Ex Parte Bieser et alDownload PDFPatent Trial and Appeal BoardFeb 9, 201612490706 (P.T.A.B. Feb. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/490,706 0612412009 John 0. Bieser 25264 7590 02/10/2016 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 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. COS-1136RCE 4008 EXAMINER ORLANDO, MICHAEL N ART UNIT PAPER NUMBER 1746 MAILDATE DELIVERY MODE 02/10/2016 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 JOHN 0. BIESER, FENGKUI LI, and LEA ANN NAIRN 1 Appeal2014-000438 Application 12/490,706 Technology Center 1700 Before BRADLEY R. GARRIS, GEORGE C. BEST, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-18 and 21-25. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm. BACKGROUND Appellants' claimed invention relates to hot-melt adhesives and methods of manufacturing hot-melt adhesives comprising reactively 1 According to the Appeal Brief, the Real Party in Interest is FINA Technology, Inc. App. Br. 5. Appeal2014-000438 Application 12/490,706 extruding a polyolefin, an acrylate containing compound, and an initiator to form a polyolefin/polyacrylate blend. Spec. i-fi-1 4, 7. Independent claim 1 is representative and is reproduced below from the Claims Appendix: 1. A method comprising: reactively extruding; a polyolefin, an acrylate containing compound, an initiator to form a polyolefin/polyacrylate blend, wherein the blend has a melt flow rate of from 10 g/10 min. to 50,000 g/10 min., optionally an additive selected from the group consisting of stabilizers, ultraviolet screening agents, oxidants, anti-oxidants, anti-static agents, ultraviolet light absorbents, fire retardants, mold release agents, coloring agents, pigments/dyes, fillers, blowing agents, fluorescing agent, surfactant, tackifiers, processing oils, and combinations thereof; and applying the blend in a melted form to one or more substrates. REJECTIONS The Examiner maintains the following rejections: 1. Claim 24 under 35 U.S.C. § 112 i-f l for failing to comply with the written description requirement; 2. Claims 1-18 and 21-25 as unpatentable under 35 U.S.C. § 103(a) over Tse· 2 ' 3. Claims 1-18 and 21-25 as unpatentable under 35 U.S.C. § 103(a) over Tse in view ofKrabbenborg;3 2 Tse et al., US 2006/0293424 Al, published Dec. 28, 2006 ("Tse"). 3 Krabbenborg et al., US 2004/0260012 Al, published Dec. 23, 2004 ("Krab benborg"). 2 Appeal2014-000438 Application 12/490,706 OPINION 1. Rejection under 35 U.S.C. § 112 f 1 Appellants do not present arguments directed to the rejection of claim 24 under 35 U.S.C. § 112 i-f 1. See Ans. 14. We, therefore, affirm the Examiner's rejection. 2. Rejection under 35 U.S. C. § 103 over Tse Independent claim 1 requires, inter alia, a polyolefin/polyacrylate blend having a melt flow rate of from 10 g/10 min to 50,000 g/10 min. App. Br. 14 (Claims App'x). Claim 18, which depends from claim 1, requires a blend having a melt flow rate of from 50 g/10 min to 30,000 g/10 min. 4 Id. at 18. The Examiner finds that Tse discloses the claimed method of forming a polyolefin/polyacrylate blend, but states that Tse fails to explicitly teach that the blend has a melt flow rate falling within the range recited in claim 1. Ans. 5. The Examiner, however, finds that Tse's adhesive blend is substantially identical to the blend recited in claim 1, and therefore shifts the burden to Appellants to prove that Tse' s adhesive blend does not have a melt flow rate that falls within the recited range. Id. (citing In re Best, 562 F .2d 1252, 1255 (CCPA 1977)). The Examiner further finds that it would have been obvious ... to have chosen a [melt flow rate] for the polyolefin in the claimed range through specific choices of polyolefinic molecular weights to ensure proper 4 Other than dependent claim 18, Appellants do not separately argue the patentability of any dependent claim. Therefore, claims 2-17 and 21-25 stand or fall with independent claim 1. Additionally, Appellants rely on the same arguments with regard to the patentability of claim 1 and claim 18. Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal2014-000438 Application 12/490,706 extrudability and coating of the hot melt adhesive since the courts have held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. Id. at 5---6 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellants argue that Tse does not disclose a product that is identical or substantially identical to the blend recited in the claims because Tse's adhesive blend includes a functionalized propylene copolymer, which is an element that is not required by claim 1. App. Br. 11. According to Appellants, "[f]unctionalization of polymers can modify the melt flow of such polymers, and the inclusion of a functionalized propylene copolymer in a polymeric blend can modify the melt flow of that blend." Id. at 12; see Reply Br. 7-8. Appellants thus argue that the Examiner has failed to establish that the melt flow blend of Tse necessarily falls within the claimed range. App. Br. 12, Reply Br. 8. Appellants further argue that the claimed method "provides for a blend that has an increased melt flow rate relative to the polyolefin," and that nothing in Tse would lead a skilled artisan to conclude that reactively extruding a polyolefin, acrylate containing compound, and an initiator would result in a blend having a melt flow rate falling within the claimed range. App. Br. 12-13 (citing Spec. i-fi-152, 59, and 60). We are not persuaded by Appellants' argument that the Examiner erred by determining that Tse discloses an identical or substantially identical product to the blend recited in claim 1. Appellants do not contest the Examiner's finding that Tse teaches or suggests reactively extruding a polyolefin and acrylate to form a hot melt adhesive blend. Nor do Appellants argue that Tse fails to disclose any of the other ingredients in the recited blend or any other step of the claimed method. Instead, Appellants 4 Appeal2014-000438 Application 12/490,706 focus on Tse's inclusion of an additional component not required by the claim. Claim 1, however, uses the term "comprising," which is open-ended, and allows for other elements in addition to those specified in a claim. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Additionally, Tse teaches that its adhesive blend may include only 0.1 wt % of the functionalized random propylene copolymer. See Tse i-f 161. We, therefore, find that the Examiner reasonably determined that Tse discloses an identical or substantially identical product to the blend recited in claim 1, and properly shifted the burden to Appellants to demonstrate that the prior art products to not possess a melt flow rate falling within the claimed range. Appellants, however, fail to come forward with evidence and/or arguments demonstrating sufficiently that Tse's adhesive blends do not have the required melt flow rate. Appellants argue that "the inclusion of a functionalized propylene copolymer in a polymeric blend can modify the melt flow of that blend," but offer no factual support for this assertion. See App. Br. 12-13; Reply Br. 7-8. Nor do Appellants address the Examiner's finding that Tse teaches that its functionalized random propylene copolymer preferably has a melt flow rate between 0.5 to 500 g/10 min, which overlaps the claimed range. Ans. 15. Instead, Appellants incorrectly maintain that it is the Examiner's burden to establish that the blend of Tse would necessarily have the melt flow rate recited in claim 1. See App. Br. 12; Reply Br. 8. We are also unpersuaded by Appellants' argument that there is nothing in Tse that would lead one skilled in the art to conclude that reactively extruding certain ingredients would form a blend having the claimed melt flow rates. App. Br. 13. We agree with the Examiner's finding that 5 Appeal2014-000438 Application 12/490,706 The citation of a couple narrow examples in the specification only shows that the MFR can be achieved, but does nothing to show such an MFR is unexpected or achieved by the entire claim scope. There has been no showing within the scope of protection being sought after (which is much more broad) that the MFR is an unexpected property. In fact, the extremely broad range being claimed (10-50,000 g/10 min) is prima facie evidence of the fact that the MFR is not unexpected or critical. ... The courts have also importantly held that the recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F .2d 1019, 201 USPQ 658 (CCPA 1979). Ans. 16. For all of the foregoing reasons, we affirm the Examiner's rejection of claims 1-18 and 21-25 as unpatentable under 35 U.S.C. § 103(a) over Tse. 3. Rejection under 35 U.S.C. § 103 over Tse and Krabbenborg Appellants' only argument in response to this rejection is that "Krabbenborg adds nothing to the deficiencies of Tse" discussed in accordance \'X1ith the previous rejection. 1A1pp. Br. 13. Because \Y..fe find no such deficiencies in Tse, we affirm the Examiner's rejection of claims 1-18 and 21-25 under 35 U.S.C. § 103(a) over Tse and Krabbenborg for the same reasons we affirm the Examiner's rejection over Tse alone. CONCLUSION The Examiner's rejections of claim 24 under 35 U.S.C. § 112 i-f 1, claims 1-18 and 21-25 under 35 U.S.C. § 103(a) over Tse, and claims 1-18 and 21-25 under 35 U.S.C. § 103(a) over Tse and Krabbenborg are affirmed. 6 Appeal2014-000438 Application 12/490,706 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 7 Copy with citationCopy as parenthetical citation