Ex Parte Li et al

Board of Patent Appeals and Interferences

Mar 22, 2011

12028535 (B.P.A.I. Mar. 22, 2011)

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.
12/028,535 02/08/2008 Fengkui Li COS-1122 (4176-03300) 6925
7590 03/23/2011
David J. Alexander
Fina Technology, Inc.
P.O. Box 674412
Houston, TX 77267-4412
EXAMINER
LENIHAN, JEFFREY S
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
03/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FENGKUI LI and LUYI SUN
____________

Appeal 2010-011771
Application 12/028,535
Technology Center 1700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1

This appeal under 35 U.S.C. § 134 involves claims 1-6, 10-16, and
19-23, the only claims pending in this application (App. Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 12/028,535

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STATEMENT OF THE CASE
The claims are directed to a film. Claim 1 is representative and is
reproduced in “Appendix A” of Appellants’ Brief (App. Br. 6).
Claims 1-6, 10-16, and 19-21 stand rejected under the written
description provision of 35 U.S.C. § 112, first paragraph.
Claims 1, 10-16, 19, and 20 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Genske.2
Claims 1-6, 10-16, and 19-23 stand rejected under 35 U.S.C § 103(a)
as unpatentable over the combination of McLeod3 and Tse.4
We affirm.

Written Description:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s conclusion that Appellants’ Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
We adopt the Examiner’s factual findings as our own. In this regard,
the Examiner finds that Appellants’ Specification fails to provide written
descriptive support for the amendment to claims 1 and 21, which inserts the
limitation “in the absence of a nucleator” (Ans. 3). In support of the
Examiner’s finding, we recognize that Appellants’ Specification discloses
that “the polypropylene may also contain additives to impart desired
physical properties, such as printability, increased gloss or a reduced

2 Genske, US 5,073,599, issued December 17, 1991.
3 McLeod et al., US 2007/0235896 A1, published October 11, 2007.
4 Tse et al., US 2006/0189744 A1, published August 24, 2006.
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blocking tendency. Examples of additives include without limitation . . . .”
(Spec. 8: § [0025]; Cf. App. Br. 3) (emphasis added).
Paragraph [0025] of Appellants’ Specification does not refer to the
term nucleators. Further, as the Examiner recognizes, Appellants concede
that their “specification does not make any reference to nucleators” (Ans. 7;
Cf. App. Br. 3). Taken together, it is unclear whether the phrase “without
limitation,” as it appears in paragraph [0025] of Appellants’ Specification,
allows for the inclusion or exclusion of a nucleator as a polypropylene
additive.
Accordingly, we are not persuaded by Appellants’ contention that the
“omission [of a reference to a nucleator as an additive] inherently provides
. . . support for the recitation that the film is prepared in the absence of a
nucleator” (App. Br. 3 (emphasis added)). In contrast, a nucleator may
simply be one of many additives falling within the scope of the “without
limitations” phrase that may be added to the polypropylene composition.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s conclusion that Appellants’ Specification fails to provide written
descriptive support for the claimed invention. The rejection of claim 1 under
the written description provision of 35 U.S.C. § 112, first paragraph is
affirmed. Because they are not separately argued claims 2-6, 10-16, and 19-
21 fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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Obviousness:

Genske:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
ANALYSIS
We adopt the Examiner’s factual findings as our own.
Notwithstanding Appellants’ contention to the contrary (App. Br. 4),
we agree with the Examiner’s finding that Genske’s use of the phrase “about
10-65%” suggests “values that are slightly less than 10% and therefore
overlaps . . . [Appellants’] claimed limitation [of] less than 10 wt %” (Ans.
3-4).
We are not persuaded by Appellants’ contention that, by suggesting
the use of conventional additives and fillers, Genske suggests the use of a
nucleator (App. Br. 4). Instead, we agree with the Examiner’s finding that
“Genske does not teach the addition of nucleators to the prior art
composition” (Ans. 3). In sum, Appellants failed to present persuasive
evidence or argument to support a finding that Genske’s use of the phrase
“conventional additives and fillers” suggests that a nucleator must be present
in Genske’s composition. Arguments not made are waived. See 37 C.F.R. §
41.37(c)(1)(vii).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C § 103(a) as
unpatentable over Genske is affirmed. Because they are not separately
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argued claims 10-16, 19, and 20 fall together with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).

The combination of McLeod and Tse:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
ANALYSIS
We adopt the Examiner’s factual findings as our own.
We recognize Appellants’ contention that McLeod suggests the
inclusion of additives (App. Br. 4). However, as the Examiner points out,
McLeod does not suggest that a nucleator is a type of additive contemplated
to be included in the composition (see Ans. 5).
Recognizing that McLeod fails to suggest a composition comprising
polyisobutylene, the Examiner relies on Tse to teach “that it was known . . .
in the art to add plasticizers such as polyisobutylene . . . to polypropylene
compositions . . . to improve their impact strength” (Ans. 6).
Tse also teaches that the plasticized composition may take on an
undesirable optical and/or tactile behavior under certain conditions related to
the molding process, polyolefin type, plasticizer type, and plasticizer
concentration (Tse 3: ¶ [0027]). In this regard, Tse teaches that the addition
of a nucleating agent to the thermoplastic polyolefin/plasticizer blend
satisfies the need to modify the plasticized composition to ensure
satisfactory aesthetics in a molded article (Tse 3: ¶ [0027]-[0028]).
Accordingly, we agree with Appellants’ contention that Tse suggests a
composition that includes a nucleator (App. Br. 4; see also Id. and Tse:
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Abstract). Appellants have not, however, provided persuasive evidence or
argument to suggest that the modification of McLeod’s composition to
include Tse’s polyisobutylene to improve the impact strength of McLeod’s
polypropylene would result in the conditions that, as suggested by Tse,
would benefit from a nucleating agent to ensure satisfactory aesthetics in a
resulting molded article.
In addition, as the Examiner points out, Tse suggests “that a
nucleating agent is not needed to obtain the benefits of adding a
polyisobutylene plasticizer to polypropylene” (see Ans. 9). In this regard,
the Examiner finds that Tse “discloses that a plasticized polyolefin may
comprise 40 to 99.9 wt % polypropylene and 0.01 to 60 wt % of the
plasticizer based on the total weight of the composition (¶0057)” (id.).
Appellants have not provided persuasive evidence or argument to suggest
that a composition within the scope of Tse’s teachings that comprises, for
example, 40 wt % polypropylene and 60 wt % plasticizer includes a
nucleating agent.
For the foregoing reasons, we are not persuaded by Appellants’
intimation that the preponderance of evidence on this record fails to support
a prima facie case of obviousness. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(vii).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 1 under 35 U.S.C § 103(a) as
unpatentable over the combination of McLeod and Tse is affirmed. Because
they are not separately argued claims 2-6, 10-16, and 19-23 fall together
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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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).

AFFIRMED

cdc

DAVID J. ALEXANDER
FINA TECHNOLOGY, INC.
P.O. BOX 674412
HOUSTON, TX 77267-4412