Ex Parte Esseghir

Patent Trial and Appeal Board

Jan 25, 2018

13699984 (P.T.A.B. Jan. 25, 2018)

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.
13/699,984 11/26/2012 Mohamed Esseghir DOW-36604-A-US 3212
29423 7590 01/29/2018
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EXAMINER
The Dow Chemical Company YOUNG, WILLIAM D
555 East Wells Street, Suite 1900
Milwaukee, WI53202-3819 ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
jere.polmatier@huschblackwell.com
pto-wis@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMED ESSEGHIR
Appeal 2016-008426
Application 13/699,984
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-11 of Application 13/699,984 under
35 U.S.C. § 103(a) as obvious. Non-Final Act. (February 26, 2016).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
Because at least one of these claims has been twice rejected, we have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Union Carbide Chemicals & Plastics Technology, a subsidiary of The Dow
Chemical Company is identified as the real party in interest. Appeal Br. 3.
Appeal 2016-008426
Application 13/699,984
BACKGROUND
The ’984 Application describes olefin multiblock copolymer
compositions from which flexible wire and cable coverings may be made.
Spec. ^ 1.
Claim 1 is representative of the ’984 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief:
1. A composition comprising on weight percent based on
the weight of the composition:
(A) 60 to 99 % an ethylene-alpha-olefin multi block
interpolymer (OBC) (1) having a weight average
molecular weight (Mw) of greater than (>) 40,000
grams per mole (g/mol), (2) having a molecular
weight distribution (Mw/Mn) of 1.7 to 3.5, and
(3) comprising one or more hard segments and one
or more soft segments, the hard and soft segments
having a difference of alpha-olefin content of less
than 18.5 mole percent (mol%), and
(B) 40 to 1 % conductive filler.
Appeal Br. 12 (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-3 and 5-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Arriola2 and Chang.3 Final
Act. 3.
2 US 2007/0167578 Al, published July 19, 2007.
3 US 7,910,658 B2, issued March 22, 2011.
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Appeal 2016-008426
Application 13/699,984
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Arriola, Chang, and Bessette.4 Final Act. 5.
DISCUSSION
Rejection 1. Appellant argues for reversal of the rejection of claims
1-3 and 5-11 on the basis of limitations present in claim 1, which is the sole
independent claim on appeal. See Appeal Br. 7-10; Reply Br. 5-9. We,
therefore, select claim 1 as representative of the group of claims subject to
this ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
In rejecting claim 1, the Examiner found:
Chang et al teaches an ethylene/alpha-olefin multiblock
interpolymer containing hard and soft segments wherein the
amount of alpha-olefin comonomer in the hard segments is less
than 2 mol % and the amount of alpha-olefin comonomer in the
soft segments is more than 5 mol % (col. 8, lines 15-59 and col.
9, lines 4-25). Doing the math, the difference in alpha-olefin
content between the hard and soft segments is 3 mol % or more.
A range of 3 mol % or more overlaps with the claimed range of
less than 18.5 mol %.
Answer 5. See also Answer 3; Final Act. 4.
This finding is erroneous. The portion of Chang relied upon by the
Examiner as describing the composition of the hard and soft segments
discusses the composition of these segments in terms of weight percentages
based upon the weight of the entire polymer. See Chang col. 9,11. 4 - 26.
Because the rejection of claim 1 is based upon an erroneous finding of
fact, we reverse. Thus, we also reverse the rejection of claims 2, 3, and 5-
11.
4 US 2005/0062024 Al, published March 24, 2005.
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Appeal 2016-008426
Application 13/699,984
Rejection 2. The Examiner rejected claim 4 as unpatentable over the
combination of Arriola, Chang, and Bessette. Answer 4. In doing so, the
Examiner does not find that Bessette cures the above-identified defects in
the rejection of claim 1. Thus, we also reverse the rejection of claim 4,
which depends from claim 1.
CONCLUSION
For the reasons set forth above, we reverse the Examiner’s rejections
of claims 1-11 of the ’984 Application.
REVERSED
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