Ex Parte Hatke et al

Board of Patent Appeals and Interferences

May 15, 2002

08967367 (B.P.A.I. May. 15, 2002)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILFROED HATKE,
FRANK OSAN,
OTTO HERRMANN-SCHONHERR,
VINCENT J. SULLIVAN,
and
THOMAS WELLER
__________
Appeal No. 1999-2507
Application No. 08/967,367
___________
ON BRIEF
___________
Before GARRIS, TIMM, and DELMENDO, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 9 through 14 and 16
through 23 in the above-identified application. Claims 15 and
24 through 28, which are the only other pending claims, have
been indicated as allowable if rewritten in independent form
including all of the limitations of the base claim and any
intervening claims. (Examiner's answer, page 2.)
The subject matter on appeal relates to a polymer alloy.
Appeal No. 1999-2507
Application No. 08/967,367
1 The rejection under 35 U.S.C. § 112, first paragraph, as
set out in the final Office action of March 26, 1998 (paper 19)
at p. 2 has been withdrawn. (Advisory action of November 2,
1998, paper 23.)
2 The appellants submit that claims 9-13 and 16-23
constitute one group and claim 14 constitutes another group.
(Appeal brief, p. 5.) We therefore select claims 9 and 14 from
the two groups of claims, respectively, and decide this appeal as
to the examiner's grounds of rejection on the bases of these
2
Further details of this appealed subject matter are recited in
illustrative claims 9 and 14, which are reproduced from the
application and are appended to this decision.
The examiner relies on the following prior art references as
evidence of unpatentability:
Laughner 5,094,806 Mar. 10, 1992
Eichenauer et al. 5,274,032 Dec. 28, 1993
(Eichenauer) (filed Nov. 13, 1989)
Yamamoto 5,304,606 Apr. 19, 1994
(filed Mar. 15, 1993)
Brekner et al. 5,324,801 Jun. 28, 1994
(Brekner) (filed Aug. 9, 1993)
Claims 9 through 14 and 16 through 23 on appeal stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Brekner
and/or Yamamoto in view of Laughner. (Examiner’s answer, pages
4-6.) Also, claims 9 through 14 and 16 through 23 on appeal
stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Eichenauer. (Id. at pages 6-7.)1
We affirm these rejections essentially for those reasons set
forth in the answer.2 Nevertheless, we add the following
Appeal No. 1999-2507
Application No. 08/967,367
claims only. See 37 CFR § 1.192(c)(7) (1997).
3
comments primarily for emphasis.
Brekner and/or Yamamoto in view of Laughner
As correctly found by the examiner (examiner's answer, page
4), Brekner describes cycloolefin copolymers encompassed by
appealed claim 9 (e.g., an ethylene-norbornene copolymer), which
are particularly suitable for the production of extruded parts,
such as films, tubes, rods and fibers, and for the production of
injection-molded articles. (Column 2, line 25 to column 4, line
61; column 9, lines 48-52.) Brekner further teaches that the
cycloolefin copolymer can be used together with a wide variety of
polymers (e.g., styrene-acrylonitrile copolymers) in the
preparation of polymer alloys, which are favorable for certain
applications. (Column 10, lines 1-21.)
Yamamoto describes a thermoplastic resin composition, which
exhibit excellent characteristics in terms of rigidity, dimension
accuracy, impact resistance, and light resistance,
comprising a polymer comprising recurring units of a particular
polycyclic (meth)acrylate and a soft polymer in a weight
proportion of polymer to soft polymer of 99:1 to 40:60. (Column
1, line 42 to column 2, line 18.) As a suitable soft polymer,
Yamamoto describes a soft polymer comprising recurring units
derived from a cycloolefin (e.g., 40 to 98 mol% ethylene, 2 to
Appeal No. 1999-2507
Application No. 08/967,367
4
50 mol% of an á-olefin having 3 or more carbon atoms, and 2 to
20 mol% of a cycloolefin such as tetracyclo[4.4.0.1 2,5.17,10]-3-
dodecene. (Column 12, line 37 to column 26, line 2.) Yamamoto
further teaches that the thermoplastic resin composition may
additionally contain other resins such as an
acrylonitrile/butadiene/styrene copolymer, acrylonitrile/styrene
copolymer, or acrylonitrile/styrene/acrylic acid ester copolymer.
(Column 29, lines 32-50.)
The examiner determined that neither Brekner nor Yamamoto
describes the particulate core/shell component recited in
appealed claims 9 and 14. To account for this difference, the
examiner relied on Laughner.
Laughner teaches a composition for blow molding processes
comprising about 75 to about 99.999% by weight of a
thermoplastic polymeric material, about 0.001 to about 5% by
weight of a fluorinated olefin polymer, and optionally up to
about 20% by weight of an elastomeric impact modifier. (Column
2, lines 7-30; 48-66.) The examiner determined (examiner's
answer, page 5), and the appellants appear to concede (appeal
brief, page 7), that Laughner describes a specific elastomeric
impact modifier (i.e., an MBS core/shell elastomer) falling
within the scope of the appealed claims as the recited
particulate core/shell component. (Column 10, line 66 to column
Appeal No. 1999-2507
Application No. 08/967,367
3 According to the appellants, cycloolefin copolymers are
polyolefins. (Specification, p. 2, ll. 23-28.)
5
11, line 57.) In this regard, it is important to note that the
appellants' reason for adding the recited particulate core/shell
component is to obtain a product that exhibits "good impact
strength even at low temperatures." (Specification, page 11,
lines 21-23.) Laughner additionally teaches that the
thermoplastic polymeric material that can benefit from the
addition of the elastomeric impact modifier include
polyalkenamers obtained from cycloolefins as well as
polyolefins.3
Based on these teachings in the prior art, the examiner
determined that one of ordinary skill in the art would have found
it prima facie obvious to add Laughner's MBS core/shell elastomer
into the compositions of either Brekner or Yamamoto
with the reasonable expectation of obtaining a product that
exhibits improved impact strength. We agree. The motivation to
combine the prior art references comes from the express
teachings of Laughner that the MBS core/shell elastomer provides
improved impact strength in various classes of thermoplastic
polymers, which classes encompass those described in Brekner or
Yamamoto.
Appeal No. 1999-2507
Application No. 08/967,367
6
The appellants argue that Brekner does not disclose the use
of core/shell polymer particles. (Appeal brief, page 6.) But
this is exactly why the examiner relied on Laughner. The
question is what the combined teachings of the applied references
would have suggested to one of ordinary skill in the art.
Nonobviousness cannot be established by attacking references
individually when the rejection is based on a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ
375, 380 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)).
The appellants point out that Yamamoto describes a modified
acrylate or methacrylate copolymer with cycloolefin side groups
and that, therefore, Yamamoto's matrix is different from that
recited in the appealed claims. (Appeal brief, pages 6-7.)
However, the appellants overlook Yamamoto's teaching that the
soft polymer may be a polymer derived from cycloolefins, as we
discussed above.
The appellants contend that "Laughner is directed to a
different class of polymers then [sic] the primary references."
(Appeal brief, page 7.) As pointed out by the examiner
(examiner's answer, page 8), the appellants' argument is not
fully explained and is not supported by any facts. Regardless,
the examiner correctly determined that Brekner and Yamamoto
Appeal No. 1999-2507
Application No. 08/967,367
7
describe cycloolefin copolymers within the scope of the appealed
claims and that the prior art provides the requisite reasonable
expectation of success for adding Laughner's elastomeric impact
modifier into the composition of either Brekner or Yamamoto in
order to improve impact strength. (Id.)
While acknowledging that Laughner's elastomeric impact
modifiers "might fall within the definition of the applicants'
claimed component (b)," the appellants argue that Laughner's
elastomeric impact modifiers are only an optional component and
that "as examples of thermoplastics and elastomers a lot of
polyolefins are mentioned." These arguments are not persuasive.
(Appeal brief, page 7.) That Laughner's elastomeric impact
modifiers are disclosed as an optional component does not alter
the analysis. As pointed out by the examiner (examiner's answer,
page 9), one of ordinary skill in the art would have expected
that Laughner's elastomeric impact modifiers, including the MBS
core/shell elastomer, would improve the impact strength of the
products described in either Brekner or Yamamoto.
The appellants urge that Laughner's patented claims do not
recite cycloolefin copolymers as the thermoplastic material.
(Appeal brief, page 8.) We also reject this argument because the
disclosure of a prior art patent is not limited to its claims. A
prior art disclosure must be evaluated for all that it discloses.
Appeal No. 1999-2507
Application No. 08/967,367
8
For these reasons and those set forth in the examiner's
answer, we uphold the examiner's rejection on this ground.
Eichenauer
Eichenauer describes a thermoplastic molding composition
comprising: (A) from 5 to 95% by weight of a graft product of a
mixture of from 50 to 100 parts by weight of styrene, o-
methylstyrene, vinyl toluene, p-methylstyrene, methyl
methacrylate, or mixtures thereof and from 5 to 40 parts by
weight of acrylonitrile on a particulate silicone rubber having a
specific average particle diameter and rubber content; and (B)
from 5 to 95% by weight of a graft product of a mixture of from
50 to 100 parts by weight of styrene, á-methylstyrene, vinyl
toluene, p-methylstyrene, methyl methacrylate, or mixtures
thereof and from 0 to 50 parts by weight of acrylonitrile on a
particulate EPDM rubber having a specific average particle
diameter and rubber content. (Column 1, lines 30-56.)
Eichenauer further teaches that suitable silicone rubbers include
core/shell materials such as particulate silicone rubbers which
are covered by a shell of crosslinked acrylate rubber or
particulate silicone rubber containing a core of crosslinked
acrylate rubber or styrene/acrylonitrile copolymer. (Column 2,
lines 23-33.) Also, Eichenauer teaches that the EPDM include
polymers of ethylene and propylene containing small quantities of
Appeal No. 1999-2507
Application No. 08/967,367
9
a non-conjugated diene, e.g. dicyclopentadiene, ethylidene
norbornene, 1,4-hexadiene, 1,4-cycloheptadiene, or 1,5-
cyclooctadiene. (Column 3, lines 10-14.)
Thus, the examiner determined that Eichenauer's components
(B) and (A) correspond to the appellants' recited cycloolefin
copolymer component and particulate core/shell component,
respectively. (Examiner's answer, page 6.) According to the
examiner, Eichenauer's composition differs from the invention
recited in the appealed claims only in that the amount of the
non-conjugated diene monomer in the EPDM is not specifically
disclosed. (Id.) This difference notwithstanding, the examiner
determined that Eichenauer would have led one of ordinary skill
in the art to make compositions encompassed by the appealed
claims. (Id. at pages 6-7.) We agree.
The appellants argue that the recited particulate core/shell
component solves the problem of poor impact strength
characteristic of cycloolefin copolymers. This argument is not
persuasive, because Eichenauer's composition contains a
particulate core/shell polymer component as in the invention
recited in the appealed claims. To the extent that a cycloolefin
copolymer has poor impact strength, the particulate core/shell
polymer described in Eichenauer solves the same problem. Cf. In
re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.
Appeal No. 1999-2507
Application No. 08/967,367
10
1990)(en banc). Here, the appellants have not pointed to any
objective evidence (e.g., comparative experimental data)
establishing otherwise.
The appellants urge that "in the case of graft product A,
the particulate rubber must be a silicone rather than a
polymerized unsaturated compound." On this point, we agree with
the examiner's analysis. (Examiner's answer, page 10.)
For these reasons and those set forth in the answer, we
uphold this ground of rejection as well.
Summary
In summary, we affirm the examiner's rejections under 35
U.S.C. § 103 of appealed claims 9 through 14 and 16 through 23 as
unpatentable over: (1) Brekner and/or Yamamoto in view of
Laughner; and (2) Eichenauer.
The decision of the examiner to reject appealed claims 9
through 14 and 16 through 23 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Appeal No. 1999-2507
Application No. 08/967,367
11
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
CATHERINE TIMM )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
RHD/gjh
CONNOLLY BOVE LODGE & HUTZ LLP
1220 N MARKET ST
PO BOX 2207
WILMINGTON DE 19899
Appeal No. 1999-2507
Application No. 08/967,367
12
APPENDIX
9. A polymer alloy comprising (a) one or more cycloolefin
copolymer “(COC)” components(s), and, dispersed in said
cycloolefin copolymer component, (b) one or more particulate
core/shell components;
said cycloolefin copolymer component consisting essentially of at
least one cycloolefin copolymer comprising structural units obtained
by copolymerization of two or more of the following olefins in the
indicated amounts:
0.1-99% by weight, based on the weight of the cycloolefin
copolymer, of at least one of the following polycyclic olefins of
the formulas I, II, III, IV, V or VI,
Appeal No. 1999-2507
Application No. 08/967,367
13
in
which
R1, R2,
R3, R4,
R5, R6,
R7 and
R8 are identical or different and are a hydrogen atom or a C 1-C20
hydrocarbon radical, or two or more of the radicals R 1 through R8
form a ring, if sterically positioned to be able to form a ring,
and the radicals R1 to R8 in the formulae I to VI are identical
or different from one another,
0 to 95% by weight, based on the total weight of the
cycloolefin copolymer, of at least one monocyclic olefin of the
formula VII
Appeal No. 1999-2507
Application No. 08/967,367
14
in which n is a number from 2 to 10, and
0 to 99% by weight, based on the total weight of cycloolefin
polymer, of one or more acyclic olefins of the formula VIII
in which R9, R10, R11 and R12 are identical or different and are a
hydrogen atom or a C1-C20 hydrocarbon radical; and
said particulate core/shell component consisting essentially
of:
one or more rubber phase(s) and one or more hard phase(s),
the hard phase having a glass transition temperature above 50°C
and the rubber phase having a lower glass transition temperature
than said hard phase, said rubber and hard phases consisting
essentiall
y of
polymerize
d
unsaturate
d
compounds
having
carbon-
carbon bonds in the polymer backbone.
14. A polymer alloy comprising: (a) a cycloolefin copolymer
component comprising a copolymer of the reactants comprising
norbornene or tetracyclododecene and an acyclic olefin, and
dispersed in said cycloolefin copolymer component, (b) a
particulate core/shell component comprising at least one rubbery
phase having a glass transition temperature below 0°C and a hard
phase having a glass transition temperature above 50°C; the
rubbery phase consisting essentially of, or, if more than one
rubbery phase is present in said alloy, each said rubbery phase
consisting essentially of one or more polymerized unsaturated
Appeal No. 1999-2507
Application No. 08/967,367
15
compounds.