Ex Parte Dheur et al

Patent Trial and Appeal Board

Jan 28, 2019

13808767 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/808,767 01/07/2013
23117 7590 01/30/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Luc Marie Ghislain Dheur
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.
GPK-4702-262 1085
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUC MARIE GHISLAIN DHEUR, BENOIT KOCH,
and STEP AN KLAUS SPITZMESSER
Appeal2017-011619
Application 13/808,767
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY R. SNAY,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 18, 19, 23, 24, 26, 27, 29--31, 34
and 36 of Application 13/808,767 under 35 U.S.C. §§ 102, 103, and 112.
Final Act. (Aug. 22, 2016) 4--15. Appellants 1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 INEOS Europe AG is identified as the real party in interest. Appeal Br. 3.
Appeal2017-011619
Application 13/808,767
BACKGROUND
The present application generally relates to a polyethylene
composition useful in making pipes. Spec. 1. The composition includes two
different polyethylene fractions with different molecular weights. Id. Such
a composition is referred to as a "bimodal polyethylene composition." Id.
Known bimodal polyethylene compositions have a number of favorable
properties, but lack flexibility. Id. at 2. The named inventors assert that
they have "found a polyethylene which has a good balance of flexibility,
mechanical strength and processability." Id. at 3.
Claim 18 is illustrative of the subject matter on appeal and is
reproduced below:
18. Polyethylene composition comprising:
(a) 40-55wt% of a copolymer fraction (A) comprising
ethylene and 0.1 to 1.3 mol% of a C4-C10 alpha-olefin, and
having an MI2 of from greater than 320 to 500g/10min and a
density of 963 - 973 kg/m3; and
(b) 45---60wt% of a copolymer fraction (B) comprising
ethylene and 0.1 to 1.3 mol% of a C4-C10 alpha-olefin, wherein
the composition has an unpigmented density of 940 to 956 kg/m3,
an Mls of 0.2 to 0.7 g/10 min and an 1}21okPa of 2-6 kPa.s, and a
comonomer distribution in both of fractions (A) and (B) such that
either the comonomer content of the polymer fraction across its
molecular weight range varies by less than 1 Owt%, or the lower
molecular weight fraction has a proportionally lower comonomer
content and the higher molecular weight fraction has a
proportionally higher comonomer content, but excluding
compositions in which the Mw(HMW):Mw(LMW) is 30 or
more.
Appeal Br. 28 (Claims App.).
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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 18 and 23 are rejected under 35 U.S.C. § 112, first
paragraph (pre-AIA), as failing to comply with the written
description requirement.
2. Claims 18, 19, 23, 24, 26, 27, 29--31, 34, and 36 are rejected under
35 U.S.C. § 102(b) (pre-AIA) as anticipated by, or in the
alternative, under§ 103(a) (pre-AIA) as obvious over, Lambert et
al. (US 2007 /0287798 Al, published Dec. 13, 2007 ("Lambert")).
3. Claims 18, 19, 23, 24, 26, 27, 29--31, 34, and 36 are rejected under
35 U.S.C. § 102(b) (pre-AIA) as anticipated by, or in the
alternative, under§ 103(a) (pre-AIA) as obvious over, Godon et al.
(WO 2008/006487 Al, published Jan. 17, 2008 ("Godon")2).
4. Claims 18, 19, 23, 24, 26, 27, 29--31, 34, and 36 are rejected under
35 U.S.C. § 103(a) (pre-AIA) as obvious over, Kwalk (US
2006/0036041 Al, published Feb. 16, 2006 ("Kwalk")).
5. Claims 30 and 31 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over Godon in view of K walk.
6. Claims 30 and 31 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over Lambert in view of K walk.
7. Claims 18, 19, 23, 24, 26, 27, 29--31, 34, and 36 are rejected on the
ground of nonstatutory obviousness-type double patenting over
claims 1---6 and 9 of US Patent No. 7,807,770 alone or,
alternatively, in view of K walk.
2 The Examiner cites to US counterpart application US 2009/0286029,
published Nov. 19, 2009. For ease of reference, we will do likewise.
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8. Claims 18, 19, 23, 24, 26, 27, 29--31, 34, and 36 are rejected on the
ground of nonstatutory obviousness-type double patenting over
claims 1-15 of US Patent No. 7,714,074 alone or, alternatively, in
view ofKwalk.
9. Claims 18, 19, 23, 24, 26, 27, 29--31, 34, and 36 are rejected on the
ground of nonstatutory obviousness-type double patenting over
claims 1-13 of US Patent No. 7,812,095 alone or, alternatively, in
view of K walk.
DISCUSSION
Rejection 1. The Examiner rejected claims 18 and 23 for failure to
comply with the written description requirement. Final Act. 3--4. The
Examiner determined that the limitation "excluding compositions in which
the Mw(HMW): Mw(LMW) is 30 or more" (where "Mw(HMW)" represents
the molecular weight of the high molecular weight fraction and
"Mw(LMW)" represents the molecular weight of the low molecular weight
fraction) was not described in the Specification. Id. Appellants concede that
the limitation is not described ipsis verbis but argue that it may be derived
from melt flow index information included in the application. Appeal Br. 7-
14.
Appellants argue that the application includes sufficient information
to calculate the molecular weight ratios of the fractions as follows:
The invention as claimed specifies a composition having a
final MI5 of 0.2-0. 7 g/1 Omin and comprising 40-55wt% of
fraction (A) with an MI2 of 320-500 g/lOmin (and therefore 45-
60wt% of fraction (B)). In a bimodal composition containing two
fractions, if the ratio of the fractions is known as well as the
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overall melt index and also the melt index of one of the fractions,
it is possible to calculate the melt index of the other fraction, in
this case fraction (B). The melt indexes of both fractions can then
be converted into molecular weights and a molecular weight ratio
derived. In other words, as of the effective date of this
application, it was well within the skill of one of ordinary skill in
this art to estimate the range of molecular weight ratios covered
by the invention as presently claimed.
Appeal Br. 8.
For an applicant to comply with the written description requirement of
35 U.S.C. § 112, first paragraph, "the disclosure of the application relied
upon [must] reasonably convey[ ] to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane).
Here, Appellants assert that they find support for the "M w(HMW):
Mw(LMW) is 30 or more" limitation in the "invention as claimed" without
specific citation to any particular document, page, or claim. As each of the
cited values is found in new claim 18 (which was added by amendment),
Appellants seem to argue that the amended claims (including the molecular
weight ratio limitation) are described by other portions of the amended
claims. To the extent this is Appellants' contention it is inadequate as it does
not specify support in the application as filed.
One can, however, find the cited values in various parts of the original
application. The melt index (Mls) range of0.2 to 0.7 g/10 min for the
composition is set forth in the Specification and original claims. See Spec.
4:31-32, 29:31-32 (claim 16). A content of copolymer fraction (a) of 40-
55wt% is described in the Abstract and Specification. Id. at 3:31-32, 4:7-8.
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The melt index ratio (MI2) range of320-500 g/10 min of copolymer (A) is
set forth in the Specification. Id. at 5: 10-11. Accordingly, there is support
for the disclosed melt index, copolymer fraction, and melt index ratio
ranges.
In calculating the molecular weight ratio, Appellants next look to a
formula that is not included in the Specification. Appellants describe such
formula as "a well-known relationship developed by Hagstrom." Appeal Br.
8. The formula is reproduced from Appellants' brief:
i\1FR=
Id. at 9. In order to use such equation, Appellants converted the value for
MI2(A) to MI5(A)3 by multiplying by 4 so that the melt indexes would be
stated in equivalent terms. Id. Appellants state that this is a "well known"
relationship but do not support such assertion with documentary or
declaratory evidence. Id. Appellants additionally multiply melt index
values by 30 to calculate HLMI (high load melt index). Id. Appellants
assert that this is supported by a technical treatise. Id. Specifically,
Appellants allude to a statement that the "FRR of the components is close to
30 in this case (Ziegler-Natta catalyst)." See id. (citing Hagstrom, The
Polymer Processing Society, Extended Abstracts & Final Programme, Aug.
19--21, 4:13). The Specification indicates that "conversion between different
3 The subscript in, for example, "Mb," indicates the mass of the load under
which the polymer flowing through a capillary is extruded. See Spec. 19.
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melt index measurements is familiar to the person skilled in the art."4 Spec.
5.
Appellants use the foregoing equation to calculate a range of the melt
index of copolymer fraction (B) of0.015---0.185 g/10 min. Appeal Br. 9.
Appellants then rely upon "internal modeling" to determine "that the
claimed MI2(A) range of 320-500 g/10 min corresponds to an Mw of20-24
kDa" and "the MI5(A) range of0.015-0.185 g/10 min corresponds to an Mw
of about 280-600 kDa." Id. at 9--10 (emphasis added). Appellants then
conclude that "calculation of the molecular weights of the individual
fractions which are covered by the invention as claimed corresponds to a
broadest possible range ofMw(HMW):Mw(LMW) covered by claim 18 of
280:20-600:24 or 14--30."5 Id. at 10.
"One shows that one is 'in possession' of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious." Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (emphasis added). Similarly, "[t]he knowledge of ordinary
artisans may be used to inform what is actually in the specification, but not
to teach limitations that are not in the specification, even if those
limitations would be rendered obvious by the disclosure in the
specification." Rivera v. Int'! Trade Comm 'n, 857 F.3d 1315, 1322 (Fed.
Cir. 2017) (internal citation omitted) ( emphasis added).
4 In a Response After Final Action dated Jan. 23, 2017 (page 6), Appellants
stated "while the ratios are not 4 and 30 exactly, they are close to those
values."
5 We note that "600:24" does not equate to 30.
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Here, in converting from MI2 to MI5 Appellants rely upon a
conversion factor unsupported by evidence apart from attorney argument
that such conversion factor is "well known." Appellants additionally rely
upon "internal modeling" not found in the Specification. This goes well
beyond any textual support found in the Specification. Accordingly,
Appellants have failed to show reversible error in the Examiner's rejection
of claims 18 and 23 for failure to comply with the written description
requirement.
It is not enough that an ordinary artisan might be able to piece together ratios
meeting the Mw(HMW):Mw(LMW) range of the claim from the examples
and other portions of the written description: the written description must
reasonably convey that Appellants viewed compositions with ratios of less
than 30 as part of Appellants' invention. See Purdue Pharma L.P. v.
Paulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000) ("Although the
examples provide the data from which one can piece together the CmaxlC24
limitation, neither the text accompanying the examples, nor the data, nor
anything else in the specification in any way emphasizes the CmaxlC24
ratio."). Similarly, "one cannot disclose a forest in the original application,
and then later pick a tree out of the forest and say here is my invention." Id.
Appellants' original written description did not emphasize compositions
with ratios meeting the claim.
Rejection 2. The Examiner rejected claims 18, 19, 23, 24, 26, 27,
29-31, 34, and 36 as anticipated by, or in the alternative, as obvious over,
Lambert. Final Act. 4--9. In making this rejection (and each prior art based
rejection at issue) the Examiner determined that there was a prima facie case
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of anticipation or obviousness sufficient to shift the burden of proof to the
applicants. See Final Act. 6-8.
Where all limitations are taught by a prior art reference except for a
property characteristic, the PTO can require an applicant "to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on." In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977) (internal
quotation marks omitted). The court noted that"[ w ]hether the rejection is
based on 'inherency' under 35 U.S.C. § 102, [or] on 'prima facie
obviousness' under 35 U.S.C. § 103 ... the burden of proof is the same." Id.
(quoted with approval in Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306,
1311 (Fed. Cir. 2017)).
Appellants present three arguments in favor of reversal. Appeal Br.
20-21. First, Appellants argue that Lambert teaches only the use of Ziegler-
Natta catalysts which "do not give a substantially uniform or reverse
comonomer distribution in the polymer as now defined in claims 18 and 23."
Id. at 20. A reverse comonomer distribution is a "comonomer distribution in
which the lower molecular weight fraction has the lower comonomer content
and the higher molecular weight fraction has the proportionally higher
comonomer content." Spec. 7. A uniform comonomer distribution is
defined in the Specification as follows:
A uniform comonomer distribution is defined as a comonomer
distribution in which there is no increasing or decreasing trend
across the full width of the molecular weight distribution of the
polymer fraction. A uniform comonomer distribution may
alternatively be defined as meaning that comonomer content of
the polymer fractions across the molecular weight range of the
particular fraction varies by less than 1 Owt%, preferably by less
than 8wt%, more preferably by less than 5wt%, and most
preferably by less than 2wt%.
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Id. at 8.
The Specification tends to support Appellants' assertion that Ziegler-
N atta catalysts do not yield a uniform or reverse distribution of
comonomers. Id. at 7-8. Appellants' representations regarding Lambert are
similarly supported by the Specification. Lambert does not use the term
"Ziegler-Natta," but does include a description of a preferred catalyst that is
similar to the Specification's description of Ziegler-Natta catalysts.
Compare Lambert ,r,r 3 3-3 6 with Spec. 18-19.
Despite the foregoing, Lambert (Table 1) teaches a composition
(Example No. 6) where the C6 content of Polymer A is 0.5 wt% and the C6
content of Polymer Bis 2.4 wt%. Final Act. 5, ,r 7. The Examiner
determined that this falls within the "uniform" distribution limitation. Id.
This is not persuasively rebutted. Accordingly, we determine that
Appellants have not shown reversible error in the Examiner's finding that
Lambert teaches a reverse or uniform comonomer distribution.
For their second argument, Appellants assert that Lambert does not
teach the viscosity at high shear stress range required by the claims
(indicated by the "1121okPa" limitation). Lambert includes viscosity at high
shear stress range values expressed as 1}1ookPa rather than 1}21okPa· See Lambert
,r 53 (Table 1 ). Appellants purport to correlate such values "based on
internal data of the Appellant." Appeal Br. 20. Appellants do not supply
declaratory or other evidence in support of the internal data. Lacking such
support, the data supplied is mere attorney argument. See, e.g., Gemtron
Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
("[U]nsworn attorney argument ... is not evidence and cannot rebut ...
other admitted evidence .... ").
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In their Reply Brief, Appellants seek to offer new evidence based
upon information "published by Borealis Technology Oy ( during an EP
opposition)." Reply Br. 6. Appellants argue that such information
corroborates "the reliability of the correlation" between 1}1ookPa and 1}21okPa
described in their initial brief. Id. Appellants have not provided any
explanation as to why such evidence was omitted from the Appeal Brief.
Accordingly, it will not be considered. See 37 CPR§§ 4I.33(d) (providing
that new evidence will not be admitted except in limited circumstances) and
41.41 (b )(2) (providing that new argument will not be considered by the
Board absent a showing of good cause).
In view of the foregoing, Appellants have failed to show reversible
error in the Examiner's findings regarding Lambert's teaching of viscosity at
high shear stress.
For their third argument regarding Lambert, Appellants offer a single
sentence: "Moreover, Lambert does not disclose compositions containing
0.1-1.3 mol% comonomer in fraction (A) in combination with the overall
MI5 of O .2-0. 7 g/1 Omin as well as a melt index or molecular weight of
fraction (A) in the claimed range." Appeal Br. 21. A mere allegation that a
limitation is not taught by a reference is inadequate to show error. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.");
cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for non-obvious distinctions over the prior
art."). To the extent Appellants' third argument is intended as rebuttal to the
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Examiner's findings regarding Lambert teaching a uniform comonomer
distribution, it is not directly responsive to the Examiner's findings and is
not persuasive of error.
In view of all of the foregoing, we determine that Appellants have
failed to show reversible error in the Examiner's determination that claims
18, 19, 23, 24, 26, 27, 29-31, 34, and 36 are obvious over Lambert.
Rejection 3. The Examiner rejected claims 18, 19, 23, 24, 26, 27,
29-31, 34, and 36 as anticipated by, or in the alternative, as obvious over,
Godon. Final Act. 9-13, 22-25. Appellants make a number of arguments
in support of reversal. Appeal Br. 21-22, 26.
First, Appellants make a bare statement that "[i]n order to make a
composition as claimed, the skilled person would have had to ( amongst
other things) select a composition as defined having a density below 973
kg/m3, as well as ensuring that the final composition has an 1}21okPa between 2
and 6 kPa.s." Id. at 21. As above, absent further analysis, this is insufficient
to show reversible error in the Examiner's findings. In re Lovin, 652 F.3d at
1357.
Appellants additionally argue that the main thrust of Godon teaches
that polymer (A) is a homopolymer rather than a copolymer including olefin
monomers. Appeal Br. 21-22. Appellants cite Godon's teaching that
"ethylene polymer (A) is an ethylene polymer comprising monomer units
derived from ethylene and possibly monomer units derived from other
olefins." Godon ,r 10 (emphasis added). Appellants conclude that "[i]t is
clear, therefore, that Godon is concerned principally with homopolymers for
polymer (A), not copolymers." Appeal Br. 22. This statement may be
accurate, but does not show error in the Examiner's determination. Godon
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must be considered for all of its teachings, including those regarding olefin
monomer units in polymer (A). See In re Mouttet, 686 F.3d 1322, 1331
(Fed. Cir. 2012) ("A reference may be read for all that it teaches").
Appellants additionally argue that Godon does not teach to use a
catalyst known to yield the claimed composition. Appeal Br. 22. Appellants
concede that Godon teaches the use of metallocene "which may be capable
of producing a composition as claimed." Id. Appellants assert that Godon
teaches that "both polymers A and B have a molecular weight distribution
(MWD) of above 4." Appellants further assert that, "[a]s is well known,"
metallocene catalysts "produce narrow MWDs" so one of ordinary skill in
the art would not be led to use metallocene to achieve the molecular weight
distribution taught by Godon.
Appellants make various unsupported factual assertions in support of
their arguments regarding the catalysts taught by Godon. In particular, their
assertion that it is "well known" that metallocene catalysts produce narrow
molecular weight distributions is unsupported. Lacking adequate
declaratory or other support, we regard such assertions as mere attorney
argument. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d at
1380.
Appellants additionally include a brief argument regarding viscosity at
high shear stress (represented by 1}21okPa). Appeal Br. 22. Appellants assert
that viscosity at high shear stress is influenced by a number of factors and
that there is, therefore, no guarantee that any composition taught by Godon
would satisfy the viscosity at high shear stress limitation as well as other
limitations of the claims. Id. This is not directly responsive to the
Examiner's findings. Absent further analysis, this is insufficient to show
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reversible error in the Examiner's findings. In re Lovin, 652 F.3d at 1357; In
re Baxter Travenol Labs, 952 F.2d at 391.
Appellants make similar arguments regarding hindsight. Appeal Br.
26. Such arguments are mere summary allegations and are inadequate to
persuade us of reversible error. See 37 CPR 4I.37(c)(l)(iv) ("the brief shall
contain . . . . The arguments of appellant with respect to each ground of
rejection, and the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the Record relied on. The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.") (emphasis added).
Rejection 4. The Examiner rejected claims 18, 19, 23, 24, 26, 27, 29--
31, 34, and 36 as obvious over, Kwalk. Final Act. 14--18. Appellants make
several arguments in support of reversal. Appeal Br. 17-20.
First, Appellants argue that the low molecular weight fraction
(fraction A in Kwalk) will have a density below the claimed 963 kg/m3• Id.
at 17. Specifically, Appellants argue that "it is well known that metallocene
catalysts incorporate monomer very efficiently." Id. Thus, when a bimodal
polyethylene is made in a single reactor "it is essentially inevitable" that the
low molecular weight fraction will contain significant monomer and, thus,
have a low density. Id.
This argument is not adequately supported. In particular, Appellants'
assertion as to the characteristics of metallocene catalysts (said to be "well
known") is unsupported. Appellants similarly fail to support their assertions
regarding monomer quantity and the resultant density of the low molecular
weight fraction. Lacking adequate declaratory or other support, we regard
such assertions as mere attorney argument. See, e.g., Gemtron Corp. v.
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Saint-Gobain Corp., 572 F.3d at 1380. Accordingly, Appellants have failed
to show reversible error in the Examiner's findings regarding Kwalk's
teachings relating to the density of the low molecular weight fraction.
Second, Appellants argue that K walk is directed toward compositions
that have a large ratio of the molecular weight of the HMW fraction to that
of the LMW fraction. Appeal Br. 18. Appellants argue that the claims at
issue exclude compositions "in which the Mw(HMW):Mw(LMW) is 30 or
more," therefore Kwalk does not teach the claimed ratio. Appellants argue
that the examples ofKwalk each teach a Mw(HMW): Mw(LMW) ratio of at
least 43. Id.
The Examiner acknowledges that none of the examples of K walk
teach a ratio below 43, but finds that other portions of Kwalk teach a lower
ratio (30). Answer 14; Final Act. 15. Kwalk, in relevant part, provides as
follows:
In one or more of the high strength compositions disclosed
herein, the spread, the ratio ofMwHMW:MwLMw as defined
previously, can be 30 or more, or 32 or more, or 35 or more, or
37 or more, or 40 or more, or 45 or more.
Kwalk ,r 39 (emphasis added). As noted above, a reference must be
considered for all that it teaches. In re Mouttet, 686 F.3d at 1331. Here,
Kwalk teaches that the ratio in question "can be 30 or more." Claims 18 and
23 exclude compositions having a ratio of "30 or more." The Examiner has
determined that this is "close enough" that one of ordinary skill in the art
would have expected the claimed and prior art compositions to have the
same properties. Final Act. 15 ( citing Titanium Metals Corp. of America v.
Banner, 778 F. 2d 775, 783 (Fed. Cir. 1985)). Appellants do not appear to
dispute such finding. Accordingly, Appellants have not shown reversible
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error in the Examiner's determination that K walk teaches or suggests the
limitation "the Mw(HMW):Mw(LMW) is 30 or more."
For their third argument regarding Kwalk, Appellants argue that "it
cannot be assumed" that the compositions of K walk would have viscosity
values 1}210KPa of2---6 kPa. Appeal Br. 18-19. In support, Appellants refer to
US 2010/0178443 ("Backman"). 6 There is some disagreement between the
Appellants and the Examiner regarding the viscosity values taught by
Backman, but there appears to be agreement that at least some of the values
of Backman are outside the claimed range of 2---6 kPa. See Answer 14--15;
Reply Br. 4--5. Appellants argue that Backman's teaching of a similar
composition with differing viscosity values indicates that viscosity may not
be inferred from the general similarity of the compositions.
Backman is not relied upon by the Examiner in the instant rejection.
Nor have Appellants shown that Backman is more like the claimed
compositions than Kwalk is. Accordingly, we accord Appellants' argument
in this regard little weight. Additionally, the Examiner has determined that
the viscosity values of Backman overlap those of the claims. Answer 14--15.
Appellants do not dispute such finding. Reply Br. 4--5. Accordingly, the
Examiner's prima facie case is not rebutted.
Rejections 5 and 6. The Examiner rejected claims 30 and 31 as
obvious over Godon in view ofKwalk (Rejection 5). Final Act. 25-27. The
Examiner additionally rejected claims 30 and 31 as obvious over Lambert in
view ofKwalk (Rejection 6). Final Act 27-29. Appellants do not address
6 Appellants indicate that Backman was discussed in the Specification as EP
1909013A. See Spec. 8.
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these rejections with specificity beyond as stated in their prior arguments,
discussed above. See Appeal Br. 24--26. As we have not found such
arguments to be persuasive, we determine that Appellants have failed to
show error in the rejection of claims 30 and 31 as obvious over Godon in
view of Kwalk or the rejection of claims 30 and 31 as obvious over Lambert
in view ofKwalk.
Rejections 7-9. The Examiner rejected claims 18, 19, 23, 24, 26, 27,
29-31, 34, and 36 on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1---6, 9 of U.S. Patent No.
7,807,770 alone or, in the alternative, in view ofKwalk (Rejection 7). The
Examiner further rejected claims 18, 19, 23, 24, 26, 27, 29-31, 34, and 36 on
the ground of nonstatutory obviousness-type double patenting over claims
1-15 of US Patent No. 7,714,074 alone or, alternatively, in view ofKwalk
(Rejection 8). 7 The Examiner further rejected claims 18, 19, 23, 24, 26, 27,
29-31, 34, and 36 on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-13 of U.S. Patent No.
7,812,095 alone or, alternatively, in view ofKwalk (Rejection 9).
Obviousness-type double patenting prohibits the issuance of claims in
a second patent that are "not patentably distinct from the claims of the first
patent." In re Langi, 759 F.2d 887, 892 (Fed. Cir. 1985) (citations omitted).
7 The Examiner states that the rejection is applicable to claims 18-27, 29-
31, 34, and 36. As claims 20-22, and 25 were cancelled by amendment
dated June 21, 2016, we construe this as applicable to the claims as listed
above.
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Application 13/808,767
Appellants argue the foregoing rejections collectively. Appeal Br.
25-26. The thrust of their argument is that "based on the claim amendments
presented herewith, it is clear that the scope of present invention as now
claimed is not rendered obvious by the claims of the cited patents." Id.
( emphasis omitted).
The language "based on the claim amendments presented herewith" is
somewhat confusing. First, we note that Appellants' Remarks dated June
21, 2016 included this same statement. See Amendment dated June 21, 2016
(in response to the Office Action dated Dec. 21, 2015) at 19. Similarly,
Appellants' remarks dated January 23, 2017 included this same statement.
See Response dated Jan. 23, 2017 (in response to the Advisory Action dated
Dec. 14, 2016) at 20.
Second, in the Final Rejection ( dated Aug. 22, 2018), the Examiner
indicated that "[ t ]he amendment filed on June 21, 2016 has been fully
considered." Final Act. 2. The June 21, 2016 amendment is consistent with
the Claims Appendix submitted with the Appeal Brief. Accordingly, we
conclude that Appellants' statement regarding the "claim amendments
presented herewith" is made in error and the Examiner has considered, and
rejected, the current claims. Further, Appellants fail to articulate any
specific argument in response to the Examiner's findings regarding
obviousness type double patenting. Accordingly, Appellants have failed to
persuade us of reversible error in the Examiner's rejection.
In addition to the foregoing, we adopt the findings and analysis of the
Examiner as set forth in the Final Office Action and the Examiner's Answer.
Any argument made by Appellants but not addressed in the foregoing is
deemed not to comply with 37 CPR§ 4I.37(c)(l)(iv).
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Appeal2017-011619
Application 13/808,767
CONCLUSION
The rejection of all claims 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)(l )(iv).
AFFIRMED
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