Ex Parte Low et al

Patent Trial and Appeal Board

Apr 25, 2017

13202375 (P.T.A.B. Apr. 25, 2017)

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.
13/202,375 08/19/2011 Bee T. Low DOW-36193-A-US 7922
29423 7590 04/27/2017
Hnsrh R1arlcwe.11 T T P/
EXAMINER
The Dow Chemical Company ZEMEL, IRINA SOPJIA
555 East Wells Street, Suite 1900
Milwaukee, WI53202-3819 ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
04/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptomailbox @ whdlaw.com
jere.polmatier@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEE T. LOW and STEPHEN YAUSANG CHENG1
Appeal 2016-004270
Application 13/202,375
Technology Center 1700
Before BRADLEY R. GARRIS, AVELYN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to35U.S.C. § 134, Appellants appeal from the Examiner’s
rejection under 35 U.S.C. § 103(a) of claims 1—17 as unpatentable over
Prieto et al. (US 2006/0199872 Al, published Sept. 7, 2006) (“Prieto”) in
view of Ou (US 5,177,824, issued Jan. 12, 1993), Yung et al. (US 5,560,877,
issued Oct. 1, 1996) (“Yung”), Oriani et al. (US 6,111,020, issued Aug. 29,
2000) (“Oriani”), and Appellants’ Admitted Prior Art (AAPA at Spec. 14)
1 Appellants identify Dow Global Technologies, Inc. as the real party in
interest. App. Br. 3.
Appeal 2016-004270
Application 13/202,375
(see the Office Action dated 15 August 2013; see also the Office Actions
dated 24 December 2013, 28 November 2014, and 8 April 2015). We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of making a foam article (e.g., footwear
soles) that comprises subjecting the foam of a certain type of ethylene/olefm
multi-block copolymer, referred to by Appellants as OBC (Br. 5), to a
molding process, referred to by Appellants as a phylon or 2-stage foam
process (id.), wherein the foam is compressed in a heated and then cooled
mold under processing conditions including certain temperatures,
compression ratios, and times thereby forming a foam article that maintains
the compressed thickness and has certain compression set, hardness, and
shrinkage properties (claim 1). Appellants also claim the article resulting
from this method (claims 9 and 10).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method of making a foam article comprising:
(a) compressing a foam to a compressed thickness at a temperature
from 145°C to 155°C in a mold for shaping the foam, wherein the
compression ratio is from about 1.2 to about 1.8;
(b) cooling the mold to a temperature of greater than 30°C for 210
seconds to 270 seconds; and
(c) forming a foam article that maintains the compressed thickness
and has
a compression set (after 24 hr) from 23.72.% to 53.2%,
a hardness (Type C with skin) from 55 to 61, and
a shrinkage from -1.1 % to -0.3%,
wherein the foam comprises from 50 wt% to 100 wt% of an
ethylene/C3-C2o a-olefm multiblock copolymer comprising at least 60 mole
percent ethylene and having a linear block structure comprising hard
segments and soft segments and:
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Application 13/202,375
(i) having a Mw/Mn from about 1.7 to about 3.5, at least one melting
point, Tm from 115°C to 125°C in degrees Celsius, and a density, d, from
0.875 g/cc to 0.945 g/cc, wherein the numerical values of Tm and d
correspond to the relationship:
Tm > -2002.9 + 4538.5(d) - 2422.2(d)2; and
(ii) having a Mw/Mn from about 1.7 to about 3.5, and is characterized
by a heat of fusion, AH in J/g, and a delta quantity, AT, in degrees Celsius
defined as the temperature difference between the tallest DSC peak and the
tallest CRYSTAF peak, wherein the numerical values of AT and AH have
the following relationships:
AT > -0.1299(AH) + 62.81 for AH greater than zero and up to 130 J/g,
AT > 48°C for AH greater than 130 J/ g,
wherein the CRYSTAF peak is determined using at least 5 percent of the
cumulative polymer, and if less than 5 percent of the polymer has an
identifiable CRYSTAF peak, then the CRYSTAF temperature is 30°C; or
(iii) characterizing by an elastic recovery, Re, in percent at 300 percent
strain and 1 cycle measured with a compression-molded film of the
ethylene/a-olefm block interpolymer, and has a density, d, in grams/cubic
centimeter, wherein the numerical values of Re and d satisfy the
following relationship when ethylene/a-olefm block interpolymer is
substantially free of a crosslinked phase:
Re >1481-1629(d); or
(iv) having a molecular fraction which elutes between 40°C and
130°C when fractionated using TREF, characterized in that the fraction has a
molar comonomer content of at least 5 percent higher than that of a
comparable random ethylene interpolymer fraction eluting between the same
temperatures, wherein said comparable random ethylene interpolymer has
the same comonomer(s) and has a melt index, density, and molar
comonomer content (based on the whole polymer) within 10 percent of that
of the ethylene/a-olefm block interpolymer; or
(v) having a storage modulus at 25°C, G'(25°C), and a storage
modulus at 100°C, G'(100°C), wherein the ratio of G'(25°C) to G'(100°C) is
in the range of about 1:1 to about 9:1; or
(vii) having at least one molecular fraction which elutes between 40°C
and 130°C when fractionated using TREF, characterized in that the fraction
has a block index of at least 0.5 and up to about 1 and a molecular weight
distribution, Mw/Mn, greater than about 1.3; or
(viii) having an average block index greater than zero and up to about
1.0 and a molecular weight distribution, Mw/Mn, greater than about 1.3.
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Appeal 2016-004270
Application 13/202,375
Appellants’ arguments are directed to independent claim 1 with no
separate arguments specifically directed to claims 2—17 (App. Br. 9—14).
Therefore, claims 2—17 will stand or fall with representative claim 1.
We sustain the above rejection for the reasons expressed by the
Examiner and below.
In rejecting claim 1, the Examiner finds that Prieto discloses the
claimed OBC foam useful for making footwear soles (15 August 2013
Office Action 2-4) but “does not disclose[] a process for obtaining such
footwear parts” that involves the phylon process as claimed (id. at 4).
Concerning this deficiency, the Examiner additionally finds that Ou, Yung,
Oriani, and AAPA disclose making footwear soles from polymer (e.g.,
EVA) foam via the phylon process and evince the parameters of this process
(i.e., temperatures, compression ratios, and times) are recognized in the prior
art as result-effective variables (id. at 4—5). Based on these findings, the
Examiner concludes that it would have been obvious for one of ordinary
skill in the art to make footwear soles from OBC foam as desired by Prieto
via the phylon process and to determine through routine experimentation
workable or optimum values for the parameters of this process, thereby
yielding the claimed method (id. at 5).
Appellants argue “the Examiner admits none of the cited references
discloses or suggests Appellant’s [sic] claimed method” (App. Br. 12). As
support for this argument (id.), Appellants rely on the Examiner’s statement
“[t]he applicants are correct that none of the references disclose or suggest
that the phylon process using OBC copolymers requires less cooling time
and, possibly, higher cooling temperatures, i.e., reduced cycle time” (8 April
2015 Office Action 6).
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Appeal 2016-004270
Application 13/202,375
Appellants do not explain why they believe the Examiner’s above
quoted statement supports their argument that the Examiner admits the
method of claim 1 is not disclosed or suggested by the applied prior art.
Moreover, Appellants fail to explain why this statement undermines the
Examiner’s conclusion that it would have been within the skill of an artisan
through routine experimentation to determine appropriate parameters such as
cooling times and temperatures in using the phylon process for making
footwear soles from OBC foam. For these reasons, we do not consider the
Examiner’s statement to be an admission militating against the rejection of
claim 1.
Appellants also contend that “OBC performance in a 2-stage foam
[i.e., a phylon] production is unpredictable in view of EVA 2-stage foam
production” (App. Br. 12).
However, the rejection of claim 1 is not based on using EVA 2-stage
foam production for predicting OBC performance in a corresponding
production. In addition, Appellants again fail to explain why they believe
their contention undermines the Examiner’s obviousness conclusion
regarding process parameters.
Appellants argue “none of the cited references recognize high-Tc [i.e.,
high crystallization temperature] OBC as a result-effective variable with
respect to foam cooling temperature” (App. Br. 13).
In response, the Examiner correctly explains that Appellants’
argument misinterprets the rejection which involves art-recognized, result-
effective process variables such as cooling temperatures rather than the
polymer property Tc (Ans. 7—8). We emphasize that Appellants do not
dispute the Examiner’s explanation in their Reply Brief.
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Appeal 2016-004270
Application 13/202,375
Appellants further argue that the Examiner has based the rejection on
improper hindsight by referring to paragraph 166 of the Specification (App.
Br. 14 (citing the 8 April 2015 Office Action 7)).
Appellants’ argument is not persuasive. It is true that the Response to
Arguments section of the 8 April 2015 Office Action refers to the paragraph
166 disclosure of a relationship between high crystallization temperatures
and cooling temperatures (8 April 2015 Office Action | bridging 6—7).
However, the Examiner expressly states that this reference to paragraph 166
is made to support the position that phylon processing conditions are
governed by the properties of the polymer foam (i.e., the processing
conditions for Prieto’s OBC foam presumably would differ from those for
EVA foam) {id.). Furthermore, as explained previously, the Examiner’s
obviousness conclusion does not involve the high crystallization temperature
of OBC but rather is based on determining appropriate values for result-
effective variables such as cooling temperatures.
In their Reply Brief, Appellants contest the rejection by presenting a
Table 1, which displays the respective method conditions of claim 1 versus
the applied prior art, and arguing “Table 1 shows that no combination of the
cited references and paragraph 4 [of the Specification] discloses a process
that starts with OBC foam and also utilizes values within the claimed
cooling temperature (>30°C) and within the claimed cooling time (210-270
seconds)” (Reply Br. 4).
Contrary to Appellants’ belief, the Examiner’s obviousness
conclusion is not revealed to be erroneous simply because Table 1 shows
that the cooling temperatures and times disclosed by Ou and Oriani for EVA
foam differ from those recited in claim 1 for OBC foam. As indicated
earlier, the obviousness conclusion is not based on the particular cooling
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Application 13/202,375
temperatures and times disclosed in the prior art for EVA foam but instead is
based on determining through routine experimentation effective cooling
temperatures and times for OBC foam specifically. The argument under
consideration has no apparent relevance to the Examiner’s conclusion that
such a determination would have been obvious.
Finally, Appellants contend that “[t]he criticality of the cooling time
range of 210-270 seconds for achieving the unexpected result of maintaining
compressed thickness is shown in Table A below (reproduced below from
Appellant’s [sic] specification)” (Reply Br. 5).
As an initial matter, we observe that the Reply Brief does not identify
the specific location of the referenced Table A in their 19 August 2011
Specification of record.2 Correspondingly, the Reply Brief does not identify
any Specification disclosure that characterizes as unexpected the result
shown in the referenced Table A. For these reasons, the contention
regarding an unexpected result appears to be merely an unsupported
statement presented by the attorney who wrote the Appeal and Reply Briefs.
As such, the contention lacks persuasive merit. See In re Geisler, 116 F.3d
1465, 1470-71 (Fed. Cir. 1997) (reiterating that unexpected results must be
established by factual evidence and holding that attorney’s statement that
improved results were “surprising” insufficient to establish unexpected
results).
In summary, Appellants fail to show harmful error in the Examiner’s
§103 rejection of claims 1—17.
The decision of the Examiner is affirmed.
2 Our independent search of the 19 August 2011 Specification reveals no
such Table A.
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Appeal 2016-004270
Application 13/202,375
TIME PERIOD FOR RESPONSE
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
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