Ex Parte Thai et al

Board of Patent Appeals and Interferences

Sep 2, 2010

10865265 (B.P.A.I. Sep. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HWEE TATZ THAI, SAM LOUIS SAMUELS, and
LOIC PIERRE ROLLAND
____________

Appeal 2009-007049
Application 10/865,265
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007049
Application 10/865,265

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-5, 7-27, 29-46, and 48.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claims 1, 14 and 23 are representative of the subject matter on
appeal4 and are reproduced below from the Claims Appendix to the Appeal
Brief:
1. An article prepared from a composition wherein the article is
oriented film, oriented monofilament fiber, melt-spun fiber, or oriented tape
and the composition comprises

(a) at least one polypropylene polymer selected from the group
consisting of polypropylene homopolymers; random copolymers or block
copolymers of polypropylene and ethylene; and random terpolymers or
block terpolymers of polypropylene, ethylene and one other olefin; and

(b) from 1 to 30 weight % of at least one ethylene/alkyl acrylate
copolymer.

14. The article of Claim 1 wherein said composition comprises a
tubular reactor produced ethylene/alkyl acrylate copolymer.

2 Final Office Action (“Final”), mailed Sep. 24, 2007.
3 Claim 47 is also pending and identified as finally rejected. (Final 1;
Appeal Brief (“App. Br.”), filed Aug. 1, 2008, p. 1, 1st para. and p. 2, 1st
para. (listing claim 47 as finally rejected and on appeal); Examiner’s Answer
(“Ans”), mailed Oct. 10, 2008, p. 2. (“The statement of the status of claims
contained in the brief is correct.”).) However, claim 47 is not listed in any
of the stated grounds of rejection. (See Final 3-7; App. Br. 4; Ans. 3-9.)
Claim 47 appears to be subject only to an objection. (See Final 2-3.)
Appellants incorrectly list cancelled claim 28 as finally rejected and on
appeal. (App. Br. 1-2.)
4 Of the appealed claims, claims 1, 23, and 37 are independent. We note that
Appellants incorrectly identify claims 15, 17, and 47 as independent claims.
(See App. Br. 2-4.)
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23. A process comprising

(1) preparing a composition comprising (a) at least one
polypropylene polymer selected from the group consisting of
polypropylene homopolymers; random copolymers or block
copolymers of polypropylene and ethylene; and random terpolymers
or block terpolymers of polypropylene, ethylene and one other olefin;
and (b) from 1 to 30 weight % of at least one ethylene/alkyl acrylate
copolymer;

(2) forming said composition into a film;

(3) optionally slitting the film into tapes;

(4) drawing the film of step (2) or the tape of step (3) at a draw
ratio greater than 3 at a temperature below the melting point of the
polypropylene polymer to produce an oriented fiber or an oriented
tape;

(5) optionally annealing the oriented tape of step (4) to form an
oriented fiber; and

(6) optionally producing fabric or textile from the oriented tape
or from the oriented fiber.

Appellants request review of all grounds of rejection maintained by
the Examiner. (App. Br. 4.) The Examiner provisionally rejected claims 1-
5, 7-10, 13, 23-27, 29, 30, and 37-46 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 2, 6-
8, 10, 14, 17, and 18 of copending Application SN 11/072,383. (Ans. 8-9.)
SN 11/072,383 was abandoned on Oct. 1, 2009, i.e., subsequent to the
mailing of the Answer. Therefore, we vacate this ground of rejection.
We consider the following remaining grounds of rejection:
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1. claims 1-5, 7, 8 and 37-42 under 35 U.S.C. § 102(b) as
anticipated by GB ‘8095 (Ans. 3)6;
2. claims 11-14 and 45 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103 as unpatentable over GB ‘809
(Ans. 4-5);
3. claims 9, 10, 43, and 44 under 35 U.S.C. § 103 as unpatentable
over GB ‘809 (Ans. 6);
4. claims 1-5, 7-27, 29-36, and 48 under 35 U.S.C. § 103 as
unpatentable over GB ‘809 in view of JP ‘7857 (as translated) and Peacock8
(Ans. 6-8);
5. claims 1-5, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by
Saraf9 (Ans. 3-4); and
6. claims 11-14 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103 as unpatentable over Saraf (Ans. 5).
Grounds of Rejection 1-3
The Examiner’s rejections are based on a finding that GB ‘809
discloses a “melt-spun fiber” as recited in independent claims 1 and 37. (See
Ans. 3-6.) The Examiner has not taken the position that it would have been
obvious to have made a “melt-spun fiber.” (See Ans. 4-6 (statements of the
rejections under 35 U.S.C. § 103(a)).)

5 Spencer Chemical Company, GB 902,809, pub. Aug. 09, 1962.
6 The Examiner incorrectly identifies cancelled claim 6 as subject to this
ground of rejection.
7 Nishiguchi et al., JP 52-142785, pub. Nov. 28, 1977.
8 US 5,272,003, issued Dec. 21, 1993.
9 US 6,433,088 B1, issued Aug. 13, 2002.
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Appellants’ arguments raise the following issue: does a
preponderance of the evidence support the Examiner’s finding that GB ‘809
discloses a “melt-spun fiber”?
The Specification indicates there are numerous processes for
manufacturing polypropylene polymer-based fibers. (See, e.g., (Spec. ¶¶
[0098] and [00108]).) “In melt spinning, the fiber-forming substance is
melted for extrusion through the spinneret and then directly solidified by
cooling.” (Spec. 17:32-33.)
Appellants argue GB ‘804 uses the generic term “fiber” which could
be any type of fiber. (App. Br. 5.) The Examiner has not responded to this
argument. (See Ans. 9.) The Examiner has not identified an explicit
disclosure of a “melt-spun fiber” or a description of a method such as that
described in Appellants’ Specification which would produce a melt-spun
fiber. (See Ans. 3 and 9.)
Because the Examiner has not provided sufficient evidentiary support
for her finding that GB ‘809 discloses a “melt-spun fiber,” the Examiner has
not met the burden to establish a prima facie case of anticipation or
obviousness. Therefore, we reverse the above-listed, first three grounds of
rejection.
Ground of Rejection 4
Appellants present separate arguments in support of the following
claim groupings: (1) claims 23-36 and (2) 14, 36, and 45. We decide the
appeal with respect to these groups of claims on the basis of claims 23 and
14, respectively. See 37 C.F.R. § 41.37(c)(1)(vii) (2009). The remaining
claims stand or fall with claim 1.

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Claims 1-5, 7-27, 29-36, and 48
The Examiner concedes that GB ‘809 does not explicitly disclose
oriented tape or certain method steps associating with forming tapes, e.g.,
“slitting a film . . . into tapes and hot-drawing and annealing the tape.”
(Ans. 6-7.) The Examiner finds that “JP ‘785 discloses a composition
comprising polypropylene and an ethylene/ethyl acrylate copolymer and
teaches that the composition is suitable for forming into a film, cutting the
film into tapes, and then elongating the tapes to form fibers for use in
outdoor coverings (abstract).” (Ans. 7.) The Examiner finds that Peacock
teaches a process similar to that disclosed in JP ‘785, although Peacock
additionally teaches process steps for forming oriented tapes and fibers
suitable for nonwoven and woven fabrics. (Id.) The Examiner concludes:
[g]iven that GB '809 discloses that its composition is
useful in films and tapes and further given that a composition
like the one disclosed by GB '809 is suitable for a process of
slitting film to form fibers as taught by JP '785, it would have
been obvious to one of ordinary skill in the art to quench the
film and hot-draw and anneal the slit film tapes as taught by
Peacock to form oriented fibers which can be used in nonwoven
or woven fabrics.

(Id.)
Appellants’ arguments raise the following issue: did the Examiner
fail to establish a prima facie case of obviousness because the Examiner
erred in finding that one of ordinary skill in the art would have had a
reasonable expectation of success in forming oriented tapes and fibers from
the GB’ 809 composition?
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Appellants contend Peacock’s disclosure is limited to a process for
forming oriented tapes and fibers from syndiotactic polypropylene resin.
(App. Br. 10.) Appellants argue the Examiner has not established a prima
facie case of obviousness because the Examiner has not provided evidence
to support a finding that Peacock’s process could also be used with a blend
of polypropylene and ethylene/alkyl acrylate copolymer. (Id.)
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
We are not persuaded by Appellants’ arguments because they fail to
explain why the ordinary artisan, upon consideration of the combined
teachings of GB ‘809, Peacock, and JP ‘785, would not have had a
reasonable expectation of success in forming oriented tapes and fibers from
the GB’ 809 composition.
JP ‘785 establishes that it was known in the art to use the same type of
composition disclosed in GB ‘809 to form a film which is cut into a tape and
stretched to become a fiber. (Ans. 7; see also, JP ‘785, p. 2, first full para.)
Peacock establishes that it was known in the art to use a syndiotactic
polypropylene resin in the same type of process disclosed in JP ‘785. (See
Ans. 7 (citing Peacock, col. 6, ll. 23-54).) Peacock also discloses a
modification to the process, i.e., drawing the tape in such a manner that the
molecules are oriented. (Id.) Although, Peacock is concerned with forming
oriented tapes from syndiotactic polypropylene resin, it was reasonable for
the Examiner to conclude that the ordinary artisan would have had the
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knowledge and skills necessary to adapt Peacock’s drawing process to form
oriented tapes from the GB ‘809 process.
Appellants comment on the deficiencies of each of the individual prior
art references (see App. Br. 9-10), but have not explained why the ordinary
artisan, upon consideration of their collective teachings, would not have
possessed the knowledge and skills necessary to combine them to achieve
the claimed invention. Cf. KSR, 550 U.S. at 421 (explaining that it is
erroneous to conclude “that a patent claim cannot be proved obvious merely
by showing that the combination of elements was ‘obvious to try’”).
Claims 23-36
With respect to claims 23-36, Appellants’ arguments raise the
following additional issue for our consideration: did the Examiner fail to
properly identify a teaching or suggestion of step (4) of claim 23?
The Examiner found that Peacock discloses a process in which tapes
are oriented and drawn in an oven at a ratio of 11:1. (Ans. 7 (citing Peacock,
col. 6, ll. 36-40).) As explained above, we are in agreement with the
Examiner’s determination that one of ordinary skill in the art would have
had a reasonable expectation of success in modifying the JP ‘785 and
Peacock processes to form oriented tapes and fibers from the GB’ 809
composition.
Without further explanation from Appellants (see App. Br. 11 (stating
only that the references fail to suggest this process limitation)), we are not
convinced the Examiner failed to properly identify a teaching or suggestion
of step (4) of claim 23. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
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Claims 14, 36, and 45
With respect to claims 14, 36, and 45, we consider the following
issue: did the Examiner fail to establish a prima facie case of obviousness
because the Examiner erred in finding that an article prepared from a tubular
reactor produced ethylene/alkyl acrylate copolymer as claimed would be
substantially the same as an article prepared from an ethylene/alkyl acrylate
copolymer manufactured by a different process, e.g., in an autoclave
reactor?
Claim 14 is directed to an article prepared from a composition. Thus,
the ethylene/alkyl acrylate copolymer used to prepare the article constitutes
a process limitation.
The Specification defines “the term or phrase ‘tubular reactor
produced’ ethylene/alkyl acrylate copolymer” as
an ethylene copolymer produced at high pressure and
elevated temperature in a tubular reactor or the like, wherein
the inherent consequences of dissimilar reaction kinetics for
the respective ethylene and alkyl acrylate comonomers is
alleviated or partially compensated by the intentional
introduction of the monomers along the reaction flow path
within the tubular reactor.

(Spec. ¶ [0055].) Tubular reactor produced ethylene/alkyl acrylate
copolymers are said to be “generally stiffer and more elastic than autoclave
produced ethylene/alkyl acrylate copolymers.” (Id.) However the
Specification also states that
similar ethylene/alkyl acrylate copolymeric material can be
produced in a series of autoclave reactors wherein
comonomer replacement is achieved by multiple zone
introduction of reactant comonomer as taught in U.S. Patent
Numbers 3,350,372; 3,756,996; and 5,532,066, and as such
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these high melting point materials should be considered
equivalent for purposes of this invention.

(Spec. ¶ [0057].)
According to the Specification, the amount and type of ethylene/alkyl
acrylate used to prepare the article (e.g. oriented film, fiber, or tape), is only
one of several parameters effecting the properties of the article. (See Spec.
¶¶ [00102]-[00106] (listing other process parameters effecting properties).)
Where . . . 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.
Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985) (“If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.”).
Based on the foregoing Specification disclosure, we are in agreement
with the Examiner’s determination that Appellants’ claimed article, i.e.,
prepared from a tubular reactor produced ethylene/alkyl acrylate copolymer,
would appear to be substantially identical to an article prepared from the
ethylene/alkyl acrylate copolymer of the applied prior art.
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Appellants rely on White10 to establish that the GB ‘809
ethylene/alkyl acrylate copolymer would differ in both physical and
chemical properties from Appellants’ claimed copolymer. (App. Br. 8-9
(cited in App. Br. 11); see also, Rep. Br. 3, § 4.) Appellants specifically
note a difference in heterogeneity and melting points. (App. Br. 8; see also,
Spec. ¶ [0055] (describing the differences in the polymers).)
As explained by the Examiner, this evidence alone is insufficient to
demonstrate a difference in the claimed and prior art products. (See Ans.
10.) Although White evidences that a tubular reactor produced
ethylene/alkyl acrylate copolymer may differ in certain physical and
chemical properties from copolymers produced by other methods,
Appellants have not provided evidence which establishes that oriented films,
tapes, and fibers prepared from the polymers would necessarily differ. (Ans.
10; cf. citations to Spec. supra pp. 9-10.)
Unexpected Results
Appellants contend Specification Tables 4-6 establish that the claimed
oriented film exhibits unexpected stretch properties. (App. Br. 10.) We are
in agreement with the Examiner’s finding that this evidence is not persuasive
of nonobviousness because it is not commensurate in scope with the claims.
(Ans. 11-12.)
Taking into account this evidence along with the other arguments and
evidence advanced by Appellants and the Examiner, we conclude that a
preponderance of the evidence weighs in favor of the Examiner’s
obviousness determination. Therefore, we affirm the fourth ground of
rejection.

10 US 2,953,551, issued Sep. 20, 1960 (App. Br., Evidence Appendix).
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Grounds of Rejection 5 and 6
The Examiner’s rejections are based on a finding that Saraf discloses
an “oriented film” as recited in independent claim 1. (See Ans. 3-6.)
Appellants concede that Saraf discloses a blow-molded film and that “a little
degree of orientation” may occur in films formed by blow molding. (App.
Br. 5-6.) However, Appellants contend the Specification limits the term
“oriented film” to a structure which would not read on the limited degree of
orientation created by a blow molding process.
Based on these arguments, the issue we consider is: did the Examiner
apply an overly broad interpretation of the term “oriented” as reading on
Saraf’s blow-molded film?
The Specification states that the “invention provides a film prepared
from a composition comprising polypropylene and ethylene/alkyl acrylate
copolymers. The film can be unoriented, oriented in a uniaxial direction
(e.g. machine direction), or oriented in a biaxial direction (e.g. machine
direction and transverse direction).” (Spec. ¶ [0077].) The Specification
states that “the film and film structures can be typically cast, extruded, co-
extruded and the like including orientation (either uniaxially or biaxially) by
various methodologies (e.g., blown film, mechanical stretching or the like).”
(Spec. ¶ [0075].)
Interpreting claim 1 in light of the Specification we are in agreement
with the Examiner’s broadest reasonable interpretation of the term “oriented
film” as encompassing a film having some degree of orientation by virtue of
the blow molding process used in its formation. (See Ans. 9.) We have
considered the Specification paragraphs cited by Appellants in support of a
narrower claim interpretation. (See App. Br. 6.) However, we see no basis
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for interpreting claim 1 as limited to films which have been “drawn to a
substantial degree at temperature[s] well below the melting point” as argued
by Appellants. (Id.)
Accordingly, we are not persuaded of error in the Examiner’s finding
that claim 1 reads on Saraf’s blow molded film.
Claims 11-14
For the reasons explained by the Examiner (Ans. 10) and above (see
discussion of ground of rejection 4, claim 14, supra pp. 9-11), Appellants’
arguments alone (see App. Br. 8) are not sufficient to show a difference in
Saraf’s blow-molded film and the product of product-by-process claims 11-
14.
For the foregoing reasons, we affirm the fifth and sixth grounds of
rejection.
CONCLUSION
We AFFIRM the rejection of claims 1-5, 7-27, 29-36, and 48 under 35
U.S.C. § 103 as unpatentable over GB ‘809 in view of JP ‘785 and Peacock;
the rejections of claims 1-5, 7, 8 and 11-14 under 35 U.S.C. § 102(b) as
anticipated by Saraf; and the rejection of claims 11-14 under 35 U.S.C.
§ 103 as unpatentable over Saraf.
We REVERSE the rejections of claims 1-5, 7, 8, 11-14, 37-42, and 45
under 35 U.S.C. § 102(b) as anticipated by GB ‘809; and the rejections of
claims 9-14 and 43-45 under 35 U.S.C. § 103 as unpatentable over GB ‘809.
We VACATE the provisional rejection of claims 1-5, 7-10, 13, 23-27,
29, 30, and 37-46 on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1, 2, 6-8, 10, 14, 17, and 18 of
copending Application SN 11/072,383.
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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

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