Ex Parte Shi

Patent Trial and Appeal Board

May 26, 2016

13127851 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/127,851 05/05/2011
23909 7590 05/31/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Yu Shi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8542-00-CCP 5241
EXAMINER
JONES JR, ROBERT STOCKTON
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
05/31/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YU SHI
Appeal2014-003613
Application 13/127 ,851
Technology Center 1700
Before HUBERT C. LORIN, JAMES T. MOORE, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals the Examiner's final rejection of claims 1---6.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellant identifies Colgate-Palmolive Company as the Real Party in
Interest. App. Br. 2.
Appeal2014-003613
Application 13/127,851
The Claimed Invention
Appellant's disclosure relates to blends of polylactic acid and
polyethylene terephthalate polymers for packaging applications. Abstract.
Independent claim 1 is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
5):
1. A composition comprising a blend of 1 wt. % to 20 wt. %
poly-lactic acid and polyethylene terephthalate, wherein the
composition has an intrinsic viscosity of greater than 0. 7 dl/g,
and at least one of an axial Young's modulus of at least
210000 psi and a radial Young's modulus of at least 410000 psi,
and wherein the polylactic acid has a number average molecular
weight (Mn) of 50,000 to 110,000.
The References
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Gruber et al., US 5,539,081 July 23, 1996
(hereinafter "Gruber")
Kazuhiro JP 2004-277939 July 10, 2004
The Rejection
On appeal, the Examiner maintains the following rejection:
1. Claims 1---6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kazuhiro in view of Gruber.
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Application 13/127,851
OPINION2
Appellant argues claims 1---6 as a group. We, therefore, select claim 1
as representative of this group, and the remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Kazuhiro teaches nearly all of claim 1 's
limitations, except that it does not teach "a [polylactic acid] having a
molecular weight falling within the claimed range," i.e., having a number
average molecular weight (Mn) of 50,000 to 110,000. Ans. 3 (citing
Kazuhiro, Abstract, i-fi-f 19, 39, 55, 65-67). The Examiner, however, relies
on Gruber for teaching this missing limitation. Id.
In particular, the Examiner finds that Gruber teaches a melt-stable
polylactic acid, which during melt processing "adequately maintains its
physical properties and does not generate by-products," and that "[ e ]xamples
of melt processing applications include fiber spinning." Ans. 3, 4 (citing
Gruber, col. 1, 11. 14--16, col. 2, 11. 14--27, col. 10, 11. 39--46, col. 10, 11. 8-
11 ). The Examiner finds further that Gruber discloses polylactic acid
polymers having a number average molecular weight (Mn) ranging from
10,000 to 300,000, including specific examples having "a Mn which falls
within the claimed range of 50,000 to 110,000." Id. at 4 (citing Gruber, col.
5, 1. 66-col. 6, 1. 2; col. 16, 1. 40; cols. 17, 19, 23; Example 2; Tables 2, 4, 9,
and 1 O; Samples 4---6, and 9).
2 We affirm the Examiner's rejection for the reasons set forth in the Answer,
which reasoning we adopt as our own. Nevertheless, we highlight and
address specific findings and arguments for emphasis as follows.
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Application 13/127,851
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention "to modify Kazuhiro in
view of Gruber to employ Gruber' s PLA for the benefit of improved melt
stability during fiber spinning." Ans. 4.
Appellant argues that the Examiner's rejection of claim 1 should be
reversed because "[t]here is no motivation to combine Kazuhiro '939 and
Gruber '081." App. Br. 2. In particular, Appellant argues that "Kazuhiro
... is solving a problem in forming a fine sized fiber that has a good hue"
but that "[t]here is no disclosure in Gruber '081 that addresses this problem."
Id.
We are not persuaded by Appellant's argument. Based on the record
before us and contrary to Appellant's argument, we find that the Examiner's
findings and rationale for why one of ordinary skill would have combined
the teachings of Kazuhiro and Gruber to arrive at the claimed invention are
well-supported by the evidence and based on sound technical reasoning.
Kazuhiro, Abstract, i-fi-f 19, 39, 55, 65----67; Gruber, col. 1, 11. 14--16, col. 2, 11.
14--27, col. 10, 11. 39-46, col. 10, 11. 8-11.
Indeed, as the Examiner concluded (Ans. 3), in view of Kazuhiro's
teachings regarding a polyester fiber containing 0.3-10 wt.% polylactic acid
and fibers formed through fiber spinning (Kazuhiro, Abstract, i-fi-f 19, 55) and
Gruber's teachings regarding melt-stable polylactic acid and melt processing
applications such as fiber spinning (Gruber, col. 1, 11. 14--16, col. 10, 11. 8-
11 ), it would have been obvious to one of ordinary skill in the art to combine
these teachings in order to achieve improved melt stability during fiber
spinning. That Appellant disagrees with the Examiner's reason for
combining these references to arrive at the claimed invention, without more,
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Application 13/127,851
is insufficient to establish reversible error. KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 420 (2007) (explaining that any need or problem known in the
art can provide a reason for combining the elements in the manner claimed).
See also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation
or reason to combine the prior art references need not be the same as that of
applicants).
Moreover, Appellant's conclusory assertions regarding the alleged
"problem" the prior art solves, without more, are insufficient to rebut the
Examiner's findings and rationale for why one of ordinary skill would have
been combined the cited references to arrive at the claimed invention. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also KSR, 550 U.S. at
420).
Appellant argues that "[ e ]ven if combined, there is no disclosure in
Kazuhiro '939 or Gruber '081 to select an appropriate polylactide from
among the polylactides in Gruber '081 that could work in Kazuhiro '939 to
help provide good hue." App. Br. 3. We are not persuaded by this argument
because Gruber describes specific examples falling within the claim
limitation having improved stability and Appellant does not provide an
adequate technical explanation or direct us to sufficient evidence in the
record to a contrary finding. Attorney argument cannot take the place of
evidence. In re De Blauwe, 736 F.2d at 705.
Appellant argues that the Examiner's rejection should be reversed
because "[t]here is no example given in Kazuhiro '939 or Gruber '081 for a
poly-lactic acid and polyethylene terephthalate composition that has all of
the properties for Young's modulus and molecular weight such that these
properties would be inherent." App. Br. 3.
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Application 13/127,851
We do not find this argument persuasive because Kazuhiro' s and
Gruber's teachings are not limited to the disclosures in their examples. See
In re Mills, 470 F.2d 649, 651(CCPA1972) ("[A] reference is not limited to
the disclosure of specific working examples."). Appellant's argument is also
misplaced because, as the Examiner found (Ans. 4) and previously discussed
above, it is the combination of Kazuhiro and Gruber that teaches all of claim
1 's limitations, including that "the poly lactic acid has a number average
molecular weight (Mn) of 50,000 to 110,000."
Moreover, as further found by the Examiner (Ans. 13), because the
combination of Kazuhiro and Gruber results in a composition with identical
amounts of identical materials using a melt processing technique described
in the Specification as being suitable for forming the claimed composition, it
follows that one of ordinary skill in the art would have a reasonable
expectation that the claimed physical properties (e.g., Young's modulus and
intrinsic viscosity) would be intrinsically present in the composition
resulting from the modification of Kazuhiro in view of Gruber. In re Best,
562 F.2d 1252, 1255 (CCPA 1977).
Accordingly, we affirm the Examiner's rejection of claims 1---6 under
35 U.S.C. § 103(a) as unpatentable over the combination ofKazuhiro and
Gruber.
DECISION/ORDER
The Examiner's rejection of claims 1---6 under 35 U.S.C. § 103(a) as
unpatentable over Kazuhiro in view of Gruber is affirmed.
It is ordered that the Examiner's decision is affirmed.
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Application 13/127,851
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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