Ex Parte Bouquet et al

Board of Patent Appeals and Interferences

Aug 23, 2010

10543121 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GILBERT BOUQUET and
RONY S. VANSPEYBROECK
____________

Appeal 2009-009396
Application 10/543,121
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009396
Application 10/543,121

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-13 and 17-19, the only claims pending in
the Application. (Br.3 5.) We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a process which is useful in preparing
high impact polystyrene (HIPS) and acrylonitrile-butadiene-styrene
polyrners (ABS) for use in a variety of applications including injection
molding and thermoforming of refrigerator liners, household appliances,
toys, automotive applications, and furniture. (Spec. 9:1-4.) The rubber
modified polymers produced by the process of the present invention are said
to have improved welding properties when compared to other rubber
modified polymers of the prior art. (Spec. 9:6-8.)
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention and is reproduced below from the Claims Appendix to the
Appeal Brief:
1. A mass/solution polymerization process utilizing a functionalized
rubber to produce a rubber modified polymer from a vinyl aromatic
monomer comprising polymerizing the vinyl aromatic monomer in the
presence of a rubber, wherein the rubber comprises a functionalized diene
rubber having:

a) a solution viscosity of from 5 to less than 50 centipoise (cps), and

b) at least one functional group per rubber molecule which enables
controlled radical polymerization;

2 Final Office Action (“Final”), mailed Jan. 25, 2008.
3 Appeal Brief, mailed Jun. 24. 2008.

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such that grafted rubber particles are formed and dispersed within a matrix
comprising polymerized vinyl aromatic monomer and have a broad
monomodal size distribution.

The Examiner maintains (Ans.4 4-7), and Appellants request review of
(Br. 8), the sole ground of rejection: claims 1-13 and 17-19 under 35 U.S.C.
§ 103 as unpatentable over Priddy in view of EP ‘820.
The arguments of the Examiner and Appellants raise the following
issue for our consideration:
Does a preponderance of the evidence favor the Examiner’s
conclusion that it would have been obvious to have used a functionalized
diene rubber having a solution viscosity of from 5 to less than 50 cps in
Priddy’s process?
We answer this question in the affirmative based on the facts and
reasons relied on by the Examiner in the Answer, pages 4-12, which we
adopt as our own.
It is undisputed that neither Priddy nor EP ‘820 explicitly discloses
the solution viscosities of the rubbers used in their processes. (See, e.g.,
Ans. 6-7.) Appellants contend that solution viscosity is dependent on
several variables and that the rubbers used by Priddy and EP ‘820 would not
necessarily or inherently possess this property. (Br. 10.)
Priddy and Appellants disclose the use of the same vinyl aromatic
monomers (compare Priddy, col. 1, ll. 61-65 with Spec. 3:25-27) and
methods of preparing rubber reinforced polymers (compare Priddy, col. 6, ll.
54-62 with Spec. 6:19-23). Priddy and Appellants provide the same generic

4 Amended Examiner’s Answer, mailed Feb. 3, 2009.

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descriptions of rubbers suitable for use in the invention (compare, e.g.
Priddy, col. 2, ll. 21-30 with Spec. 4:12-13), and use the same functional
groups for controlling radical polymerization (see Spec. 5:21-25 and 6:15-16
(citing Priddy)). While the Specification contemplates the use of a
combination of functionalized and non-functionalized rubbers (Spec. 5:29-
30), it is noted that “[f]eed based on non-functionalized rubber results in
larger particles and very low intrinsic gloss, while small rubber particles and
good intrinsic gloss are obtained using the functionalized rubber.” (Spec.
12:7-9.) At the time of the invention, it was known in the art that use of
small rubber particles in the production of rubber modified polymers,
provides a high gloss product. (Spec. 1:13-14; EP ‘820 5:15-16.) Methods
of particle sizing were also well known to those of ordinary skill in the art.
(Priddy, col. 8, ll. 66-67; EP ‘820 4:50-51.)
According to EP ‘820, in monomodal compositions, the rubber
particle “sizes can vary from 0.05 to 10 micrometers.” (EP ‘820 4:55.)
Priddy’s method is said to be useful in producing “transparent rubber
reinforced polymers . . . typically contain[ing] dense rubber particles having
a volume average particle size of less than 0.1μ.” (Col. 8, ll. 62-65.) The
rubber particle sizes in Specification Examples 1-5 range from .39 to .46
µm. (Spec. 10-14, Tables 2 & 4.)
Appellants concede that the use of a lower rubber solution viscosity is
one approach to producing a smaller rubber particle size. (Br. 10.)
Appellants have produced a graph showing a relationship between molecular
weight (“Mw”) and solution viscosity for butadiene rubbers (Aff. 3, Fig. 1).
(Br. 10, ll. 4-6.) The disclosed molecular weights of Priddy’s rubbers (col.

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6, ll. 42-46 (“typically from about 20,000 to about 300,000, preferably from
about 50,000 to about 250,000, more preferably from about 75,000 to about
200,000 and most preferably from about 100,000 to about 150,000”))
overlap the molecular weights of the rubbers used in Examples 1-5 of the
Specification (Aff.5 2 (indicating that the molecular weights ranged from
90,000 to 193,000)). (See Ans. 10.)
Appellants note that in an exemplary embodiment, Priddy utilizes a
rubber having a much lower Mw than Appellants’ rubber, and rely on Dr.
Bouquet’s graph (Aff. 3, Fig. 1) to establish that this rubber would have a
solution viscosity which is significantly less than 5 cps. (Br. 10.) On the
other hand, Appellants argue that “viscosity of a rubber is a function of more
than just its molecular weight” and that “one skilled in the art can not predict
whether the molecular weight rubbers of Priddy will fall within the
Applicant’s selected range” of solution viscosities (id.). (See Ans. 9-10
(discussing these arguments).) Appellants have not provided any actual test
data which establishes that the rubber used in Priddy’s exemplary
embodiment has a solution viscosity lower than 5 cps and/or that it would
not have the same desirable properties (e.g., high gloss) achieved using a
functionalized rubber as claimed. (See generally, Spec. and Br.)
Appellants have not provided evidence which establishes that a rubber
having a molecular weight in Priddy’s preferred range with a particle size of
less than .1 µm would not have a solution viscosity as claimed in appealed
claim 1. (Ans. 12; see generally, Spec. and Br.)

5 (Evidence Appendix, Affidavit of Gilbert C. Bouquet under 37 C.F.R. §
1.132, executed on Oct. 10, 2007.)

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Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Given the similarities in the products and processes used by
Appellants and Priddy, as evidenced by the Examiner’s findings (see
generally, Ans. 4-7), it was reasonable for the Examiner to conclude that it
would have been obvious to have used a rubber having Appellants’ claimed
solution viscosity in Priddy’s process (see Ans. 7). The burden was thus
shifted to Appellants to establish the contrary. As indicated above (supra p.
5), and more fully explained in the Answer (pp. 10-12), Appellants have not
provided any actual comparison testing of Priddy’s rubbers with those of
Appellants. The comparison testing in the Specification and in the Bouquet
Affidavit does not represent a comparison between the claimed invention
and closest prior art and, therefore, fails to convincingly establish that the
Examiner’s proposed prior art combination would not result in a method
which uses a rubber having Appellants’ claimed solution viscosity.

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In sum, we conclude that a preponderance of the evidence favors the
Examiner’s obviousness determination. Therefore, we affirm the
Examiner’s decision to reject claims 1-13 and 17-19.
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).

AFFIRMED

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