Ex Parte Marechal et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10483004 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte PHILIPPE MARÉCHAL
and ERIC MAZIERS
________________

Appeal 2010-008943
Application 10/483,004
Technology Center 1700
________________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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A. Introduction2
Philippe Maréchal and Eric Maziers (“Maréchal”) timely appeal under
35 U.S.C. § 134(a) from the final rejection3 of claims 13-16 and 18, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
This is the second time this application has come before the Board.
(See the prior decision, Ex parte Maréchal, fd2008-5806 (BPAI 2008),
affirming rejections of somewhat broader claims under § 103(a) over
different prior art.) The invention is said to relate to high gloss sheets, pipes,
and hollow items formed from metallocene-produced polyethylene.
(Spec. 1, ll. 7-9.) Claim 13 is representative of the issues on appeal and
reads:
13. A high gloss hollow article comprising
a wall structure having an external surface and an internal
surface defining an internal chamber having a diameter
of from about 0.5 mm to about 250 mm,
said wall comprising a single layer,
wherein the single layer consists essentially of a
metallocene produced polyethylene resin
and having

2 Application 10/483,004, Glossy Tubes and Pipes, entered the national
stage under 35 U.S.C. § 371 on 6 July 2004, based on an international
application filed 2 July 2002, and claiming the benefit under 35 U.S.C. § 119
of European applications filed on 4 July 2001 and 5 July 2001. The
specification is referred to as the “004 Specification,” and is cited as “Spec.”
The real party in interest is listed as TOTAL Petrochemicals Research Feluy,
of Belgium. (Appeal Brief filed 19 December 2009 (“Br.”) 1.)
3 Office action mailed 6 August 2009 (“Final Rejection”; cited as “FR”).
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an external surface having a gloss of at least 40 as
determined by the standard test of ASTM D2457-90.
(Claims App., Br. 5; indentation, paragraphing, and emphasis added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 13-16 and 18 stand rejected under obviousness type
double patenting in view claims 1, 4, and 21 of DeKunder.5
B. Claims 13-16 and 18 stand rejected under 35 U.S.C. § 103(a)
in view of Yamamoto.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As the Appellant, Maréchal bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
proceedings to appellate review of civil cases in this respect. . . . [T]he party
seeking reversal normally must explain why the erroneous ruling caused
harm.”) Arguments not timely made have been waived.
37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also In re Hyatt,

4 Examiner’s Answer mailed 16 March 2010 (“Ans.”).
5 Gregory S. DeKunder et al., High Gloss Polyethylene Articles, U.S. Patent
7,195,806 B2 (27 March 2007), based on an application filed 20 January
2004.
6 Akihiko Yamamoto et al., Polyethylene Resin Composition for Heavy-
Duty Packaging Bag and Polyethylene Resin Film Produced from the Same,
U.S. Patent 5,756,193 (1998).
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211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first raised in the
brief to the Board is waived on appeal).
Maréchal has not contested the obviousness-type double patenting
rejection and, indeed, has not indicated an appeal of that rejection, which,
accordingly, is not before us. On that issue, therefore, the Examiner’s
rejection is the final Agency decision, from which no further appeal may be
taken, the full range of remedies available from the Agency not having been
exhausted.
As for the obviousness rejection based on Yamamoto, Maréchal
disputes only the resin composition disclosed to form bags. The complete
substantive argument reads:
As is known to one skilled in the art, the polymer than an
article is formed from is [sic] directly determines the
resulting properties of the formed article. Accordingly, if the
claimed invention recites use of a single polymer and the
cited reference teaches a blend of three polymers, it is clear
that an article formed from the blend will have properties that
vary from those formed from a single polymer. Accordingly,
the additional components taught by Yamamoto, (i.e., two
additional polymer components) would materially affect the
basic and novel characteristics of the claimed hollow article.
(Br. 3.) All other arguments having been waived, the dispositive issue is
whether this argument suffices to prove harmful error in the Examiner’s
rejection. As no argument is presented for the separate patentability of any
of the remaining claims, all claims stand or fall with claim 13.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner maintains that the heavy duty packaging bag taught by
Yamamoto is within the scope of the claimed hollow article, including the
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resin composition and gloss requirement, but for the dimension of the
interior chamber. (Ans. 6-7, citing Yamamoto claims 3 and 5, and
Examples 1-7.) Bags having an interior diameter of from 0.5 to 250 mm, the
Examiner argues, would have been obvious to store items in that size range.
(Ans. 7.) As for the polyethylene resin, the Examiner maintains that
Maréchal has not carried its burden of showing that any additional
components in the resin described by Yamamoto materially affect the basic
and novel characteristics of the claimed hollow articles. (Id. at 6.)
It is well-settled that in the transitional term, “consisting essentially
of,” “[t]he word ‘essentially’ opens the claims to the inclusion of ingredients
which would not materially affect the basic and novel characteristics of
appellant’s compositions as defined in the balance of the claim.” In re
Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963). The hollow article
comprises a wall, which in turn comprises the contested single layer. Thus,
there may be additional layers in the wall, but there must be at least one
layer “consist[ing] essentially of a metallocene produced polyethylene
resin.”
According to the 004 Specification, “the external layer [of plastic
sheets or pipes or tubes or connector joints or hollow items] consists
essentially of a metallocene-produced polyethylene having a density of
from 0.910 g/cm3, up to 0.966 g/cm3, or up to homopolymer densities.”
(Spec. 3, ll. 19-23.) The 004 Specification discloses further that medium-
density polyethylene and high-density polyethylene can be produced using a
variety of catalysts, including a supported Ziegler-Natta catalyst comprising
metallocene sites (id. at 4, ll. 29-30) as well as by “a metallocene catalyst
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capable of producing a mono- or bi- or multimodal distribution, either in a
two step process . . . or as a dual or multiple site catalyst in a single reactor”
(id. at 5, ll. 1-4, citations omitted; 8, ll. 20-23). The molecular weight
distribution may be from 2 to 20. (Id. at 8, ll. 23.) Although not so limited
in any appealed claim, the 004 Specification indicates that in certain
embodiments “[t]he metallocene-produced resins used in the present
invention have a high level of long chain branching as indicated by a high
value of the Dow Rheological Index.” (Id. at 9, ll. 1-3.) Finally,
the 004 Specification teaches that “[d]uring extrusion, it is possible to
incorporate fluoroelastomer in the resin allowing for very low
transformation temperatures of from 140 to 180 °C.” (Id. at 11, ll. 8-11.)
Given the range of densities of polyethylene said to be made using
metallocene catalysts, and the range of molecular weight distributions
available from metallocene catalysts, it is clear that a considerable variety of
polyethylenes are within the scope of the term “metallocene produced
polyethylene resin.” In view of the disclosure that supported Ziegler-Natta
catalysts with metallocene sites may be used, the scope of that term becomes
very wide indeed. In the absence of a clear disclosure in
the 004 Specification of what are the “basic and novel properties” of the
invention now-claimed, it is by no means clear that completely distinct
polymers such as fluoroelastomers are excluded as blends from the recited
“single layer consist[ing] essentially of a metallocene produced polyethylene
resin.” We also note that the plain language of claim 13 does not exclude
blends of various metallocene-produced polyethylenes, provided the gloss
limitation, which Maréchal has not contested, is met.
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Under these circumstances, it was prudent for the Examiner to
require7 Maréchal to explain how the claimed subject matter is distinguished
over bags made by the resin blends described by Yamamoto. (FR 5-6, 8-9;
Ans. 6-7, 9-10.) Those polyethylene resin compositions are made of:
(I) 40-70 parts by weight of a linear low density polyethylene resin;
(II) 1-55 parts by weight of a linear medium or high-density polyethylene
resin; and (III) 5-29 parts by weight of a high-pressure low-density
polyethylene resin, where the total amount of resins (I), (II), and (III)
is 100 parts by weight. (Yamamoto, col. 2, ll. 40-56.) Both the linear low-
density polyethylene and the linear medium- or high-density polyethylene
resins may be produced using metallocene catalysts. (Id. at col. 4, ll. 12-20,
and at col. 7, ll. 27-28.) High pressure low density polyethylene resin is an
ethylene polymer produced by a free radical polymerization process. (Id.
at col. 8, ll. 15-19.)
Maréchal’s argument that due to other components “an article formed
from the blend [of three polymers] will have properties that vary from those
formed from a single polymer” begs the question, “what basic and novel
properties will be materially changed?” First, the statement is a truism

7 The statute specifically authorizes “requirements” in the course of
examination of an application for patent:
Whenever, on examination, any claim for a patent is rejected, or
any objection or requirement made, the Director shall notify the
applicant thereof, stating the reasons for such rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of his application.
35 U.S.C. § 132(a) (2010).
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because any additional component will result in a distinct material that has
distinct properties, if measured with sufficient precision and accuracy.
Second, as already discussed, claim 13 is not, in light of the supporting
disclosure, limited to a single polymer. Arguments for patentability cannot
be premised on a limitation not recited in the rejected claims. Thus,
Maréchal’s argument is essentially non-responsive to the Examiner’s
requirement that the basis for the argument be explained, i.e., that Maréchal
show where it is made clear in the specification what is regarded as
constituting a material change in the basic and novel characteristics of the
invention. Cf. PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355
(Fed. Cir. 1998).
We conclude, on the present record, that Maréchal has failed to prove
harmful error in the Examiner’s rejection for obviousness.
C. Order
We AFFIRM the rejection of claims 13-16 and 18 under
35 U.S.C. § 103(a) in view of Yamamoto.
We note that the Examiner’s rejection of claims 13-16 and 18 stand
rejected under obviousness type double patenting in view claims 1, 4, and 21
of DeKunder is the final Agency decision, from which no further appeal may
be taken.
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)(v).
AFFIRMED
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kmm

DAVID J. ALEXANDER
FINA TECHNOLOGY
P.O. BOX 674412
HOUSTON, TX 77267-4412