10204271 (B.P.A.I. Apr. 14, 2010)

Ex Parte Fatnes et al

Board of Patent Appeals and InterferencesApr 14, 2010

10204271 (B.P.A.I. Apr. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ANNE FATNES, HARRY OYSAED, ASTRID FROHAUG, SVEIN JAMTVEDT and KURT HOFFMANN ____________________ Appeal 2009-013633 Application 10/204,271 U.S. Patent Publication 2003/0146542 Technology Center 1700 ____________________ Decided: April 15, 2010 ____________________ Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and RICHARD E. SCHAFER and JAMESON LEE, Administrative Patent Judges. McKELVEY, Senior Administrative Patent Judge. DECISION ON APPEAL A. Statement of the case 1 Borealis Technology Oy, a corporation of Finland, [hereinafter 2 Borealis], the real party in interest, seeks review under 35 U.S.C. Â§ 134(a) of 3 a final rejection (mailed 18 December 2007). 4 Appeal 2009-013633 Application 10/204,271 2 The application was filed on 12 September 2002. 1 Borealis claims the benefit of the filing date of International 2 Application PCT/GB01/00721, filed 21 February 2001. 3 Claim 1, 3-13 and 19 are on appeal. Appeal Brief, page 5. 4 The following prior art has been cited: 5 KrÃ¶hnke U.S. Patent 5,883,165 16 Mar. 1999 Caselli EP 0 411 628 B1 19 Nov. 1997 "Additives" Additives for Polymers, Elsevier Science Page 2 Feb. 1999 6 KrÃ¶hnke [hereinafter Krohnke], Caselli and Additives are prior art 7 under 35 U.S.C. Â§ 102(b). 8 We have jurisdiction under 35 U.S.C. Â§ 134(a). 9 B. Findings of fact 10 The following findings of fact are supported by a preponderance of 11 the evidence. 12 References to the specification are to the specification on International 13 Application PCT/GB01/00721 published as WO 01/62833 A1 on 30 August 14 2001. 15 Additional findings appear in the Discussion portion of the opinion. 16 The invention 17 The invention on appeal generally can be understood by reference to 18 Claim 1. Claims 3-13 and 19 stand or fall with Claim 1. Appeal Brief, 19 page 10:11-12. 20 Appeal 2009-013633 Application 10/204,271 3 Throughout our opinion, even in quoted material, we used the 1 American version of "mold" whereas the specification uses the British 2 version of "mould". The same is true for the word "stabilizer". 3 Claim 1, which we reproduce from the Claim Appendix of the Appeal 4 Brief, reads [matter in bold brackets and some indentation added]: 5 A process for the preparation of a rotomolded article 6 comprising: 7 (i) obtaining a plurality of polyolefin polymer particles 8 having a mean particle size of 1 to 2000 Âµm; 9 (ii) heating a mixture of: 10 A) at least one phenolic antioxidant; 11 B) at least one organic phosphite or phosphonite 12 antioxidant 13 C) at least one UV-stabiliser selected from the group 14 consisting of 15 [1] [1,6-Hexanediamine, N,N'-bis(2,2,6,6-16 tetramethyl-4-piperidinyl-, polymer with 2,4,6-trichloro-1,3,5-17 triazine, reaction products with, N-butyl-1-butanamine and 18 N-butyl-2,2,6,6-tetramethyl-r-piperidinamine] [sold as 19 ChimassorbÂ® 2020 and having the formula shown on page 14:1 20 of the specification], 21 [2] [Poly((6-morpholino-s-triazine-d,4,diyl)-4-22 piperidyl)imino)hexamethylene (2,2,6,6-tetramethyl-4-23 pipieridyl)imino))] [sold as CyasorbÂ® UV 3346 and having the 24 formula shown on page 14:9 of the specification], and 25 Appeal 2009-013633 Application 10/204,271 4 [3] a mixture of 1 [a] 2-[4,6,-Bis(2,4-dimethylphenyl-2 1,3,5-triazin-2-yl]-5-(octyloxy) phenol and 3 [b] 1,6-hexanediamine, N'N'-bis-(2,2,6,6-4 tetramethyl-4-piperidylâ€”polymers with 2,4-dichloro-6-(4-5 morpholinyl-1-3-5-triazine, 6 D) a diluent and optionally 7 E) a metal stearate; 8 to at temperature of between 20 and 200ÂºC; 9 (iv) blending a metal stearate to the resulting polyolefin 10 polymer particles if component E was not present in said 11 mixture; and 12 (v) rotomolding said particles. 13 According to Borealis, the invention involves a rotational molding 14 technique. Specification, page 1:7. The term "rotomolding" is used to 15 describe the technique. In rotomolding, a mold is charged with polymer 16 powder, closed and place in an oven when it is rotated so as to distribute the 17 polymer powder over the mold surface. Once the polymer has melted and 18 formed a coating on the mold surface, the mold is cooled. Specification, 19 page 1:16-20. 20 The Appeal Brief further explains that in rotomolding a mold is 21 charged with polymer powder. As the mold and polymer are heated and 22 rotated in an over, the powder is melted and the resulting polymer matrix 23 coats the mold surface. According Borealis, rotomolding may be used to 24 make hollow articles. Appeal Brief, page 10:16-19. 25 Appeal 2009-013633 Application 10/204,271 5 Examiner's rejection 1 The Examiner rejected all the claims on appeal as being unpatentable 2 under 35 U.S.C. Â§ 103(a) over Krohnke, Caselli and Additives. Final 3 Rejection, page 2; Examiner's Answer, page 4. 4 C. Discussion 5 In an ex parte appeal, we address the arguments presented by an 6 appellant to determine whether the appellant has established that the 7 Examiner erred in making a rejection. 8 (1) 9 A principal argument is that the Examiner has not made out a prima 10 facie case of obviousness. Appeal Brief, page 10:7-10. 11 According to Borealis, the inventors are said to have found out that in 12 rotomolding the mold "would be covered in UV stabilizer deposits." 13 Appeal Brief, page 11:19. If UV stabilizer is on a mold surface, it is not 14 part of a molded article. Borealis therefore reasons that "the article may 15 be more likely to suffer from light degradation over time." Appeal Brief, 16 page 11:22-23. What we think Borealis means is that an article with 17 stabilizer in the article will degrade at a slower rate than an article where 18 some of the stabilizer initially in the polymer mixture ends up on the mold 19 surface. 20 The invention is said to "minimize or completely avoid the problem of 21 mold deposits by using particularly selected stabilizers in connection with a 22 specific blend of other components. Appeal Brief, page 12:1-3. "By using 23 this peculiar mixture, the rotomolding process can be carried out without 24 deposition of stabilizer on the mold" and "all or almost all of the UV 25 Appeal 2009-013633 Application 10/204,271 6 stabilizer is incorporated into the rotomolded article thus preventing its 1 decay." Appeal Brief, page 12:3-5. 2 Borealis agrees with the Examiner's finding that Krohnke does not 3 describe "the particular HALS species claimed in (C)" of claim 1. Appeal 4 Brief, page 13:16-18. Component (C) of claim 1 includes, but is not limited 5 to, two "specific UV stabilizers" one being ChimassorbÂ® 2020 (component 6 (C)[1]]) and another being CyasorbÂ® UV 3346 (component (C)[2]). 7 According to Borealis, neither Krohnke nor Caselli describe the use of 8 ChimassorbÂ® 2020 or CyasorbÂ® UV 3346. Appeal Brief, page 13:22. The 9 Examiner agrees. Examiner's Answer, page 5:3-4. 10 Additives reveals that as of 1999 a new high molecular weight 11 hindered amine light stabilizer (HALS) for polypropylene and polyethylene 12 is claimed by Ciba Specialty chemicals. Additives, page 2, bottom of col. 1. 13 The HALS is ChimassorbÂ® 2020, which is said by Ciba Specialty 14 Chemicals to optimize the balance between exceptional UV stability and 15 long-term thermal stability along with other features. Additives, page 2, 16 paragraph bridging cols. 1-2. 17 Borealis understood, as do we, that the Examiner's obviousness 18 holding in large is based on the following findings (Appeal Brief, 19 page 14:20-23): 20 (1) Krohnke describes a composition for rotomolding 21 that uses a HALS additive; 22 (2) commercially available ChimassorbÂ® 2020 was a 23 known HALS additive; and 24 Appeal 2009-013633 Application 10/204,271 7 (3) one skilled in the art would have appreciated that 1 ChimassorbÂ® 2020 could be used in the Krohnke process in 2 place of the "known" HALS additives. 3 According to Borealis, the Examiner "syllogism oversimplifies the 4 complex chemistry involved in obtaining a successful composition useful in 5 rotomolding . . . ." Appeal Brief, page 15:1-2. 6 We are not entirely sure what Borealis means by "complex 7 chemistry." The invention involves a process using mixture of chemicals. 8 How use of a mixture turns into a "complex chemistry" problem is 9 problematic. As shown in the table set out below, insofar as we can tell, 10 each of the chemicals used is known and is being used for its known 11 purpose. We are not aware, and have not been told, of any unusual complex 12 chemical reactions occurring in the claimed method. 13 Appeal 2009-013633 Application 10/204,271 8 Ingredient Krohnke Column and line Caselli Page and line Phenolic antioxidant 1:42-43 25:2-13 32:15 1:26 1:30 1:37 1:55-56 5:54-58 Phosphite or phosphonite antioxidant 6:1â€”7:40 1:26 1:30 1:57-58 2:46â€”5:53 HALS UV stabilizer 28:56â€”29:42 36:12â€”37:5 ChimassorbÂ® 944 but not ChimassorbÂ® 2020 2:4-6 2:41-43 6:11â€”7:20 ChimassorbÂ®2020 is not described Diluent 39:7-9 2:7-9 8:21-24 Metal stearate 30:49-50 9:19 11:33 (Ca stearate) 1 The Examiner's findings (1) and (2) are supported by the evidence. 2 Krohnke describes the use of an olefin (ethylene/hexane copolymer) 3 composition for rotomolding that includes ChimassorbÂ® 944. 4 Col. 39:40-45. ChimassorbÂ® 944 is a sterically hindered amine that is 5 commercially available (col. 37:54-57) having the formula shown at the 6 bottom of cols. 35-36. Borealis does not contest the fact that 7 ChimassorbÂ® 944 is a HALS. 8 Borealis notes that according to Krohnke, the use of a HALS 9 is optional. Appeal Brief, page 15:4-5. What Krohnke says is that 10 Appeal 2009-013633 Application 10/204,271 9 "a combination of organic phosphites or phosphonites and 1 3-arylbenzofuranoes, together with optional further additives, preferably 2 phenolic antioxidants or sterically hindered amines (HALS), results in an 3 excellent stabilization in the rotomolding process." Col. 1:40-44. The mere 4 fact that a reference suggests that an ingredient is "optional" does not mean 5 the reference does not suggest the use of the "optional" ingredient. 6 The next "attack" on Krohnke is that it describes the use of a phenolic 7 antioxidant or a sterically hindered amineâ€”but not a mixture of both. 8 Appeal Brief, page 15:6-7. One skilled in the art would readily recognize 9 that both could be used. See e.g., In re Kerkhoven, 626 F.2d 846 (CCPA 10 1980). In the case before us, the evidence supports the Kerkhoven general 11 rule concerning the use of mixtures. See e.g., Caselli, page 1:26-27, page 1 12 30-31; page 1:33-34 and page 1:36-37. Caselli explicitly describes the use 13 of a mixture of (item A) a phosphite or phosphonite, (item B) a phenolic 14 antioxidant, (item D) a hindered amine and (item E) a diluent. Page 1:55 15 through page 2:9. 16 Borealis makes a point that neither Krohnke nor Caselli describe the 17 "now claimed" HALS ChimassorbÂ® 2020. Appeal Brief, page 15:11-12. 18 The short and to the point answer is that Krohnke was filed in 1997 (in the 19 USPTO) and Caselli was filed in 1990 (in the EPO) whereas on this record 20 ChimassorbÂ® 2020 first surfaces in 1999. There can any number of reasons 21 why neither Krohnke nor Caselli describe ChimassorbÂ® 2020. On this 22 record a plausible reason is that ChimassorbÂ® 2020 may have been 23 commercialized after Krohnke and Caselli were filed. Another reason is that 24 Krohnke and Caselli may not have been aware of ChimassorbÂ® 2020. In re 25 Appeal 2009-013633 Application 10/204,271 10 Kleinman, 484 F.2d 1389, 1392 (CCPA 1973) (there is no presumption that 1 the holder of a patent had constructive or actual knowledge of particular 2 prior art). Moreover, one skilled in the art would have known to use 3 ChimassorbÂ® 2020 where "exceptional UV stability and long-term thermal 4 stability" are desired. Borealis is using ChimassorbÂ® 2020 for its UV 5 stability characteristics. Specification, page 12:22-32. Even if 6 ChimassorbÂ® 2020 was known at the time Krohnke and Caselli were filed, 7 Borealis is using a known material for its known use. Anderson's-Black 8 Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 59 (1969). 9 Borealis argues that the Examiner is using knowledge gained from the 10 Borealis specification to support the rejection. Appeal Brief, page 15:17 et 11 seq. We disagree. The Examiner relied on Krohnke to show that HALS had 12 been used as UV stabilizers in the past and relied on Additives show that the 13 HALS ChimassorbÂ® 2020 is a known UV stabilizer. As a result, we cannot 14 agree with Borealis that the Examiner engaged in impressible hindsight. In 15 re McLaughlin, 58 CCPA 1310, 1313-14, 443 F.2d 1392, 1395 (CCPA 16 1971) (so long as obviousness evaluation takes into account only knowledge 17 known in the art, there is no hindsight). 18 Another argument is that the Examiner is said to have no evidence to 19 support a finding that one skilled in the art would have believed 20 ChimassorbÂ® 2020 would have beneficial properties when used in 21 rotomolding. Appeal Brief, page 17:14-16. Additives provides the support 22 for the Examiner's finding. Additives tells those skilled in that the HALS 23 ChimassorbÂ® 2020 was known to have at least two properties desirable in 24 molded articles. Krohnke tells those skilled in the art that other HALS had 25 Appeal 2009-013633 Application 10/204,271 11 been used in rotomolded articles. The evidence supports the Examiner's 1 findings. 2 (2) 3 Borealis relies on Rule 132 evidence to support its non-obviousness 4 theory. 5 The evidence is a Rule 132 declaration by Astrid Frohaugâ€”one of the 6 named inventors. The Rule 132 declaration was received in the USPTO on 7 10 July 2008. 8 The Examiner declined to give the Rule 132 declaration much, if any, 9 weight. Examiner's Answer, pages 12-14. 10 According to Frohaug, "[d]uring the development of the invention, 11 various UV stabilizers were tested to determine whether they were suitable 12 for use in the [rotomolding] invention. Declaration, Â¶ 5. Given the 13 numerous UV stabilizers described by Krohnke and Caselli, it manifestly 14 follows that one skilled in the art would have been inclined to test known 15 UV stabilizers with the view to finding a suitable UV stabilizer. 16 Included among the UV stabilizers tested was Tinuvin UV 622. 17 Declaration, Â¶ 5. 18 Tinuvin UV 622 is a HALS (Appeal Brief, page 17:5) which is 19 described as Compound H4 by both Krohnke (cols. 35-36) and as Formula 20 XIII by Caselli (page 7, line 40). 21 According to Frohaug, as a result of the experiment, "[u]nacceptable 22 levels of deposits of light stabilizer were observed (visually + FT-IR)" and 23 "Tinuvin stabilizers are not useful in the invention claimed." Declaration, 24 Â¶Â¶ 9-10; Appeal Brief, page 17:8-10. 25 Appeal 2009-013633 Application 10/204,271 12 An observation that immediately comes to the forefront is that claim 1 1 is not limited to any particular level of deposits. In other words, claim 1 2 does not limit deposit levels to an objective amount and does not identify a 3 satisfactory amount of deposits. This is important in this case because 4 Borealis acknowledges that past invention have left "unacceptable deposits 5 of the UV-stabilizer on the surface of the mold used in rotational molding." 6 Specification, page 2:12-14. The invention, on the other hand, is said not to 7 leave "unacceptable deposits of the UV-stabilizer on the surface of the 8 [rotational] mold . . . ." Specification, page 2:17-18. The Appeal Brief 9 speaks in terms of "minimizing" depositsâ€”which of course means that 10 deposits in some unspecific amount will may occur. The question is: "What 11 is acceptable and what is unacceptable?" If Borealis is to be believed, 12 claim 1 covers a method where acceptable levels of deposits are left on the 13 mold, but does not cover a method were unacceptable levels of deposits are 14 left on the mold. 15 Examiner's first reason 16 The Examiner's first reason for declining to give controlling weight to 17 the declaration is that Borealis has not established what is expected and what 18 is not expected. Examiner's Answer, page 13:2-4: "the tests appearing in 19 . . . [the Borealis] specification and in the Rule 132 declaration fail to 20 establish any context for what is an expected result or demonstrate that the 21 observed result is unexpected." It is not enough to show results are obtained 22 which differ from those obtained in the prior artâ€”any difference must be 23 shown to be an unexpected difference. In re Klosak, 455 F.2d 1077, 1080 24 (CCPA 1972). 25 Appeal 2009-013633 Application 10/204,271 13 Examiner's second reason 1 The Examiner's second reason for declining to give much weight to 2 the declaration is that "[c]riteria for acceptability or unacceptability are not 3 provided, nor is there any other basis for objective comparison." Examiner's 4 Answer, page 13:last paragraph. The Examiner found, and Borealis has not 5 disagreed, that Fourier Transform Infrared Spectroscopy (the FT-IR test 6 mentioned in the declaration at Â¶ 9) is a well-known analysis technique. If a 7 FT-IR test was conducted, objective results of that test are not discussed or 8 reported in the Rule 132 declaration. The Examiner reasonably could 9 decline to credit the Rule 132 testimony because it amounts to a conclusion 10 unsupported by any underlying evidence. Rohm and Haas Co. v. Brotech 11 Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in Federal Circuit 12 jurisprudence requires the fact finder to credit the unsupported assertions of 13 a witness). Borealis did not sustain its burden of bring forward reasonable 14 evidence concerning the properties of the prior art vis-Ã -vis those of the 15 claimed invention. In re Susi, 58 CCPA 1074, 1080, 440 F.2d 442, 446 16 (CCPA 1971). 17 Examiner's third reason 18 The Examiner also found that the closest prior art was not compared. 19 Examiner's Answer, page 14:3 et seq. Krohnke describes an example in 20 which ChimassorbÂ® 944 is said to have been tested. Krohnke, 21 col. 39:32-67, with ChimassorbÂ® 944 being mentioned at col. 39:39. We 22 note the Examiner refers to col. 49, but the reference to col. 49 is an obvious 23 typoâ€”the Examiner no doubt meant col. 39. The Examiner expressed some 24 concern as to why Borealis tested TinuvinÂ® 622 and not ChimassorbÂ® 944. 25 Appeal 2009-013633 Application 10/204,271 14 According to Borealis, Krohnke does not distinguish among the 1 stabilizers described. Borealis reasons, therefore, that all the Krohnke 2 stabilizers are "equivalent." Reply Brief, page 5:16. All of the Krohnke 3 stabilizers are said to be presented "as equally useful." What Krohnke says 4 is that the UV stabilizers are usefulâ€”not that they are equally useful. 5 The Examiner is saying is that Borealis has not made a sufficient 6 comparison of the claimed subgeneric invention with the generic invention 7 described by Krohnke to the extent Krohnke describes the use of HALS. 8 In re Susi, 58 CCPA 1074, 1080, 440 F.2d 442, 446 (CCPA 1971) (the 9 evidence did not show that the tested samples of appellant's additives are 10 much better stabilizers than the species with which they compared). 11 Additional observations 12 Absent some showing of an abuse of discretion, we are not in the 13 business of second-guessing an Examiner's determination of the weight to be 14 given a Rule 132 declaration. The weight given very much depends on the 15 particular facts. The Examiner had an adequate basis for declining to give 16 the Rule 132 affidavit controlling weight. 17 In the event of further prosecution via an RCE or a continuation, we 18 make the following observation based on KSR Int'l Co. v. Teleflex, Inc., 550 19 U.S. 550 (2007). KSR observed that neither the particular motivation 20 [minimizing deposits on the mold wall in this case] nor the avowed purpose 21 of the patentee controls. What matters is the objective reach of the claim. If 22 the claim extends to what is obvious, it is invalid under Â§ 103. Id. at 419. 23 KSR confirms the Federal Circuit's holdings in In re Dillon, 919 F.2d 688 24 (Fed. Cir. 1990 (en banc) and In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 25 Appeal 2009-013633 Application 10/204,271 15 1996) ("[a]lthough the motivation to combine here differs from that of the 1 applicant, the motivation in the prior art to combine the references does not 2 have to be identical to that of the applicant to establish obviousness"). It 3 would appear that claim 1 is unpatentable under Â§ 103 because one skilled in 4 the art would have been "motivated" to use ChimassorbÂ® 2020 for its known 5 UV-stabilization properties. The fact that minimal mold deposit also results, 6 becomes marginally relevant given that Claim 1 contains no objective 7 limitation as to the amount of mold deposit which is "acceptable." 8 Other arguments 9 We have considered Borealisâ€™ remaining arguments and find none that 10 warrant reversal of the Examinerâ€™s rejections. Cf. Hartman v. Nicholson, 11 483 F.3d 1311, 1315 (Fed. Cir. 2007). 12 D. Decision 13 Borealis has not sustained its burden on appeal of showing that the 14 Examiner erred in rejecting the claims on appeal as being unpatentable under 15 over the prior art. 16 Upon consideration of the appeal, and for the reasons given herein, 17 it is 18 ORDERED that the decision of the Examiner rejecting 19 claims 1, 3-13 and 19 over the prior art is affirmed. 20 Appeal 2009-013633 Application 10/204,271 16 FURTHER ORDERED that no time period for taking any 1 subsequent action in connection with this appeal may be extended under 2 37 C.F.R. Â§ 1.136(a)(1)(iv) (2008). 3 AFFIRMED yrt cc: (via First Class mail) Nixon & Vanderhye, PC 901 North Glebe Road, 11th Floor Arlington, VA 22203