Ex Parte Hert et al

Patent Trial and Appeal Board

Jun 20, 2016

12667259 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/667,259 06/08/2010
21839 7590 06/22/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Marius Hert
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.
0078840-000012 5600
EXAMINER
CHRISTENSEN, CHELSEA MULLANEY
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIUS HERT
and DOMINIQUE JOUSSET
Appeal2014-004611
Application 12/667 ,259 1
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
BRIAND. RANGE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-18 and 21. An oral hearing was held
on June 7, 2016.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We
REVERSE.
1 According to the Appeal Brief, the Real Party in Interest is ARKEMA
FRANCE. App. Br. 2.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2014-004611
Application 12/667,259
BACKGROUND
Appellants' invention relates to thermoplastic elastomer compositions
formed from mixtures of copolymers grafted with polyamide blocks and
unsaturated elastomers. (Spec. 1) According to Appellants "the present
invention, allows elastic objects to be produced which are flexible, of low
hardness, and with service temperatures which are higher than those of the
TPVs having a polyolefin matrix." (Spec. i-f 5) Claim 1 are reproduced
below from the Claims Appendix to the principal Brief:
1. A mixture comprising, per 100 parts by weight:
(A) 10 to 90 parts by weight of at least one graft
copolymer having polyamide blocks, said copolymer being
composed of a polyolefin backbone and of on average at least
1.3 polyamide grafts on said backbone, and having a
nanostructured organization, where said grafts are attached to
the backbone by the residues of an unsaturated monomer (X)
having a function capable of reacting with an amino-terminal
polyamide; and the residues of said unsaturated monomer (X)
being attached to the backbone by grafting or copolymerization
from its double bond, optionally said constituent (A) comprises
at least one ungrafted polyolefin in a proportion such that the
nanostructured organization of said component (A) is not lost;
and
(B) 90 to 10 parts by weight of a formulation of at least
one elastomer which has unsaturated double bonds and is
capable of reacting with a crosslinking or vulcanizing agent,
said formulation including a system for crosslinking or
vulcanizing of said elastomer or elastomers, at least one
plasticizer, and other additives.
The Examiner maintains, and Appellants appeal, the rejection of
claims 1-18 and 21under35 U.S.C. § 103(a) as obvious over Heilbrunn (US
2
Appeal2014-004611
Application 12/667,259
4,762,877 issued Aug. 9, 1988) in view of Court (US 2003/0199635 Al
published Oct. 23, 2003). 3
OPINION4
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not
established that it would have been obvious to a person of ordinary skill in
the art to substitute Heilbrunn's terpolymer (A) with a polyamide-blocked
graft copolymer such as described by Court. (App. Br. 5-11 ). We add the
following.
Obviousness is a legal question based on underlying factual findings.
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Factual
determinations include, inter alia, the scope and content of the prior art, the
level of skill in the art at the time of the invention, the objective evidence of
nonobviousness, the presence or absence of a motivation to combine, and
whether a reference constitutes analogous prior art. See In re Bigio, 381
F.3d 1320, 1324 (Fed. Cir.2004); Gartside, 203 F.3d at 1316. "A fact finder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning." KSR Int 'l v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). For this reason, "rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." Id. at 1741
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
3 The Examiner has rejected claim 16 over Heilbrunn and Court under a
separate heading. (Final Act. 5)
4 Our analysis applies to both independent claims 1 and 16.
3
Appeal2014-004611
Application 12/667,259
Heilbrunn is directed to compositions based on at least one terpolymer
(A) containing repeating units from ethylene, maleic anhydride and in ester
of (meth) acrylic acid and a terpolymer (B) comprising ethylene, now for all
of send and a diene. (Heilbrunn col. 1 1. 62- col. 2, 1. 21) Heilbrunn
expressly discloses "the Shore hardness, the Zwick rebound and adhesion to
metals, the values of all these properties being proportionately higher the
higher the proportion of the terpolymer (A)." (Id. at col. 2, 11. 50-58).
Court describes adhesive is comprising blends of a polyamide-block
graft copolymer and a flexible polyolefin. (Court i-f 16). Court discloses the
polyamide-block graft copolymers organize themselves into a structure on a
nanometric scale, which gives them exceptional thermomechanical strength
properties. (Court i-f 14).
The Examiner has not established that the polyamide-block copolymer
would provide the Shore hardness, the Zwick rebound and adhesion to
metals properties required by Heilbrunn's terpolymer (A). The Examiner
has not established that the polyamide-block graft copolymer of Court would
provide any of these properties. For example, while the Examiner states that
the substitution "would not negatively impact the adhesion to metal," the
Examiner provides no support or explanation for this point. (Ans. 8).
Since we reverse for the lack of the presentation of a prima facie case
of obviousness by the Examiner, we need not reach the issue of the
sufficiency of the evidence as allegedly demonstrating unexpected results.
See In re Geiger, 815 F.2d 686, 688 (Fed. Cir. 1987).
4
Appeal2014-004611
Application 12/667,259
For the foregoing reasons and those stated in the Brief~ we determine
that the Examiner's conclusion of obviousness is not supported by facts.
"Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, the examiner's rejection of claims 1 to 13 over the combination
of Heilbrunn and Court is reversed.
We reverse the appealed prior art rejections.
REVERSED
5