Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardNov 29, 201712542385 (P.T.A.B. Nov. 29, 2017) Copy Citation 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. 12/542,385 08/17/2009 Mark S. Lee 361752005200 5382 25227 7590 12/01/2017 MORRTSON fr FOFRSTFR T T P EXAMINER 1650 TYSONS BOULEVARD JACKSON, MONIQUE R SUITE 400 MCLEAN, VA 22102 ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): EOfficeVA @ mofo.com PatentDocket @ mofo. com pair_mofo @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK S. LEE, HAROLD E. KOEHN, EMILIO COLETTA, and MATTHEW H. BROWN1 Appeal 2016-004176 Application 12/542,385 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to a monoaxially oriented heat- sealable propylene-based film. E.g., Spec. 12; Claim 1. Claim 1 is reproduced below from page 16 (Claims Appendix) of the Appeal Brief (some formatting added; emphasis added to disputed limitation): 1 According to the Appellants, the real party in interest is Toray Plastics (America), Inc. App. Br. 3. Appeal 2016-004176 Application 12/542,385 1. A film comprising: a heat sealable layer comprising an ethylene-propylene impact copolymer and 3—4 wt% of a metallocene-catalyzed propylene-butene elastomer, wherein the film is monoaxially oriented at least 4 times in the machine direction, and neither a top surface nor a bottom surface of the heat sealable layer is covered by another layer. REJECTIONS ON APPEAL 1. Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ikenaga (US 2006/0276607 Al, published Dec. 7, 2006). 2. Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nakata (US 6,348,271 Bl, issued Feb. 19, 2002) in view of Ikenaga or Tanizaki (EP 0716121 Al, published June 12, 1996).2 ANALYSIS The Appellants argue the claims as a group and do not meaningfully distinguish between the two grounds of rejection. We select claim 1 as representative of the rejected claims, and we limit our discussion to claim 1. The remaining claims on appeal will stand or fall with claim 1. After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner’s rejections. The Appellants’ Specification discloses that the addition of 3—15 wt% of a propylene-butene elastomer to a film enhances mechanical and heat-seal 2 Consistent with the nomenclature of the Examiner and the Appellants, we refer to Tanizaki as “EP ’121.” 2 Appeal 2016-004176 Application 12/542,385 properties of the film. E.g., Spec. 118. Ikenaga likewise discloses or suggests that propylene-butene elastomers enhance the mechanical and heat- seal properties of a film. E.g., Ikenaga at Abstract, 138 (discussing, e.g., “flexibility, impact resistance, heat resistance and low-temperature heat- sealability”). Concerning Rejection 1, the Examiner determines that Ikenaga teaches or suggests a film comprising each element of claim 1 except that Ikenaga teaches a concentration range of 5—95 wt% for its metallocene- catalyzed propylene-butene elastomer, instead of the claimed 3^4 wt%. See Final Act. 2—5. However, because Ikenaga’s film may further comprise additives and other components, the Examiner finds that the concentration of Ikenaga’s propylene-butene elastomer may be less than Ikenaga’s expressly disclosed range of 5—95 wt%. Id. Additionally, the Examiner determines that, even though the claimed range of 3^4 wt% does not overlap Ikenaga’s disclosed range of 5—95%, the claimed range would have been prima facie obvious in view of Ikenaga because the two ranges are close enough that one skilled in the art would have expected them to have the same or similar properties. Id. In view of those and other findings, the Examiner concludes that the subject matter of claim 1 would have been obvious in view of Ikenaga. Id. at 2—5. Concerning Rejection 2, the Examiner finds that Nakata teaches or suggests a film composition comprising each element of claim 1 except for the metallocene-catalyzed propylene-butene elastomer at a concentration of 3^4 wt%. Final Act. 6. The Examiner finds that Nakata discloses the use of butene in its composition, and the Examiner concludes that it would have been obvious to incorporate the metallocene-catalyzed propylene-butene elastomer of either Ikenaga or EP ’121 (which includes disclosures similar to 3 Appeal 2016-004176 Application 12/542,385 that of Ikenaga) in Nakata’s composition “to provide low-temperature heat sealing properties to the film as taught by Ikenaga et al or EP ’121, utilizing routine experimentation to determine the optimum content of the elastomer to provide the desired properties for a particular end use.” Id. at 6—7. Similar to Rejection 1, the Examiner also finds (1) that the disclosure of additives in both Ikenaga and EP ’121 indicates that the propylene-butene elastomer may be present in an amount of less than 5 wt%, and (2) that a propylene-butene elastomer concentration of 4 wt%, as claimed, would have been prima facie obvious because “one skilled in the art would have expected a film having a heat-sealable layer with 4wt% of the elastomer to have the same or similar properties as a film having a heat-sealable layer with 5wt% as taught by Ikenaga.” Id. at 5—6. In view of those and other findings, the Examiner concludes that the subject matter of claim 1 would have been obvious in view of Nakata and Ikenaga or EP ’121. Id. at 5—7. In the Answer, with respect to both Rejections, the Examiner further finds that the concentration of the propylene-butene elastomer is a known result-effective variable, and that the Appellants have not shown criticality or unexpected results with regard to the claimed 3^4 wt%. Ans. 9—10. The primary issue before us on appeal is whether the Examiner reversibly erred in concluding that a film comprising the claimed propylene- butene elastomer at a concentration of 3^4 wt% would have been obvious to a person of ordinary skill in the art in view of the cited prior art, which discloses propylene-butene elastomer concentrations of 5—95 wt%. See App. Br. 8—14; Reply Br. 2—10. The Appellants first argue that the disclosures of Ikenaga and EP ’121 that additives may be included in amounts up to 10% does not “suggest[] 4 Appeal 2016-004176 Application 12/542,385 that the weight percent of the propylene-butene elastomer in the disclosed heat sealable layers is less than 5 wt%.” App. Br. 10—12; Reply Br. 3—7. We agree with the Appellants largely for reasons discussed in the Appeal Brief and the Reply Brief. See App. Br. 10-12; Reply Br. 3—7. Ikenaga discloses propylene-butene elastomer concentrations of “95 to 5 wt%, preferably 80 to 5 wt%, and more preferably 60 to 10 wt%” in its “polypropylene composition.” E.g., Ikenaga 1196. Ikenaga further discloses that its “polypropylene compositions” may include “additives,” but Ikenaga does not suggest that the inclusion of additives could result in a polypropylene composition having less than 5 wt% propylene-butene elastomer. See, e.g., id. ]Hf 196, 199. Ikenaga does not disclose any working example having less than 5 wt% propylene-butene elastomer, even when additives are included. See, e.g., Reply Br. 4—5 (providing table of the working examples of the prior art). The same appears to be true of EP ’121. E.g., EP ’121 at 3:25—36 (disclosing “95 to 5 % by weight” of a propylene- butene copolymer); Reply Br. 4—5. On this record, we are not persuaded that either Ikenaga or EP ’121 teaches or suggests an elastomer concentration of less than 5 wt% merely because the films may comprise additives. See Final Act. 2, 5. Even if the inclusion of up to 10% additive could be interpreted as lowering the 5 wt% elastomer floor disclosed by the prior art, the Examiner does not establish that the lower bound of the elastomer concentration would overlap the claimed range of 3^4 wt%. In particular, using the data provided by the Appellants, it appears that the minimum disclosed elastomer concentration would remain greater than 4.5 wt% even under the Examiner’s interpretation. See Reply Br. 4—5 & n.5 (if propylene polymer concentration 5 Appeal 2016-004176 Application 12/542,385 were 95 wt parts, elastomer (PBR) concentration were 5 wt parts, and additive concentration were 10 weight parts, net elastomer concentration for the polypropylene composition (inclusive of additives) would be 5/(5 + 95 + 10) = 4.55 wt%); see also App. Br. 11 (noting that “4.5 wt% is less than the disclosed 5 wt%, but it is still outside of the claimed range of 3^4 wt%”). The Examiner does not persuasively identify any disclosure in Ikenaga or EP ’121 indicating that inclusion of additives may reduce the propylene- butene elastomer concentration to a value or range that overlaps the claimed range. However, any error in that regard is harmless. For reasons set forth below, we agree with the Examiner that a composition falling with the scope of claim 1 (e.g., having an elastomer concentration of 4 wt%) would have been prima facie obvious in view of the prior art’s disclosed elastomer concentration range of 5—95 wt% because the claimed range and the prior art range “are close enough that one skilled in the art would have expected” them “to have the same or similar properties.” See id. at 2; see also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[A \ prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.”). The Appellants do not assert that criticality or unexpected results support a conclusion of nonobviousness in this case. See Reply Br. 7 (arguing that “there is no need” to show criticality or unexpected results in this case). Instead, relying on the Federal Circuit’s nonprecedential decision in In re Patel, 566 F. App’x 1005 (Fed. Cir. 2014), the Appellants argue that “proximity alone” between the upper end of the claimed range (4 wt%) and 6 Appeal 2016-004176 Application 12/542,385 the lower end of the prior art range (5 wt%) is insufficient to establish a prima facie case of obviousness. See App. Br. 12—14. That argument is not persuasive because the Examiner’s rejection in this case is not based on proximity to the claimed range alone. As discussed in detail below, the rejection is based on the proximity of the ranges and an expectation that a film having 4 wt% elastomer, falling within the scope of the claimed range, would have the same or essentially the same properties as a film having 5 wt% elastomer, falling within the scope of the prior art range. As the Examiner explains, precedential CCPA and Federal Circuit decisions establish that claimed numerical values or ranges are prima facie obvious over similar, but nonoverlapping, values and ranges disclosed in the prior art when a person of ordinary skill in the art would have expected the difference from the claimed range to be so minor as to be non-critical. See Ans. 10-11. For example, in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003), the Federal Circuit interpreted Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) to support the conclusion that “a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” In In re Woodruff 919 F.2d 1575, 1578 (Fed. Cir. 1990), the Federal Circuit explained that “[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . [I]n such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” (citations omitted; emphasis in original). In 7 Appeal 2016-004176 Application 12/542,385 Haynes International, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993), the Federal Circuit cited both Woodruff and Titanium Metals in support of the proposition that “when the difference between the claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in range or value is minor.” Patel, relied upon by the Appellants, states that “[wjhere differences clearly exist and there is no evidence that they are either not meaningful or one of skill in the art would know to discard the limits set by the prior art, proximity alone is not enough to establish a prima facie case of obviousness.” 566 F. App’x at 1010 (emphasis added). Here, although we agree with the Appellants that “differences clearly exist” between the numerical values (i.e., 4 wt% vs. 5 wt%), see App. Br. 13 (referencing Patel, 566 F. App’x at 1009-10), the Examiner finds that a person of ordinary skill in the art would have understood that the difference between 4 wt% (as claimed) and 5 wt% (as taught by both Ikenaga and EP ’121) is not meaningful, see Final Act. 5—6 (“[0]ne skilled in the art would have expected a film having a heat-sealable layer with 4wt% of the elastomer to have the same or similar properties as a film having a heat- sealable layer with 5wt% as taught by Ikenaga.”); cf also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification.”). The evidence of record supports that finding. Ikenaga and EP ’121 both teach broad ranges for the concentration of the propylene- butene elastomer. E.g., Ikenaga 1196; EP ’121 at 3:28. Although the Appellants argue that certain portions of Ikenaga indicate a preference for 8 Appeal 2016-004176 Application 12/542,385 higher concentrations of the elastomer, e.g., App. Br. 13 (citing Ikenaga 1421), the cited portions state only that the composition “can exhibit” superior properties “when it contains these elastomers in higher contents,” see Ikenaga 1421. Ikenaga does not state that the composition “does exhibit” or necessarily “will exhibit” superior properties at higher elastomer concentrations. See id. The Appellants do not identify any similar statements in EP ’121. Ikenaga repeatedly discloses broad ranges down to 5 wt%. E.g., id. 146,1196, claim 3. Following a disclosure of “95 to 5 wt %” of the propylene-butene elastomer, Ikenaga maintains the lower end of the range at 5 wt% even when disclosing a somewhat narrower “prefer[red]” range of “80 to 5 wt %.” Id. 1196. Thus, Ikenaga teaches or suggests that a wide range of preferred elastomer concentrations are suitable for its compositions, including elastomer concentrations of 5 wt%. See id.', cf. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular [composition] less obvious.”). EP ’121 likewise expressly and repeatedly discloses concentrations down to 5 wt%. See, e.g., EP ’121 at 3:28 (5—95 wt%), 48:31—43 (claim 1). Even assuming that Ikenaga and EP ’121 may prefer higher concentrations of elastomer in some of their embodiments, that does not negate their disclosures that a wide range of elastomer concentrations are suitable. See Merck, 874 F.2d at 807 (“[I]n a section 103 inquiry, the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.” (internal quotation and citation omitted)). 9 Appeal 2016-004176 Application 12/542,385 The Appellants argue that, because the working examples of Ikenaga and EP ’121 include more than 5 wt% propylene-butene elastomer, “one skilled in the art would be directed by Ikenaga and EP ’ 121 to use a higher amount of propylene-butene elastomer than 5 wt%.” App. Br. 14. “As such,” according to the Appellants, “a person of ordinary skill in the art would not expect a film having a heat sealable layer with 4 wt% the elastomer to have the same properties as a film having a heat sealable layer with 5 wt% the elastomer.” Id. That argument is not persuasive. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure of specific working examples.”). The mere fact that the working examples of the prior art include more than 5 wt% elastomer provides no evidence or persuasive basis to believe that 4 wt% elastomer would yield properties meaningfully different from 5 wt% elastomer. On the contrary, we determine that a preponderance of the evidence of record supports the Examiner’s finding that “one skilled in the art would have expected a film having a heat-sealable layer with 4 wt% of the elastomer to have the same or similar properties as a film having a heat-sealable layer with 5 wt% as taught by Ikenaga.” Final Act. 5—6. In the Reply Brief, the Appellants provide a table showing various compositions of the prior art. See Reply Br. 4—5. Although the table shows compositions in which the propylene-butene elastomer concentration ranges from 8.96 wt% to nearly 75 wt%, the Appellants do not persuasively identify a meaningful difference in properties among those compositions attributable to a minor difference in elastomer concentration. To give one example, the Appellants’ table shows that the compositions of Ikenaga’s Table Id have 10 Appeal 2016-004176 Application 12/542,385 elastomer concentrations ranging from 8.96 wt% (Comparative Example 2d) to 21.91 wt% (Example Id). See Reply Br. 5; Ikenaga 1 679 & Table Id. Despite the differences in elastomer concentration, all four examples of Table Id show similar values for the properties of melt flow rate, tensile elongation, and flexural modulus. See Ikenaga 1 679 & Table Id. Comparative Examples Id and 2d also show similar results for flow marks and gloss, notwithstanding the fact that, according to the Appellants’ table, Comparative Example Id has an elastomer concentration of 19.92 wt% while Comparative Example 2d has an elastomer concentration of 8.96 wt%. See Reply Br. 5—6; Ikenaga 1 679 & Table Id. Likewise, Examples Id and 2d show similar results for flow marks and gloss, notwithstanding a 3% difference in elastomer concentration (19% vs 22%). See Reply Br. 5—6; Ikenaga 1 679 & Table Id. A property in Table Id of potentially noteworthy difference is Izod impact strength, but even then, according to the Appellants’ table, the Examples having Izod impact strength values of 55, 58, and 58 have elastomer concentrations of 18.92, 21.91, and 19.92 wt%, respectively, further indicating that elastomer concentration differences on the order of 1— 3 wt% yield similar properties. The example having an Izod impact strength result of 40 has an elastomer concentration of 8.96 wt%, according to the Appellants’ table. See Reply Br. 5; Ikenaga 1 679 & Table Id. The Appellants make no argument concerning Izod impact strength. On this record, consistent with the Examiner’s analysis, Ikenaga indicates that going from ~9 wt% (Comparative Example 2d) elastomer to ~22 wt% elastomer (Example 2d) has little impact on a variety of properties of the compositions, and the Appellants provide no meaningful argument or 11 Appeal 2016-004176 Application 12/542,385 evidence that smaller differences in concentration (e.g., 4 wt%, as claimed, vs. 5 wt%, of the prior art) would yield any meaningful difference in any property. Thus, we are not persuaded that the prior art’s inclusion of examples using more than 5 wt% elastomer supports the Appellants’ contention that “a person of ordinary skill in the art would not expect a film having a heat sealable layer with 4 wt% the elastomer to have the same properties as a film having a heat sealable layer with 5 wt% the elastomer.” See App. Br. 14. Indeed, that contention appears to be inconsistent with the Specification itself, which suggests that elastomer concentrations from 3— 15 wt% provide desirable properties. See Spec. 118. Because the difference between 4 wt% and 5 wt% is minor, and because the record supports the Examiner’s determination that a person of ordinary skill in the art would have expected compositions of 4 wt% and 5 wt% elastomer to have the same or similar properties, we conclude that the Examiner has established a prima facie case of obviousness of the subject matter of claim 1,3 Because the Appellants do not provide evidence of criticality or unexpected results attributable to the claimed elastomer concentration range, we affirm the Examiner’s rejection. 3 Our conclusion applies both to Rejection 1 and to Rejection 2 because Ikenaga and EP ’121 each disclose elastomer concentrations down to 5 wt%. 12 Appeal 2016-004176 Application 12/542,385 CONCLUSION We AFFIRM the Examiner’s rejection of claims 1—5 under 35 U.S.C. § 103(a) as unpatentable over Ikenaga. We AFFIRM the Examiner’s rejection of claims 1—5 under 35 U.S.C. § 103(a) as unpatentable over Nakata in view of Ikenaga or EP ’121. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 13 Copy with citationCopy as parenthetical citation