10930295 (B.P.A.I. Feb. 26, 2008)

Ex Parte Scheie

Board of Patent Appeals and InterferencesFeb 26, 2008

10930295 (B.P.A.I. Feb. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANDREW J. SCHEIE ____________ Appeal 2008-1544 Application 10/930,295 Technology Center 1700 ____________ Decided: February 26, 2008 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and CHUNG K. PAK, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellant claims a method comprising reacting a multimodal polyethylene with a free radical initiator at a temperature below the melting point of the polyethylene. Appeal 2008-1544 Application 10/930,295 Representative claim 1 reads as follows: 1. A method comprising reacting a multimodal polyethylene with a free radical initiator at a temperature below the melting point of the polyethylene. The prior art set forth below is relied upon by the Examiner as evidence of obviousness: Moriguchi 4,390,666 Jun. 28, 1983 Mack 4,603,173 Jul. 29, 1986 Thurman 4,703,093 Oct. 27, 1987 Strebel 6,083,434 Jul. 4, 2000 Garrison 6,770,715 B2 Aug. 3, 2004 Under 35 U.S.C. Â§ 103(a): claims 1, 5, and 12-14 are rejected over Thurman in view of Moriguchi, and claims 1-4 are correspondingly rejected over these references and further in view of Strebel; claims 1 and 6 are rejected over Thurman in view of Mack; and claims 1 and 7-11 are rejected over Thurman in view of Garrison. In contesting the above-noted rejections, Appellant has argued only claim 1, the sole independent claim on appeal. Like Appellant, we will focus on claim 1 in assessing the merits of these rejections. Appellant does not contest the Examiner's finding (Ans. 3-4, 8) that Thurman discloses a method comprising contacting ground polyethylene with peroxide as a free radical initiator (see appealed dependent claim 5) at temperatures which are below the melting point of the polyethylene and which fall within the ranges here claimed (see appealed dependent claims 12 and 13) (Thurman, col. 3, ll. 21-28). The Examiner acknowledges that the 2 Appeal 2008-1544 Application 10/930,295 polyethylene of Thurman is not identified as a multimodal polyethylene but concludes that it would have been obvious for one with ordinary skill in this art to use as the polyethylene of Thurman's method a multimodal polyethylene in view of, for example, Moriguchi (Ans. 4). This obviousness conclusion has not been contested by Appellant. Instead, Appellant's sole argument against each of the rejections on appeal is that Thurman's method of contacting polyethylene with peroxide constitutes a physical mixing step rather than a "reacting" step as required by claim 1 (Br. 5, 8, 10-13). This argument is unpersuasive. As correctly pointed out by the Examiner (Ans. 8), and not disputed by Appellant, the methods of claim 1 and of Thurman involve the same ingredients (i.e., polyethylene and peroxide) under the same temperature conditions and therefore must produce the same results. Stated differently, the commonalities of Thurman's method with the here claimed method (see claims 1, 5, 12, 13) reasonably support the Examiner's determination that the prior art method must necessarily result in the "reacting" step of claim 1. The reasonableness and logic of the Examiner's determination is adequate to require Appellant to prove that the prior art process of Thurman does not necessarily or inherently practice the "reacting" step required by claim 1. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). Whether the rejection is based on inherency under Â§ 102 or obviousness under Â§ 103, the burden of proof is the same, and it fairness is evidenced by the inability of the Patent and Trademark Office to obtain and compare claimed and prior art inventions. See Best, 562 F.2d at 1255. 3 Appeal 2008-1544 Application 10/930,295 On this record, Appellant has submitted no such proof. We hereby sustain, therefore, each of the Â§ 103 rejections advanced by the Examiner on this appeal. 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 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED cam LYONDELLBASELL INDUSTRIES 3801 WEST CHESTER PIKE NEWTOWN SQUARE, PA 19073 4