Ex Parte Nichols et al

Board of Patent Appeals and Interferences

Sep 16, 2011

12113265 (B.P.A.I. Sep. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KEVIN L. NICHOLS, BRETT M. BIRCHMEIER,
IAN M. WARD, PHILIP D. COATES, PHIL CATON-ROSE,
GLEN P. THOMPSON, VIJAY WANI,
and RAJEN M. PATEL
________________

Appeal 2011-001871
Application 12/113,265
Technology Center 1700
________________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2, 4, and 5. We
have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. An article of manufacture that is a polymer composition that has been
oriented into an oriented polymer composition, the oriented polymer
composition comprising thirty weight-percent or more and 95 weight-
percent or less inert inorganic filler based on oriented polymer composition
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weight and a continuous phase of at least one semicrystalline orientable
polymer, wherein the oriented polymer composition has:

(a) a density of less than 0.8 grams per cubic centimeter according to
ASTM method 792-00;

(b) a flexural modulus of 1.4 gigapascals (200,000 pounds per square
inch) or more according to ASTM method D-790-03;

(c) cross section dimensions all greater than 1.5 millimeters;

(d) a delamination force value greater than 44.5 Newtons (ten pounds
force);

(e) void volume proximate to the inorganic filler in the oriented
polymer composition;

and wherein the oriented polymer composition contains less than three
weight-percent blowing agent based on oriented polymer composition
weight.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Jack 4,111,860 Sep. 05, 1978
Hoge 4,350,655 Sep. 21, 1982
Nomura 2002/0059706 A1 May 23, 2002
Neogi 2004/0001940 A1 Jan. 01, 2004
Maine ‘382 2005/0192382 A1 Sep. 01, 2005
Maine ‘348 2006/0057348 A1 Mar. 16, 2006

Appellants’ claimed invention is directed to an article of manufacture
comprising an oriented polymer composition comprising at least one semi-
crystalline orientable polymer and an inorganic filler. The oriented polymer
composition has the recited values for density, flexural modulus, cross
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section, delamination force and void volume proximate to the inorganic
filler.
The appealed claims stand finally rejected as follows:
(a) claims 1, 2, 4, and 5 under 35 U.S.C. § 102(b) as being
anticipated by Neogi,
(b) claims 1, 4, and 5 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over Nomura,
(c) claims 1, 2, 4, and 5 as being unpatentable under 35 U.S.C.
§ 103(a) over Maine ‘382 in view of Maine ‘348, Hoge and
Jack,
(d) claims 1, 2, 4 and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Neogi in view of Maine ‘348, Hoge and
Jack, and
(e) claims 1, 4, and 5 are provisionally rejected on the ground of
non-statutory obviousness-type double patenting as being
unpatentable over claims 1-20 of co-pending application US
Serial No. 12/326,129.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we will sustain rejections (a), (d),
and (e) set forth above. However, we will not sustain rejections (b) and (c).
We consider first the § 102 rejection of all the appealed claims over
Neogi. There is no dispute that Neogi teaches an article of manufacture that
is an oriented polymer composition comprising the claimed polymer and
inorganic filler. Neogi exemplifies an oriented product having a density of
about 0.510g/cc, which density falls within the claimed range, but the
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exemplified filler is wood, not the claimed inorganic filler also disclosed by
the reference. Neogi does not exemplify the use of inorganic filler and is
silent with respect to the density of the product when the disclosed inorganic
filler is used. It is the Examiner’s position that since Neogi teaches “the
claimed composition and disclosed method of drawing the oriented polymer
composition[, the reference oriented product] will inherently have the
claimed properties” (Ans. 4, first para.). Appellants, on the other hand,
contend that their process of making the oriented product is different than
the Neogi process.
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product. See In
re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the present case, we concur
with the Examiner that the Neogi process for making an oriented polymer
composition is substantially the same as the process disclosed by Appellants.
Appellants erroneously state that “[i]n contrast to a solid state drawing
process, Neogi only discloses using an extrusion method” (Reply Br. 4, last
para.). However, rather than disclosing only an extrusion process, Neogi
discloses a pultrusion process wherein “the composite material is grasped by
a mechanical clamp 16 or other pulling means and pulled in the longitudinal
direction of extrusion” which orients the polymer composition (para.
[0006]). Since Appellants disclose that “[t]he solid state drawing process of
the present invention involves drawing a polymer composition containing an
inert inorganic filler and a continuous phase of one or more orientable
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polymer” (Spec. 20, ll. 17-20), it can be seen that both Appellants and Neogi
employ a drawing process for orienting the polymer composition.
Appellants also maintain that their process and the Neogi process use
different drawing temperatures which affect the density of the final product.
Appellants submit that “Neogi teaches a drawing temperature that is 10°C
below the drawn polymer’s softening temperature while Applicant’s process
requires a drawing temperature 15-40°C below the polymer’s softening
temperature” (App. Br. sentence bridging 9-10). However, Appellants’
Specification does not teach that the drawing temperature must be at least
15°C below the polymer’s softening temperature. Rather, Appellants’
Specification discloses that “[t]he drawing temperature is more than ten
degrees Celsius (°C) below the Ts of the polymer composition” (p. 20, ll. 27-
28). Consequently, Appellants’ Specification teaches that a drawing
temperature that is 11°C below the polymer’s softening temperature
produces an oriented polymer composition having the claimed properties,
including density. Since Neogi discloses a drawing temperature of “about
150°C” for polypropylene which has a melting of about 160°C, we agree
with the Examiner that the reference provides a description of a drawing
temperature that is more than 10 degrees below the softening temperature of
the polymer composition. We note that Appellants acknowledge that the
reference fairly teaches a drawing temperature of 12 or 13°C lower than the
softening temperature of the polymer composition (see App. Br. 11, first full
para.).
Accordingly, based on the close correspondence between the
processing conditions for making the oriented polymer products of Neogi
and Appellants using, admittedly, the same polymer composition, we find no
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error in the Examiner’s conclusion that the oriented polymer product of
Neogi would exhibit the claimed density and other properties. Appellants
have presented no objective evidence to persuade us otherwise. The Nichols
affidavit under 37 C.F.R. § 1.132 is directed to the Maine ‘382 reference and
is, therefore, not germane to the rejection over Neogi.
We will not sustain the Examiner’s § 102 and § 103 rejections over
Nomura. As emphasized by Appellants, Nomura does not disclose an
oriented polymer composition but, instead, teaches “an injection molding
process of a molten polymer, which is incapable of producing oriented
polymer chains” (App. Br. 14, penultimate para.). Appellants’ Specification
defines an oriented polymer composition as one that “comprises polymer
molecules that have a higher degree of molecular orientation than that of a
polymer composition extruded from a mixer” (p. 11, ll. 20-23). The
Examiner responds that “a polymer composition extruded from a mixer has a
degree of orientation and is therefore an oriented polymer composition”
(Ans. 15, third para.). However, while an extruded polymer may have a
degree of orientation, it does not have the level of orientation required by the
appealed claims. Also, since the polymer product of Nomura is not made by
the same process used by Appellants, there is no basis for the Examiner’s
finding that the reference product has the claimed flexural modulus and
delamination force.
We will also not sustain the Examiner’s rejection of the appealed
claims over Maine ‘382 in view of Maine ‘348, Hoge, and Jack. Maine ‘382
exemplifies a process of orienting a polymer composition comprising wood
filler that has a density within the claimed range. However, Appellants’
affidavit demonstrates that when the wood filler of Maine ‘382 is replaced
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by the inorganic fillers disclosed by Maine, a density of less than the
claimed 0.8 grams per cubic centimeter is not achieved. While the Examiner
cites a secondary reference to show that process parameters of Maine ‘382
can be modified to achieve a lower density, Appellants properly point out
that “[t]he Examiner fails to take into account how the methods he proposes
will affect other claimed properties of the final article (for example,
delamination force and flexural modulus)” (App. Br. 18, last para.). The
Examiner has not refuted Appellants’ arguments that the modifications of
Maine ‘382 proposed by the Examiner have a low likelihood of achieving
the claimed oriented polymer composition exhibiting the recited density,
flexural modulus, cross sectional dimensions and delamination force.
As for the § 103 rejection of the appealed claims over Neogi in view
of Maine ‘348, Hoge and Jack, since we have sustained the § 102 rejection
of the appealed claims over Neogi, it follows that we will also sustain the
§ 103 rejection using Neogi as a primary reference.
Appellants have not presented an argument against the Examiner’s
double patenting rejection of claims 1, 4, and 5. Accordingly, we will
summarily affirm this rejection.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims 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)(v).
AFFIRMED

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