Ex Parte 6,663,738 et al

Patent Trial and Appeal Board

Jun 13, 2013

95000611 (P.T.A.B. Jun. 13, 2013)

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.
95/000,611 12/17/2010 6,663,738 HZC020 2698
27885 7590 06/13/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/13/2013 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 PATENT TRIAL AND APPEAL BOARD

____________

THE HAARTZ CORPORATION
Requester and Respondent

v.

BENECKE-KALIKO AG
Patent Owner and Appellant
____________

Appeal 2013-001137
Reexamination Control 95/000,611
Patent 6,663,738B2
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.
This is a decision on appeal by the Patent Owner from the Patent Examiner’s
decision to reject pending claims in an inter partes reexamination of U.S. Patent
No. 6,663,738. The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b),
134, and 315. We affirm.
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STATEMENT OF THE CASE
The patent in dispute in this appeal is U.S. Patent No. 6,663,738 B2
(hereinafter, “the ‘738 patent”), which issued December 16, 2003. The claims are
directed to methods of preparing a shaped body with an embossed surface from a
mass that includes non-interlaced polyolefins. The mass is formed into a foil and
radiated with electron beams “to such an extent that a gel content of approximately
15 to 65% occurs in the radiated embossed foil.” The shaped body is described in
the ‘738 patent to be useful for the interior coverings of motor vehicles,
particularly dashboard foil (‘738 patent, col. 1, ll. 8-11).
A request for inter partes reexamination of the ‘738 patent was filed under
35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997 on December 17, 2010 by
Third-Party Requester, Haartz Cooperation (Req. Inter Partes Reexamination 1).
The Patent Owner of the ‘738 patent is Benecke-Kaliko (Patent Owner Appeal Br.
1, dated July 25, 2012). An oral hearing was held March 20, 2013. A transcript of
the hearing will be entered into the record in due course.

REJECTIONS
Claims 1-6 and 8-17 are pending and stand rejected by the Examiner as
follows:
A. Claims 1, 2, 8, and 10-12 under 35 U.S.C. § 102(b) as anticipated by
Scholz
1
as evidenced by the declaration of Srinivas Pravin Sitaram (“the Sitaram
Decl.”) (Right of Appeal Notice (“RAN”) 9).
B. Claims 1-3, 6, and 8-17 under 35 U.S.C. § 103(a) as obvious in view
of Scholz, Kopytko,
2
McKay,
3
and Deanin
4
(RAN 12-13).

1
Hans-Günter Scholz et al., U.S. 4,740,335 (April 26, 1998).
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C. Claims 4 and 5 under 35 U.S.C. § 103(a) as obvious in view of
Scholz, Kopytko, McKay, Deanin, Simon,
5
and Cree
6
(RAN 19).
D. Claims 1-3, 6, 8-12, and 14-16 under 35 U.S.C. § 103(a) as obvious in
view of Scholz, McKay, and Deanin, as evidenced by the Sitaram declaration
(RAN 20).
E. Claims 6, 9, and 13-17 under 35 U.S.C. § 103(a) as obvious in view of
Scholz, McKay, Deanin, and Kopytko, as evidenced by the Sitaram declaration
(RAN 24).
F. Claims 4 and 5 under 35 U.S.C. § 103(a) as obvious in view of
Scholz, McKay, Deanin, Kopytko, Simon, and Cree as evidenced by the Sitaram
declaration (RAN 26-27).

CLAIM
Claim 1 is representative and reads as follows (underling and brackets
indicate changes to claim relative to the issued claim:
1. A method for the preparation of a shaped body with an embossed
surface from a mass including non-interlaced polyolefins, a stablizer
and optional further additives, the method comprising:
the [prep ration]preparation of a foil from said mass,
embossing said foil,
treating the embossed foil with electron beams to such an extent
that a gel content of approximately 15 to 65% occurs in the radiated
embossed foil and

2
Walter Kopytko, U.S. 5,717,020 (February 10, 1998).
3
Kevin W., McKay et al., U.S. 5,869,591 (February 9, 1999).
4
Rudolph D. Deanin, Polymer Structure, Properties and Applications, Cahners
Books (1972).
5
Manfred Simon, et al. U.S. 4,297,099 (October 27, 1981).
6
Stephen H. Cree, et al., U.S. 5,795,941 (August 18, 1998).
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deep drawing the embossed foil to said shaped body, the foil
having a density of approximately 0.7 to 1.2 g/cm
3
and a thickness of
approximately 0.2 to 2.0 mm.

A. ANTICIPATION BY SCHOLZ
Claims 1, 2, 8, and 10-12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Scholz as evidenced by the Sitaram Decl.
The Examiner found that Scholz describes a method of making a deep-
drawn article from non-interlaced polyolefins
7
as claimed (RAN 10). The
Examiner acknowledged that Scholz does not describe a film with a gel content of
15-65% as recited in claim 1, but found that the Sitaram declaration established
that a film prepared with Scholz’s preferred EPM polymer possesses the claimed
gel content (id. at 12.).
Although Scholz does not disclose the gel content of its embossed films,
Scholz describes the films as crosslinked, which is known to result in gelation of
the material. In an attempt to show that Scholz’s films inherently meet the claimed
limitation of “a gel content of approximately 15% to 65%,” Requester provided a
declaration by Dr. Srinivas Pravin Sitaram (the “Sitaram Decl.”). Dr. Sitaram
carried out an experiment in which he testified that he followed “the precise
teachings” of Scholz “to see if in fact it necessarily led to the formation of a
polyolefin embossed foil treated with electron beams to such an extent that a gel
content of 15 to 65% occurs in the radiated embossed foil.” (Sitaram Decl. ¶ 7.)
Dr. Sitaram manufactured three examples of embossed foil as described by Scholz
and found that they had had a gel content of about 44.9%, 51.1%, and 44.7%,

7
“Preferred polymeric materials are ethylenepropylene-diene copolymers (EPDM)
and ethylene propylene copolymers (EPM) (see col. 2, lines 14-16; and col. 3, lines
50-52).” (RAN 10.)
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within the recited range of claim 1. (Id. at ¶ 14.) The issue is whether the Sitaram
declaration provided adequate evidence to establish that Scholz’s film inherently
meets the claimed gel content limitation.
Below is a summary of the disclosure in Scholz as compared to the claim
and the experiment carried out in the Sitaram declaration. (For reference, each
limitation and corresponding disclosure is listed as S1 to S7.)

CLAIM SCHOLZ SITARAM DECLARATION
S1. “a mass
including non-
interlaced
polyolefins”
“In the process of the invention,
as in processes of the state of the
art, the film-form partially-
crystalline material is preferably
EPDM or EPM.” Col. 3, ll. 50-
52.
“I therefore took a non-interlaced partially-
crystalline polyolefin material containing
ethylene-propylene copolymer (EPM).” ¶ 11.
S2. “a stablizer and
optional further
additives”
An example of a film comprising
ethylene-propylene-diene
terpolymer (EPDM) comprises
0.95 wt.-parts antioxidants. Col.
6, ll. 17-25.
“. . . that included an antioxidant stabilizer.”
¶ 11.
S3. “the preparation
of a foil from said
mass,”
“For the process, a partially-
crystalline polymeric material,
i.e., one having crystallites, is
provided in film form.” Col. 3,
ll. 38-40.
“. . . such material was formed into a foil by
extrusion.” ¶ 11.
S4. “treating the
embossed foil with
electron beams to
such an extent that a
gel content of
approximately 15 to
65% occurs in the
radiated embossed
foil”
a. “The material is heated to a
temperature below the melting
point of its crystallites and
surface embossed. The
embossed material is then cooled
and crosslinked. The
crosslinking is preferably done
by irradiating the cooled
material with a high-energy
beam such as an accelerated
electron beam, for example.”
Col. 3, ll. 40-46.

b. “Cross- linking irradiation
doses of from about 40 to about
80 kGy have, however, produced
good results, as a rule, for
appropriate materials with other
“The foil was then embossed with heating to
provide a desired grain.” ¶ 11.

“The embossed foil was then exposed to
electron beams, and as noted, [Scholz]
indicated that one should use a dosage of 40-
80 KGy. See, col. 5, lines 47-54. I therefore
used 40-80 KGy.” ¶ 12.

¶ 14.
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appropriate conditions of the
process in embossing, for
example.” Col. 5, ll. 50-54.

c. The film in S2 above was
irradiated with 60 kGy. Col. 6,
ll. 40-41.
S5. “deep drawing
the embossed foil to
said shaped body”

“The cooled and crosslinked
material is then reheated, this
time to a temperature above the
melting point of its crystallites,
and deep drawn into the shape of
an article.” Col. 3, ll. 46-49.

S6. “the foil having
a density of
approximately 0.7 to
1.2 g/cm3”
The film made with EPDM and
irradiated with 60 kGy (S2 &
S4c) was shown to have an
apparent density of 0.93. Col. 6,
l. 57.

“For the particular foils I utilized I note that
they were at a density of -0.90 g/cm3 . . .”
¶ 12. These films were made with EPM and
irradiated at 43 or 86 kGy.
S7. “a thickness of
approximately 0.2 to
2.0 mm”
The film made with EPDM and
irradiated with 60 kGy (S2 &
S4c) was extruded to a
“thickness of about 0.9 mm.”
Col. 6, ll. 29-31 & 40-41.

“For the particular foils I utilized I note that
they were . . . at a thickness of about 1.0 mm.”
¶ 12. These films were made with EPM and
irradiated at 43 or 86 kGy.

In comparing Scholz’s disclosure to what Dr. Sitaram did in carrying out his
experiment, it is apparent that Dr. Sitaram picked from various disclosures in
Scholz to create the embossed film with a gel content within the claimed range of
15-65%.
First, based on general disclosure in Scholz of the preferred EPDM or EPM
polymers, Dr. Sitaram selected EPM for the polymer to make the film (S1). Dr.
Sitaram did not disclose how much of the EPM was present in the film nor how
much of the antioxidant stabilizer that was included (S1 & S2).
Second, Dr. Sitaram’s choice of the values to irradiate the film (43 kGy &
68 kGy) was selected from a broad disclosure of about 40 to about 80 kGy (S4;
S4b.), and did not correspond to any specific example in Scholz.
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Third, for the claimed density and thickness values, Dr. Sitaram looked to a
specific example in Scholz in which a different polymer (EPDM) had been used
than the one used to make Dr. Sitaram’s film (EPM) (S6 & S7). The specific
example in Scholz was irradiated at 60 kGy (S4c), but Dr. Sitaram selected the
values of 43 and 68 kGy. In choosing the density and thickness of the film used in
the Scholz example, Dr. Sitaram picked values of a density of about 0.90 and a
thickness of about 1.0 mm, which are close but different from the Scholz example
of 0.93 and about 0.90 mm, respectively (S6 & S7). Requester did not point to any
explanation in the Sitaram declaration that such differences were inconsequential
and/or would not have affected the resulting gel content upon irradiation.
In sum, Dr. Sitaram picked from various disclosures in Scholz – general
disclosure on the polymer and irradiation dose, and specific example for density
and thickness – in designing an example to show that the claimed gel content
would have been an inherent result of carrying out the teachings in Scholz.
The choices made by Dr. Sitaram are too numerous to constitute an inherent
anticipation of the claimed subject matter. It “is not enough that the prior art
reference . . . includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.” Net MoneyIN Inc. v. VeriSign Inc.,
545 F3d 1359, 1371 (Fed. Cir. 2008). “[The] reference must clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the art to
the [invention] without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
The Examiner also apparently misconstrued what Dr. Sitaram did. The
Examiner states:
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[I]t is the Examiner’s position that the deep-drawn article for use as
a dashboard material prepared by Scholz in the example at col. 6,
line 16 to col. 7, line 34, and having the properties set forth in
Scholz's Table 2, also has the claimed gel content in light of the fact
that the article prepared in the Sitaram Declaration using Scholz’s
preferred EPM polymer possesses the claimed gel content.
(RAN 12.) (emphasis added.)
Dr. Sitaram did not prepare the example at column 6, line 16 to column 7,
line 34 of Scholz. The material described in this section and tested in Table 2
comprised specific amount of EPDM (see column 6, lines 20-24). Dr. Sitaram
used EPM and did not disclose how much of it. Because the polymer was different
in Dr. Sitaram’s example (EPM) and the example at column 6, Table 2, of Scholz
(EPDM), it is unclear on what basis the Examiner assumed they would possess the
same gel content.
Dr. Sitaram also did not establish that any film comprising any amount of
EPM would have a gel content in the range which is claimed. In fact, Patent
Owner provided evidence to the contrary as explained below.
Patent Owner provided rebuttal declarations by Dr. Volker Hülsewede. Dr.
Hülsewede described carrying out an experiment following the example in Scholz
at col. 6, ll. 17-68 (First Hülsewede Decl. ¶¶ 11-13, dated July 1, 2011). This
example involved manufacturing of a film comprising specific amounts of EPDM
and other materials, irradiating at 60 kGy, and embossing (Scholz, at col. 6, ll. 20-
25). After following Scholz’s disclosure, Dr. Hülsewede determined the thickness
to be 0.9 mm and the gel content to be 7.1%, the latter which is outside the claimed
range (First Hülsewede Decl. ¶¶ 13-14). Based on this experiment and others, Dr.
Hülsewede concluded that Scholz’s teachings do not “necessarily lead to a foil
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which meets the requirement of a gel content of approximately 15 to 65%.” (Id. at
¶ 24.)
The Examiner did not find the declaration persuasive, stating that Dr.
Hülsewede did not determine whether the film had all the properties described in
Table 2 of Scholz for the example following by Hülsewede (RAN 40). Requester
also faulted the declaration because Dr. Hülsewede did not report the density of the
film (Requester Respondent Br. 14 & 19).
Neither the Examiner nor Requester challenged Dr. Hülsewede’s statements
that he “produced a foil in the laboratory extruder according to the details in
Scholz” utilizing the materials at column 6, lines 22-25 (First Hülsewede Decl. ¶
11-13.) Accordingly, as Dr. Hülsewede followed Scholz’s example, even if he
failed to report all the properties of the film, it cannot be ignored that Dr.
Hülsewede made a film specifically described by Scholz which did not meet the
gel content limitation of claim 1. This example is adequate evidence that
following Scholz’s teachings does not necessarily result in a gel content within the
claimed range. “[A]nticipation by inherent disclosure is appropriate only when the
reference discloses prior art that must necessarily include the unstated limitation
….” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir.
2002). “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991). “Inherent anticipation requires that the missing
descriptive material is ‘necessarily present,’ not merely probably or possibly
present, in the prior art.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
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For the foregoing reasons, we reverse the anticipation rejection of claims 1,
and dependent claims 2, 8, and 10-12, based on Scholz as an anticipatory
publication.

B. OBVIOUSNESS IN VIEW OF SCHOLZ, KOPYTKO, MCKAY, AND
DEANIN
Claims 1-3, 6, and 8-17 stand rejected under 35 U.S.C. § 103(a) as obvious
in view of Scholz, Kopytko, McKay, and Deanin.
The Examiner found that Scholz described all the steps of the claimed
method, but not a film with the claimed gel content (RAN 13-14). However, the
Examiner found that it would have been obvious to have made a film with a gel
content of 15-65% in view of the teachings of Kopytko, McKay, and Dean (id. 14-
17).

Reason to combine
Patent Owner contends that the skilled artisan would not have combine
Scholz and Kopytko because Kopytko cross-linked the material prior to
embossing while Scholz performed cross-linking after the material had been
embossed (Patent Owner Appeal Br. 18-19). Patent Owner argues that Kopytko’s
“main feature” is “improved embossing strength.” (Id. at 19.) For this reason,
Patent Owner contends that a skilled artisan would not have modified Scholz to
incorporate Kopytko’s features “except through impermissible hindsight. Such
modification would negate Kopytko’s main advantage and render Kopytko
unsuitable for his intended purpose.” (Id.)
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This argument does not persuade us the Examiner erred. Kopytko is clearly
in the same field of endeavor as Scholz and directed at similar methodology. Both
disclosures are aimed at optimizing the crosslinking of ethylene-propylene diene
terpolymers (Kopytko, col. 1, lines 39-60). Koptyko also contained an explicit
teaching of gel contents of 30% (id.) Kopytko was therefore properly combined
with Scholz.
Patent Owner’s argument that Scholz is not combinable with Kopytko
because the steps of foil production are different is not persuasive. Kopytko was
not cited by the Examiner to alter any sequence of foil production in Scholz or
vice-versa. Kopytko was cited for teaching the degree of crosslinking, embossing
strength, and thermoforming capacity (RAN 14-15), parameters shown to reliably
achieve a gel content of 30%, which overlaps the claimed range of 15 to 65%
recited in the ‘738 patent claims (id. at 15 & 46-47).

Teaching Away
Patent Owner also contends that McKay teaches away from the combination
of Scholz and Kopytko (id. at 19). Scholz and Kopytko describe articles
comprising crystalline materials such as EPM and EPDM materials (id.) On the
other hand, Patent Owner argues that McKay teaches that EPM and EDM materials
“exhibit highly undesirable properties.” (Id. at 19-20)
While such compositions, and methods of making them, might have been
inferior, that alone does not by itself constitute a teaching away from using them,
as long as the material was taught in the prior art as “usable” and had “been used”
for the stated purpose. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A “finding
that prior art as a whole suggests the desirability of a particular combination need
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not be supported by a finding that the prior art suggests that the combination
claimed by the patent applicant is the preferred, or most desirable, combination.”
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Thus, in Gurley, as here, the
prior art taught the claimed element for the same purpose, and thus does not
constitute a teaching away because it is not a teaching away to use a prior art step
or composition for its known purpose, even when such step or composition was
known to be inferior.

Summary
For the foregoing reasons, we affirm the rejection of claim 1, and claims 2,
3, 6, and 8-17 which were not argued separately.

C. OBVIOUSNESS IN VIEW OF SCHOLZ, KOPYTKO, MCKAY, DEANIN,
SIMON, AND CREE
Claims 4 and 5 stand rejected under 35 U.S.C. 103(a) as obvious in view of
Scholz, Kopytko, McKay, Deanin, Simon, and Cree. Claim 4 is drawn to the
method of claim 1 where the “interlacing auxiliary” is trimethylolpropantriacrylate.
Claim 5 depends on claim 4. An “interlacing auxiliary” is interpreted by the
Examiner to mean a “crosslinking agent.” (RAN 6.)
Citing column 2, lines 11-29, of Kopytko, the Examiner found that Kopytko
teaches that EPDM terpolymer and an ethylenepropylene copolymer are
“crosslinked by adding a suitable crosslinking agents such as a peroxide, an
epoxide, a silane compound, and the like.” (RAN 19.) The Examiner found that
Simon teaches that other “well known crosslinking agents for EPDM are
unsaturated compounds such as acrylates, including trimethylolpropane triacrylate
(see col. 5, line 19 to col. 7, line 58).” (Id. at 19.) The Examiner found that the
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latter agent is the same agent as claimed. The Examiner also found that Cree
disclosed trimethylolpropane triacrylate as a crosslinking agent (id. at 19-20).
Based on these teachings, the Examiner concluded it would have been obvious to
one of ordinary skill in the art to have used trimethylolpropane triacrylate as a
crosslinking agent for the EDPM or EPM of Scholz.
Patent Owner contends that Simon does not describe trimethylolpropane
triacrylate as a crosslinking agent, itself, but rather as a crosslinkable component
(id. at 20).
It is true that Simon refers to trimethylolpropane triacrylate as a
crosslinkable component. (Simon, col. 7, ll. 25-34 & 63.) However, as argued by
the Requester, a second publication, Cree, was also cited by the Examiner for its
teaching of trimethylolpropane triacrylate as a crosslinking agent. (See RAN 19-
20.) Cree specifically teaches:
For example, use may be made of a combination of an electron beam
and a crosslinking activator or multifunctional monomer such as . . .
trimethylolpropane triacrylate . . . in order to successfully crosslink
the products of this invention.
(Cree, col. 14, ll. 51-58.)
Thus, Cree describes a trimethylolpropane triacrylate as a crosslinking agent
as claimed. The Examiner provided a logical reason for utilizing Cree’s
trimethylolpropane triacrylate as the crosslinking agent for the EDPM or EPM of
Scholz in view of Kopytko, McKay and Deanin. (RAN 20.) Patent Owner did not
identify an error in this reasoning. Accordingly, we affirm the rejection of claims
4 and 5 for the reasons set forth by Examiner.

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D. OBVIOUSNESS IN VIEW OF SCHOLZ, MCKAY, AND DEANIN,
Claims 1-3, 6, 8-12, and 14-16 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Scholz, McKay, and Deanin, as evidenced by the Sitaram
declaration.
The Examiner relied upon the disclosure in Scholz for describing the
claimed method “for the preparation of a shaped body with an embossed surface
from a mass including non-interlaced polyolefins, [and] a stablizer,” but
acknowledged that Scholz does not specifically disclose the gel content of the
crosslinked, embossed foil (RAN 22). However, the Examiner found that McKay
describes crosslinked polymers having a gel content great than 10% (id.). The
Examiner found that Deanin teaches that covalent crosslinks between polymer
molecules produces gelation and thus crosslinking determines the corresponding
gel content (id.). McKay was further cited by the Examiner for its teaching of
selecting a suitable radiation dose to cause the desired level of crosslinking, and
the identification of the variables taken into account when selecting the appropriate
radiation dose (id. at 22-23). Based on these teachings, the Examiner concluded it
would have been obvious to the ordinary skilled worker to have optimized the
extent of crosslinking in Scholz as taught by McKay and Deanin in order to obtain
the desired amount of gel content, a well-known parameter (id. at 23).

McKay Teaches Away
For the same reasons discussed in Rejection B, Patent Owner argues that
McKay teaches away from the combination with Scholz. These arguments are
unpersuasive for the same reasons discussed in Rejection B above.

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Rationale Based On Hindsight
Patent Owner acknowledges that McKay discloses that “radiation dosage
can be modified to achieve a desired level of gel content.” (Patent Owner App. Br.
21.) However, Patent Owner contends that McKay “does not teach or suggest how
to select values for any of these variables.” (Id.) Patent Owner argues that the
“facts that there are numerous variables and that Scholz and McKay provide very
little guidance regarding how a skilled artisan would optimize indicates that there
was not a reasonable expectation of success at the time the invention was made.”
(Id. at 21-22.) Patent Owner also argues that the cited references do not provide
“any motivation for even attempting to achieve a specific gel content within the
claimed range.” (Id. at 22.) To the contrary, Patent Owner contends that Scholz
“already attempted to optimize his process” and resulted in a product of a gel
content of only 7.1% as demonstrated by the First Hülsewede Declaration (id. at
22-23). Patent Owner also contends that the Scholz states that radiation dosage
must be selected on a case-by-case basis, indicating that “a person having ordinary
skill at the time of invention would not have recognized general rules for
optimizing gel content and would have instead recognized that the art is highly
unpredictable. Accordingly, there would be no reasonable expectation of success.”
(Id. at 23.)
“An obviousness determination requires that a skilled artisan would have
perceived a reasonable expectation of success in making the invention in light of
the prior art.” Amgen Inc. v. F. Hoffman-La Roche, 580 F.3d 1340, 1362 (Fed. Cir.
2009). In this case, the issue is whether the Examiner established by a
preponderance of the evidence that there was a reasonable expectation that a gel
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content within the claimed range of 15-65% could be achieved following the cited
teachings of the prior art.

Findings of Fact
To establish this expectation, the Examiner began with the disclosures in
Scholz. We summarize the facts as follows (“FF” is a “Finding of Fact”).
FF1. Scholz teaches that crosslinking is desirable when producing embossed
films of the type which are claimed:
Uncrosslinked partially-crystalline polymers in film form can
be embossed or deep drawn only at temperatures below the melting
point of their crystallites . . . Surprisingly, however, crosslinked
partially-crystalline polymers initially exhibit a comparably-steep
decrease in their modulus of elasticity at the melting- point
temperature of their crystallites but, thereafter, exhibit a relatively
constant modulus over a wide range of higher temperatures. This is
probably caused by their content of crosslinked molecules. . . .
As a result, even though the temperature is lower and the
modulus of elasticity higher during the embossing than during a
subsequent deep-drawing operation, a surface texture produced by
embossing the film before crosslinking is retained.
Scholz, col. 4, ll. 28-51.
FF2. Scholz also teaches to control the degree of crosslinking: “The actual
modulus of elasticity above the crystallite melting point depends on the degree of
crosslinking in the material used, and it can be controlled, therefore, by controlling
the cross-linking.” (Scholz, col. 4, ll. 40-44.)
FF3. Scholz teaches administering different “crosslinking irradiation doses”
to produce the proper number of crosslinked molecules to achieve a satisfactory
embossed surface configuration during the deep-drawing (Scholz, col. 5, ll. 35-40).
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17
FF4. Scholz teaches that the appropriate dose of crosslinking radiation must
be determined “from case to case” to achieve the proper amount of stretchability
(Scholz, col. 5, ll. 41-48.)
FF5. Scholz teaches that the “[s]pecific properties of the material and its
embossing temperature” influence the embossed grain quality after deep drawing
(Scholz, col. 5, ll. 48-58).
FF6. Table 1 of Scholz lists the results of varying the crosslinking radiation
dose and grain-embossing temperature on grain quality after deep drawing.
(Scholz, col. 5, ll. 1-15.)
The Examiner also cited evidence from Deanin that crosslinking produced
gelation:
FF7. “Permanent primary covalent cross-links between polymer
molecules . . . [are] producing gelation when the cross-links form.” (Deanin, pp.
324-325.)

Analysis
Scholz does not express reservations that any degree of crosslinking could
be accomplished in order to achieve a good quality grain after embossing and
deep-drawing. Scholz expressly recognized the need to control crosslinking (FFF2
& FF3). Scholz identified specific factors that controlled crosslinking and grain
quality (FF3 & FF5), and performed actual experiments to achieve different
degrees of crosslinking and to determine how it affects the grain quality (FF6).
Deanin shows that the gel content depends on the degree of cross-linking (FF7).
Thus, the Examiner had a factual basis on which to conclude that persons of
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18
ordinary skill in the art would have reasonably expected that gel content could be
varied, e.g., by varying the crosslinking radiation dose.
Patent Owner has not identified a flaw in these teachings, except to point out
that Scholz states that the dose is selected on “from case to case” (FF4). However,
Scholz makes this statement from the observation that the material and
temperatures affects the final grain quality of the film product (FF5 & FF6).
Scholz performs actual experiments in which he looked at the effect of temperature
and crosslinking radiation dose on the grain quality of a film after deep drawing
(FF6). This provides explicit guidance to one of ordinary skill in the art on the
effects of temperature and radiation dose on product quality. Thus, the statement
that the dose is selected case by case is not an expression of unpredictability, but
rather the recognition that the dose has to be controlled in order to achieve the end
result of a good grain product. Patent Owner has not pointed to any evidence of
failure or doubt on the part of the ordinary skill worker that it would require undue
experimentation to vary the identified factors and achieve a quality film.
In addition to Scholz, the Examiner also cited McKay’s teachings that
radiation dose affects crosslinking, the same teaching in Scholz (FF3). The
Examiner specifically cited McKay’s teachings as follows:
FF8. McKay expressly teaches the relationship between crosslinking and
gel content, and teaches achieving gen contents of 20% and 30%, within the
claimed range:
Radiation dosage depends upon the composition of the substantially
random interpolymer. Generally speaking, as the amount of the
vinylidene aromatic or hindered aliphatic or cycloaliphatic
comonomer increases, greater dosages will be required to cause the
desired level of crosslinking, that is, to lead to compositions
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19
exhibiting at least 10 percent gel, preferably at least 20 percent gel,
and more preferably at least 30 percent gel.
(McKay, col. 17, ll. 60-67.) Thus, Patent Owner’s contention (Appeal Br. 22) that
the Examiner did not provide guidance of achieving gel content within the claimed
range is without merit.
FF9. McKay also cites various factors in selecting the radiation dose to
achieve the desired amount of crosslinking:
Those skill in the art will be readily able to select suitable radiation
levels, taking into account such variables as thickness and geometry
of the article to be irradiated, as well as to characteristics of the
substantially random interpolymer, such as molecular weight,
molecular weight distribution, comonomer content, the presence of
crosslinking enhancing co agents, additives (such as oil), etc.
(McKay, col. 17, 67-col. 18, l. 60.)
FF10. McKay describes several examples of conditions of radiation dose
and material to achieve desired crossing linking. (McKay, col. 7-27).
The preponderance of the evidence clearly supports the Examiner position
that there would be a reasonable expectation of success of achieving a gel content
within the claim range of 15-65%.
First, McKay expressly teaches that a gel content within the claimed range
could be achieved, i.e., “preferably at least 20 percent gel, and more preferably at
least 30 percent gel.” (FF8). Second, McKay explicitly states that one with “skill
in the art would readily be able to select suitable radiation levels” to achieve the
desired crosslinking (FF8 & FF9). The only argument that Patent Owner has of
unpredictably is that there are various factors identified by McKay to take into
account when selecting radiation levels (FF9) and McKay allegedly does not give
guidance on how to vary them. However, McKay explicitly states it was within
the skill in the art to select radiation levels based on the listed factors (FF9). Patent
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20
Owner’s contrary opinion is not supported by testimony or adequate evidence.
Moreover, as argued by Requester, McKay has actual example in how specific
crosslinking values were achieved (FF10). Patent Owner has not provided
adequate evidence to rebut the Examiner’s strong fact-based conclusion that one of
ordinary skill in the art would have reasonably expected that gel content within the
claimed range could be achieved. We affirm the rejection of 1-3, 6, 8-12, and 14-
16 as obvious in view of Scholz, McKay, and Deanin.

E. OBVIOUSNESS IN VIEW OF SCHOLZ, MCKAY, DEANIN, AND
KOPYTKO
Claims 6, 9, and 13-17 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of Scholz, McKay, Deanin, and Kopytko, as evidenced by the Sitaram
declaration. Patent Owner contends that Kopytko is not properly combinable with
Scholz. (Patent Owner Appeal Br. 23.) This argument was addressed in Rejection
B. and not found persuasive. We affirm the rejection of the claim 6, 9, and 13-17
for the reasons given by the Examiner.

F. OBVIOUSNES IN VIEW OF SCHOLZ, MCKAY, DEANIN, KOPYTKO,
SIMON, AND CREE
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as obvious in view
of Scholz, McKay, Deanin, Kopytko, Simon, and Cree as evidenced by the Sitaram
declaration.
Patent Owner contends claims 4 and 5 are not patentable for same reasons
addressed in Rejection C. We did not find these arguments persuasive and affirm
the rejection of claims 4 and 5 for the same reasons set forth in Rejection C.
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21
SECONDARY CONSIDERATIONS
Patent Owner provided written testimony by two declarants to establish
secondary consideration in rebuttal of the obviousness rejections. The declarants
are Dr. Jürgen Bühring, an employee of Patent Owner Benecke-Kaliko AG, and
Mr. Mathias Bedke, business administration manager of Benecke-Kaliko AG. See
Bühring Decl., dated June 27, 2011, and Bedke Decl., dated June 27, 2011.
Dr. Jürgen Bühring testified about TEPEO
®
2 – a grained foil “which puts
into practice the teachings of US 6,663,738.” (Bühring Decl. ¶ 3.) Dr. Bühring
testified that the “foil also meets the other general requirements set out in claim 1
of US 6,663,738.” (Id.) Dr. Bühring testified about the benefits of TEPEO
®
2 foils
(id. at 3-5). Dr. Bühring stated that the benefits identified in his declaration:
. . . resulted in the TEPEO
®
2 foils being used for series production as
a decor surface material for instrument panels and door trim
applications in more than 20 car models manufactured by e.g.
Mercedes. BMW, GM, Opel, Volvo etc. and have established
themselves as an alternative solution for foils after the established
slush and spray molding processes for demanding decor surfaces with
a high perceived quality in automotive interiors.
(Bühring Decl. ¶ 6.)
The Examiner did not find the Bühring Declaration persuasive. Among the
reasons given by the Examiner, the Examiner found that Dr. Bühring testified that
TEPEO
®
2 was lacquered (Bühring Decl. ¶ 3), but determined that the claims do
not require lacquering. Because the claims lacked one of the features of the
embodiment relied upon for commercial success, the Examiner concluded that “no
nexus has been shown between the claimed invention and the alleged evidence of
commercial success.” (RAN 59.) That is, Dr. Bühring did not establish that the
evidence of commercial success described in his declaration was a result of the
claimed features, rather than an unclaimed feature, such as lacquering.
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22
Examiner’s analysis is persuasive. In order to overcome a finding of
obviousness by demonstrating commercial success, “[a] nexus between
commercial success and the claimed features is required.” Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). In this
case, evidence was not provided by Dr. Bühring that it was the claimed features
which were responsible for the commercial use described in paragraph 6
reproduced above, rather than the lacquering or some other unclaimed feature of
TEPEO
®
2, or activity relating to marketing TEPEO
®
2, pricing choices or other
business relationship reasons. Patent Owner made the statement the lacquering did
not account for the commercial success, but did not provide objective evidence of
this, such as testimony by Dr. Bühring (Patent Owner Appeal Br. 25).
Mr. Bedke also testified about the commercial success of TEPEO
®
2. Mr.
Bedke testified that TEPEO
®
2 product was “covered” by the teachings of the ‘738
patent, but Mr. Bedke did not compare the product to the claims or make a
statement that TEPEO
®
2 was “covered” by ‘738 patent claims. (Bedke Decl. ¶ 2).
Thus, it is equally true for the Bedke declaration that no nexus has been established
between the claimed invention and the showing of commercial success.
In addition to the statements by Dr. Bühring about TEPEO
®
2 foils “being
used for series production as a decor surface material for instrument panels and
door trim applications in more than 20 car models,” Mr. Bedke testified about
“turnover” as follows:
4. While the share of turnover generated with TEPEO®2 foils was 1%
of Benecke-Kaliko AG's total turnover in the automotive sector in
2005, the share of turnover of said new product class based on the
patents EP 1 149 858 and US 6,663,738 is increased to approximately
10% in 2010.
(Bedke Decl. ¶ 4.)
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23
The Examiner did not find the evidence of commercial success described by
Mr. Bedke sufficient to rebut the obviousness rejections. The Examiner found the
evidence unpersuasive “because the increase in sales is merely internal to the
company, and does not represent overall share in the market.” (RAN 61.)
We agree with the Examiner that there is insufficient evidence to establish
commercial success of an embodiment of claim 1. Dr. Bühring’s statement about
the foil being used in 20 different car models does not provide enough information
about whether these sales are indicative of commercial success. For example,
evidence has not been presented about how much of the market share these sales
represents or even how much sales in unit numbers or currency it represented for
Benecke-Kaliko. TEPEO
®
2 was said to be used in 20 models, but it is not
explained whether that was the only foil “used” in such models or how much of it
was sold.
Mr. Bedke was more explicit that the “share of turnover generated with
TEPEO®2 foils was 1%,” but he did not explain why this seemingly low number
was evidence of a “highly successful product.” (Bedke ¶¶ 4 and 6.) The further
statement of increased turnover of approximately 10% in 2010 is not stated
specifically for TEPEO
®
2 but rather is stated to be turnover of “said new product
class based on the patents EP 1 149 858 and US 6,663,738,” so it is not entirely
clear whether this data represents TEPEO
®
2 alone or other products based on the
European and US patents. Even if the value of 10% is taken to be of TEPEO
®
2
product, once again there is no nexus addressed by Mr. Bedke between the product
and the claims, e.g., an explanation of why the increase in sales was a result of
features recited in the claims, rather than unclaimed features (lacquering) or
marketing and sales strategies.
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24
It is well established “that evidence related solely to the number of units sold
provides a very weak showing of commercial success, if any.” In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996). Here, the weak evidence of TEPEO
®
2 being used
in 20 different car models, and an increase in “turnover” from 1 to 10 percent over
a five year period, is insufficient to rebut the strong case of prima facie
obviousness since no nexus has been established between the features of the
claimed invention and the product sold.
The Examiner also found the declarations unpersuasive because although
Dr. Bühring describes advantages of TEPEO
®
2, he did not establish there
advantages were unexpected as compared to the prior art (RAN 60).
In sum, the evidence provided by Patent Owner of secondary considerations
is not sufficient to rebut the obviousness rejections.

SUMMARY
We affirm the Examiner’s decision that claims 1-6 and 8-17 are not
patentable in view of Grounds A through F supra.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for
requesting rehearing under paragraph (a) of this section, for requesting further
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25
rehearing under paragraph (d) of this section, and for submitting comments under
paragraph (c) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties' rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

ack

Patent Owner:

FAY SHARPE LLP
1228 Euclid A venue, 5th Floor
The Halle Building
Cleveland, OH 44115

Third Party Requester:

STEVEN J. GROSSMAN, PH.D.
GROSSMAN,TUCKER,PERREAULT & PFLEGER,PLLC
55 SOUTH COMMERCIAL STREET
MANCHESTER, NH 03101