Ex Parte Rodgers et al

Patent Trial and Appeal Board

Oct 31, 2014

12345154 (P.T.A.B. Oct. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/345,154 12/29/2008 Michael B. Rodgers 2008EM010/2 7340
23455 7590 10/31/2014
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
CAI, WENWEN
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
10/31/2014 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 MICHAEL B. RODGERS,
ANTHONY J. DIAS, RICK DOWELL DAVIS,
THOMAS R. BARBEE, and SHAWN W. MOWRY
____________

Appeal 2012-011401
Application 12/345,154
Technology Center 1700
___________

Before CHARLES F. WARREN, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–11, 15–18, and 22. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal:
1. An elastomeric composition comprising:
a) at least one elastomer; and
b) a hydrocarbon polymer additive, wherein the
hydrocarbon polymer additive comprises from 70 weight% to
90 weight% piperylene, from 5 weight% to 15 weight% cyclic
components, and from 5 weight% to 20 weight% styrenic
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components, and wherein the hydrocarbon polymer additive is
substantially free of amylene or contains less than 10 weight%
amylene.
The remaining independent claims 10 and 19 are directed to a cured
rubber or elastomeric composition similar to claim 1 in the components and
amounts required (App. Br. 15, 16 (VIII. Claims App’x). Appellants do not
argue any of these independent claims separately from one another (App. Br.
10–12).
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) Claims 1–11 and 15–18 as being unpatentable over Macedo (US
6,232,418 B1, patented May 15, 2001);
2) Claims 22 as being unpatentable over Macedo in view of Solon
(US 2003/0194271 A1, pub. Oct. 26, 2003).
Appellants argue the claims as a group in the first ground of rejection
(App. Br. 10–12). Appellants present no additional arguments for reversal
of the rejection of claim 22 (App. Br. 12).

ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. We will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellants’ main argument—that the claimed composition is
nonobvious because Macedo does not disclose or suggest any specific
example having all of the claimed components with the amylene content as
recited (App. Br. 10–12; Reply Br. 2)—is unavailing as it fails to consider
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the reference as a whole. It is well established that a reference is not limited
to its examples or preferred embodiments. See Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s
disclosure of over 1200 possible combinations rendered all possible
formulations obvious). Contrary to Appellants’ position, the Examiner’s
reliance on the claims of Macedo as suggesting that amylene is an optional
component in the hydrocarbon resin/polymer additive therein is reasonable,
since the percentages of the hydrocarbon resin components of Macedo’s
claim 1 may add up to over 100% and amylene is not a listed component
(Ans. 4; App. Br. 11, 12). The Examiner’s determination that the examples
in Table III, including example 8, also suggest that any amylene component
is optional or low (e.g., 7%) is also reasonable (Ans. 7). Notably,
Appellants’ Specification contains no explicit definition of what constitutes
“substantially free of amylene,” and discusses embodiments of the
hydrocarbon polymer additive (HPA) that contain up to 40% amylene (Spec.
¶ [0042]).
Appellants have not provided any credible evidence or persuasive
technical reasoning to refute the Examiner’s reasonable determination that
the amounts of the hydrocarbon polymer additive composition components,
including the amylene component, overlap the claimed ranges (e.g., Ans. 4,
7; generally App. Br., Reply Br.). A prima facie case of obviousness exists
where the prior art and claimed ranges overlap, as well as in those cases
where the claimed range and the prior art range, though not overlapping, are
sufficiently close that one skilled in the art would have expected them to
have the same properties. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re
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Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
Thus, Appellant’s arguments that Macedo fails to render obvious the
claimed composition are unavailing, and a preponderance of the evidence
supports the Examiner’s reasonable position that it would have been prima
facie obvious to use the recited components in amounts that overlap or touch
the claimed ranges.
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d at 1578. The
burden rests with Appellants to establish (1) that the alleged unexpected
results presented as being associated with the claimed invention are, in fact,
unexpected, (2) that the comparisons are to the disclosure of closest prior art,
and (3) that the supplied evidentiary showing is commensurate in scope with
the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972).
No such evidence has been proffered in this case.
Accordingly, we affirm both of the rejections based on Macedo as to
all the claims on appeal.
DECISION
The decision of the Examiner is affirmed.

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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).
AFFIRMED

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