10868160 (B.P.A.I. Mar. 10, 2010)

Ex Parte Kerns et al

Board of Patent Appeals and InterferencesMar 10, 2010

10868160 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MICHAEL LESTER KERNS and MICHAEL JOSEPH RACHITA ____________________ Appeal 2009-004247 Application 10/868,160 Technology Center 1700 ____________________ Decided: March 10, 2010 ____________________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1, 2, and 4-15 under 35 U.S.C. § 103(a) as unpatentable over Munn et al. (US 6,221,447 B1, issued Apr. 24, 2001) in view of Apecetche et al. (US 6,001,478, issued Dec. 14, Appeal 2009-004247 Application 10/868,160 2 1999) (Final Office Action of Aug. 30, 2007; Answer of Aug. 4, 2008 at 3). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. II. DISPOSITIVE ISSUE Have Appellants overcome the rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of unexpected results? III. FINDINGS OF FACT Appellants’ invention relates to a pacifier, a portion of which is formed using a synthetic polyisoprene rubber. Claim 1 is illustrative: 1. A pacifier comprised of a mouth portion having a projecting head and a base portion wherein the mouth portion is comprised of polyisoprene rubber, wherein the polyisoprene rubber is made with a neodymium catalyst system which is comprised of (1) an organoaluminum compound, (2) an organoneodymium compound, and (3) at least one compound that contains at least one labile halide ion. The Examiner finds, and Appellants do not dispute, that Munn describes forming a number of rubber products, including pacifiers, from synthetic rubbers such as synthetic polyisoprene (Br. 4; Ans. 4; see also Munn, col. 2, ll. 58-67). According to Munn, such synthetic rubbers do not contain the impurities found in natural latex rubbers that cause allergies, i.e., synthetic rubbers are hypoallergenic (Br. 4; Munn, col. 6, ll. 6-20). Munn does not discuss how to prepare the Appeal 2009-004247 Application 10/868,160 3 synthetic rubbers (Munn, generally). Nor, as pointed out by Appellants, does Munn suggest that any particular synthetic polyisoprene has advantages over any other synthetic rubber (Reply Br. 4). The Examiner finds, and Appellants do not dispute, that Apecetche describes preparing synthetic polyisoprene rubber with a neodymium catalyst system meeting the requirements of claim 1 (Br. 4-6; Reply Br, generally). It was also known in the art to prepare synthetic polyisoprene using titanium catalysts (Ti-PI) or alkyl-lithium initiators (Li-PI) (Spec. 2:18-20; Spec. 3:15-17). The Kerns Affidavit states that “[o]ur research showed that only neodymium polyisoprene rubber is free of proteins, contains a low level of volatile and extractable compounds, and offers excellent physical properties for use in making baby bottle nipples.” (Aff. ¶ (8).) According to the Affidavit, the titanium and lithium based polyisoprenes do not have this combination of properties (Aff. ¶¶ (6) and (7)). The Affidavit relies upon Table 7 reproduced from page 69 of the Specification and a table reproduced on page 5 of the Affidavit for evidentiary support (Aff. ¶ (9), ¶ (13)). These tables report various properties for Ti-PI, Li-PI, and Nd-PI (id.). The Affidavit states that “[t]he results of our research endeavors unexpectedly have shown that neodymium polyisoprene rubber exhibits an excellent overall combination of properties for utilization in manufacturing baby bottle nipples.” (Aff. ¶ (14).) Appeal 2009-004247 Application 10/868,160 4 IV. PRINCIPLES OF LAW “During patent examination the PTO bears the initial burden of presenting a prima facie case of unpatentability. . . . [W]hen a prima facie case is made, the burden shifts to the applicant to come forward with evidence and/or argument supporting patentability. Patentability vel non is then determined on the entirety of the record, by a preponderance of evidence and weight of argument.” In re Glaug, 283, F.3d 1335, 1338 (Fed. Cir. 2002) (citations omitted); see also In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.” (emphasis omitted)). The ultimate determination of patentability must be made on the entire record. In re Oetiker, 977 F.3d 1443, 1445 (Fed. Cir. 1992). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). On the other hand, the fact that the elements work together “in an unexpected and fruitful manner” can support a conclusion of non-obviousness. Id. A showing of “unexpected results” is a showing that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found Appeal 2009-004247 Application 10/868,160 5 surprising or unexpected. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). An examination for unexpected results is a factual inquiry. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). Unexpected results must be established through factual evidence. Soni, 54 F.3d at 750. “Mere improvement in properties does not always suffice to show unexpected results.” Soni, 54 F.3d at 751; see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y definition, any superior property must be unexpected to be considered as evidence of non-obviousness.”). In order to properly evaluate whether a superior property is unexpected, one must consider what properties would have been expected. Pfizer, 480 F.3d at 1371. The showing fails where the record is devoid of evidence of what the skilled artisan would have expected, particularly where the evidence indicates that the ordinary artisan would have expected that the known compounds would vary in properties. Id. V. ANALYSIS There is no genuine question here that the Examiner established a prima facie case of obviousness. Munn suggests using synthetic polyisoprene in pacifiers for its hypo-allergenic properties and one of ordinary skill in the art would have looked to known synthesis methods for preparing the specified synthetic polyisoprene. The prior art as a whole indicates that several methods were known in the art for forming synthetic polyisoprene including the claimed neodymium Appeal 2009-004247 Application 10/868,160 6 catalyst method (Nd-PI) as well as titanium catalyst systems (Ti-PI) and alkyl-lithium initiated systems (Li-PI). Certainly, using any of the known synthesis methods to obtain the known synthetic polyisoprenes would have been obvious to one of ordinary skill in the art for obtaining the properties these polymers were known to possess including hypo-allergenic properties. Therefore, the true issue on appeal is whether Appellants have established that the claimed Nd-PI provides an unexpected combination of properties compared to the other known synthetic polyisoprenes (Ti-PI and Li-PI). Unfortunately, the Appellants and Examiner focus most of their attention on the wrong question, i.e., whether the synthetic polyisoprene provides unexpected results in comparison to natural rubber (Ans. 5-6; Br. 4-6). What Appellants and the Examiner do say about the synthetic polyisoprene comparison is limited. Other than the conclusory statement that the Kerns Affidavit “shows the unexpected superiority of utilizing polyisoprene rubber made with a neodymium catalyst over natural polyisoprene rubber, polyisoprene rubber made with a lithium initiator, and polyisoprene rubber made with a titanium catalyst system,” Appellants do not discuss in their briefs how the differences in properties between the different synthetic polyisoprenes evince unexpected results (Br. 5). Kern avers in the Affidavit that “[t]he results of our research endeavors unexpectedly have shown that the neodymium polyisoprene rubber exhibits an excellent overall combination of Appeal 2009-004247 Application 10/868,160 7 properties for utilization in manufacturing baby bottle nipples.” (Aff. ¶ (14).) But Appellants use of the key word “unexpected” in that sentence does little to prove that the differences shown in the Tables would have been thought to be unexpected by those of ordinary skill in the art. Appellants present no evidence of what properties one of ordinary skill in the art would have expected or any reason why that artisan would have found the data in the Tables unexpected. The Examiner acknowledges that the data shows differences in mechanical properties and percentages of extractables, but only analyzes this evidence for its probative value in showing that the Nd- PI polyisoprene has unexpected hypo-allergenic properties (Ans. 6-7). This ignores Appellants’ statement that it is the combination of results that is said to be unexpected. Weighing all the evidence before us, we determine that the preponderance of the evidence weighs in favor of obviousness. There is some evidence that at least some differences in properties between the synthetic polyisoprenes were expected (Spec. 2:18 to 3:14). Beyond that, the expectations of those of ordinary skill in the art are not clear from the evidence before us. Appellants have not provided evidence that the specific differences in properties detailed in the Kerns Affidavit were, in fact, unexpected by those of ordinary skill in the art. While they might have been unexpected, they might also have been the product of routine experimentation. The evidence simply is insufficient to support Appellants’ position. Appeal 2009-004247 Application 10/868,160 8 VI. CONCLUSION On the record before us, we sustain the rejection maintained by the Examiner.1 VII. DECISION The decision of the Examiner is affirmed. VIII. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2009). AFFIRMED cam The Goodyear Tire & Rubber Company Intellectual Property Law Department - D/823 1144 East Market Street Akron OH 44316-0001 1Only those arguments actually made by Appellants have been considered in this decision. Arguments which Appellants could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).