Paola Massari et al.

Patent Trials and Appeals Board

Oct 23, 2019

13698608 - (D) (P.T.A.B. Oct. 23, 2019)

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.
13/698,608 12/12/2012 Paola Massari FE6606 4325
24114 7590 10/23/2019
LyondellBasell Industries
Legal IP Department
1221 McKinney Street, Suite 700
LyondellBasell Tower
Houston, TX 77010
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
10/23/2019 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):
legal-IP@lyondellbasell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAOLA MASSARI, MARCO CIARAFONI,
and TIZIANA CAPUTO
____________________
Appeal 2018-008554
Application 13/698,608
Technology Center 1700
____________________

Before JEFFREY B. ROBERTSON, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 5–8, and 10–16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision, we refer to the Non-final Office Action dated May 19,
2017 (“Non-final Act.”); the Final Office Action dated October 12, 2017
(“Final Act.”); the Appeal Brief filed March 9, 2018 (“Appeal Br.”); and the
Examiner’s Answer dated May 29, 2018 (“Ans.”). Appellant does not file a
Reply Brief.
2 We use the word “Appellant” to refer to the applicant as defined by 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Basell
Poliolefine Italia, S.R.L. Appeal Br. 2.
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The invention relates to a propylene composition having what are said
to be improved balance of mechanical properties and excellent physical
properties. Spec. 1, ll. 8–11. The propylene polymer composition is said to
be particularly suitable for production of injection molded articles and films,
which requires good flexibility and softness combined with high impact
strength and good transparency. Spec. 1, ll. 12–14. Claim 1 is reproduced
below from the Claims Appendix of the Appeal Brief and illustrates the
claimed subject matter:
1. A propylene polymer composition consisting essentially
of:
A) 70-94 wt. % of a propylene-ethylene copolymer
comprising 3.1-4 wt. % of ethylene derived units; and
B) 6-30 wt. % of a second propylene-ethylene copolymer
that is completely soluble in xylene comprising 41-55 wt. % of
ethylene derived units;
wherein the propylene polymer composition has:
(i) a melt flow rate of 0.1-5 g/10 min, measured at 230 °C
with a load of 2.16 kg;
(ii) an intrinsic viscosity of the fraction soluble in xylene
at room temperature of 2-4 dl/g;
(iii) a flexural modulus of 300-600 MPa;
(iv) at least one melting peak in a temperature range of
140-150 °C as determined via differential scanning calorimetry
(DSC); and
(v) at least one additive selected from the group
consisting of antioxidants, light stabilizers, nucleating agents,
antiacids, colorants, fillers and combinations thereof.
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Leonard et al.
(“Leonard”)
US 5,326,639 July 5, 1994
Pitkanen et al.
(“Pitkanen”)
US 6,342,564 B1 Jan. 29, 2002
Braga et al.
(“Braga”)
US 6,673,855 B1 Jan. 6, 2004
Borealis Tech. Oy
(“Borealis”)
EP 1 661 935 A1 May 31, 2006
REJECTION
The Examiner maintains the following rejections3:
A. Claims 1, 6–8, and 10–16 under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
obvious over Leonard as evidenced by Braga;
B. Claims 1, 5–8, and 10–16 under 35 U.S.C. § 102(a)(1) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
obvious over Pitkanen as evidenced by Braga;
C. Claims 5–8 and 10–16 under 35 U.S.C. § 103(a) as obvious
over Leonard in view of Borealis, as evidenced by Braga;
D. Claims 1, 5–8, and 10–16 under 35 U.S.C. § 103(a) as obvious
over Leonard in view of Braga; and
E. Claims 1, 5–8, and 10–16 under 35 U.S.C. § 103(a) as obvious
over Pitkanen in view of Braga. Final Act. 3–8.

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.

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OPINION
Appellant argues the claims as a group. Appeal Br. 4–10. We select
the sole independent claim, claim 1, as representative of the groups
identified in Rejections A, B, D, and E. 37 C.F.R. § 41.37(c)(1)(iv). The
claims in Rejection C do not include claim 1, therefore we select claim 5 as
representative of this group.
Rejection A: claims 1, 6–8, and 10–16 as anticipated by or obvious
over Leonard, as evidenced by Braga
With respect to claim 1, the Examiner finds that Leonard discloses a
thermoplastic polymer composition comprising: (A) 60–85 parts of a
copolymer with an alpha olefin having the formula H2C=CHR, where R is
H, containing over 85 wt.% of propylene units, specifically propylene-
ethylene copolymer having 95–98 wt.% of propylene and having intrinsic
viscosity of 0.5–3 dl/g; (B) about 1 wt.% of a semi-crystalline linear
copolymer of ethylene and propylene, having intrinsic viscosity of 1–3 dl/g;
(C) 10–39 parts of a copolymer of propylene with 30–80 wt.% of the alpha-
olefin having the above formula, preferably 40–75 wt.%, soluble in xylene at
room temperature, specifically propylene-ethylene copolymer and having
intrinsic viscosity of 1–3 dl/g; wherein the composition comprises flexural
modulus of lower than 1000 MPa to 150 MPa, preferably 150–700 MPa,
such as 500 MPa. Non-Final Act. 5.
The Examiner finds that Leonard’s composition comprises
components (A) and (C) as the major components, with (B) used in an
amount of “about 1 wt.%,” which the Examiner finds may be less than 1
wt.%. Id. at 6. The Examiner construes “consisting essentially of” as
equivalent to “comprising.” Id. at 7. The Examiner finds nothing of record
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to suggest that the addition of 1 wt.% or less of component (B) of Leonard
affects the novel and/or basic characteristics of Leonard’s thermoplastic
olefin polymer. Id. at 6.
The Examiner finds that Leonard’s component (A) inherently
comprises 2–5 wt.% of an alpha olefin having the formula H2C=CHR where
R is H (i.e., ethylene units) because the propylene-ethylene copolymer has
95–98 wt.% of propylene units. Id. at 7. Regarding the claimed melt flow
rate and intrinsic viscosity elements of the claim, the Examiner finds that
Examples 5 and 6 of Leonard have melt flow rates of 1.3–4.5 g/10 min and
intrinsic viscosities of 1.56–2.75 dl/g. Id. at 8.
The Examiner finds that Leonard teaches component (C) is soluble in
xylene at room temperature. Id. Claim 1 requires a second propylene-
ethylene copolymer that is completely soluble in xylene. Appeal Br. 12
(Claims App.). The Examiner acknowledges that Leonard does not specify
that component (C) as “completely soluble” in xylene, but finds that (i)
component (C) is specified as being amorphous and soluble in xylene; (ii)
elastomeric/amorphous properties, and thus the solubility in xylene,
increases with increased content of ethylene units; (iii) component (C) of
Leonard is 40–75 wt.% ethylene. Non-Final Act. 8. The Examiner finds
that Leonard’s component (C) is substantially the same as the second
propylene-ethylene copolymer of claim 1 (comprising 41–55 wt.% of
ethylene derived units), thus inherently will be or is reasonably expected to
be completely soluble in xylene at room temperature. Id. The Examiner
finds that Braga provides evidence that propylene-ethylene copolymers
having 20–60 wt.% of ethylene are completely soluble in xylene at 25°C.
Id. (citing Braga 3:19–22).
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The Examiner finds that Leonard’s composition comprises 60–85
wt.% propylene-ethylene copolymer comprising 2–5 wt.% ethylene and 10–
39 wt.% copolymer of propylene with 40–75 wt.% ethylene units. Id. at 9.
The Examiner acknowledges that Leonard does not explicitly recite a
melting peak of the composition, but finds that (i) Leonard’s composition is
substantially the same as that claimed (comprising two propylene-ethylene
copolymers used in relative amounts and/or overlapping ranges to those
claimed, with substantially the same and/or overlapping ranges of ethylene
comonomer to those claimed); and (ii) the crystallinity of the polypropylene
composition, and thus its melting points, depends on the relative amounts of
propylene and ethylene units. Id. The Examiner determines that Leonard
will inherently or reasonably be expected to have at least one melting peak
in a temperature range of 140–150°C, as claimed. Id.
The Examiner finds that here the claimed and prior art products are
identical or substantially identical in structure or composition, or are
produced by identical or substantially identical processes, therefore, a prima
facie case of either anticipation or obviousness is established. Id. at 8 (citing
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant argues that the similarities of Leonard (as well as Braga,
Pitkanen, and Borealis) to the claimed invention are neither suggested nor
supported when reading the reference in its entirety. Appeal Br. 6.
Appellant contends that Leonard disadvantageously requires polymeric
compositions comprising three or more components, which the claimed two
component propylene polymer beneficially avoids, as reflected by the
“consisting essentially of” transitional phrase. Id.
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Appellant contends that a mixture of component A and component B
do not intrinsically or necessarily have a viscosity that falls between the
lower limit of component A’s contribution to the viscosity of a solution and
component B’s contribution to the viscosity of a solution. Id. at 7.
Appellant argues that the Examiner’s conclusion has no rationale or
evidence in support. Id.
Appellant argues that Leonard does not reduce the number of options
available for arriving at the claimed invention to a finite number of
solutions, particularly in view of the inherent unpredictability in the
chemical arts. Id. at 8. According to Appellant, one of ordinary skill in the
art would have numerous possible choices and combinations of
polypropylene/polyethylene concentrations and processing conditions to
arrive at the result produced by claim 1. Id.
Appellant also contends that the claimed polypropylene compositions
provide surprising benefits, including enhanced mechanical properties,
including but not limited to improved flexibility and impact properties. Id.
at 8–9. Appellant argues that Table 2 of the Specification shows Izod
impact resistance of Examples 1 and 2 is improved by up to 20-fold
compared to Comparative Example 1. Id. at 9. Appellant argues that such
unexpected properties teach away from combining known elements. Id.
We address Appellant’s arguments in the order in which they are
raised.
First, Appellant contends that the two component polymer
composition of claim 1 “beneficially avoid[s]” the “disadvantage[]” of
polymeric compositions comprising three or more components. See Appeal
Br. 6. Appellant provides no reasoning or analysis of why two components
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are beneficial or three components are disadvantageous. See id., generally.
Moreover, “consisting essentially of” limits the scope of a claim to the
specified materials and “those that do not materially affect the basic and
novel characteristic(s)” of the claimed invention (emphasis added). In re
Herz, 537 F.2d 549, 551–52 (CCPA 1976); see also PPG Indus. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (“By using the term
‘consisting essentially of,’ the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.”); In re
Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963) (“The word ‘essentially’
[in the phrase ‘consisting essentially of’] opens the claims to the inclusion of
ingredients which would not materially affect the basic and novel
characteristics of appellant’s composition as defined in the balance of the
claim, according to the applicable law.”). Appellant has the burden of
showing the basic and novel characteristics of the claimed composition. In
re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). However, Appellant does
not adequately refute the Examiner’s finding that the record fails to show
that less than 1 wt.% of Leonard’s component (B) materially affects the
basic and novel characteristics of Leonard’s polymer. In addition, we agree
with the Examiner’s determination that Leonard’s component (B) may be
considered to fall within claim 1’s required “at least one additive.” See Ans.
23–24.
Second, Appellant argues that the intrinsic viscosity of a mixture of
component A and component B is not intrinsically or necessarily a viscosity
that falls between the lower limit of component A’s contribution to the
viscosity of a solution and component B’s contribution to the viscosity of a
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solution. Appeal Br. 7. Claim 1 requires that the composition have “an
intrinsic viscosity of the fraction soluble in xylene at room temperature of 2–
4 dl/g.” Id. at 12 (Claims App.). Leonard discloses that its component (C),
which the Examiner finds is equivalent to component B of claim 1, has an
intrinsic viscosity of from 1 to about 3 dl/g, substantially overlapping the
claimed range. See Leonard 4:24–27. Anticipation may be established
when there is a substantial overlap between the ranges disclosed in the prior
art and recited in claims such that one of ordinary skill in the art could
readily envisage the claimed range from the prior art range. Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1345 (Fed. Cir. 1999) (Anticipation was
presumed based on a substantial overlap between the claimed ranges of
ingredients in an explosive composition and the ranges of the same disclosed
in a prior art reference.). A prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
Accordingly, Appellant’s argument is not commensurate in scope with claim
1.
Third, Appellant contends that Leonard (and Borealis) do not reduce
the number of options available to one of ordinary skill in the art to a finite
number of solutions. Appeal Br. 8. Where one is required to “merely
throw[] metaphorical darts at a board” in hopes of arriving at a successful
result, but “the prior art gave either no indication of which parameters were
critical or no direction as to which of many possible choices is likely to be
successful,” courts should reject “hindsight claims of obviousness.” In re
Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting In re O’Farrell, 853
F.2d 894, 903 (Fed. Cir. 1988). However, in the case at bar, Leonard
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discloses ranges of components (A) and (C) that overlap the claimed ranges,
leaving the skilled artisan to merely pursue “known options” from “a finite
number of identified, predictable solutions.” See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007).
Appellant’s fourth argument is that the claimed invention provides
“surprising benefits.” Appeal Br. 8–9. For surprising benefits (unexpected
results) to be probative evidence of non-obviousness Appellant must at least
establish: (1) “there actually is a difference between the results obtained
through the claimed invention and those of the prior art, In re Klosak, 455
F.2d 1077, 59 CCPA 862 (1972); and (2) that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention, id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971).”
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). Moreover, “when
unexpected results are used as evidence of nonobviousness, 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). And “the
burden of showing unexpected results rests on he who asserts them.” In re
Klosak, 455 F.2d at 1080. Unexpected results must also be “commensurate
in scope with the degree of protection sought by the [claims on appeal].” In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983) (It is well settled “that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.”).
Appellant’s arguments fail to meet any of the requirements needed to
show surprising and unexpected results that make claim 1 patentable over
Leonard. Appellant provides attorney argument, but no evidence, that one
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of ordinary skill in the art would not have expected the results obtained.
Appellant contends that the single comparative example tested in the
Specification is “in accordance with the preferred embodiments of Leonard
and Borealis,” but provides nothing more in support, thus does not meet its
burden of proof. See Appeal Br. 9. Appellant compares only two examples
to a single comparative example (see Spec. 11–12, Table 2), thus the
evidence is not commensurate in scope with the breadth of claim 1.
Moreover, Appellant fails to establish that there is an unexpected difference
in properties between Comparative Example 1 and Examples 1 and 2. See
Spec. 12. All three compositions tested have copolymer A content,
copolymer B content falling with the claimed ranges. Spec. 12, Table 2.
Comparative Example 1 has a melt flow rate and melting peak within the
ranges recited in claim 1. Id. Flexural Modulus of Comparative Example 1
was not tested, and thus cannot be compared. Although the intrinsic
viscosity of Comparative Example 1 of 1.58 dl/g is outside the claimed
range of 2–4 dl/g (id.), the Specification indicates that the polymer
composition is broadly from 1–4.5 dl/g, which includes the intrinsic
viscosity of the composition in Comparative Example 1. Spec. 3, ll. 7–10.
Accordingly, Appellant does not sufficiently demonstrate unexpected or
surprising results.
Finally, Appellant contends that at least Leonard and Borealis teach
away from the claimed invention. See Appeal Br. 9. However, teaching
away requires that a reference “criticize, discredit, or otherwise discourage
the solution claimed” by Appellant. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Appellant identifies nothing in any of the cited references that
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“criticize(s), discredit(s), or otherwise discourage(s)” production of claim
1’s propylene polymer composition.
We sustain the Examiner’s rejection of claim 1 for the reasons given
above. For these same reasons, we sustain the rejection of claims 6–8 and
10–16 in accordance with 37 C.F.R. § 41.37(c)(1)(iv).
Rejection B: claims 1, 5–8, and 10–16 as anticipated by or obvious
over Pitkanen, as evidenced by Braga
Appellant’s arguments directed to Pitkanen are (1) the alleged
similarities of the teachings of Pitkanen (as well as Leonard, Braga, and
Borealis) are not suggested or supported when reading the references in their
entirety (Appeal Br. 7); (2) the claims’ requirement that component B is
completely soluble in xylene is not possible with the significant, amorphous
fraction of the composition disclosed in Pitkanen (id. at 8); (3) the claimed
composition provides surprising benefits and unexpected properties (id. at
8–9).
The Examiner finds that amorphous polymers are soluble in xylene at
room temperature, thus Pitkanen’s component B will inherently be or
reasonably be expected to be completely soluble in xylene. Ans. 24 (citing
Pitkanen 3:3–4). The Examiner also finds that Pitkanen discloses that
component B is alternatively “amorphous or semicrystalline/amorphous,”
and “may” comprise a crystalline phase, thus would be reasonably expected
to be completely soluble in xylene when free from the crystalline phase. Id.
Other than a one-sentence assertion, Appellant provides no further
analysis or explanation of why Pitkanen’s disclosure fails to teach the
claimed composition. Appellant provides no counter argument to the
Examiner’s finding that Pitkanen’s amorphous portion would be completely
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soluble in xylene. For reasons discussed supra, Appellant does not show
surprising and unexpected results with the claimed composition.
Appellant fails to show that the Examiner reversibly erred in rejecting
claim 1 and the dependent claims as anticipated by or obvious over Pitkanen,
as evidenced by Braga.
Rejection C: claims 5–8, and 10–16 as obvious over Leonard in view
of Borealis, as evidenced by Braga
Claims 5–8 and 10–16 depend directly from claim 1. Appeal Br. 12–
13. We held claims 6–8 and 10–16 to be anticipated by and obvious over
Leonard in Rejection A supra, therefore we need not address these claims
further. Claim 5, not subject to the previous rejections, requires “[a] film
comprising the propylene polymer composition of claim 1.” Id. at 12.
The Examiner relies on the disclosures of Leonard as evidence by
Braga discussed in relation to claim 1. Final Act. 6 (citing Non-Final Act.
22–24). The Examiner finds that Leonard does not explicitly disclose a film,
but finds that Borealis teaches a composition and film, the composition
having amounts of components A and B within the claimed ranges, and
intrinsic viscosity of each of components A and B within the claimed range.
Non-Final Act. 23. The Examiner determines that it would have been
obvious to one of ordinary skill in the art to use Leonard’s composition for
making films, as taught by Borealis, because both references teach
propylene-ethylene copolymer compositions having low MRF and low
intrinsic viscosity used for making molded articles, and the films produced
comprise very good tear features. Id. at 24.
Appellant does not address the Examiner’s finding regarding
Borealis’s teaching of a film. See generally Appeal Br. Appellant argues
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that “both Leonard and Borealis disadvantageously require polymeric
compositions comprising three or more components, which is beneficially
avoided by the two component, [polypropylene] based composition of the
[claimed] invention as reflected and clearly encompassed by the ‘consisting
essentially of’ transitional phrase.” Appeal Br. 6.
We addressed Appellant’s argument in relation to Rejection A supra.
As stated, Appellant has the burden of showing the basic and novel
characteristics of the claimed composition in order to demonstrate that three
components are excluded by the claim. In re De Lajarte, 337 F.2d at 874.
Appellant fails to adequately refute the Examiner’s finding.
Appellant also contends that the Examiner has not provided any facts
to support the assertion that the composition of Borealis would have the
claimed intrinsic viscosity. Appeal Br. 7.
In response, the Examiner cites to Borealis at paragraphs 5 and 20,
which disclose intrinsic viscosity. Ans. 25. Appellant fails to reply to this
finding.
Appellant does not show reversible error in the Examiner’s rejection
of claim 5.
Rejection D: claims 1, 5–8, and 10–16 as obvious over Leonard in
view of Braga
Having found the claims to be anticipated by and obvious over
Leonard supra, we need not address this rejection further.
Rejection E: claims 1, 5–8, and 10–16 as obvious over Pitkanen in
view of Braga
Having found the claims to be anticipated by and obvious over
Pitkanen supra, we need not address this rejection further.
We sustain the Examiner’s rejections of claims 1, 5–8, and 10–16.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § References(s)/Basis Affirmed Reversed
1, 6–8, 10–
16
102(a) or
103(a)
Leonard, Braga 1, 6–8, 10–
16

1, 5–8, 10–
16
102(a) or
103(a)
Pitkanen, Braga 1, 5–8, 10–
16

5–8, 10–16 103(a) Leonard, Borealis,
Braga
5–8, 10–16
1, 5–8, 10–
16
103(a) Leonard, Braga 1, 5–8, 10–
16

1, 5–8, 10–
16
103(a) Pitkanen, Braga 1, 5–8, 10–
16

Overall
Outcome
1, 5–8, 10–
16

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