Ex parte Enlow

Board of Patent Appeals and Interferences

May 20, 1998

08038400 (B.P.A.I. May. 20, 1998)

Application for patent filed March 29, 1993.1
Appellants’ brief included claim 18. The examiner correctly noted that claim 18 had been2
canceled by appellant in an amendment after final (paper no. 10) which had been entered pursuant
to appellant’s appeal (see advisory action, paper no. 11).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM P. ENLOW
_____________
Appeal No. 95-3536
Application 08/038,4001
______________
ON BRIEF
_______________
Before JOHN D. SMITH, WEIFFENBACH and WARREN, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the decision of the examiner refusing
to allow claims 3, 5, 12-17, 19 and 20 which are the only claims remaining in the application. We2
reverse.
Appeal No. 95-3536
Application 08/038,400
2
The Claimed Subject Matter
The claimed subject matter is directed to an extrusion process for making polyolefin articles
which includes a filtration system. The extrusion melt composition comprises the polyolefin, bis(2,4-
di-tert-butylphenyl)pentaerythroitol diphosphate stabilizer, and at least one epoxidized ester of an
unsaturated fatty acid. Appellant has discovered that this melt composition results in reduced filter
clogging. Claim 3 is representative of the claimed subject matter and reads as follows:
3. An extrusion process for making plastic articles, said process comprising:
a) forming a polyolefin composition comprising a polyolefin resin, a phosphite
stabilizer, and at least one epoxidized ester of a fatty acid,
b) melt extruding said composition through a filtration system to produce a filtered
polyolefin melt stream,
c) passing said melt stream through a die to make the plastic article, wherein said phosphite
is a bis(2, 4-di-tert-butylphenyl)pentaerythritol diphosphite.
Prior Art References
The following prior art references is relied upon by the examiner in support of the rejection
of the claims for obviousness:
Minagawa et al. (Minagawa) 4,371,647 Feb. 1, 1983
Moylan 4,832,882 May 23, 1989
Moore, Jr. (Moore) 4,888,369 Dec. 19, 1989
Appeal No. 95-3536
Application 08/038,400
The final rejection included three rejections. The first rejection was a rejection of claims3
1, 2 and 4-11 under 35 U.S.C. § 103 over Minagawa and Moylan. The examiner’s second
rejection was a rejection of claim 3 under 35 U.S.C. § 1-3 over Minagawa, Moylan and Moore.
The third rejection was a rejection of claims 12-20 under 35 U.S.C. § 103 over Minagawa,
Moylan and Moore.
In an advisory action, the examiner indicated that the claims rejected were claims 3, 5 and
12-20. In the answer, the examiner’s restatement of the rejection apparently is a consolidation of
all three rejections into one rejection. However, the rejection of claim 5 would constitute a new
ground of rejection since this claim was never rejected over the combination of Minagawa,
Moylan and Moore. In view of our reversal of the rejection, there is no need to remand the case
back to the examiner.
It is well settled that admitted prior art should be taken into consideration when4
determining obviousness under 35 U.S.C. § 103. In re Nomiya, 509 F.2d 566, 571, 184 USPQ
607, 611-612 (CCPA 1975).
3
The Rejection
Claims 3, 5, 12-17, 19 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Minagawa in combination with Moylan and Moore.3
Opinion
We have carefully considered the entire record in light of the respective positions advanced
by appellant and by the examiner. In doing so, we reverse the rejection of the claims for obviousness.
The claimed subject matter defines a process wherein a polyolefin composition is melt
extruded through a filtration system before passing the melt into a die to make a plastic article.
Appellant admits that the use of such filtration systems in extrusion systems for making polymeric
fibers and films is known in the art (specification: p. 1, lines 6-19 and p. 3, lines 14-23). Moylan4
discloses a filtration system for reclaiming polyolefins containing impurities comprising the steps of
Appeal No. 95-3536
Application 08/038,400
4
feeding the polyolefin to be reclaimed into an extruder through a hopper, heating the polyolefin above
its melting point but below the melting point of the impurities in the polyolefin, and extruding the
melted material through a filter or a filter pack to remove the impurities (col. 1, lines 42-46; col. 2,
lines 40-60). Appellant further admits that phosphites are “known stabilization additives for
polyolefins” (specification: p. 1, lines 19-24). Minagawa and Moore disclose adding a bis(2,4-di-tert-
butylphenyl)pentaerythroitol diphosphite stabilizer to inhibit the degradation of polyolefins
(Minagawa: Cols. 21 and 22, Control 3; Moore: Examples 12-16). Minagawa discloses adding
bis(2,4-di-tertiary-butyl phenyl) pentaerythritol diphosphite to polyisoprene (Table I, col. 22) and
Minagawa teaches that the stabilized polyolefins compositions can shaped by extrusion or injection
molding or fiber-forming operations (col. 21, lines 44-46). However, we fail to find that the prior
art discloses or suggests a stabilized polyolefin composition which includes at least one epoxidized
ester of a fatty acid.
Minagawa’s invention is directed to adding bis(2,6-di-tertiarybutylphenyl) pentaerythritol
disphosphites to polymers such as polyolefins and polyvinyl chloride (PVC) to enhance the stability
of the polymer (col. 8, lines 66-68; col. 20, lines 3-8). In discussing the (PVC) compositions,
Minagawa discloses that conventional plasticizers can be combined with the diphosphite and PVC
(col. 18, lines 31-41). Among the plasticizers listed is epoxidized soybean oil, appellant’s preferred
epoxidized ester of a fatty acid. In a separate discussion for compositions comprising the diphospite
stabilizer and polyolefins, Minagawa broadly teaches that other conventional additives such as
plasticizers can be added to the stabilized polyolefin (col. 21, lines 30-33), but does not give an
Appeal No. 95-3536
Application 08/038,400
5
specific examples of plasticizers which can be employed. While Minagawa does refer to conventional
plasticizers as including epoxidized soybean oil when discussing PVC, we find no disclosure or
suggestion in Minagawa which would have motivated or led one skilled in the art to specifically select
epoxidized esters of a fatty acids to be combined with a polyolefin and the phosphite stabilizer to
arrive at the composition recited in the claimed process. Accordingly, for the reasons given above,
the decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-3536
Application 08/038,400
6
ROBERT E. WALTER
GENERAL ELECTRIC COMPANY
ONE PLASTICS AVENUE
PITTSFIELD, MA 01201