12159362 (P.T.A.B. Mar. 7, 2013)

Ex Parte Horton et al

Patent Trial and Appeal BoardMar 7, 2013

12159362 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/159,362 06/26/2008 Stephen Horton 1200515 N US 6667 35227 7590 03/07/2013 POLYONE CORPORATION 33587 WALKER ROAD AVON LAKE, OH 44012 EXAMINER SZEKELY, PETER A ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 03/07/2013 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 ____________________ PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEPHEN HORTON and BRENT CASSATA ____________________ Appeal 2012-001584 Application 12/159,362 Technology Center 1700 ____________________ Before FRED E. McKELVEY, KAREN M. HASTINGS and DEBORAH KATZ, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001584 Application 12/159,362 2 Statement of the case PolyOne Corporation (“applicant”), the real party in interest (“Second” Brief 1 filed 22 June 2011,1 page 3), seeks review under 35 U.S.C. § 134(a) of a final 2 rejection dated 5 November 2010. 3 The application was filed in the USPTO on 26 June 2008. 4 The application on appeal (1) was filed on 21 December 2006 as 5 International Application PCT/US06/62462 which entered the national stage as to 6 the United States. 35 U.S.C. § 371. 7 The application on appeal claims priority of provisional application 8 60/754,078, filed 27 December 2005. 9 The application has been published as U.S. Patent Application Publication 10 2009/0239984 A1. Specification ¶0001. 11 In support of prior art rejections, the Examiner relies on the following 12 evidence. 13 1 Second Brief filed 22 June 2011 was in response to a notice of non-compliant First Brief filed 1 April 2011. Appeal 2012-001584 Application 12/159,362 3 Balatoni et al. “Balatoni” U.S. Patent 3,882,191 6 May 1975 Lindsay U.S. Patent 4,234,703 18 Nov. 1980 Eichenauer et al. “Eichenauer” U.S. Patent 4,940,747 10 Jul. 1990 Stevenson et al. “Stevenson” U.S. Patent 5, 194,498 16 Mar. 1993 Parker U.S. Patent 5,252,667 12 Oct. 1993 Godwin et al. “Godwin” U.S. Patent 7,629,413 B2 8 December 2009 PCT filed 31 May 2007 claims priority of provisional application 60/645,161 filed 18 Jan. 2005 Kadakia et al. “Kadakia” U.S. Patent Application Publication 2004/0122149 A1 24 Jun. 2004 The Examiner also mentions the following documents. 1 Lawson et al. “Lawson” U.S. Patent 5,086,122 4 Feb. 1992 Tansey U.S. Patent Application Publication 2004/0054085 A1 18 Mar. 2004 Applicant claims a priority date prior to the publication date of Godwin. 2 Godwin claims a priority date prior to the earliest priority date claimed by 3 applicant. Applicant does not contest the prior art status of the evidence relied 4 upon by the Examiner. Hence, we treat all evidence relied upon by the Examiner 5 as being prior art. 6 Appeal 2012-001584 Application 12/159,362 4 Applicant relies on the following evidence. 1 Niimi U.S. Patent 7,311,936 B2 25 Dec. 2007 Search Results List of U.S. Patents from USPTO Patent Full Text and Image Database (First Brief, Attachment 1) 22 Dec. 2010 Sarvetnic PLASTISOLS AND ORGANOSOLS, pages 186-187-189 and 120-121 (Robert E. Krieger Publishing Co., Malabar, Florida) (First Brief, Attachment 2) 1983 Plastics Handbook PLASTICS ENGINEERING HANDBOOK, Society of the Plastics Industry, Inc., pages 270-278 (3d ed.) (Library of Congress Catalog Card No. 60-8081) (First Brief, Attachment 3) 1960 We have jurisdiction under 35 U.S.C. § 134(a). 2 Claims on appeal 3 Claims 1-8 are on appeal. Second Brief, page 3; Answer, page 3. The 4 Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as being unpatentable over 5 Balatoni, Lindsay, Eichenauer, Stevenson, Parker or Kadakia, in view of Godwin. 6 Final Rejection, page 2; Answer, page 4. 7 In presenting the appeal, apart from Claim 5 (Second Brief, page 6:1-2), 8 applicant does not argue the separate patentability of dependent claims 2-8. 9 Accordingly, we decide the appeal on the basis of Claims 1 and 5. 37 CFR 10 § 41.37(c)(1)(vii). 11 Claim 1, which we reproduce from page of the Claim Appendix on page 9 of 12 the Second Brief, reads [matter in brackets and indentation added (see 37 CFR 13 § 1.75(i)); principal limitations in issue in italics]: 14 Appeal 2012-001584 Application 12/159,362 5 A slush molded, polymeric skin made from a thermoplastic 1 alloy comprising 2 [1] poly(vinyl halide), 3 [2] plasticizer, and 4 [3] an olefin-based uncrosslinked elastomer having 5 thermoplastic properties, 6 wherein the poly(vinyl halide) has a K-value of from about 50 7 to about 90 as measured using 0.2 grams of poly(vinyl halide) in 100 8 ml of cyclohexanone at 30 ºC. 9 Analysis 10 We affirm the Examiner’s rejection essentially for the reasons given in the 11 Examiner’s Answer. We add the following discussion to comment on arguments 12 and evidence relied upon in the Second Brief. 13 Applicant bottoms the appeal on two arguments. A first argument is that 14 none of the prior art relied upon by the Examiner distinguishes between 15 crosslinked olefin elastomers and uncrosslinked olefin elastomers (element [3] in 16 Claim 1 reproduced above). Second Brief, ¶ 1 at the bottom of page 4 and 17 pages 5-6. A second argument is that none of the prior art relied upon by the 18 Examiner distinguishes between polymeric skins made by slush molding vis-à-vis 19 other techniques. Second Brief, ¶ 2 at the bottom of page 4 and pages 6-7. 20 Uncrosslinked olefin polymer—Claim 1 element [3] 21 The Examiner found that none of the prior art relied upon explicitly 22 “mentions crosslinking or vulcanization.” Answer, page 5. The Examiner 23 Appeal 2012-001584 Application 12/159,362 6 reasoned that “[t]herefore, . . . [none of the olefins corresponding to Claim 1 1 element [3]] are crosslinked.” Id. 2 We agree with the Examiner that the references do not explicitly describe 3 cross-linking. For example, Balatoni describes the use of a chlorinated 4 polyethylene (CPE). See Example 1 (col. 4:28-34). The CPE is blended with a 5 poly(vinyl chloride) (PVC) resin. In Example 2, the PVC and CPE is also blended 6 with a plasticizer (col. 6:63-66). 7 According to applicant, the reason for using an uncrosslinked CPE is that it 8 remains fully thermoplastic, exhibits thermoplastic properties and is capable of 9 multiple thermoplastic processing steps. Specification ¶ 00021. It is not clear 10 what the difference is between “remains fully thermoplastic” vis-à-vis “exhibits 11 thermoplastic properties.” In any event, Balatoni states the following with respect 12 to the composition described in Example 1: “the blend of the invention can be 13 reprocessed repeatedly, thus virtually eliminating scrap.” Col. 5:29-31. Balatoni 14 provides a full response to applicant’s argument in the paragraph bridging 15 pages 5-6 of the Second Brief and applicant’s discussion of Claim 5 on appeal. It 16 facially appears on this record that the Balatoni Example 1 and Example 2 products 17 have the same property as that said to exist with respect to the compositions of 18 applicant’s Claim 1 and Claim 5. Based on its disclosure, a reasonable finding is 19 that the Balatoni CPE is not cross-linked. 20 Slush molding 21 Claim 1 calls for “[a] slush molded, polymeric skin . . .” Slush molding is 22 known. See Plastics Handbook, pages 270-275. 23 The “slush molded” limitation is a product-by-process limitation. 24 Appeal 2012-001584 Application 12/159,362 7 The Examiner found that none of the prior art relied upon describes making 1 an article using slush molding. Answer, page 5. However, the Examiner was 2 unable to find that there is any difference between the claimed article (made via 3 slush molding) and the articles described by the prior art (made by other methods). 4 Why? Because “[t]here is no difference between a ‘polymeric skin’ [made by 5 applicant] and a film or sheeting [made e.g. by Balatoni].” Id at 6. On that 6 ground, the Examiner held that the “slush molded” language in the claims does not 7 patentably distinguish the claimed subject matter from the prior art articles. The 8 Examiner’s “no difference” finding was also made in the final rejection. Final 9 Rejection, page 3:2-3. Where in the Second Brief applicant explicitly addresses 10 the Examiner’s finding is not altogether clear. 11 According to applicant, patents have issued with the language “slush 12 molding”. See Attachment 1 of applicant’s Evidence Appendix. One patent is the 13 Niimi patent cited and discussed by applicant. Niimi Claim 1 calls for “integral 14 skin.” Niimi Claim 4, depending from Niimi Claim 1 recites “wherein the skin is 15 slush-molded.” Relying on claim differentiation, applicant argues that “slush 16 molding” should be given weight. The Examiner has a complete answer to 17 applicant’s argument: applicant has failed to show that “slush molding” was ever a 18 consideration in resolving patentability during examination of the application 19 which matured into the Niimi patent. Answer, pages 6-7. 20 Balatoni indicates that its product can be made into a “sheet [that] can be 21 vacuum formed to make automotive crash pad coverstock.” Col. 3:33-35. Slush 22 molding apparently can also be used “for forming articles (e.g., vehicle instrument 23 panels) as a polymeric skin.” Specification ¶ 00036. We are unable to find that 24 Appeal 2012-001584 Application 12/159,362 8 there is a difference between the Balatoni “crash pad coverstock” vis-à-vis 1 applicant’s polymeric skin vehicle instrument panels. 2 The “slush molded” limitation of Claim 1 does not render the claimed 3 subject matter patentable over the prior art relied upon by the Examiner. 4 Other arguments 5 We have not found it necessary to address Sarvetnic—principally because it 6 is not apparent where applicant discusses Sarvetnic in its briefs. We generally do 7 not give weight to evidence in an Evidence Appendix unless applicant discusses 8 the relevance of the evidence. We likewise have not found any meaningful 9 discussion of Plastics Handbook other than its general description of slush 10 molding. Our role is to consider arguments made by applicant. Our role does not 11 include conducting an examination independent from that conducted by the 12 Examiner by considering evidence in an Evidence Appendix which is not 13 discussed in any meaningful way in a brief. In short, we are not advocates for an 14 applicant and we do not review the record de novo to determine if we might come 15 up with some argument and/or evidence upon which relief might be granted to the 16 applicant—particularly since we would not have the benefit of any views by the 17 Examiner. 18 We have considered applicant’s remaining arguments and find none that 19 warrant reversal of the Examiner’s rejection. Cf. In re Antor Media Corp., 689 20 F.3d 1282, 1294 (Fed. Cir. 2012). 21 Decision 22 Upon consideration of the appeal, and for the reasons given herein, it is 23 Appeal 2012-001584 Application 12/159,362 9 ORDERED that the decision of the Examiner rejecting the claims on 1 appeal over the prior art is affirmed. 2 FURTHER ORDERED that no time period for taking any 3 subsequent action in connection with this appeal may be extended under 37 CFR 4 § 1.136(a)(1)(iv). 5 AFFIRMED 6