Ex Parte Wang et al

Patent Trial and Appeal Board

Jul 26, 2018

14315095 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/315,095 06/25/2014
23556 7590 07/30/2018
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
James Hongxue Wang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64923280US02 2372
EXAMINER
GUGLIOTTA, NICOLET
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
Kimberlyclark. docketing@kcc.com
Cindy.M.Trudell@kcc.com
Tisha.Sutherland@kcc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES HONGXUE WANG,
BRENT MERRIK THOMPSON,
and GREGORY JAMES WIDEMAN
Appeal2017-010239
Application 14/315,095
Technology Center 1700
Before KAREN M. HASTINGS, RAEL YNN P. GUEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 10-20. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Kimberly-Clark Worldwide, Inc., which is also
stated to be the Real Party in Interest (Br. 1 ).
Appeal2017-010239
Application 14/315,095
Claim 10 is illustrative of the subject matter on appeal ( emphasis
added to highlight key disputed limitation):
10. A sustainable thermoplastic film comprising:
30 to 70 parts by weight of 100 percent virgin polyolefin; and
the remaining parts by weight of a post-industrial-recycled
material (PIR), wherein the PIR comprises a styrenic,
thermoplastic block-copolymer, and wherein the film thickness
is 100 micrometers or less.
The Examiner's rejections under 35 U.S.C. § I03(a) on appeal are:
A. Claims 10-14 and 16-20 as unpatentable over Kneale et al. (US
5,128,212, issued July 7, 1992) ("Kneale") in view of
Mueller et al. (EP O 802 046 A2, published Oct. 22, 1997)
("Mueller"); and
B. Claims 10-20 as unpatentable over the combined prior art of
Krautkramer (US 6,231,557 Bl, issued May 15, 2001), Ying et al.
(US 6,245,401 Bl, issued June 12, 2001) ("Ying"), and
Meyer et al. (US 7,855,316 B2, issued Dec. 21, 2010) ("Meyer").
At the outset, we summarily affirm the Examiner's provisional
obviousness type double patenting rejection of claims 10, 12, 17, 18, and 20
over specified claims of Application No. 14/138,325 in view of Topolkaraev
(US 2010/0048081 Al, published Feb. 25, 2010) (Final Action 9) as
Appellant presents no arguments directed towards this rejection (Appeal Br.
6). Cf Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("In the event
of ... a waiver, the PTO may affirm the rejection of the group of claims that
the examiner rejected on that ground without considering the merits of those
rejections.").
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Appeal2017-010239
Application 14/315,095
ANALYSIS
We have reviewed each of Appellant's arguments for patentability.
However, we sustain the Examiner's rejections for essentially those reasons
expressed in the Answer, including the Response to Argument section, and
we add the following primarily for emphasis.
The Examiner's determination that the claims are directed to products
and that the key limitations in dispute involve a recycling process by which
some of the components of the product were made is not in dispute
(generally Br.; Ans.). Appellant's main argument focuses on the lack of the
applied prior art to explicitly state that the styrenic, thermoplastic block
copolymer was made from "a post-industrial-recycled material (PIR)" as
recited in claims 10. The use of a specific starting material as claimed and
argued by Appellant is a process limitation.
It has been well established that, when a product recited in product-
by-process format reasonably appears to be the same as or obvious from a
product of the prior art, the burden is on applicant to show that the prior art
product is in fact different from the claimed product, even though the
products may be made by different processes. In re Thorpe, 777 F .2d 695,
697 (Fed. Cir. 1985).
The applied prior art in each rejection establishes that a product as
claimed would have been obvious for reasons set out by the Examiner.
Indeed, the applied prior art in Rejection A establishes that the use of
recycled thermoplastic polymer materials is known in a multilayer heat
shrinkable film (see, e.g., Kneale, Title, Abstract, col. 2, 1. 25 to col. 3, 1. 27).
Mueller exemplifies the obvious use of styrenic, thermoplastic block
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Appeal2017-010239
Application 14/315,095
copolymer in a heat shrinkable film. Mueller 3, 11. 16-19. One of ordinary
skill in the art would have been aware of the ubiquitous use of recycled
materials to, e.g., save non-renewable resources, save energy, and reduce
waste. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (It has been
established that "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ."); see also In re Fritch, 972 F.2d
1260, 1264---65 (Fed. Cir. 1992) (a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom).
With respect to Rejection A, Appellant mainly argues the references
individually, and also contends that there is no reason to include elastomeric
styrene block copolymer of Mueller in Kneale (Br. 3, 4). These arguments
are unpersuasive for reasons set out by the Examiner (Ans. 3, 4). Appellant
has not shown error in the Examiner's determination that one of ordinary
skill, using no more than ordinary creativity, would have used a recycled
source of styrenic, thermoplastic block copolymer as a recycled polymer of
Kneale' s product which also contains polyolefin, especially considering that
claim 10 only requires a de minimis amount of styrenic, thermoplastic block
copolymer.
With respect to Rejection B, Appellant contends that PIR is a specific
starting material that is not taught or suggested in the applied references (Br.
6). This argument is unavailing, since, as pointed out by the Examiner, the
use of the recycled material of claim 10 is a product-by-process limitation
(Ans. 5-7). The end result of a de minimis amount of styrenic,
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Application 14/315,095
thermoplastic block-copolymer with 30 to 70 parts by weight polyolefin for
a thermoplastic film is rendered obvious by the applied prior art as a whole.
Appellant has not contended, nor provided any evidence, that the structure of
the product made with, e.g., 30 parts by weight PIR with a de minimis
amount of styrenic, thermoplastic block-copolymer as recited in claim 10 is
somehow different than structure of the thermoplastic film made with
styrenic, thermoplastic block-copolymer and polyolefin of the applied prior
art.
Accordingly, on this record, Appellant has failed to demonstrate that a
product made from a recycled material results in a structural difference from
the materials of the applied prior art. In re Thorpe, 777 F .2d at 697; cf In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255
(Fed. Cir. 1977).
Appellant has not persuasively presented facts or reasons to convince
us that the Examiner failed to establish a prima facie case of obviousness as
to the claims on appeal. Accordingly, we sustain each of the § 103
rejections of the claims on appeal.
We also affirm the Examiner's provisional obviousness type double
patenting rejection.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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