Ex Parte Maziers

Patent Trial and Appeal Board

Dec 18, 2018

14594280 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/594,280 01/12/2015 Eric Maziers
25264 7590 12/20/2018
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-924CON 1027
EXAMINER
LIU,XUEH
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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
Appeal2018-001965
Application 14/594,280
Technology Center 1700
Before JEFFREY T. SMITH, MARK NAGUMO, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 8-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In our Opinion, we refer to the Specification filed January 12, 2015
("Spec."); the Final Action dated October 7, 2016 ("Final Act."); the Appeal
Brief filed May 30, 2017 ("App. Br."); the Examiner's Answer dated
October 19, 2017 ("Ans."); and the Reply Brief filed December 15, 2017
("Reply Br.").
2 Appellant is the Applicant, identified as the real party in interest. App. Br.
5.
Appeal2018-001965
Application 14/594,280
The claims are directed to slush molded or rotomolded articles
prepared from a composition comprising a polyether-block copolyamide as a
densification aid additive. Claim 8, reproduced below from the Claims
Appendix of the Appeal Brief, illustrates the claimed subject matter:
8. An article prepared from a composition comprising:
a polyolefin; and
from 0.001 % by weight to 1 % by weight of a
densification aid comprising a polyether-block copolyamide,
wherein the article is a slush molded article or a rotomolded
article.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Alex et al. ("Alex")
Zimmerman
Lelli et al. ("Lelli")
Chaudhary et al.
("Chaudhary")
us 6,051,649
US 2002/0077430 Al
US 6,656,981 B2
WO 01/12714 Al
REJECTIONS
Apr. 18, 2000
June 20, 2002
Dec. 2, 2003
Feb.22,2001
The Examiner maintains and Appellant seeks review of the following
rejections: (1) claims 8-10 and 13-15 under 35 U.S.C. § I02(b) over Lelli;
(2) claim 11 under 35 U.S.C. § 103 over Lelli in view of Chaundhary; (3)
claim 12 under 35 U.S.C. § 103 over Lelli in view of Zimmerman; ( 4) claim
16 under 35 U.S.C. § 103 over Lelli in view of Alex; and (5) claims 17-20
under 35 U.S.C. § 103 over Lelli in view of Chaundhary. Final Act. 2-7;
App. Br. 10-19.
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Application 14/594,280
OPINION
Rejection of claims 8-10 and 13-15 as anticipated by Lelli
Appellant argues claims 8-10 and 13-15 as a group. App. Br. 10-14.
We select claim 8 as representative of the group. Claims 9, 10, and 13-15
will stand or fall with claim 8. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that claim 8 is a product-by-process claim,
thus .that the patentability of the claim depends on the product, not on the
method of production of the product. Final Act. 2. The Examiner finds that
the manufacturing process steps of rotomolding or slush molding do not
impart distinctive structural characteristics to the final product that results in
an unobvious difference between the claimed product and the prior art
product. Id. at 3.
Appellant argues that Lelli discloses films and a method for reducing
dust deposition on films. App. Br. 11. Appellant argues that the film
disclosed by Lelli is made by extrusion, while the claimed invention is
produced by rotomolding. Id. Appellant argues that extrusion is used to
produce articles having a constant cross section profile, while rotational
molding is used to produce hollow bodies. 3 Id. Appellant contends that
extrusion and rotomolding cannot be used to produce the same article. Id.
"If a product in a product-by-process claims is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the
prior product was rnade by a different process." In re Thorpe, 777 F.2d 695,
3 Appellant relies on D.V. Rosato & Marlene Rosato, Injection Molding
Handbook 1277 (3rd ed. 2000), which was attached to Applicant's July 5,
2016 Response to Non-final Office Action.
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Appeal2018-001965
Application 14/594,280
697 (Fed. Cir. 1985). "In determining validity of a product-by-process
claim, the focus is on the product and not the process of making it" Amgen
Inc. v. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed. Cir. 2009). "That
is because of the ... long-standing rule that an old product is not patentable
even if it is made by a new process." ld. at 1370. There is, however, an
exception to the assumption that the process by which the product is made is
iITelevant. Greenliant S)'s., Inc. v. ;{icor LLC, 692 F.3d 1261, 1268 (Fed.
Cir. 2012). "If the process by which a product is made imparts ·stn1ctural
and functional differences' distinguishing the claimed product from the prior
art, then those differences 'are relevant as evidence ofno anticipation."'
Amgen, 580 F .3d at 1370; see also SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1319 (Fed.Cir.2006) C'lf those product-by-process
claims produced a different product than that disclosed by the [prior art],
there would be an argument that the [prior art] did not anticipate."); In re
Garnero, 412 F.2d 276, 279 (CCPA 1969).
The only structural difference identified by Appellant in the instant
appeal is that rotomo1ding produces a hollow article, while the extrusion
process allegedly produces an article with a constant cross section profile.
See App. Br. 11. However, claim 8 is not limited to rotomolding; it includes
the option of the process of slush molding. Id. at 19 (Claims App'x). In the
Specification, Applicant describes the process of rotomolding in some detail,
and states that it allows the production of hollow articles. See Spec. 1, 11.
16-26. Slush molding, however, is only described as "closely related to
rotomolding." Id. 1, 1. 28.
Furthermore, the claimed subject matter is directed to an article
prepared from a composition. The claimed invention does not specify a
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Application 14/594,280
particular article that is formed. Thus, contrary to Appellant's argument, the
claimed invention is not limited to the formation of hollow articles.
Moreover, the Injection Molding Handbook, provided by Appellant,
includes Table 16-5 that indicates several polymers, including polyethylene
and polypropylene, are suitable for both injection molding and rotational
molding. Table 16-7 indicates that injection molding and rotational casting
(molding) are both suitable for forming the same article specifically vertical
walls. In addition, the Examiner finds that a slush molded article can be
used to make skin layers, therefore, a slush molded article is not inherently
hollow. Final Act. 8. Appellant provides no substantive argument of how
the properties of an article made by slush molding is distinct from those of
an article made by Lelli' s process.
fails to show any structural or functional differences between an
article made by the process taught in Lelli and an article made by slush
molding.
In addition, the Examiner finds, and Appellant does not dispute, that
Lelli discloses a polyolefin and 0.001 % by weight to 1 % by weight of a
densification aid comprising a polyether block copolyamide, which is the
chemical composition making up the article in claim 8. "From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing." In re Papesch, 315 F.2d 381,
391 (CCPA 1963). The Examiner has shown/come forward with a
reasonable basis to conclude that a generic article made from the chemical
composition and utilizing either the claimed processes or Lelli' s film
extrusion process would have the same properties and characteristics, and
are not patentably distinct. "Where a product-by-process claim is rejected
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Application 14/594,280
over a prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product." In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983);
see also In re Best, 562 F.2d 1252, 1256 (CCPA 1977) ("Where, as here, the
claimed and prior art products are identical or substantially identical, ... the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product."). Appellants fail to provide the necessary evidence.
Appellant does not persuade us that the Examiner reversibly erred in
finding Lelli anticipates claim 8. We sustain the rejection of claim 8, and,
for the same reasons, the rejection of claims 9, 10, and 13-15.
Rejection of claim 11 as obvious over Lelli in view of Chaundhary
Claim 11 depends from claim 8 and requires "wherein the
composition further comprises form 0.025% by weight to 0.500% by weight
of one or more hindered amine light stabilizers." App. Br. 20 (Claims
App'x).
The Examiner finds that Lelli discloses the composition of claim 8
which further comprises one or more hindered amine light stabilizers. Final
Act. 3 (citing Lelli col. 8, 1. 32---col. 9, 1. 21; col. 12, 11. 33-39; col. 14, 1. 45).
The Examiner acknowledges that Lelli does not disclose 0.025% by weight
to 0.500% by weight of hindered amine light stabilizers, but finds that
Chaundhary teaches UV stabilizer is introduced into a mold cavity in an
amount of 0.2-20 weight percent based on the amount of olefin polymer. Id.
at 3--4 (citing Chaundhary 16, 11. 30-34). The Examiner determines that it
would have been obvious to one of ordinary skill in the art the time of the
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Application 14/594,280
invention to modify the amount of hindered amine light stabilizers in Lelli
"in order to optimize the property of the molded article." Id. at 4.
Appellant argues that Lelli discloses film and Chaundhary does not
teach addition of stabilizers to film compositions. App. Br. 15. Appellant
contends that the skilled artisan would have no motivation to modify the
film composition of Lelli with the stabilizers of Chaundhary. Id. Appellant
also argues that modification of Lelli with Chaundhary would not result in a
slush molded or rotomolded article. Id.
Appellant's argument fails to address the rejection. The Examiner
finds that Lelli, not Chaundhary, teaches the use of light stabilizers in the
molding process. See Final Act. 3; Ans. 9. Lelli indicates that a great many
additives "may be already present in the film," or that they may be added.
Lelli col. 4, 11. 35-37. The clear implication is that the amounts are not
critical, and that any conventional amount (such as that disclosed by
Chaundhary) is useful. Moreover, "[t]he normal desire of artisans to
irnprove upon what is already generally known can provide the motivation to
optimize variab1es such as the percentage of a known po1yrner for use in a
known device." In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017);
see also KSR int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton.").
In the Reply Brief, Appellant contends that the Examiner does not
identify which "property" is being optimized or how the range of
Chaundhary would be adjusted to the claimed range to optimize the
property. Reply Br. 3. Although this is an untimely new argument which
could have been but was not presented in the Appeal Brief (see Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)), review of the
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Answer makes it clear that the property is light stabilization. See Ans. 9.
We addressed employing a conventional amount of light stabilizer above.
We sustain the rejection of claim 11 as obvious over Lelli in view of
Chaundhary.
Rejection of claim 12 as obvious over Lelli in view of Zimmerman
Claim 12 depends from claim 8 and further requires "wherein the
densification aid comprises the polyether-block copolyamide as a major
component and further comprises a minor component selected from a group
consisting of thermoplastic polyurethane, polyetherester, polyethylene
glycol, and fluoropolymer." App. Br. 20 (Claims App'x).
The Examiner finds that Zimmerman teaches a polymer composition
having an effective amount of from about 1 % to 35% by weight of the
composition of a polyetheresteramide, the composition also including a
minor amount of a polyethylene glycol. Final Act. 4 ( citing Zimmerman
Abstract). The Examiner determines that it would have been obvious to one
of ordinary skill in the art at the time of the invention to have modified Lelli
with Zimmerman because Zimmerman teaches that including polyethylene
glycol in the composition improves chemical resistance of the composition
and permits use of lower levels of polyetheresteramide. Id. ( citing
Zimmerman ,r 22).
Appellant argues that Zimmerman does not teach use of a minor
component (polyethylene glycol) with a polyolefin. App. Br. 15, 16.
Appellant contends that Zimmerman instead teaches combination of
polyethylene glycol with a methyl methacrylate copolymer. Id. at 16.
Appellant argues that one of ordinary skill in the art would not have been
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Application 14/594,280
motivated to combine polyethylene glycol with a polyolefin based on
Zimmerman's disclosure. Id.
The Examiner responds that Zimmerman's disclosure of using a
minor component of polyethylene glycol applies to any polymer
composition, not just a polyetheresteramide. Ans. 9.
The Examiner does not direct our attention to any disclosure that
supports this conclusion. Zimmerman is concerned with a methyl
methacrylate copolymer. Zimmerman, abstract. The Examiner gives no
basis for equating polyolefins with methyl methacrylate copolymers. The
Examiner's explanation conveys no more than that a skilled artisan
presented with Lelli and Zimmerman could have combined them. This is
inadequate to imply a motivation to pick out those two references and
combine them to arrive at the claimed invention. See PersonalWeb Techs.,
LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (citing Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness
concerns whether a skilled artisan not only could have made but would
have been motivated to make the combinations or modifications of prior art
to arrive at the claimed invention.")). As a result, we are left, at best, with
only hindsight bias that KSR warns against See KSR, 550 U.S. at 421.
Because "we cannot allow hindsight bias to be the thread that stitches
together prior aii patches into something that is the claimed invention,"
(lvfetalcrafi of lvfayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir.
2017), we do not sustain the rejection of clairn 12 as obvious over Lelli in
view of Zhnmerman.
Rejection of claim 16 as obvious over Lelli in view of Alex
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Application 14/594,280
Claim 16 depends from claim 8 and further recites "wherein the
polyether-block copolyamide has a polyether content within ranging from 10
to 70 weight percent." App. Br. 21 (Claims App'x). We interpret this
limitation as requiring that polyether makes up from 10 to 70 weight percent
of the polyether-block copolyamide.
The Examiner acknowledges that Lelli does not teach that the
polyether-block copolyamide has a polyether content as claimed. Final Act.
5. The Examiner finds that Alex teaches a composition comprising a
polyolefin and a polymer comprising polyamide blocks and polyether
blocks. Id. (citing Alex Abstract). The polyamide and polyether in the
polymer are in the ratio (polyamide/polyether) of 50/50 to 80/20. Alex col.
3, 11. 41--49. The Examiner concludes that "it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify Lelli []
with Alex [] since Alex [] teaches that poly-ether-block copolyamides
having a 20-50 weight percent polyether content is advantageous." Final
Act. 5.
Appellant contends that the Examiner fails to provide the requisite
motivation to combine the disclosures of Lelli and Alex, arguing that
describing something as "advantageous" provides neither motivation to
combine references nor a reasonable expectation of success in doing so.
App. Br. 17 ( citing DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006).
Alex uses "advantageously" ten times, twice in relation to polyamide
being the major constituent of the polymer containing polyamide blocks and
polyether blocks. Alex col. 2, 11. 27 and 48; col. 3, 11. 3, 36, 41, 49; col. 4, 11.
4, 7, 42, 58. The only improvement described in Alex, however, is
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improved tear strength in films comprising polyamide, polyolefin, a
functionalized polyolefin, that also contain a polymer comprising polyamide
blocks and polyether blocks, in comparison to such films but having no
polymer comprising polyamide blocks and polyether blocks. Id. col. 2, 11. 5-
9. As with Zimmerman, the Examiner has not directed our attention to
evidence that support the broad teaching that the block copolymer taught by
Alex would be added usefully to the polymer blends taught by Lelli.
We do not sustain the rejection of claim 16 as obvious over Lelli in
view of Alex.
Rejection of claims 17-20 as obvious over Lelli in view of
Chaundhary
Claims 17 and 18 are independent. App. Br. 21-22 (Claims App'x).
Claims 19 and 2 0 depend from claim 1 7. Id. at 23. Claim 1 7 recites the
preamble: "[a] slush molded or rotomolded article prepared from a
composition comprising." App. Br. 21. Claim 18's preamble is similar, but
narrows the claim: "[a] slush molded or rotomolded article prepared from a
composition consisting essentially of." Id. at 22.
The Examiner rejects claims 17-20 as obvious over Lelli in view of
Chaundhary. Final Act. 5-7. The Examiner considers claims 17-20 to be
product-by-process claims.
To support patentability of claims 17-20 Appellant relies, in part, on
the arguments made to overcome the rejection of claim 8 over Lelli in view
of Chaundhary. App. Br. 18. For the reasons discussed above, we do not
find those arguments persuasive of reversible error by the Examiner.
Appellant also argues that terminology in the preamble limits the
structure of the claimed invention and must be treated as a claim limitation.
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Application 14/594,280
Id. This argument raises a different issue than considered above with regard
to claim 8.
"The effect preamble language should be given can be resolved only
on review of the entirety of the patent to gain an understanding of what the
inventors actually invented and intended to encompass by the claim."
Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251,
1257 (Fed. Cir. 1989). A preamble generally limits the invention if it recites
essential structure or is "necessary to give life, meaning, and vitality to the
claims." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F3d 1298, 1305
(Fed. Cir. 1999). In contrast, 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, the preamble is of no significance
to claim construction. Id.
Here, the preambles do not describe purpose or intended use of the
claimed articles. Instead, the preambles can be said to indicate a structural
component (shape) of the articles. Appellant has argued and provided some
evidence that a rotomolded article is hollow. See App. Br. 11. As discussed
above, the claimed invention does not specify a particular article that is
formed, and we have concluded that the claimed invention is not limited to
the formation of hollow articles as argued by Appellant.
We have already found unpersuasive (supra at 5) Appellant's rebuttal
to the Examiner's determination that a slush molded article can be used to
make skin layers which are not inherently hollow. See Final Act. 8; Br. 12.
Consequently, the combination of Lelli and Chaundhary renders slush
molded articles comprising the compositions obvious.
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We sustain the rejection of claims 17-20 as obvious over Lelli in view
of Chaundhary.
DECISION
The rejections of claims 8-10 and 13-15 as anticipated and of claims
11 and 17-20 as obvious are affirmed. The rejections of claims 12 and 16 as
obvious are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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