Ex Parte Borke

Board of Patent Appeals and Interferences

Mar 24, 2009

10410112 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY S. BORKE
____________

Appeal 2009-0376
Application 10/410,112
Technology Center 2800
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Decided:1 March 24, 2009
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s rejection of claims 1-27, all of the pending claims. We
have jurisdiction pursuant to 35 U.S.C. § 6. 2

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Appellant’s invention is directed to a polymer premixture and a
method of compounding plastic polymers. According to Appellant, the
invention relates to “methods of compounding thermoplastic polymers
wherein additives are better dispersion with the polymer matrix.” (Spec. 1).
Claim 1 and 14 representative of the invention and are reproduced below:
1. A method of compounding a polymer, the method comprising:

providing a polymer premixture including:

a powder source of a thermoplastic polymer having a powder particle
size from about 1 micron to about 1500 microns;

at least one polymer additive; and

a bulk source of the thermoplastic polymer wherein the bulk source of
the thermoplastic polymer has a bulk particle size that is at least 10
times greater than the powder particle size;

mixing the polymer premixture to form a polymer mixture, wherein
the amount of the powder source is greater than about 1% of the total
weight of the polymer premixture.

14. A polymer premixture comprising:

a powder source of a thermoplastic polymer having a powder particle
size from about 1 micron to about 1500 microns;

at least one polymer additive; and

2 In rendering this Decision we have considered the Appellant’s arguments
presented in the Appeal Brief dated September 24, 2007 and the Reply Brief
dated March 24, 2008.

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a bulk source of the thermoplastic polymer wherein the bulk source of
the thermoplastic polymer has a bulk particle size that is at least 10
times greater than the powder particle size;

mixing the polymer premixture to form a polymer mixture, wherein
the amount of the powder source is greater than about 1% of the total
weight of the polymer premixture.

ISSUES ON APPEAL
Claims 1-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schrijver, U.S. Patent No. 4,533,696, issued August 6, 1985, or Abe,
U.S. Patent No. 4,891,392 B2, issued January 2, 1990.
The Examiner contends that both Schrijver and Abe describe a
polymer premixture and a method of compounding plastic polymers by
providing a polymer premixture including a fine powder source of a
thermoplastic polymer, a coarser source of thermoplastic polymer having
particle size that is greater than the fine powder particle size; and at least one
polymer additive. (Ans. 3-4). The Examiner concluded that in the absence
of evidence of unexpected results that it would been obvious to a person of
ordinary skill in the art to select a coarser polymer powder having a particle
size 10 times greater than the particle size of the fine powder particle. (Ans.
3-4).
Appellant contends that the Schrijver and Abe fail to appreciate the
importance of having a bulk particle size least 10 times greater than the
powder particle size. Appellant also contends that Schrijver and Abe do not

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place a relative restriction on the sizes of the powder polymer source or the
bulk polymer source.3 (App. Br. 4-8; Reply Br. 1-2).
The issue presented is: did Appellant identify reversible error in the
Examiner’s rejections of the appealed claims under § 103? The issue turns
on whether it would have been obvious to a person of ordinary skill in the art
in a method of compounding a polymer to select a coarser polymer powder
having a particle size 10 times greater than the particle size of the fine
powder particle.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of § 103
in view of the applied prior art. Accordingly, we will sustain the Examiner’s
rejection.

OPINION
The Examiner found and Appellant does not dispute the following
facts (FF) in this appeal:
(1) Schrijver describes a method of mixing polymer
polyolefin powders of “finer” resin A and a “coarser”

3 In response to the rejection over Schrijver, Appellant has not presented
separate arguments for claims 1-27. In response to the rejection over Abe,
Appellant presented arguments directed to claims 1-27 together and separate
arguments for claim 27. Consequently, for the rejection over Schrijver, the
appealed claims stand or fall with independent claim 1. For the rejection
over Abe, we will separately address claim 27 and appealed claims 2-26
stand or fall with independent claim 1.

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resin B. Schrijver discloses generally the powder
particle size useful in the molding powders is less than
2000 µm (2 mm). (col. 4, ll. 35-36).
(2) Schrijver discloses "finer" resin has a particle size of
preferably 50 µm to 250 µm (0.050 mm to 0.250 mm).
This range and overlaps with the claimed “powder
source” having a particle size of 1 µm to 1500 µm.
(Ans. 3-4; col. 4, ll. 33-53).
(3) Schrijver discloses the “coarser” resin B has an average
particle size that is at least 50 µm (0.050 mm) larger
than the particle size of “finer” resin A. (col. 4, ll. 48-
53).
(4) Schrijver discloses colorants, fillers and stabilizing agent
are suitable for the compositions. (col. 7, ll. 7-9 and 46-
49).
(5) Abe describes a method of mixing polymer polyolefin
powders of a resin A and a resin B. Abe discloses
generally the powder particle size useful in the molding
powders is in the range of 100 µm to 10000 µm (0.1 mm
to 10 mm). (col. 3, ll. 6-12).
(6) Abe discloses one resin has a particle size of preferably
300 µm to 7000 µm (0.3 mm to 7 mm). This range
overlaps with the claimed “powder source” having a
particle size of 1 µm to 1500 µm. (Ans. 3-4; col. 4, ll.
33-53).

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(7) Abe discloses the other resin has an average particle size
that is from 100 µm to 10000 µm (0.1 mm to 10 mm).
(col. 3, ll. 48-53).
(8) Abe discloses colorants, fillers and stabilizing agent are
suitable for the compositions. (col. 2, ll. 54-60).
(9) The Examiner determined that it would been obvious to
a person of ordinary skill in the art to perform a method
of compounding a polymer comprising providing a
polymer premixture including a coarser polymer powder
resin having a particle size 10 times greater than the
particle size of the finer powder particle resin. (Ans. 4).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. See
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of
whether the subject matter of a claim is obvious] need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007). “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id.; see also
DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co.,

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464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”).
Applying the preceding legal principles to the Factual Findings (FF)
in the record of this appeal, we determine that the Examiner has established
a prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellant’s arguments. Schrijver and Abe both
disclose polymer premixtures that comprise coarse polymer particles and
fine polymer particles. As shown by FF 1 and 5 above, Schrijver and Abe
each describe a polymer premixture and a method of compounding
thermoplastic polymers by providing a polymer premixture including a fine
polymer powder particle source and a coarser polymer powder particle.
Schrijver and Abe disclose additives are suitable for the premixture. (FF 4
and 8). The range of polymer particles suitable for the invention of
Schrijver and Abe allows for the selection of a coarser polymer powder
having a particle size 10 times greater than the particle size of the fine
powder particle. (FF 1 and 5). (Ans. 3-4). The Examiner properly
concluded in the absence of evidence of unexpected results that it would
been obvious to a person of ordinary skill in the art to select a coarser
polymer powder having a particle size 10 times greater than the particle size
of the fine powder particle. It is an axiomatic that where patentability is
predicated upon a change in a condition of a prior art element, such as a
change in size, configuration or concentration, the burden is on the applicant
to establish with objective evidence that the change is critical, i.e., it leads to

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a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellant’s arguments (App. Br. 8) regarding the rejection of claim
27 over Abe are not persuasive for the reasons addressed above. It is not
disputed that Abe describes a premixed of thermoplastic polymer particles
that comprise particles that correspond to the claimed powder source
particles and bulk source particles. (FF 5). The range of polymer particles
suitable for the invention of Abe allows for the selection of a coarser
polymer powder having a particle size 10 times greater than the particle size
of the fine powder particle. Consequently, as stated above, the Examiner
properly concluded, in the absence of evidence of unexpected results, that it
would been obvious to a person of ordinary skill in the art to select a coarser
polymer powder having a particle size 10 times greater than the particle size
of the fine powder particle.
In rebuttal to the Examiner’s prima facie case, Appellant contends that
the examples of the Specification provide evidence of unexpected results
achieved by the claimed invention. (App. Br. 7). Appellant argues that the
working examples of their Specification demonstrate the number of
undesirable agglomerates is reduced from the level of the comparative
examples. Specifically, Appellant states “[t]he examples that use the
premixture and methods of the invention uniformly exhibit less than 5 per
foot. This is a dramatic decrease in the presence of these undesirable
blemishes.” (App. Br. 7). However, in the present case, Appellant has not
established on this record that a premixture having coarse polymer powder
having a particle size 10 times greater than the particle size of the fine

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powder particle within the scope of the appealed claims achieves a new,
unexpected result. Appellant has failed to point to sufficient evidence
indicating that the results were considered to be unexpected to one of
ordinary skill in the art. “It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.” In re Soni, 54 F.3d 746, 750 (Fed. Cir.
1995) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). The
question here, we emphasize, is a question of evidence and the burden is on
the Appellants to show unexpected results. In re Johnson, 747 F.2d 1456,
1460 (Fed. Cir. 1984).
The data presented in the Specification is limited to three
representative examples of the preferred embodiment of the claimed
invention. However, the data presented does not address the descriptions of
Schrijver and Abe. (Note that Schrijver and Abe each disclose polymer
premixtures that comprise coarse polymer particles and fine polymer
particles.) The results presented merely compare two compositions that do
not comprise coarse and fine polymer particles. In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991) (The “difference in results” must be
established as being between the claimed subject matter and the closest prior
art). Appellant also has not explained how comparative examples (1 and 4)
are representative of the Schrijver and Abe references.
The data relied upon by Appellant is also not commensurate in scope
with the claimed invention. See In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that

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objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support’.” (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)). Appellant tested only a few
compositions, as exhibited in the Specification. However, the claims on
appeal are much broader. The claimed subject matter encompasses all
polymer pre-mixtures comprising all thermoplastic polymer powder particles
having a particle size of 1 µm to 1500 µm admixed with coarse
thermoplastic polymer particles having a size that is at least 10 times greater
than the polymer powder. Further, Appellant has not demonstrated that the
alleged results can be reasonably extrapolated for all of the thermoplastic
polymer premixtures that are encompassed by the claimed invention.
Hence, we are not satisfied that the evidence of record that is offered
for comparison, as discussed in the briefs, demonstrates results that are truly
unexpected and commensurate in scope with the claims. Nor has Appellant
satisfied the burden of explaining how the results reported in those limited
samples presented can be extrapolated therefrom so as to be reasonably
guaranteed as attainable through practicing the invention as broadly claimed.
It is well established that the evidence relied on to establish unobviousness
must be commensurate in scope with the claimed subject matter. See In re
Kerkhoven, 626 F.2d 846, 851 (CCPA 1980) and In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
For the foregoing reasons and those stated in the Answer, we affirm
the rejection presented in this appeal.
ORDER
The rejections of claims 1-27 under 35 U.S.C. § 103(a) are affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

PL Initial:
sld

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