Ex Parte Bieser et al

Board of Patent Appeals and Interferences

Aug 16, 2011

11492379 (B.P.A.I. Aug. 16, 2011)

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.
11/492,379 07/25/2006 John O. Bieser COS-1075 CIP 6838
25264 7590 08/17/2011
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
08/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN O. BIESER and FENGKUI LI
__________

Appeal 2010-012048
Application 11/492,379
Technology Center 1700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to processes for
preparing polyolefin blends. The Examiner entered rejections for
obviousness and obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the
obviousness rejection.

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Application 11/492,379

2

STATEMENT OF THE CASE
Claims 1-11 and 23-27 stand rejected and appealed (App. Br. 2).
Claims 1 and 23, the independent claims, are representative and read as
follows:
1. A process of forming polyolefin blends comprising:
providing a polyolefin comprising a first portion and a
second portion;
providing a concentrated monomer system comprising an
acrylic monomer and the first portion of the polyolefin, wherein
the concentrated monomer system comprises the acrylic
monomer at a first concentration; and
blending the concentrated monomer system with the
second portion of the polyolefin to form a modified polyolefin,
wherein the modified polyolefin comprises a second
concentration of acrylic monomer that is less than the first
concentration.

23. A process of forming a modified polyolefin comprising:
providing a polyolefin comprising a first portion and a
second portion;
providing a concentrated monomer system comprising a
first monomer and the first portion of the polyolefin, wherein
the concentrated monomer system comprises the acrylic
monomer; and
blending the concentrated monomer system with the
second portion of the polyolefin to form a modified polyolefin.

The sole issue before us for review is the Examiner’s rejection of
claims 1-11 and 23-27 under 35 U.S.C. § 103(a) as obvious over Bergström
1

(Ans. 3-4).
2

1
U.S. Patent No. 6,262,177 B1 (issued July 17, 2001).
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Application 11/492,379

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OBVIOUSNESS
The Examiner cites Bergström as disclosing a process of blending a
polyolefin with an acrylic monomer system, but conceded that Bergström is
“silent regarding order of mixing polyolefin with acrylic monomer system as
it required by language of Claims 1 and 23, wherein portion of same
polyolefin added after mixing portion of polyolefin and acrylic monomer
system” (Ans. 4).
The Examiner contends, however, that the CCPA, our reviewing
court’s predecessor, has held that “any changes in [the] sequence of adding
ingredients is prima facie obvious in the absence of new or unexpected
results” (id. (citing In re Burhans, 154 F.2d 690 (CCPA 1946) and In re
Gibson, 39 F.2d 975 (CCPA 1930))).
Thus, the Examiner concludes, an ordinary artisan would have
considered it obvious to modify Bergström’s process by “mixing [a] portion
of polyolefin with acrylic monomer in first step and add rest of same
polyolefin to the mix during second step, until unexpected results clearly
attributed to specific order of mixing can be shown by Applicant” (id.).
Appellants argue that the process recited in claims 1 and 23 does not
differ from Bergström merely in a change in the order of mixing the
ingredients described in the reference (App. Br. 3). Rather, Appellants
argue, Bergström teaches “blending neat polyacrylate polymer with the

2
The Examiner also provisionally rejected claims for obviousness-type
double patenting over Application Ser. No. 11/796,061 (Ans. 4-6).
Appellants do not request review of that rejection (App. Br. 3), and our
review of the electronic file of the allegedly conflicting application reveals,
however, that that application has been abandoned, and the rejection is
therefore moot.
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Application 11/492,379

4
polyolefin. It is clear from such teachings, that Bergstrom [sic] does not
contemplate utilizing a first and second portion of the polyolefin” (id.).
Moreover, Appellants urge, the Examiner “points to no teaching in
Bergstrom [sic] to modify the process in a way that would lead to either the
features of the pending claims, or to a sequence in steps in which such order
could be merely changed to result in the process of the pending claims” (id.).
The Examiner responds that Bergström blends its acrylate monomer
into the polyolefin “preferably . . . by [the] method of impregnating [the]
liquid monomer system into polyolefin according [to] US Patent 5,300,578”
3

(Ans. 6-7). Thus, the Examiner reasons:
[I]mpregnating [a] mixture of liquid monomers to polyolefin
pellets by slowly mixing as disclosed by US Patent 5,300,578
(see abstract) is a process of forming [a] blend comprising
polyolefin and [a] concentrated monomer system as i[s]
required by language of appellant’s claims 1 and 23. In
addition, Bergstrom teaches the use of impregnating pellets in
melt blending. Therefore, disclosure of Bergstrom provides
method of blending of concentrated monomer system with
polyolefin.

(Id. at 7)
The Examiner further reasons that, in light of these teachings,
Bergström “does not teach [a] specific mixing order of ingredients.
However, dividing ingredients to one or more portions and incrementally
adding portions to mixture are not only well known in the art, but considered
obvious by court” (id. (citing In re Burhans, 154 F.2d 690, and In re Gibson,
39 F.2d 975)).

3
Torvald Vestberg et al., U.S. Patent No. 5,300,578 (filed January 27,
1993).
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In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. “[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.”

In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted,
bracketed material in original).
Thus, while the Supreme Court has emphasized “an expansive and
flexible approach” to the obviousness question, KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415 (2007), the Court also reaffirmed the importance of
determining “whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418 (emphasis
added).
Ultimately, therefore, “[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
We are not persuaded that the Examiner has made a prima facie case
of obviousness. Independent claims 1 and 23 both require the practitioner to
blend a first portion of polyolefin with an acrylic monomer thereby
producing a first composition containing polyolefin and acrylic monomer,
and then blend a second portion of polyolefin with the first composition.
We agree with the Examiner that, in the abstract, simple switching of
the order of adding ingredients to a mixture can be obvious. Here, however,
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given the teachings in Bergström, we are not persuaded that the Examiner
has adequately explained why an ordinary artisan would have viewed
Bergström’s process as the preparation of a simple mixture, to which any
order of adding ingredients would be considered obvious.
Specifically, Bergström describes techniques of improving processes
of preparing polyacrylate/polyolefin blends. As Bergström explains, it was
known in the art that polyacrylate/polyolefin blends were useful products:
According to the teaching of U.S. Pat. No. 5,300,578,
these blends can be produced by polymerizing liquid
monomeric units of the acrylate component into solid
elastomeric polar polymer within the pellet structure of the
polyolefin component. This free radical polymerization process
occurs at relatively low temperature and under low mechanical
shear conditions to provide an intimate homogeneous mixture
of the components in the form of a free-flowing pellet.

(Bergström, col. 1, ll. 57-65.) To improve these processes, Bergström
discloses that “by retarding the termination reactions and, thus, prolonging
the life time of the radicals, an increased number of cross-links can be
formed within the polyacrylate phase of the blends during compounding”
(id. at col. 2, ll. 42-45).
While Bergstrom discloses that the polyacrylate and polyolefin can be
simply blended batchwise or continuously (id. at col. 4, ll. 39-45),
Bergstrom also discloses that acrylic monomers can be impregnated into the
polyolefin and polymerized in situ in a polyolefin pellet:
[A]ccording to a preferred embodiment of the present
invention, the blends are produced as single freeflowing pellets
according to the process of U.S. Pat. No. 5,300,578 [Vestberg]
by polymerizing monomeric acrylic acid units into a solid
elastomeric polar polymer within a polyolefin in the form of a
pellet. In order to polymerize the acrylic acid units in the
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Application 11/492,379

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polyolefin matrix, the acrylic acid monomers are fed into the
pellets together with a radical initiator, preferably a peroxide.

(Id. at col. 4, ll. 46-54.) As Vestberg explains, the polyolefin/polyacrylate
composite is prepared when the vinyl (i.e. acrylate) monomer is
“impregnated in . . . polyolefine particles by slowly mixing these at a
temperature of about 20º-130º C. while maintaining the particle structure of
the polyolefine” (Vestberg, abstract).
Thus, given the teachings in both Bergström and Vestberg that the
acrylate monomers are to be impregnated into polyolefin pellets and
polymerized in situ, we are not persuaded that the Examiner has adequately
explained why an ordinary artisan would have considered the prior art
blending process to be a simple mixing step in which the order of adding
ingredients would be irrelevant. Moreover, the Examiner has not adequately
explained how or why Vestberg’s teaching of slowly mixing the polyolefin
pellets and the acrylate monomer composition would have led an ordinary
practitioner to instead add the polyolefin to the monomer in at least two
discrete portions, as claims 1 and 23 both require.
Accordingly, we are not persuaded that the teachings advanced by the
Examiner support the rationale that an ordinary artisan would have
considered the processes recited in claims 1 and 23 merely an obvious
change in the order of adding the ingredients in Bergström’s process. As we
are not persuaded that the Examiner has made a prima facie case of
obviousness, we reverse the Examiner’s rejection of claims 1 and 23, and
their dependents.

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REVERSED

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