ARKEMA FRANCE

Patent Trials and Appeals Board

Sep 24, 2021

2021002712 (P.T.A.B. Sep. 24, 2021)

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.
14/411,820 12/29/2014 Benoît Brule 0078840-000147 5562
21839 7590 09/24/2021
BUCHANAN, INGERSOLL & ROONEY PC
1737 KING STREET
SUITE 500
ALEXANDRIA, VA 22314-2727
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENOÎT BRULE, GUILLAUME LE, PERRINE BABIN,
LAURENT B. CARTIER, and FRÉDÉRIC MALET
Appeal 2021-002712
Application 14/411,820
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s June 1, 2020 decision to finally reject claims 4–7 and 19–26
(“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). A video
hearing was held on September 21, 2021. A written transcript of the hearing
will be made part of the record.
We reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Arkema France (Appeal Br. 1).
Appeal 2021-002712
Application 14/411,820

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to the use of thermoplastic starch in
the manufacture of adhesive and ultrathin waterproof film (Abstract). The
thermoplastic starch is in the form of an alloy with hydrophilic thermoplastic
elastomer (TPE), which contains a specific amount of polyethylene glycol
(PEG) (id.). Claim 4, reproduced below from the Claims Appendix, is
illustrative of the claimed subject matter:
4. An adhesive waterproof-breathable film comprising an
alloy of thermoplastic starch and of hydrophilic thermoplastic
elastomer (TPE), said hydrophilic TPE comprising at least 50%
by weight of polyethylene glycol (PEG}, with regard to total
weight of said hydrophilic TPE;
wherein said hydrophilic TPE comprises:
a copolymer comprising polyurethane blocks
and PEG blocks (TPUs); and
at least one other hydrophilic TPE chosen
from the group consisting of copolymers
comprising polyamide blocks and PEG blocks
(PEBAs), copolymers comprising polyester blocks
and PEG blocks (COPEs) and their blends; and
wherein the adhesive waterproof-breathable film has a
thickness within a range of 5 μm to 25 μm.
REFERENCES
The evidence relied upon by the Examiner is:
Name Reference Date
Steenblock et al. US 5,614,588 March 25, 1997
Lorcks et al. US 6,096,809 August 1, 2000
Mariani et al. US 2004/0063865 A1 April 1, 2004
ScienceDirect, “Polymer Alloy – an overview” (August 16, 2019)
https://www.sciencedirect.com/topics/ engineering/polymer-alloy
(hereinafter “ScienceDirect”)
Bralla, Handbook of Manufacturing Processes - How Products,
Components and Materials are Made (2007) (“Bralla”)
Appeal 2021-002712
Application 14/411,820

3
REJECTIONS
1. Claims 4–7, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lorcks in view of Mariani and Bralla, with evidentiary
support from ScienceDirect.
2. Claims 21–26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lorcks in view of Mariani, Bralla, and Steenblock, with
evidentiary support from ScienceDirect.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“Filing a Board appeal does not, unto itself, entitle an appellant to de novo
review of all aspects of a rejection. If an appellant fails to present arguments
on a particular issue — or, more broadly, on a particular rejection — the
Board will not, as a general matter, unilaterally review those uncontested
aspects of the rejection.”), cited with approval in In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections.”)).
The Examiner finds that Lorcks discloses a film comprising a
thermoplastic starch and a copolyesteramide formed from diethylene glycol
(i.e., polyethylene glycol) (Final Act. 2). The Examiner further finds that a
person of ordinary skill in the art would have formed the copolyesteramide
of Lorcks as a block copolymer made of polyetheramide and diethylene
glycol blocks (id.) The Examiner relies on the definition of polymer alloy in
ScienceDirect to find that Lorcks’s addition of its copolyesteramide to the
thermoplastic starch creates a polymer alloy (Final Act. 3).
Appeal 2021-002712
Application 14/411,820

4
The Examiner finds that although Lorcks teaches a copolymer having
polyester, polyamide, and polyethylene glycol blocks, Lorcks does not
disclose the inclusion of a copolymer having polyurethane and PEG blocks
(id.). The Examiner further finds that Mariani teaches a polymer comprising
a hydrophilic plasticizer (PEG) reacted with a thermoplastic polyurethane,
which the Examiner finds is an elastomer as recited in the claims (id., citing
Mariani, Abstract, ¶¶ 1–3, 33, 41). The Examiner also finds that Mariani
teaches that “PEG is present in an amount ranging from 20 to 90% by
weight of the reacted composition” (id.). The Examiner finds that both
Lorcks and Mariani relate to waterproof breathable materials, and that a
person of ordinary skill in the art would have incorporated Mariani’s
PEG/thermoplastic polyurethane into the composition of Lorcks – and would
have selected from the amount of PEG taught by Mariani – in order to
provide improved elasticity and strength (id.).
With regards to the claimed hydrophilicity of the thermoplastic
elastomer, the Examiner finds that the composition suggested by the
combination of Lorcks and Mariani is what is described in the Specification
and, therefore, is presumed to be hydrophilic (Final Act. 4). With respect to
the claimed film thickness, the Examiner finds that Lorcks teaches that its
film is a blown film, but does not specify its thickness, and Bralla teaches
that blown films can have thicknesses of 2.5µm to 1.25 mm, which overlaps
with the claimed thickness range. Id.
Appellant first argues that Lorcks does not teach or disclose the use of
a hydrophilic polymer and, in fact, requires the use of a hydrophobic
polymer (Appeal Br. 5 et seq.; Reply Br. 3–11). Having considered the
evidence of record and the arguments set forth by Appellant and the
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Application 14/411,820

5
Examiner on this issue, we determine that Appellant’s argument is
persuasive.
Lorcks is directed to a biodegradable polymer mixture which contains
a starch biopolymer, a plasticizer, and a polymer (Abstract). As noted by
Appellant (Appeal Br. 8; Reply Br. 4), Lorcks explicitly states that the
polymer is hydrophobic (see, e.g., Lorcks 3:46–51 (“[I]t is advantageous if
[the] mixture . . . contains a block copolymer . . . between the thermoplastic
starch and the hydrophobic polymer in the form of the polyester.” (emphasis
added)); 5:15–21 (“In the preparation of the polymer mixture . . . the
thermoplastic starch is present to begin with as a so-called disperse phase,
while the polyester or the copolyester, the polyesteramide or the
polyesterurethane, representing a hydrophobic polymer, is present as a
substantially coherent, continuous phase.” (emphasis added)); 6:32–36
(“Examples of possible and preferred polymer mixtures, exhibiting at least
starch or thermoplastic starch and a hydrophobic polymer as claimed”).
Moreover, the statements in Lorcks are consistent with Appellant’s
argument – which has not been directly disputed by the Examiner – that one
of ordinary skill in the art would have understood that a copolymer with
ester groups would be hydrophobic (see Appeal Br. 7).
That some of the monomers used in Lorcks’s polymers may be
hydrophilic does not weigh in favor of a finding that the polymers
themselves may be hydrophilic. As noted by Appellant (Appeal Br. 8–9),
and not disputed by the Examiner, there are many examples of hydrophobic
compounds, such as cholesterol, which are hydrophobic, notwithstanding the
presence of some hydrophilic groups like –OH.
Appeal 2021-002712
Application 14/411,820

6
The Examiner suggests that Appellant has pointed to a section of
Lorcks that teaches that its polymers can be either hydrophobic or
hydrophilic (Ans. 9–10). However, Appellant has not admitted or conceded
that Lorcks teaches that its polymer can be hydrophilic, nor has the
Examiner pointed to a section of Lorcks which teaches this.
On balance, we determine that the preponderance of the evidence of
record supports Appellant’s argument that Lorcks requires the use of a
hydrophobic polymer.
Appellant persuasively argues that because Lorcks teaches that its
polymer mixture should be prepared in the absence of water, a person of
skill in the art would not have sought to use a hydrophilic polymer in the
preparation of that mixture because such polymers would necessarily have
moisture (i.e., water) with them (Appeal Br. 12–13). In particular, Lorcks
specifically states that the presence of moisture/water interferes with the
creation of the desired polymer mixture (Lorcks 5:16–40).
Therefore, as Appellant contends, a person of ordinary skill in the art
would not have used Mariani’s hydrophilic thermoplastic elastomers to
prepare Lorcks’s polymer mixture, because Lorcks specifically cautions
against the presence of water during that preparation, and hydrophilic
polymers will necessarily increase the likelihood of water being present.
Moreover, as discussed above, Lorcks states that the polymer used in the
preparation of its polymer mixture should be hydrophobic, not hydrophilic.
Accordingly, we conclude that Appellant has demonstrated reversible
error in the rejection of claim 4, and each of the claims which depend from
claim 4, over Lorcks in view of Mariani and Bralla, as evidenced by
ScienceDirect. The same reasoning also means that we reverse the rejection
Appeal 2021-002712
Application 14/411,820

7
of claims 21–26 over Lorcks in view of Mariani, Bralla, and Steenblock, as
evidenced by ScienceDirect.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4–7, 19, 20 103(a) Lorcks, Mariani,
Bralla, ScienceDirect
4–7, 19, 20
21–26 103(a) Lorcks, Mariani,
Bralla, Steenblock,
ScienceDirect.
21–26
Overall
Outcome
4–7, 19–26

REVERSED