12444150 (P.T.A.B. Feb. 10, 2015)

Ex Parte Page

Patent Trial and Appeal BoardFeb 10, 2015

12444150 (P.T.A.B. Feb. 10, 2015)

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. 12/444,150 02/22/2010 Charles Page 1200621 N US 6672 35227 7590 02/11/2015 POLYONE CORPORATION 33587 WALKER ROAD AVON LAKE, OH 44012 EXAMINER SCOTT, ANGELA C ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 02/11/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHARLES PAGE ____________________ Appeal 2013-004636 Application 12/444,150 Technology Center 1700 ____________________ Before FRED E. McKELVEY, CHUNG K. PAK, and ROMULO H. DELMENDO, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL 37 C.F.R. § 41.50 Statement of the Case PolyOne Corporation (“Appellant”), the real party in interest (Brief, page 3), 1 seeks review under 35 U.S.C. § 134(a) of a final rejection dated 29 February 2012. 2 We have jurisdiction under 35 U.S.C. § 134(a). 3 The application on appeal was filed in the USPTO on 22 February 2010. 4 Appellant relies on International Application PCT/US07/79960, filed 5 28 September 2007, which entered the national stage (on 22 February 2010) as to 6 the United States. 35 U.S.C. § 371. 7 Appeal 2013-004636 Application 12/444,150 2 Appellant also claims priority of U.S. Provisional Application 60/828,362, 1 filed 5 October 2006. 2 The application has been published as U.S. Patent Application Publication 3 2010/0160545 A1 (24 June 2010). 4 The Examiner relies on the following evidence. 5 Agethen et al. “Agethen” U.S. Patent 5,565,271 15 Oct. 1996 Yamashita et al. “Yamashita” U.S. Patent 6,106,952 22 Aug. 2000 Ho et al. “Ho” U.S. Patent Application Publication 2008/0199704 A11 21 Aug. 2008 filed 26 Apr. 2006 Appellant does not contest the prior art status of the Examiner’s evidence. 6 We mention the following additional evidence in this opinion. 7 Merquinsa Provisional Technical Data Sheet Pearlthane® D91T85 Sept. 2007 Claims on Appeal 8 Claims 1–9 are on appeal. Br., pages 8–10. 9 Appellant recognizes that dependent claim 4 is “inappropriate” [because it 10 broadens independent claim 1 contrary to 35 U.S.C. § 112(4)] and suggests that 11 1 The application has matured into U.S. Patent 8,765,263 B2 (1 July 2014). Appeal 2013-004636 Application 12/444,150 3 claim 4 “should be cancelled at the next opportunity.” Br., page 4:1–2. We agree 1 with Appellant and therefore will dismiss the appeal as to claim 4. 2 Appellant does not argue the separate patentability of claims 2–3 and 5–9 3 apart from claim 1. 4 Claims 2–3 and 5–9 therefore stand or fall with claim 1. 37 C.F.R. 5 § 41.37(c)(1)(iv). 6 Claim 1, which we reproduce from the Claim Appendix of the Appeal Brief 7 (page 8), reads: 8 Claim 1 9 A thermoplastic elastomer compound, comprising: 10 (a) styrenic block copolymer and 11 (b) aliphatic polycaprolactone thermoplastic polyurethane, 12 wherein the aliphatic thermoplastic polyurethane’s refractive 13 index is similar to the styrenic block copolymer’s refractive index, 14 resulting in the compound ranging from being translucent to 15 approaching ideal transparency. 16 The Rejection 17 Claims 1–9 have been rejected as being unpatentable under 35 U.S.C. 18 § 103(a) over the combination of Yamashita, Agethen, and Ho. Final Rejection, 19 page 2. 20 Appeal 2013-004636 Application 12/444,150 4 Invention 1 The invention “concerns a thermoplastic elastomer compound” (actually a 2 “composition”) comprising a blend of (1) a styrenic block copolymer and (2) an 3 aliphatic polycaprolactone thermoplastic polyurethane. Br., page 3. 4 A styrenic block copolymer is a block copolymer where at least one block is 5 polystyrene. 6 Aliphatic polycaprolactone thermoplastic polyurethanes are known materials 7 commercially available prior to Appellant’s invention. Specification, page 8, 8 Pearlthane D91T85; see also Merquinsa describing Pearlthane® D91T85 as an 9 aliphatic TPU (thermoplastic polyurethane) supplied in colorless natural pellets. 10 Analysis 11 The Examiner found that Yamashita teaches the combination of (1) styrene 12 block copolymers and (2) thermoplastic polyurethanes that can be made inter alia 13 from an aliphatic diisocyanate. Final Rejection, page 2, fourth full paragraph. 14 The finding is supported by the evidence. Yamashita, col. 4:18–23 (block 15 copolymer made from an aromatic compound); col. 5:7 (aromatic compound may 16 be styrene); col. 4:31–32 (thermoplastic polyurethane elastomer); col. 10:20–24 17 (polyurethane obtained through reaction of high molecular weight diol, organic 18 diisocyanate, and chain extender); and col. 11:17–18 (diisocyanate can be 19 hexamethylene diisocyanate—an aliphatic diisocyanate). 20 Yamashita also describes thermoplastic polyurethanes made from a 21 diisocyanate and a polyester diol (col. 10:51–63). The polyester diol may be made 22 by reacting (1) aliphatic organic acids, e.g., adipic acid (an aliphatic acid) 23 Appeal 2013-004636 Application 12/444,150 5 (col. 10:55), and (2) aliphatic organic diols, e.g., 1-4,butanediol (col. 10:60) or 1 polycaprolactone (col. 10:62–63).2 2 The Examiner also found that “transparency is a desired trait for some of the 3 uses of the [Yamashita] invention . . . .” Advisory Action (10 May 2012), page 2. 4 The finding is supported by the evidence. Yamashita, col. 25:35 5 (underwater glasses). 6 Examples 1–5 (col. 21) describe mixtures comprising: 7 (1) SEPS (a block copolymer with two polystyrene blocks); 8 (2) PU/SEPS (a polyurethane block copolymer); 9 (3) TPU 1180 (a polyester polyurethane elastomer having aliphatic 10 polyester as a soft segment) (col. 19:32-35); and 11 (4) paraffin oil (an ingredient that can be present in Appellant’s 12 composition) (Specification, ¶ 00026). 13 The precise configuration of the aliphatic portion of the polyester portion of 14 TPU 1180 is not described. However, one skilled in the art would have recognized 15 that (1) polycaprolactone diol is an aliphatic diol and (2) a polyester made from 16 polycaprolactone diol would be an aliphatic polyester. Use of a polyester made 17 from polycaprolactone diol would not be inconsistent with the teaching of 18 Yamashita. 19 The Examiner found that Yamashita does not describe the refractive indices 20 of the various components. As a result, the Examiner was unable to find that the 21 2 One skilled in the art would recognize that the word “polycaplolactone” (Yamashita, col. 10:62–63) is a typographical error which should read “polycaprolactone.” Cf., col. 9:62 where a reference is made to ε-caprolactone. Appeal 2013-004636 Application 12/444,150 6 Yamashita styrenic block copolymer and the aliphatic thermoplastic polyurethane 1 have similar refractive indices. Final Rejection, page 2, last paragraph. 2 In the Answer, the Examiner observed that claim 1 requires a “compound 3 ranging from being translucent to approaching ideal transparency.” Answer, 4 page 6. 5 The Examiner interpreted the phrase “approaching ideal transparency” to 6 mean “nearly transparent” and is given the same weight as “translucent.” 7 Based on an analysis of the Specification, we understand the Examiner to 8 have found that if similarity of refractive indices is a criteria for obtaining 9 transparency/translucency then the Yamashita compositions would have been 10 expected to have similar refractive indices given that a described use of those 11 compositions is in underwater glasses (Yamashita, col. 25:35). We have more to 12 say about refractive indices later in this opinion. 13 The Examiner recognized that Yamashita describes the use of both aromatic 14 and aliphatic diisocyanates. Answer, page 5. 15 The Examiner turned to Agethen to explain why one skilled in the art would 16 have had a reason to use an aliphatic diisocyanate when making the Yamashita 17 compositions that need to be transparent. Id. 18 Agethen describes the use of aliphatic diisocyanates, including 19 1,6-hexamethylene diisocyanate to make polyurethanes. Col. 4:26–28. 20 Agethen teaches that thermoplastic polyurethanes made from aliphatic 21 diisocyanates have “a highly amorphous structure, and thus excellent transparency 22 . . . .” Col. 10:6–15 (italics added). 23 Appeal 2013-004636 Application 12/444,150 7 The Examiner found that “Yamashita . . . does not teach that the aliphatic 1 thermoplastic polyurethane is an aliphatic polycaprolactone thermoplastic 2 polyurethane.” Answer, page 5. 3 We understand the Examiner to have found that Yamashita does not describe 4 a polyurethane embodiment made from polycaprolactone diol.3 5 Yamashita suggests, at least broadly, that the thermoplastic polyurethane 6 elastomer can be made from a polyester formed by reacting a diisocyanate and a 7 polycaprolactone diol. Col. 10:62–63. 8 The Examiner turned to Ho to explain why one skilled in the art would have 9 had a reason to use polyurethanes made from polycaprolactone diol. 10 Ho describes the use of a TPU [thermoplastic polyurethane] layer made from 11 a polycaprolactone-based TPU. Ho, ¶ 0016:12–14. 12 The layer is made via extrusion of the polycaprolactone-based TPU. Ho, 13 ¶ 0027:1–3. 14 Example 19 describes polyurethanes made inter alia from polycaprolactone 15 polyol (identified as Tone-305) and the aliphatic diisocyanate hexamethylene 16 diisocyanate (identified as Desmodur N75). An extruded film of the polyurethane 17 is said to be a “clear film.” Ho, page 6, col. 1:4. 18 The film can be used to make a laminate (page 6, col. 1:7), referred to as a 19 “multilayer film . . . [that] is typically transparent, and possibly even translucent 20 . . . .” (Ho, page 2, col. 2, ¶ 0022:1–2. 21 3 In the Final Rejection, the Examiner found that Yamashita does not teach “a reason to choose an aliphatic diisocyanate and more specifically, an aliphatic polycaprolactone thermoplastic polyurethane.” Page 2, fourth paragraph. Appeal 2013-004636 Application 12/444,150 8 The Examiner held that the subject matter of claim 1 would have been 1 obvious to a person having ordinary skill in the art. 2 The Examiner’s holding is supported by the evidence. 3 Yamashita broadly describes compositions that include a thermoplastic 4 polyurethane where the thermoplastic polyurethane may be made by reacting 5 (1) an aliphatic diisocyanate (including e.g., hexamethylene diisocyanate) and 6 (2) a polyester made from polycaprolactone diol. 7 The Examiner turned to other prior art to establish why one skilled in the art 8 would have had a reason to use both hexamethylene diisocyanate and a polyester 9 made from polycaprolactone diol. 10 The prior art establishes that Appellant has used known materials for their 11 intended purpose to achieve a predictable result. KSR Int’l Co. v. Teleflex, Inc., 12 550 U.S. 398, 415–416 (2007). We agree with the Examiner that the prior art 13 provides a reason for the using polymers called for by claim 1. Id. at 418. 14 Appellant alleges that it uses a different approach to achieve compatibility of 15 the styrenic and polyurethane polymers. Br., page 5. As a result, Appellant further 16 alleges that it is able to make a composition that is melt processable and has good 17 adhesion to polar surfaces. Neither property appears in claim 1. Moreover, we 18 agree with the Examiner that compatibility is not an issue. Answer, page 6. Both 19 the claimed compositions and the Yamashita compositions are compatible. 20 Yamashita, not Appellant, solved an earlier prior art compatibility problem. 21 According to Appellant, Yamashita is ignorant of, and in fact solved around, 22 the unique chemistry of the claimed “compound.” Br., page 5. How the unique 23 chemistry manifests itself in claim 1 escapes us given that Yamashita describes a 24 Appeal 2013-004636 Application 12/444,150 9 compatible combination of a styrenic block copolymer with a thermoplastic 1 polyurethane polymer. 2 Appellant also argues that the use of a specific polyurethane—an aliphatic 3 polycaprolactone polyurethane—achieves unexpected compatibility with styrenic 4 copolymers. Br., page 5. But, Yamashita teaches compatibility. 5 “To achieve translucency within a single blend . . . [the inventor] recognized 6 [that] the solution lay in finding a styrenic block copolymer and an aliphatic 7 thermoplastic polyurethane . . . [that] have similar refractive indices.” Br., page 6 8 (italics added). According to Appellant, Examples 1 and 2 (Specification, page 9, 9 Table 3) show success with aliphatic polycaprolactone thermoplastic 10 polyurethanes. Br., page 6. Further according to Appellant, making a translucent 11 “compound” from a blend of different polymers is unpredictable. Id. 12 Examples 1 and 2 describe “compounds” made from a styrenic polymer 13 (Kraton G 1650 or Kraton MD 6917) and Pearlthane® D91T85 (an aliphatic 14 polycaprolactone thermoplastic polyurethane). Specification, page 9, Table 3. 15 Example 3 describes the use of a polyether—as opposed to an aliphatic 16 polycaprolactone diol. Example 4, said to be a comparative example, describes the 17 use of an aromatic polycaprolactone. Results are described in Table 4: 18 Appeal 2013-004636 Application 12/444,150 10 Examples 1 and 2 are said to have produced “Good” transparency whereas 1 Example 3 is said to have produced “Translucent” properties. 2 Other reported properties are not claimed. 3 Appeal 2013-004636 Application 12/444,150 11 We understand the Examiner to have found that the transparency results are 1 entirely predictable. See, e.g., Answer, page 7 where the Examiner states “the 2 instant claims are predictable” (i.e., the claimed translucent to transparency 3 properties would not have been unexpected). Why? All the prior art relate to 4 transparent compositions. Furthermore, Agethen and Ho teach those skilled in the 5 art seeking transparent articles to use aliphatic diisocyanates and polycaprolactone 6 diols to make the thermoplastic polyurethane component. In other words, the 7 inventor’s “discovery” of a transparent “compound” is consistent with prior art 8 teachings. 9 Appellant calls our attention to the limitation in claim 1 relating to similar 10 refractive indices for the styrenic and polyurethane polymers (the inventor 11 “recognized the solution lay in finding a styrenic block copolymer and an aliphatic 12 thermoplastic polyurethane to have similar refractive indices.”). Br., page 6, 13 second full paragraph. 14 As noted earlier, the Examiner did not ignore the claimed limitation relating 15 to refractive indices and indeed recognized that the prior art does not describe any 16 refractive index for any particular polymer. Final Rejection, page 3, first full 17 paragraph. Furthermore, the Examiner recognized that searching the prior art for 18 refractive indices of materials is a difficult in the context of agency patent 19 application examination. Answer, page 7, second full paragraph. Notwithstanding 20 any search-related difficulty, ultimately the Examiner found that the prior art does 21 not need to describe refractive indices of the polymers in order to establish 22 obviousness of the claimed subject matter. Advisory Action, page 3, first full 23 paragraph. 24 Appeal 2013-004636 Application 12/444,150 12 We agree with the Examiner’s assessment. We know of four references 1 to “refractive index” in the Appellant’s Specification: (1) page 2, ¶ 00006, 2 (2) page 2,¶ 00009, (3) page 3:4, and (4) page 3:5. If refractive index is as 3 important as Appellant would have us believe, the absence of a description of the 4 refractive indices for the polymers used to make the “compounds” of Examples 1 5 and 2 is at least curious. Apparently to make a transparent article from a blend of 6 styrenic block copolymers and thermoplastic polyurethanes requires that both have 7 a similar refractive index—otherwise it would appear that transparency is not 8 achieved. See, e.g., Specification, ¶ 00006 discussing U.S. Patent 5,472,782, 9 which Appellant maintains is “always opaque, due to the immiscibility and 10 difference in refractive index . . . .” The PTO has no practical ability to test 11 polymers for the purpose of determining their refractive index. Thus, the 12 Examiner essentially found that if the prior art “compounds” are transparent, then 13 the styrenic and polyurethane polymers used to make those “compounds” more 14 than likely have a similar refractive index. Appellant did not come forward with 15 evidence revealing the refractive index of its own polymers, or the styrenic and 16 polyurethane polymers described by Yamashita, Agethen, or Ho. Since 17 Appellant’s “compound” and the compositions of the prior art are characterized as 18 being transparent, we find that the Examiner had a logical basis for assuming that 19 the refractive indices of the prior art polymers were the same and therefore the 20 absence of a discussion in the prior art of refractive indices is not necessary to meet 21 the claimed refractive indices limitation. 22 Decision 23 Upon consideration of the appeal, and for the reasons given herein, it is 24 Appeal 2013-004636 Application 12/444,150 13 ORDERED that the decision of the Examiner rejecting claims 1–3 and 1 5–9 is affirmed. 2 FURTHER ORDERED that as to claim 4, the appeal is dismissed. 3 FURTHER ORDERED that no time period for taking any subsequent 4 action in connection with this appeal may be extended under 37 C.F.R. 5 § 1.136(a)(1)(iv). 6 AFFIRMED-IN-PART and DISMISSED-IN-PART 7 bar DESIGNING TOMORROW'S SPECIALTY POLYURETHANES ANE® D91T85 Polyurethane Elastomer PEARLTHANE® 091T85 is an aliphatic TPU. supplied in colourless natural pellets. In addition to typical TPU properties like outstanding abrasion loss. our PEARL THANE® 091T85 offers excellent colour stability upon UV exposure. PEARLTHANE® 091T85 features a low density. fast processing and excellent elastiCity properties. It has been specially designed for injection moulding process. APPLICATIONS PEARLTHANE® 091T85 is especially recommended for injection moulding applications such as automotive parts and a variety of high performance technical parts where short cycle times and complete UV resistance are required. TYPICAL PHYSICAL PROPERTIES • These are typical values & should not be used for establishing specifications . •• Temperature at which MFI = 10 gl10 min @ 21.0 kg. WORKING INSTRUCTIONS For optimum results. previous drying of the product during 1-2 hours at 80-90° C is advisable, in a hot air circulatory. vacuum or desiccant-air dryer. INJECTION MOULDING Based on an injection moulding equipment with the following characteristics: Closing force: : 30 tons Screw diameter: :26mm UD ratio: : 23 Maximum hydraulic pressure: : 210 bar Mould: : Plaque 120x120x2 mm Issue 06 09/07 (Supersedes 05) Page 1of2 Merquinsa's Products are sold subject to Merquinsa's General Sales Conditions printed on the back of invoiees and other shipping ~oc~ents {available up?" request). T~s is correct informzction based on our experience. and is given in good faith and withoul compromise. Each purcbaser bears futl responsibility for the apphcabon, use and proccssmg Qf Merqwnsa's products descnbed herein. as weB as thelfsultability to the pUJ'(::haser's specific application, as this is beyond Merquinsa's eonlrol IS09001 ISO 14001 Gran Vial, 17 08160 Montmelo, Spain Tel. (34) 93 572 11 00 Fax (34) 93 572 0934 E-mail: info@merquinsa.com http://www.merquinsa.com Registered in Barcelona Trade Register under Tax Identification Number B08530305, volume 31186. folio 106, page B-3077?, entry 12 II Responsible Care® DESIGNING TOMORROW'S SPECIALTV POLYURETHANES PROVISIONAL TECHNICAL DATA SHEET The suggested processing conditions are the following ones: 1HANE® 091185 POlyurethane Elastomer INJECTION CONDITIONS Feed zone 175°C Injection pressure 130 bar Compression zone 180°C I njection time 3 sec Metering zone 185°C Holding pressure 170bar Nozzle Holding time 20 sec 185°C • Mould temperature 40°C Cooling time HEALTH AND SAFETY A safety data sheet on PEARLTHANE® D91T85 is available. with all information related to safety. PACKAGING PEARLTHANE® D91T85 is packaged in heat-sealed. moisture proof multi-layer bags of 25 Kg net weight made of PE/Aluminium/PE. Bags are shipped on pallets of 750 Kg. Additionally. PE/AIIPE-lined cardboard gaylords of 700 Kg net weight are available. STORAGE Material received from Merquinsa should be inspected to assure the containers are not damaged during transportation before being stored prior to use. PEARL THANE® D91T85 should be kept in a cool (15-25°C) and dry environment prior to being processed. Standard practice of consuming resin on first-in first-out basis should be employed. For more information. please feel free to contact us at www.merquinsa.com Issue 06 09107 (Supersedes 05) Page 2 of2 Merquinsa's Products are sold subject to Merqumsa's General Sales Conditions printed on the back of invoices and oilier shipping documents (avei)able upon request) ThIS is correct mfonnation based on our experience, and is given in good f31th and without eompromise, Each purchaser bears full responsibility for the application, usc and processing of Merquinsa's products described herein, as: well as their suitability to the purebaser's specific application, as this is beyood Merquinsa's control. ISO 9001 [so 14M) Gran Vial, 17 08160 Montmel6, Spain Tel. (34) 93 572 11 00 Fax (34) 93 572 09 34 E-mail: info@merquinsa.com http://www.merouinsa.com Reg.stered in Barcelona Trade Register under T"" Identification Number B08530305, volume 31186, folio 106, page B-3 0777, entry 12, II Responsible Carel!>