Ex Parte Cheng et al

Board of Patent Appeals and Interferences

Sep 30, 2011

10969489 (B.P.A.I. Sep. 30, 2011)

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.
10/969,489 10/20/2004 Chia Yong Cheng 2003B123A 3036
23455 7590 09/30/2011
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
09/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte CHIA YONG CHENG,
SRIVATSAN SRINIVAS, and SUDHIN DATTA
______________

Appeal 2010-004864
Application 10/969,489
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decisions of the Primary
Examiner finally rejecting claims 1-12, 15-19, 36-38, and 41 in the Office
Action mailed July 8, 2008, and refusing to allow these claims as amended
in the Amendment filed September 5, 2008, which was entered in the
advisory action mailed October 17, 2008. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a non-woven fabric made
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from a blend comprising propylene homopolymers and copolymers, and at
least one free radical initiator, and is representative of the claims on appeal:
1. A nonwoven fabric made from a blend comprising:
a first component comprising from 5% to 99% by weight based on the
total weight of the composition of a propylene polymer comprising 72 wt%
to 92 wt% propylene derived units and 8 wt% to 28 wt% at least one
comonomer selected from the group consisting of ethylene, C4-C12 α-olefins
and combinations thereof, the propylene polymer having a heat of fusion as
determined by DSC of less than 50 J/g and stereoregular propylene
crystallinity;
a second component comprising from 95% to 1% by weight based on
the total weight of the composition of a propylene polymer or blends of
propylene polymers; and
at least one free radical initiator in an amount of about 0.03 wt% to
about 3.00 wt%, based on the weight of the first polymer component;
wherein the blend has a MFR of greater than 50 dg/min at 230ºC, and
wherein the nonwoven fabric has a permanent set of from less than 60%, and
wherein the blend has a melting point between 80ºC and 100ºC.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-12, 15-19, 36-38,
and 41 over Cheng (US 6,342,565 B1) in view of Pekrul (US 6,583,076 B1).
App. Br. 9; Ans. 3.
Appellants argue the ground of rejection based on the claims as a
group. Thus, we decide this appeal based on claims 1 and 17. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
Opinion
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed nonwoven fabric encompassed by independent claim 1. In
this respect, we are in agreement with the Examiner’s analysis of the
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evidence in the references and the findings of fact and conclusions of law
stated in the Answer, to which we add the following for emphasis with
respect to Appellants’ arguments. Ans. 3-8; App. Br. 10-13; Reply Br. 2-4.
Appellants submit that the Examiner erred in determining that a blend
of Cheng’s first and second polymer components, corresponding to the first
and second polymer components in claim 1, and Pekrul’s free radical
initiator, as specified in claim 1, “inherently” would have a first polymer
component with a heat of fusion falling within the range in claim 1, and a
melting point falling within the range in claim 1, and a nonwoven fabric
prepared with the blend “inherently” would have a permanent set within the
range in claim 1. App. Br. 10-12; Reply Br. 2-4.
Appellants do not dispute that Cheng would have disclosed a blend
which has first and second polymer components falling within the claimed
first and second polymer components of claim 1, as the Examiner contends.
Appellants also do not dispute the Examiner’s finding that Cheng would
have disclosed that a first polymer component can be a propylene polymer
having a heat of fusion less than 45 J/g. Ans. 3. We find that in the context
of the ground of rejection, Cheng’s first component propylene polymers
would have the disclosed heat of fusion before Cheng’s first component
propylene polymer undergoes chain scission because of Pekrul’s free radical
initiator in a blend of Cheng’s first and second polymer components and
Pekrul’s free radical initiators. Ans. 4-6 and 7. See Spec. ¶ 00142 (“Chain
scission”); Pekrul, e.g., col. 1, ll. 18-20 (“It has long been known to partially
degrade or ‘visbreak’ propylene homopolymers and copolymers to narrow
the molecular weight distributions.”). However, we fail to find in
independent claims 1 and 17 a limitation which specifies that the claimed
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“heat of fusion” of the first component propylene polymer is “post chain
scission” as there is with the first polymer component “MFR” limitation in
claim 17. Thus, Cheng’s disclosed heat of fusion for first component
propylene polymers meets the heat of fusion limitation in claims 1 and 17.
Similarly, we determine that the limitation in claims 1 and 17
specifying that the “blend” has the specified melting point1 applies to the
claimed blend both before chain scission and after chain scission of the
propylene polymers with the free radical initiator. Thus, Chung’s blends
which have the same first and second polymer components as claimed,
would be reasonably expected to have the same or similar melting point
range as claimed. As the Examiner points out, the melting point of the blend
containing a free radical initiator post chain scission is not disclosed by the
combination of Cheng and Pekrul. Ans. 6.
We determine that the requirement that the nonwoven fabric prepared
from the claimed blend has a specified permanent set within the range
claimed in claims 1 and 17 is based on the fabric prepared with the post
chain scission blend. As the Examiner points out, the combination of Cheng
and Pekrul does not disclose the claimed permanent range.
We agree with the Examiner’s findings that Cheng would have
disclosed that the blends therein produce fibers which have excellent elastic
recovery. Ans. 3, citing Cheng col. 19, ll. 9-13. In this respect, we further
find that Cheng discloses that the blends produce fibers with increased

1 Appellants amended claims 1 and 17 to have the same “melting point”
limitation in the entered Amendment filed September 5, 2008. See above
p. 1. However, this limitation does not appear in claim 17 in the Claim
Appendix. App. Br. 16.
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tensile strength and improved resistance to elastic deformation. Cheng, e.g.,
abstract, col. 1, ll. 12-14, col. 3, ll. 12-19, and col. 5, ll. 1-8. We also agree
with the Examiner’s findings that Pekrul would have disclosed fibers and
nonwoven fabrics made therewith, wherein the fibers are prepared with
chain scission of propylene polymers which thus exhibit reduced average
molecular weight. Ans. 5. We find that Pekrul would have disclosed that
such fibers are fine fibers with reduced filament tension and acceptable
strength for a variety of nonwoven fabric applications. Pekrul, e.g., abstract,
col. 1, ll. 9-11, col. 1, l. 63, to col. 2, l. 20, col. 5, ll. 40-41, and col. 8,
ll. 28-42.
On this record, we cannot subscribe to Appellants’ position that the
Examiner erred in finding that the claimed blend and nonwoven fabric made
therewith was prima facie obvious over the combined teachings of Cheng
and Pekrul. We are of the opinion that the Examiner has established that one
of ordinary skill in the art routinely following the combined teachings of
Cheng and Pekrul would have been led to use Pekrul’s free radical initiators
in Cheng’s blends of first and second propylene polymer components with
the reasonable expectation of obtaining blends with visbroken propylene
polymers which produce fibers and thus nonwoven fabrics that have the
properties taught in the references. We further agree with the Examiner’s
determination that in view of the similarity of propylene polymer
components and the free radical initiator between the claimed blends and
nonwoven fabrics made therewith and the blends and nonwoven fabrics
made therewith as taught by the combination of Cheng and Pekrul, it
reasonably appears that the claimed blends and fabrics made therewith and
those of the combination of references are identical or substantially identical,
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even though the melting point range of the claimed blend and the permanent
set range of the claimed nonwoven fabric are not specifically disclosed by
the combination of Cheng and Pekrul. Thus, the burden shifted to
Appellants to patentably distinguish the claimed nonwoven fabric from the
nonwoven fabric of the combination of Cheng and Pekrul by objective
evidence and/or argument even though the ground of rejection is based on
§ 103(a). “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear
to be identical’ to those described by Smith. While Spada criticizes the
usage of the word ‘appear’, we think that it was reasonable for the PTO to
infer that the polymerization by both Smith and Spada of identical
monomers, employing the same or similar polymerization techniques, would
produce polymers having the identical composition.”); see also, e.g., In re
Best, 562 F.2d 1252, 1254-56 (CCPA 1977)2; In re Skoner, 517 F.2d 947,
950 (CCPA 1975) (“Appellants have chosen to describe their invention in
terms of certain physical characteristics . . . . Merely choosing to describe

2 Where, as here, 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.
Best, 562 F.2d at 1255 (footnote and citations omitted).
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Application 10/969,489
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their invention in this manner does not render patentable their method which
is clearly obvious in view of [the reference].” (citation omitted)).
We are of the view that Appellants have not carried this burden.
Indeed, we are not persuaded by Appellants’ contentions that neither Cheng
nor Pekrul disclosed a blend as claimed, and that neither reference discloses
a melting point for a blend, and that one of ordinary skill in the art routinely
following the combined teachings of Cheng and Pekrul would not have
reasonably arrived at blends and nonwoven fabrics made therewith falling
within claims 1 and 17. App. Br. 10-12; Reply Br. 2-3.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Cheng and Pekrul with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-12, 15-19, 36-38, and 41
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary 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)(1)(iv).
AFFIRMED

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