Ex Parte De Vos et al

Patent Trial and Appeal Board

Sep 12, 2016

13513251 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/513,251 06/01/2012
102091 7590 09/14/2016
Cantor Colburn LLP - SABIC Americas
20 Church Street
Hartford, CT 06103
FIRST NAMED INVENTOR
Roelof Franciscus Gerardus Maria De Vos
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30114-US-PCT 7599
EXAMINER
FINK, BRIEANN R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROELOF FRANCISCUS GERARDUS MARIA DE
VOS and DIMPHNA JOHANNA MARIA VAN BEEK
Appeal2015-002286
Application 13/513,251
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
BRIAND. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an ultrahigh molecular weight polyethylene
powder composition. Claims 1 and 11 are illustrative:
1. An ultra high molecular weight polyethylene powder
composition comprising: ultra high molecular weight
polyethylene powder and precipitated magnesium salt of a
carboxylic acid.
Appeal2015-002286
Application 13/513,251
11. An ultra high molecular weight polyethylene powder
composition comprising:
ultra high molecular weight polyethylene powder and
precipitated magnesium salt of a carboxylic acid, and
a free-flowing master fluff comprising virgin ultra-high
molecular weight polyethylene powder and the precipitated
magnesium salt of a carboxylic acid.
Takesue
Gregg
Ehlers
The References
US 6,329,458 Bl
US 2011/0070454 Al
AU-B-81637 /94
Dec. 11, 2001
Mar. 24, 2011
June 29, 1995
Richard J. Lewis, Sr., Hawley's Condensed Chemical Dictionary 703---04
(John Wiley & Sons, 13th ed. 1997) (hereinafter Lewis).
Hans Zweifel et al., Plastics Additives Handbook 517-20 (Hanser, 6th ed.
2009) (hereinafter Zweifel).
The Rejections
The claims stand rejected as follov,rs: claims 1-3, 7, and 9-11 under
35 U.S.C. § 103 over Ehlers in view of Zweifel or Takesue, claims 4--6
and 8-11 under 35 U.S.C. § 103 over Ehlers in view of Zweifel or Takesue,
further in view of Lewis and Gregg, and claims 1-11 provisionally on the
ground of nonstatutory obviousness-type double patenting over claims 1, 3-
8, and 10-16 of copending Application No. 13/513,252.
OPINION
We affirm the rejections.
Rejections under 35 U.S.C. § 103
The Appellants argue the claims in the following groups: 1) claims 1-
3, 7, and 10, 2) claims 9 and 11, and 3) claims 4--6 and 8-11 (Br. 4--13). We
therefore limit our discussion to one claim in each group, i.e., claims 1
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Application 13/513,251
and 11. The other claims in each group stand or fall with the claim we
address. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claims 1-3, 7 and 10
Ehlers discloses an ultrahigh molecular weight polyethylene molding
material comprising 0.05-5.0 wt% of a salt of a higher monocarboxylic acid,
the preferred salts being calcium, magnesium and zinc salts (p. 3, 1. 36-
p. 4, 1. 5; p. 5, 11. 9-18). "In order to ensure a uniform distribution of the
salts in the polyethylene, the components are expediently mixed as a powder
in conventional mixers or homogenizers .... The homogeneous mixture
may be further used directly or after agglomeration, for example to give
finely divided particles" (p. 6, 11. 5-12).
Zweifel discloses that metal stearates are effective as acid neutralizers
and that the two general processes for preparing them are a precipitation
process and a direct or fusion process (pp. 517-18).
Takesue discloses that metal soap such as magnesium stearate can be
prepared by a direct method and a double decomposition method (i.e.,
precipitation method) (col. 5, 11. 30-36). "[T]he metal salt prepared by the
double decomposition method has high purity, a fine particle size and a
uniform distribution of particle size" (col. 5, 11. 40-42).
The Appellants assert that Ehlers does not disclose or suggest a
precipitated magnesium salt of a carboxylic acid, Zweifel exemplifies only
calcium and zinc stearates and is silent regarding magnesium stearate, and
Takesue would not have suggested an ultrahigh molecular weight
polyethylene powder composition (Br. 4--5).
That argument is deficient in that the Appellants are attacking the
references individually when the rejection is based on a combination of
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Application 13/513,251
references. See Jn re Keller, 642 F.2d 413, 426 (CCPA 1981); Jn re Young,
403 F.2d 754, 757-58 (CCPA 1968). Also, Zweifel is not limited to its
examples. See In re Fracalossi, 681 F.2d 792, 794 n.1(CCPA1982); In re
Mills, 470 F.2d 649, 651(CCPA1972). Instead, all disclosures therein must
be evaluated for what they would have fairly suggested to one of ordinary
skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966). Zweifel's
disclosure that the precipitation method is effective for preparing metal
stearates (p. 518) would have fairly suggested, to one of ordinary skill in the
art, using that method to prepare metal stearates generally.
The Appellants assert that Ehlers' s disclosure that exemplified
ultrahigh molecular weight polyethylene molding compositions containing
calcium stearate, magnesium stearate and zinc stearate have, respectively,
very pronounced cracking, pronounced cracking and no cracking (p. 6,
11. 25-30), teaches away from using magnesium stearate (Br. 5).
Ehlers does not teach away from magnesium stearate but, rather,
teaches that the suitable metal salts include stearates and that magnesium is
one of the three preferred metals for use in making the metal stearates (p. 5,
11. 9-18). Moreover, Zweifel (p. 517) would have indicated to one of
ordinary skill in the art that metal stearates generally would be effective as
an acid neutralizer in Ehlers' composition and Takesue would have indicated
to such a person that precipitated magnesium stearate used in the
composition would have the apparently beneficial properties of high purity,
fine particle size and a uniform distribution of particle size (col. 5, 11. 40-
42).
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Application 13/513,251
Claims 9 and 11
The Appellants argue that Ehlers' disclosure that "[t]he homogeneous
mixture may be further used directly or after agglomeration, for example to
give finely divided particles" (p. 6, 11. 10-12) means that the agglomeration,
but not the homogeneous mixture, can be finely divided particles and that,
therefore, Ehlers does not disclose a master fluff as that term is used by the
Appellants (Br. 7). 1
Ehlers' homogeneous mixture of ultrahigh molecular weight
polyethylene and salt of a carboxylic acid is a powder (p. 6, 11. 5-8) and,
therefore, is in the form of finely divided particles. Hence, Ehlers'
disclosure regarding finely divided particles appears to apply to the
homogeneous mixture with or without agglomeration (p. 6, 11. 10-12).
The Appellants assert that the free flowing form of their ultrahigh
molecular weight polyethylene powder/magnesium salt of a carboxylic acid
mixture must be unexpected because magnesium stearate is not free flowing
(Br. 8).
That argument is not well taken because it is merely unsupported
attorney argument, and arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, because Ehlers' ultrahigh molecular weight polyethylene/metal
stearate mixture contains no more metal stearate than the Appellants'
composition (Ehlers, 0.05-5.0 wt% (p. 4, 11. 2--4); Appellants, 0.1-10.0 wt%.
1 The Appellants state that "[t]he master fluff comprises virgin UHMWPE
[ultrahigh molecular weight polyethylene] powder and the precipitated
magnesium salt of a carboxylic acid as a very well homogeneous dispersed
mixture without agglomeration or aggregates on micro scale" (Spec. 5 :25-
27).
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(Spec. 5: 16-17)) and is a powder (p. 6, 11. 5-12), it appears to be free
flowing like the Appellants' composition.
Claims 4-6 and 8-11
The Appellants assert that their Specification's Table 1 shows that
precipitated magnesium stearate provides surprisingly and unexpectedly
better corrosion properties than precipitated calcium stearate (Br. 10-11 ).
We have begun anew and determined that due to the following
deficiencies in the evidence relied upon by the Appellants, the totality of the
evidence and argument supports a conclusion of obviousness of the claimed
process. See In re Rinehart, 531 F .2d 1048, 1052 (CCP A 197 6).
First, the Appellants' showing of unexpected results does not provide
a comparison of the claimed invention with the closest prior art which is
Ehlers' composition containing magnesium stearate. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); De Blauwe, 736 F.2d
at 705.
Second, it is not enough for the Appellants to show that the results for
the Appellants' invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The Appellants provide no evidence that the results
would have been unexpected by one of ordinary skill in the art.
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). Table 1, but not claim 11, is limited to
stearate as the salt of a carboxylic acid and to 250 ppm and 500 ppm of
magnesium stearate. We find in the evidence of record no reasonable basis
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for concluding that the great number of materials encompassed by the
Appellants' claims would behave as a class in the same manner as the
particular materials tested. See In re Lindner, 457 F.2d 506, 508 (CCPA
1972); In re Susi, 440 F.2d 442, 445--46 (CCPA 1971).
For the above reasons we are not persuaded of reversible error in the
rejections under 35 U.S.C. § 103.
Provisional obviousness-type double patenting rejection
The Appellants do not challenge the provisional obviousness-type
double patenting rejection (Br. 13-14). Accordingly, we summarily affirm
that rejection.
DECISION/ORDER
The rejections of claims 1-3, 7, and 9-11under35 U.S.C. § 103 over
Ehlers in view of Zweifel or Takesue, claims 4---6 and 8-11 under
35 U.S.C. § 103 over Ehlers in view of Zweifel or Takesue, further in view
of Lewis and Gregg, and claims 1-11 provisionally on the ground of
nonstatutory obviousness-type double patenting over claims 1, 3-8, and 10-
16 of copending Application No. 13/513,252 are affirmed.
It is ordered that the 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).
AFFIRMED
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