Ex Parte Pelliconi

Board of Patent Appeals and Interferences

May 2, 2011

10551679 (B.P.A.I. May. 2, 2011)

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.
10/551,679 09/29/2005 Anteo Pelliconi 124-288USMI6095 5524
74275 7590 05/03/2011
DILWORTH IP, LLC
2 CORPORATE DRIVE, SUITE 206
TRUMBULL, CT 06611
EXAMINER
NUTTER, NATHAN M
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
05/03/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTEO PELLICONI
____________

Appeal 2010-002805
Application 10/551,679
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-7 under 35 U.S.C. §102(e) as anticipated
by Washiyama (US 6,586,531, issued Jul. 1, 2003).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 Final Office Action mailed Jan. 29, 2009(“Final”).
2 Appeal Brief filed Jul. 2, 2009 (“Br.”).
Appeal 2010-002805
Application 10/551,679

2
The independent claims are directed to “[a] masterbatch composition”
(claim 1), “[a] thermoplastic polyolefin composition comprising a
masterbatch composition” (claim 3), “[a] process for preparing a
masterbatch composition” (claim 6), and “[b]umpers and fascia comprising a
masterbatch composition” (claim 7). The masterbatch composition is
identically claimed in each of the independent claims. (See Br. 2-3.) Claim
1 is representative, and is reproduced below from the Claims Appendix to
the Appeal Brief:
1. A masterbatch composition comprising (percent by weight):

A) 50%-90% of a crystalline polypropylene component
comprising:

AI) from 25% to 75% of a fraction having a melt flow rate
MFRI of from 0.1 to 10 g/10 min.; and

AII) from 25% to 75% of a fraction having a melt flow rate
value MFRII from 10 to 68g/10 min.;

wherein a ratio MFRII / MFRI is from 5 to 60, and the fractions
AI) and AII) are independently selected from the group
consisting of a propylene homopolymer, a random copolymer
of propylene containing up to 3% of ethylene, and a random
copolymer of propylene containing up to 6% of at least one C4-
C10 α-olefin; and

B) 10%-50% of a copolymer component comprising ethylene and
at least one C3-C10 α-olefin, the copolymer containing from
15% to 50% of ethylene, and optionally minor amounts of a
diene;

said masterbatch composition having an MFR and a value of the
intrinsic viscosity [η] of a fraction soluble in xylene at room
temperature (about 25°C) of at least 3.5 dl/g.

Appeal 2010-002805
Application 10/551,679

3
Appellant’s arguments raise the following issue for our consideration:
did the Examiner reversibly err in finding that Washiyama teaches a
masterbatch composition having a crystalline polypropylene component with
a fraction AI) having a melt flow rate MFRI of from 0.1 to 10 g/10 min., a
fraction AII) having a melt flow rate value MFRII from 10 to 68g/10 min.,
and a ratio MFRII / MFRI of from 5 to 60?
We answer this question in the affirmative and, therefore, are in
agreement with Appellant that the Examiner has failed to establish a prima
facie case of anticipation.
The Examiner’s rejection is based on a finding that Washiyama
teaches the production of a masterbatch using crystalline
polypropylene of “MFRI of from 0.5 to 10 g/10 min,” present
in an amount that embraces the claimed range at 25% to
75%, with a second polymer faction [sic] having MFRII
embracing that recited herein at 15 to 100 g/10 min, and
present in an amount that embraces the claimed range at 25%
to 75%.

(Ans.3 3-4.) The Examiner maintains that Washayama “anticipates the
invention” because Washayama “teaches ranges for each of the MFRI,
MFRII, MFRII / MFRI ratio and the compositional limitations that may,
simultaneously, be the same.” (Ans. 6 (emphasis added).)
“The way in which the elements are arranged or combined in the
claim must itself be disclosed, either expressly or inherently, in an
anticipatory reference.” Therasense, Inc. v. Becton, Dickinson and Co., 593
F.3d 1325, 1332 (Fed. Cir. 2010) (citations omitted) (“The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
(citations omitted)). In Atofina v. Great Lakes Chemical Corp., 441 F.3d

3 Examiner’s Answer mailed Sep. 14, 2009.
Appeal 2010-002805
Application 10/551,679

4
991 (Fed. Cir. 2006), our reviewing court considered the issue of whether
claims were anticipated by a reference which disclosed a temperature range
of 100 to 500 °C, which was broader than and fully encompassed the
claimed range of 330 to 450 °C. In finding that the temperature range
disclosed in the reference did not anticipate the claimed range, the court
explained “[t]he disclosure is only that of a range, not a specific temperature
in that range, and the disclosure of a range is no more a disclosure of the end
points of the range than it is of each of the intermediate points.” Id. at 1000.
The court also considered the issue of whether the claims were anticipated
by a reference disclosing a 0.001 to 1.0 percent range of a particular
component, which overlapped the claimed range of 0.1 to 5.0 percent. In
finding the claims were not anticipated, the court explained that
although there is a slight overlap, no reasonable fact finder
could determine that this overlap describes the entire claimed
range with sufficient specificity to anticipate this limitation
of the claim. The ranges are different, not the same. . . . In
addition, the disclosure of a 0.001 to 1.0 percent range is not
a disclosure of the end points of that range.

Id.
As conceded by the Examiner, Washiyama does not explicitly
disclose an embodiment of a composition wherein the MFRI, MFRII, and the
MFRII / MFRI ratio fall within Appellant’s claimed ranges. Rather,
Washiyama merely discloses ranges for MFRI, MFRII, and the MFRII / MFRI
ratio which overlap or encompass Appellants’ claimed ranges. We are in
agreement with Appellant that “Washiyama do[es] not describe the entire
claimed ranges with sufficient specificity to . . . anticipate these limitations”
(Br. 4).
Appeal 2010-002805
Application 10/551,679

5
Accordingly, we do not sustain the rejection of claims 1-7 under 35
U.S.C. §102(e) as anticipated by Washiyama.

REVERSED

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