11345866 (B.P.A.I. Apr. 8, 2010)

Ex Parte Griffin et al

Board of Patent Appeals and InterferencesApr 8, 2010

11345866 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ELIZABETH R. GRIFFIN and GEORGE HENRY HOFMANN ____________ Appeal 2009-001763 Application 11/345,866 Technology Center 1700 ____________ Decided: April 8, 2010 ____________ Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and JEFFREY B. ROBERTSON, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-001763 Application 11/345,866 2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20 (Appeal Brief filed on December 27, 2007, (hereinafter “App. Br.”) at 1; Final Office Action mailed on August 3, 2007). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Appellants’ invention relates to a composition comprising or produced from cellulosic material, a thermoplastic material such as polyvinyl chloride (PVC), and a specified compatibilizing agent (Specification, hereinafter “Spec.,” 1, ll. 6-8; claim 1). According to Appellants, the invention encompasses composite materials that may be used in many applications suitable for all-wood products (e.g., home siding) (Spec. 1, l. 10 to 2, l. 7). Claim 1 on appeal read as follows: 1. A composition comprising, or produced from, by weight (a) about 10 to about 90 % of cellulosic material, (b) about 70 to about 10 % of a thermoplastic polymer, and (c) about 1 to about 20 % of a compatibilizing agent which comprises or is produced from polyvinyl butyral and a second polymer wherein the polyvinyl butyral comprises a hydroxyl functionality and the second polymer reacts with at least a portion of the hydroxyl functionality. (Claims App’x, App. Br. 8.) The Examiner relied upon the following as evidence of unpatentability (Examiner’s Answer mailed on February 25, 2008, (hereinafter “Ans.”) 3-6): Wu US 2003/0176538 Sept. 18, 2003 Hofmann US 2003/0212203 Nov. 13, 2003 Appeal 2009-001763 Application 11/345,866 3 Bruce Wade, Vinyl Acetal Polymers, ENCYCLOPEDIA OF POLYMER SCIENCE AND TECHNOLOGY, April 15, 2003, http://www.mrw.interscience.wiley.com/emrw/9780471440260/epst/article/ pst473/current/html?hd=All,polyvinyl&hd=All,acetal (hereinafter “Wade”). The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Wu, Hofmann, and Wade (Ans. 3-6). ISSUE The Examiner concedes that Wu does not describe Appellants’ compatibilizing agent (c) (Ans. 3). The Examiner asserts, however, that “Wade provides evidence that polyvinyl butryal is compatible with cellulose” and that a person of ordinary skill in the art would have combined Wu with Hofmann because “Hofmann suggests polyvinyl butyral can improve the flexibility, and toughness of polymer composites” (id. at 4). According to the Examiner, “[t]he coupling agent of Wu . . . has been replaced in the composition by the PVB/second polymer combination of Hofmann as a means of increasing the compatibility and cohesiveness of the thermoplastic material and the cellulosic material” (id. at 7). Appellants contend that Wu teaches a different kind of coupling agent (namely a nitrogen-containing compound) to compatibilize a cellulose component with a thermoplastic matrix resin component and that neither Hofmann nor Wade disclose or suggest that Appellants’ modified PVB would compatibilize cellulosic material (a) with thermoplastic polymer (b) (App. Br. 4-6; Reply Brief filed on May 12, 2008 at 1-3). Thus, a dispositive issue is: Appeal 2009-001763 Application 11/345,866 4 Did the Examiner articulate some reason based on rational underpinnings that would have prompted a person of ordinary skill in the art to combine the applied prior art references in the manner claimed – i.e., replace Wu’s nitrogen-containing coupling agent with Appellants’ recited compatibilizing agent (c)? FINDINGS OF FACT (“FF”) 1. Wu describes composite compositions including a thermoplastic resin such as PVC, cellulosic reinforcement, and one or more coupling agents selected from compounds comprising one or more reactive nitrogen groups and mixtures of such compounds (¶¶ [0007], [0009], [0015], [0016]). 2. Wu does not describe Appellant’s compatibilizing agent (c). 3. Wade discloses that plasticized polyvinyl butyral (PVB) may be used as an interlayer in laminated safety glass (Abstract). 4. Wade further teaches that vinyl acetal polymers such as PVB can be formulated with other thermoplastic polymers such as “some types of celluloses” (p. 11 of 18). 5. Hofmann discloses a process for preparing pellets of modified PVB useful for preparing blended PVB compositions (¶ [0003]). 6. Hofmann teaches that PVB can be blended with PVC using a compatibilizer such as Fusabond® (e.g., an ethylene/alkyl acrylate/CO terpolymer that has been graft-modified with 1% maleic anhydride) (¶¶ [0020], [0025]). Appeal 2009-001763 Application 11/345,866 5 7. Hofmann does not teach that Appellants’ component (c) can be used to compatibilize cellulose material with a thermoplastic polymer such as PVC. PRINCIPLES OF LAW The Supreme Court of the United States explained that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). “Although common sense directs one to look with care at a patent application that claims . . . the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill . . . to combine the elements in the way the claimed new invention does.” (Id.) While the Supreme Court warned against “[r]igid preventative rules that deny factfinders recourse to common sense,” it stated that the “factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” (Id. at 421.) ANALYSIS We reverse for the reasons given by Appellants. The Examiner has failed to direct us to sufficient evidence establishing that a person of ordinary skill in the art would have had some reason to use the claimed compatibilizing agent (c) in Wu (FF 1-7). Wu describes the use of nitrogen-containing compounds to compatibilize cellulose material with a thermoplastic polymer (FF 1). While Hofmann Appeal 2009-001763 Application 11/345,866 6 teaches that a material such as a graft-modified ethylene/acrylate/CO terpolymer compatibilizes PVB with other components of a blend including a thermoplastic material such as PVC, that teaching is insufficient to show that a person of ordinary skill in the art would have regarded Appellant’s claimed component (c) to be interchangeable with Wu’s nitrogen-containing compound as a compatibilizer for cellulose material and a thermoplastic polymer (FF 6 and 7). Wade does not make up for the deficiencies in the Examiner’s proposed combination of Wu and Hofmann because, at best, Wade merely teaches that PVB can be formulated with other thermoplastic polymers such as cellulose materials (FF 4). CONCLUSION On this record, the Examiner failed to articulate a reason based on rational underpinnings that would have prompted a person of ordinary skill in the art to combine the references in the manner claimed. DECISION The Examiner’s decision to reject claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Wu, Hofmann, and Wade is reversed. REVERSED rvb Appeal 2009-001763 Application 11/345,866 7 E I DU PONT DE NEMOURS AND COMPANY LEGAL PATENT RECORDS CENTER BARLEY MILL PLAZA 25/1122B 4417 LANCASTER PIKE WILMINGTON DE 19805