Ex Parte DUBOIS

Patent Trials and Appeals Board

May 8, 2019

14510528 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/510,528 10/09/2014
30522 7590 05/10/2019
KRATON POLYMERS U.S. LLC
16400 Park Row
HOUSTON, TX 77084
FIRST NAMED INVENTOR
Donn DUBOIS
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.
H0048/US 4266
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/10/2019 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):
iplaw@kraton.com
beth.haslam@kraton.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONN DUBOIS
Appeal2018-005898
Application 14/510,528
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1, 2, 4---6, and 9-16. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant states that the real party in interest is "KRATON
POLYMERS U.S. LLC" (Appeal Brief filed February 21, 2018 ("Br."), 2).
2 Br. 4--10; Final Office Action entered October 5, 2017 ("Final Act."), 2---6;
Examiner's Answer entered March 21, 2018 ("Ans."), 3-11.
Appeal2018-005898
Application 14/510,528
I. BACKGROUND
The subject matter on appeal relates to a composition, which,
according to the Specification, is a hot melt adhesive composition that may
be used as an elastic attachment adhesive to construct elastic laminates
(Specification filed ("Spec."), ,r 1 ). Representative claim 1 is reproduced
from the Claims Appendix to the Appeal Brief, as follows:
1. A composition comprising:
a) 10 to 20 wt.% of a selectively hydrogenated block
copolymer having the structure SEBS or (SEB)nX wherein S
represents a poly(monoalkenyl arene) block, EB represents a
hydrogenated polybutadiene block wherein said polybutadiene
has a peak molecular weight from 128 to 148 kg/mol, n is an
integer from 2 to about 30 and X is the residue of a coupling
agent, and wherein the block copolymer has a vinyl content of
greater than 50% before selective hydrogenation and 1 to 10
wt.% of a diblock polymer is present, and wherein the selectively
hydrogenated block copolymer has a melt flow rate of 1 to 6
gllOmin. at 230°C under 2.16 kg mass as measured according
to ASMT [sic, ASTM] D 1238;
b) 40 to 50 wt.% of an amorphous polyolefin;
c) 25 to 3 5 wt.% of a tackifier; and
d) 3 to 8 wt.% of a maleated polypropylene oligomer
or a maleated SEBS; where the total composition is 100 wt.%.
(Br. 11 ( emphases added).)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under AIA
35 U.S.C. § 103, as follows.
A. Claims 1, 2, 4---6, and 9-14 as unpatentable over Hall et al. 3
3 US 2011/0244232 Al, published October 6, 2011.
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Application 14/510,528
("Hall") in view of Shafer et al. 4 ("Shafer"); and
B. Claims 15 and 16 as unpatentable over Hall in view of Shafer
and further in view of Kahle et al. 5 ("Kahle").
III. DISCUSSION
1. Grouping of Claims
Unless separately argued pursuant to 37 C.F.R. § 4I.37(c)(l)(iv), the
claims subject to Rejection A stand or fall with claim 1, which we select as
representative in our opinion below. As for the claims subject to Rejection
B, the Appellant relies on the same arguments in support of claim 1 (Br. 10).
Therefore, our ruling on claim 1 controls the outcome for the claims subject
to Rejection B.
2. The Examiner's Position
The Examiner finds that Hall describes an adhesive polymer blend
that satisfies all the limitations recited in claim 1 but acknowledges that the
reference "is silent as to (i) the vinyl content before hydrogenation; and (ii)
the polybutadiene molecular weight of the selectively hydrogenated block
copolymer" (Ans. 3). As for difference (i), the Examiner finds that Shafer
discloses a styrene-butadiene-styrene block copolymer in which a vinyl
content of 45-90% by weight in the polybutadiene block prior to
hydrogenation is advantageous because it yields low viscosity polymers that
are easily coatable at high service temperatures (id. at 3--4). As for
difference (ii), the Examiner finds that Shafer discloses a weight average
molecular weight for the block copolymer of from 45,000 to 200,000 and a
4 US 5,777,043 A, issued July 7, 1998.
5 US 3,880,954, issued April 29, 1975.
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Application 14/510,528
weight average molecular weight for each polystyrene block of 5,000 to
32,000, and, therefore, the average molecular weight of the polybutadiene
block would be about 136 kg/mol-a value that falls within the range recited
in claim 1 (id. at 4). The Examiner finds that Shafer teaches that such a low
molecular weight copolymer is advantageous because the lower molecular
weight copolymer has a lower viscosity and, therefore, is easier to coat (id.).
Based on these findings, the Examiner concludes that a person having
ordinary skill in the art would have combined Hall and Shafer in the manner
claimed by the Appellant in order to provide compositions that are easily
coatable at high service temperatures (id.).
3. The Appellant's Principal Contentions
The Appellant argues that "Hall fails to disclose the presently claimed
vinyl content, the presently claimed peak molecular weight, or the presently
claimed melt flow" (Br. 5 (italics removed)). Specifically, the Appellant
contends that Hall teaches Kraton G series polymers, which do not meet the
compositional and high vinyl content requirements recited in claim 1 (Br. 5-
6). The Appellant also argues that Hall's Examples 1-15 are all based on a
first polymer component that comprises an unsaturated polyisoprene block
"without even indicating the molecular weight of their [poly ]isoprene block
that does not meet the presently claimed the present melt flow rate of 1 to 6
g/10 min." (id. at 6). Alleging that Hall provides an "overly broad
disclosure" for the block copolymer, the Appellant argues, for example, that
although Hall discloses in one embodiment that the "B" block can be
hydrogenated, Hall "fails to motivate one of skill in the art to the specifically
claimed block copolymer" (id.). In addition, the Appellant argues that
neither Hall nor Shafer discloses a range of 10 to 20 wt.% for the selectively
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Application 14/510,528
hydrogenated block copolymer, with Hall exemplifying at most 8.5 wt.% of
the block copolymer (id. at 7-8). The Appellant also argues that Hall
discloses higher amounts (about 50 to about 95 wt.%) for the polymer
corresponding to the Appellant's amorphous polyolefin component than the
range of 40-50 wt.% recited in claim 1 (id. at 8). Regarding the peak
molecular weight limitation of 128-148 kg/mol for the polybutadiene block
recited in claim 1, the Appellant does not specifically refute the Examiner's
finding that the average molecular weight of the polybutadiene block in
Shafer would be about 136 kg/mol based on Shafer's disclosure concerning
the weight average molecular weights of the overall block copolymer and
the polystyrene block (id. at 6-7). Rather, the Appellant argues that Shafer
teaches an "extremely large range of weight average molecular weights,"
with Shafer's Table 1 disclosing "weight average molecular weights of 23 to
4 7" (id. at 7). The Appellant argues that, therefore, a person having ordinary
skill in the art would not have been motivated to arrive at the narrow range
of peak molecular weight range of 128-148 kg/mol for the polybutadiene
block recited in claim 1 (id.). Furthermore, the Appellant urges that the
experimental data shown in the Specification (Spec. 13 (Table)) show
improved creep resistance (initial creep) for the invention (Composition F3)
compared to two control compositions (Compositions Fl and F2) (Br. 5).
4. Opinion
The Appellant's arguments are ineffective to identify any reversible
error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011).
Hall describes adhesive polymer blend compositions comprising
about 5 to about 50 wt.% of a first polymer component (e.g., a styrenic block
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Application 14/510,528
copolymer such as a styrene-butadiene-styrene block copolymer), which has
a melt flow rate (MFR) of about 5 to about 35 g/10 min. measured at 200°C
at 5 kg load, and about 50 to about 95 wt.% of a second polymer component
(e.g., a propylene polymer having low crystallinity (i.e., an amorphous
propylene polymer)) (Hall ,r,r 14, 19, 35, 43, 53). Hall also teaches
additional components, such as a tackifier in an amount of about 1 to about
30 wt.% and a functionalized polyolefin such as a maleated polypropylene
(e.g., a low molecular weight wax) in an amount of from 0.01-10 wt.%, may
be included (id. ,r 57, 66, 74). Thus, contrary to the Appellant's arguments
(Br. 7, 8), Hall teaches amount ranges for the styrene-butadiene-styrene
block copolymer, the amorphous propylene polymer, the tackifier, and the
maleated polypropylene that encompass, overlap, or at least touch the ranges
for components a}-d) recited in claim 1. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) ("A primafacie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art."); id. ("We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties."); id. at 1330 ("[W]hen, as here,
the claimed ranges are completely encompassed by the prior art, the
conclusion is even more compelling than in cases of mere overlap.").
Although Hall discloses a genus of styrenic block copolymers, that
fact does not negate an obviousness conclusion. Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
[reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious."); In re Corkill, 771 F.2d 1496,
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Application 14/510,528
1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of
prior art teaching that "hydrated zeolites will work" in detergent
formulations, even though "the inventors selected the zeolites of the claims
from among 'thousands' of compounds"); In re Arkley, 455 F.2d 586, 587
(CCPA 1972) (plurality) ("[P]icking and choosing may be entirely proper in
the making of a[§] 103, obviousness rejection.").
As we pointed out above, the Appellant argues that "Hall fails to
disclose the presently claimed vinyl content, the presently claimed peak
molecular weight, or the presently claimed melt flow" (Br. 5 (italics
removed)). The Examiner, however, relied on Shafer for the vinyl content
and polybutadiene block peak molecular weight limitations (Ans. 3--4). In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.").
Specifically, Shafer teaches that a hydrogenated styrene-butadiene-
styrene block copolymer having a vinyl content of at least 45% by weight
and an overall weight average molecular weight of 30,000 to 300,000 and a
styrene block weight average molecular weight of 4,000 to 35,000 in a
sealant composition provides enhanced resistance to oxidation and chemical
attack, excellent high temperature resistance, and sufficiently low viscosity
for easy coatability (Shafer col. 1, 11. 15-56; col. 2, 11. 22-29; col. 8, 11. 30-
47). Given the collective teachings found in Hall and Shafer, we agree with
the Examiner that a person having ordinary skill in the art would have been
prompted to use Shafer's styrene-butadiene-styrene block copolymer as the
styrene-butadiene-styrene block copolymer component in Hall with a
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reasonable expectation of providing a composition with the advantageous
properties disclosed in Shafer.
Here, the Appellant does not dispute the Examiner's finding that
Shafer would have disclosed or suggested a polybutadiene block having a
peak molecular weight within the range recited in claim 1 (Br. 6-7).
Instead, the Appellant merely focuses on the "extremely large range" of
molecular weights disclosed in Shafer and the "mid-block weight average
molecular weights of 23 to 4 7" disclosed in Shafer's Table 1 (id. at 7). But
the Appellant's reading of a description as to a weight average molecular
weight of 23--47 in Shafer's Table 1 is erroneous. Shafer teaches mid-block
content percentages-not molecular weights-ranging from 23--4 7 (Shafer
col. 7, 11. 27-37 (Table 1)). The Appellant fails to direct us to any objective
evidence that these exemplified polybutadiene mid-blocks would not have a
peak molecular weight within the range recited in claim 1, and, in any event,
Shafer's disclosure is not limited to its working examples. Again, a prior art
molecular weight range that encompasses a range specified in a claim is
sufficient to establish a prima facie case of obviousness. Peterson, 315 F .3d
at 1330; In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
As for the melt flow rate limitations, the Examiner finds that Hall
teaches a MFR for the polybutadiene block of about 5 to about 3 5 g/10 min.
at 200°C under 5 kg, which, according to the Examiner would overlap the
range recited in claim 1 ("a melt flow rate of 1 to 6 g/lOmin. at 230°C under
2.16 kg") (Ans. 10 (citing Hall ,I 31)). The Appellant does not argue that the
difference in measurement conditions between Hall and claim 1 would result
in a significant difference in MFR values (Br. 8-9). Instead, the Appellant
focuses merely on Hall's discussion of MFR of a polyisoprene block (id.).
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Application 14/510,528
Hall's disclosure, however, is not limited to block copolymers that contain a
polyisoprene block. Hall's disclosure of a MFR of about 5 to about 35 g/10
min. applies generally to all suitable styrenic block copolymers including
styrene-butadiene-styrene block copolymers (Hall ,r,r 29-31 ).
Regarding the Appellant's reliance on the initial creep data reported in
the current Specification (Spec. ,r,r 38--41), which presumably are relied on
as evidence of unexpected results, we concur with the Examiner's
assessment that the showing is not commensurate in scope with claim 1. In
re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) ("With respect to
appellants' broad claims to a catalyst with 'an alkali metal,' the experiments
detailed in Friedrich III, being limited to sodium only, are not commensurate
in scope, and are, therefore, insufficient to rebut the prima facie case."); In
re Inland Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001) ("Inland did not
offer comprehensive test results for the magnetic properties of steel
produced under the '574 claims at antimony levels greater than 0.02%.").
In particular, composition F3, which the Appellant identifies as falling
within the claimed subject matter, contains 20 wt.% of a "polymer A"
described as follows:
Polymer A is a high vinyl, linear, sequential SEBS
having high viscosity, a PSC of 20 wt.% and a PS block peak
molecular weight of9.7 kg/mol., a vinyl content of70.5%, and
a diblock content of less than 1 wt. 0/o. The total peak
molecular weight is 155 kg/mol. Polymer A has a melt flow
rate (230°C/2.16 kg) of less than 1 gram per 10 min. The
polybutadiene peak molecular weight is 136 kg/mol.
(Spec. ,r 39 (bolded emphases added).) Composition F3 also contains
specific amounts of "Rextac RT 2730," "Eastotac H-lOOW," and "AC596"
(id. ,r 41 ). Claim 1, by contrast, recites considerably broader ranges for each
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component as well as for the polybutadiene peak molecular weight, "n"
values, "X" residues, vinyl contents, diblock polymer content, and MFRs.
Indeed, claim 1 is not even limited to any particular "monoalkenyl arene."
Moreover, polymer A's diblock content of less than 1 wt.% and MFR of less
than 1 g/10 min. fall outside the ranges recited in claim 1, and, therefore,
composition F3 is not even encompassed by claim 1-i.e., it is not
representative of the claimed invention. Therefore, the Appellant's
proffered showing of secondary considerations evidence is deficient.
The Appellant also provides some additional comments concerning
claim 6, stating that it recites a more limited peak molecular weight range of
145 to 200 kg/mol and specifies a polystyrene block (Br. 9). But as stated in
37 C.F.R. § 4I.37(c)(l)(iv), merely reciting what a claim recites and/or
providing a skeletal argument that the prior art references do not disclose or
suggest certain claim limitations are not arguments that require our separate
consideration. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011).
For these reasons and those given by the Examiner, we uphold the
Examiner's rejections.
IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 1, 2, 4---6, and 9-16 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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