Ex Parte Gray et al

Patent Trial and Appeal Board

Jun 22, 2016

09896917 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
09/896,917 06/29/2001 Steven D. Gray
25264 7590 06/23/2016
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
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.
COS-833 RCE 7677
EXAMINER
KRUER,KEVINR
ART UNIT PAPER NUMBER
3649
MAILDATE DELIVERY MODE
06/23/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN D. GRAY, DAVID W. KNOEPPEL, TIM J. COFFY,
MIKE GOINS, MICHAEL McLEOD, and GREG DeKUNDER
Appeal2015-000419
Application 09/896,917
Technology Center 3600
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1-16, 18-21, 26, and 27. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Our decision refers to Appellants' Specification filed June 29, 2001, the
Examiner's Final Office Action (Final Act.) mailed March 20, 2014,
Appellants' Appeal Brief (Appeal Br.) filed August 1, 2014, the Examiner's
Answer (Ans.) mailed August 26, 2014, and Appellants' Reply Brief (Reply
Br.) filed October 8, 2014.
2 According to Appellants, the real party in interest is FINA
TECHNOLOGY, INC. Appeal Br. 5.
Appeal2015-000419
Application 09/896,917
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to linear high density polyethylene (HDPE),
films of exceptional clarity made from the HDPE, and processes for
producing the HDPE and films. Spec. 2:14--18. Claim 8, reproduced below
from the Claims Appendix to the Appeal Brief, is illustrative of the subject
matter on appeal:
8. A film comprising at least one layer wherein said layer comprises a
single polymer, wherein the single polymer is a linear polyethylene
polymer or a-olefin co-polymer having a density greater about 0.950
glee, and a rheological breadth parameter of greater than about 0.25.
Independent claim 1 recites a polymer blend including the single
polymer blended with another polymer. Independent claim 4 recites a
process to form the polymer blend. Independent claim 15 recites a process
to form a film. Independent claim 26 recites a film made from a polymer
blend. Independent claim 27 recites a process to form a polymer blend film.
The Rejections
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Application 09/896,917
A. Claims 1-11, 13, 15, 16, 18, 19, 21, 26, and 27 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Sukhadia. 3
B. Claims 12 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sukhadia in view of Eschwey. 4
C. Claims 1-3, 8-14, and 26 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Su5 in view of Sukhadia.
ANALYSIS
Rejection A: Anticipation based on Sukhadia
The dispositive issue with regard to this rejection is whether the
Examiner reversibly erred in finding Sukhadia teaches an HDPE that meets,
inherently, the rheological breadth parameter of greater than about 0.25 as
recited in the claims.
We answer this question in the negative, based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
Examiner in the Final Office Action and the Answer. The following
comments are added for emphasis.
Appellants do not argue the claims separately, but instead focus on a
limitation, the rheological breadth parameter, common to each of the
independent claims. Accordingly, all the claims stand or fall together.
The Examiner finds that though Sukhadia does not explicitly teach the
recited rheological breadth parameter of Appellants' claims, Sukhadia
nonetheless inherently teaches an HDPE having this property. Final Act. 2-
3. Appellants contend the Examiner has not established that Sukhadia
3 Sukhadia et al., WO 97/06951, published February 27, 1997 ("Sukhadia").
4 Eschwey et al., US 5,147,724, issued September 15, 1992 ("Eschwey").
5 Su et al., US 5,885,721, issued March 23, 1999 ("Su").
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inherently teaches the recited rheological breadth parameter. Appeal Br. 16.
Appellants acknowledge that the Examiner's inherency determination is
based on Sukhadia's teaching of both a molecular weight distribution (less
than 4.0) which lies within the Appellants' preferred range (less than 7.0)
and less than 0.01 long chain branches per 1000 carbon atoms. Id.
Appellants also acknowledge that the Examiner finds that because the
rheological breadth parameter is inversely proportional to both the breadth
of the molecular weight distribution or polydiversity and the level of long
chain branching, the recited rheological breadth parameter would be inherent
to Sukhadia's polymer. Id.
Notwithstanding the above, Appellants argue the fact that Sukhadia's
molecular weight distribution range overlaps a portion of Appellants'
disclosed range does not establish inherency of the rheological breadth
parameter. Appeal Br. 16-1 7. Appellants assert they teach that the
rheological breadth parameter is simultaneously dependent upon both
molecular weight distribution and long chain branching. Id. at 17. In
addition, Appellants assert that "a polymer having a molecular weight
distribution of just less than about 7 .0 can achieve the recited rheological
breadth parameter." Id. at 18. Appellants urge that Sukhadia requires a
resin having a molecular weight distribution that is less than 4. Id. Further,
Appellants assert that, in finding Sukhadia inherently exhibits the recited
rheological breadth parameter, "the Examiner has neglected the interplay
between both the molecular weight distribution and the level of long chain
branching, and the resultant effects on the rheological breadth parameter."
Id.
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We disagree. "A claim is anticipated only if each and every element
as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
814 F .2d 628, 631 (Fed. Cir. 19 87). Anticipation by inherency requires that
any material missing from the prior art must necessarily be present in the
reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). We
recognize that a finding of inherency "may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." In re Oelrich, 666 F.2d
578, 581(CCPA1981) (quotingHansgirgv. Kemmer, 102 F.2d212, 214
(CCPA 1939)). Even so, "'it is elementary that the mere recitation of a
newly discovered function or property, inherently possessed by things in the
prior art, does not cause a claim drawn to those things to distinguish over the
prior art."' In re Best, 562 F.2d 1252, 1255 (CCP A 1977) (quoting In re
Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)).
Here, the Examiner finds Sukhadia teaches a polymer whose
molecular weight distribution of less than 4.0 clearly falls within Appellants'
preferred range of less than 7 .0. In this regard, though Appellants assert that
the Specification teaches that a polymer having a molecular weight
distribution of just less than about 7.0 can achieve the recited rheological
breadth parameter (with long chain branching adjusted accordingly).
Appellants' use of the term, 'just," appears to explain that any value for the
molecular weight distribution within the range of less than about 7. 0,
including just less than about 7 .0, can achieve the recited rheological breadth
parameter. However, given Appellants' disclosure of a molecular weight
distribution range of less than about 7.0, one of ordinary skill in the art
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would reasonably expect that a molecular weight distribution of less than 4.0
would necessarily also be able to achieve the recited rheological breadth
parameter. Moreover, and contrary to Appellants' assertion that the
Examiner's inherency finding neglects the interplay between the molecular
weight distribution and the level of long chain branching, and the resultant
effects on the rheological breadth parameter, the Examiner also finds
Sukhadia teaches less than 0.01 long chain branches per 1000 carbon atoms,
i.e., essentially no long chain branching, just as Appellants disclose for their
polymer. Given the Examiner's findings that Sukhadia's long chain
branching and molecular weight distribution fall within Appellants'
disclosed ranges, and Appellants' disclosure that the rheological breadth
parameter is inversely proportional to both the level of long chain branching
and molecular weight distribution, we perceive no error in the Examiner's
finding that Sukhadia's polymer must necessarily also meet the recited
rheological breadth parameter. Therefore, the Examiner;s finding that
Sukhadia inherently teaches a polymer having a rheological breadth
parameter of greater than about 0.25 is supported by the evidence of record.
After the Examiner establishes a prima facie case of anticipation
based on inherency, the burden shifts to Appellants to "prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on." Swinehart, 439 F.2d at 212-13. Here, Appellants' burden is to prove
that Sukhadia's polymer, having less than 0.01 long chain branches per 1000
carbon atoms and a molecular weight distribution of less than about 4.0,
does not have a rheological breadth parameter of greater than about 0.25.
Appellants have not satisfied that burden. Appellants have not shown that
this level of long chain branching, coupled with a molecular weight
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distribution clearly within Appellants' preferred range, would not
necessarily result in a rheological breadth parameter of greater than about
0.25. Appellants also do not direct our attention to any difference in the
process of forming their polymer and Sukhadia's process.
Rejection B: Obviousness over Sukhadia and Eschwey
Claim 12 depends indirectly from claim 8; claim 20 depends from
claim 15. Both claims further require that the film has a gloss value of
greater than about 20 percent. Appellants do not argue these claims
separately; both claims stand or fall together. The Examiner acknowledges
Sukhadia does not teach the claimed gloss value, 6 but finds Eschwey
discloses that the surface morphology of HDPE polymers may be altered to
improve their clarity and that high gloss in HDPE films is desirable. Final
Act. 5. The Examiner then concludes it would have been obvious to alter
the surface morphology of Sukhadia;s HDPE in order to improve the gloss.
Final Act. 5-6.
Appellants first argue that the Examiner has not established that
Sukhadia inherently teaches the recited rheological breadth parameter.
Appeal Br. 18-19. However, for the same reasons given above, we are not
persuaded that the Examiner reversibly erred in finding Sukhadia inherently
teaches the recited rheological breadth parameter.
6 Although the Examiner refers to "haze value," it is clear that the Examiner
intended to refer to "gloss value" as that is not only the limitation of claims
12 and 20, but the Examiner's finding as to Eschwey and obviousness
conclusion refer to "gloss."
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Appellants next argue that the Examiner has not established that
Eschwey inherently teaches a film having a gloss value of greater than 20
percent. Appeal Br. 19. In this regard, Appellants direct our attention to
Eschwey, column 1, line 12 to column 2, line 39, and urge that the Examiner
has not established that Eschwey' s teaching of "high-gloss compared with
untreated surface or oxygen-free fluorinated surfaces" necessarily teaches a
gloss value of greater than about 20 percent, such that altering Sukhadia' s
HDPE film would necessarily produce a film having this gloss value.
Appeal Br. 20. In response to the Examiner's determination that it would
have required only routine experimentation for the skilled artisan to optimize
the gloss of Sukhadia' s film to the desired extent, Appellants assert that the
Examiner has failed to establish Eschwey' s process for attaining a high-
gloss would necessarily attain a gloss value of greater than about 20 percent
when applied to Sukhadia's film. Reply Br. 10.
We do not find Appellants; arguments persuasive of reversible error
either in the Examiner's findings or in the Examiner's conclusion of
obviousness. Appellants' arguments mischaracterize the Examiner's
obviousness conclusion as based on inherency. Rather, the Examiner finds
that Eschwey teaches gloss value is a result-effective variable and further
that high-gloss is a desirable result. Based on these findings, the Examiner
concludes that it would have been obvious to not only optimize the gloss
value of an HDPE film, but to do so to attain a high-gloss. "[D]iscovery of
an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276
(CCP A 1980). Exceptions to this rule include (1) the results of optimizing a
variable were unexpectedly good and (2) the parameter optimized was not
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recognized in the prior art as one which would affect the results. In re
Antonie, 559 F .2d 618, 620 (CCP A 1977). Appellants fail to argue, much
less establish, that either of these exceptions apply here. Further, contrary to
Appellants' argument, the Examiner need not establish that altering
Sukhadia's film as taught by Eschwey would necessarily result in a gloss
value greater than about 20 percent. "Only a reasonable expectation of
success, not absolute predictability, is necessary for a conclusion of
obviousness." In re Langi, 759 F.2d 887, 896 (Fed. Cir. 1985); In re
0 'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988). Finally, we note
Sukhadia teaches HDPE films having gloss values greater than about 20
percent. Sukhadia, p. 24, Table (showing films IA, IB, 2A, 3B, and 5B
have gloss values much greater than 20 percent).
It follows that Appellants have not identified reversible error in this
rejection.
Rejection C: Obviousness over Su and Sukhadia
Appellants argue that this rejection should be reversed for the reasons
we have discussed in our affirmance of Rejection A. As discussed above,
we do not find those arguments persuasive of reversible error.
CONCLUSION
The rejection of claims 1-11, 13, 15, 16, 18, 19, 21, 26, and 27 under
35 U.S.C. § 102(b) as anticipated by Sukhadia is affirmed.
The rejection of claims 12 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Sukhadia in view of Eschwey is affirmed.
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The rejection of claims 1-3, 8-14, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Su in view of Sukhadia is affirmed.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and Answer, the decision of the Examiner
rejecting claims 1-16, 18-21, 26, and 27 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)(l).
AFFIRMED
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