Ex Parte Datta et al

Patent Trial and Appeal Board

Feb 27, 2017

13006057 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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.
13/006,057 01/13/2011 Sudhin DATTA 2011EM003 3723
23455 7590 03/01/2017
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chem.law.prosecution@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDHIN DATTA, LIEHPAO O. FARNG,
VERA MINAK-BERNERO, MUN F. TSE, ERIC B. SIROTA,
DIANA SMIRNOVA and RAINER KOLD
Appeal 2016-002474
Application 13/006,057
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—6, 8, 9, 11—14, and 16—27. We have jurisdiction under 35 U.S.C.
§6.
We AFFIRM.
Appeal 2016-002474
Application 13/006,057
Claims 1 and 9 are illustrative of the subject matter on appeal and is
reproduced below (emphasis added to highlight distinction between the
independent claims):
1. A polymer blend composition comprising a first
ethylene-based copolymer and a second ethylene-based
copolymer, wherein:
(a) the first copolymer has an ethylene content from
about 44 to about 51 wt%;
(b) the second copolymer has an ethylene content from
about 69 to about 73 wt%;
(c) the first copolymer has a weight-average molecular
weight (Mw) of from about 70,000 to about 120,000 and the
second copolymer has a weight average molecular weight (Mw)
of from about 70,000 to about 80,000;
(d) the ratio of the melt index of the first copolymer to
the melt index of the second copolymer is less than or equal to
about 1.0; and
(e) the composition comprises from about 3 8 to about 62
wt% of the first copolymer, based on the total weight of the first
and second copolymers.
9. A polymer blend composition comprising a first
ethylene-based copolymer and a second ethylene-based
copolymer, wherein:
(a) the first copolymer has a heat offusion from about 0
to about 5 J/g;
(b) the second copolymer has a heat of fusion from about
42 to about 62 J/g;
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(c) the first copolymer has a weight-average molecular
weight (Mw) of from about 70,000 to about 120,000 and the
second copolymer has a weight average molecular weight (Mw)
of from about 70,000 to about 80,000;
(d) the ratio of the melt index of the first copolymer to
the melt index of the second copolymer is less than or equal to
about 1.0; and
(e) the composition comprises from about 38 to about 62
wt% of the first copolymer, based on the total weight of the first
and second copolymers.
App. Br. 15 and 16 (Claims Appendix).
Appellants request review of the Examiner’s rejection of claims 1—6,
8, 9, 11—14 and 16—27 under 35 U.S.C. § 103(a) as unpatentable over Mishra
(US 6,753,381 B2, issued June 22, 2004) and Ikeda (US 7,915,358 B2,
issued March 29, 2011). App. Br. 6; Final Act. 2; Ans. 2.1
Appellants argue independent claims 1,9, 17, and 21 together and
present separate arguments for dependent claims 25—27. See Appeal Brief,
generally. Appellants do not present separate arguments for claims 2—6, 8,
11—14, 16, 18—20, and 22—24. Id. Accordingly, we select claims 1 and 9 as
1 The Examiner erroneously omitted claims 26 and 27 from the rejection
statement as presented on page 2 of the Final Action. We consider this
harmless error because the cover sheet for the Final Action and the rejection
statement in the Answer reflect these claims as rejected. Final Act. 1; Ans.
2. Furthermore, Appellants argue claims 26 and 27 in the Appeal Brief
without disputing their omission from the statement of rejection in the Final
Action. App. Br. 12—13. Accordingly, we adopt the rejection statement as
presented in the Answer addressing claims 1—6, 8, 9, 11—14, and 16—27 for
the purposes of this appeal. Ans. 2.
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representative of the subject matter before us on appeal. Claims 2—6, 8, 11—
14, 16, and 18—24 stand or fall with claims 1 and 9. Claims argued
separately will be addressed separately.
OPINION
Prior Art Rejection2
The Rejection of Claim 1 based on Mishra
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of representative
claims 1 for the reasons presented by the Examiner. We add the following
for emphasis.
Claim 1 is directed to a polymer blend composition of two
copolymers having different ethylene content and different weight-average
molecular weight.
We refer to the Examiner’s Final Action and Answer for a statement
of the rejection. Final Act. 2-4; Ans. 2-4.
Claim 1
Appellants argue Mishra does not disclose or suggest the melt index
of its polymer components and, thus, does not disclose or suggest that the
ratio of the melt index of the first and second copolymers is less than or
equal to about 1.0 as claimed. App. Br. 7—8.
2 As noted by Appellants, the Examiner relied only on the reference to
Mishra in rejecting the subject matter of claim 1 and its dependent claims
and relied on the combined teachings of Mishra and Ikeda to reject the
subject matter of claim 9 and its dependent claims. See Appeal Brief, and
Final Action, generally. Accordingly, we address the rejections of
representative claims 1 and 9 separately.
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We find this argument unavailing. The mere recitation of a property
or characteristic not disclosed by the prior art does not necessarily confer
patentability. Cf. In re Skoner, 517 F.2d 947, 950 (CCPA 1975). Where the
Examiner establishes a reasonable belief that the property or characteristic
recited in the claims would have been inherent to the product or process, the
burden of proof shifts to Appellants to show that this characteristic or
property is not possessed by the prior art. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
The Examiner found Mishra discloses a polymer blend of two
ethylene-propylene copolymers where a first copolymer has an ethylene to
propylene mole ratio within the range of 35/65 to 65/35, a molecular weight
of 20,000 to 300,000 and is present in the amount of 10-45% by weight and
where a second copolymer has an ethylene to propylene mole ratio within
the range of 65/35 to about 85/15 and a molecular weight of 26,000 to
1,500,000.3 Final Act. 2—3; Ans. 4; App. Br. 7; Mishra col. 3,11. 2—6, 28—
40, col. 6,11. 47—55. The Examiner determined the subject matter of
independent claim 1 would have been obvious to one skilled in the art over
Mishra’s disclosed polymer blend because the ethylene content and
molecular weight ranges for the copolymers of Mishra encompass the ranges
for the same limitations of the claimed invention. Final 3^4. The Examiner
also determined Mishra’s ethylene-propylene copolymers would be expected
to have the melt index property and the melt index ratio range of the claimed
copolymers. Ans. 4.
3 We rely on the molecular weights as calculated by Appellants. App. Br. 7.
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By establishing that the prior art and claimed copolymers are the same
or similar, the Examiner has provided a reasonable basis for one skilled in
the art to expect the copolymers of the prior art and of the claimed invention
to have the same properties. Thus, the Examiner has provided a reasonable
basis to shift the burden to Appellants to show that the claimed ratio of the
melt index of the first copolymer to the melt index of the second copolymer
was not possessed by the prior art. In re Best, 562 F.2d at 1255. Appellants
have not adequately explained or directed us to any evidence showing why
Mishra’s copolymers do not necessarily or inherently possess the disputed
property.
Appellants argue the calculated molecular weight ranges of Mishra’s
copolymers encompass a very large number of possible distinct
compositions without any guidance that would have led one of ordinary skill
in the art to select the particularly claimed ranges of ethylene content, Mw,
and melt index ratio. App. Br. 12.
We are unpersuaded by this argument and agree with the Examiner’s
determination of obviousness. Our reviewing court has held
[A] prima facie case of obviousness arises when
the ranges of a claimed composition overlap the
ranges disclosed in the prior art. [Citations
omitted.] Where the “claimed ranges are
completely encompassed by the prior art, the
conclusion [that the claims are prima facie
obvious] is even more compelling than in cases of
mere overlap.
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465,
1469, 1470 (Fed. Cir. 1997) (when the teachings of a prior art reference
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discloses a range that touches or overlaps the range recited in the claim, the
burden is on applicant to rebut prima facie obviousness, e.g., by showing
unexpected properties within the claimed range); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. . . . These cases have consistently held that
in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.”).
As noted above, the Examiner has established a reasonable basis to
conclude that the claimed invention would have been obvious from the
disclosure of Mishra. Final Act. 2-4; Ans. 4; App. Br. 7; Mishra col. 3,11.
2—6, 28-40, col. 6,11. 47—55. Appellants have not adequately explained why
one skilled in the art would not have been capable of arriving to the claimed
copolymers from the teachings of Mishra. Appellants do not adequately
explain patentable distinction of the claimed invention.
Appellants argue Mishra teaches away from the claimed invention
because Mishra teaches that polymer blends that utilize a high ethylene
olefin co-polymer (HEOCP) having less than 80 mol % ethylene have
unsatisfactory yield stress. App. Br. 8—9; Mishra col. 10,11. 20-28 and
Tables, col. 11,11. 1—9.
We are also unpersuaded by this argument. It is well settled that a
reference may be relied upon for all that it would have reasonably suggested
to one having ordinary skill in the art. Cf Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior
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art, including unpreferred embodiments, must be considered”) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Appellants do not direct us to
any portion of Mishra that supports Appellants’ assertion that the 80 mol %
ethylene content in the copolymers of Mishra’s examples necessarily limits
Mishra’s broader disclosure of using an ethylene content of 65—85 mol %.
Thus, Appellants have not distinguished the claimed invention from the
teachings of Mishra.
Appellants argue specific examples in the Specification show
formulations comprising the claimed copolymer blends demonstrate
unexpected results as a decrease of Cold Crank Simulator (CCS) values,
indicative of better starting capability and lower fuel consumption during
warm-up of the engine. App. Br. 11—12; Spec. Tflf 159-162.
Appellants must establish that the showing relied upon actually
demonstrates unexpected results, In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re Freeman, 474 F.2d 1318, 1324; In re Klosak, 455 F.2d
1077, 1080, and is reasonably commensurate in scope with the degree of
protection sought by a claim, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We have reviewed Appellants’ evidence and are unpersuaded by it.
We agree with the Examiner’s determination that the proffered showing is
insufficient to establish unexpected results because there is no comparison
against the closest prior art, in this case Mishra. Ans. 7. Moreover, all
examples relied upon by Appellants are limited to ethylene-polypropylene
copolymers. Spec. 1156. Appellants have not adequately explained why
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this single type of copolymer is representative of all the ethylene-based
copolymers encompassed by the claim.
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims.
Claims 26 and 27
Claim 26 requires a specific melt flow rate (MFR) and claim 27
requires a specific molecular weight range for the polymer blend
composition.
Appellants’ arguments with respect to dependent claims 26 and 27 are
directed to similar issues related to a property of the material (MFR) and a
molecular weight range of a composition (blend), both of which have been
addressed above in our discussion of representative claim 1. App. Br. 12—
13. We have considered these arguments and remain unpersuaded for the
reasons given above. Appellants have not adequately explained why one
skilled in the art would not have been capable of arriving to the claimed
copolymers from the teachings of Mishra. Appellants do not adequately
explain patentable distinction of the claimed invention.
Claims 9 and 25
Independent claim 9 differs from claim 1 in that it requires each
copolymer to have a specific heat of fusion instead of a specific ethylene
content. Dependent claim 25 depends from claim 1 and further requires the
copolymers to have a specific heat of fusion.
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In addressing claims 9 and 25, Appellants rely on some arguments
presented when discussing claim 1. See Appeal Brief, generally. To the
extent that these arguments are the same or similar, we refer to our previous
discussion.
With respect to the heat of fusion limitation, the Examiner relied on
the teachings of Ikeda to establish heat of fusion at no more than 60 J/g as an
important property for ethylene-propylene based copolymers used as
viscosity modifiers because it is associated with low-temperature properties
(low-temperature flowability) desirable for lubricant compositions. Final
Act. 4; Ikeda col. 1,11. 15—17, col. 5,11. 25—33.
Appellants argue the copolymers in Ikeda are block copolymers that
have different block segments along the same polymer chain, as compared to
Mishra which is a blend of two different polymers, the HEOCP and the
LEOCP. App. Br. 10.
We are unpersuaded by this argument and agree with the Examiner’s
determination of obviousness. Final Act. 4; Ans. 5—6. Moreover, Ikeda
recognizes the importance of heat of fusion as a property for viscosity
modifiers. Ikeda col. 5,11. 25—33. Appellants have not adequately explained
why one skilled in the art would not have understood that heat of fusion is
also an important property for the viscosity modifiers of Mishra given that
Mishra also desires viscosity modifiers that promote low temperature
flowability in lubricant compositions. Mishra col. 1,11. 10-13; col. 3,11. 43—
46.
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Accordingly we affirm the Examiner’s rejection of claim 1—6, 8, 9,
11—14, and 16—27 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner’s rejection of claims 1—6, 8, 9, 11—14, and 16—27 under
35 U.S.C. § 103(a) is affirmed.
TIME PERIOD
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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