Ex Parte Duranel et al

Patent Trial and Appeal Board

Feb 25, 2013

12305309 (P.T.A.B. Feb. 25, 2013)

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.
12/305,309 03/27/2009 Laurent Duranel F-1006 3216
25264 7590 02/25/2013
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
02/25/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAURENT DURANEL and EMMANUEL HUMBEECK
____________

Appeal 2011-012393
Application 12/305,309
Technology Center 1700
____________

Before ANDREW H. METZ, CATHERINE Q. TIMM, and
GEORGE C. BEST, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 6 through 8 which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

THE INVENTION
Appellants disclose a method for preparing vials by one-stage
injection-stretch-blow-molding. Appellants’ method utilizes a randomly
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formed copolymer of propylene and ethylene and having an ethylene content
of less than 3.5 weight percent with respect to the weight of the random
copolymer preferably prepared using a Ziegler-Natta catalyst. Spec. page 2,
lines 13 through 17. The copolymer has a melt index (MI2) of from 1 to 3
dg/min. Id. Appellants disclose various prior art publications that describe
conventional one-stage and two-stage processes for preparing “articles”
from ethylene/propylene copolymers by injection-stretch-blow-molding
techniques but allege that the resins used in the cited prior processes art do
not possess “an ideal balance of properties.” Spec. page 1, lines 5 through
27. Appellants disclose that their injection-stretch-blow-molding process can
be carried out either in a two-stage process using two separate machines or
in a single-stage process using a single machine. Spec. page 4, lines 8
through 11. Appellants’ appealed claims are limited to a one-stage process.
Claim 6 is believed to be adequately representative of the appealed
subject matter and is reproduced below for a more facile understanding of
the claimed invention.
6. A method for preparing vials by one-stage injection-stretch-blow-
moulding comprising:

providing a Ziegler-Natta formed random copolymer of propylene and
from 0.1 to 3.5 wt.% ethylene exhibiting a melt index (MI2) of from 1
to 3 dg/min.; and

one-stage injection-stretch-blow-moulding the random copolymer to
form a vial, wherein the one-stage injection-stretch-blow-molding
includes forming a perform [sic, preform] at a preform injection
temperature of at least 210º C and a mould filling rate over gate
diameter ratio less than or equal to 10 cc/s/mm.

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The references of record which are being relied on by the Examiner as
evidence of obviousness are:
Marczinke et al. (Marczinke) US 6,733,717 B1 May 11, 2004
Batlaw et al. (Batlaw) US 2005/0161866 A1 July 28, 2005
Sideris US 2006/0290034 A1 Dec. 28, 20061
Hausmann et al. (Hausmann) US 2010/0166991 A1 July 01, 2010
Novak EP 0 309 138 Mar. 29, 1989
Sideris WO 2005/084920 A1 Sep. 15, 2005

THE REJECTIONS
Claims 6 through 8 stand rejected as being unpatentable under
35 U.S.C. § 103(a) as the claimed subject matter would have been obvious at
the time Appellants made their invention from the disclosure of Marczinke
when considered with Novak, Sideris, and Batlaw.
Claims 6 through 8 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claim 7 of Appellants’ copending Application Number 12/305,252
considered with Sideris.
OPINION
After carefully considering the entire record before us, including all of
the evidence and the arguments made by the Appellants and the Examiner in
support of their respective positions, we find that the Examiner has
established a prima facie case of obviousness with respect to the claimed
subject matter. We find the Examiner’s stated rationale as set forth in the
rejections to be persuasive and supported by the evidence on which he has

1 The Examiner characterizes this reference to be an “equivalent of WO
200584920,” see Ans. page 5, and relies on the U.S. patent for his citations
in the record.
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relied. We do not find Appellants’ arguments to be persuasive. We add the
following remarks for emphasis.
Appellants argue that the Examiner erred by relying on Marczinke to
reject the claims under 35 U.S.C. § 103(a) because Marczinke does not teach
or suggest a process for injection-stretch-blow-molding using a Ziegler-
Natta formed random copolymer. Specifically, while conceding the passage
cited by the Examiner from column 2 of Marczinke does teach that
polyolefins may be formed with Ziegler-Natta catalysts or metallocene
catalysts, Appellants urge that “the entirety of Marczinke clearly teaches that
the polymers utilized for ISBM are metallocene catalyst formed.” Brief at
page 3, lines 10 and 11.
We find Appellants’ argument concerning the disclosure at column 2,
lines 46 through 59 in Marczinke of ethylene/propylene copolymers
prepared using Ziegler-Natta catalysts to be based on an unduly narrow and
unreasonable reading of what Marczinke discloses. We find said disclosure
to mean either type of catalyst may be used to prepare useful random
copolymers for use in the injection-stretch-blow-molding method disclosed
by Marczinke, as conceded by Appellants in their Brief. Further, the basis
for Appellants’ determination from page 3 of their Brief that “the entirety of
Marczinke teaches that the polymers utilized for ISBM are metallocene
catalyst formed” is not clear from the record nor have Appellants directed us
to what forms the basis for their opinion. Nevertheless, assuming, arguendo,
all the examples in Marczinke were prepared using metallocene catalysts it
would not mandate a change to our finding of obviousness because
exemplification is not required to support a conclusion of obviousness.
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Rather, we find that the hypothetical person of ordinary skill in the art would
have understood from reading the entire Marczinke reference and
particularly the cited and relied upon passage to mean that random propylene
copolymers prepared using either Ziegler-Natta catalysts or metallocene
catalysts would have been expected to be useful in the injection-stretch-
blow-molding process of Marczinke.
Appellants also argue that because Marczinke teaches the preparation
of bottles, and not vials, that it would not have suggested the claimed
process to a person of ordinary skill in the art at the time Appellants made
their invention. Additionally, Appellants argue that Marczinke describes
melt flow rates, not the claimed melt flow index (MI2), and therefore could
not have rendered the claimed subject matter obvious. Neither of these
arguments is persuasive.
Appellants’ Specification does not describe or define what constitutes
a vial for purposes of their invention in terms of its dimensions or capacities.
We agree with the Examiner’s observation that because Marczinke discloses
that containers or bottles prepared by their process are useful as packaging
for the “medical sector” Marczinke’s disclosure would have been understood
to include vials—which are, by the broadest reasonable definition of that
term, small bottles. Indeed, at page 5, lines 6 through 16 of Appellants’
Specification Appellants describe their “vials” as “bottles.” Thus, we find no
meaningful difference between the two terms as defined by Appellants’ own
disclosure.
To the Examiner’s credit, he has provided the record with evidence
which supports his position that the terms “melt flow index” (MI2) and “melt
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flow rate” are synonymous in this art. See, for example, Hausmann discussed
at page 12 of the Answer. Other than their bare argument, Appellants have
offered no evidence in support of their position but rely merely on the fact
that the terms are different. At column 10, lines 26 through 30, Marczinke
discloses the “melt flow rate” as being measured in accordance with ISO
1133. Appellants disclose the very same standard for measuring the “melt
flow index (MI2)” of the claimed copolymers at page 2, lines 21 and 22 of
their Specification, including the same conditions for making the
measurement, that is, a load of 2.16 kg at a temperature of 230º C.
Accordingly, we find that the terms “melt flow rate” and melt flow index”
are the same based on the evidence before us and we find Appellants’
argument to the contrary to be unpersuasive.
Except for pronouncing at page 4 of their Brief that the secondary
references “fail to supply the missing Ziegler-Natta formed random
copolymer having the claimed features and the formation of vials from
such”, Appellants have not otherwise discussed what the references disclose
let alone distinguished what the “secondary” references to Novak, Sideris
and Batlaw teach or suggest or even addressed what the proposed
combination of references, considered together as a whole, would have
suggested to the hypothetical person of ordinary skill in this art at the time
Appellants made their invention. Thus, except for their discussion of
Marczinke, Appellants have failed to address the rejection before us.
In the Final Rejection of Appellants’ claims, the Examiner set forth
two provisional obviousness-type double-patenting rejections of all
Appellants’ claims. Appellants have not presented the issues of the two
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provisional obviousness-type double-patenting rejections for our review
because Appellants did not identify those grounds of rejections as ones for
which review was sought in their Brief. See 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, Appellants have waived any arguments concerning the
correctness of the provisional obviousness-type double-patenting rejections
as stated in the Final Rejection and as repeated in the Examiner’s Answer.
Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir 2008) (discussing
predecessor to 37 C.F.R. § 41.37 (c)(1)(vii) (2010)). Accordingly, we shall
summarily affirm each of the provisional obviousness double patenting
rejections.
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)(1)(iv).
AFFIRMED

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