Ex Parte Maziers et al

Patent Trial and Appeal Board

Mar 23, 2017

13877240 (P.T.A.B. Mar. 23, 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.
13/877,240 06/11/2013 Eric Maziers PRONOVEM.007001 9319
100183 7590 03/27/2017
Adolph Locklar
Michael Locklar
4615 S.W. Freeway
Suite 630
Houston, TX 77027
EXAMINER
RODD, CHRISTOPHER M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
docket@ adolphlocklar.com
docket@ al-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC MAZIERS and THIERRY COUPIN1
Appeal 2015-006116
Application 13/877,240
Technology Center 1700
Before KAREN M. HASTINGS, WESLEY B. DERRICK, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—14. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm-in-part.
BACKGROUND
Appellants’ claimed invention relates to “a process for the
manufacture of articles made of polylactide (PLA) by rotational molding and
to the articles produced by this process.” Spec. 1:4—7.
1 According to the Appeal Brief, the real party in interest is Total Research
& Technology Feluy. App. Br. 5.
Appeal 2015-006116
Application 13/877,240
Claim 1 is reproduced below from the Claims Appendix (App. Br.
22):
1. A process for the manufacture of a polylactide-
based article by rotational molding, comprising:
a) placing polylactide in a mold,
b) subjecting the polylactide to a rotational molding
comprising heating to a temperature of between 150°C
and 230°C to obtain the article,
c) cooling the mold or the article obtained,
d) removing the article from the mold,
characterized in that the optical purity of the polylactide
is greater than 92% by weight.
The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 1—5 and 8—14 under 35 U.S.C. § 103 as unpatentable over
Narita2 in view of Peacock;3
2. Claim 7 under 35 U.S.C. § 103 as unpatentable over Narita,
Peacock, and Callari;4 and
3. Claims 6, 13, and 14 under 35 U.S.C. § 103 as unpatentable over
Narita, Peacock and Drobny.5
2 Narita et al., US 2009/0246544 Al, published Oct. 1, 2009.
3 Andrew J. Peacock & Allison Calhoun, Polymer Chemistry, Properties and
Applications 243—251 (2006).
4 James J. Callari, Micropellets: Little Things Mean a Lot, Plastics World
20-22, Nov. 1994.
5 Jiri George Drobny, Handbook of Thermoplastic Elastomers 108—115
(2007).
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OPINION
Claim 1
The Examiner finds that Narita discloses molding processes
comprising polylactic acid. Final Act. 3 (citing Narita 1116). Specifically,
the Examiner finds that Narita discloses poly-L-lactic acid (PLLA-1) with an
optical purity of 98.1 % and melting point of 162.9-C, and poly-D-lactic acid
(PDLA-1) with an optical purity of 100% and melting point of 178.4-C. Id.\
see also Ans. 18 (noting that there are only two optical isomers of lactic
acid, L and D, and stating that Narita’s optical purity values are derived from
the amount of the L or D form in the PLA). The Examiner concludes that
Narita discloses polylactide having an optical purity greater than 92%. Id.
The Examiner further finds that Narita discloses that compositions of
PLA can be molded by rotational molding, but notes that Narita does not
disclose specific process steps or an example where PLAs are rotationally
molded. Id. at 3^4. The Examiner, however, finds that Peacock teaches
rotational molding of polymers using steps similar to those recited in a)
through d) of claim 1. Id. at 4—5 (citing Peacock, Section 15.2).
The Examiner determines that it would have been obvious to a person
of ordinary skill in the art to rotationally mold Narita’s PLAs using the
rotational molding steps taught by Peacock because “Peacock explains that
rotational molding has a distinct advantage over injection molding and blow
molding in that i[t] can produce v[e]ry large parts with thin walls and
complex designs with no weld lines, scars from ejector pins or blemishes
and minimal molecular orientation. (Peacock, Section 15.1).” Id. at 5. The
Examiner further determines that a person of ordinary skill in the art would
have had a reasonable expectation of success using Peacock’s rotational
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Application 13/877,240
molding steps with Narita’s PLAs because Narita teaches rotational molding
ofPLA. Id.
The Examiner acknowledges that neither Narita nor Peacock teaches
subjecting the polylactide to a temperature between 150-C to 230-C as
required in step b) of claim 1. The Examiner finds, however, that Peacock
discloses that the polymer subjected to rotational molding “must be melted
so it can fuse to form a continuous layer coating the interior of the mold.”
Id. at 6 (citing Peacock, 245). The Examiner thus concludes that it would
have been obvious to a person of ordinary skill in the art to subject Narita’s
PLAs to their melting temperatures during rotational molding, which fall
within the temperature range recited in claim 1. Id. (noting that Narita
discloses PLLA-1 has a melting point of-163-C, and a blend of PLLA and
PDLA has a melting point of ~ 214-C); Ans. 16.
Appellants argue that “neither Narita nor Peacock teach, require or
imply that rotational molding must be performed at the melting temperature
of the polymer.” App. Br. 9. Appellants note that Peacock states only that
“the polymer granules completely melt and fuse,” and assert that “[t]he fact
that a polymer is melted does not teach that the polymer is at the melting
temperature.” Id. at 11. Appellants further argue that their own
Specification states that the heating temperature is preferably above that of
the melting temperature. Id. at 9 (citing Spec. 9:27—36).
We are not persuaded by Appellants’ arguments. In discussing the
heating step of rotational molding, Peacock states that “[a]s heating and
rotation continues the polymer granules completely melt and fuse to form a
continuous layer coating in the interior of the mold.” Peacock, 245.
Therefore, although Peacock does not require carrying out rotational
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Application 13/877,240
molding at the melting temperature, we agree with the Examiner that a
person of ordinary skill in the art reviewing Peacock would understand that
the melting point of a polymer is at least one temperature that can be used
for the heating step of rotational molding. Furthermore, although the
Specification states that the heating temperature is “generally” greater than
the melting point of the PLA being molded, no such limitation is present in
the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[F]imitations are not to be read into the claims from the specification.”).
Appellants also argue that the Examiner failed to establish Narita
teaches optical purity of polylactide greater than 92% by weight, as required
in claim 1. App. Br. 11. Specifically, Appellants contend that the Examiner
improperly, and without any basis, “equates the amount of D form in the F-
lactate and the E-form in the D-lactate as the optical purity.” Id. Appellants
assert that although optical density is proportional to F-lactate or D-lactate
present in a sample, the Specification discloses the proper analytical method
for obtaining optical density. Id. (citing Spec. 13:24—14:17).
Appellants’ arguments are unavailing. Appellants direct us to pages
13 and 14 of the Specification which set forth a method for determining the
optical purity of PEA. App. Br. 11; Spec. 13:24—14:17. The cited portion of
the Specification begins by equating optical purity and isomeric purity.
Spec. 13:26—27 (“[T]he determination of the optical or isomeric purity of the
PEA is carried out by the enzymatic method.”); see also id. at 3:33—34
(stating that “PLLA or PDLA respectively has an optical purity, also known
as isomeric purity”). Furthermore, as part of this method, the Specification
states that “[t]he increase in the optical density at 340 nm is proportional to
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Application 13/877,240
the amount of L-lactate or D-lactate present in the sample.” Id. at 13:36—38.
We, therefore, agree with the Examiner’s conclusion that:
Appellants’] method involves measuring the increase in
optical density and equating the proportionality of the response
to the amount of L and D in the original sample. . . . These are
all in line with the Examiner’s explanation as to how a person of
ordinary skill in the art would measure the amount of L or D
isomers in the Narita’s polylactides.
Ans. 20. As a result, the Examiner reasonably concluded that Narita
discloses the claim 1 requirement of an optical purity of polylactide greater
than 92% “based on the proportion of the L or D monomer in the PLA” of
Narita. See id. at 18 (“Narita discloses the amount of the L or D form in the
PLA used and this L or D monomer is what gives the optical purity.”).
In view of the foregoing, we sustain the Examiner’s rejection of claim
1 as obvious in view of the combined teachings of Narita and Peacock.
Appellants did not separately argue the patentability of claims 6, 8, or 10—14
over Narita and Peacock, and therefore these claims stand or fall with
independent claim 1. We, therefore, sustain the Examiner’s rejection of
claims 6, 8, and 10—14 as well.
Claim 2
Claim 2 depends from claim 1 and further requires “wherein the
cooling of the mold or of the article obtained in stage (c) is carried out in just
one stage down to a temperature of between ambient temperature and a
temperature of less than 100-C.” The Examiner notes that Narita does not
disclose the cooling stage of rotational molding, and Peacock does not
specifically teach cooling in one stage down to a temperature between
ambient and less than 100-C. Final Act. 7. The Examiner, however, finds
that it would have been obvious to a person of ordinary skill in the art to
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cool the mold to ambient temperature in one step because it would “allow
the mold to be handled without fear of the operator burning themselves
while removing the part from the mold.” Id.', Ans. 25—26 (noting that “[t]he
Office’s rejection is based on known experiences, or common sense, based
on the fact that one would not want to touch hot things in order to avoid
burning oneself’). The Examiner further finds that “the desire to not want to
bum ones hands is indisputably within the common knowledge of those
skilled in the art.” Ans. 26.
Alternatively, the Examiner finds that the process step of claim 2 is
inherently performed by shutting off the oven used in step b) and allowing
the mold to cool, which would eventually bring the temperature down to the
ambient temperature without any user intervention and would occur in one
step. Final Act. 7—8; Ans. 29—31. The Examiner states that:
The reference already teaches cooling. The logic is that when
switching off the heater, the object must cool down to ambient
temperature. Appellant has claimed ambient temperature and not
room temperature. Thus, whatever the temperature of the
environment is, that is ambient temperature.... There is no time
requirement on the cooling step in Claim 2.
Ans. 30.
Appellants argue that “[t]he Examiner’s concern of operator bums is
without merit and without basis in the art.” App. Br. 12. Appellants
contend that the Examiner cites no authority regarding a concern for a
rotational molding operator being burned or for a human being removing the
part from the mold. Id.; see also id. at 15 (noting that the claims do not
require a human to handle the molded material). Appellants further contend
that the Examiner is improperly attempting to establish the teaching of a
claim limitation by relying on common sense instead of documentary
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evidence. Id. at 12—13 (citing K/S HIMPP v. Hear-Wear Techs., LLC., 751
F.3d 1362 (Fed. Cir. 2014)).
Appellants also argue that the Examiner ignores the requirements of
inherency and fails to present documentary evidence supporting the
rejection. Id. at 16. Appellants assert that “[o]ne of ordinary skill in the art
reading Peacock would have no reason to choose a single step cooling
process or an eighteen step cooling process, much less to a temperature of
between ambient temperature and a temperature of less than 100°C.” Id.
We are not persuaded by Appellants’ arguments. “Patent Office
appellate tribunals, where it is found necessary, may take notice of facts
beyond the record which ... are capable of such instant and unquestionable
demonstration as to defy dispute.” In reAhlert, 424 F.2d 1088, 1091
(CCPA 1970). We agree with the Examiner that “the desire to not want to
bum ones hands is indisputably within the common knowledge of those
skilled in the art.” Ans. 26. We, therefore, find that the Examiner did not
err reversibly by relying on common sense without documentary support.
We also agree with the Examiner’s determination that a mold can be
brought to ambient temperature by simply shutting off the oven used to heat
the mold, and taking no further action. The Examiner correctly finds that
claim 2 contains no time requirement. Furthermore, Appellants do not
contest the Examiner’s determination that “whatever the temperature of the
environment is, that is ambient temperature.” Id. at 30. According to
Appellants’ own Specification, “[i]n order to cool the mold externally, use
may be made of air at ambient temperature.” Spec. 10:10—11. Therefore,
we find, as did the Examiner, that allowing a mold to sit in air at ambient
temperature would eventually bring its temperature to between ambient
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temperature and a temperature of less than 100 °C, and would do so in a
single step as required by claim 2.
Claim 3
Claim 3 depends from claim 1, and further requires that the cooling
stage c) comprises “i) cooling down to a temperature of between 100°C and
150°C, ii) maintaining at this temperature for 1 to 60 minutes, iii) cooling
down to a temperature of between ambient temperature and a temperature of
less than 100 °C.”
The Examiner finds that Narita discloses that rotationally molded
compositions may be subjected to heat treatment after molding. Final Act. 8
(citing Narita 1105). The Examiner directs us to certain examples in Narita
which were subjected to a heat treatment of 130-C for 10 minutes. Id.
(citing Narita Table 5.2). The Examiner concludes that the heat treatment
disclosed in Narita satisfies the “cooling down to a temperature of between
100-C and 150-C” and “maintaining [at] this temperature for 1 to 60
minutes” limitations of claim 3. Ans. 32. The Examiner further states that
“[t]he heat treatment of Narita is at a temperature lower than the molding
temperature and, thus, it would have been obvious to stop at the heat
treatment temperature as the mold was cooling in order to perform the heat
treatment without heating the mold back up.” Id. at 33.
Appellants contest the Examiner’s findings as unsupported and argue
that “subjection to heat does not teach a ‘maintaining’ step that occurs after a
cooling step” as required in claim 3. App. Br. 17. Appellants also argue that
the Examiner has failed to identify which portion of the cited reference
teaches the first “cooling” step of claim 3. Id.
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We agree with Appellants. To support an obviousness rejection, all
claim limitations must be taught or suggested by the prior art applied. See In
re Royka, 490 F.2d 981, 984—85 (CCPA 1974). The Examiner bears the
initial burden of factually supporting any prima facie conclusion of
obviousness. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967).
The Examples in Narita subject to the heat treatment of 130-C for 10
minutes were first subjected to press molding at a temperature of at least
200-C for 8 minutes, followed by a cooling time of 5 minutes. Narita ]Hf
296—316. Narita does not disclose the temperature of the samples after the 5
minute cooling period. Therefore, the Examiner offers no support for the
determination that Narita discloses a first step of cooling down to a
temperature between 100 and 150-C.
Furthermore, in the context of claim construction, “[t]he Patent and
Trademark Office (“PTO”) determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. A WII
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citing In re Am. Acad. ofSci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Narita states that, after
the cooling period, the press molded pieces were “subjected to heat
treatment consisting of. . . 10 minutes in an oven at 130-C.” Id. at || 301,
314. Thus, affirming the Examiner’s rejection would require us to construe
“cooling down” to a certain temperature and “maintaining” that temperature
to include “heat treatment” after a cooling step. Such a construction,
although broad, is not reasonable. In view of Narita’s disclosure of a 5
minute cooling time followed by placing the samples in an oven for “heat
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treatment,” we disagree with Examiner’s finding that “it would have been
obvious to stop at the heat treatment temperature as the mold was cooling in
order to perform the heat treatment without heating the mold back up.” Ans.
33 (emphasis added).
As a result, we find the Examiner has failed to demonstrate that all of
the limitations of claim 3 are taught or suggested by the prior art references.
We, therefore, reverse the Examiner’s rejection. Because claims 4 and 5
depend from claim 3, we also reverse the Examiner’s rejection of these
claims.
Claim 7
Claim 7 depends from claim 1 and further requires that the
“polylactide is in the form of microgranule.”
The Examiner finds that Callari discloses the benefits of using
micropellets for rotational molding because they “flow better and melt faster
and more uniformly.” Final Act. 12 (citing Callari, 21). The Examiner
determines that it would have been obvious to a person of ordinary skill in
the art to choose micropellets as taught by Callari for the rotational molding
of PLA as taught by Narita to take advantage of the aforementioned benefits
of micropellets. Id. The Examiner further determines that micropellets “are
microgranules because they are granules of polymer that are on the micron
(or micro) size scale.” Id. at 12—13.
In addition to relying on the previous arguments addressing the
deficiencies of Narita and Peacock, Appellants argue that “the Examiner has
not established the equivalency of a microgranule and a micropellet.” App.
Br. 20.
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We are not persuaded by Appellants’ argument. Appellants have not
directed us to any specific definition of “microgranule” in the Specification
that would exclude micropellets. Callari describes its micropellets as “a tiny
particle of material about 0.020-0.050 inches in diameter.” Callari, 2.
Appellants offer a similar definition of “microgranules” in their
Specification. Spec. 4:29—5:8. Accordingly, we find the Examiner
reasonably concluded that micropellets are microgranules. We, therefore,
sustain the Examiner’s rejection of claim 7.
Claim 9
Claim 9 depends from claim 1, and further requires that “the
polylactide is PLLA or PDLA.”
The Examiner determines that claim 9 does not exclude other
polylactides placed in the mold, and therefore the PLLA and PLDA blends
of Narita read on this claim. Final Act. 10. The Examiner additionally finds
that Narita discloses comparative examples using PLLA-1 on its own, and
not a mixture of PLLA and PDLA, stating that “[wjhile this is a non­
preferred embodiment, molding of PLLA on its own is still taught by
Narita.” Id. at 10. In view of this disclosure, the Examiner concludes that it
would have been obvious to a person of ordinary skill in the art to
rotationally mold PLLA individually “because PLLA on its own is a
commercially viable polymer and Narita uses it as a comparison to the
PLLA/PDLA mixtures.” Id.
Appellants argue that Narita does not teach using PLLA or PDLA as
“the polylactide,” but instead requires that the polylactide is a mixture of
PLLA and PDLA. App. Br. 18 (noting that “the only composition that
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Narita teaches can be rotomolded is one that includes both PLLA and PLDA
with an inorganic filler”). Appellants further argue that Narita does not
teach or suggest that PLLA or PLDA, individually, are capable of being
rotomolded. Id. at 19-20. According to Appellants, “[t]he comparative
examples cited in the Examiner that include either PLLA or PLDA do not
include rotomolding. The examples in Narita that do include rotomolding
require both PLLA and PLDA.” Id. at 20.
We are not persuaded by Appellants’ arguments.
It is impermissible within the framework of section 103 to pick
and choose from any one reference only so much of it as will
support a given position, to the exclusion of other parts necessary
to the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art.
See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965). There is no dispute
that Narita teaches rotational molding of PLAs. There is also no dispute that
Narita teaches comparative examples comprising PLLA alone, and not a
mixture of PLLA/PDLA. In view of this, the Examiner reasonably
concluded that Narita at least suggests to a person of ordinary skill in the art
rotational molding of PLLA alone. Moreover, Appellants offer no evidence
that PLLA or PLDA, individually, cannot be rotationally molded. See, e.g.,
In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (holding that after the
Examiner has established a prima facie case of obviousness, the burden
shifts to Appellants to come forward with arguments and/or evidence to
rebut that prima facie case).
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims
1, 2, and 6—14, and reverse the rejection of claims 3, 4, and 5.
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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-IN-PART
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