Ex Parte Srinivasan et al

Patent Trial and Appeal Board

Jun 23, 2017

13695760 (P.T.A.B. Jun. 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.
13/695,760 11/01/2012 Ramesh Srinivasan 2010P0010[15613USNP] 7677
25570 7590 06/27/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
WALES, CHRISTINA H
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMESH SRINIVASAN, JULIA HUFEN,
BERNHARD FORSCHLER, BJORN RINKER,
JENS EHLERS, LOUIE WANG,
RAJESH BHOR, PETER BURKE,
MEINHARD GUSIK, and YU SHEN
Appeal 2016-006908
Application 13/695,760
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) the final rejection of
claims 1, 2, 4, 5, and 16. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed “to polyethylene powders and
porous, sintered articles produced therefrom” (Spec. 12). According to the
Specification, the powder has a broad processing window with respect to
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Application 13/695,760
time and temperature, exhibits flowability in the molten state, and is
amenable to shaping by conventional techniques (Spec. 117).
Claim 1 is illustrative:
1. A polyethylene powder having a molecular weight in the
range of 300,000 g/mol to 2,000,000 g/mol as determined
by ASTM-D 4020, an average particle size, D50, between
418 and 1000 pm, and a bulk density between 0.32 and
0.5 g/ml, and a span (D9o-Dio)/D50 of less than 1.5.
Appellants appeal the following rejection:
1. Claims 1, 2, 4, 5, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Funk et al., (US 5,034,480, issued July 23, 1991,
“Funk”).
Appellants’ arguments focus solely on independent claim 1 (Appeal
Br. 2—7; Reply Br. 2—5). Claims 2, 4, 5, and 16 will stand or fall with our
analysis of claim 1.
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Funk are located
on pages 2 to 4 of the Answer. The Examiner finds that the claimed ranges
of molecular weight and particle size overlap the ranges disclosed by Funk
(Ans. 2). The Examiner further finds that the claimed bulk density range
encompasses the bulk density disclosed by Funk (id.).
The Examiner finds that Funk does not explicitly disclose that the
particles have “a span (D90-Dio)/D5o of less than 1.5” as recited in claim 1
(id.). The Examiner, however, finds “that the particles of Funk would be
expected to have, or in the very least overlap, the claimed ‘span’ size, since
the instant specification mentions that the (D90—D10)/D50 span is related to
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the heterogeneous catalyst particle size” {id. (citing Spec. 136)). As
examples of such commonalities, the Examiner finds that Funk’s overall
particle production process “is essentially the same as the disclosed process
of making the claimed particles” and that each method employs catalyst
particles that are less than 50 pm (Ans. 3).
Appellants argue that “there is no evidence provided by the Examiner
that those of ordinary skill were aware of a relationship between span and
catalyst particle size ...” (Appeal Br. 4). Appellants further argue that the
Examiner’s reliance on paragraph 36 of the Specification as suggesting such
a relationship “constitutes impermissible hindsight and therefore legal error”
{id.).
Appellants’ arguments are not persuasive.
We understand that the resulting span of the polymer particle sizes is a
characteristic that is produced from the process used to form the polymer
particles. As explained by the Examiner, paragraph 36 of the Specification
was relied on merely as evidence supporting the Examiner’s finding that
Funk’s particles would have the claimed span due to substantial similarities
between Funk’s and Appellants’ processes for producing the particles
(Ans. 4). In particular, the Examiner finds that Appellants’ disclosed
polymerization process, polymerization temperatures and pressures, and
aluminum/titanium catalyst sizes are substantially similar to those taught by
Funk {id. at 2—3). In other words, the Examiner has provided a well-
reasoned analysis of how and why the ordinary skilled artisan would have
reasonably expected that Funk’s resulting polymer particles made by a
similar process under similar conditions would possess the diameter span
recited in the claim. Thus, Appellants have the burden of showing that
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Funk’s polymer particles do not possess the claimed diameter span. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that “[wjhere ... the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”).
Appellants argue that “the Funk et al. process and that of the present
invention are so drastically different” (Reply Br. 5). Appellants further
argue that “Funk et al. describe the polymerization process therein as being
conducted in the gas phase only”, whereas the Specification discloses a
preference and exemplifies slurry phase polymerization (Appeal Br. 5—6).
Appellants note that “the Funk et al. polymerization is conducted at an
ethylene pressure of 40 bar, whereas the present examples disclose the
ethylene pressure to be a maximum of 0.7 MPa (7 bar)” (Reply Br. 5).
Appellants’ arguments are not persuasive because these alleged
distinctions do not support Appellants’ position that the process of Funk and
the Specification are “drastically” different. As the Examiner found, the
Specification also describes gas polymerization as a suitable polymerization
process (Ans. 5). Furthermore, Appellants’ reliance on a singular instance in
which pressures are different ignores the Examiner’s finding that the
Specification describes polymerization pressures, which overlap those taught
by Funk (Ans. 3). For example, the Specification describes suitable
polymerization pressures ranging between 0.5—10 MPa, i.e., 5—100 bar
(Spec. 139), while Funk teaches a polymerization pressure range of 5—70
bar (Funk 3:25—30).
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Appellants argue that Funk discloses catalyst particle sizes below the
preferred range and thus the span could not be certain to be inherently within
the claimed range (Appeal Br. 6).
Appellants’ argument is not persuasive because, 136 of the
Specification teaches a preference for such catalysts that are 15—35 pm in
size; Funk describes catalyst particles which are 20 pm, thereby
encompassed by the preferred range described in the Specification (see also
Ans. 5).
Appellants further argue that “[t]he Examiner selects elements from
disparate portions of the reference, and then alleges that they all fit together
to describe a single polymer which inherently demonstrates the elements of
the claims” (Appeal Br. 6). Appellants contend that the Examiner’s finding
with respect to the claimed bulk density is based on Funk’s process to
produce polyethylene particles having a molecular weight of 6 x 106, which
is “far above the presently claimed molecular weight range” (id. at 7).
Appellants further argue that the skilled artisan would not expect that all
lower molecular weight polymers formed by Funk’s process to have the
same bulk density or span range (id.).
For purposes of § 103, a reference is prior art for all that it discloses.
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
The fact that a reference “discloses a multitude of effective combinations
does not render any particular formulation less obvious.” See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Therefore,
Appellants’ argument for non-obviousness based on the Examiner’s reliance
of Funk’s disparate portions is unpersuasive, because Appellants have not
shown persuasively that the Examiner’s finding that Funk discloses a
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substantially similar process is erroneous or unreasonable. Furthermore,
Appellants’ argument that the skilled artisan would not expect that all lower
molecular weight polymers formed by Funk’s process to have the same bulk
density or span range are not substantiated by any evidence of record.
Appellants have the burden of showing that Funk’s process would not have
produced polymer particles having the claimed particles size range. Best,
562 F.2d at 1255. Attorney argument cannot take the place of evidence in
the record.
There is no dispute that the claimed ranges of molecular weight and
particle size overlap the ranges disclosed by Funk for the polymer particles
(Ans. 2; Reply Br 2).
Appellants, however, argue that: (i) Funk’s minimum molecular
weight is not enabled and is, moreover, at the upper end of the presently
claimed range and (ii) Funk fails to disclose how to achieve particles of the
claimed size range (Reply Br. 3). Appellants raise these arguments for the
first time in the Reply Brief and we will not, therefore, consider them. See
37 C.F.R. 41.41(b)(l)(2); cf. Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative).
Appellants have not provided any evidence (other than attorney
argument) that the claimed span would not necessarily result. Best, 562 F.2d
at 1255. Therefore, on this record, we affirm the Examiner’s § 103 rejection
of claims 1, 2, 4, 5, and 16 over Funk.
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DECISION
The Examiner’s § 103 rejection 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)(l)(iv).
ORDER
AFFIRMED
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