Ex Parte Kaarto et al

Patent Trial and Appeal Board

Nov 30, 2016

12859499 (P.T.A.B. Nov. 30, 2016)

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.
F5221-00365 8062
EXAMINER
LENIHAN, JEFFREY S
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
12/859,499 08/19/2010
105118 7590 11/30/2016
Duane Morris LLP (Braskem)
IP DEPARTMENT
30 South 17th Street
Philadelphia, PA 19103-4196
John Kaarto
11/30/2016 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 JOHN KAARTO, ALECHIA CROWN,
LI-MIN TAU, and GERT J. CLAASEN
Appeal 2015-003989
Application 12/859,499
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 6, 8 through 13, and 18.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the Real Party in Interest as Braskem America, Inc.
(Appeal Brief filed August 25, 2014 (“App. Br.”), 1.)
2 Final Office Action entered March 25, 2015 (“Final Act.”).
Appeal 2015-003989
Application 12/859,499
APPEALED SUBJECT MATTER
The subject matter on appeal is directed to, inter alia, a polypropylene
impact copolymer composition comprising a matrix phase and a dispersed
phase that comprises a propylene/alpha-olefin copolymer having from 6 to
40 mol percent of units derived from ethylene or C4-C10 alpha olefins.
(Spec. 1,11. 3—10.) Details of the appealed subject matter are recited in
representative claim 1, which is reproduced below from the Claims
Appendix to the Appeal Brief:
1. A polypropylene impact copolymer composition
comprising:
a) from 60 to 90 percent by weight of the impact copolymer
composition of a matrix phase, said matrix phase comprising a
homopolymer polypropylene or random polypropylene
copolymer having from 0.1 to 7 mol percent of units derived
from ethylene or C4-C10 alpha olefins; and
b) from 10 to 40 percent by weight of the impact copolymer
composition of a dispersed phase, said dispersed phase
comprising a propylene/alpha-olefin copolymer having from 6
to 40 mol percent of units derived from ethylene or C4-C10
alpha olefins, wherein the dispersed phase has a comonomer
content which is greater than the comonomer content in the
matrix phase, wherein the impact copolymer is characterized by
having a beta/alpha (p/a) ratio of 0.9 or less,
(MFRJMFR2f2VA - 1
with p/a = (Ft/100) + '
where MFRi is the first reactor (matrix phase only), MFR2 is
the second reactor (overall impact copolymer), and Fc is the
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Application 12/859,499
percent by weight of the dispersed phase in the impact
copolymer composition,
the polypropylene impact copolymer composition further
characterized as having a melt flow rate in the range of from 25
to 65 g/10 min.
(App. Br. 7, Claims Appendix.)
REJECTIONS
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer entered on December 19, 2014
(“Ans.”):
Claims 1—6, 8—11, and 18 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of U.S. Patent 6,197,886 Bl, issued in the name of
Chatterjee et al. on March 6, 2001 (hereinafter referred to as “Chatterjee”)3;
Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Chatterjee in view of U.S. Patent application publication
2006/0173132 Al, published in the name of Mehta et al. on August 3, 2006
(hereinafter referred to as “Mehta”)4; and
3 The statement of this rejection is set forth in the Non-Final Office Action
entered December 18, 2013, and is incorporated by reference into the Final
Office Action entered March 25, 2014, from which the instant appeal was
taken.
4 The statement of this rejection is set forth in the Non-Final Office Action
entered December 18, 2013, and is incorporated by reference into the Final
Office Action entered March 25, 2014, from which the instant appeal was
taken.
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Application 12/859,499
Claims 1,11, and 12 provisionally rejected for non-statutory,
obviousness-type double patenting over claims 1,15, and 16, respectively,
of copending application 12/859,500 filed August 19, 2010.5
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner does not carry the burden of establishing a
prima facie case of obviousness regarding the subject matter recited in
claims 1—6, 8—13, and 18 within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner’s § 103(a) rejections of these claims
for the reasons set forth in the Appeal and Reply Briefs, but affirm the
Examiner’s provisional rejection of claims 1,11, and 12 for non-statutory,
obviousness-type double patenting for the reasons set forth in the December
16, 2011, Office Action and the Answer. We add the discussion below
primarily for emphasis and completeness.
Rejections under 35 U.S.C. $ 103(a)6
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[The] [patent] examiner
5 The statement of this rejection is set forth in the Non-Final Office Action
entered December 16, 2011, and the rejection was maintained in the Final
Office Action entered March 25, 2014, from which the instant appeal was
taken.
6 For the purposes of this appeal, we select claim 1 as representative, which
is the broadest of claims 1—6, 8—13, and 18, and decide the propriety of the
rejections under 35 U.S.C. § 103(a) based on claim 1 alone.
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Application 12/859,499
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”); see also In re Jung, 637
F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that while “the applicant
must identify to the Board what the examiner did wrong, . . . the examiner
retains the burden to show invalidity”).
The Examiner finds that Chatterjee discloses impact copolymers
comprising a propylene homopolymer phase that may contain up to 5% by
weight of a comonomer, such as ethylene (corresponding to the matrix phase
recited in claim 1) and 25% to 60% of an ethylene/propylene copolymer
rubber phase (corresponding to the disperse phase recited in claim 1). (Dec.
18, 2013 Office Act. 3.) The Examiner acknowledges that Chatterjee does
not disclose that the rubber (dispersed) phase has an ethylene content of 6 to
40 mole percent as recited in claim 1, but the Examiner finds that Chatterjee
teaches that reducing the ethylene content of the rubber phase reduces the
tensile strength of the impact copolymers. (Dec. 18, 2013 Office Act. 4.)
The Examiner determines that the ethylene content of the rubber phase is
therefore a known, result-effective variable that can be optimized through
routine experimentation. (Ans. 3.) The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to decrease the ethylene content of the rubber phase of the impact
copolymers disclosed in Chatterjee for applications in which reduced tensile
strength is desired. (Dec. 18, 2013 Office Act. 4; Ans. 3.)
However, we agree with Appellants that the Examiner fails to
establish prima facie obviousness for at least the following reasons.
Chatterjee discloses impact copolymers having a propylene homopolymer
phase combined with a propylene/ethylene copolymer rubber phase that has
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Application 12/859,499
an ethylene content of about 78 to about 95 percent by weight. (Chatterjee
col. 1,11. 28—32.) The Examiner does not question Appellants’
determination that 78 to 95 percent by weight of ethylene in the rubber phase
of the impact copolymers disclosed in Chatterjee corresponds to 82 to 97
mole percent ethylene, which is significantly outside the range of 6 to 40
mole percent recited in claim 1. (Compare Ans. 3—5, with App. Br. 4.)
As the Examiner points out, Chatterjee also discloses that increasing
the ethylene content in the rubber phase of the impact copolymers increases
the modulus of the copolymers, thus recognizing that the ethylene content in
the rubber phase is a result-effective variable that can be optimized. (Dec.
18, 2013 Office Act. 4; Chatterjee col. 4,11. 13-15; col. 8,11. 32-34.)
However, Chatterjee discloses that the ethylene content of the rubber phase
is preferably between about 80 weight percent to about 84 weight percent,
and Figures in Chatterjee illustrate that the properties of the impact
copolymers can be rendered inferior if the ethylene content is reduced below
the disclosed range of about 78 to about 95 weight percent. (Chatterjee col.
I, 11. 53—56; Figs. 1—10.) Thus, Chatterjee teaches that the optimum
ethylene content in the rubber phase lies within the disclosed range of about
78 to about 95 percent by weight (82 to 97 mole percent). (Chatterjee col. 1,
II. 53-56.) In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (“Where, as here,
the prior art disclosure suggests the outer limits of the range of suitable
values, and that the optimum resides within that range, and where there are
indications elsewhere that in fact the optimum should be sought within that
range, the determination of optimum values outside that range may not be
obvious.”) On this record, the Examiner does not identify any disclosure in
Chatterjee, which provides any apparent reason or suggestion to decrease the
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Application 12/859,499
amount of ethylene in the rubber (dispersed) phase of the impact copolymers
significantly below the disclosed range of about 78 to about 95 weight
percent (82 to 97 mole percent) to arrive at 6 to 40 mole percent, as recited
in claim 1.
Under these circumstances, we find that the teaching in Chatterjee
relied upon by the Examiner would not have suggested a polypropylene
impact copolymer composition comprising a dispersed (rubber) phase
comprising a propylene/alpha-olefm copolymer having 6 to 40 mol percent
of units derived from ethylene or C4-C10 alpha olefins as recited in claim 1.
Accordingly, we are constrained to reverse the Examiner’s rejections of
claims 1—6, 8—13, and 18 under 35 U.S.C. § 103(a).
Provisional Rejection of Claims Ell, and 12 for Non-statutory,
Obviousness-type Double Patenting
The Examiner determines that claims 1,11, and 12 are not patentably
distinct from claims 1,15, and 16, respectively, of copending application
number 12/859,500 because the claims of the copending application recite a
fabricated article comprising a polypropylene impact copolymer
composition that is substantially the same as the composition recited in the
instant claims. (Dec. 16, 2011 Office Act. 3.)
Appellants argue that according to MPEP § 804, because the instant
and reference applications were filed on the same day, and because the
composition of the present application is the “base” invention, while the
article of the reference application is the improvement, “a Terminal
Disclaimer is not applicable in this case, and should be held in abeyance at
this time.” (App. Br. 6.)
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Application 12/859,499
However, in instances of provisional nonstatutory double patenting
rejections in which both applications were filed on the same day, the current
version of MPEP § 804 indicates that:
The provisional nonstatutory double patenting rejection made in
each of the applications should be maintained until applicant
overcomes the rejections by either filing a reply showing that the
claims subject to the provisional nonstatutory double patenting
rejections are patentably distinct or filing a terminal disclaimer
in each of the pending applications.
(Manual of Patent Examining Procedure (MPEP) § 804(I)(B)(1) (9th ed. July
2015).)
Because Appellants do not identify reversible error in the Examiner’s
determination that claims 1,11, and 12 are not patentably distinct from
claims 1,15, and 16, respectively, of copending Application 12/859,500, we
summarily affirm the provisional, non-statutory, obviousness-type double
patenting rejection of claims 1,11, and 12 maintained by the Examiner.
ORDER
In view of the reasons set forth above, the Examiner’s § 103(a)
rejections of claims 1—6, 8—13, and 18 are reversed, but the Examiner’s
provisional rejection of claims 1,11, and 12 for non-statutory, obviousness-
type double patenting 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)(l)(iv).
AFFIRMED-IN-PART
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