12092057 (B.P.A.I. Mar. 15, 2012)

Ex Parte Waddell et al

Board of Patent Appeals and InterferencesMar 15, 2012

12092057 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/092,057 04/29/2008 Walter Harvey Waddell 2005B149 8133 23455 7590 03/15/2012 EXXONMOBIL CHEMICAL COMPANY 5200 BAYWAY DRIVE P.O. BOX 2149 BAYTOWN, TX 77522-2149 EXAMINER LENIHAN, JEFFREY S ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 03/15/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WALTER HARVEY WADDELL, DAVID YEN-LUNG CHUNG, ROBERT CHRISTOPHER NAPIER, and DONALD SHELEY TRACEY ____________ Appeal 2011-000955 Application 12/092,057 Technology Center 1700 ____________ Before CHARLES F. WARREN, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000955 Application 12/092,057 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 42-47, 49-53, and 55-60. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to a mixed ionic/electronic conducting membrane. Claim 42 is illustrative: 42. A process to produce an elastomeric composition, the process comprising contacting at least one elastomer with 1 to 30 phr of a processing aid having a number average molecular weight (MWn) of from 450 to 5,000, wherein the processing aid comprises at least one functionalized polymer having at least one halogen group. Appellants request review of the following rejections from the Examiner’s Final Office action (App. Br. 8): Claims 42-47, 49, 50, 53, and 55-60 stand rejected under 35 U.S.C. § 103(b) as obvious over Coddington (US 3,769,122, issued Oct. 30, 1973), and claims 51 and 52 further rejected as obvious over Coddington in view of Duvdevani (US 5,698,640, issued Dec. 16, 1997). OPINION The dispositive issue on appeal for these rejections is: Did the Examiner err in determining that Coddington would have led one skilled in the art to produce an elastomeric composition comprising contacting at least one elastomer with 1 to 30 phr of a processing aid having a number average Appeal 2011-000955 Application 12/092,057 3 molecular weight (MWn)1 of from 450 to 5,000 as required by the subject matter of independent claim 42? 2 We answer this question in the affirmative and we REVERSE. During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner found that Coddington discloses a process to produce an elastomeric composition comprising least one elastomer, a high molecular weight (HMW) chlorobutyl rubber and a processing aid, a low molecular weight (LMW) chlorobutyl rubber. (Ans. 3). The Examiner found that Coddington teaches that the LMW butyl rubber component is characterized by a Mn of at least 5000. (Id. at 4). The Examiner recognized that Coddington did not disclose the claimed amount, 1 to 30 phr, of the processing aid. However, the Examiner found that, Coddington requires that the blend of the HMW chlorobutyl rubber and the LMW chlorobutyl rubber to have a calculated viscosity average molecular weight (Mv) in the range of 28,000 to 285,000 and therefore it would have been obvious to one of ordinary skill in the art to vary the amount of the LMW chlorobutyl rubber 1 Appellants also use the designation “Mn” but the Examiner and Coddington use the art recognized designation “Mn” for “number average molecular weight.” Spec. ¶ 00109; Ans. 4; Coddington col. 6, ll. 54-56. 2 We will focus our discussion on independent claim 42. Appeal 2011-000955 Application 12/092,057 4 component through routine experimentation in order to obtain the desired final calculated average Mv for the polymer composition. (Id. at 4-5). We agree with Appellants that Coddington fails to teach or suggest a LMW rubber component that is used in the amount of 1 to 30 phr, and has an Mn of 450 to 5,000 as required by the claimed invention. (App. Br. 10). Appellants argue that the exemplified embodiments of Coddington describe rubber blends containing LMW rubber in the range of 66 to 230 phr which amounts are substantially outside of the claimed range. (Id.). It is recognized that Coddington teaches that the LMW rubbers have a Mw/Mn ratio of about 4.0 and an Mn of “at least 5,000.” Coddington col. 6, ll. 49-56. However, while the Mn of 5,000 value falls within the claimed range, the Examiner has not provided a logical explanation for one of ordinary skill in the art to form a HMW/LMW rubber blend having a Mv in the range of 28,000 to 285,000 as required by Coddington, utilizing only 1 to 30 phr LMW rubber having a Mn of 5,000. For the foregoing reasons and those presented by Appellants, we determine that the Examiner’s conclusion of obviousness is not supported by facts. “Where the legal conclusion [of obviousness] is not supported by facts it cannot stand.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, the Examiner’s rejection of claims 42-47, 49, 50, 53, and 55- 60 over Coddington is reversed. We note that the Examiner rejected dependent claims 51 and 52 under 35 U.S.C. § 103(a) as unpatentable over the combination of Coddington and Duvdevani. (Ans. 5-6). Duvdevani was cited to meet respective limitations of these dependent claims. (Id.). Duvdevani does not remedy the identified deficiency of Coddington discussed above. Therefore, we also cannot Appeal 2011-000955 Application 12/092,057 5 sustain the Examiner’s rejection of dependent claims 51 and 52 under 35 U.S.C. § 103(a) for the reasons given above. Accordingly, we reverse this rejection as well. ORDER The Examiner’s decision to reject claims 42-47, 49, 50-53, and 55-60 under 35 U.S.C. § 103(a) is reversed. REVERSED kmm