Ex Parte Avakian

Patent Trial and Appeal Board

Sep 25, 2013

11722371 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/722,371 06/21/2007 Roger W. Avakian 1200412N US 8884
35227 7590 09/26/2013
POLYONE CORPORATION
33587 WALKER ROAD
AVON LAKE, OH 44012
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/26/2013 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
________________

Ex parte ROGER W. AVAKIAN
________________

Appeal 2012-008409
Application 11/722,371
Technology Center 1700
________________

Before CHARLES F. WARREN, TERRY J. OWENS, and
HUBERT C. LORIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-008409
Application 11/722,371

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a polymer blend comprising a polyolefin
nanocomposite and a polyamide nanocomposite.1 Claim 1 is illustrative:
1. A polymer blend, comprising (a) a polyolefin nanocomposite and
(b) a polyamide nanocomposite,

wherein the polyolefin nanocomposite comprises exfoliated nanoclay
in polyolefin,

wherein the polyolefin is selected from the group consisting of
polyethylene, maleated polypropylene, polypropylene, polybutylene,
polyhexene, polyoctene, copolymers thereof, and mixtures, blends or alloys
thereof, and

wherein one of the polymer nanocomposites (a) or (b) serves as the
continuous phase and the other polymer nanocomposite (a) or (b) serves as
the discontinuous phase.

The References
Gilmer US 6,486,253 B1 Nov. 26, 2002
Ross US 6,610,770 B1 Aug. 26, 2003
Kim2 WO 2003/055792 A1 Jul. 10, 2003

1 The Appellant acknowledges that at the time of the invention polyolefin
nanocomposites were commercially available (Spec. ¶ 00021) and it was
“well known in the art to manufacture nanocomposites by polymerizing a
polyamide monomer while in contact with a layered silicate material, e.g., a
sodium smectite clay, that has been treated with a swelling agent, such as an
onium ion, to form a nylon polymer-intercalated layered silicate dispersed in
additional (non-intercalated) melted polymerized nylon (matrix polymer)”
(Spec. ¶ 00032).
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Application 11/722,371

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The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, 5, and 7 over Kim in view of Ross and claims 3, 4, 6, and 8 over Kim in
view of Ross and Gilmer.
OPINION
We reverse the rejections. We need to address only the sole
independent claim, i.e., claim 1.3 That claim requires a polyolefin
nanocomposite comprising exfoliated nanoclay in polyolefin selected from
the group consisting of polyethylene, maleated polypropylene,
polypropylene, polybutylene, polyhexene, polyoctene, copolymers thereof,
and mixtures, blends or alloys thereof.
Kim discloses “a nanocomposite blend composition having superior
mechanical strength and superior barrier properties to oxygen, organic
solvent, and moisture, and which is applicable to single/multi-layer blow
molding and film processing” (¶ 0014), comprising 1) 1-97 wt% of a
polyolefin resin, 2) 1-95 wt% of one or more nanocomposites having barrier
properties, selected from an ethylene-vinyl alcohol/intercalated clay
nanocomposite, a polyamide/intercalated clay nanocomposite, an
ionomer/intercalated clay nanocomposite and a polyvinyl
alcohol/intercalated clay nanocomposite and 3) 1-95 wt% of a compatibilizer

2 Citations herein to Kim are to US 2004/0106719 A1 (Jun. 3, 2004) which
the Examiner relies upon as an English language equivalent of
WO 2003/055792 A1 (Ans. 4).
3 The Examiner does not rely upon Gilmer for any disclosure that remedies
the deficiency in Kim and Ross as to the independent claim (Ans. 7).
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Application 11/722,371

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(¶¶ 0016-23). The ionomer preferably is a copolymer of acrylic acid and
ethylene (¶ 0041).
Ross discloses flame retardant polymer/organically modified clay
composites which “find use, for example, as architectural and construction
materials such as interior panels, home sidings, and roofing pads and
shingles, automotive parts particularly for car interiors, and in ship and
military uses where fire retardancy is required” (col. 1, ll. 17-22). Suitable
polymers include polyethylene, polypropylene, polybutylene and
copolymers of ethylene and vinyl alcohol, and ionomers comprising metal
salts of polyolefins copolymerized with acrylic acid also are useful (col. 5,
ll. 13-38).
The Examiner argues that “[t]he polymers of the polymer-
nanocomposites of both Kim and Ross do have the same purpose i.e. serving
as the polymer resin in which the intercalated clay is exfoliated” (Ans. 10)
and “[i]n view of Ross’s recognition that ethylene-vinyl alcohol copolymers
and ionomer polymers, as well as general polyolefins such as polyethylene
or polybutylene are equivalent and interchangeable, it would have been
obvious to one of ordinary skill in the art to substitute the ionomer polymers
and/or the ethylene-vinyl alcohol copolymers of Kim with the polyolefins
etc[.] of Ross and thereby arrive at the present invention” (Ans. 5-6).
The Examiner has not provided evidence or technical reasoning which
shows that because polyethylene, polypropylene and polybutylene are
interchangeable with ethylene-vinyl alcohol copolymers or ionomers
comprising metal salts of polyolefins copolymerized with acrylic acid in
Ross’s flame retardant polymer/organically modified clay composite (col. 5,
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Application 11/722,371

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ll. 7-42) for Ross’s exemplified uses, i.e. architectural and construction
materials such as interior panels, home sidings, and roofing pads and
shingles, automotive parts particularly for car interiors, and in ship and
military uses (col. 1, ll. 7-22), one of ordinary skill in the art would have
considered polyethylene, polypropylene or polybutylene to be useful instead
of Kim’s ethylene-vinyl alcohol copolymer or ethylene-acrylic acid
copolymer ionomer for providing the superior mechanical strength and
superior barrier properties to oxygen, organic solvent, and moisture in
single/multi-layer blow molding and film processing desired by Kim
(¶ 0014).
Thus, the record indicates that the Examiner’s reason for combining
Kim and Ross is based upon impermissible hindsight in view of the
Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art”). Accordingly, we reverse the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 2, 5, and 7 over
Kim in view of Ross and claims 3, 4, 6, and 8 over Kim in view of Ross and
Gilmer are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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