Ex Parte Humphrey et al

Patent Trial and Appeal Board

Feb 18, 2016

12733059 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121733,059 01/10/2011
157 7590 02/22/2016
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
William M. Humphrey
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.
P09128US 6205
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
veronica. thompson@covestro.com
US-IPR@covestro.com
laura.finnell@covestro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAYER MATERIALSCIENCE LLC
Appeal2014-004122
Application 12/733,059
Technology Center 1700
Before FRED E. McKEL VEY, CHUNG K. PAK, and
SALLY GARDNER LANE, Administrative Patent Judges.
McKEL VEY, Administrative Patent Judge.
DECISION ON APPEAL
37 C.F.R. § 41.50
I. Statement of the Case
1 Bayer MaterialScience LLC ("Appellant"), the real party in interest
2 (Appeal Brief ("Br."), page 1 ), seeks review under 35 U.S.C. § 134(a) of a
3 final rejection dated 1 May 2013.
4 The named inventors are: William M. Humphrey, Paul Drago, and
5 Terry L. Anderson.
6 We have jurisdiction under 35 U.S.C. § 134(a).
Appeal2014-004122
Application 12/773,059
1 The application on appeal was filed in the USPTO on 10 January
2 2011. 1
3 Appellant claims priority of PCT /US2008/0095 l 8 filed 08 August
4 2008, that entered the National Stage on 10 January 2011.
5 Appellant also claims priority of four Provisional Applications, the
6 earliest of which was filed on 10 August 2007.
7 The application on appeal has been published as U.S. Patent
8 Application Publication 2011/0105673 Al (5 May 2011).
9 The Examiner relies on the following evidence.
Humphrey et al. U.S. Patent 5,824,738 20 Oct. 1998
"Humphrey"
Lawrey et al. U.S. Patent 6,737,497 B2 18 May 2004
"Lawrey"
Masubuchi U.S. Patent Application Publication 20 Nov. 2003
2003/0216507 Al
l\lf~----~..l~~ ~'- ~1 'P~----~~--~·-'-----~ T\~-~~--.J~--~~ ~-'
lVldV HUUS t:l al. 1 t:mpt:rutun:: ut:pt:nut:nc.:t: UJ
"Mavridis" Polyolefin Melt Rheology, 32 1992
POLYMER ENG'G & SCI. 1778-1791
Ray Scott, The Hanson Group, LLC,
New Aliphatic Diamine Chain
Scott Extender for Light Stable Polyureas 2006
and Polyurethanes-POLYCLEAR
136
21 pages
The Hanson Group, LLC
PolyClear PolyClear 136 Unknown
1 Because the application on appeal was filed before the enactment of the
Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat.
284 (2011), we apply the pre-AIA version of 35 U.S.C. §§ 102 and 103.
2
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Application 12/773,059
(Technical Data Sheet) 1 page
1 Appellant does not contest the prior art status of Humphrey, Lawrey,
2 Masubuchi, Mavridis, or Scott.
3 The publication date of PolyClear is unknown. PolyClear is relied
4 upon to establish the molecular weight of PolyClear 136. See Office Action
5 dated 17 October 2012 ("Office Action"), page 7.
6 II. Claims on Appeal
7 Claims 1-9 and 11-19 are on appeal. Br., page 2.
8 III. Rejections
9 A. Rejection 1
10 Claims 1, 2, 8, and 9 stand rejected under 35 U.S.C. § 102(b) as
11 anticipated by Lawrey. Answer, page 2; Final Rejection, page 3; Office
12 Action, page 3 (,-i,-i 4-12).
13 B. Rejection 2
14 Claims 1-3, 8, 9, 11, and 16-19 stand rejected as being unpatentable
15 under 35 U.S.C. § 103(a) over Humphrey and Scott (PolyClear being relied
16 upon to establish a molecular weight). Answer, page 2; Final Rejection,
17 page 4; Office Action, page 5 (,-i,-i 13-27).
18 C. Rejection 3
19 Claims 4, 6, 7, 14, and 15 stand rejected as being unpatentable under
20 35 U.S.C. § 103(a) over Humphrey, Scott, and Masubuchi (PolyClear being
21 relied upon to establish a molecular weight). Answer, page 2; Final
22 Rejection, page 4; Office Action, page 10 (,-i,-i 28-37).
3
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1 D. Rejection 4
2 Claim 5 stands rejected as being unpatentable under 35 U.S.C.
3 § 103(a) over Humphrey, Scott, Masubuchi, and Mavridis (PolyClear being
4 relied upon to establish a molecular weight). Answer, page 3; Final
5 Rejection, page 4; Office Action, page 13 (,-i,-i 38--42),
6 E. Rejection 5
7 Claims 1-9 and 11-19 stand provisionally rejected on the ground of
8 nonstatutory obviousness-type double patenting in view of claims 1-18 of
9 pending Application 12/672, 174. Answer, page 3; Final Rejection, page 5;
10 Office Action, page 16 (,-i,-i 46-51 ). PTO records show that claims 1-18
11 of Application 12/672, 174 were rejected in an Office action entered
12 7 December 2015 (,-i,-i 46-51 ).
13 Appellant does not contest Rejection 5 on the merits. Rather,
14 Appellant states that it "will file a terminal disclaimer ... upon receipt of an
15 indication that the claims ... [here on appeal] are in condition for
16 allowance." Br., page 11.
17 Because prior art Rejections 1--4 are affirmed, Rejection 5 will also be
18 affirmed inasmuch as Appellant does not contest the merits of Rejection 5.
19 F. Rejection 6
20 Claims 1-9 and 11-19 stand provisionally rejected on the ground of
21 nonstatutory obviousness-type double patenting in view of claims in pending
22 Application 12/672,148. Answer, page 3; Final Rejection, page 5; Office
23 Action, page 17 (,-i,-i 52-57). Application 12/672,148 is the application
4
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Application 12/773,059
1 involved in Appeal 2014-004512, decided concurrently with the appeal in
2 this case.
3 Appellant does not contest Rejection 6 on the merits. Rather,
4 Appellant states that it "will file a terminal disclaimer ... upon receipt of an
5 indication that the claims ... [here on appeal] are in condition for
6 allowance." Br., page 12.
7 Because prior art Rejections 1--4 are affirmed, Rejection 6 will also be
8 affirmed inasmuch as Appellant does not contest the merits of Rejection 6.
9 IV. Analysis
10 A. Rejection 1
11 1. Claim 1
12 Claim 1, reproduced from the Claims Appendix (Br., page 13) reads:
13 A molding composition compnsmg an aliphatic
14 thermoplastic urethane/urea comprising the reaction product of
15 (i) a polyol component comprising at least one
16 polyether polyol having a molecular weight of from 1000
17 to 10,000 Da [Daltons] and an unsaturation level less
18 than or equal to 0. 04 meq/ g,
19 (ii) an aliphatic or cycloaliphatic diamine having a
20 molecular weight of up to 4000,
21 (iii) an isocyanate component comprising at least one
22 aliphatic organic diisocyanate,
23 (iv) optionally, a chain extender which is not within the
24 scope of (ii),
5
1
2
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9
10
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Application 12/773,059
(v) optionally, a UV stabilizing agent,
(vi) optionally, an antioxidant,
(vii) optionally, a pigment, and
(viii) a catalyst which promotes urethane formation, and
(ix) optionally, a mold release agent.
2. Elements Described by Lawrey
With optional elements deleted, and using an approach set out
in Ex parte Braeken, 54 USPQ2d 1110 (BP AI 1999), Lawrey
describes the following elements of claim 1 (citations to Lawrey are in
addition to those pointed out in the Office Action):
A molding composition comprising an aliphatic
thermoplastic urethane/urea comprising the reaction product of
(1\
\'"} a polyol component comprising at least one
polyether polyol having [ 1] a molecular weight of from
1000 to 10,000 Da [Daltons] [col. 6:47-532] and [2] an
unsaturation level less than or equal to 0.04 meq/g
[col. 6:10-17,3 e.g., Polyol D, a polyoxypropylene diol
having a molecular weight of 2000 Da and an
unsaturation level of 0.005 meq/g (col. 9:33-35)],
(ii) an aliphatic or cycloaliphatic diamine having a
molecular weight of up to 4000 [col. 5:32-53, e.g.,
ethylene diamine (col. 5:52-53) having a molecular
weight of 60.10 g/mol],
2 Measured as set out at col. 6:55-65.
3 Measured as set out at col. 2:64-67.
6
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1 (iii) an isocyanate component comprising at least one
2 aliphatic organic diisocyanate [ a/k/a 1,6-hexamethylene
3 diisocyanate; col. 5:54-67, e.g., 1,6-hexylene
4 diisocyanate (col. 5:59)],
5 (viii) a catalyst which promotes urethane formation
6 [col. 8:4-14; col. 9:37, e.g., zinc octoate] ....
7 3. Appellant's Argument
8 Appellant does not argue the separate patentabilty of claims 2, 8, and
9 9 apart from claim 1. Accordingly, we decide the appeal as to claims 2, 8,
10 and 9 on the basis of claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
11 Appellant observes that Lawrey's composition are useful for
12 production of spandex fibers, whereas the claimed composition is said to be
13 "useful for the production of automotive components." Br., page 3. Claim 1
14 while reciting "molding composition" does not mention "production of
15 automotive components."
16 The Examiner found that the Lawrey compositions "contains the same
17 components as the ... composition [of claim 1 ], and furthermore it appears
18 that the ... composition of Lawrey is capable [of] being used as a molding
19 composition." Office Action, page 4, iJ 8.
20 The Examiner has observed that "Appellant does not argue that
21 Lawrey' s polymers are not useful as molding compositions." Answer,
22 page 4.
7
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1 Appellant presents seven arguments to justify its position that there is
2 a difference between the subject matter of claim 1 and Lawrey. Br., page 3.
3 We find none of the seven reasons to be persuasive.
4 Reason (1 ): Lawrey is said to require use of a prepolymer whereas
5 Appellant's claimed compositions do not. Nothing in claim 1 excludes
6 making the reaction product by using a prepolymer. Product-by-process
7 claim 1 does not set out any particular order for making the reaction product.
8 Answer, page 5.
9 Reason (2): the prepolymers used to produce the Lawrey
10 compositions may be aromatic or aliphatic whereas Appellant's
11 compositions must be produced with an aliphatic diisocyanate. It is true that
12 Lawrey describes the use of both aliphatic diisocyanates (e.g., 1,6-hexylene
13 diisocyanate-col. 5:59) and aromatic diisocyanates (e.g., MDI-col. 6:4).
14 However a description of the use of alternative diisocyanates does not
15 undermine the fact that Lawrey describes the use of aliphatic and
16 cycloaliphatic diisocyanates.
17 Reason (3): Lawrey is said to require use of two different types of
18 diamine chain extenders to form the Lawrey compositions whereas the
19 compositions of claim 1 do not require these different chain extenders. Use
20 of the transitional phrase "comprising" in claim 1 does not preclude use of a
21 mixture of two diamine chain extenders as component (ii).
22 Reason (4): Lawrey is said to require a polyol component that
23 includes a substantial amount of PTMEG (polytetramethylene ether glycol)
24 whereas PTMEG is not required by claim 1. Nevertheless, use of PTMEG
8
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Application 12/773,059
1 falls within the scope of claim 1. See Specification, page 16:28 describing
2 the use of PTMEG (polytetramethylene glycols) as suitable for use in
3 Appellant's invention.
4 Reason ( 5) the Lawrey polyurethane/urea must be produced in the
5 presence of a solvent whereas no solvent is required to produce Appellant's
6 claimed composition. Claim 1 is not directed to a method for making a
7 molding composition. The process portion of product-by-process claim 1
8 does not preclude the use of a solvent.
9 Reason (6): Lawrey does not require the use of a catalyst to promote
10 the urethane formation whereas the composition of claim 1 must be
11 produced with a catalyst that promotes urethane formation. While it is true
12 that Lawrey states that "the reaction may ... take place without the use of a
13 catalyst" (col. 8:7-8), Lawrey describes the use of catalysts (col. 8:4-14).
14 Lawrey Example 1 describes the use of "ZNO" (zinc octoate). Col. 9:37 and
15 9:48.
16 Reason (7): there is said to be a difference in the physical state of the
17 respective products, i.e., Lawrey' s polyurethane/urea is a solution whereas
18 Appellant's polyurethane/ureas are solids (e.g., powders, minibeads). No
19 physical state is recited in claim 1. Moreover, claim 1 is directed to a
20 molding composition, not a molded article.
21 4. Decision-Rejection 1
22 Rejection 1 is affirmed.
9
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Application 12/773,059
1 B. Rejection 2
2 1. Claim 1
3 Claim 1, reproduced from the Claims Appendix (Br., page 13) reads
4 (references to Humphrey's disclosure added):
5 A molding composition comprising an aliphatic
6 thermoplastic urethane/urea comprising the reaction product of
7 (i) a polyol component comprising at least one
8 polyether polyol having a molecular weight of from 1000
9 to 10,000 Da [Daltons] [col. 4:1-molecular weight
10 4000] and an unsaturation level less than or equal to 0.04
11 meq/g [col. 3:60-64, less than 0.04 meq/g, preferably
12 less than 0.02 meq/g],
13 (ii) an aliphatic or cycloaliphatic diamine having a
14 molecular weight of up to 4000 [col. 4:9-11: aliphatic
15 primary or secondary diamines, all of which are well
16 known in the art"; no molecular weight is recited],
17 (iii) an isocyanate component comprising at least one
18 aliphatic organic diisocyanate [col. 4:22-25, e.g.,
19 hexamethylene diisocyanate (HDI)] ,
20 (iv) optionally, a chain extender which is not within the
21 scope of (ii) [col. 4: 12-20, e.g., ethylene glycol],
22 (v) optionally, a UV stabilizing agent [col. 2: 17-18],
23 (vi) optionally, an antioxidant [col. 2: 18],
24 (vii) optionally, a pigment [col. 2: 18], and
10
1
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Application 12/773,059
(viii) a catalyst which promotes urethane formation
[col. 5:25-57], and
(ix) optionally, a mold release agent [col. 7:34-36].
4 2. Difference
5 The Examiner found that while Humphrey describes the use of
6 aliphatic diamines generally, Humphrey does not describe the
7 molecular weight of any amine. Office Action, page 6, ii 17.
8 To overcome the difference, the Examiner turned to Scott and
9 PolyClear. Office Action, page 6, ii 18.
10 3. Prima Facie Case
11 The Examiner found that Scott describes an aliphatic diamine
12 chain extender (PolyClear 136) said to be useful for providing UV and
13 color stability (unnumbered page 9), clear color (unnumbered page
14 10), and light stability (unnumbered page 12).
15 Humphrey (published in 1998) states that "[ c ]hain extending
16 agents ... include [inter alia] ... aliphatic ... diamines, all of which
17 are well known in the art." Col. 4:7-11.
18 Subsequent to Humphrey, Scott (published in 2006) reveals a
19 new diamine chain extender, PolyClear 136, useful for useful for
20 making polyureas and polyurethanes. Use of PolyClear 136 in
21 combination with a polyol and a diisocyanate will result in a
22 poly(ureaurethane) having urea groups being formed by reaction of
23 the isocyanate with PolyClear 136 and urethane groups being formed
24 by reaction of the isocyanate with the polyol.
11
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Application 12/773,059
1 According to PolyClear, the molecular weight of PolyClear 136
2 is 272. Appellant does not contest the Examiner's finding with
3 respect to the molecular weight of PolyClear 136.
4 The Examiner held that one skilled in the art would have found
5 it obvious to use PolyClear 136 as a chain extender in the Humphrey
6 environment.
7 The Examiner reasoned, correctly, that the use of PolyClear 136
8 in 2007 (Appellant's earliest possible filing date) in the Humphrey
9 environment amounts to a use of a known diamine (described in 2006)
10 for its intended purpose (as described by Humphrey in 1998) to
11 achieve an entirely predictable result.
12 4. Appellant's Argument
13 Appellant does not argue the separate patentabilty of claims 2, 3, 8, 9,
14 11, or 16-19 apart from claim 1. Accordingly, we decide the appeal as to
15 claims 2, 3, 8, 9, 11, and 16-19 on the basis of claim 1. 3 7 C.F .R.
16 § 41.37(c)(l)(iv).
1 7 According to Appellant, Humphrey does not describe a molding
18 composition having both urethane and urea groups. Br., page 4, fifth
19 paragraph. However, Appellant cannot square its argument with the
20 proposition that when a polyol, diamine, and diisocyanate are reacted, both
21 urea and urethane groups will be formed. Thus, the use of a combination of
22 a polyol and a diamine as explicitly taught be Humphrey will result in
23 polymers having both urea and urethane groups. Answer, page 6, third
24 paragraph.
12
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Application 12/773,059
1 Further according to Appellant, the significance of the alleged
2 difference of Humphrey's composition not having urea groups is said to be
3 supported by Examples in the Specification. Those Examples are said to
4 show that the physical properties were significantly better that those of
5 polyurethanes having just urethane groups. Br., pages 4-5. The polymers
6 described in the Examples are said to have good weatherability and low
7 temperature resistance. Br., page 5, fourth full paragraph, and page 6,
8 second full paragraph. Claim 1, however, does not require any degree of
9 weatherability or low temperature resistance. Cf Illumina Cambridge Ltd.
10 v. Intelligent Bio-Systems, Inc., 2016 WL 363498 *5, No. 2015-1243 (Fed.
11 Cir. Jan. 29, 2016). Nor has Appellant explained why one skilled in the art
12 would not have been inclined to use a new commercially available diamine
13 in the Humphrey environment/or Humphrey's purpose. Id. Appellant's
14 argument overlooks the counsel of KSR Int'l Co. v. Teleflex Inc., 550 U.S.
15 398, 419 (2007), that "[ w ]hat matters is the objective reach of the claim. If
16 the claim extends to what is obvious, it is invalid under § 103." See also In
17 re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("Although the motivation to
18 combine here differs from that of the applicant, the motivation in the prior
19 art to combine the references does not have to be identical to that of the
20 applicant to establish obviousness.").
21 Appellant argues that Scott describes the use of PolyClear 13 6 in an
22 "amine system" and that Humphrey does not describe an "amine system."
23 Br., page 5, fifth and sixth full paragraphs. The Examiner found, correctly,
24 "that the plain meaning of the word 'system' when modifying the term
13
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1 'amine' encompasses polymerizable compositions comprising diamine chain
2 extenders as described by Humphrey." Answer, page 7. We agree and note
3 that in making the argument Appellant basically ignores Humphrey's
4 description of the use of diamine chain extenders.
5 Appellant still further argues that one would have had no reason to
6 "select" PolyClear 136 described by Scott for use as the diamine described
7 by Humphrey. Br., page 5, seventh paragraph and page 6, first paragraph.
8 Why not? One skilled in the art in 2006 upon commercialization of
9 PolyClear 136 would have had every reason to use the new commercial
10 product in the manner suggested by Humphrey in 1998. Humphrey's
11 "known in the art" statement does not restrict the value of Humphrey to
12 diamines known only prior to publication of Humphrey in 1998. Rather, the
13 prior art as a whole must be evaluated as of a date prior to Appellant's
14 invention-not the 1998 publication date of Humphrey. Use by Appellant in
15 2007 of a new commercial product developed as of 2006 in a manner
16 suggested generally by a 1998 publication is nothing more than a use of a
1 7 new product for a known 1996 purpose.
18 5. Decision-Rejection 2
19 Rejection 2 is affirmed.
14
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1 C. Analysis-Rejection 3
2 1. Claim 4
3 Rejection 3 involves claim 4 (depending from claim 1) and claims 6,
4 7, 14, and 15 (depending from claim 4).
5 Claim 4 reads (limitations in dispute italicized and optional elements
6 omitted):
7
8
A molding composition comprising a compatible blend
of
9 a) from 5 to 95 wt.% the composition of Claim 1,
10 b) from 5 to 95 wt.% of a modifier comprising a
11 polyolefin-based modifier,
12 c) [to] g) [omitted],
13 provided that no external compatibilizing agent is added
14 to the blend.
15 2. Examiner's Rationale
16 The Examiner found that Humphrey does not describe the use of a
17 polyolefin-based modifier in combination with Humphrey's poly(urea-
18 urethane) polymer. Office Action, page 10, ,-i 30.
19 To overcome the difference, the Examiner turned to Masubuchi. Id. at
20 ,-i 31.
21 The Examiner found that Masubuchi describes a combination of at
22 least:
15
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1 (1) a thermoplastic polyurethane (iJiJ 0012 and 62 ("[g]enerally,
2 the urethane-based thermoplastic elastomer (TPU) ... is prepared
3 from a polyol, a diisocyanate and a chain extender."));
4 (2) an olefin-containing block copolymer (iJiJ 82 and 93
5 ("styrene-ethylene/butane-styrene rubber (SEBS)); and
6 (3) an elastomer (iJiJ 0014 and 0047 (the thermoplastic
7 elastomer may be an "olefin-based elastomer" C-1 )).
8 Office Action, pages 10-11, iJ 31.
9 Masubuchi teaches that one object of its invention is "excellent ...
10 softness." iJ 0009.
11 Humphrey teaches that "[b ]ecause of their softness, thermoplastic
12 elastomers are frequently used in the construction of automotive interior trim
13 components." Col. 1:29-31.
14 Based on the prior art, the Examiner held that it would have been
15 obvious to use an elastomer in combination with the poly(ureaurethane) of
16 Humphrey to obtain a product with predictable properties, i.e., including
17 softness. Office Action, iJ 33 bridging pages 11-12 and page 12, iJ 34.
18 3. Appellant's Arguments
19 Appellant presents two principal arguments in support of its appeal.
20 First, Appellant maintains that the Masubuchi polyurethane does not
21 describe the use of polyether polyols having low unsaturation. Br., page 7.
22 Appellant's divide and conquer argument addressing each of Humphrey and
23 Masubuchi individually is not persuasive. In re Keller, 642 F.2d 413, 426
24 ( CCP A 19 81) ( ( 1) one cannot show nonobviousness by attacking individual
16
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1 references and (2) the obviousness test is what the combined teachings of the
2 references would have suggested to those of ordinary skill in the art). The
3 Examiner does not rely on Masubuchi for a teaching of the claimed
4 poly(ureaurethane) element of claim 4. See also Answer, page 10, first full
5 paragraph, where the Examiner explains why Humphrey is relied upon for
6 its disclosure of aliphatic diisocyanates and Masubuchi is relied upon for its
7 disclosure of elastomers.
8 Second, Appellant argues that Masubushi does not teach that its
9 Component (B) can be eliminated and because Component (B) functions as
10 a compatibilizer the Examiner has failed to meet the "no external
11 compatibilizing agent" limitation of claim 4. Br., page 8. We adopt as our
12 own the Examiner's analysis of Appellant's second argument:
13 Claim 4 requires the presence of a "polyolefin-based
14 modifier" (component (b) of claim 4 ). Claim 4 additionally
15 recites that "no external compatibilizing agent is added to the
16 blend" (last line of claim 4 ). The term "external" is not defined
1 7 in the present specification, and therefore the term has been
18 interpreted according to the word's ordinary meaning, i.e. that it
19 refers to an agent that is "outside" or "not within the limits of'
20 the recited components of the composition. Accordingly, claim
21 1 [ sic--4] is interpreted to only exclude compatibilizing agents
22 which are ingredients other than the components (a)-(g) that are
23 recited in the claim. In other words, a compatibilizing agent
24 that falls within the scope of the recited components (a)-(g) is
25 not an external compatibilizing agent and thus is not excluded
26 by the present claims.
27 Masubuchi discloses a composition that comprises (as
28 component (B) therein) a polar group-containing thermoplastic
17
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1 elastomer such as one based on a styrene-ethylene/butene-
2 styrene copolymer (which is a polyolefin-based modifier; see
3 paragraphs 82 and 93), which corresponds to the presently
4 recited component (b ). As noted by Appellant, Masubuchi
5 describes the component (B) as a "compatibility agent"
6 (paragraph 7 6). Present claim 4 as properly construed excludes
7 external compatibilizers (those not according to components
8 (a)-(g) recited in claim 4), but present claim 4 does not exclude
9 compatibilizers that are according to one of the recited
10 components (a)-(g). Because the "compatibility agent"
11 described by Masubuchi (component (B) therein) falls within
12 the scope of the presently recited component (b), it is one of the
13 components recited in present claim 4. Therefore, Masubuchi's
14 component (B) is not an external compatibilizing agent as
15 presently recited in claim 4, and thus it is not excluded by the
16 present claims.
17 Because component (b) (the polyolefin-based modifier)
18 is a required component of the presently recited compositions,
19 the polyolefin-based modifiers of Masubuchi are not external
20 components of the blends. Therefore, claim 4 does not exclude
21 such polyolefin-based modifiers, whether or not they are
22 described in the prior art as compatibilizers.
23
24 Answer, page 8, last paragraph through page 10:2.
25 4. Decision-Rejection 3
26 Rejection 3 is affirmed.
27 D. Analysis-Rejection 4
28 1. Claim 5
29 Rejection 4 involves claim 5.
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1 Claim 5 reads:
2 The composition of Claim 4 in which the modifier b) has
3 a shear viscosity of approximately 900 at a shear rate of 250
4 sec-1 which drops to approximately 150 at 2100 sec-1.
5 The Examiner found that Masubuchi differs from the subject
6 matter of claim 5 in that Masubuchi does not describe the shear
7 viscosity of its olefin polymers. Office Action, page 14, ,-i 40.
8 To overcome any difference, the Examiner turned to Mavridis.
9 Id. ,-i 41.
10 The Examiner observed as follows:
11 It is noted that ... [claim 5 does] not recite the conditions
12 under which the shear viscosity is measured. In particular, it is
13 noted that no temperature is recited. It is known in the art that
14 the shear viscosity of polymers depends strongly on the
15 temperature at which the viscosity is measured (for instance,
16 see Mavridis, abstract[ 4J and the Background section on page
17 l 779[5J). For this reason . . . [claim 5] is construed as
18 encompassing the recited shear viscosities as measured at any
19 temperature. In light of the fact that shear viscosity of
4 "The rheology of polymer melts depends strongly on temperature."
Mavridis, abstract, first sentence.
5 TEMPERATURE DEPENDENCE OF RHEOLOGY
Background
The temperature dependence of rheology has mainly been discussed
in the literature ... in terms of steady-shear viscosity. . .. [T]he shear stress
CT, the shear rate y, and the viscosity 1J are related through:
CT =17 •y (1)
Mendelson (3) showed how to extract the temperature dependence
from steady shear viscosity data by plotting the shear stress (vertical) vs. the
shear rate (horizontal) data at different temperatures.
19
Appeal2014-004122
Application 12/773,059
1 polymers depends strongly on the temperature at which the
2 viscosity is measured, it is the [E]xaminer's position that the
3 crosslinked olefin-containing block copolymers described by
4 Masubuchi inherently possess the presently recited shear
5 viscosity at some ... temperatures.
6 Office Action, page 14, ,-i 41.
7 Appellant has not challenged the Examiner's finding that
8 claim 5 does not recite the conditions under which shear viscosity
9 is to be determined. 6 Nor does the Specification refer to any specific
10 testing protocol, e.g., an ASTM test.
11 Furthermore, Appellant has not challenged the Examiner's
12 finding that shear viscosity is a function of temperature.
13 Still furthermore, Appellant has not challenged the Examiner's
14 finding that at some temperature the Masubuchi olefins would have
15 the recited shear strength.
16 As a result, Appellant's arguments in support of the appeal of
17 claim 5 become essentially its arguments with respect to claim 4.
18 Answer, page 10, last three lines.
19 2. Decision-Rejection 4
20 Rejection 4 is affirmed.
6 In the event of further prosecution, the Examiner may wish to consider an
indefiniteness rejection under§ 112 given than no protocol is identified in
the application as to how shear viscosity is measured. Cf Teva Pharms.
USA Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (involving
indefiniteness of molecular weight recited in claims).
20
Appeal2014-004122
Application 12/773,059
1 V. Decision
2 Upon consideration of the appeal, and for the reasons given herein, it
3 IS
4 ORDERED that Rejections 1-6 are affirmed.
5 FURTHER ORDERED that no time period for taking any
6 subsequent action in connection with this appeal may be extended under
7 37 C.F.R. § l.136(a)(l)(iv), including any time to respond to our
8 requirement under 3 7 C.F .R. § 1.105.
9 AFFIRMED
10 bar
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