Ex Parte Mhetar

Patent Trial and Appeal Board

Dec 7, 2016

12854032 (P.T.A.B. Dec. 7, 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.
12/854,032 08/10/2010 Vijay MHETAR 110938.0293 6984
77001 7590
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
12/09/2016 EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
12/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJAY MHETAR
Appeal 2015-004189
Application 12/854,032
Technology Center 2800
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MONTE T. SQUIRE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter the “Appellant”)1 appeals under 35 U.S.C.
§ 134(a) from a decision of the Primary Examiner to reject claims 1—8 and
10-13.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. Our decision, however, relies on new factual findings and
rationales not previously raised to the Appellant. Therefore, we designate
1 The Appellant states that the real party in interest is “General Cable
Technology Corporation (GCTC)” (Appeal Brief filed February 18, 2014,
hereinafter “Appeal Br.,” 3).
2 Appeal Br. 5, 9—15; Final Office Action mailed February 19, 2013,
hereinafter “Final Act.,” 1—4; Examiner’s Answer entered May 28, 2014,
hereinafter “Ans.,” 3—6.
Appeal 2015-004189
Application 12/854,032
our affirmance as including a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) in order to preserve the Appellant’s procedural safeguards. See,
e.g., In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011).
BACKGROUND
The subject matter on appeal relates to “crosslinked” polymer
compositions containing polyphenylene sulfide (PPS) and an impact
modifier (Specification, hereinafter “Spec.,” 11). According to the
Appellant (id.), the “crosslinking can be between the impact modifier, the
impact modifier with the PPS, and/or the PPS” (id. 1 8). These compositions
are said to be useful in the fabrication of cable insulation materials or jackets
(id. 111, 34).
Representative claim 1 is reproduced from page 17 of the Appeal
Brief (Claims Appendix) as follows:
1. A composition comprising an impact modifier and
polyphenylene sulfide (PPS), wherein the composition is
crosslinked and wherein the impact modifier is a polyolefin
based polymer.
REJECTION ON APPEAL
Claims 1—8 and 10—13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Matsuoka et al. (Matsuoka)3 in view of Fink4 (Final Act.
2^1; Ans. 3-6).
DISCUSSION
The Examiner found that Matsuoka describes a composition
comprising an impact modifier (i.e., a polyolefin-based polymer) and PPS
3 US 6,960,628 B2, issued November 1, 2005.
4 Johannes Karl Fink, High Performance Polymers 184—185 (publication
date unknown).
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Appeal 2015-004189
Application 12/854,032
(Final Act. 2). But the Examiner also found that “Matsuoka . . . does not
disclose the composition being cross-linked” {id. at 3). In order to resolve
this perceived difference, the Examiner relied on Fink. Specifically, the
Examiner found that Fink discloses crosslinking a composition comprising
PPS and an impact modifier and concluded from this finding that “[i]t would
have been obvious to one skilled in the art to cross-link the composition of
Matsuoka ... to improve the mechanical properties of the same as taught by
Fink” {id.). Regarding secondary considerations, the Examiner did not find
that the Appellant’s proffered evidence of unexpected results (Examples 1—
2, Spec. 37-42) was persuasive because, in the Examiner’s view, “the
claimed composition was already known in the art” (Ans. 5) and “the
unexpected results, such as fire resistance and electrical properties, would
flow naturally from the suggestion of the prior art, [i.e.,] crosslinking a
composition to improve mechanical properties” {id. at 6).
The Appellant concedes that the prior art references establish a prima
facie case of obviousness (Appeal Br. 14) (“Applicant has not challenged the
elements of the Examiner’s prima facie case; Applicant has not alleged that
the Examiner failed to carry her burden to produce a prima facie case.”).
Specifically, the Appellant does not assert that Matsuoka’s composition is
free from crosslinking but, instead, merely notes the Examiner’s finding that
Matsuoka does not disclose crosslinking {id. at 10). The Appellant contends
that the proffered results demonstrate that crosslinking “significantly
improved the composition’s fire resistance and electrical properties” {id.)
and that “[tjhere is no teaching in the prior art that crosslinking would
improve fire resistance” {id. at 13). According to the Appellant {id. at 11—
12), “the Examiner cannot permissibly aver that the unexpected results
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Application 12/854,032
discovered by [the] Appellant flowed from the suggestion of Matsuoka”
because “the law requires comparison with the closest prior art (Matsuoka)
only and not the combination of the references (Matsuoka and Fink).”
We agree with the Appellant that the Examiner did not properly
evaluate the proffered evidence.5 Nevertheless, even when properly
considered, the proffered evidence is insufficient to support the Appellant’s
position that the Examiner’s unpatentability determination constituted
reversible error.
Matsuoka plainly describes compositions that are indistinguishable
from those falling within the scope of claim 1. Although not described as
preferred compositions, Matsuoka discloses—with sufficient specificity—
compositions containing: (a) crosslinked PPS resin having excellent heat
resistance, chemicals resistance, flame retardancy, electrical properties, and
mechanical properties; and (b) an olefin-based resin (in the form of a core­
shell structure) imparting improved flexibility and impact properties
(Matsuoka, col. 1,1. 57—col. 2,1. 28; col. 3,11. 37—40, 51—52; col. 4,11. 9—18,
64—67; Ref. Example 3, col. 16,11. 40-47; Ref. Example 6, col. 17,1. 35—col.
18,1. 31; Table 2, cols. 19-20). Because Matsuoka anticipates claim l,6 the
Appellant’s proffered secondary considerations evidence is inapt.
Fracalossi, 681 F.2d at 794 (“Appellants . . . have presented no evidence to
support [an unexpected results] argument, nor could they in view of [the
prior art]’s disclosure of the same composition.”). In this regard, it is a
bedrock principle of patent law that unexpected results cannot form the basis
5 In re Tiffin, 443 F.2d 394, 399 (CCPA 1971) (“The examiner’s composite
process is appellants’ process, and thus cannot be compared with it.”).
6 In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (explaining that
anticipation is the ultimate or epitome of obviousness).
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Appeal 2015-004189
Application 12/854,032
to overcome a rejection over a reference that anticipates. See, e.g., In re
Malagari, 499 F.2d 1297, 1302 (CCPA 1974); In re Wiggins, 488 F.2d 538,
543 (CCPA 1973).
Even assuming that Matsuoka does not anticipate, we find the
proffered evidence to be insufficient. To demonstrate unexpected results,
the Appellant needed to compare (back-to-back) the invention, as recited
broadly in claim 1, against the closest prior art,7 which is Matsuoka’s
disclosed composition including crosslinked PPS and an olefin-based impact
modifier in core-shell form. The Appellant offers no such comparison. In
addition, the Appellant needed to provide a showing that is reasonably
commensurate in scope with the broad scope of claim 1.8 Here, the showing
is limited to compositions made from two engineered Chevron Phillips
compositions—the specific nature of the components thereof and their
relative amounts being undisclosed—that have undergone some undisclosed
degree of irradiation or crosslinking (Spec. Tflf 37—39).9 Claim 1, however, is
not so limited. Furthermore, the Appellant needed to establish (e.g., through
declaration testimony of an unbiased expert) that the results (i.e., that
crosslinking would improve fire resistance) would have been considered
unexpected by a person having ordinary skill in the art.10 Other than mere
attorney argument, no such evidence has been offered. Indeed, it would
appear that such a showing would be difficult because a person having
ordinary skill would have understood that a polymer having high molecular
7 See, e.g., In re Merchant, 575 F.2d 865, 869 (CCPA 1978).
8 See, e.g., In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).
9 The incomplete and vague disclosure of the experiments diminishes the
probative value of the proffered evidence.
10 See, e.g., In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
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Application 12/854,032
weight and a complex structure, such as by crosslinking, would be more fire
resistant or mechanically stronger than a lower molecular weight polymer of
the same kind that has not undergone crosslinking.
For these reasons, we find no basis to overturn the Examiner’s
determination that the claims on appeal are unpatentable.
SUMMARY
The Examiner’s final decision to reject claims 1—8 and 10—13 is
affirmed. As stated above, we denominate our affirmance as a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b) in view of our new factual
findings and rationales.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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
37 C.F.R, $ 41.50(b)
6