Ex Parte Baldwin et alDownload PDFPatent Trial and Appeal BoardAug 29, 201713339928 (P.T.A.B. Aug. 29, 2017) Copy Citation 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. 13/339,928 12/29/2011 Jesse J. Baldwin TPA-11-1202R 6870 35811 7590 08/31/2017 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 4900 PHILADELPHIA, PA 19103 EXAMINER GOLDEN, CHINESSA T ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 08/31/2017 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): pto.phil@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESSE J. BALDWIN, PAWEL SIERADZKI, and GORDON V. SHARPS JR.1 Appeal 2016-008687 Application 13/339,928 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal the Examiner’s decision finally rejecting claims 1, 9, 10, 13, 18, 21, 22, 37, 38, and 40-51, which constitute all the claims pending in this application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Toray Plastics (America), Inc. as the real party in interest. App. Br. 1. 2 In our Decision, we refer to the Specification filed December 29, 2011 (“Spec.”); Final Office Action dated January 29, 2016 (“Final Act.”); Appeal Brief dated May 27, 2016 (“App. Br.”); Examiner’s Answer to the Appeal Brief dated August 25, 2016 (“Ans.”); and Reply Brief dated September 15, 2016. Appeal 2016-008687 Application 13/339,928 The Claimed Invention Appellants’ disclosure relates to crosslinked polypropylene and polypropylene-polyethylene foams and foam compositions. Spec. 12; Abstract. Independent claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 16) (key disputed claim language italicized and bolded): 1. A foam composition comprising a blowing agent, an elastic component comprising at least one selected from the group consisting of CEBC, OBC, mPP, [[EPDM,]] SEBS, SEPS, SEEPS, SEP, SEBC and HSB and about 70 to about 95 parts by weight of at least one polypropylene polymer, wherein the composition has a blister rating of 1-2, has a density of about 85 to about 125 kg/m3, an unaged peel tear strength of at least about 34 N and a heat aged peel tear strength of at least about 28 N when laminated to a support layer and wherein the elastic component is blended with the polypropylene polymer. The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Kresge et al., US 4,803,035 Feb. 7, 1989 (hereinafter “Kresge”) Ono Simpson et al., (hereinafter “Simpson”) Honma et al., (hereinafter “Honma”) US 2007/0203295 Al Aug. 30, 2007 US 2008/0262116 Al Oct. 23, 2008 JP 2006-070260 Mar. 16, 2006 2 Appeal 2016-008687 Application 13/339,928 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1,9, 10, 13, 18, 21, 22, 37, and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kresge in view of Honma3 (“Rejection 1”). Final Act. 2; Ans. 2. 2. Claims 1, 9, 10, 13, 18, 21, 37, 38, 40, 42, 44, 46, 48, and 50 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ono in view of Honma (“Rejection 2”). Final Act. 7; Ans. 7. 3. Claims 10, 22, 43, 47, and 51 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ono in view of Honma, and in further view of Kresge (“Rejection 3”). Final Act. 16; Ans. 16. 4. Claims 40, 43, 44, 47, 48, and 51 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kresge in view of Ono, and in further view of Honma (“Rejection 4”). Final Act. 17; Ans. 17. 5. Claims 41, 45, and 49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ono in view of Honma, and in further view of Simpson (“Rejection 5”). Final Act. 23; Ans. 23. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer to the Appeal Brief and 3 With respect to the Honma reference, the Examiner’s rejections refer to the English machine translation of the reference provided with the Office Action dated September 11, 2013. 3 Appeal 2016-008687 Application 13/339,928 Final Office Action, which we adopt as our own. We highlight and address specific findings and arguments below for emphasis. Rejection 1 Appellants argue claims 1,9, 10, 13, 18, 21, 22, 37, and 38 as a group. App. Br. 4. We select claim 1 as representative and the remaining claims subject to this rejection stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv). The Examiner determines that the combination of Kresge and Honma suggests a foam composition satisfying all of the limitations of claim 1 and would have rendered claim 1 obvious. Ans. 2-4. The Examiner finds that Kresge teaches or suggests the majority of the limitations of claim 1, but that the reference does not teach the following limitations: (a) “wherein the foam composition comprises an elastic component comprising at least one selected from the group consisting of CEBC, OBC, mPP, SEBS, SEPS, SEEPS, SEP, SEBC and HSB”; (b) “wherein the composition has a density of about 85 to about 125 kg/m3”; and (c) “wherein the elastic component is blended with the polypropylene polymer.” Ans. 2—3 (citing Kresge, col. 2,11. 10-21, 25—28, col. 4,11. 17— 40, 28-40, col. 5,11. 64—68, col. 6,11. 1, 38-43). The Examiner, however, relies on Honma for teaching or suggesting these missing limitations. In particular, the Examiner finds that Honma teaches a foam composition comprising a blowing agent, an elastomer of a copolymer crystalline ethylene and crystalline butene (CEBC), wherein the composition has a density of less than 700 kg/m3, and wherein the elastomer is blended with a propylene polymer. Ans. 3 (citing Honma Tflf 1, 28, 41, 45, 63, 65, 84, claim 5). 4 Appeal 2016-008687 Application 13/339,928 Based on the above findings, the Examiner concludes that: It would have been obvious to a person of the ordinary skill in the art at the time of the invention to incorporate the elastomer of Honma into the foam composition of Kresge and modify the density of Kresge to that of Honma in order to provide a foam with no surface deterioration, . . . few compression sets, excellent heat resistance, flexibility and rebound resistance. Ans. 4 (citing Honma 26, 28, 93). Appellants argue that the Examiner has not established a prima facie case of obviousness because “the rejection does not establish that one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions or that there was a reasonable expectation of success.” App. Br. 4—5 (internal quotations omitted). In particular, Appellants argue that Kresge fails to disclose a foam having a density of about 85 to about 125 kg/m3 and, although Honma discloses a density range of less than 700 kg/m3, the Honma reference does not establish a known method for obtaining a foam having a density of about 85 to about 125 kg/m3. Id. at 5; Reply Br. 1, 2. Appellants contend that the rejection does not establish that “the proposed modification would have ‘yielded nothing more than predictable results’” and “a nexus between the proposed modification and the stated motivation for making the combination.” App. Br. 6. Appellants argue that both Kresge and Honma are silent with respect to the claimed blister rating and unaged and heat aged peel tear strengths and that one skilled in the art would not have had a reasonable expectation of success of achieving the claimed properties as a result of the Examiner’s proposed combination. Id. at 6, 7. 5 Appeal 2016-008687 Application 13/339,928 Appellants further argue that the Examiner reversibly erred in determining that the claimed blister rating and peel tear strengths are inherent properties of the proposed combination of Kresge and Honma because “inherency is not available as a basis in a rejection that combines references under 35 USC § 103.” App. Br. 7. Appellants contend that the rejection fails to show that the proposed combination of Kresge and Honma “necessarily” results in a foam composition having the blister rating, density, and peel tear strength properties recited in the claims. Id. at 9; Reply Br. 3, 4. Appellants also contend that Comparative Example C3 of the Specification (Spec. 94—98) demonstrates that the claimed properties do not “necessarily flow” from the foam composition based on the Examiner’s proposed combination and that the Examiner improperly disregarded that data presented in Comparative Example C3. App. Br. 9; Reply Br. 3, 4. We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination that the combination of Kresge and Honma suggests all of the limitations of claim 1 and would have rendered the claim obvious. Kresge, col. 2,11. 10-21, 25—28, col. 4,11. 17—40, 28^40, col. 5,11. 64—68, col. 6,11. 1, 38-43; Honma H 1, 26, 28, 41, 45, 63, 65, 84, 93, claim 5. Appellants’ argument that Kresge fails to disclose a foam having a density of about 85 to about 125 kg/m3 (App. Br. 5; Reply Br. 1) is not persuasive because it is premised on what Appellants contend the Kresge reference teaches individually, and not on the combined teachings of the 6 Appeal 2016-008687 Application 13/339,928 cited references as a whole and what the combined teachings would have suggested to one of ordinary skill in the art. One cannot show non obviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Contrary to what Appellants’ argument suggests, the Examiner relies on Honma for suggesting the “density” limitation of claim 1. In particular, as the Examiner finds (Ans. 3, 28—29), Honma teaches a foam composition having a density of less than 700 kg/m3, which overlaps the claimed range of about 85 to about 125 kg/m3. See Honma 128 (disclosing that the “density of the foam which foams to the thermoplastic-elastomer-olefin constituent. . . is in the range of less than 700 kg/m3” (emphasis added)). We do not find Appellants’ argument that the Examiner does not present any findings of fact that the density of Kresge’s foam could have been modified by “known methods” and “there was a reasonable expectation of success” (App. Br. 5—6; Reply Br. 1) persuasive of reversible error for the well-stated reasons provided by the Examiner at pages 24 and 25 of the Answer. In particular, based on the record evidence, we concur with the Examiner’s findings regarding the prior art’s disclosure of each of the components of the claimed composition and determination that by modifying the amounts of each of the components, one of ordinary skill would have been able to modify the density of Kresge’s composition by known methods and arrive at the claimed density with a reasonable expectation of success. Kresge, col. 2,11. 10-21, 25—28, col. 4,11. 17—40, 28-40, col. 5,11. 64—68, col. 6,11. 1, 38^13; Honma H 1, 28, 41, 45, 63, 65, 84, claim 5. 7 Appeal 2016-008687 Application 13/339,928 The Examiner also provides a reasonable basis and identifies a preponderance of the evidence in the record to evince why one of ordinary skill would have combined the teachings of the references to arrive at Appellants’ claimed composition. Ans. 4 (explaining that one of ordinary skill would have had reason to incorporate Honma’s elastomer into Kresge’s foam composition and modify the density of Kresge’s foam composition in order to provide a foam with no surface deterioration, few compression sets, excellent heat resistance, flexibility and rebound resistance); Honma Tflf 26, 28, 93. See also KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). Appellants fail to direct us to persuasive evidence or provide an adequate technical explanation to establish why the Examiner’s articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appellants’ assertions that the rejection does not establish that “the proposed modification would have ‘yielded nothing more than predictable results’” and “a nexus between the proposed modification and the stated motivation for making the combination” (App. Br. 6) are conclusory and, without more, insufficient to rebut or otherwise establish reversible error in the Examiner’s factual findings and analysis in this regard. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ arguments regarding the Examiner’s inherency findings and that “both Kresge and Honma are silent with respect to the claimed 8 Appeal 2016-008687 Application 13/339,928 blister rating and unaged and heat aged peel tear strengths” (App. Br. 6, 7) are not persuasive of reversible error in the Examiner’s rejection for the well-stated reasons provided by the Examiner at pages 26—30 of the Answer. As the Examiner finds (Ans. 29—30), because the foam composition of Kresge, as modified by Honma, is substantially similar to the claimed foam composition in both components and method of manufacture, it follows that the prior art foam composition would inherently possess the same blister rating, unaged peel tear strength, and heat aged tear strength as the claimed composition. When a claimed product reasonably appears to be substantially the same as a product disclosed in the prior art, the burden of proof is on the applicants to prove that the prior art product does not inherently or necessarily possess the characteristics attributed to the claimed product and it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicants is the same. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (holding that similarity in terms of reactants and reaction conditions amounted to a prima facie case of unpatentability and that the burden was properly shifted to applicants to show that the prior art product does not have the claimed property); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants’ contentions regarding Comparative Example C3 of the Specification are equally unpersuasive for the reasons provided by the Examiner at pages 30-31 of the Answer. In particular, we concur with the Examiner’s finding that Comparative Example C3 is not commensurate with the scope of the claims. For example, as the Examiner explains (Ans. 30), although claim 1 recites an elastic component comprising “about 70 to about 95 parts by weight of at least one polypropylene polymer,” Comparative 9 Appeal 2016-008687 Application 13/339,928 Example C3 comprises only 70% polypropylene and does not disclose or provide results for the remainder of the claimed range. As the Examiner further explains {id. at 30), because the lamination processes of Examples A3, A4, and A5 differ from the lamination processes of Comparative Example C3, Appellants’ comparison between Comparative Example C3 and Examples A3, A4, and A5 do not reflect a proper side-by-side comparison. Accordingly, we affirm the Examiner’s rejection of claims 1,9, 10, 13, 18, 21, 22, 37, and 38 under 35 U.S.C. § 103(a) as obvious over the combination of Kresge and Honma. Rejection 2 Appellants argue claims 1, 9, 13, 18, 21, 37, 38, 40, 42, 44, 46, 48, and 50 as a group. App. Br. 10. We select claim 1 as representative and the remaining claims subject to this rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determines that the combination of Ono and Honma suggests a foam composition satisfying all of the limitations of claim 1 and would have rendered claim 1 obvious. Ans. 7—9 (citing Ono 13, 40, 41, 53, 68, 88, 90, 98; Honma Tflf 1, 26, 28, 41, 45, 63, 65, 84, 93, claim 5). Appellants argue that the Examiner’s rejection should be reversed because Ono does not disclose a “foam” composition, as required by the claims. App. Br. 10. In particular, Appellants argue that although “Ono discloses that the resin composition may comprise various additives, including a foaming agent,” the reference “does not specify that the final result is a foamed resin composition.” Id. 10 Appeal 2016-008687 Application 13/339,928 Appellants further argue that the Examiner fails to explain or make findings sufficient to establish why one of ordinary skill in the art would have had reason to modify or combine Ono and Honma as set forth in the rejection and there was a reasonable expectation of success in doing so. App. Br. 10, 11. Appellants also argue that Honma does not teach or suggest that “the density is individually responsible for reducing surface deterioration or compression sets or improving heat resistance and rebound resistance.” Id. at 12. We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s rejection. We find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination that the combination of Ono and Honma suggests all of the limitations of claim 1, including a “foam composition,” and would have rendered the claim obvious. Ono H 13, 40, 41, 53, 68, 88, 90, 98; Honma 11 1, 26, 28, 41, 45, 63, 65, 84, 93, claim 5. As the Examiner finds (Ans. 31—32), Ono teaches a composition comprising a foaming agent, a component comprising at least one selected from the group consisting of CEBC, SEBS, SEPS, SEEPS and SEP, and 20 to 500 parts by weight of at least one polypropylene polymer. Ono H 13, 40, 41, 53, 68, 88, 90, 98. In particular, regarding the claimed “foam composition,” paragraph 98 of Ono explicitly teaches that the disclosed thermoplastic elastomer composition may contain “foaming agents (organic and inorganic).” As the Examiner further finds (Ans. 32), Honma teaches a foam composition comprising a blowing agent, an elastomer of a copolymer 11 Appeal 2016-008687 Application 13/339,928 crystalline ethylene and crystalline butene (CEBC). Honma 1, 28, 41, 45, 65, 84, claim 5. Specifically, paragraph 1 of Honma, discloses that: The present invention relates to the thermoplastic-elastomer- olefin foam which uses a thermoplastic-elastomer-olefm constituent and the constituent concerned and which is flexible and has few compression sets. Id. 11 (emphasis added). Appellants’ arguments reveal no reversible error in the Examiner’s factual findings in this regard. Moreover, we find that the Examiner provides a reasonable basis and identifies a preponderance of the evidence in the record explaining why one of ordinary skill would have had reason to combine the teachings of Ono and Honma to arrive at Appellants’ claimed invention. Ans. 9 (explaining that one of ordinary skill would have had reason to incorporate Honma’s elastomer into Ono’s foam composition and modify the density of Ono’s foam composition in order to provide a foam with no surface deterioration, few compression sets, excellent heat resistance, flexibility and rebound resistance); see also id. at 34—35. Appellants’ disagreement with the Examiner’s reason for combining the references, without more, is insufficient to establish reversible error in the Examiner’s factual findings and analysis in this regard. KSR, 550 U.S. at 420. Appellants’ assertions that one of ordinary skill would not have had a reasonable expectation of success in doing so (App. Br. 11) is conclusory and, without more, insufficient to rebut or otherwise establish reversible error. De Blauwe, 736 F.2d at 705. Appellants’ contention that Honma does not teach or suggest that “the density is individually responsible for reducing surface deterioration or 12 Appeal 2016-008687 Application 13/339,928 compression sets or improving heat resistance and rebound resistance” (App. Br. 12) is equally unpersuasive because it, too, is conclusory and Appellants do not provide an adequate technical explanation to support it. As for the remaining arguments, Appellants essentially repeat many of the same arguments previously presented in response to the Examiner’s Rejection 1. For example, Appellants contend that Ono fails to disclose a foam having a density of about 85 to about 125 kg/m3 and the Examiner “does not present any findings of fact that the density of Ono’s composition could have been modified by ‘known methods’ to obtain a foam having each of the claimed properties with any degree of predictability.” Id. at 11; Reply Br. 1,2. Appellants also contend that the Examiner’s rejection does not establish that “the proposed modification would have ‘yielded nothing more than predictable results’” and “a nexus between the proposed modification and the stated motivation for making the combination.” App. Br. 12. We do not find Appellants’ repetitive arguments in this regard persuasive of reversible error for essentially the same reasons previously discussed above in affirming the Examiner’s Rejection 1 and for the well- stated reasons provided by the Examiner at pages 32—38 of the Answer. Accordingly, we affirm the Examiner’s rejection of claims 1,9, 10, 13, 18, 21, 37, 38, 40, 42, 44, 46, 48, and 50 under 35 U.S.C. § 103(a) as obvious over the combination of Ono and Honma. Rejections 3, 4, and 5 Appellants do not present any additional substantive arguments in response to the Examiner’s Rejections 3, 4, and 5, stated above. Rather, Appellants rely on the same arguments presented above in response to the Examiner’s Rejections 1 and 2 regarding the combination of Kresge and 13 Appeal 2016-008687 Application 13/339,928 Honma and the combination Ono and Honma, respectively. See App. Br. 15. Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming Rejections 1 and 2, we affirm the Examiner’s Rejections 3, 4, and 5. DECISION The Examiner’s rejections of claims 1, 9, 10, 13, 18, 21, 22, 37, 38, and 40—51 are affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 14 Copy with citationCopy as parenthetical citation