Ex Parte Seip et al

Board of Patent Appeals and Interferences

Jun 22, 2009

10673791 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN D. SEIP, EDWIN B. TOWNSEND IV,
SEHYUN KIM, and LESLIE A. BOCKMAN
____________

Appeal 2009-003318
Application 10/673,791
Technology Center 1700
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Decided:1 June 22, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-6 and 12-24.

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 2009-003318
Application 10/673,791

We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1 and 12 are illustrative:
1. A household article exhibiting enhanced resistance to staining,
said household article comprising:

a nucleated propylene/ethylene impact copolymer having an
ethylene content of up to about 15 percent by weight, and
a xylene solubles fraction having an intrinsic viscosity of
at least 3 dL/g;

wherein said xylene soluble fraction has a molecular weight
(Mw/1000) of at least about 350;

said propylene/ethylene copolymer containing an additive
package consisting essentially of: a phenolic antioxidant,
a phosphite, and an acid scavenger;

said household article being essentially free of sodium
containing additives.

12. A household article exhibiting enhanced stain resistance, said
household article comprising:

a propylene homopolymer having a crystallinity of at least about
55 percent,

said propylene polymer containing an additive package
consisting essentially of: a phenolic antioxidant, a
phosphate, and an acid scavenger;

said household article being essentially free of sodium
containing additives.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 2):
Betso 5,925,703 Jul. 20, 1999
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General Electric (GE) Specialty Chem icals, Application Profile of Ultranox
651 Phosphite Antioxidant (1995) (hereafter GE).

Appellants’ claimed invention is directed to a household article
comprising a composition comprising either a nucleated propylene/ethylene
impact copolymer having an ethylene content of up to about 15 percent by
weight, or a propylene homopolymer having a crystallinity of at least about
55 percent. The household article exhibits stain resistance.
Appealed claims 4, 5, 14, 15, 19, 20, 23, and 24 stand rejected under
35 U.S.C. 112, second paragraph. Claims 1-6 and 12-24 stand rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as being unpatentable over Betso. Claims 5, 15, 19 and 24
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Betso in
view of GE.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find ourselves in agreement
with Appellants that the Examiner’s rejections are not sustainable.
We consider first the Examiner’s rejection under § 112, second
paragraph. According to the Examiner, the recited term “thiosynergist” is
indefinite because it is not defined in Appellants’ Specification and “because
the recited term broadly embraces synergies that are not in the area of
polymer stabilization from aging as well” (Ans. sentence bridging 3-4). The
Examiner states that “[w]ithout stating the type or [sic, of] area of
improvement from the synergy, one of ordinary skill in the art would not
know the metes and bounds of the claims or be able to appreciate the values
of the claimed invention” (Ans. 4, first para.).
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We agree with Appellants that the Examiner “improperly equates
breadth with indefiniteness” (Reply Br. 2, third para.). It is well settled that
claim language is not to be read in a vacuum but in light of the Specification
and the state of the art as it would be interpreted by one of ordinary skill in
the art. In re Snead, 710 F.2d 1544, 1548 (Fed. Cir. 1983). In the present
case, Appellants have submitted ample evidence that one of ordinary skill in
the art is well aware that a thiosynergist is a sulfur-containing compound
used in polypropylene compositions as a secondary antioxidant in
conjunction with primary stabilizers. It is of no moment that such a
compound may have other uses in such compositions. The Examiner has not
demonstrated, based on the state of the art cited by Appellants, that one of
ordinary skill in the art would be unable to reasonably understand what is
meant by a thiosynergist and consequently the scope of the rejected claims
requiring this additive as part of the claimed copolymer or polymer
compositions, including articles comprising such a compostion. Also, to the
extent that a thiosynergist-containing composition may additionally embrace
synergies that are not in the area of polymer stabilization, as submitted by
the Examiner, the Examiner has not demonstrated that one of ordinary skill
in the art would not reasonably understand the scope of the rejected claims.
We now turn to the Examiner’s rejection of all the appealed claims
under § 102 / § 103. As explained by the Examiner, Betso discloses filled
polymer compositions that can be molded into household articles that may
contain polypropylene impact copolymers in polyolefin compositions
(TPOs), as well as random copolymers of ethylene/propylene wherein the
ethylene content is 1.5-7 percent. The thermoplastic polymer containing the
polypropylene impact copolymers and random copolymers may be
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Application 10/673,791

polypropylene. The Examiner acknowledges that Betso does not teach that
the propylene/ethylene impact copolymer is nucleated, and has a xylene
solubles fraction having the claimed viscosity and molecular weight. Nor
does Betso describe or suggest a propylene homopolymer having a
crystallinity of at least about 55 percent, as presently claimed.
It is the Examiner’s position that “[s]ince the ethylene content of the
copolymer of Betso et al. is below 15 percent, the composition of Betso et al.
and the composition of the claimed household article are substantially
identical” (Ans. 5, second para.) and, therefore, the ethylene/propylene
copolymer of Betso inherently has a xylene solubles fraction having the
claimed intrinsic viscosity and molecular weight. It is the Examiner’s
position that the copolymer of Betso inherently has the claimed properties
because it “is substantially identically to the composition as claimed” (Ans.
11, second para.).
When a claimed product reasonably appears to be substantially the
same as a product disclosed by the prior art, the burden is on the applicant to
prove that the prior art product does not necessarily or inherently possess
characteristics attributed to the claimed product. However, the initial burden
is on the Examiner to demonstrate with facts and compelling reasoning that
the claimed and prior art products are substantially the same. In the present
case, the Examiner has not met this burden. Simply because Betso discloses
an ethylene/propylene copolymer wherein the ethylene content is less than
about 15 percent by weight does not mean that Betso discloses, or even
renders obvious, the presently claimed nucleated propylene/ethylene impact
copolymer having a xylene solubles fraction with the recited intrinsic
viscosity and molecular weight. As pointed out by Appellants, the portion
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of the reference cited by the Examiner for the 1.5-7 percent ethylene content
refers to random copolymers, not the polypropylene impact copolymers
mentioned in the previous sentence (see col. 9, ll. 15-20). Also, the
Examiner has not refuted Appellants’ reasonable statement that
“[p]arameters such as catalyst, co-catalyst, electron donor, temperature,
residence time and hydrogen pressure are routinely varied to produce impact
copolymers having different properties” (Reply Br. 6, second para.). Hence,
the Examiner has not shouldered the burden of establishing on this record
sufficient correspondence between nucleated propylene/ethylene impact
copolymers within the scope of independent claims 1 and 17 and the
ethylene/propylene impact copolymers generally disclosed by Betso, as well
as the random copolymers disclosed by Betso, to reasonably conclude that
they have substantially the same properties. Without such correspondence,
the Examiner’s finding of inherency is without factual basis.
The same analysis applies to the claimed propylene homopolymer
having a crystallinity of at least about 55 percent. We agree with Appellants
that the “Examiner has not provided a reasonable basis in fact or technical
reasoning” (App. Br. 14, fourth para.) to support the determination that
Betso inherently discloses the recited property (crystallinity). The Examiner
has set forth no reason why the polypropylene impact polymers disclosed
generally by Betso inherently possesses the recited crystallinity, nor has the
Examiner set forth the requisite rationale for why it would have been
obvious for one of ordinary skill in the art to select a propylene
homopolymer having the claimed crystallinity in the polymer composition of
Betso. As stated by Appellants, “the Examiner does not appear to have
presented any specific arguments in the Answer” (Reply Br. 10, second
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para.). The Examiner’s discussion that the claimed term “nucleated” implies
either “semi-crystalline” or “crystalline” material does not address the
crystallinity of the claimed propylene homopolymer (Ans. 7, last para.).
The Examiner’s citation of GE in the § 103 rejection of claims 5, 15,
19 and 24 does not remedy the deficiencies of Betso discussed above.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.

REVERSED

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