Ex Parte Bastin et al

Patent Trials and Appeals Board

May 7, 2019

13511527 - (D) (P.T.A.B. May. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/511,527 08/08/2012
53609 7590 05/09/2019
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Pierre Bastin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
509216 7031
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/09/2019 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE BASTIN and PASCAL DI CROCE
Appeal2018-003787
Application 13/511,527
Technology Center 1700
Before KAREN M. HASTINGS, GRACE KARAFFA OBERMANN, and
SHELDON M. McGEE, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek relief from the Examiner's non-final rejection of
claims 16-19 and 21-41 under 35 U.S.C. § 103(a). Appeal Br. 2-23. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
We affirm the Examiner's rejections of claims 16-19, 21-31, and 33-
41. We reverse the Examiner's rejection of claim 32.
1 Appellants identify Tarkett GDL S.A. as the real party in interest. Appeal
Br. 2.
Appeal2018-003787
Application 13/511,527
STATEMENT OF THE CASE
Appellants explain that alternatives to traditional PVC-based
coverings have been developed due to environmental issues with traditional
PVC coverings. Spec. ,-J 3. Such alternative surface coverings, however,
have presented several drawbacks, including poor mechanical properties,
especially poor residual indentation, and softness in comparison to PVC-
based surface coverings. Id. ,-i 5. Appellants describe their invention as
providing a PVC-free floor or wall covering, which has residual indentation
properties similar to PVC-based surface coverings. Id. ,-i,-i 7-8.
OPINION
Claims 16--18, 21-29, 31, and 33-41
The Examiner rejects claims 16-18, 21-29, 31, and 33-41 under
35 U.S.C. § 103(a) as obvious over Viet2 in view ofHarwood3 (as evidenced
by Kang4) and Schumacher. 5 Non-Final Action 6-9. Appellants argue these
claims as a group. Appeal Br. 6-21. We select claim 16 as representative.
37 C.F.R. § 41.37(c)(l)(iv).
Claim 16 states:
A PVC-free floor or wall covering comprising at least
one layer of a thermoplastic composition, said composition
compnsmg:
2 WO 99/07784 (published Feb. 18, 1999). A machine translation of Viet
was entered into the record on February 5, 2014.
3 EP 1 184 166 A2 (published June 3, 2002).
4 Tae-Kyu Kang & Yang Kim, Properties of Poly(Butylene
Terephthalate)/Functionalized Polyolefin Blends, 3 Polymer Engineering &
Sci. 603 (1997).
5 US 4,191,798 (issued Mar. 4, 1980).
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Application 13/511,527
a polymer matrix consisting essentially of:
20 to 40 parts of EV A;
20 to 40 parts ofVLDPE having a density between
0.895 and 0.905 g/cm3;
20 to 40 parts of POE or POP having a density
between 0.870 and 0.902 g/cm3;
10 to 40 parts of at least one polymer having 0.5 to
3 .1 % by weight acid anhydride groups;
the total amount of polymer in said polymer matrix being
combined to 100 parts;
said EV A, VLDPE, and POE or POP together
representing 60 to 90 parts per weight of said polymer matrix
and having a Melt Flow Index (MFI) of between 0.6 and 3g/10
min at 190 °C under 2.16 kg weight;
and said at least one polymer having 0.5 to 3.1 % by
weight of acid anhydride groups representing 10 to 40 parts per
weight of said polymer matrix;
the at least one layer of the thermoplastic composition
further comprising from 100 to 500 parts of filler per 100 parts
of polymer and from 2 to 25 parts of a mineral oil per 100 parts
of polymer.
The Examiner relies on Viet for all of the limitations of claim 16 except ( 1)
the inclusion of a polymer having acid anhydride groups in the polymer
matrix and (2) the specific amount of mineral oil used in the composition.
The Examiner turns to Harwood and Schumacher for teaching those
respective limitations. Non-Final Action 6-7.
Appellants contend that (1) the Examiner fails to identify reasons with
a rational underpinning to modify Viet in view of Harwood; (2) the
combination of references fails to teach that the polymer having acid
anhydride groups represents 10 to 40 parts per weight of the polymer matrix;
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and (3) the Examiner identifies no reasons with a rational underpinning to
modify Viet in view of Schumacher. Appeal Br. 6-21.
(1) Reasons with a Rational Underpinning To Modify Viet with Harwood
First, the Examiner finds that it would have been obvious to modify
Viet by including a polymer having acid anhydride groups as taught in
Harwood to reduce costs, increase opacity, and improve layer adhesion by
facilitating the inclusion of high amounts of filler in an ethylene/vinyl
acetate (EVA) resin. Non-Final Action 6-7 (citing Harwood ,i,i 25-26, 36).
Appellants argue that this rationale lacks rational underpinning because Viet
already teaches a higher amount of filler loading than Harwood. Appeal
Br. 6. Specifically, Appellants compare Viet's use of metallocene polymers
to achieve filler levels of 25-1000 phr with Harwood's Example 1 use of
acid-anhydride-containing-polymers to achieve a filler level of 275 phr. Id.
at 7-8; Reply Br. 6-7.
We agree with the Examiner that Appellants take an overly narrow
view of the references (Answer 9), because the filler level of Harwood' s
Example 1 is less than the filler level reported by Viet, only when one
focuses on the portions of Viet's range that are above 275 phr (Appeal
Br. 7-8; Reply Br. 7). We, however, consider the entirety of Viet's
disclosure, which contemplates a filler range of 25-1000 phr, because
Appellants provide no reason why the ordinarily skilled artisan would have
narrowly focused on the amounts in the range that are above 275 phr. Here,
Harwood's teaching of adding an acid anhydride binder polymer to an EVA
resin is applicable to embodiments of Viet's compositions that would have
been understood to achieve up to only 250 or 270 phr of filler. Further,
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Harwood's teaching is applicable to the portions of Viet's filler range up to
250 or 270 phr. See Harwood ,i 26 (teaching that "[i]n the absence of such a
binder polymer, the practical maximum proportion of a filler ... may be
found to be about 250 or 270 phr" but "[ w ]hen such a binder polymer is
present in the composition, it has been found that higher proportions of the
filler can be used").
Appellants suggest that one of ordinary skill in the art still would not
have found it necessary to look to Harwood to increase filler levels because
Viet already achieves a filler level up to 1000 phr. On that point, however,
Appellants rely on case law from the Board and our reviewing court.
Appeal Br. 9-11 (citing In re Rouffet, 149 F.3d 1350, 1357-58 (Fed. Cir.
1998); Ex parte Ohmura, Appeal 2009-014953, slip op. at 4-5 (BPAI Nov.
18, 2011) (nonprecedential); Ex parte Rinkevich, Appeal 2007-1317, slip op.
at 8-9 (BPAI May 29, 2007) (nonprecedential)); Reply Br. 7-8. We are not
persuaded, however, that those cases support a finding that adding
Harwood' s binder polymer (known to increase filler levels) to Viet's
formulation (to increase filler levels) would have been nonobvious.
On the contrary, as the Examiner correctly points out, Appellants rely
on nonbinding Board decisions that are "fundamentally different from the
present case"-specifically, they "deal with different facts" in the context of
"mechanical patent applications." Answer 10. Appellants' further reliance
on our reviewing court's decision in In re Rouffet is not persuasive to
establish reversible error because here, unlike there, the Examiner identifies
a motivation to combine Viet and Harwood that is based on an express
teaching in Harwood. Id. ( citing Harwood ,i 26); see also In re Rouffet, 149
F.3d 1350, 1357 (Fed. Cir. 1998) (explaining that "the teachings of the prior
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art" are a "source[ ] for a motivation to combine references," but
determining that the Board did not rely upon this or other sources in support
of a motivation to combine).
In addition, Appellants' argument is unpersuasive because the record
does not support a conclusion that Viet's formulation offers the complete
and only solution to facilitating higher filler amounts, such that one would
not have considered or found obvious the use of additional components,
including Harwood's binder polymer, to obtain even better results.
Appellants' suggestion that one simply could have increased the amount of
metallocene polymers in Viet's composition to further increase filler
amounts above 250 or 270 phr does not establish the nonobviousness of
adding Harwood' s binder (instead of increasing the amount of metallocene
polymer) for the same purpose to accomplish the same result. In our view,
the evidence supports a conclusion that it would have been obvious to one of
ordinary skill in the art to begin with Viet's composition, which may contain
up to 250 or 270 phr of filler, then follow Harwood's express teaching to add
a binder polymer to further increase the filler amount. See Harwood ,i 26.
Appellants also contend that modifying Viet with Harwood would
actually reduce the amount of filler that can be used in the composition.
Appeal Br. 7-8; Reply Br. 6-7. Appellants base that contention on the fact
that Harwood's Example 1 achieves a filler level of approximately 275 phr.
The formulation of Harwood's Example 1, however, is not the same as the
formulation of Viet, as modified by Harwood, upon which the rejection is
based. The modified formulation of Viet includes Viet's metallocene
polymer and, further, as discussed above, an amount of filler that may be
less than 275 phr as disclosed in Viet. Accordingly, we find unpersuasive
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Appellants' argument that adding Harwood's binder polymer to Viet's
composition would actually reduce the amount of filler that can be used in
the modified composition-an argument, moreover, that is based on
unsupported attorney argument. Answer 9.
(2)Appellants 'Argument That in the Proposed Combination, the
Polymer with Acid Anhydride Groups Would Not Equal 10 to 40 Parts
per Weight of the Polymer Matrix
Second, Appellants argue that, after normalization, the relative
amount of an acid anhydride group containing polymer in Harwood is 4.8
to 9 .1 phr, which is below the range of 10 to 40 phr recited in claim 16.
Appeal Br. 11-13; Reply Br. 8-9. The Examiner, however, finds that the
combined disclosures of Viet and Harwood suggest amounts of the polymer
having acid anhydride groups that "at least are close enough to the presently
claimed amounts." Answer 11. The Examiner correctly explains that "a
prima facie case of obviousness exists where the claimed ranges and prior
art ranges do not overlap but are close enough that one skilled in the art
would have expected them to have the same properties," which shifts the
burden to Appellants to rebut the primafacie case. Id. at 11-12 (citing
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed. Cir. 1985)).
Here, the Examiner reasonably finds that the range suggested by the
prior art is close enough to the claimed range to expect the same properties,
given that the difference between 9 .1 phr and 10 phr is less than 1 phr.
Appellants, on the other hand, merely point out that the high end of
Harwood's range would have to be increased by more than 10% to overlap
Appellants' claimed range. Appeal Br. 13. In our view, Appellants'
argument in that regard does not effectively rebut the Examiner's finding
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that the difference is close enough that one of ordinary skill in the art would
have expected the same properties. See Answer 11-12; Reply Br. 8-10.
(3)Appellants 'Argument That There Is No Rational Underpinning To
Modify Viet with Schumacher
Third, the Examiner finds that Schumacher teaches the inclusion of
about 2% to about 15% of mineral oil to facilitate high filler loadings in
EV A blends, and for that reason, that it would have been obvious to include
that amount of mineral oil in Viet's formulation. Non-Final Action 6 (citing
Schumacher 4:44-48, 4:64-5:3). Appellants advance a similar argument
here as with Harwood-that is, that the Examiner's reasoning lacks rational
underpinning because Viet already teaches a higher amount of filler loading
than Schumacher. Appeal Br. 16. Appellants assert that none of
Schumacher's example compositions reach the 1000 phr level of filler
disclosed in Viet, that Viet's use of 40 phr of mineral oil in Table II achieves
564 phr of filler, and that, to the extent Schumacher achieves a higher filler
level than those disclosed in Viet's Table II, Schumacher requires a higher
mineral oil level outside the scope of Appellants' claims. Id. at 16-21;
Reply Br. 10-12.
The Examiner finds, and we agree, that Appellants take an overly
narrow view of Viet and Schumacher by only considering the filler amounts
disclosed in Table II (564 phr) and at the upper limit of Viet's range (1000
phr), when in fact Viet teaches a range of 25-1000 phr of filler. Answer 12.
Appellants argue that "modifying Viet according to Schumacher would
actually result in a decrease in filler loading in contrast to the Examiner's
assertion" (Reply Br. 11 ), but the Examiner did not premise the rejection on
a comparison of Schumacher to Viet's Table II (see Non-Final Action 6).
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Appellants' use of Table II as a "baseline" (Reply Br. 11) is not persuasive
because a comparison to Table II alone does not establish that the use of
mineral oil in the amount disclosed in Schumacher would cause the filler
levels to fall below the acceptable range of 25-1000 phr taught in Viet or
outside the range required by claim 16.
Claims 19 and 3 0
The Examiner rejects claims 19 and 30 under 35 U.S.C. § 103(a) as
obvious over Viet in view of Harwood ( as evidenced by Kang) and
Harwood, and further in view ofMayer. 6 Non-Final Action 10. Appellants
argue that the Examiner erred in rejecting claims 19 and 30 as prima facie
obvious for the same reasons discussed with respect to claim 16. See Appeal
Br. 21. Accordingly, we sustain the Examiner's rejection of claims 19
and 30 for the same reasons as set forth above.
Claim 32
The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as obvious
over Mauk. 7 Non-Final Action 10-11. Claim 32 states:
A PVC free floor or wall covering comprising at least
one layer of a thermoplastic composition, said composition
compnsmg:
a polymer matrix consisting essentially of:
80 to 90 parts of a VLDPE having a density of
between 0.895 and 0.905 g/cm3;
10 to 20 parts of a metallocene-catalyzed
elastomer having between 0.5 and 3.1 % by weight of
acid anhydride groups;
6 WO 02/26879 Al (published Apr. 4, 2002).
7 US 7,019,087 B2 (issued Mar. 28, 2006).
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the at least one layer of the thermoplastic composition
further comprising from 100 to 500 parts of filler per 100 parts
of polymer and from 2 to 25 parts of a mineral oil per 100 parts
of polymer;
wherein the thermoplastic composition has a residual
indentation of 0.2 mm or less in a layer of 2 mm thickness, 60
seconds after stopping exposure to a pressure of 500 N in an
area of 0.25 cm2; and
a hardness of between 2000 and 3000 mN as measured
by bending a sample of the thermoplastic composition having a
length of 100 mm and a width of 40 mm, the bending angle
being 30 degree, the distance to an axis for bending being 50
mm.
Appellants argue that the Examiner fails to demonstrate that Mauk teaches
or suggests a "thermoplastic composition" as recited in claim 32. Appeal
Br. 21.
Appellants point out that Mauk discloses a composition with cross-
linking agents such that any floor or wall covering resulting from that
composition will be a thermoset elastomer instead of a thermoplastic
composition. Id. (citing Mauk 2:36-41, 2:46-55, 3: 1-23, elm. l); Reply
Br. 12. In response, the Examiner finds that because the claim contains the
transitional phrase "comprising," the claim is permissive as to what is
included in the composition. Answer 13. Appellants, however, argue that
an interpretation of the claim that allows for inclusion of peroxides and
cross-linking agents would fail to give any meaning to the claim term
"thermoplastic composition." Appeal Br. 22.
An interpretation that allows components that produce a thermoset
instead of a thermoplastic composition is broad but not reasonable.
Claim 32 recites a "thermoplastic composition," and "[t]he open-ended
transition 'comprising' does not free the claim from [this] limitation[]."
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Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed.
Cir. 2001 ). In other words, even if the transitional phrase "comprising" is
permissive, it would be unreasonable to interpret claim 32 as allowing for
additional components that change the nature of the composition from a
"thermoplastic composition" ( as required by the claim language) to a
thermoset. The Examiner contends that Appellants may not introduce
encyclopedia definitions of a "thermoplastic" and "thermoset plastic" on
appeal (Answer 13), but notwithstanding Appellants' reliance on this
encyclopedia, there is no dispute on the record that a thermoplastic is
different than a thermoset and that the use of organic peroxides and cross-
linking agents in Mauk results in a thermoset.
ORDER
The Examiner's rejections of claims 16-19, 21-31, and 33-41 are
affirmed.
The Examiner's rejection of claim 32 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED-IN-PART
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