Ex Parte McLeod et alDownload PDFPatent Trial and Appeal BoardSep 20, 201311941295 (P.T.A.B. Sep. 20, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/941,295 11/16/2007 Michael McLeod COS-1093 9377 25264 7590 09/20/2013 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 EXAMINER RAUDENBUSH, ELLEN SUZANNE ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 09/20/2013 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, GERHARD GUENTHER, and SHANNON B. HOESING ____________ Appeal 2012-005460 Application 11/941,295 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and DONNA M. PRAISS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-11 and 21-35. We have jurisdiction under 35 U.S.C. § 6. Appeal 2012-005460 Application 11/941,295 2 STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. An article comprised of: polyethylene having a melt flow index of from 0.3 g/10 min to 5.0 g/10 min, a density of from 0.912 g/cm3 to 0.965 g/cm3, and a melting point of from 110°C to 140°C, wherein said polyethylene is formed into an article by melt extrusion, injection molding, blow molding, or casting; wherein said formed article is cooled and then oriented uniaxially or biaxially into an oriented article; and wherein the oriented article has a thickness of 0.1 mil to 100 mils, a haze of 10% or less, a clarity of at least 90, and a gloss of at least 60%. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Barre US 7,081,285 B1 Jul. 25, 2006 Musgrave US 7,122,601 B2 Oct. 17, 2006 THE REJECTIONS 1. Claims 30-35 are rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-3, 5-10, and 30-31 are rejected under 35 U.S.C. §102(e) as being anticipated by Barre. 3. Claims 21-26, 28-29, and 31-35 are rejected under 35 U.S.C. §102(b) as anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious over Barre. Appeal 2012-005460 Application 11/941,295 3 4. Claims 4, 11 and 27 are rejected under 35 U.S.C. §103(a) as being unpatentable over Barre in view of Musgrave. ANALYSIS1 Rejection 1 With respect to changing numerical range limitations, in connection with this rejection under 35 U.S.C. §112, first paragraph (written description requirement), the appropriate analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257 (CCPA 1976), the ranges described in the original specification included a range of “25%- 60%” and specific examples of “36%” and “50%.” A corresponding new claim limitation to “at least 35%” did not meet the description requirement because the phrase “at least” had no upper limit and caused the claim to read literally on embodiments outside the “25% to 60%” range. However, a limitation to “between 35% and 60%” did meet the description requirement. In the instant case, Appellants’ claims recite a density range of from 0.925 g/cm3 to 0.965 g/cm3 (claims 30, 32, and 34) and of from 0.930 g/cm3 to 0.965 g/cm3 (claims 31, 33, and 35). The Specification states that suitable polyethylene resins have a density of from 0.912 g/cm3 to 0.965 g/cm3, 0.912 g/cm3 to 0.950 g/cm3, and 0.915 g/cm3 to 0.940 g/cm3. Spec. 3. Specific examples of respective density values of 0.927 1 We make note that two Information Disclosure Statements were filed after the docketing of this Appeal, on respective dates of May 11, 2012 and June 22, 2012. Appeal 2012-005460 Application 11/941,295 4 g/cm3 and 0.934 g/cm3 are disclosed on page 7 of the Specification. As Appellants point out, claims 30-35 recite density values that fall within the density values originally disclosed in their Specification. Br. 12-13. Reply Br. 8-9. It is the Examiner’s position that the lower range of 0.925 g/cm3 and 0.930 g/cm3, respectively, broadens the scope of the type of polyethylene. Ans. 11-12. However, in making this statement, the Examiner does not take into account the full range of values disclosed in the Specification (0.912 g/cm3 to 0.965 g/cm3, 0.912 g/cm3 to 0.950 g/cm3, and 0.915 g/cm3 to 0.940 g/cm3). Also, the similarities between the facts of this case and the facts in In re Wertheim buttresses Appellants’ position. Appellants’ specific examples, having respective density values of 0.927 g/cm3 and 0.934 g/cm3, are very close to the respective claimed lower endpoints of 0.925 g/cm3 and 0.930 g/cm3, as in In re Wertheim. As pointed out by Appellants on page 9 of the Reply Brief, the claimed lower endpoint values are within hundredths of g/cm3 of the specific examples in their Specification. Hence, we agree with Appellants’ position and reverse Rejection 1. Rejection 2 As an initial matter, Appellants have not presented separate arguments for all of the rejected claims. Rather, Appellants’ arguments are principally directed to independent claims 1, 21, and 28. Any claim not separately argued will stand or fall with the argued claims from which it depends. See 37 C.F.R. § 41.37(c)(1) (vii). Appeal 2012-005460 Application 11/941,295 5 We adopt the Examiner’s findings pertinent to the issues raised by Appellants. We therefore incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. Issue: Did the Examiner err in determining that the applied art anticipates the claimed subject matter, and in particular, in determining that Barre anticipates the aspect of claim 1 pertaining to "wherein said formed article is cooled and then oriented uniaxially or biaxially into an oriented article"? We answer this question in the negative and AFFIRM. It is Appellants’ position that the step recited in claim 1 of "wherein said formed article is cooled and then oriented uniaxially or biaxially into an oriented article" is not disclosed in Barre. Br. 13-14. Reply Br. 11-12. Appellants state that while the Examiner relies upon col. 15, ll. 23-42 of Barre for teaching this aspect of the claim, no such teaching can be found. Appellants explain that “Barre does not teach the temperature of the blowing gas, which could well be at or above the temperature of the parison.” Br. 14. Appellants submit that “Barre does not teach that the blowing gas or any other element cools the parison.” Id. However, the claim at issue is a product by process claim that the Examiner has found has all of the properties of the prior art. Ans. 6. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior Appeal 2012-005460 Application 11/941,295 6 product was made by a different process.2 In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). As the Examiner points out on page 6 of the Answer, the burdens shifts to Appellants to show an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1983). In the instant case, Appellants argue that the claims require that the article be oriented. Br. 14. The Examiner adequately addresses this point at the top of page 13 of the Answer, and we are thus unpersuaded by such argument for the reasons provided by the Examiner therein. In view of the above, we affirm Rejection 2. Rejection 3 It is Appellants’ position that the product of Barre is different from the product of their claims for the reasons set forth on pages 14-16 of their Brief. However, we are not persuaded by such argument for the reasons provided by the Examiner on pages 13-14 of the Answer. Rejection 4 Appellants rely upon the same arguments used for the other rejections (Br. 16), and hence, for the same reasons that we affirmed Rejections 2 and 3, we affirm Rejection 4. 2 We are not stating that a different process is used in the prior art, especially in view of the fact that the Examiner explains on page 13 of the Answer that a blow molding process is known to have cooling after the parison is formed. Pages 1 and 4 of Appellants’ own Specification indicates that it is known that cooling occurs after the article is blown, which further supports the Examiner’s position. Appeal 2012-005460 Application 11/941,295 7 CONCLUSIONS OF LAW AND DECISION Rejection 1 is reversed. Rejections 2-4 are affirmed. AFFIRMED kmm Copy with citationCopy as parenthetical citation