Ex Parte Sanchez et al

Board of Patent Appeals and Interferences

Jun 18, 2009

10721617 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JORGE SANCHEZ and FERDINAND POLIDO
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Appeal 2008-003567
Application 10/721,617
Technology Center 1700
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Decided:1 June 18, 2009
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-003567
Application 10/721,617

The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-5, 7-16, 18-20 and 22-39, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a modeling compound and a process for making
it. Claims 1 and 20 are illustrative:
1. A modeling compound comprising, in combination,

polyvinyl chloride resin;

primary plasticizer;

epoxidized soybean oil secondary plasticizer;

a heat stabilizer comprising zinc;

dry expanded microspheres;

glass microspheres; and

rheology modifier, wherein the modeling compound comprises
.3% or less of water.

20. A process for forming a modeling compound, comprising,

mixing a polyvinyl chloride resin, a primary plasticizer, a
secondary plasticizer and a stabilizer to a smooth liquid consistency to
create a mixture;

adding rheology modifier; and thereafter adding and mixing
microspheres to said mixture.

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Application 10/721,617

The References
Giessler 3,627,707 Dec. 14, 1971
Clas 3,917,550 Nov. 4, 1975
Vnishnevskaya (SU ‘036) SU 907036 Feb. 23, 1982
Davey 4,797,314 Jan. 10, 1989
Miller 5,506,280 Apr. 9, 1996
Christy 5,607,993 Mar. 4, 1997
Gerace 5,658,969 Aug. 19, 1997

Andrey I. Nikiforov, Preliminary Risk Characterization for Acetyl Tributyl
Citrate Used as a Plasticizer in Polyvinyl Chloride Children’s Toys 1-11
(Morflex, Feb. 1999) (hereafter Nikiforov).

The Rejections
The claims stand rejected as follows:
1. claims 1, 3-5, 7-16, 18-20 and 22-39 under 35 U.S.C. § 112,
first paragraph, written description requirement;
2. claims 1, 3-5, 7-16, 18-20, 22-30, 33 and 35-37 under
35 U.S.C. § 103 over Gerace in view of Giessler or Clas;
3. claims 31 and 39 under 35 U.S.C. § 103 over Gerace in view of
Giessler or Class, further in view of Nikiforov;
4. claims 32, 34 and 38 under 35 U.S.C. § 103 over Gerace in
view of Giessler or Clas, further in view of Davey;
5. claims 1, 3, 7, 8, 20, 22, 25, 27-30 and 33 under
35 U.S.C. § 103 over SU ‘036 in view of Christy or Miller,
further in view of Giessler;
6. claim 31 under 35 U.S.C. § 103 over SU ‘036 in view of
Christy or Miller, further in view of Giessler and Nikiforov;
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7. and claim 32 under 35 U.S.C. § 103 over SU ‘036 in view of
Christy or Miller, further in view of Giessler and Davey.
OPINION
We affirm the Examiner’s rejections.

Rejection of claims 1, 3-5, 7-16, 18-20 and 22-39
under 35 U.S.C. § 112, first paragraph,
written description requirement
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the Appellants’ original disclosure fails to provide
adequate written descriptive support for “epoxidized soybean oil secondary
plasticizer” in claim 1, “1% - 3% epoxidized soybean oil by weight of the
compound” in claim 9, “thereafter adding and mixing microspheres to said
mixture” in claim 20, and “acetyltributyl citrate” in claims 31 and 39?
Analysis
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
The Examiner argues that because the Appellants’ original
Specification discloses epoxidized soybean oil as a heat stabilizer, not as a
secondary plasticizer, there is inadequate written descriptive support for
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Application 10/721,617

“epoxidized soybean oil secondary plasticizer” in claim 1; and because the
originally-disclosed amount of heat stabilizer is 1-2% (Spec. 4:35), there is
inadequate written descriptive support for “1% - 3% epoxidized soybean oil”
in claim 9 (Ans. 5).
The Appellants argue that epoxidized soybean oil has common and
widespread use in the polymer industry as both a plasticizer and a heat
stabilizer and that, therefore, one of ordinary skill in the art would
reasonably conclude that the inventor, by mentioning epoxidized soybean oil
as a heat stabilizer, also contemplated its use as a secondary plasticizer
(Br. 7).
The Appellants have not established that at the time of the Appellants’
invention, whenever one of ordinary skill in the art used epoxidized soybean
oil as a heat stabilizer, that person also was using it as a plasticizer. Hence,
the Appellants have not established that the Appellants’ disclosure of
epoxidized soybean oil as a heat stabilizer shows possession of epoxidized
soybean oil as a plasticizer.
The Examiner argues that the Appellants’ original disclosure does not
provide adequate written descriptive support for adding the microspheres
after the other components in claim 20 but, rather, indicates that the
rheology modifier is added last (Spec. 7:14-15) (Ans. 5-6).
The Appellants argue that the disclosure in the original Specification
that “[o]ver mixing can degrade the micorspheres [sic] and generate
excessive heat which degrades the final product and shortens its shelf life”
(Spec. 7:12-13) is an inherent disclosure that the microspheres should be
added after the other ingredients (Br. 7).
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The Appellants’ original Specification discloses problems caused by
overmixing, but does not disclose avoiding overmixing by adding the
microspheres last rather than by another technique such as brief or gentle
mixing. Instead, the original Specification states that the rheology modifier
is added last (Spec. 7:14-15). The Appellants, therefore, have not
established that the original disclosure shows possession of a mixing
sequence wherein the microspheres are added after the other components in
claim 20.
The Examiner argues that the Appellants’ original Specification does
not disclose acetyltributyl citrate (Ans. 8).
The Appellants argue, in reliance upon Nikiforov, that acetyltributyl
citrate was a well-known plasticizer when the Appellants’ application was
filed (Br. 8).
Even if acetyltributyl citrate was a well-known plasticizer, the
Appellants have not shown possession of that particular plasticizer as part of
the Appellants’ invention.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the Appellants' original disclosure fails to provide
adequate written descriptive support for “epoxidized soybean oil secondary
plasticizer” in claim 1, “1% - 3% epoxidized soybean oil by weight of the
compound” in claim 9, “thereafter adding and mixing microspheres to said
mixture” in claim 20, and “acetyltributyl citrate” in claims 31 and 39.

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Rejection of claims 1, 3-5, 7-16, 18-20, 22-30, 33
and 35-37 under 35 U.S.C. § 103 over Gerace
in view of Giessler or Clas
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a modeling compound comprising
epoxidized soybean oil and 0.3% or less of water?
Findings of Fact
The Examiner relies upon Gerace, which discloses a microsphere-
containing plastisol (col. 1, ll. 5-8), for a disclosure of each of the
Appellants’ modeling compound components except epoxidized soybean oil
plasticizer, for which the Examiner relies upon Giessler’s Table IV and
Clas’s column 4, lines 21-30, and a zinc-containing stabilizer, for which the
Examiner relies upon Giessler’s Table III (Ans. 6-9). For the amounts of the
Appellants’ components the Examiner relies upon Gerace’s examples, Clas’s
claim 1 and Giessler’s Table III (Ans. 9).
Analysis
The Appellants argue that the applied references do not contain a
suggestion to combine them (Br. 9).
The Examiner has provided a motivation to combine the references
(Ans. 17), and the Appellants have not addressed the Examiner’s argument
and explained why the motivation relied upon by the Examiner is
inadequate.
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The Appellants argue that the Examiner’s reliance upon Gerace,
Giessler and Clas is improper because they disclose plastisols rather than
modeling compounds (Br. 9).
The Examiner relies upon Gerace’s examples as showing that the
plastisols are a thick paste and, therefore, are capable of being used as a
modeling compound (Ans. 18). The Appellants have not explained why the
Examiner is incorrect.
The Appellants argue that Gerace does not contemplate epoxidized
soybean oil (Br. 9).
For a disclosure of epoxidized soybean oil the Examiner relies upon
Giessler’s Table IV and Clas’s column 4, lines 21-30 (Ans. 8).
The Appellants argue that Gerace does not contemplate 0.3% or less
of water (Br. 9).
The Examiner relies upon Gerace’s lack of a disclosure that the
composition contains water as an indication that the composition has
virtually no water (Ans. 9), and the Appellants have not established that the
Examiner is incorrect.
The Appellants argue, regarding claim 20, that adding the
microspheres after the other components avoids overmixing (Br. 10).
The Appellants’ Specification discloses that overmixing can degrade
the microspheres and the final product, but does not disclose that the
solution to the overmixing problem is to add the microspheres last rather
than using another technique such as brief or gentle mixing. The Appellants
have provided mere attorney argument to that effect, and such arguments of
counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Moreover, the Appellants’ argument is
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inconsistent with the Appellants’ disclosure that the rheology modifier is
added last (Spec. 7:14-15). Hence, the Appellants have not shown error in
the Examiner’s determination that selecting any order of mixing, including
that recited in the Appellants’ claim 20, would have been prima facie
obvious to one of ordinary skill in the art (Ans. 13).
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a modeling compound comprising
epoxidized soybean oil and 0.3% or less of water.

Rejection of claims 31 and 39 under 35 U.S.C. § 103
over Gerace in view of Giessler or Class,
further in view of Nikiforov
The Appellants do not separately argue claims 31 and 39 (Br. 8-11).
Therefore, claim 31 falls with claim 1 from which it depends and claim 39
falls with claim 9 from which it depends.

Rejection of claims 32, 34 and 38 under 35 U.S.C. § 103
over Gerace in view of Giessler or Clas,
further in view of Davey
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a modeling compound comprising
an organophilic clay?

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Findings of Fact
Davey discloses a surface covering polyvinyl chloride resin paste
comprising organophilic clay as a thixotropic material (col. 1, ll. 6-10; col. 3,
l. 65 – col. 4, l. 1; col. 4, ll. 21-25).
Analysis
The Appellants argue that the Examiner’s reliance upon Davey is
improper because Davey is directed toward a surface covering compound,
not a modeling compound (Br. 10).
The Examiner argues that Gerace discloses thixotropic agents other
than organophilic clay, and that one of ordinary skill in the art would have
used Davey’s organophilic clay as Gerace’s thixotropic agent because it
would function similarly as a thixotropic agent regardless of whether the
polyvinyl chloride resin is that of Davey or Gerace (Ans. 19-20).
The Appellants have not addressed the Examiner’s argument and
explained why it is incorrect. Hence, we are not convinced of error in the
Examiner’s argument.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a modeling compound comprising
an organophilic clay.

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Rejection of claims 1, 3, 7, 8, 20, 22, 25, 27-30 and 33
under 35 U.S.C. § 103 over SU ‘036 in view of
Christy or Miller, further in view of Giessler
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references are combinable to have rendered
prima facie obvious, to one of ordinary skill in the art, a modeling compound
comprising 0.3% or less of water?
Findings of Fact
SU ‘036 discloses a modeling compound comprising 67-75 wt%
polyvinyl chloride, 16-20 wt% dioctyl phthalate, 2-5 wt% paraffin, 1-
11 wt% calcium oxide, remainder filler (p. 2).
Christy discloses a borosilicone rubber low density bouncing putty
containing lightweight additives including glass and ceramic microspheres
to provide satisfactory handling properties (col. 1, ll. 10-12; col. 4, ll. 35-48).
Miller discloses a modeling dough composition comprising gelled
poly(vinyl alcohol) and a filler which can be hollow microspheres (col. 1,
ll. 14-17; col. 4, ll. 36-39).
Analysis
The Appellants argue that the use of Giessler is improper for the
reason given with respect to the rejection over Gerace in view of Giessler or
Clas (Br. 10).
As explained above regarding that rejection, we are not persuaded by
the Appellants’ argument.
The Appellants argue that the use of Christy is improper because it is
directed to bouncing putty rather than a modeling compound (Br. 10).
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The Examiner argues that the compositions of SU ‘036 and Christy
are sufficiently similar that one of ordinary skill in the art would have used
Christy’s hollow microspheres as the SU ‘036 filler (Ans. 11-12, 20).
The Appellants have not addressed the Examiner’s argument and
explained why it is incorrect. Moreover, it appears that Miller’s disclosure
that hollow microspheres, talc and calcium carbonate are workable fillers in
Miller’s modeling dough (col. 4, ll. 36-38) would have indicated to one of
ordinary skill in art, through no more than ordinary creativity, that hollow
microspheres would be a suitable alternative to the SU ‘036 talc and chalk
(which is mostly calcium carbonate) fillers (p. 2). See KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 417-418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”).
The Appellants argue that SU ‘036, Christy and Miller do not disclose
the Appellants’ recited percentages of polyvinyl chloride (Br. 11).
As pointed out by the Examiner (Ans. 20-21), the claims that recite a
percentage of polyvinyl chloride are not rejected over SU ‘036 in
combination with Christy, Miller and Giessler.
The Appellants argue that Miller’s disclosure of a preferred water
content of about 43 to about 49 wt% (col. 4, ll. 56-58) is a teaching away
from the Appellants’ water content of 0.3% or less (Br. 11).
The Examiner argues that the components of the SU ‘036 composition
are dry components and that, therefore, the composition has virtually no
water, and that the composition is heated to a high temperature which would
remove water (Ans. 12). The Examiner argues that Miller was relied upon
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only for a disclosure of microspheres, not for a disclosure of water content
(Ans. 21).
The Appellants have not addressed the Examiner’s argument and
explained why it is in error.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied references are combinable to have rendered
prima facie obvious, to one of ordinary skill in the art, a modeling compound
comprising 0.3% or less of water.

Rejections under 35 U.S.C. § 103 of claim 31 over
SU ‘036 in view of Christy or Miller, further in
view of Giessler and Nikiforov, and claim 32
over SU ‘036 in view of Christy or Miller,
further in view of Giessler and Davey
The Appellants do not separately argue the rejections under
35 U.S.C. § 103 of claim 31 over SU ‘036 in view of Christy or Miller,
further in view of Giessler and Nikiforov, and claim 32 over SU ‘036 in
view of Christy or Miller, further in view of Giessler and Davey (Br. 11).
Therefore, claims 31 and 32 fall for the reason given above regarding
claim 1 from which they depend.
DECISION/ORDER
The rejections of claims 1, 3-5, 7-16, 18-20 and 22-39 under
35 U.S.C. § 112, first paragraph, written description requirement, claims 1,
3-5, 7-16, 18-20, 22-30, 33 and 35-37 under 35 U.S.C. § 103 over Gerace in
view of Giessler or Clas, claims 31 and 39 under 35 U.S.C. § 103 over
Gerace in view of Giessler or Class, further in view of Nikiforov, claims 32,
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34 and 38 under 35 U.S.C. § 103 over Gerace in view of Giessler or Clas,
further in view of Davey, claims 1, 3, 7, 8, 20, 22, 25, 27-30 and 33 under
35 U.S.C. § 103 over SU ‘036 in view of Christy or Miller, further in view
of Giessler, claim 31 under 35 U.S.C. § 103 over SU ‘036 in view of Christy
or Miller, further in view of Giessler and Nikiforov, and claim 32 under
35 U.S.C. § 103 over SU ‘036 in view of Christy or Miller, further in view
of Giessler and Davey are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

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