
(Ans. 6; Halasa, e.g., col. 2, ll. 16-21; col. 8, ll. 31-34; Rodgers, e.g., col. 8,
ll. 10-16).
5
The Examiner admits that Asahara does not explicitly teach a random
distribution of B blocks having a random distribution of isoprene and 1,3-
butadiene with the weight ratio of isoprene to butadiene from 70:30 to
40:60 (see generally Ans.). The Examiner nonetheless concludes that this
would have been obvious, since it would have been obvious “to use a
process condition for making a random order distribution [in Asahara] . . .
because the present claimed invention is a composition that can be produced
by a method suggested in Halasa invention or Rodgers” (Ans. 7).
Appellants contend that the rejection is not proper because Asahara
does not teach or suggest “a random distribution of isoprene and 1,3-
butadiene and that the weight ratio of isoprene to butadiene is from 70:30 to
40:60” as required in claim 1 (App. Br. 4, emphasis in original; see also,
Reply Br. 2-4), and none of the other references applied by the Examiner
correct this deficiency (see generally App. Br., Reply Br.). We agree.
The Examiner has not established that the B blocks have a random
distribution of isoprene and 1,3-butadiene in the claimed weight ratio of
70:30 to 40:60 in Asahara, nor how Halasa or Rodgers reasonably teach or
suggest modifying Asahara to result in such a limitation. The mere fact that
Asahara could be modified to “use a process condition for making a random
order distribution . . . because the present claimed invention is a composition
that can be produced by a method suggested in Halasa or Rodgers” as stated
by the Examiner (Ans. 7; emphasis added) is not sufficient. See Fritch, 972
F.2d at 1266.
The Examiner has not explained how the claimed random distribution
of isoprene and 1,3-butadiene in the claimed weight ratio of 70:30 to 40:60
would have been obtained. The Examiner points out that Asahara describes
that the proportion of bound vinyl is 10 to 50 wt.%, bound butadiene is 10-
6
60% and bound isoprene is 25-55 wt.% (Asahara, p. 4, ll. 49-52; Ans. 4).
However, the Examiner does not explain how these teachings in
combination with Halasa or Rodgers would have suggested the polymer
block of isoprene and 1,3-butadiene having the claimed random distribution
in the claimed weight ratio of 70:30 to 40:60. Accordingly, the
Examiner has not provided any persuasive reasons why such a combination
would have resulted in the claimed invention.
Thus, the Examiner has not met the initial burden of establishing that
one would have been motivated to modify Asahara to provide a random
distribution of isoprene and butadiene in the weight ratio as claimed.
We are constrained by these circumstances to reverse the Examiner’s
rejection under 35 U.S.C. § 103 based on Asahara with Halasa or Rodgers.
The Examiner relied on Spence and Diehl to respectively address the
obviousness of the coupling agent recited in dependent claim 9 and the
claimed melt flow rate of claim 1. The Examiner did not rely upon these
references to teach or suggest the random distribution of isoprene and 1-3-
butadiene in the weight ratio as claimed. Thus, the addition of these
references does not address the distinction between the claimed invention
and the invention of Asahara with Halasa or Rodgers as discussed above.
Therefore, we must also reverse the Examiner's rejection that relies upon the
combination of Asahara with Halasa or Rodgers, further with Spence and
Diehl.
CONCLUSION/ORDER
The decision of the Examiner rejecting claims 1-16 as being
unpatentable under 35 U.S.C. § 103(a) over the combined teachings of
Asahara with Halasa or Rodgers, alternatively further in view of Spence and
Diehl, is reversed.
7
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

PL Initial:
sld

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