11935093 (B.P.A.I. Nov. 9, 2010)

Ex Parte Williams et al

Board of Patent Appeals and InterferencesNov 9, 2010

11935093 (B.P.A.I. Nov. 9, 2010)

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. 11/935,093 11/05/2007 Martha K. Williams KSC-12697-3 7195 25190 7590 11/09/2010 NASA JOHN F. KENNEDY SPACE CENTER MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL ATTN: PATENT COUNSEL KENNEDY SPACE CENTER, FL 32899 EXAMINER TRUONG, DUC ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 11/09/2010 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 MARTHA K. WILLIAMS and TRENT M. SMITH ____________ Appeal 2010-001115 Application 11/935,093 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and CATHERINE Q. TIMM, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal from the final rejection of claims 46-53. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. A copy of illustrative claim 46 is appended to this decision. 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 2010-001115 Application 11/935,093 2 The Examiner relies upon the following references in the rejection of the appealed claims: Chang, "Characterization of Two Precursor Polyblends: Polyhydroxyamide and Poly(AmicAcid)," Polymer Engineering And Science, Vol. 40, No. 2, pp. 320-329 (2000). Yoo et al., "Molecular Composites of Fire Safe Polymers and Ionomer," Polymeric Materials: Science & Engineering, 90, p. 462-63 (2004). Appellants' claimed invention is directed to a method of using a heat- stable polymer. The heat-stable polymer, which may be a polyhydroxyamide (PHA), is blended with one or more other polymers to create a blend that is more durable than the one or more other polymers. Appellants' Specification defines "durability" as resistance to thermal degradation (see page 8, line 1). Appealed claims 46-53 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over either Chang or Yoo. We will sustain the Examiner's rejection of claims 46-48, 52, and 53 over Chang to the extent it is based upon § 103. There is no dispute that Chang, like Appellants, discloses a method of using PHA, a heat-stable polymer, by blending it with another polymer, PAA. Appellants argue, however, that since Chang does not report tests on durability, "the PHA/PAA blend prepared by Chang may not be more durable than pure PAA" (Br. 8, first full para.). However, as pointed out by the Examiner and acknowledged by Appellants, Chang expressly teaches that PHA enhances the thermal properties of the polymer blend and raises the initial decomposition temperature, and that the thermal stability of the blend is Appeal 2010-001115 Application 11/935,093 3 enhanced with increasing annealing temperature. Accordingly, since Appellants define the claimed property of "durability" as a resistance to thermal degradation, we fully concur with the Examiner that the polymer blend of Chang is more durable than PAA alone. Appellants' Specification disclosure of calculating the activation energy of thermal decomposition using the Flynn and Wall method does not further limit the scope of the claim term "durable." Concerning separately argued claim 48, we agree with the Examiner that the claimed amount of PHA in the blend, 0.1-10% by weight, would have been suggested by the examples of Chang depicted in Table 3, wherein the amount of PHA ranges from 100% to 0%. Also, it is well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In the present case Appellants have established no criticality for the claimed amount of PHA. As for separately argued claims 52 and 53 which recite specific calculated life times for the blend viz. a viz. the other polymer alone, it would have been a matter of obviousness for one of ordinary skill in the art to resort to routine experimentation to determine the amount of PHA to be used to achieve the desired increase in life time of the blend. We will not sustain the Examiner's rejection of claims 49-51 over Chang which recite specific polymers for the other polymer which are not disclosed by Chang. The Examiner has set forth no analysis for why the claimed blends would have been obvious to one of ordinary skill in the art. Appeal 2010-001115 Application 11/935,093 4 The Examiner states that the use of the terms “comprise' and “comprising” opens the claims to components other than those claimed including poly(amic) acid (Ans. 5, first full para.). However, whether the claims encompass the inclusion of poly(amic) acid is irrelevant to the issue of whether Chang would have rendered obvious a blend of PHA with the polymers recited in claims 49-51. We also agree with the Examiner that Chang's disclosure of the PHA blend on a glass plate qualifies as an article of manufacture. Appellants' broadly recited "article of manufacture" does not comprise any particular structure. Also, we are satisfied that one of ordinary skill in the art would have found it obvious to incorporate the blend of Chang in a variety of articles of manufacture. Turning to the rejection over Yoo, we will sustain the Examiner's § 103 rejection of claims 46-49 and 51-53. There is no dispute that Yoo discloses a blend of PHA and a polyester. It is Appellants' argument that Yoo does not disclose that the blend is more durable than the polyester alone. We appreciate that Yoo is silent with respect to the durability of the PHA-containing blend. However, when a claimed process or product reasonably appears to be substantially the same as a process or product disclosed by the prior art, the burden is on the applicant to prove that the prior art process or product does not necessarily or inherently possess characteristics attributed to the claimed process or product. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the present case, based on the evidence presented in Appellants' Specification, it is reasonable to conclude that the PHA/polyester blend Appeal 2010-001115 Application 11/935,093 5 disclosed by Yoo is more durable than the polyester alone. The claims on appeal evidence that a wide variety of polymers have their durability enhanced when blended with PHA, for example, nylon, polyesters, acrylic polymers, cellulosic polymers, vinyl polymers, liquid crystal polymers, polyurethanes, polyureas, polypyrroles, polythiophene, and polyanilines. Consequently, there is substantial evidence of record to support the reasonable conclusion that the blend of Yoo is more durable than the polyester. In cases such as this, the burden is shifted to Appellants to demonstrate otherwise. However, Appellants have proffered no objective evidence which demonstrates that the blend of Yoo is not more durable than the polyester. Regarding separately argued claims 47 and 48, Appellants, as noted above, have presented no evidence for the criticality of the claimed concentrations. We will not sustain the Examiner's rejection of claim 50 over Yoo. The Examiner has set forth no analysis for why it would have been obvious for one of ordinary skill in the art to blend the PHA of Yoo with polyisobutylene, polyethylene or polypropylene. In conclusion, we will sustain the Examiner § 103 rejection of claims 46-48, 52, and 53 over Chang, but reverse the Examiner's rejection of claims 49-51 over Chang. We will also sustain the Examiner's § 103 rejection of claims 46-49 and 51-53 over Yoo, but we will not sustain the Examiner's rejection of claim 50 of Yoo. Accordingly, the Examiner's decision rejecting the appealed claims is affirmed-in-part. Appeal 2010-001115 Application 11/935,093 6 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)(iv). AFFIRMED-IN-ART cam NASA JOHN F. KENNEDY SPACE CENTER MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL ATTN: PATENT COUNSEL KENNEDY SPACE CENTER, FL 32899 Appeal 2010-001115 Application 11/935,093 7 APPENDIX Appeal 2010-001115 Application 11/935,093 8