Ex Parte Merziger et al

Board of Patent Appeals and Interferences

Feb 9, 2009

10301826 (B.P.A.I. Feb. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOACHIM MERZIGER and
CHRISTOPHE LACROIX
____________

Appeal 2008-4919
Application 10/301,826
Technology Center 1700
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Decided: February 9, 2009
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 9, 11 through 14, and 16
through 23, all of the claims pending in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

Appeal 2008-4919
Application 10/301,826

STATEMENT OF THE CASE
The subject matter on appeal is directed to a multilayer tube. (Claim
1). Appellants claim a multilayer tube comprising, inter alia, an outer
polyamide layer (outer layer of a PA-11 or PA-12 polyamide), a first tie
layer (a layer of a tie compound), an EVOH layer, a polyamide/polyolefin
layer (a layer of a blend of a polyamide and a polyolefin having a polyamide
matrix), a second tie layer (a layer of a tie compound), and an inner
polyamide layer (an inner layer of PA-11 or PA-12 polyamide). (Claim 1).
The Specification defines the claimed tie layers as "any product allowing
good adhesion between the layers in question, that is to say between PA-11
or PA-12 outer layer and the EVOH layer, and between the layer of a blend
of a polyamide and a polyolefin having a polyamide matrix and the PA-11
or PA-12 inner layer." (Spec. 7).
Further details of the appealed subject matter are recited in claims 1,
6, and 14, which are reproduced below:
1. A multilayer tube comprising, in a radial direction from outside
inwards:
• an outer layer of PA-11 or PA-12 polyamide,
• a layer of a tie compound,
• a layer of an EVOH,
• a layer of a blend of a polyamide and a polyolefin having a
polyamide matrix,
• a layer of a tie compound,
• an inner layer of PA-11 or PA-12 polyamide and including a
dispersed electrically conducting filler producing a surface
resistivity of less than 106 Ω/, the layers being successive and
adhering to one another in their respective contact region.

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6. The tube according to claim 1, in which the inner layer is PA-12
and the layer of tie compound between this PA-12 layer and the layer
of the blend of a polyamide and a polyolefin having a polyamide
matrix comprises copolyamides.

14. The tube according to claim 6, in which the copolyamides are a
blend of a first 6/12 copolymer comprising 60 to 90% by weight of 6
and a second 6/12 copolymer comprising 60 to 90% of 12.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references1:
Aleckner, Jr. (Aleckner) 4,945,005 Jul. 31, 1990
Vicik 5,053,259 Oct. 1, 1991
Maj 5,166,309 Nov. 24, 1992
Ohmae 5,290,865 Mar. 1, 1994
Bussi 5,916,945 Jun. 29, 1999
Flepp 6,555,243 B2 Apr. 29, 2003

The Examiner rejects the claims on appeal as follows:
1) Claims 1-8, 12, and 13 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Flepp and Bussi;
2) Claims 9, 11, 14, and 16 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Flepp, Bussi, and Vicik;

1 The Examiner refers to U.S. Patent 6,419,966 B1 issued to Davis on July
16, 2002 at pages 13 and 15 of the Answer. The Examiner, however, does
not include this reference in the statements of rejections set forth in the
Answer. See Ans. 3-17. Therefore, we will not consider this reference in
determining the propriety of the Examiner’s rejections. See In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to
support a rejection, whether or not in ‘a minor capacity,’ there would appear
to be no excuse for not positively including the reference in the statement of
the rejection.").
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3) Claims 17-19 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Flepp, Bussi, and Aleckner;
4) Claim 20 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Flepp, Bussi, Aleckner, and Ohmae;
5) Claim 21 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Flepp, Bussi, and Maj;
6) Claim 22 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Flepp, Bussi, Maj, and Ohmae; and
7) Claim 23 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Flepp, Bussi, Maj, and Aleckner.
Appellants appeal from the Examiner’s decision rejecting the claims
on appeal under § 103(a).
With respect to rejections (1) and (2), Appellants separately argue
independent claim 1 and dependent claim 14. (App. Br. 3-9 and Reply Br.
2-4). With respect to rejections (3) through (7), Appellants do not advance
any specific argument directed to the limitations recited in the rejected
claims. Id. Instead, Appellants refer to their arguments made in connection
with rejection (1) regarding independent claim 1. Id.
Accordingly, we address Appellants’ arguments regarding rejections
(1) and (3) through (7) with respect to the independent claim 1 and rejection
(2) with respect to dependent claim 14.

ISSUES
With respect to rejections (1) and (3) through (7), Appellants do not
dispute that that Flepp teaches the following features: (1) a multilayer tube
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having an outer PA-12 layer; (2) a first adhesion promoting layer
(corresponding to the claimed first tie layer); (3) an EVOH layer; (4) a
second adhesion promoting layer (corresponding to the claimed
polyamide/polyolefin layer or second tie layer); and (5) an inner PA-12 layer
having an electric conductive finish, which includes electrically conducting
fillers. (Compare Ans. 3-4 with App. Br. 3-9 and Reply Br. 2-4).
Nor do Appellants dispute the Examiner's determination that it would have
been obvious to add an optimum amount of carbon black as suggested by
Flepp and Bussi to achieve the claimed surface resistivity. (Compare Ans.
3-5 with App. Br. 3-9 and Reply Br. 2-4).
Appellants contend that Flepp teaches away from employing two
adhesion promoting layers because "a simpler die can be used in [the]
coextrusion of [a multilayer tube since] . . . there is one less layer" and
"material costs and production costs are significantly reduced by the
elimination of a layer in the Flepp patent." (App. Br. 5).
Thus, the first issue is: Would one of ordinary skill in the art have
been led to employ an additional adhesion promoting layer (corresponding
to the claimed tie compound) with Flepp’s second adhesion promoting layer
(corresponding to the claimed polyamide/polyolefin layer) between the
EVOH layer and the inner PA-12 layer of Flepp's multilayer tube?
With respect to rejection (2), Appellants contend that the combination
of Flepp, Bussi, and Vicik is improper since “one of ordinary skill in the art
is, at best, invited to try different nylons in a blend [as the claimed second tie
layer] . . . [s]uch ‘obvious to try’ falls far short of supporting a rejections
[sic: rejection] under 35 U.S.C. § 103.” (App. Br. 9).
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Thus, the second issue is: Would one having ordinary skill in the art
have been led to employ the claimed first and second 6/12 copolymers in
forming the second tie layer (adhesion promoting layer) of Flepp’s
multilayer tube as required by claim 14?

FINDINGS OF FACT (FF)
1. Appellants do not dispute the Examiner's finding that Flepp teaches a
multilayer tube having an outer PA-12 layer, a first adhesion
promoting layer (corresponding to the claimed first tie layer), an
EVOH layer, a second adhesion promoting layer (corresponding to the
claimed polyamide/polyolefin layer or second tie layer), and an inner
PA-12 layer having an electric conductive finish, which includes
electrically conductive fillers. (Compare Ans. 3-4 with App. Br. 3-9
and Reply Br. 2-4; see also Flepp, col. 1, ll. 5-32, col. 5, ll. 18-36, and
col. 6, ll. 26-33 and 54-56).
2. Flepp's adhesion promoting layer may comprise any copolyamide
composition having a PA-6/PA-12 fraction (in weight percent) within
the range of about 40/60 to 80/20. (See Flepp, Fig. 2).
3. While Flepp in this embodiment does not mention employing two
adhesion promoting layers between an EVOH layer and a PA-12
layer, Flepp does state that "[r]elative to the EVOH intermediate
layer, the layer structure on both sides may be different or alike."
(Flepp, col. 5, ll. 57-58). Flepp further discloses that the adhesion
promoting layer may contain polyamide 6 and polyolefin. (Flepp, col.
5, ll. 18-36 and col. 6, ll. 51-60).
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4. Flepp at col. 3, ll. 29-32 teaches that it was known in the art prior to
its invention to employ two adhesion promoting layers between an
EVAL (also known as EVOH) layer and a PA-12 layer in a multilayer
tube. In one example, these known adhesion promoting layers may be
polyamide 6 and polyolefin. (Flepp, col. 3, ll. 30-32).
5. Though Flepp indicates (col. 5, ll. 7-17) that it was “surprisingly
found” that an adhesion promoting layer made of polyamides and a
compatibilizer provides “good, steady and durable adhesion, both to
EVOH and polyamide 12 or polyamide 11,” Flepp does not
discourage or disparage using an additional adhesion promoting layer
with the disclosed second adhesion promoting layer. Moreover,
nowhere does Flepp teach that the employment of two adhesion
promoting layers between an EVOH layer and a PA-12 layer would
adversely affect the utility of the multilayer tube taught by Flepp.
6. Appellants have not shown that the use of both the claimed
polyamide/polyolefin and tie layers (corresponding to Flepp's two
adhesion promoting layers) between the EVOH and inner PA-12
layers imparts unexpected results.
7. Appellants do not dispute the Examiner's determination that it would
have been obvious to add an optimum amount of carbon black as
suggested by Flepp and Bussi to achieve the claimed surface
resistivity. (Compare Ans. 3-5 with App. Br. 3-9 and Reply Br. 2-4;
see also Flepp, col. 6, ll. 13-33 and Bussi, col. 1, ll. 11-27).

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PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966).
"[W]hen a [prior art] patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." KSR Int'l Co., v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Moreover,
"[i]t is prima facie obvious to combine two compositions[,] each of which is
taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose." In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
A slight overlap between the prior art and claimed ranges establishes a
prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). "A known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use." Id. Moreover, merely because "a . . .
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combination would not be made by businessmen for economic reasons does
not mean that persons skilled in the art would not make the combination . . ."
In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983).
Appellants have the burden of showing unexpected results with
respect to the claimed subject matter to rebut the prima facie case of
obviousness established by the Examiner. See In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972).

ANALYSES AND CONCLUSIONS OF LAW

Rejections (1) and (3)-(7): The § 103(a) rejections over the combined
disclosures of Flepp and Bussi; the combined disclosures of Flepp, Bussi,
and Aleckner; the combined disclosures of Flepp, Bussi, Aleckner, and
Ohmae; the combined disclosures of Flepp, Bussi, and Maj; the combined
disclosures of Flepp, Bussi, Maj, and Ohmae; and the combined disclosures
of Flepp, Bussi, Maj, and Aleckner

In a preferred embodiment, Flepp teaches (FF 1) employing a single
adhesion promoting layer (i.e., Flepp's second adhesion promoting layer),
which may contain polyamide 6 and polyolefin, between an EVOH layer
and an inner PA-12 layer in a multilayer tube. While Flepp in this
embodiment does not mention employing two adhesion promoting layers
between an EVOH layer and a PA-12 layer, Flepp does state that "[r]elative
to the EVOH intermediate layer, the layer structure on both sides may be
different . . ." (FF 3). In other words, Flepp’s multilayer structure relative to
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the EVOH layer may include a second adhesion promoting layer different
from the first adhesion promoting layer.
Flepp also teaches (FF 4) that it was known in the art to employ two
adhesion promoting layers between an EVOH layer and a PA-12 layer in a
multilayer tube. These two adhesion promoting layers (e.g., polyamide 6
and polyolefin) are known to produce the result sought by Appellants (i.e.,
bonding an EVOH layer to a PA-12 layer). (FF 4). Flepp further discloses
that the adhesion promoting layer may contain polyamide 6 and polyolefin
(FF 3). Nowhere does Flepp teach that the employment of two adhesion
promoting layers between the EVOH layer and PA-12 layer would adversely
affect the utility of its multilayer tube. (FF 5).
Rather, the Flepp disclosures indicate that using a polyolefin layer
between a polyamide 6 containing layer and an EVOH layer on one side and
the polyamide 12 layer on the other side successfully bonds the layers
together (FF 4).
Accordingly, an ordinarily skilled artisan would not have been
discouraged from using an additional polyolefin layer, for example, with
Flepp’s adhesion promoting layer, which may contain polyamide 6 and
polyolefin, in order to secure the EVOH and PA-12 layers. See Gurley, 27
F.3d at 553.
Thus, we determine that one of ordinary skill in the art would have
been led to employ an additional adhesion promoting layer (corresponding
to the claimed tie compound), such as a polyolefin layer, with Flepp’s
second adhesion promoting layer (corresponding to the claimed
polyamide/polyolefin layer), with a reasonable expectation of successfully
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binding Flepp's EVOH and inner PA-12 layers. Moreover, such a
combination would have been merely the predictable use of prior art
elements (i.e., known adhesion promoting layers) according to their
established functions (i.e., promoting adhesion among an EVOH layer, a
polyamide 6 layer, and a polyamide 12 layer). See KSR, 127 S.Ct. at 1740.
Notably, Flepp’s adhesion promoting layer may be made of
polyamide 6 and polyolefin, the same materials disclosed by Flepp as used
in the prior art two adhesion promoting layers. (FF 3-4). Furthermore,
Flepp’s disclosure states that the layer structure relative to the EVOH layer
on both sides, which is inclusive of the first and second adhesion promoting
layers, may be the same or different and the use of different layers as
adhesion promoting layers supports our determination. (FF 3-5).
In reaching this determination, we have considered Appellants'
teaching away arguments. Specifically, Appellants argue Flepp teaches
away because "a simpler die can be used in [the] coextrusion of [a multilayer
tube since] . . . there is one less layer " and that "material costs and
production costs are significantly reduced by the elimination of a layer in the
Flepp patent." (App. Br. 5). These arguments, however, miss the mark.
In response to Appellants' argument that a simpler die can be used to
coextrude a multilayer tube with a single adhesion promoting layer, merely
because a more complex die may be required to manufacture Flepp's known
two adhesion promoting layers does not constitute a teaching away from
using more than one adhesion promoting layer. If more than one adhesion
promoting layer is used as Flepp discloses is known in the art, one of
ordinary skill would have understood that foregoing a simpler die would
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have been the trade-off. However, such a trade-off does not amount to
disparaging the use of an additional adhesion promoting layer. Additionally,
though Flepp indicates that it was “surprisingly found” that an adhesion
promoting layer made of polyamides and a compatibilizer provides “good,
steady and durable adhesion, both to EVOH and polyamide 12 or polyamide
11,” Flepp does not discourage or disparage using an additional adhesion
promoting layer with the disclosed second adhesion promoting layer. (FF 5
and see Gurley, 27 F.3d at 553).
Furthermore, merely because a combination would not be made by
businessmen for economic reasons does not mean that one of ordinary skill
in the art would not have been led to employ two adhesion promoting layers
(corresponding to the claimed polyamide/polyolefin and second tie layers) in
Flepp's multilayer tube. See Farrenkopf, 713 F.2d at 718.
Moreover, Appellants have not shown that the use of both the claimed
polyamide/polyolefin and tie layers (corresponding to Flepp's two adhesion
promoting layers) between the EVOH and inner PA-12 layers imparts
unexpected results. (FF 6).
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 1-8, 12, and 13
under 35 U.S.C. § 103(a) over the combined disclosures of Flepp and Bussi;
claims 17-19 under 35 U.S.C. § 103(a) over the combined disclosures of
Flepp, Bussi, and Aleckner; claim 20 under 35 U.S.C. § 103(a) over the
combined disclosures of Flepp, Bussi, Aleckner, and Ohmae; claim 21 under
35 U.S.C. § 103(a) over the combined disclosures of Flepp, Bussi, and Maj;
claim 22 under 35 U.S.C. § 103(a) over the combined disclosures of Flepp,
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Bussi, Maj, and Ohmae; and claim 23 under 35 U.S.C. § 103(a) over the
combined disclosures of Flepp, Bussi, Maj, and Aleckner.

Rejection (2): The § 103(a) rejection over the combined disclosures of
Flepp, Bussi, and Vicik
Representative claim 14 requires that the second tie layer be a
copolyamide blend having a "first 6/12 copolymer comprising 60 to 90% by
weight of 6" and "second 6/12 copolymer comprising 60 to 90% [by weight]
of 12."
Flepp teaches that its adhesion promoting layer (corresponding to the
claimed second tie layer) may comprise any copolyamide composition
having a PA-6/PA-12 fraction (in weight percent) within the range of about
40/60 to 80/20, which includes the claimed first and second 6/12
copolymers. (FF 2). In other words, Flepp teaches that the claimed first or
second 6/12 copolymer can be used as its adhesion promoting layer
(corresponding to the claimed second tie layer).
The claimed first and second 6/12 copolymers are known to be
individually useful as adhesion promoting layers. Therefore, it would have
been prima facie obvious to one of ordinary skill in the art to employ a
mixture of the first and second copolyamide compositions for the same
known purpose (i.e., as an adhesion promoting layer) in Flepp's multilayer
tube. See KSR, 127 S.Ct. at 1740 and Kerkhoven, 626 F.2d at 850. In this
regard, one of ordinary skill making such a combination would have a
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reasonable expectation of successfully using the mixture for that very same
known purpose taught by Flepp.2 Id.
Therefore, because the Examiner has established a prima facie case of
obviousness, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the Examiner’s prima
facie case. However, on this record, Appellants have not done so.
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 9, 11, 14, and 16
under 35 U.S.C. § 103(a) over the combined disclosures of Flepp, Bussi, and
Vicik.

ORDER
The decision of the Examiner is affirmed.

TIME PERIOD
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)(iv).
AFFIRMED

cam

2 We note that Vicik is cumulative to the teachings of Flepp and is, therefore,
unnecessary to resolve the issue raised.

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