Ex Parte Michie et al

Patent Trial and Appeal Board

Feb 18, 2016

12377334 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/377,334 02/12/2009 William J. Michie JR.
16171 7590 02/22/2016
The Dow Chemical Company/ The JL Salazar Law Firm,
pllc
1934 W. Gray
Suite 401
Houston, TX 77019
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.
65959A-US-PCT 5241
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
FFUIMPC@dow.com
paralegal @j lsalazar. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. MICHIE, JR., STEPHANIE M. WHITED,
NATHAN J. WIKER, and DALE M. ELLEY-BRISTOW
Appeal2014-001847
Application 12/377 ,334
Technology Center 1700
Before ROMULO H. DELMENDO, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
November 9, 2012 decision finally rejecting claims 1, 11, 13, 16, 40, 43, 44,
and 47 2 ("Final Act."). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
1 Appellants identify the Real Party in Interest as Dow Global Technologies
Inc. (Appeal Br. 2).
2 Appellants state that claims 17, 36, 37, and 39 are also on appeal (Appeal
Br. 3, Reply Br. 3), but these claims have been identified as being withdrawn
from consideration (Final Act. 1 ). These claims are not subject to a pending
rejection, nor have they been substantively addressed by either Appellants in
the Appeal Brief or Reply Brief, or by the Examiner in the Answer.
Accordingly, they will not be addressed in this decision.
Appeal2014-001847
Application 12/377,334
We affirm.
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a high density polyethylene
composition which includes a first component and a second component
(Abstract). The first component is a high molecular weight (HMW)
ethylene alpha-olefin copolymer with a density and melt index within
specified ranges (id.). The second component is a low molecular weight
(LMW) polyethylene, also with a density and melt index in specific ranges
(id.). The overall composition also has a density and a melt index in specific
ranges (id.). Claim 1 is representative of the claims on appeal and is
reproduced below from the Claims Appendix of the Appeal Brief (key claim
limitations in italics):
1. A high-density polyethylene composition comprising:
a first component, said first component is a high
molecular weight ethylene alpha-olefin copolymer has a density
in the range of 0.920 to 0.946 g/cm3, and a melt index (bi.6) in
the range of 1 to 15 g/10 minutes; and
a second component, said second component is a low
molecular weight ethylene polymer has a density in the range of
greater than 0.965 to 0.980 g/cm3, and a melt index (12) in the
range of 30 to 1500 g/10 minutes;
wherein said high-density polyethylene composition has
a melt index (b) of at least 2 g/10 minutes, a density in the
range of from 0.952 to 0.960 g/cm3.
2
Appeal2014-001847
Application 12/377,334
REJECTIONS
I. Claims 1, 11, 16, 40, and 47 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schramm. 3
II. Claims 43 and 44 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schramm in view of Henri Barre. 4
III. Claims 1, 11, 13, 16, 40, and 47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Michie5 in view of Schramm.
DISCUSSION
Appellants make arguments only with respect to the patentability of
claim 1 and do not present separate arguments for other claims (see Appeal
Br. 6-11). Accordingly, our discussion will focus on claim 1. Moreover,
we need not discuss Rejection II, as claims 43 and 44 will stand or fall with
claim 1.
The Examiner finds that (1) Schramm discloses a polyethylene resin
made of two components, wherein the resin has a density in the range of
about 0.925 g/cm3 to about 0.950 g/cm3, and a melt index in the range of
about 0.05 g/10 minutes to about 5 g/10 minutes (Final Act. 2; see also
Schramm, i-fi-f 18-20); (2) one component of Schramm's resin is an HMW
ethylene/alpha-olefin copolymer having a density of about 0.935 g/cm3 and a
melt index of about 1.0 g/10 minutes or lower (Final Act. 3, citing Schramm
3 Schramm et al., U.S. Patent Pub. 2004/0266966 Al, published December 30, 2004.
4 Henri Barre et al., U.S. Patent Pub. 2007/0007680 Al, published January 11, 2007.
5 Michie et al., WO 2004/101674 Al, published November 25, 2004.
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Appeal2014-001847
Application 12/377,334
i122); and (3) the second component of Schramm is a LivIW polyethylene
having a density of about 0.945---0.965 g/cm3 and a melt index of from about
2 g/10 minutes to about 150 g/10 minutes or higher (id., citing Schramm
i-f 23). The Examiner further finds that each6 of the foregoing values/ranges
for the density and melt indexes falls within or overlaps with the claimed
ranges (id.). Based on these findings, the Examiner concludes that the
recited ranges of density and melt flow would have been obvious over the
disclosure of Schramm (Final Act. 3). Appellants do not challenge these
specific findings. Rather, they focus on the Examiner's conclusions that the
claimed ranges would have been obvious over the disclosure of Schramm.
The density of the claimed high density polyethylene composition is
"in the range of 0.952 to 0.960 g/cm3." The density of Schramm's
composition is "in the range of from about 0.925 g/c[m3] ... to about 0.950
g/c[ m3]" (Schramm i-f 19). The Examiner finds that "about 0.950 g/cm3" (the
density of Schramm's composition) and 0.952 g/cm3 (the lower end of the
claimed density range) are so close to each other that the claimed density is
only an obvious variant of Schramm's density (Final Act. 3--4). The
Examiner further finds that because Schramm's density can be as high as
"about 0.950 g/c[m3]," it includes values slightly above 0.950, 7 and that
6 There is a more detailed discussion with respect to the density of the
overall composition, which is detailed below.
7 Appellants argue that, when read in the context of Schramm's
Specification, the term "about 0.950" does not include any values above
0.950 (Appeal Br. 9). This argument is not persuasive, as the only evidence
relied upon by Appellants is that the top of the preferred density range is
lower than 0.950 (id.). That the preferred range is lower than 0.950 does not
mean that the term "about 0.950" does not include values above 0.950.
4
Appeal2014-001847
Application 12/377,334
such a density value would have been expected to impart the same properties
as a density value of 0.952 (Ans. 4--5).
Appellants do not directly challenge these findings, but contend that
the different end uses of Schramm's composition (pipes) requires
sufficiently different properties than the end use for the claimed composition
(bottle caps), that a person of ordinary skill in the art would have no
guidance to modify the density of Schramm's composition to be useful in
bottle caps (Appeal Br. 9-10). This argument is not persuasive because it is
not supported by citation to evidence of record regarding the state of
knowledge in the art at the time of invention. Moreover, as explained by the
Examiner (Ans. 5), it is not necessary that the prior art suggest the
advantages or results obtained by Appellants, so long as the claimed
composition itself is suggested. See, e.g., In re Kahn, 441F.3d977, 987
(Fed. Cir. 2006). In this instance, the prior art density range has a point
("about 0.950 g/cm3") which essentially falls within the claimed range
(0.952---0.960 g/cm3). Cf Titanium Metals Corp. of America v. Banner, 778
F.2d 775, 782 (Fed. Cir. 1985) ("[W]hen, as by a recitation of ranges or
otherwise, a claim covers several compositions, the claim is "anticipated" if
one of them is in the prior art."); Pall Corp. v. Micron Separations, Inc., 66
F.3d 1211, 1217 (Fed. Cir. 1995) (use of the word "about" avoided a strict
numerical boundary to the specified parameter). Thus, the Examiner has
made out a prima facie case of obviousness, which has not been overcome
5
Appeal2014-001847
Application 12/377,334
by Appellants, who have not proffered evidence in support of unexpected
results stemming from the claimed density range. 8
Thus, after reviewing the arguments and evidence set forth in the
Appeal Brief and Reply Brief, we determine that Appellants have not shown
reversible error in the obviousness rejection of claim 1 over Schramm.
With regards to the obviousness rejection over Michie in view of
Schramm, Appellants do not offer substantively different arguments than
presented in connection with the rejection over Schramm alone (Appeal Br.
10-11). Accordingly, we also affirm this rejection.
CONCLUSION
We AFFIRM the rejection of claims 1, 11, 16, 40, and 4 7 under
35 U.S.C. § 103(a) as being unpatentable over Schramm.
We AFFIRM the rejection of claims 43 and 44 under 35 U.S.C. § 103(a)
as being unpatentable over Schramm in view of Henri Barre.
We AFFIRM the rejection of claims 1, 11, 13, 16, 40, and 47 under
35 U.S.C. § 103(a) as being unpatentable over Michie in view of Schramm.
8 Appellants argue that the difference between 0.950 and 0.952 is 25% of the
entire claimed range of 0.08 g/cm3 (from 0.952 to 0.960 g/cm3) and,
therefore, is not close enough to make out a prima facie case of obviousness
(Appeal Br. 8). This argument is not persuasive because (1 ), as pointed out
by the Examiner (Ans. 3), the upper limit of the density of Schramm's
composition is "about 0.950" and, therefore, the difference between it and
the claimed lower limit of 0.952 is less than 0.002 g/cm3 (i.e., a difference of
only 0.21 %); and (2) the size of the claimed range is not determinative as to
whether the disclosed value and claimed range are sufficiently close to make
out a prima facie case of obviousness.
6
Appeal2014-001847
Application 12/377,334
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7