Ex Parte McLeod et al

Patent Trial and Appeal Board

Sep 25, 2013

11956806 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/956,806 12/14/2007 Michael A. McLeod COS-1062 8162
25264 7590 09/25/2013
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
09/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL A. MCLEOD, JOHN ASHBAUGH, and
MICHAEL MUSGRAVE
____________

Appeal 2012-007354
Application 11/956,806
Technology Center 1700
____________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007354
Application 11/956,806

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-3 and 16-26.2 We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM-IN-PART.
“The invention relates generally to materials prepared from polypropylene,
and more particularly, to films and similar materials prepared from polypropylene
blends, such as blends of propylene homopolymers and propylene impact
copolymer.” (Spec.3 [0001].) Claim 14 is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A biaxially oriented film comprising a melt blended
admixture of a heterophasic propylene copolymer, an isotactic
propylene homopolymer and a third polymer selected from medium
density polyethylene and a metallocene formed random copolymer of
ethylene and propylene, wherein the heterophasic propylene
copolymer has an ethylene content of from about 5% to about 25% by
weight of copolymer and is present in an amount of greater than 40%
to about 75% by weight of polymer blend and has a MFR of from
about 4 to about 25 g/10 minutes.

The Examiner maintains the following grounds of rejection under 35 U.S.C.
§103(a) (see generally, Ans.5 4-17):
1. claims 1 and 3 are rejected as unpatentable over Kong 137 (US
2003/0207137 A1, published Nov. 6, 2003) in view of Sheldon (US 6,881,793 B2,

1 Final Office Action mailed Jun. 21, 2011.
2 Appeal Brief filed Nov. 16, 2011 (“App. Br.”).
3 Specification filed Dec. 14, 2007.
4 Independent claim 16 likewise recites a heterophasic propylene copolymer having
a specific ethylene content and which is present in a specified amount in the
polymer blend.
5 Answer mailed Jan. 31, 2012.
Appeal 2012-007354
Application 11/956,806

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issued Apr. 19, 2005) and Aguirre (US 2006/0009586 A1, published Jan. 12,
2006);
2. claim 2 is rejected as unpatentable over Kong 137, Sheldon, and
Aguirre, further in view of Niedersuss (WO/2007/076918 A1, published July 12,
2007);
3. claims 16-20 are rejected as unpatentable over Kong 137 in view of
Sheldon;
4. claims 16-19 are rejected as unpatentable over Kong 520 (US
2006/0024520 A1, published Feb. 2, 2006) in view of Kong 137 and Sheldon; and
5. claims 21-26 are rejected as unpatentable over Sheldon in view of
Aguirre.
Appellants do not request our review of the above-listed fifth ground of
rejection. (See Br. 11; Reply Br.6 8.) Accordingly, we summarily sustain the
rejection of claims 21-26 under 35 U.S.C. §103(a) as unpatentable over Sheldon in
view of Aguirre.
The Examiner finds Kong 137 alone (see above-listed grounds of rejection
1-3), or in combination with Kong 520 (see above-listed ground of rejection 4),
discloses a film comprising a melt blended admixture of a heterophasic propylene
copolymer and an isotactic propylene homopolymer. (Ans. 5, 8-9.) However, the
Examiner concedes the ethylene content of the heterophasic propylene copolymer
and amount present are not disclosed or suggested by these references. (See id. at
5-6, 10.) The Examiner finds “Sheldon discloses a propylene homopolymer and
propylene impact copolymer can be blended together and [the] amount of impact
copolymer used with the homopolymer may be from about 5 to about 90 wt% (col.
4, lines 40-50).” (Ans. 5, 10.) The Examiner finds Sheldon discloses the impact

6 Reply Brief filed Apr. 2, 2012.
Appeal 2012-007354
Application 11/956,806

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copolymers include “heterophasic copolymers of propylene and ethylene” and “the
ethylene content in the heterophasic propylene copolymer is from 5 to about 20
wt% (col. 3, lines 38-41).” (Ans. 5-6, 10.) The Examiner finds one of ordinary
skill in the art would have been motivated to use a heterophasic propylene
copolymer as claimed in appealed independent claims 1 and 16 in the Kong 137 or
Kong 520/Kong 137 multi-layer films based on Sheldon’s disclosure that “[a]
polypropylene material [] prepared from a blend of heterophasic propylene
copolymers and propylene homopolymers . . . exhibit[s] increased tenacity,
elongation and toughness and greater surface roughness as compared to []
materials prepared solely from propylene homopolymers. (Sheldon Abstract.).”
(Ans. 5-6, 10-11.)
Appellants argue that while Sheldon discloses tenacity, elongation,
toughness, and surface roughness are desirable properties in a slit film tape, the
Examiner has not provided argument or evidence to support a finding that one of
ordinary skill in the art would have found these features useful or desirable in the
multi-layer food packaging films of Kong 137 and Kong 520. (See App. Br. 15,
21.) Moreover, Appellants argue the facts and reasons relied on by the Examiner
are insufficient to support a finding that the ordinary artisan would have reasonably
expected an improvement in the properties of the Kong 137 or Kong 520/Kong 137
multi-layer films, since Sheldon only discloses that materials made from the
heterophasic propylene copolymer and propylene homopolymer blends provide
improved properties as compared to materials prepared solely from propylene
homopolymers. (See Reply Br. 2-3.)
We agree with Appellants that the Examiner has failed to set forth sufficient
facts and reasons to support a finding that one of ordinary skill in the art at the time
of the invention would have been motivated to modify Kong 137 and the Kong
Appeal 2012-007354
Application 11/956,806

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520/Kong 137 combination to achieve the claimed invention. (See, e.g., Ans. 19
(arguing, without evidence, that properties such as increased elongation and
surface roughness “would be beneficial to food packaging films as both Sheldon
and Kong [137] are directed to packaging film and thus are analogous art”).)
“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007)). See also, In re Vaidyanathan, 381 Fed. Appx.
985, 994 (Fed. Cir. 2010) (non-precedential) (“KSR did not free the PTO's
examination process from explaining its reasoning. In making an obviousness
rejection, the examiner should not rely on conclusory statements that a particular
feature of the invention would have been obvious or was well known. Instead, the
examiner should elaborate, discussing the evidence or reasoning that leads the
examiner to such a conclusion.”)
Accordingly, we do not sustain the rejections of claims 1-3 and 16-20.
CONCLUSION
The Examiner’s decision to reject claims 1-3 and 16-20 is reversed.
The Examiner’s decision to reject claims 21-26 is affirmed.
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).

AFFIRMED-IN-PART

kmm