Ex Parte Bieser et al

Patent Trial and Appeal Board

Apr 18, 2016

12812279 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/812,279 11/22/2010 John Bieser
25264 7590 04/19/2016
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.
F-1100 5883
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
MAILDATE DELIVERY MODE
04/19/2016 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 BIESER, GUILLAUME PA VY,
HUGUES HAUBRUGE, ALAIN STANDAERT, and
WILLIAM RUSTY WHEAT
Appeal2014-008873
Application 12/812,2 79
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal 1 under 35 U.S.C. § 134(a) from a rejection of
claims 16-23. Appeal Br. 10. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is "TOT AL
PETROCHEMICALS RESEARCH FELUY." Appeal Br. 5.
Appeal2014-008873
Application 12/812,2 79
STATEMENT OF CASE
Appellants describe the present invention as relating to fibers
including a metallocene random copolymer of propylene and one or more
comonomers. Appeal Br. 9. The fibers could be used for, for example, the
agricultural industry, sanitary and medical articles, carpets, or textiles. Spec.
1: 18-21. Claim 16, reproduced below with emphasis added, is the only
independent claim on appeal and is illustrative of the claimed subject matter:
16. Fibers comprising a metallocene random copolymer of
propylene and one or more comonomers, said comonomers being
alpha-olefins different from propylene, wherein the metallocene
random copolymer has a comonomer content of from 0.1 wt.% to 1.0
wt.% relative to the total weight of the metallocene random polymer;
wherein the metallocene random copolymer has a melting temperature
of at least 147 °C.
Appeal Br. 14 (Appendix of Claims).
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
Stahl
Thurman
US 5,763,080 Jun. 9, 1998
US 2008/0249248 Al Oct. 9, 2008
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 16 and 18-23 under 35
U.S.C. § 103 as unpatentable over Stahl. Final Act. 2.
Rejection 2. The Examiner rejected claim 17 under 35 U.S.C. § 103
as unpatentable over the combination of Stahl and Thurman. Id. at 5.
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ANALYSIS
Rejections 1 and 2. Appellants' arguments with respect to the
Examiner's rejections are discussed below. Appellants do not separately
argue dependent claims 17-23. Appeal Br. 11, 13. We therefore limit our
discussion to claim 16. Claims 17-23 stand or fall with that claim. 37
C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants argue that Stahl does not teach or suggest a fiber of a
metallocene random copolymer that has a melting temperature of at least
14 7Q C. Appeal Br. 11. The Examiner finds that Stahl teaches such a
copolymer because it discloses copolymers exhibiting melting points in the
range of from about lOOQ to about 145Q C. Ans. 4; Final Act. 4--5.
The Stahl reference explains temperature ranges for "a preferred
embodiment" as follows:
The polymers will exhibit melting points in the range of from about
lOOQ C. to about 145Q C., more preferably, in the range of from about
110 QC. to about 135Q C., most preferably in the range of from about
110 QC. to about 130Q C.
Stahl 6: 12-16. In this preferred embodiment context, the two degree Celsius
difference between Stahl's explicit top end range (145Q C) and claim 16's
bottom range (147Q C) is small relative to Stahl's teaching melting points in
the range of about 1 OOQ C to about 145Q C. We also note that in Stahl, aside
from using the word "about" in the context of 145Q C, all of the ranges
provided appear to be approximate because each end point is a multiple of
five. The apparent rounding of the melting point temperatures to the nearest
multiple of five suggests that Stahl's metallocene random copolymer fiber
having a melting point of "about" 145Q C includes the melting point of
14 7Q C recited in claim 16. Thus, we agree with the Examiner that a
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Application 12/812,2 79
preponderance of the evidence supports that a person of ordinary skill in the
art would have viewed Stahl's teaching of melting point ranges of up to
"about 145Q C" as including the 147Q melting point recited in claim 16. Ans.
4; Final Act. 4--5. Cf, e.g., Pall Corp. v. Micron Separations, Inc., 66 F.3d
1211, 1217 (Fed. Cir. 1995) ("The use of the word 'about,' avoids a strict
numerical boundary to the specified parameter. Its range must be interpreted
in its technologic and stylistic context."); In re Woodruff, 919 F.2d 1575,
1577 (Fed. Cir. 1990) (holding that prior art teaching of"about 1-5%"
allows for concentrations "slightly above 5%").
Our reviewing court has held that "even a slight overlap in range
establishes a prima facie case of obviousness." See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003); see also, e.g., In re Woodruff, 919 F.2d at 1577
(concluding that claimed invention was rendered obvious by prior art
reference whose disclosed range ("about 1-5%" carbon monoxide) abutted
claimed range ("more than 5% to 25%" carbon monoxide)). Here, the
claimed range and prior art Stahl range overlap slightly, and prima facie
obviousness is therefore established.
Alternatively, even if Stahl's range going up to "about 145Q C" merely
comes close to but does not overlap the claimed lower range of 14 7Q C, our
conclusion would not be altered. As our reviewing court has stated, "a
prima facie case of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties." In re Peterson, 315
F.3d at 1329 (citing Titanium Metals Corp. v. Banner, 778 F.2d 778, 783
(Fed. Cir. 1985)). In Titanium Metals Corp. of Am. v. Banner, 778 F.2d at
782-783, the court held that a claim requiring 0.3% molybdenum (Mo) and
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0.8% nickel (Ni) was obvious in view of prior art alloys having 0.25%
molybdenum and 0.75% nickel and 0.31 % molybdenum and 0.94% nickel
because "[t]he proportions are so close that prima facie one skilled in the art
would have expected [the claimed alloys] to have the same properties." We
note that the notion of "same" in Titanium Metals must be understood as
meaning requiring not only strictly identical properties but also similar
properties. One of skill in the art would know or would reasonably expect,
for example, 0.3% versus 0.31 % molybdenum is not strictly the same and
will not result in precisely the same properties (i.e., it would be impossible
for differing composition percentages to have exactly zero effect on melting
point, density, etc.).
The decision inin re Dillon, 919 F.2d 688, 692---693 (Fed. Cir. 1990)
(en bane) further confirms the reasoning of Titanium Metals. There, the
court reaffirmed "that structural similarity between claimed and prior art
subject matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed compositions,
creates a prim a facie case of obviousness, and the burden (and opportunity)
then falls on an applicant to rebut that primafacie case." Id. Rebuttal could
consist of "showing that the claimed compositions possess unexpectedly
improved properties or properties that the prior art does not have." Id. The
claims at issue there were thus obvious because "[t]he art provided the
motivation to make the compositions in the expectation that they would have
similar properties." Id. at 693 (emphasis added). Thus, just as in Titanium
Metals involving similar (close) ranges of the same materials claimed matter
was obvious where one skilled in the art would have expected the claimed
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matter and the prior art to have similar properties due to the chemical
structural similarities.
Here one would expect the claimed fibers with a melting temperature
of 14 7Q C and the prior art fibers having a melting temperature of "about
145Q C" to be have substantially similar properties. This is because the
range of difference here is narrow (less than two degree differential as
compared to Stahl's about 145Q C acceptable range). Moreover, as the
Examiner explains and as taught by Stahl, fiber melting point is a factor that
can be adjusted across wide ranges to optimize the melting point
differentials between copolymers. Ans. 4--5 (citing, e.g., Stahl 3:53-57; 60-
64); cf In re Aller, 220 F.2d 454, 456 (CCP A 1955) ("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")
(citations omitted).
The conclusion that fibers with a 14 7Q C melting point would have
been obvious is further reinforced by Stahl's teaching of M copolymers
which could be metallocene catalyzed polymers (Ans. 5; Stahl 8: 1 :21) and
could have melting points as high as 161 QC (Stahl 7: 1-8; 7:36-65).
Although Stahl does not explicitly teach that the M copolymer also has
claim 16's recited comonomer content ranging from 0.2 to 6 mole percent
(Reply Br. 9), Stahl's discussion of the M copolymer nonetheless teaches the
utility of higher melting point polymers (Ans. 5).
Therefore, based on the reasoning of Titanium Metals, In re Dillon,
and In re Aller, we conclude that claim 16 would have been prima facie
obvious even if Stahl's teaching of "about 145Q C" does not overlap the
claimed lower range of 147Q C.
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Appellants can rebut the above prima facie case of obviousness by
establishing "that the [claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the [closest] prior
art range." In re Peterson, 315 F.3d at 1330 (internal quotes and citations
omitted). Appellants, however, provide no evidence or reasoning as to why
claim 16 's claimed range is critical or unexpected. On this basis, we agree
with the Examiner's conclusion that claim 16 would have been obvious.
We therefore sustain the Examiner's rejection of claim 16 and claims 17-23.
DECISION
For the above reasons, we sustain the Examiner's rejection of claims
16-23. 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
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