Ex Parte Pellegatti et al

Board of Patent Appeals and Interferences

Jan 31, 2012

12083450 (B.P.A.I. Jan. 31, 2012)

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.
12/083,450 04/11/2008 Giampaolo Pellegatti 124-201USFE6283 8853
74275 7590 01/31/2012
DILWORTH IP, LLC
2 CORPORATE DRIVE, SUITE 206
TRUMBULL, CT 06611
EXAMINER
KAUCHER, MARK S
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
01/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GIAMPAOLO PELLEGATTI, PAOLO GOBERTI,
MICHAEL BALOW, and ROBERT BUTALA
____________

Appeal 2011-000854
Application 12/083,450
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
RAE LYNN P. GUEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000854
Application 12/083,450

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-10 and 13-15. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a flexible elastoplastic
polyolefin composition with low gloss (claim 1), a process for preparing the
elastoplastic polyolefin (claim 5) and a manufactured article comprising the
same (claim 6). Claim 1 is reproduced below:
1. An elastoplastic polyolefin composition
comprising, in percent by weight:
(A) 10-50% of a copolymer of propylene with 1 to 8% of
a least one comonomer selected from ethylene and CH2=CHR
alpha-olefins where R is a 2-8 carbon alkyl;
(B) 50-90% of a copolymer of ethylene and propylene
containing from 57 to 80% of ethylene;
a fraction XS soluble in xylene at room temperature
comprising an intrinsic viscosity [η] of at least 3 dl/g;
a weight ratio B/XS of at most 1.5, where B is the
content of copolymer component (B), and B and XS both refer
to the content with respect to the total weight of (A) + (B); and
a total quantity of copolymerized ethylene from 30% to
65 wt%.

Appellants request review of the following rejections (App. Br. 5)
from the Examiner’s final office action:
1. Claims 1-10 and 13-15 rejected under 35 U.S.C. § 103(a) as
unpatentable over Washiyama (US 6,586,531 B2, issued July 1, 2003).
2. Claims 1-10 and 13-15 rejected under 35 U.S.C. § 103(a) as
unpatentable over Govoni (US 6,355,731 B1, issued March 12, 2002).

Appeal 2011-000854
Application 12/083,450

3
OPINION1
We sustain the appealed rejections for the reasons well stated by the
Examiner in the Answer. The following comments are added for emphasis.
The rejection over Washiyama
The Examiner found that Washiyama teaches polyolefin compositions
comprising monomer components in amounts that overlap the claimed
invention. (Ans. 4-5).
Appellants argue that Washiyama’s component (A) is a two
component polymer having a bimodal molecular weight distribution that is
not identical to the components required by the claimed invention. (App. Br.
5-6). In support of this argument Appellants point to Washiyama’s
examples exhibiting an ethylene content from about 10 to about 15 weight %
which is outside of the range required by the claimed invention. (Id. at 6).
Appellants further argue that there is no reasonable expectation of modifying
Washiyama to meet the claimed invention. (Id.).
We do not find Appellants’ arguments persuasive of error in the
Examiner’s obviousness determination. Appellants’ arguments, addressing
Washiyama, focus on the reference’s exemplified embodiments. We are
unpersuaded by this argument and agree with the Examiner that the
disclosure of Washiyama is not limited to the compositions listed in the
examples. (Ans. 8). It is well settled that a reference may be relied upon for
all that it would have reasonably suggested to one having ordinary skill in
the art, including non-preferred embodiments. Merck & Co., Inc. v. Biocraft

1 Appellants have not presented separate arguments addressing all the
rejected claims. Accordingly, the dependent claims stand or fall together
with their respective independent claim. We will limit our discussion to
independent claim 1.
Appeal 2011-000854
Application 12/083,450

4
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior
art, including unpreferred embodiments, must be considered.”) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). The disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). The Examiner correctly found that Washiyama teaches a
polyolefin composition comprising ethylene in amounts that overlap the
claimed invention. (Ans. 4-5).
The rejection over Govoni
The Examiner found that Govoni teaches a polyolefin composition
comprising monomer components in amounts that overlap the claimed
invention. (Ans. 5-7).
Appellants argue that the Examiner is relying upon the intrinsic
viscosity (IV) of a single component of Govoni’s composition to meet the
subject matter of the claimed invention. (App. Br. 6-7).
This argument is unpersuasive of patentability. As correctly found by
the Examiner, Govoni describes the IV for both components (2) and (3) that
individually exceed 1.5 dl/g. (Ans. 11). Appellants have not adequately
explained why the IV of Govoni’s components (2) and (3) would not meet
the claimed requirement of at least 3 dl/g. This is especially true in this case
where Govoni discloses the IV of component (2) can be as much as 4.5 dl/g
and component (3) can be as much as 6 dl/g.
For the foregoing reasons and those set forth in the Answer, based on
the totality of the record, we determine that the preponderance of evidence
weighs in favor of obviousness, giving due weight to Appellants’ arguments.
Accordingly, the Examiner’s rejections are affirmed.
Appeal 2011-000854
Application 12/083,450

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ORDER
The rejections of claims 1-10 and 13-15 under 35 U.S.C. § 103(a) are
affirmed.

TIME PERIOD
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

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