Ex Parte Jarus et al

Board of Patent Appeals and Interferences

Oct 28, 2009

10595282 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. JARUS, GUOQIANG QIAN, TIE LAN, and
JEFF CICERCHI
____________

Appeal 2009-003491
Application 10/595,282
Technology Center 1700
____________

Decided: October 28, 2009

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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. (Appeal Brief filed January 3, 2008, hereinafter
“App. Br.,” 5). We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants describe a nanocomposite including a thermoplastic matrix
polymer, nanoclay, and compatibilizing dispersion agent. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A nanocomposite, comprising:
a thermoplastic matrix polymer, nanoclay, and
compatibilizing dispersion agent having a weight ratio of
nanoclay to compatibilizing dispersion agent of greater than
3.1:1 and less than 10:1; and
wherein the nanoclay comprises at least about 8 weight
percent of the nanocomposite.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Drewniak US 2002/0156171 A1 Oct. 24, 2002

There are three grounds of rejection for review on appeal:
(1) the Examiner rejected claims 1-20 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement;
(2) the Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as
being anticipated by Drewniak; and
(3) the Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
being unpatentable over Drewniak.
35 U.S.C. § 112, First Paragraph Rejection
The Examiner found that there was no basis in the originally filed
Specification for the limitation of “about 8 percent by weight” nanoclay as
recited in claim 1. (Examiner’s Answer entered March 28, 2008, hereinafter
“Ans.” 3 and 6).
Appellants contend that Examples 5-16 demonstrate actual reduction
to practice of nanocomposites with 8 weight percent nanoclay and that the
recited amounts are consistent with a second non-claimed embodiment using
“at least” terminology disclosed in the Specification. (App. Br. 10).

ISSUE
Have Appellants shown that the Examiner reversibly erred in finding
that the Specification does not provide written description support for “about
8 percent by weight” nanoclay?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states that Examples 5-16 contain 8 wt.
percent nanoclay. (Spec. 11: 3-5).
2. Appellants’ Specification states:
One aspect of the invention is a nanocomposite having a weight
ratio of nanoclay to compatibilizing dispersion agent of less
than 2.2:1 and greater than 1:1.9. In this ratio, this
nanocomposite is useful as a compound for a final article
formation via molding or extrusion. Preferably, this
nanocomposite has a minimum of 9 weight percent nanoclay
dispersed in the nanocomposite compound. More preferably,
the nanoclay concentration is 10 or more weight percent. Most
preferably, the nanoclay concentration is at least 12 weight
percent.
(Spec. 2:12-19) (emphasis added).

PRINCIPLES OF LAW
As explained in University of California v. Eli Lilly and Co., 119 F.3d
1559, 1566 (Fed. Cir. 1997),
[t]o fulfill the written description requirement, a patent
specification must describe an invention and do so in sufficient
detail that one skilled in the art can clearly conclude that "the
inventor invented the claimed invention." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must
clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed."). Thus, an
applicant complies with the written description requirement "by
describing the invention, with all its claimed limitations, not
that which makes it obvious," and by using "such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention." Lockwood, 107 F.3d at
1572, 41 USPQ2d at 1966.

In other words, the disclosure must convey with reasonable clarity to
those skilled in the art that the inventor was in possession of the invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Compliance with the written description requirement is a question of fact.
Id., at 1562-63.

ANALYSIS
We are not persuaded by Appellants’ arguments that the Specification
provides written description support for nanoclay amounts of “about” 8
percent by weight. Although the Specification provides specific examples
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Application 10/593,282

where the amount of nanoclay is 8 percent by weight, the Specification fails
to provide any guidance that the amount of nanoclay can also include
amounts of “about” 8 percent by weight. Indeed, the second non-claimed
embodiment of the Specification relied on by Appellants for support
contains “a minimum of 9 weight percent nanoclay dispersed in the
nanocomposite compound.” (FF 2). Therefore, the most preferred range for
the second embodiment of “at least 12 weight percent” nanoclay does
nothing to help persons of ordinary skill in the art recognize that Appellants’
specific examples at 8 percent by weight nanoclay include amounts of
“about” 8 percent by weight nanoclay as recited in the claims. Moreover,
the term “about” encompasses amounts below 8 which have not been shown
to be supported by the specification.
35 U.S.C. § 103(a) Rejection
The Examiner found that Drewniak discloses compounds, articles, and
methods that encompass the instantly claimed amounts of ingredients recited
in the claims. (Ans. 4-5). The Examiner determined that it would have been
obvious to use the recited ingredient combinations and amounts because
“they are encompassed by the reference and would have been expected to
give the properties and results disclosed by the reference.” (Ans. 5).
Appellants contend that the broad ranges disclosed in Drewniak
should not be believed and that the only proper ranges in Drewniak are those
disclosed in paragraphs [0015]-[0024] in conjunction with Examples 1-12.
(App. Br. 11). Appellants argue that the comparative data present in the
Specification shows the superior benefits of the recited nanocomposite.
(App. Br. 12). Appellants admit that the amounts of nanoclay and
compatibilizing dispersion agent disclosed in Drewniak include the recited
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ratios of nanoclay to compatibilizing dispersion agent recited in the claims,
but argue that if such combinations were true, Drewniak would have
provided actual data. (App. Br. 13).

ISSUE
Have Appellants shown that: (1) the Examiner reversibly erred in
determining that the ratios of nanoclay to compatibilizing dispersion agent
recited in the claims would have been obvious to one of ordinary skill in the
art in view of Drewniak; and if not, then (2) the comparative examples are
sufficient evidence of secondary considerations to overcome the Examiner’s
evidence of obviousness?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
3. Drewniak states:
In one embodiment, the polyolefin blend in the article
includes from about 70 to 95 percent by weight of polyolefin,
from about 1 to 10 percent by weight of functionalized
polyolefin, and from about 4 to 20 percent by weight of
organically modified clay to provide a ratio of the melt strength
of the modified blend to the melt strength of the blend before
modification measured at 220º C. of at least about 1.6 but no
more than about 14. In a preferred embodiment, the polyolefin
blend in the article includes from about 85 to 92 percent by
weight of polyolefin, from about 2 to 5 percent by weight of
functionalized polyolefin, and from about 6 to 10 percent by
weight of organically modified clay, wherein the total amoutns
[sic] to 100%, to provide a ratio of the melt strength of the
modified blend to the melt strength of the blend before
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modification measured at 220ºC. of at least about 1.6 but no
more than about 14.
(Para. [0018]) (emphasis added).

4. Appellants’ Specification states:
If the weight ratio of nanoclay to compatibilizing dispersion
agent is greater than 3.1:1 and less than 10:1, then the pellets
are suitable for use as concentrates for dilution or “let down” in
later molding operations to make a final article . . . If the weight
ratio of nanoclay to compatibilizing dispersion agent of less
than 2.2:1 and greater than 1:1.9, then the pellets are suitable
for use as a final compound for molding or extrusion into a
final article.
(Spec. 6:27 – 7:11).

5. Appellants’ comparative examples do not compare composites
having different nanoclay to compatibilizing dispersion agent
ratios. (Spec. 10:1-2; Table 3).

PRINCIPLES OF LAW
The disclosure of a reference may be relied upon for all it contains,
and is not limited what is disclosed in the examples. In re Heck, 699 F.2d
1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,
1009 (CCPA 1968)). The Federal Circuit has held that when the difference
between a claimed invention and the prior art is a claimed range; the
applicant must show that the range is critical through unexpected results. In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations
omitted).
In order to prove unexpected results, the invention must be compared
with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991). In addition, for a showing of unexpected results to
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overcome the teachings of the prior art, the results presented must be
commensurate in scope with the claims. See In re Kollman, 595 F.2d 48
(CCPA 1979).

ANALYSIS
Appellants have not separately grouped the claims. Accordingly, we
confine our discussion to appealed claim 1, which contains claim limitations
representative of the arguments made by Appellants pursuant to 37 C.F.R. §
41.37(c)(1)(vii).1
We are not persuaded by Appellants’ argument that the amounts of
nanoclay disclosed in Drewniak fail to render the recited amount of nanoclay
and recited ratio of nanoclay to compatibilizing dispersion agent obvious.
Appellants have not presented any persuasive evidence that the broad
amounts disclosed in Drewniak are not operable. See Impax Labs., Inc. v.
Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); In re Sasse, 629
F.2d 675, 681-82 (CCPA 1980). Additionally, Appellants admit that the
amounts of nanoclay and compatibilizing dispersion agent disclosed in
Drewniak in preferred embodiments include combinations having the recited
ratios. (App. Br. 13, FF 3). Accordingly, Appellants have failed to
demonstrate error in the Examiner’s determination of obviousness.
We also agree with the Examiner that Appellants evidence of superior
performance is insufficient to overcome the Examiner’s determination of
obviousness. Appellants’ results do not compare the closest prior art, which

1 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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is Drewniak. In other words, Appellants have not presented any results
showing that different nanoclay to compatibilizing dispersion agent ratios
have an effect on the superior results alleged by Appellants. Indeed,
Appellants’ Specification suggests that the ratios may be varied based on the
different end uses of the composite. (FF 4).
In addition, Appellants do not provide results at varying amounts of
nanoclay. (See FF 5). Accordingly, Appellants’ results are not
commensurate in scope with the claims. Thus, weighing the Examiner’s
evidence against Appellants’ evidence of superior results, Appellants have
failed to demonstrate sufficient secondary considerations to overcome the
Examiner’s evidence of obviousness.

35 U.S.C. § 102(b) Rejection
The Examiner found that Drewniak discloses the recited composite
including examples having amounts falling within the scope of the claims.
(Ans. 3-4).
Appellants contend that Drewniak does not disclose the nanoclay to
compatibilizing dispersion agent ratios recited in the claims and that the
ratios in Drewniak’s examples are all outside the recited ratio range. (App.
Br. 11-12).
The issue is: have Appellants have demonstrated that the Examiner
reversibly erred in finding that Drewniak discloses the recited nanoclay to
compatibilizing dispersion agent ratio recited in the claims within the
meaning of 35 U.S.C. § 102?
For a rejection under 35 U.S.C. 102 to be proper, the prior art “must
clearly and unequivocally disclose the claimed [invention] or direct those
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skilled in the art to the [invention] without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586 (CCPA 1972)
(emphasis in original). The court went on to state: “[s]uch picking and
choosing may be entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may arise from the
similarity of the subject matter which he claims to the prior art, but it has no
place in the making of a 102, anticipation rejection.” Id.
We agree with Appellants, that Drewniak does not disclose the recited
nanoclay to compatibilizing dispersion agent ratio. Drewniak does not
disclose the recited ratio or any specific examples having the ratio as
claimed. Thus, while we agree with the Examiner that it would have been
obvious to select amounts of nanoclay and compatibilizing dispersion agent
falling within the ratios as recited in the claims discussed supra, Drewniak
does not expressly exemplify amounts of nanoclay and compatibilizing
dispersion agent falling within the recited ratios. Accordingly, we cannot
sustain the Examiner’s rejection under 35 U.S.C. § 102(b).

CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in finding that the Specification does not provide written description
support for “about 8 percent by weight” nanoclay.
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that the ratios of nanoclay to compatibilizing dispersion
agent recited in the claims would have been obvious to one of ordinary skill
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in the art in view of Drewniak. Appellants have also failed to demonstrate
that the comparative examples are sufficient evidence of secondary
considerations to overcome the Examiner’s evidence of obviousness.
Appellants have demonstrated that the Examiner reversibly erred in
finding that Drewniak discloses the recited nanoclay to compatibilizing
dispersion agent ratio recited in the claims within the meaning of 35 U.S.C.
§ 102.
ORDER
We affirm the Examiner’s decision rejecting claims 1-20 under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
We affirm the Examiner’s decision rejecting claims 1-20 under 35
U.S.C. § 103(a) as being unpatentable over Drewniak.
We reverse the Examiner’s decision rejecting claims 1-20 under 35
U.S.C. § 102(b) as being unpatentable over Drewniak.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).
AFFIRMED

tc

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