Ex Parte Megally et al

Patent Trial and Appeal Board

Dec 2, 2016

13059767 (P.T.A.B. Dec. 2, 2016)

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.
13/059,767 07/29/2011 Alexandra Megally 14330/1607 2806
97999 7590
BGL/Trinseo
P.O. Box 10395
Chicago, IL 60610
12/02/2016 EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
12/02/2016 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 ALEXANDRA MEGALLY and ROELAND VOS SEN
Appeal 2015-007148
Application 13/059,767
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007148
Application 13/059,767
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 and 4—14 under 35 U.S.C. § 103(a) over at
least Quasters (WO 95/15257, published June 8, 1995).1 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal (emphasis to
highlight the disputed limitation(s)):
1. A multilayer sheet having two surface layers and
optionally one or more interior layers, said multilayer sheet
comprising a non-foamed thermoplastic polymer surface layer
(A), a foamed thermoplastic polymer layer (B) and an optional
non-foamed thermoplastic polymer surface layer (C) and
having a total sheet thickness of from about 0.5 to about 20
millimeters (“mm”) and a foam to solid ratio of greater than 1
and wherein:
(a) the non-foamed thermoplastic polymer surface layer
(A) has a thickness in the range of from about 0.75 to about 6
millimeters (“mm”);
(b) the foamed thermoplastic polymer layer (B) has a
total density reduction of at least about five (5) weight percent
and, in the absence of optional surface layer (C), is a surface
layer; and
(c) the polymer surface layer (A) and the polymer layer
(B) are selected from the group consisting ofpolyolefins and
monovinylidene aromatic polymers.
ANAFYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we are in agreement with the Examiner that the claimed subject
1 The Examiner additionally applies Wagner (US 5,364,696, issued Nov. 15,
1994) to dependent claims 10 and 13 (e.g., Ans. 5, 6).
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Application 13/059,767
matter would have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s rejections for essentially those reasons expressed in
the Answer, including the Response to Argument section, and we add the
following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903—04 (Fed. Cir.
1988).
There is no dispute that Quasters teaches a multilayer sheet
comprising all of the elements recited in claim 1 and discloses using
“thermoplastics” polymer for both its layers, except for the explicit list of its
thermoplastic polymer being selected from “polyolefins and monovinylidene
aromatic polymers” {generally Br.). Appellants’ main argument is that
Quasters does not teach or suggest that the polymer is “selected from the
group consisting of polyolefins and monovinylidene aromatic polymers” as
recited herein {id.). Appellants contend that Quasters discloses a genus of
thermoplastics which is too large to suggest the claimed species, only
exemplifies polyester, and discourages the use of polyolefins (Br. 3—5).
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Application 13/059,767
These arguments are not persuasive for reasons articulated by the Examiner
(Ans. 7—9) and because they fail to consider the prior art as a whole.
As pointed out by the Examiner, Quasters not only teaches the genus
of thermoplastics, but also teaches that a prior art packaging material of
polyolefin that was only unsatisfactory because of the use of a filler in its
core layer that made it too heavy (Ans. 8). As the Examiner points out,
Quasters “states that the embodiment found in its Claim 1, remedies these
exact drawbacks [ ] mentioned in the prior art. . . . Thus, there is no hint of
any disparagement or deficiency in using polyolefins by Quasters” (Ans. 9).
Assuming arguendo that Appellants are correct that Quasters’ genus
encompasses too many species, one of ordinary skill would have readily
inferred that polyolefin was indeed a useful species for making its multilayer
sheet. Cf. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (“That the [prior art] patent discloses a multitude of effective
combinations does not render any particular formulation less obvious.”); In
re Corkill, 111 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness
rejection of claims in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands’ of compounds”).
Thus, in our view, one of ordinary skill would have considered the use
of polyolefins obvious from the explicit teachings set out in Quasters. It is
also noted that Appellants do not rely upon any evidence of unexpected
results (Br. generally).
Appellants similarly argue that the monovinylidenes listed in
dependent claim 10 are not rendered obvious by the genus of
“thermoplastics” in Quasters (Br. 5,6). This argument is unavailing as it
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Application 13/059,767
fails to consider that Wagner (which was applied in the rejection of this
claim) evinces the use of these monovinylidenes in a multilayer sheet
product similar to Quasters (e.g., Ans. 6). Furthermore, claim 10 fails to
explicitly recite that these materials are used in the sheet of claim 1, and
even if such an interpretation is made, only a minor amount need be
included in a thermoplastic polymer blend (claim 10). Appellants have not
shown error in the Examiner’s de facto determination that the use of these
materials would have been no more than the predictable use of a known
material for its known advantages in multilayer foamed sheet products as
exemplified in Wagner. KSR, 550 U.S. at 417.
Appellants do not provide any substantive additional argument
regarding the rejection of any of the other dependent claims.
Accordingly, a preponderance of the evidence supports both of the
Examiner’s rejections, and we sustain the § 103 rejections of all the claims
on appeal.
DECISION
The decision of the Examiner 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)(1).
AFFIRMED
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