Ex Parte Li et alDownload PDFBoard of Patent Appeals and InterferencesMar 22, 201112028535 (B.P.A.I. Mar. 22, 2011) 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. 12/028,535 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. Appeal 2010-011771 Application 12/028,535 2 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. Appeal 2010-011771 Application 12/028,535 3 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). Appeal 2010-011771 Application 12/028,535 4 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 Appeal 2010-011771 Application 12/028,535 5 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: Appeal 2010-011771 Application 12/028,535 6 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). Appeal 2010-011771 Application 12/028,535 7 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 Copy with citationCopy as parenthetical citation