Ex Parte Thompson et al

Patent Trial and Appeal Board

Mar 7, 2018

13349072 (P.T.A.B. Mar. 7, 2018)

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.
13/349,072 01/12/2012 David Eugene Thompson 392700US103 1675
22850 7590 03/09/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/09/2018 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID EUGENE THOMPSON and
HELEN JANE CODD
Appeal 2017-005481
Application 13/349,072
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 37, 39, and 40.3 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to the Final Office Action mailed April 7, 2016
(“Final Act.”), Advisory Action mailed June 14, 2016 (“Adv. Act.), the
Appeal Brief filed September 7, 2016 (“Appeal Br.”), the Examiner’s
Answer mailed December 15, 2016 (“Ans.”), and the Reply Brief filed
February 15, 2017 (“Reply Br.”).
2 Appellants identify the real party in interest as DAK AMERICAS LLC.
Appeal Br. 2.
3 Claim 38 was incorporated into claim 37, and canceled in the Amendment
filed June 8, 2016. Adv. Act. 2.
Appeal 2017-005481
Application 13/349,072
The subject matter of the claims on appeal relate to preforms, for
example a bottle, that includes lamp black carbon black. Spec. 3,11. 20-24.
Claim 37, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal.
37. A preform or bottle made from a resin composition
comprising:
(I) at least one resin selected from the group consisting of a
polyester resin and a co-polyester resin; and
(II) a carbon black with an average primary particle size in a
range of 105 to 145 nanometers,
wherein the carbon black is lampblack, and
wherein the resin composition comprises from 2 ppm to
10 ppm by weight of the carbon black based on a total weight
of the resin composition.
Appeal Br. iii (Claims App.).
REJECTIONS4
The Examiner maintains the following rejections on appeal:
Rejection I: Claims 37, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Foltin et al. (US 4,959,406, issued September 25, 1990)
(“Foltin”) and Gaiser (US 4,194,641, issued March 25, 1980) (Final Act. 3—
5); and
4 In the Answer, the Examiner withdrew the rejection of claims 21-30 and
32 under 35 U.S.C. § 103(a) as unpatentable over Kezios et al.
(US 2007/0248778 Al, published October 25, 2007) in view of Pengilly
(US 4,408,004, issued October 4, 1983), Temple C. Patton, “Properties and
EconomicsPigment Handbook, Vol. 1, 742—743 (1976) (“Patton”), and
Gaiser.
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Application 13/349,072
Rejection II: Claims 37, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Zoch et al. (US 2010/0179270 Al, published July 15,
2010) (“Zoch”) in view of Gaiser (Final Act. 5—8).
DISCUSSION
Appellants argue the claims subject to both appealed rejections as a
group. We choose claim 37 as representative of the claims, and claims 38—
40 will stand or fall with claim 37. See 37 C.F.R. § 41.37 (c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejections essentially for the reasons set out by the Examiner in the
Final Office Action and Answer. We add the following.
Rejection I
The Examiner finds that Foltin discloses a polymer composition
comprising polyesters, such as polyethylene terephthalate or polybutylene
terephthalate, and carbon black, preferably lamp black with an average
particle diameter from 30 nm to 120 nm, which overlaps the size range
recited in claim 37. Final Act. 3 (citing Foltin Abstract, 1:10—18, 35—40, 56,
2:57-67).
The Examiner finds that Gaiser discloses that it is conventional in the
art to form bottles and containers from thermoplastic materials, such as
polyethylene terephthalate. Final Act. 3 (Gaiser 1:11—13).
The Examiner further finds that one of ordinary skill in the art would
have been led to form Foltin’s polyester composition into a bottle because
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doing so would be nothing more than using a known composition for its
intended purpose to achieve a predictable result. Final Act. 3.
Appellants’ argument that Foltin is not analogous art is not
persuasive. Appeal Br. 36—38.
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay,
966 F.2d 656, 658-59 (Fed. Cir. 1992). The Federal Circuit counsels us to
construe the scope of analogous art broadly. Wyers v. Master Lock Co., 616
F.3d 1231, 1238 (Fed. Cir. 2010) (citing KSR, 550 U.S. at 402 (Jamiliar
items may have obvious uses beyond their primary purposes, and a person of
ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle”)).
Appellants broadly define their field of invention as relating to
preforms made from polyethylene terephthalate resins by adding a carbon
black, preferably lamp black carbon black with a particle size of 100 to 160
nanometers. Spec. 1,11. 8—11. As the Examiner finds, Foltin discloses a
polymer composition comprising polyesters, such as polyethylene
terephthalate or polybutylene terephthalate, and carbon black, i.e. lamp black
carbon black, with an average particle size from 30 nm to 120 nm, and
utilized in the amount of up to 0.1 wt. %, i.e. up to 1,000 ppm, which is the
resin composition recited in the claim 37. Ans. 8. Accordingly, Foltin is
analogous art, and thus can be properly relied upon to support the
Examiner’s obviousness rejection.
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Application 13/349,072
Appellants argue that Foltin teaches away from the use of lamp black
in an application in which there should be no discoloration of the underlying
polymer. Appeal Br. 38.
Appellants’ argument is not persuasive of reversible error. First, as
the Examiner points out in the Answer (Ans. 14), claim 1 does not recite
anything about lack of discoloration of the underlying polymer. Thus,
Appellants are arguing limitations not recited in the claim. In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail
from the outset because, as the solicitor has pointed out, they are not based
on limitations appearing in the claims.”). In addition, we agree with the
Examiner that it is unclear how Foltin teaches away from using lamp black
when it specifically teaches that lamp black is a preferable carbon black for
its plastic material. Foltin 1:56.
Appellants argue that Gaiser is “unrelated” to laser written materials,
as disclosed in Foltin. Appeal Br. 39. Appellants also argue that the
Examiner failed to articulate a reason, absent hindsight, why it would have
been obvious to form Foltin’s laser writable moldings that are used for items
such as keys for typewriters into a bottle, particularly in view of the fact that
Foltin and the present application seek contradictory effects upon exposing
the composition to infrared radiation. Id.
Appellants’ arguments are not persuasive of reversible error. It is
well-settled that simply because two references have different objectives
does not preclude a person of ordinary skill in the art from combining their
respective teachings. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983)
(“The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
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Application 13/349,072
concerned.”) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)).
Moreover, as the Examiner explains, it is the Examiner’s position that the
combination of references applied against the present claims is not obtained
through hindsight but rather flow naturally from the explicit disclosures in
the references themselves. Ans. 15. The Examiner finds that Foltin
discloses molded articles made from a polyester composition, and Gaiser
discloses that bottles and other containers are conventionally blown from
thermoplastic materials, such as polyethylene terephthalate. Id. Based on
those disclosures, the Examiner finds that one of ordinary skill in the art
would have formed Foltin’s polyester composition into a bottle because
doing so would amount to nothing more than using a known composition for
its intended purpose, in a known environment, to accomplish entirely
expected results. Id. Appellants fail to identify any error in the Examiner’s
findings.
Appellants’ argument that the Examiner has failed to consider their
rebuttal evidence is unpersuasive. Appeal Br. 35. The Examiner considered
Appellants’ data but found it unpersuasive with regard to claim 37, 39 and
40. Ans. 2—7. Appellants’ evidence purportedly demonstrates that the use
of lampblack carbon black provides unexpected results in view of Pengilly
and Harrison, however, these references are not relied on in either rejection
on appeal. Appeal Br. 17—19; Ans. 2—3; Final Act. 3—8. Foltin, the primary
reference relied upon in the first-stated ground of rejection on appeal,
discloses a plastic that includes a lamp black carbon black with an average
particle diameter of from 30 nm to 120 nm. Foltin 1:1—18, 35—40, 56. Thus,
Appellants have not provided a comparison with the closest prior art, i.e.,
Foltin. “[Wjhen unexpected results are used as evidence of nonobviousness,
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Application 13/349,072
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
In view of the foregoing, we sustain the rejection of claims 37, 39, and
40 under 35 U.S.C. § 103(a) over Foltin and Gaiser.
Rejection II
The Examiner finds that Zoch discloses a polymer composition
comprising polyethylene terephthalate (PET) or polybutylene terephthalate
(PBT) and lamp black with an average primary particle size of 100 nm to
200 nm, overlapping the claimed range of 102 nm to 160 nm. Final Act. 5
(citing Zoch Abstract, || 17, 29).
The Examiner finds that Gaiser discloses that it is conventional in the
art to form bottles and containers from thermoplastic materials, such as
thermoplastic materials such as polyethylene terephthalate. Final Act. 6
(Gaiser 1:11-13).
The Examiner further finds that one of ordinary skill in the art would
have been led to form Zoch’s polyester composition into a bottle because
doing so would be nothing more than using a known composition for its
intended purpose to achieve a predictable result. Final Act. 6.
Appellants argue that the object of Zoch is completely unrelated to
that of the present application as Zoch is focused on the preparation of a
lamp black with a reduced level of structure and improved tinting power.
Appeal Br. 41.
Appellants’ argument is not persuasive because establishing a prima
facie case of obviousness does not require that the references solve the same
problem solved by the inventor. In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992) (“[a]s long as some motivation or suggestion to combine the
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Application 13/349,072
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor”) (citations omitted).
Appellants argue that Zoch neither discloses nor reasonably suggests
an amount of carbon black that overlaps or abuts the claimed range of 2 ppm
to 10 ppm. Appeal Br. 43. Appellants also argue that the Examiner erred in
finding that because any amount of lamp black carbon black would adjust
tint, it would have been obvious to use a concentration of 2 ppm to 10 ppm
lamp black to tint Zoch’s plastic composition. Id.
Appellants’ arguments are not persuasive of reversible error. The
Examiner finds that Zoch discloses that increasing the lamp black
concentration increases tint strength, thereby indicating that the amount of
lamp black is a result-effective variable. See Final Act. 6 (citing Zoch 146).
Consequently, the Examiner’s determination that it would have been
obvious to optimize by routine experimentation the amount of lamp black
for a desired tint of the polyester (Final Act. 6) is supported by a
preponderance of the evidence.
Appellants’ argument that the Examiner has failed to consider their
rebuttal evidence regarding claims 37, 39, and 40 (Appeal Br. 44-45) is
unpersuasive for the same reasons as discussed above with Rejection I. That
is, Appellants’ evidence does not demonstrate an unexpected result as
compared with the closest prior art.
In view of the foregoing, we sustain the rejection of claims 37, 39, and
40 under 35 U.S.C. § 103(a) over Zoch and Gaiser.
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DECISION
For the above reasons, the rejections of claims 37, 39, and 40 are
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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