Ex Parte LI et al

Board of Patent Appeals and Interferences

Aug 15, 2012

12247756 (B.P.A.I. Aug. 15, 2012)

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.
12/247,756 10/08/2008 Fengkui Li COS-1163 8577
25264 7590 08/15/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
LENIHAN, JEFFREY S
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
08/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FENGKUI LI,
RYAN L. ALBORES, and JOHN BIESER
__________

Appeal 2011-003688
Application 12/247,756
Technology Center 1700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to processes of
making acrylate-containing polypropylene compositions. The Examiner
entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-003688
Application 12/247,756

2
STATEMENT OF THE CASE
Claims 1-12 and 15-26 stand rejected and appealed (App. Br. 2).
1

Claim 1 is representative and reads as follows:
1. A method comprising:
contacting a polypropylene, an acrylate-containing monomer,
and an initiator to form a composition; and
reactive extruding the composition to form a polymer blend,
wherein the polymer blend comprises from 0.5 wt.% to 4 wt.%
acrylate-containing monomer.

The following rejections are before us for review:
(1) Claims 1-9 and 15-26, under 35 U.S.C. § 103(a) as obvious over
Li
2
(Ans. 4-6);
(2) Claim 10, under 35 U.S.C. § 103(a) as obvious over Li and Beatty
3

(Ans. 6-7); and
(3) Claims 11 and 12, under 35 U.S.C. § 103(a) as obvious over Li
and Maier
4
(Ans. 7-8).
DISCUSSION
In rejecting claims 1-9 and 15-26 as obvious over Li, the Examiner
found that Li described a process having the steps required by claim 1,
including preparation of a composition that contained polypropylene, an
initiator, and 5 to 45% by weight of an acrylate-containing monomer system
(see Ans. 4). The Examiner found that Li taught that its monomer system, in

1
Appeal Brief entered May 3, 2010.
2
U.S. Patent App. Pub. No. 2007/0197730 A1 (published August 23, 2007).
3
U.S. Patent App. Pub. No. 2007/0004864 A1 (published January 4, 2007).
4
C. MAIER ET AL., POLYPROPYLENE-THE DEFINITIVE USER‟S GUIDE AND
DATABOOK 27-47 (William Andrew Publishing/Plastics Design Library,
Norwich, NY, 1998).
Appeal 2011-003688
Application 12/247,756

3
turn, could be a blended composition that contained as little as 10% of the
acrylate monomer (id. at 4-5).
Based on Li‟s teaching that its ultimate polypropylene composition
contained as little as 5% of the monomer system, and that the monomer
system could in turn contain as little as 10% of the acrylate monomer, the
Examiner calculated that “one of ordinary skill in the art will recognize that
the amount of triacrylate monomer in the polyolefin blend falls in the range
of 0.5% to 45% by weight, overlapping the claimed range for the acrylate-
containing monomer” (id. at 5). Therefore, the Examiner reasoned, claim 1
would have been obvious to an ordinary artisan, since “[i]t has been held
that in the case where the claimed ranges overlap or lie inside ranges
disclosed in the prior art, a prima facie case of obviousness exists” (id.
(citing In re Wertheim, 541 F.2d 257 (CCPA 1976); In re Woodruff, 919
F.2d 1575 (Fed. Cir. 1990); MPEP § 2144.05)).
Appellants contend that Li‟s ultimate polypropylene composition
contains 5 to 45% of the acrylate-containing monomer system whereas claim
1 recites that the composition contains 0.5 to 4% acrylate-containing
compound (App. Br. 3). Appellants argue that, given the 1% difference
between the prior art range and the claimed range, the Examiner has not
adequately explained why the claimed range would have been suggested by
the range disclosed by Li (id. at 3-4). In particular, Appellants argue,
“compared to the presently claim[ed] range of 0.5 wt.% to 4 wt.%, a
difference of 1 wt.% is not a small amount, and certainly is not close enough
that one skilled in the art would have expected them to have the same
properties, as asserted by the Examiner” (id. at 3).
We conclude that the Examiner has the better position.
Appeal 2011-003688
Application 12/247,756

4
It is well settled that, “even a slight overlap in range establishes a
prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003). However, “an applicant may overcome a prima facie case of
obviousness by establishing „that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.‟” Id. at 1330 (quoting In re Geisler, 116 F.3d 1465, 1469-70
(Fed. Cir. 1997) (alteration in original)).
Here, as the Examiner points out, Li discloses that its ultimate
composition can contain a “monomer system” at a concentration of “from
about 5 wt. % to about 45 wt. %” (Li [0020]). As the Examiner also points
out, however, the “monomer system” itself need only include “acrylic
monomer” at a concentration “from about 10 wt. % to about 90 wt. %” (id.
at [0028]).
Thus, given that Li‟s “monomer system” can contain as little as 10%
of an acrylate monomer, we detect no error in the Examiner‟s calculation
that when Li discloses its ultimate composition as containing 5 to 45% of
that monomer system, an ordinary artisan would have understood that the
resulting concentration range of acrylate monomer significantly overlapped
claim 1‟s range of 0.5 wt.% to 5 wt.%. Accordingly, we are not persuaded,
as Appellants argue, that the range in claim 1 and the range described by Li
do not overlap.
As Appellants point to no unexpected result, or any other secondary
indicia of non-obviousness, coming from the process recited in claim 1, we
affirm the Examiner‟s rejection of that claim as obvious over Li. As they
were not argued separately, claims 2-9 and 15-26 fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003688
Application 12/247,756

5
The Examiner also rejected claim 10 as obvious over Li and Beatty,
and rejected claims 11 and 12 as obvious over Li and Maier (Ans. 6-8). In
traversing these rejections, Appellants argue only that Beatty and Maier
“do[] not supply the features missing from Li” discussed above (App. Br. 4).
Thus, as Appellants‟ arguments do not identify any deficiency in the
Examiner‟s prima facie case of obviousness as to claims 10-12, and as we
detect none, we affirm these rejections as well.
SUMMARY
We affirm the Examiner‟s rejection of claims 1-9 and 15-26 as
obvious over Li.
We also affirm the Examiner‟s rejection of claim 10 as obvious over
Li and Beatty.
We also affirm the Examiner‟s rejection of claims 11 and 12 as
obvious over Li and Maier.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc