Ex Parte McLeod

Patent Trial and Appeal Board

Jan 29, 2016

12627268 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/627,268 11130/2009 Michael McLeod
25264 7590 01/29/2016
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
COS-1115 CON 3733
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
MAILDATE DELIVERY MODE
01129/2016 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 MICHAEL MCLEOD 1
Appeal2014-000541
Application 12/627,268
Technology Center 1700
Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-22, 34, and 363. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The subject matter on appeal is directed to "polyethylene films," and in
particular, "solid state stretched [polyethylene] films that may be monoaxially or
1 The Real Party in Interest is said to be FINA Technology, Inc. Appeal Brief filed
June 28, 2013 ("App. Br.") at 5.
2Final Action mailed February 13, 2013 (Final Act.") at 3-15, Advisory Act filed
April 23, 2013("Advisory Act.") at 2 and the Examiner's Answer mailed August
19, 2013 ("Ans.") at 2.
3 As is apparent from page 2 of the Advisory Action and page 2 of the Examiner's
Answer, claims 33 and 35 were cancelled. Thus, we delete Appellant's reference
to these cancelled claims.
Appeal2013-000541
Application 12/627 ,268
biaxially oriented." Spec. il L The term "solid state stretched film" is defined as
"one that has been oriented in at least one direction subsequent to at least a
quenching and a casting/extruding step." Id. at i-f 22. An example of such film
includes the one that is made of resin HDPE 9458 from Total Petrochemicals. Id
at i-f 35. Details of the appealed subject matter are recited in representative claim
1, 4 which is reproduced below from the Claims Appendix of the Appeal Brief:
1. A solid state stretched film comprising
polyethylene having a density ranging from greater than 0.940 glee to
less than 0.960 glee; a molecular weight distribution (Mw/Mn) 10 or
greater; a melt flow index ranging from 0.30 dg/min to 1.00 dg/min;
and a weight average molecular weight (Mw) of 300,000 g/mol or
less.
App. Br. 14 (emphasis added).
The Examiner has maintained, and Appellant seeks review of, the following
grounds of rejection:
1. Claims 1, 4-7, 11, 14-17, 34, and36under35 U.S.C. § 102(b) as
anticipated by the disclosure of the HDPE 9458 product data sheet published by
Total Petrochemicals, USA, Inc. on May 2006 ("Petrochemicals") sheet;
2. Claims 8-10 and 18-20 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Petrochemicals; and
3. Claims 1-22, 34, and 36 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures ofU.S 6,361,844 issued to Ou-Yang on March 26,
4 Appellant does not separately argue the individual claims on appeal. App. Br.
11-13 and Reply Br. 7-9. Therefore, for purposes of this appeal, we limit our
discussion to claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
2
Appeal2013-000541
Application 12/627 ,268
2002 ("Ou-Yang") and Petrochemicals. App. Br. 11-13; Reply Brief filed October
7, 2013 ("Reply Br.") at 6; Final Act. 3-15; Advisory Act. 2; and Ans. 2.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
arguments and responses advanced by Appellant and the Examiner, respectively,
we find that Appellant has not identified reversible error in the Examiner's
determination that the applied prior art would have rendered the subject matter
recited in claims 1-22, 34, and 36 obvious to one of ordinary skill in the art within
the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's
§ 103(a) rejections of the above claims for the reasons set forth in the Final Action
and the Answer. We adopt the Examiner's reasoning as our own and add the
following primarily for emphasis.
Rejections 1 and 2
As the predecessor to our reviewing court stated in In re Best, 562 F.2d
1252, 1255 (CCPA 1977):
Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on 'inherency' under 35 USC§ 102, on
'prima facie obviousness' under 35 USC § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products. [Footnote
and citations omitted)].
3
Appeal2013-000541
Application 12/627 ,268
Here, there is no dispute that Petrochemicals discloses an extruded high density
polyethylene film, namely an extruded HDPE 9458 film, having a density of 0.958
glee and a melt flow index of 0.45 g/10 min, which are encompassed by the density
and melt flow index ranges recited in claim 1. Compare Final Act. 4 with App. Br.
11-13. Nor is there any dispute that this extruded HDPE 9458 film taught by
Petrochemicals, according to Table 1 at page 6 of the Specification, also has a
molecular weight distribution (polydispersity) of 14.3 and a weight average
molecular weight (Mw) of 17,457 g/mol, which are also encompassed by the
molecular weight distribution and weight average molecular weight ranges recited
in claim 1. Compare Final Act. 4-5 with App. Br. 11-13. Although
Petrochemicals does not mention its extruded HDPE 9458 film as "one that has
been oriented in at least one direction subsequent to at least a quenching and a
casting/extruding step" (the definition at paragraph 22 of the Specification for the
preamble limitation "solid state stretched film" recited in claim 1) as argued by
Appellant, the Examiner has found, and Appellant does not dispute, that
Petrochemicals also discloses that its extruded HDPE 9458 film has"[ o ]riented
film structures." Compare Final Act. 5 with App. Br. 12. Notwithstanding
Appellant's argument to the contrary, Petrochemicals also teaches that its extruded
HDPE 9458 film, like the biaxially oriented films and machine direction oriented
films used for specialty film application encompassed by claim 1, has "[h ]igh
stiffness" and "[h ]igh tensile strength" and is used for, for example, "[ s ]pecialty
packaging[.]" Compare App. Br. 12 referencing paragraph 32 of the Specification
with Petrochemicals. In other words, there is sufficient evidence to show that
Petrochemicals' extruded HDPE9458 film is identical or substantially identical to
those solid stretched films encompassed by claim 1. Thus, the burden is on
Appellant to show that the solid stretched films encompassed by claim 1 are
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Appeal2013-000541
Application 12/627 ,268
patentably different from Petrochemicals' extruded HDPE 9458 film. However,
Appellant fails to carry such burden. On this record, Appellant does not proffer
any objective evidence to demonstrate that the solid stretched films encompassed
by claim 1 are patentably different from Petrochemicals' extruded HDPE 9458
film.
Appellant argues for the first time at pages 8 and 9 of the Reply Brief that
the claimed invention imparts unexpected results. 5 In support of this argument,
Appellant refers to Figures 1, 4, and 5 and paragraphs 37, 39, 40, and 41 drawn to
films made of HDPE 7208 and HDPE 9458 to evince that a HDPE 9458 film is
superior than a film made of HDPE 7208. Id. However, we need not consider
these belated evidence and arguments. 3 7 CPR § 41.41 (b )(2 );see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (explaining that under
the previous rules, which are similar to the current rules, "the reply brief [is not] an
opportunity to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not."); Ex parte Nakashima, 93
USPQ2d 1834 (BP AI 2010) (explaining that arguments and evidence not timely
presented in the principal Brief, will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have been
presented in the Principal Brief). In any event, Appellant does not show that the
HDPE-9458 film encompassed by claim 1 is patentably different from or
unexpectedly superior to Petrochemicals' extruded HDPE 9458 film.
Accordingly, based on the reasons set forth in the Final Action and above,
we find no reversible error in the Examiner's decision rejecting claims 1, 4-7, 11,
5 A showing of unexpectedly superior results is not relevant to a situation where a
single prior art fully describes the claimed features under 35 U.S.C. § 102(b). In re
Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
5
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Application 12/627 ,268
14-17, 34, and 36 under 35 U.S.C. § 102(b) as anticipated by Petrochemicals and
claims 8-10 and 18-20 under 35 U.S.C. § 103(a) as unpatentable over
Petrochemicals.
Rejection 3
As indicated supra, Petrochemicals discloses an extruded (e.g., coextruded)
HDPE 9459 film having the density, melt flow index, molecular weight
distribution, and weight average molecular weight recited in claim 1. To the extent
that Petrochemicals's extruded HDPE 9458 film may not have the property
associated with the "one that has been oriented in at least one direction subsequent
to at least a quenching and a casting/extruding step" as recited in claim 1, the
Examiner has relied upon Ou-Yang to show the obviousness of stretching
Petrochemicals's extruded HDPE 9458 film to obtain a monoaxially or biaxially
oriented extruded HDPE film. Final Act. 9-11. According to column 6, lines 46-
48, of Ou-Yang, "[t]he term 'oriented' herein refers to strengthening the polymer
by stretching at a temperature below its crystalline melting temperature."
Appellant appears to rely upon the same arguments in connection with
Rejections 1 and 2 to show reversible error in this rejection. App Br. 12-13.
However, Appellant does not show that the HDPE-9458 film encompassed by
claim 1 is patentably different from Petrochemicals' extruded HDPE-9458 film
that has been stretched to obtain a monoaxial or biaxial orientation as suggested by
Ou-Yang or is unexpectedly superior to the extruded HDPE-9458 film taught by
Petrochemicals. Id. Moreover, we need not consider Appellant's evidence and
arguments drawn to unexpected results raised for the first time in the Reply Brief
as indicated supra.
Accordingly, based on the reasons set forth in the Final Action and above,
we find no reversible error in the Examiner decision rejecting claims 1-22, 34, and
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Appeal2013-000541
Application 12/627 ,268
36 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Ou-
y ang and Petrochemicals.
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-22,
34, and 36 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
KRH
7