Ex parte ONG et al.

Board of Patent Appeals and Interferences

Apr 22, 1999

08083866 (B.P.A.I. Apr. 22, 1999)

Application for patent filed June 28, 1993. According to appellants, this application is a continuation of1
Application 07/734,989, filed July 24, 1991, now abandoned, which is a continuation-in-part of Application
07/665,054, filed March 06, 1991, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte S. CHRISTINE ONG, SANDRA D. SCHREGENBERGER
and PRADEEP P. SHIRODKAR
____________
Appeal No. 96-0359
Application No. 08/083,8661
____________
HEARD: March 12, 1999
____________
Before JOHN D. SMITH, WALTZ, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
3, 4, 6, 8, 9, 13 and 14. Claims 10 through 12, the only other claims pending in the application, have
been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as not readable on the elected
invention.
Appeal No. 96-0359
Application No. 08/083,866
We AFFIRM.
Appeal No. 96-0359
Serial No. 08/083,866
Page 3
BACKGROUND
The appellant's invention relates to an ethylene polymer blend for blown film production
consisting essentially of a high molecular weight (HMW) component and a relatively low molecular
weight (LMW) component wherein the blend and the individual components have defined properties.
According to appellants, films with good mechanical properties, e.g., Dart
Drop Impact Resistance and Elmendorf Tear, are obtainable if, in addition to the necessary properties
of density, flow index and melt flow index, the polymer blend used to make the film also has a relatively
low dynamic elasticity which, in turn, requires its HMW component to have a molecular weight
distribution, expressed as a flow ratio, of no greater than 15 (Brief pages 2-3).
Claim 14 is illustrative of the claimed subject matter and reads as follows:
14. A blend for blown film production, wherein the blend exhibits a density of
about 0.940 to 0.960 g/cc, an I of about 4 to 12 g/10 min., a MFR of about 75 to21
180, and a dynamic elasticity of about 0.45 to 0.65 at a corresponding complex
viscosity of about 6E5 to 14E5 poises, wherein the blend consists essentially of
at least about 0.5 weight fraction of a relatively high molecular weight (HMW)
component having a density of at least about 0.910 g/cc, a flow index or high load melt
index (I ) of no higher than about 0.8 g/10 min., a molecular weight distribution21
indicated by a flow ratio (FR) no higher than about 15, and a dynamic elasticity at 0.1
rad./sec., of no higher than about 0.75 at a corresponding complex viscosity at 0.1
rad./sec. of no higher than about 7E6.; and
a relatively low molecular weight (LMW) component having a density of at
least about 0.940 g/cc and a melt index (I ) of at least about 100 g/10 min2
wherein each of said relatively high molecular weight (HMW) component and
said relatively low molecular weight (LMW) component is selected from the group
consisting of a homopolymer of ethylene and at least one copolymer of a
preponderance of ethylene with a minor amount of a 1-olefin containing 3 to about 10
Appeal No. 96-0359
Serial No. 08/083,866
Lee was filed July 2, 1991 as a continuation of Application 07/271,639, filed November 16, 1988, now U.S.2
Patent No. 5,047,468. Thus, Lee is a proper prior art reference.
Page 4
carbon atoms as comonomer, said film exhibiting a Dart Drop Impact resistance (F ,50
ASTM D1709) of 250 to 600 grams.
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Bailey et al. (Bailey) 4,461,873 Jul. 24, 1984
Lee et al. (Lee) 5,126,398 Jul. 30, 19922
The prior art reference relied upon by this Merits Panel is:
Kirk-Othmer ENCYCLOPEDIA OF CHEMICAL TECHNOLOGY, third edition, volume 16,
Herman F. Mark et al., editors, published in 1981 by John Wiley & Sons, New York, pages
388-390. (Kirk-Othmer)
ISSUES
The issues presented for review are: (1) whether the examiner erred in rejecting claims 3, 4, 6,
8, 9, 13 and 14 under 35 U.S.C. § 103 as unpatentable over Bailey, (2) whether the examiner erred in
rejecting claims 3, 4, 6, 8, 9, 13 and 14 under 35 U.S.C. § 103 as unpatentable over Lee, and (3)
whether the examiner erred in provisionally rejecting claims 3, 4, 6, 8, 9, 13 and 14 as being
unpatentable over claims 1-6 and 12-14 of copending application 08/083,864.
According to the examiner, the prior rejection of claims 3, 4, 6, 8, 9, 13 and 14 under
35 U.S.C. § 102(b) as anticipated by Bailey has been withdrawn (Answer page 2).
DELIBERATIONS
Appeal No. 96-0359
Serial No. 08/083,866
Page 5
Our deliberations in this matter have included evaluation and review of the following materials:
(1) the instant specification, including all of the claims on appeal, (2) appellants' Appeal
Brief (paper no. 25), (3) the Examiner's Answer (paper no. 26), (4) the appellants' Reply Brief (paper
no. 28), (5) the above-cited prior art references, and (6) the pending claims in Application 08/083,864.
OPINION
1. Rejection of claims 3, 4, 6, 8, 9, 13 and 14 under 35 U.S.C. § 103 as unpatentable over Bailey
At the outset, we note that appellants state claims 6 and 13 should be considered independently
(Brief page 3). Accordingly, dependent claims 3, 4, 8 and 9 will stand or fall with independent claim
14. Claims 6 and 13 will stand or fall individually.
We have carefully reviewed each of appellants’ arguments for patentability, as well as the
affidavit evidence relied upon in support thereof. However, we concur with the examiner that the
claimed subject would have been obvious to one of ordinary skill in the art within the meaning of § 103
in view of Bailey. Accordingly, we will sustain the rejection of claims 3, 4, 6, 8, 9, 13 and 14 as
unpatentable over Bailey for essentially those reasons expressed in the Answer.
Bailey describes ethylene polymer blends of a high molecular weight (HMW) component,
preferrably an ethylene-mono-1-olefin copolymer, and a low molecular weight (LMW) component,
preferrably an ethylene homopolymer, useful in manufacturing films or in blow molding techniques
(abstract). The following tables summarize the properties for the claimed blend and its HMW and
LMW components and for Bailey's blend and his HMW and LMW component, generally (Tables I
Appeal No. 96-0359
Serial No. 08/083,866
The specification defines "melt flow ratio" or MFR as (high load melt index)/(melt index) using a high3
load of 21 kg versus a melt load of 2 kg (page 6). Bailey uses slightly different loads, i.e. a high load of 21.6 kg verus
a melt load of 2.16 kg (column 3, lines 26-29).
See Answer page 3, fn. 1.4
According to Bailey, example 11 blend has an I of 5.0 and an I of 0.06 (Table XVI, column 22), which5 21.6 2.16
would provide an I /I of 83.21.6 2.16
Page 6
and III; column 3, lines 24-35), preferably (Tables I and III; column 3, lines 24-35), and example 11,
which exhibits "excellent impact properties" (Tables XV and XVI; column 22, lines 32-42).
Table A -- Blend Properties
Property Claim 14 Bailey's generally Bailey's preferred Bailey's example 11
density, g/cc about 0.940 to 0.960 0.940-0.965 0.950-0.960 0.9578
HLMI (I ), about 4 to 12 3-34 5-12 5.021
g/10 min.
MFR (I /I ) about 75 to 180 not given, but not given not given21 2 3
calculated at 5-
34004
5
dynamic elasticity about 0.45 to 0.65 not given not given not given
at a complex
viscosity of about
6E5 to 14E5 poises
weight fraction at least about 0.5 0.40 to 0.70 about 0.50 to about 0.50
HMW component 0.55
dart drop of blown 250-500 formula provided at formula provided at 240
film product thereof, column 26, line 56 column 26, line 56
g
Table B -- HMW component Properties
Property Claim 14 Bailey's generally Bailey's preferred Bailey's example 11
density, g/cc at least about 0.910 about 0.930-0.955 about 0.930-0.945 0.9360
Appeal No. 96-0359
Serial No. 08/083,866
The specification defines "flow ratio" as (high load melt index)/(intermediate load melt index) using a high6
load of 21 kg and an intermediate load of 5 kg (page 8).
Page 7
HLMI (I ) no higher than 0.1-1.5 0.2-0.6 0.2421
about 0.8
flow ratio (I /I ) no higher than not given not given not given21 5 6
about 0.8
dynamic elasticity no higher than not given not given not given
at a complex about 0.75
viscosity at 0.1
rad./sec. of no
higher than about
7E6
Table C -- LMW component Properties
Property Claim 14 Bailey's generally Bailey's preferred Bailey's example 11
density, g/cc at least about 0.940 about 0.945-0.975 about 0.950-0.975 0.9690
MI (I ), g/10 min. at least about 100 45-300 100-300 1082
Using multiple regression analysis, Bailey also concluded that the dart drop impact resistance of a blend
is significantly dependent on the density and HLMI of the HMW component, and provides a formula
for dart impact values (column 26, line 57 through column 27, line 8).
When a claimed product and a prior art product reasonably appear to be substantially the
same, the burden is shifted to the applicant to prove with objective evidence that the product of the
prior art does not necessarily have the characteristics attributed to the claimed product. In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255,
Appeal No. 96-0359
Serial No. 08/083,866
For example, Bailey’s example 11 produced a film which had a measured dart drop of 240 g., but a7
“predicted” dart drop of only 216 g.
Page 8
195 USPQ 430, 433-34 (CCPA 1977). In the present case, we find that the ethylene blends of Bailey
sufficiently correspond to appellants' claimed ethylene blends to require appellants to
establish on this record that ethylene blends within the scope of the appealed claims are patentably
distinct from the ethylene blends fairly taught by Bailey. However, in our view, appellants have not met
their burden.
Appellants argue that using the most "optimistic" HMW component data in Bailey, i.e., a density
of 0.930 and a HLMI of 0.1, Bailey's regression equation, at best, predicts a maximum dart drop value
of only 239, while claim 14 requires a dart drop range of 250 to 600 (Brief pages 3-6, 11-12;
Shirodkar II (affidavit executed January 13, 1995) at pages 1-2). However, a “predicted” value is an
estimated value. Moreover, we agree with the examiner that it would have been obvious to one of7
ordinary skill in the art to adjust the density and HLMI of the HMW component to optimize the dart
drop value given its significant dependency on the density and HLMI of the HMW component as
disclosed by Bailey’s regression model at column 26, line 57 through column 27, line 8 (Answer pages
11-12). In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Appellants also argue Bailey's regression model does not predict the dart drop values actually
obtained in the examples of the specification (Brief pages 3-6, 8-12, 16-17; Shirodkar I (affidavit
Appeal No. 96-0359
Serial No. 08/083,866
Page 9
executed March 19, 1993) at pages 1-3). However, appellants have not shown that Bailey's
regression model is equally applicable to the experimental data in the examples of the specification. No
direct comparison has been made between a film made from the claimed ethylene blend and a film
made from Bailey's ethylene blend under identical manufacturing conditions. There is no showing that
the specification data was obtained under identical experimental conditions, etc. and, if not, what the
effects of any differences might be on the measured data. For example, Bailey used different load
amounts in obtaining his HLMI data. Moreover, appellants have not shown that any difference
between the "predicted" result and the "measured" result is an "unexpected" difference. Appellants have
the burden of explaining the data. Therefore, based on this record, we find appellants' arguments and
the Shirodkar I and II affidavits lack sufficient probative value to overcome this rejection.
Appellants argue Bailey fails to mention "elasticity" (Brief page 6). However, appellants have
not proferred the requisite objective evidence to establish that Bailey's ethylene blend and HMW
component do not have the claimed elasticity.
Appellants argue Bailey is not enabled for the production of HMW and LMW components
used to make his blends, especially in regard to claim 13 (Brief pages 6-8 and 11-16). Thus appellants
argue that Bailey does not describe the process limitations nor the product limitations therein (Brief
page 3; Reply Brief page 1).
Given Bailey's disclosure of using a high activity titanium/magnesium catalyst in conjunction with
an organoaluminum cocatalyst to produce the HMW or LMW polymer components (column 3, lines
Appeal No. 96-0359
Serial No. 08/083,866
Page 10
54-62; column 5, lines 27-33), we are convinced the Bailey patent disclosure is an enabling prior art
reference. A U.S. patent, e.g., Bailey, is presumed valid
(35 U.S.C. § 282), and this presumption of validity applies to the patent's disclosure as well as to each
of its claims. In re Spence, 261 F.2d 244, 246, 120 USPQ 82, 83 (CCPA 1958). Further, in an
obviousness assessment, skill is presumed on the part of the artisan, rather than the lack thereof. In re
Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985). After reviewing all the evidence
of record on the issue of enablement of the Bailey patent, it is our judgment that appellants have not
provided sufficient evidence to establish that Bailey is a non-enabling disclosure with respect to the
production of HMW and LMW components and blends as described.
We treat product-by-process claim 13 separately. The patentability of a product-by-process
claim is based on the product itself. Where, as here, a product-by-process claim is rejected over a
prior art product that appears to be the same or similar to the claimed product, although produced by a
different process, the burden is on applicants to produce evidence establishing an unobvious difference
between the claimed product and the prior art product. In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (Fed. Cir. 1985); In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir.
1983). Appellants have not proferred the requisite objective evidence to establish that the claimed
process of preparation produces an unobvious difference, e.g. in property, between the claimed
product and ethylene polymer blend product of Bailey.
Appeal No. 96-0359
Serial No. 08/083,866
For example, Lee states melt flow ratio is the ratio of flow index to melt index, where flow index is8
determined under ASTM D-1238 and is measured at 10 times the weight used in determining the melt index (column
5, lines 14-20). Bailey also uses ASTM-1238 to determine melt index at a weight or "load" of 2.16 kg and high load
melt index at a 10 times higher load of 21.6 kg.
Page 11
Appellants argue Bailey does not provide melt flow ratio (MFR) data and the examiner's use of
calculations "based on relationships described in applicants' specification" is hindsight (Reply Brief
pages 5-6 and 18). However, "melt flow ratio" appears to be a recognized term of art. Secondly,8
appellants have not offered any objective evidence to establish that Bailey's polymers do not necessarily
possess the claimed melt flow ratios. The Tong affidavit, executed April 5, 1993 for copending
application '864 and made of record in this application, acknowledges that polydispersity index and
melt flow ratio both provide information on molecular weight distribution, although they can have
different biases (page 2). However, since the blends of Bailey would appear to have the same or
similar polydispersity index and melt flow ratio properties to that claimed, they would also appear to
have the same or similar molecular weight distribution. The Tong affidavit does not directly compare
the claimed blend and Bailey's blend to establish Bailey's blend lacks the claimed melt flow ratio.
Although appellants rely on "calculated" comparisons, appellants have not provided any reasoning to
show that one of ordinary skill in the art would have reasonably expected Bailey's regression model
equations to be equally applicable to the experimental data in the specification. There is no showing
that the specification's experimental data was obtained under identical experimental conditions to Bailey
or, if not, what the effects of any differences might reasonably be expected to be. The argument that
Appeal No. 96-0359
Serial No. 08/083,866
Page 12
Bailey does not suggest the claimed products because Bailey does not provide flow ratio data is not
evidence.
As to claim 6, appellants argue Bailey does not disclose or suggest the specific blend MFR
range of 80-150 (Brief page 3). For the reasons supra, we find the examiner had a reasonable basis
for believing the blend MFR range of "about 80 to 150" recited in claim 6 fell within Bailey's generic
disclosure (Answer page 7). We also note that appellants have not shown criticality in the claimed
blend MFR range of "about 80 to 150" by evidence of unexpected results. In re Wertheim, 541 F.2d
257, 267, 191 USPQ 90, 100 (CCPA 1976). Therefore, based on this record, we are constrained to
sustain the examiner's rejection of claim 6 as unpatentable over Bailey.
The rejection of claims 3, 4, 6, 8, 9, 13 and 14 under 35 U.S.C. § 103 as unpatentable over
Bailey is sustained.
2. Rejection of claims 3, 4, 6, 8, 9, 13 and 14 under 35 U.S.C. § 103 as unpatentable over Lee
At the outset, we note that appellants state claims 6 and 13 should be considered independently
(Brief page 3). Accordingly, dependent claims 3, 4, 8 and 9 will stand or fall with independent claim
14. Claims 6 and 13 will stand or fall individually.
We have carefully reviewed each of appellants’ arguments for patentability, as well as the
affidavit evidence relied upon in support thereof. However, we concur with the examiner that the
claimed subject would have been obvious to one of ordinary skill in the art within the meaning of § 103
Appeal No. 96-0359
Serial No. 08/083,866
According to Lee, melt flow ratio is defined as (flow index)/(melt index) wherein the flow index is9
determined using ten times the weight used in determining the melt index (column 5, lines 13-20).
Page 13
in view of Lee. Accordingly, we will sustain the rejection of claims 3, 4, 6, 8, 9, 13 and 14 as
unpatentable over Lee for essentially those reasons expressed in the Answer.
Lee discloses a process for in situ blending of polymers comprising continuously coating under
polymerization conditions, a mixture of ethylene and one or more alpha-olefins having at least 3 carbon
atoms in at least two fluidized bed reactors connected in series, using the same catalyst as recited in
claim 13, such that an ethylene copolymer having a high melt index [i.e., LMW component] is formed in
one reactor and an ethylene copolymer having a low melt index [i.e., HMW component] is formed in
another reactor (see columns 2-4). The following table summarizes some of the claimed reaction
conditions versus corresponding conditions disclosed in Lee's Example 3 (Table bridging columns 7-
10).
reactor condition claimed HMW Lee's HMW claimed LMW Lee's LMW
production production ex. 3 production production ex. 3
sequence position first second second first
hydrogen/ethylene no higher than 0.0443 at least about 0.9 & 1.93
molar ratio about 0.3 at least about 8.0
times that in the
HMW reactor
ethylene partial no higher than 147 psia at least about 1.2 73 psia
pressure about 100 psia times that in the
HMW reactor
Example 3 (Table bridging columns 9-10) also discloses an ethylene polymer blend having a density of
0.922 g/cc, a flow index of 11.6 g/10 min., and a melt flow ratio of 51. 9
Appeal No. 96-0359
Serial No. 08/083,866
Page 14
According to the examiner, in regard to appealled claim 13, (1) the claimed blend MFR
overlaps with Lee's disclosure since each polymer component of Lee may individually have an MFR of
about 20 to about 70 (column 2, especially lines 40-41) and the term "about" allows some latitude, (2)
the claimed blend density overlaps with Lee's disclosure because each copolymer may have an
individual density up to about 0.965 (column 2, lines 38-40), (3) one
would reasonably presume Lee's polymer would have the claimed dynamic elasticity in view of the
similarities between the processes of Lee and appellants' claim 13, and (4) appellants have not shown
that the process limitations of claim 13 give rise to unexpected results in the product, given that Lee
teaches the order of producing the HMW and LMW components can be reversed (Answer pages 8-
10). As to claim 6, the examiner states, "the claimed 'about...10 g/10 min.' reads on Lee's 11.6 g/10
min." (Answer page 10).
Appellants argue (1) the claimed high density polyethylene blend density range with a lower
limit of 0.940 excludes the linear low density polyethylene blends of Lee, (2) Lee fails to describe a
melt flow ratio of 80 to 150 as required by claim 14, (3) Shirodkar II states Lee is not directed to any
particular product, i.e. film or blow molding, and the skilled artisan would not know how to produce a
film with superior impact properties based on Lee's disclosure, (4) Lee not only does not enable
making the HMW component of the claims, but also reverses the HMW and LMW formation reactors
in the claimed process, and (5) Lee does not describe elasticity or dynamic elasticity (Brief pages 18-
21; Reply Brief pages 1-4).
Appeal No. 96-0359
Serial No. 08/083,866
Page 15
First, Table 3 on page 389 in Kirk-Othmer indicates that LLDPE fluid bed gas phase
manufacturing processes can yield LLDPE with densities from 0.918-0.94 g/cm . Thus, it is not clear3
that a polyethylene blend density with a lower limit of "about 0.940" necessarily excludes the
polyethylene blends of Lee, especially since, as noted by the examiner, the individual density of each
component HMW and LMW polymer may be as high as 0.965 g/cc. which overlaps with the claimed
density values (in Lee see column 2, lines 38-40; Answer page 15). Second, we agree with the
examiner that the claimed blend MFR overlaps with Lee's disclosure since each polymer component of
Lee may individually have an MFR of about 20 to about 70 (column 2, especially lines 40-41) and the
term "about" allows some latitude (Answer page 9). Third, Lee also appears to be concerned with the
production of LLDPE resins suitable for film production (e.g., " [t]he bulk of LLDPE is used in film
production" (column 1, lines 37-38) and the discussion of film production methods in the paragraph
bridging columns 1-2). Further, skill is presumed on the part of the artisan, rather than the lack thereof.
In re Sovish, supra. Fourth, as indicated supra, a U.S. patent (e.g., Lee) and its disclosure are
presumed valid (35 U.S.C. § 282), and this presumption of validity applies to the patent's disclosure as
well as to each of its claims. In re Spence, supra. After reviewing all the evidence of record on the
issue of enablement of the Lee patent, it is our judgment that appellants have not provided sufficient
evidence to establish that Lee is a non-enabling disclosure with respect to the production of HMW and
LMW components and blends as described. Finally, when a claimed product and a prior art product
reasonably appear to be substantially the same based on a similarity of reactants, reaction conditions
Appeal No. 96-0359
Serial No. 08/083,866
Page 16
and properties, the burden is shifted to the applicant to prove with objective evidence that the product
of the prior art does not necessarily possess the characteristics attributed to the claimed product. In re
Spada, supra. In the present case, we find that the ethylene blends of Lee sufficiently correspond to
appellants' claimed ethylene blend to require appellants to establish on this record that ethylene blends
within the scope of the appealed claims are patentably distinct from the ethylene blends fairly taught by
Lee. However, in our view, appellants have not met their burden.
At page 18 of the Brief, appellants argue claim 6 "which refers to MFR of 80 to 150 is not
described or enabled by the Lee disclosure." However, we agree with the examiner "the claimed
'about...10 g/10 min.' reads on Lee's 11.6 g/10 min." (Answer page 10) and find that Lee is an enabling
disclosure for the reasons discussed above.
Finally, at pages 18 and 20 of the Brief, appellants argue the process parameters in Lee are
different from those of claim 13, specifically Lee calls for the lowest ethylene partial pressure in the zone
in which the HMW component is made. In other words, Lee reverses the two reactors used in the
claimed process (Reply Brief page 2).
As discussed in the obviousness rejection based on Bailey above, the patentability of a
product-by-process claim is based on the product itself and in cases where a product-by-process claim
is rejected over a prior art product that appears to be the same or similar to the claimed product,
although produced by a different process, the burden is on applicants to produce evidence establishing
an unobvious difference between the claimed product and the prior art product. We agree with the
Appeal No. 96-0359
Serial No. 08/083,866
Page 17
examiner that appellants have not proferred the requisite objective evidence to establish that the claimed
process of preparation produces an unobvious difference, e.g. in property, between the claimed
product and ethylene polymer blend product of Lee (Answer page 15). Moreover, Lee explicitly
discloses that the two reactors used in the ethylene blend production process can be reversed
(paragraph bridging columns 4-5).
Therefore, based on this record, we sustain the examiner's rejection of claims 3, 4, 6, 8, 9, 13
and 14 under 35 U.S.C. § 103 as unpatentable over Bailey is sustained.
3. Rejection of claims 3, 4, 6, 8, 9, 13 and 14 under the judicially created doctrine of
obviousness-type double patenting over copending application 08/083,864.

The examiner states
Claims 3, 4, 6, 8, 9, 13, and 14 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over the
claims of copending application Serial No. 08/083,864. Although the conflicting claims
are not identical, they are not patentably distinct from each other because the two sets
of claims overlap significantly in terms of the properties. Since the products are made
by similar processes, it follows that they would possess substantially the same
properties. In re Sussman, 60 USPQ 538 (CCPA 1944).
This is a provisional obviousness-type double patenting rejection because the
conflicting claims have not in fact been patented. (Answer page 11)
Appellants argue (1) the appealed claims are for film production and the title of copending '864
application includes a reference to resins for blow molding, (2) the rejection is premature, and (3)
without a factual basis, because (i) the claims of copending '864 require polydispersity index values not
recited in the instant claims, (ii) the instant claims require elasticity values not recited in the copending
Appeal No. 96-0359
Serial No. 08/083,866
Page 18
'864 claims, (iii) the instant claims recite a FR of no higher than about 15, whereas the claims of
copending '864 recite a FR greater than 10 (claim 1 of '864) and 10 to 30 (claim 5 of '864), and (iv)
the claims of copending '864 are silent as to "film" production and dart drop measurements (Brief pages
21-23, Reply Brief page 17).
These arguments are not persuasive. It appears that the same ethylene blends can be used for
either the manufacture of film or in blow molding techniques (see, e.g., Bailey's abstract). Secondly,
"provisional" rejections of the sort here involved are authorized by MPEP § 804 and have been
sanctioned by this Board (see, e.g., Ex parte Karol, 8 USPQ2d 1771 (Bd. Pat. App. & Int. 1988))
and by the predecessor of our reviewing court (see e.g., In re Wetterau, 356 F.2d 556, 557-58, 148
USPQ 499, 501 (CCPA 1966)). Third, merely reciting a new property or use of a product does not
make that product unobvious over another identical or substantially identical product. Titanium Metal
Corp. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 777-78 (Fed. Cir. 1985). Here, the significant
overlap of blend density, high load melt index and melt flow ratio, together with the significant overlap
of HMW component weight fraction, density high load melt index and flow ratio as well as the overlap
of LMW component density and melt index between the two sets of claims provides a reasonable basis
for believing the ethylene polymer blends of the two copending applications are identical or substantially
identical.
Appeal No. 96-0359
Serial No. 08/083,866
Page 19
In light of the foregoing, we shall sustain the examiner's provisional obviousness-type double
patenting rejection of claims 3, 4, 6, 8, 9, 13 and 14 over claims 1-6 and 12-14 of copending
application 08/083,864.
OTHER MATTERS
In the event of further prosecution, appellants and the examiner are advised to consider whether
the oath in this continuation-in-part application complies with 37 C.F.R. §§ 1.53 and 1.56.
CONCLUSION
In summary, (1) the rejection of claims 3, 4, 6, 8, 9, 13 and 14 under 35 U.S.C. § 103 as
unpatentable over Bailey is sustained, (2) the rejection of claims 3, 4, 6, 8, 9, 13 and 14 under
35 U.S.C. § 103 as unpatentable over Lee is sustained, and (3) the provisional rejection of claims 3, 4,
6, 8, 9, 13 and 14 as being unpatentable over claims 1-6 and 12-14 of copending application
08/083,864 is sustained.
Accordingly, 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 CFR § 1.136(a).
AFFIRMED
Appeal No. 96-0359
Serial No. 08/083,866
Page 20
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
CAS/kis
Alexander J. McKillop
MOBIL OIL CORPORATION
Office of Patent Counsel
3225 Gallows Road
Fairfax, VA 22037
APPEAL NO. 96-0359 - JUDGE SPIEGEL
APPLICATION NO. 08/083,866
APJ SMITH, JOHN D.
APJ WALTZ
APJ SPIEGEL
DECISION: xxxxED
Prepared By: S. Davis
DRAFT TYPED: 18 Jan 02
FINAL TYPED: