Ex Parte Brown et al

Patent Trial and Appeal Board

Sep 17, 2012

11609159 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/609,159 12/11/2006 John Mark Brown 210836US00
CPCM:0072/FLE/
1628
7590 09/17/2012
Michael G. Fletcher
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
MULLIS, JEFFREY C
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/17/2012 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 MARK BROWN,
MICHAEL A. SMITH, NATHAN E. STACY,
CARLETON E. STOUFFER, and JOHN D. WILKEY
____________

Appeal 2011-003594
Application 11/609,159
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-40. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A monovinylarene-conjugated diene block copolymer, comprising:

a proximal conjugated diene block comprising from about 5 phm
conjugated diene units to about 50 phm conjugated diene units; and

a plurality of monovinylarene-conjugated diene mixed blocks,
wherein each monovinylarene-conjugated diene mixed block contains
Appeal 2011-003594
Application 11/609,159

2
conjugated diene units and monovinylarene units with a weight ratio of
conjugated diene units to monovinylarene units of about 0.05 to about 0.33,
wherein:

the loss tangent value obtained by dynamic viscoelasticity
measurement for the monovinylarene-conjugated diene block copolymer at a
temperature of about 10 °C less than the temperature at the maximum loss
target is in the range of about 42 % to about 70 % of the maximum loss
target; and

the loss tangent value obtained by dynamic viscoelasticity
measurement for the monovinylarene-conjugated diene block copolymer at a
temperature of about 30 °C less than the temperature at the maximum loss
tangent is in the range of about 5 % to about 15 % of the maximum loss
tangent.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Keane et al. (Keane) US 2005/0166551 A1 Aug. 4, 2005
Stacy et al. (Stacy) 7,037,980 B2 May 2, 2006
Brown et al. (Brown) US 2007/0173605 A1 Jul. 26, 2007

Appellants’ claimed invention is directed to a monovinylarene-
conjugated diene block copolymer comprising the recited properties, such as
loss tangent value at different temperatures.
Appealed claims 1-22, 28, 35, and 36 stand rejected under 35 U.S.C.
§ 112, first paragraph, written description requirement. Claim 28 stands
rejected under 35 U.S.C. § 112, second paragraph. Claims 1-4, 7, 26-31, and
34-40 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Stacy.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stacy. Claims 8-25 and 40 stand rejected under 35 U.S.C.
Appeal 2011-003594
Application 11/609,159

3
§ 103(a) as being unpatentable over Keane in view of Stacy. Also, claims
1-24, 26-31, and 34-40 stand rejected under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Brown.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the declaration evidence relied upon in support
thereof. However, with the exception of the Examiner’s rejection of claim
35 over §112, first paragraph, we agree with the Examiner that the claimed
invention is unpatentable in view of the rejections lodged by the Examiner.
Accordingly, with the noted exception, we will sustain the Examiner’s
rejections for the reasons set forth in the Answer. We add the following for
emphasis only.
We consider first the Examiner’s § 112, first paragraph, written
description requirement, rejection of claims 1-22, 28, 35, and 36. Although
Appellants have proffered declaration evidence which demonstrates that
copolymers exemplified in the Specification have the claimed loss tangent
values, Appellants have not rebutted the Examiner’s reasoned analysis that
the Specification examples are far from commensurate in scope with the
broad degree of protection sought by the appealed claims. As explained by
the Examiner at pages 7-9 of the Answer, the Specification examples are
limited to styrene/butadiene block copolymers whereas the Specification
teaches that the monovinylarene-conjugated diene block copolymers may be
derived from 16 monovinylarene monomers aside from styrene and 5 dienes
aside from butadiene. Appellants have not established that the at least 96
different combinations of monomers encompassed by the appealed claims
Appeal 2011-003594
Application 11/609,159

4
exhibit the claimed loss tangent values. We note Appellants’ offer to amend
the claims to refer to styrene and butadiene as the monomers (see Reply Br.
4, third paragraph).
We also agree with the Examiner that the language “reverse tapered
blocks” of claim 28 does not have original descriptive support in the
Specification. Appellants acknowledge that the language is not found in the
Specification but maintain that one of ordinary skill in the art would
recognize that the terms “reverse tapered” and “tapered” essentially mean
the same thing, i.e., the higher mole fraction of conjugated diene could be
included on either end of the block. However, if Appellants’ definition of
“tapered” in the Specification allows either end of the block to contain the
higher mole fraction of conjugated diene, there is no need to use the
redundant language “reverse tapered”, unless there is, in fact, a meaningful
distinction between “tapered” and “reverse tapered.” As set forth by the
Examiner, there is no descriptive support for such a distinction.
We will not sustain the Examiner’s rejection of claim 35 under § 112,
first paragraph, written description requirement. It is the Examiner’s
position that a single value of haze disclosed in the Specification cannot
support the claimed range of less than about 5%. As pointed out by
Appellants, however, their Specification discloses that “the film formed
from the [polystyrene] composition may have a haze of less than about
10%” (Spec. 13, line 15). Also, Appellants’ Examples R, Q, P, N, and J all
have different haze values less than 5%.
We will also sustain the Examiner’s § 102 rejections over both Stacy
and Brown. There is no dispute that both references, like Appellants,
Appeal 2011-003594
Application 11/609,159

5
disclose the preparation of monovinylarene-conjugated diene block
copolymers but don’t teach that the copolymers have the claimed properties
with respect to loss tangent value, haze, and shrinkage. However, it is well
settled that when a claimed product or process reasonably appears to be
substantially the same as a product or process disclosed by the prior art, the
burden is on the applicant to prove with objective evidence that the prior art
product or process does not necessarily or inherently, possess characteristics
attributed to the claimed product or process. See In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the
present case, the Examiner has established a sufficient correspondence
between the processes of Stacy and Brown and Appellants’ process for
making the monovinylarene-conjugated diene block copolymer to shift to
Appellants the burden of demonstrating that the prior art copolymers do not
necessarily or inherently possess the claimed properties. Appellants have not
proffered any convincing evidence that satisfies their burden.
A principal argument advanced by Appellants is that Stacy and Brown
use different amounts of randomizers than the amount used by Appellants,
and, therefore, the copolymers of Stacy and Brown do not necessarily
possess the claimed properties. However, Appellants have not refuted the
Examiner’s finding that the present Specification teaches that the randomizer
may be a mixture of randomizers (page 8, line 28), and that the randomizers
THF and KTA may be used in amounts disclosed by Stacy and Brown.
Regarding separately argued claims 26-28, Appellants maintain that
“nothing in Stacy appears to disclose mixed tapered blocks” (Prin. Br. 28,
Appeal 2011-003594
Application 11/609,159

6
penultimate paragraph). However, as acknowledged in Appellants’ Reply
Brief, Stacy discloses tapered blocks at column 6, lines 20 et seq.
Regarding separately agued claims 29-33 and 40 which require the
addition of two coupling agents, we agree with the Examiner that it would
have been obvious for one of ordinary skill in the art to use either one or two
charges of coupling agent in the same amounts. As pointed out by the
Examiner, claims 29-32 define a copolymer and Appellants have not
demonstrated any difference in the copolymer resulting from using two
additions of a coupling agent.
We will also sustain the Examiner’s §103 rejections of claims 5 and
56 over Stacy and claims 8-25 and 40 over Keane in view of Stacy for the
reasons set forth by the Examiner. Appellants have not rebutted the
Examiner’s position that it would have been obvious for one of ordinary
skill in the art to use the copolymer of Stacy in the film of Keane in order to
prepare a film having a lower Tg and more ready heat shrink processability
(see Stacy, col. 1, lines 65-67).
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
Appeal 2011-003594
Application 11/609,159

7
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

cam