Ex Parte Maziers

Patent Trial and Appeal Board

Oct 13, 2016

13397068 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/397,068 02/15/2012 Eric Maziers
25264 7590 10/17/2016
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
F-950CON 9786
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
tammy.brzozowski@total.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC MAZIERS
Appeal2015-003637
Application 13/397,068
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 8-11, 15, 18, 23, and 24. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to bi-layer rotomoulded articles
where the articles' external layer is prepared from polyetherester or saturated
polyester or polycarbonate, and the articles' internal layer is prepared from
metallocene-produced polyethylene. Spec. 1:3-5. Claim 8, reproduced
below, is illustrative of the claims on appeal.
1 Appellant identifies the real party in interest as Total Research &
Technology Feluy. Appeal Brief filed October 29, 2014 ("App. Br."), 5.
2 Final Office Action mailed June 30, 2014 ("Final Act.").
Appeal2015-003637
Application 13/397,068
8. A bi-layer rotation moulded article comprising:
an internal layer prepared from a composition comprising
from 70 to 99.5 wt% of a metallocene-produced polyethylene
and from 30 to 0.5 wt% of functionalised polyolefin; and
an external layer comprising a major component selected
from polyetherester, saturated polyester, polycarbonate or
ethylene-vinyl-acetate (EVA);
wherein the adhesion between the two layers is achieved
by the internal layer composition.
Appeal Brief (Claims Appendix) 15.
REJECTIONS ON APPEAL
1. Claims 8, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over 0 'Brien et al. (US 2007 /025417 4 A 1, published
Nov. 1, 2007) (hereinafter "O'Brien") in view of Tibbitt et al.
(US 2002/0183448 Al, published Dec. 5, 2002) (hereinafter
"Tibbitt") or Nakano et al. (US 5,302,645, issued Apr. 12, 1994)
(hereinafter "Nakano");
2. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
obvious over O'Brien in view of Tibbitt or Nakano, and further in
view ofMaziers (EP 1 422 059 Al, published May 26, 2004)
(hereinafter "Maziers '059");
3. Claims 11 and 15 stand rejected under 35 U.S.C. § 103(a) as
obvious over O'Brien in view of Tibbitt or Nakano, and further in
view of Maziers (EP 1 600 475 Al, published Nov. 30, 2005)
(hereinafter "Maziers '4 7 5"); and
4. Claim 18 stands rejected under 35 U.S.C. § 103(a) as obvious over
O'Brien in view of Tibbitt or Nakano, and further in view of
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Application 13/397,068
McKenna et al. (US 2006/0235187 Al, published Oct. 19, 2006)
(hereinafter "McKenna");
DISCUSSION
Rejection 1, 2, & 4
Appellant's arguments regarding the first stated ground of rejection
focus on limitations that appear in claim 8. See generally App. Br. 9-12.
Appellant does not present separate arguments for the patentability of the
dependent claims, including separately rejected claims 9, 10, and 18. See id.
at 12-14. Consequently, we confine our discussion to claim 8, and claims 9,
10, 18, 23, and 24 will stand or fall with claim 8.
0 'Brien discloses a multilayer article prepared from rotational
molding that comprises a) a layer A comprising a functionalized
fluoropolymer, b) a layer B comprising a non-fluoropolymer containing
functional groups; and c) optionally a layer C that has good adhesion to layer
A and layer Band is not a blend of layer A and layer B. (O'Brien Abstract).
Layer A or layer B may be the outer layer of the multi-layer article. Id. i-f 44.
O'Brien teaches layer B can include 70% by weight of metallocene
polyethylene (O'Brien i-fi-159, 118) and can include at least 2% by weight of
a functionalized polymer, such as functionalized olefins (id. i-f 47). In
addition, O'Brien teaches that layer C, which can be prepared from a
polymer similar to that of layer B (O'Brien Abstract), can be a thermoplastic
polyester, such as polyethylene terephthalate or polycarbonate (id. at
claim 6).
The Examiner finds, and Appellant does not dispute, that O'Brien's
layers C and B correspond to the external layer and internal layer,
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Application 13/397,068
respectively, in the article in Appellant's claim 8. Final Act. 2. The
Examiner finds that 0 'Brien teaches all the limitations of claim 8 except an
external layer (layer C) comprising polycarbonate, PET (saturated polyester)
in a major component (50 wt% or more). Id. at 2-3. The Examiner,
however, finds that Tibbitt discloses an article having from about 90 to
99.8 wt% unmodified polyester and from about 0.02 to 10 wt% modified
copolymer (Tibbitt i-f 15). Final Act. 4. The Examiner finds that one of
ordinary skill in the art would have been motivated, based on Tibbitt (i-fi-f 3,
34), to include polyester in a major component (50 wt% or more) in a
rotational molding article to render it more suitable for recycling and
offering broad design flexibility. Final Act. 4. Alternatively, the Examiner
finds that Nakano teaches a polyethylene composition, which can be
rotationally molded), comprising 100 parts by weight of polyester and 5 to
50 parts by weight of a thermoplastic resin, such as polyamide or
polycarbonate (Nakano Abstract, 2:65---68, 4:58---60). Final Act. 4. The
Examiner finds that one of ordinary skill in the art would have been
motivated, based on Nakano (Nakano 1: 9-10, 16-17), to include polyester
as a major component in the formation of rotational molding articles to have
improved molding workability and excellent mechanical and physical
properties. Final Act. 4.
Appellant argues that the recitation of a "bi-layer" in the preamble of
claim 8 limits the scope of the claim and distinguishes the claimed subject
matter from 0 'Brien's multilayer article, which additionally includes a third
layer, layer A. App. Br. 9-10.
"Whether to treat a preamble as a limitation is a determination
'resolved only on review of the entire[] ... patent to gain an understanding
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Application 13/397,068
of what the inventors actually invented and intended to encompass by the
claim."' Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). "In general, a preamble
limits the invention if it recites essential structure or steps, or if it is
'necessary to give life, meaning, and vitality' to the claim." Id. (quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999)). "Conversely, a preamble is not limiting 'where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention."' Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The court in Catalina noted that
although no litmus test exists for determining whether to treat a preamble as
a limitation, several "guideposts" have emerged from the case law in this
area. Id. In particular, guideposts tending to show that the preamble is a
claim limitation include: Jepson claiming, dependence on a particular
disputed preamble phrase for antecedent basis, when the preamble is
essential to understand limitations or terms in the claim body, and when the
preamble recites additional structure or steps underscored as important by
the specification. Id. (citations omitted). On the other hand, the preamble
might not constitute a claim limitation when the claim body describes such a
structurally complete invention that deleting the preamble phrase does not
affect the structure or steps of the claimed invention. Id. at 809 (citations
omitted).
Although the Examiner does not expressly address whether the term
"bi-layer" recited in the preamble of independent claim 8 is limiting,
because the preamble recites the structure of the claimed invention, it should
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Application 13/397,068
be treated as a claim limitation as argued by the Appellant. Even if the term
"bi-layer" in the preamble of claim 8 is given patentable weight, however,
the broadest reasonable construction of that term consistent with the
Specification does not exclude articles with more than two layers. In re
Amer. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The
PTO must give claims their broadest reasonable construction consistent with
the specification). On the contrary, the Specification states that "[t]he [bi-
layer] articles may contain additional layers for which the adherence is
provided by conventional methods such as for example by a bonding layer."
Spec. 3, 11. 17-18 and 10, 11. 13-14. Accordingly, we find no reversible
error in the Examiner's claim construction that the bi-layer article of claim 8
"does not exclude [an] additional layer being present in the bi-layer
rotomoulded article" (Ans. 3) or in the Examiner's finding that O'Brien's
multilayer article, which includes three layers (layers A, B, and C), reads on
independent 8, and claims 9, 10, 18, 23, and 24, which depend therefrom.
Rejection 3
Claim 11 depends from claim 8, and requires that the external layer
further comprises a minor component that is selected from the group
consisting of polyether-block co-polyamide, thermoplastic polyurethane and
fluoropolymer.
Claim 15 also depends from claim 8, and requires that the external
layer further comprises a minor component that is polyether-block co-
polyamide.
The Examiner acknowledges that O'Brien, Tibbitt, and Nakano fail to
disclose that the external layer (layer C) further comprises a minor
component which is polyether-block-co-polyamide. Final Act. 7. The
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Examiner finds that Maziers '4 7 5 discloses using rotomolding to prepare an
article from a polyolefin composition essentially consisting of (a) from 99%
by weight to 99 .999% by weight of a polyolefin, (b) from 0.001 % by weight
of a densification aid such as a polyether-block co-polyamide polymer, and
(c) optionally from 0.025% by weight to 0.500% by weight of one or more
UV stabilizers (Maziers '475 claims 1 and 2). Id. The Examiner finds that
one of ordinary skill in the art would have been motivated, based on
Maziers '475 (i-fi-f 10-11), to include a polyether-block co-polyamide
polymer as a densification aid in O'Brien's multilayer article to improve
processability of a polyolefin in rotomolding by improving the sintering and
densification behavior. Final Act. 8.
Appellant argues that the Examiner has not established that one
skilled in the art would reasonably expect Maziers '475's polyether-block
co-polyamide to have the same effect when used in O'Brien's multilayer
article. App. Br. 14. We are not persuaded by Appellant's argument
because "[ o ]nly a reasonable expectation of success, not absolute
predictability, is necessary for a conclusion of obviousness." In re Langi,
7 59 F .2d 887, 897 (Fed. Cir.19 85). The Appellant has not explained why the
Examiner's finding that one of ordinary skill in the art would have been
motivated, based on Maziers '475, to include a polyether-block co-
polyamide polymer as a processing aid in O'Brien's composition "to have
improved processability [by] improving the sintering and densification
process in rotomoulding applications" (Final Act. 7-8) is unreasonable or
not supported by a preponderance of the evidence on this record.
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Application 13/397,068
DECISION
For the above reasons, we affirm the rejections of claims 8-11, 15, 18,
23, and 24.
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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