12395578 (P.T.A.B. Aug. 27, 2015)

Ex Parte Shuler et al

Patent Trial and Appeal BoardAug 27, 2015

12395578 (P.T.A.B. Aug. 27, 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. 12/395,578 02/27/2009 Joe Shuler COS-1175 4608 7590 08/27/2015 David J. Alexander Fina Technology, Inc. P.O. Box 674412 Houston, TX 77267-4412 EXAMINER BUIE-HATCHER, NICOLE M ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 08/27/2015 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 FINA TECHNOLOGY, INC. ____________________ Appeal 2013-010509 Application 12/395,578 Technology Center 1700 ____________________ Before FRED E. McKELVEY, CHUNG K. PAK and BEVERLY A. FRANKLIN, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL 37 C.F.R. § 41.50 I. Statement of the Case FINA Technology, Inc. (“Appellant”), the real party in interest (Appeal 1 Brief (“Br.”), page 5), seeks review under 35 U.S.C. § 134(a) of a final rejection 2 dated 13 December 2012. 3 The named inventors are: (1) Joe Shuler, (2) Jose M. Sosa, (3) Juan Aquirre, 4 and (4) John Gaustad. 5 We have jurisdiction under 35 U.S.C. § 134(a). 6 The application on appeal was filed in the USPTO on 27 February 2009. 7 The application on appeal has been published as U.S. Patent Application 8 Publication 2010/0222532 A1 (2 September 2010). 9 Appeal 2013-010509 Application 12/395,578 2 Insofar as relevant to our disposition of the appeal, the Examiner relies on 1 the following evidence. 2 Akao et al. “Akao” U.S. Patent 5,814,697 29 Sept. 1998 Reimers et al. “Reimers” U.S. Patent 7,179,873 B2 20 Feb. 2007 Appellant does not contest the prior art status of the Examiner’s evidence, all 3 of which prior art under 35 U.S.C. § 102(b). 4 We mention the following additional evidence in this opinion. 5 Kihara et al. “Kihara” U.S. Patent 5,708,112 13 Jan. 1998 Polymer Science Encyclopedia of Polymer Science and Technology, Vol. 4, page 252 © 2003 Carraher POLYMER CHEMISTRY, pages 512–517 (4th ed.) © 1996 Hawley’s HAWLEY’S CONDENSED CHEMICAL DICTIONARY, page 738 (11th ed.) © 1987 Stille INTRODUCTION TO POLYMER CHEMISTRY, page 25 © 1962 II. Claims on Appeal 6 Claims 1–24 are on appeal. Br., page 7. 7 III. The Rejections 8 In the Answer, the Examiner has maintained several rejections. 9 Appellant does not argue the separate patentability of claims 2–23 apart 10 from claim 1. Br., pages 14–15. 11 Appeal 2013-010509 Application 12/395,578 3 Accordingly, except for claim 24, we decide the appeal on the basis of 1 claim 1. 37 C.F.R. § 41.37(c)(1)(iv). 2 We separately address claim 24. 3 Claim 1 stands rejected as being unpatentable under 35 U.S.C. § 103(a) over 4 Reimers and Akao. Ans., page 2. 5 IV. Analysis 6 A. The Invention 7 Based on a “Background” section of Appellant’s Specification, we learn the 8 following (italics added): 9 Injection molding generally involves feeding plastic polymer, 10 such as in pellet form, through a hopper into a horizontal barrel 11 containing a revolving screw. The plastic is forced through the 12 barrel by the screw, and the shearing force of the screw along 13 with applied heat is able to melt the plastic. Upon reaching the 14 front of the screw, shots of molten plastic may enter the mold 15 through one or more gates. The mold can be made of two 16 halves that, when in contact with each other, form the inverse of 17 the desired shape of the molded product. The molding cycle 18 generally consists of the mold closing, filling with molten 19 plastic, holding and cooling, mold opening, and ejection of the 20 plastic product. 21 Specification, ¶ 0004. 22 The mold cycle referred to in ¶ 0004 is illustrated by Carraher, 23 pages 512–515. Carraher Fig. 17.5, reproduced below, shows an example of 24 an injection-molding press. 25 Appeal 2013-010509 Application 12/395,578 4 Fig. 17.5 Depicted is a cross-section of an injection-molding press According to Carraher, the: 1 [injection-molding] press consists of a hopper (a) which feeds 2 the molding powder to a heated cylinder (b) where the polymer 3 is melted and forced forward by a reciprocating plunger (c) (or 4 screw). The molten material advances toward a spreader or 5 torpedo into a cool, closed two-piece mold (d). The cooled 6 plastic part is ejected when the mold opens, and then the cycle 7 is repeated. 8 Carraher, page 514. 9 Fig. 17.6, reproduced below, shows an example of an injection mold 10 in closed position. 11 Appeal 2013-010509 Application 12/395,578 5 Fig. 17.6 Depicted is an injection mold in closed position (part d in Fig. 17.5) As explained by Carraher, “molten plastic passes from the nozzle 1 through a tapered sprue, a channel or runner and a small state in the cooled 2 mold cavity.” Carraher, page 514. 3 Returning the Appellant’s “background” we learn that: 4 Certain properties affect the suitability of a plastic for 5 injection molding applications. Properties that reduce the cycle 6 time of injection molding are generally desirable. A reduced 7 cycle time can allow for greater efficiency in the production of 8 molded plastics by increasing the number of plastics products 9 ejected from the mold in a given period of time. 10 Specification, ¶ 0005. 11 12 Consistent with Appellant’s background, reduction in cycle time has 13 been a matter of concern to those skilled in the art. 14 Appeal 2013-010509 Application 12/395,578 6 Because of their remarkable rigidity, good dimensional 1 stability and low cost, polystyrene resins are used in many 2 molding applications. Recently, in the field of injection 3 molding, it is to reduce the molding cycle time, namely the time 4 required for plasticization, injection, dwell and cooling, and 5 thereby enhance the molding efficiency. In order to reduce this 6 molding cycle time, the molding compound must show high 7 fluidity during injection and solidify at a relatively high 8 temperature in the cooling stage or be hard to soften at high 9 temperature, that is to say it should have a high heat resistance. 10 Kihara, col. 1:24–35 (italics added). 11 Appellant’s background continues: 12 One property of plastics that can greatly influence cycle 13 time is melt flow rate, also known as melt flow index (MFI). 14 By increasing the MFI molten plastic can flow more quickly 15 through the one or more mold gates that introduce the molten 16 plastic into the mold and can more quickly fill the mold. Thus, 17 the mold cycle time can be shortened. Melt flow can be 18 increased in a variety of ways. One method is to lower the 19 molecular weight of the plastic. Molecular weight can be 20 influenced by factors such as polymerization time, initiator, and 21 the use of a chain transfer agent. A lower molecular weight 22 generally results in a lower viscosity, which eases the flow of 23 the molten plastic through the barrel and into the mold. MFI 24 can also be adjusted by using different additives, such as 25 plasticizers and flow modifiers. Cycle time can be influenced 26 by the thermal properties of the material, generally defined by 27 their Vicat softening temperature. 28 Specification, ¶ 0006. 29 Appellant’s observations are consistent with the prior art. Melt Index 30 can be defined as follows: 31 Appeal 2013-010509 Application 12/395,578 7 The viscosity of a thermoplastic polymer at a specified 1 temperature and pressure, it is a function of the molecular 2 weight. Specifically, the number of grams of such a polymer 3 that can be forced through a 0.0825 inch orifice in 10 minutes at 4 190C by a pressure of 2160 g. 5 Hawley’s, page 738. Consistent with Hawley’s, is discussion in Stille with 6 respect to Fig. 3.1, reproduced below: 7 Fig. 3.1 depicts a graph of softening point as a function of molecular weight The molecular weight and molecular weight distribution of 8 polymers plays an important role in the physical properties of 9 the polymer. In general, a narrow molecular weight 10 distribution gives more useful polymers.[1] Most natural 11 polymers and all of the synthetic polymers contain a wide range 12 of molecular weights for the polymer molecules. 13 1 Stille’s observation are consistent with subsequent discussion on the point by Stevens: “Molecular weight distribution is an important characteristic of polymers because it can significant affect polymer properties. Just as low-molecular-weight polystyrene behaves differently from the high-molecular-weight material, a sample of polystyrene having a narrow molecular weight range will exhibit different properties from one having a broad range, even the average molecular weights of the two samples are the same.” Stevens, page 53. Appeal 2013-010509 Application 12/395,578 8 The softening point and tensile strength of a polymer can 1 be related to its molecular weight and its other structural 2 features. Low molecular weight polymers have low melting 3 points and tensile strengths. Within a given polymer, the 4 melting point and tensile strength increase as the molecular 5 weight increases, as shown in Fig. 3.1. At lower molecular 6 weights the melting point and tensile strength are very much 7 affected by the molecular weight. At some molecular weight 8 which is characteristic of the individual polymer, a break in the 9 curve occurs and higher molecular weights have a lesser effect 10 on the properties of the polymer. The relationship between the 11 chain length n and the crystalline melting point Tm is expressed 12 by 1/Tm = a + b/n, where a and b are constants. 13 Stille, page 25 (footnotes omitted). 14 With respect to polystyrene, Polymer Science teaches those skilled in 15 the art the following: 16 The melt properties of PS [polystyrene] at temperatures 17 between 120 and 260°C are very important because it is in this 18 temperature range that it is extruded to make sheets, foams, and 19 films, or is molded into parts. Generally, it is desired to make 20 parts having high strength from materials having low melt 21 viscosity for easy melt processing. However, increased 22 polymer molecular weight increases both strength and melt 23 viscosity. The melt viscosity of PS can be decreased to 24 improve its melt processability by the addition of a plasticizer 25 such as mineral oil. However, the addition of a plasticizer has a 26 penalty, ie, the heat-distortion temperature is lowered. In 27 applications where heat resistance is very important, melt 28 processability can be influenced, without a significant effect on 29 heat resistance, by control of the polydispersity, by branching, 30 or by the introduction of pendant ionic groups, eg, sodium 31 sulfonate. 32 Appeal 2013-010509 Application 12/395,578 9 Polymer Science, page 252 (italics added; citations to references omitted). 1 Again returning to Appellant’s background: 2 [0006] . . . It is desirable to reduce cycle time and increase 3 mass throughput, while maintaining similar mechanical 4 properties, for example, tensile or flexural modulus. 5 [0007] Increasing MFI can have the unwanted effect of 6 lowering physical properties of the plastic. For instance, an 7 increase in MFI is generally accompanied by a decrease in melt 8 strength and elongation.[2] It is often a goal in the art to balance 9 processability with physical properties, and there have been 10 many proposed methods of achieving such a balance, such as 11 by lowering gel content by minimizing cross-linking, lowering 12 the molecular weight distribution or polydispersity, and using 13 additives like furfuryl acetate and esters of acrylates. 14 [0008] It is always desirable in the art to find new ways of 15 increasing processability without sacrificing physical 16 properties. It is thus desirable to create a novel monovinylidene 17 aromatic polymer exhibiting a high melt flow without a 18 significant loss of mechanical properties. 19 Specification ¶¶ 0006–0008. 20 Appellant sought to find a molding composition that would reduce 21 cycle time. Specification ¶ 0017. 22 2 See also Kihara, col. 1:46–51: “[I] it has been proposed to use a resin material of lower molecular weight to thereby enhance the flowability of the molding composition. However, this approach has the drawback that the strength of the resin is sacrificed to cause cracking on ejection of the molded product or during the use of the molded product.” Appeal 2013-010509 Application 12/395,578 10 According to Appellant, the solution to a reduced cycle time can be 1 achieved by use of a composition defined by claim 1. 2 B. Claim 1 3 Claim 1, reproduced from the Claims Appendix of the Appeal Brief, reads 4 (material in brackets and some indentation added; limitation in dispute italicized): 5 A monovinylidene aromatic copolymer comprising the 6 polymerization product of 7 [1] a first monomer and 8 [2] a second metallic monomer 9 the copolymer having 10 [a] a melt flow index of at least 7 g/10 min and 11 [b] a vicat softening temperature of at least 200 º F 12 [ca. 93.3º C]. 13 An example of a first monomer is styrene. Specification ¶ 0013:5. 14 Examples of a second metallic monomer are zinc diacrylate and 15 zinc dimethacrylate. Specification ¶ 0013:6–7. 16 C. Reimers 17 Reimers, owned by Appellant, describes copolymers of styrene and zinc 18 dimethacrylate. See, e.g., Example 1: 19 Polystyrene homopolymer is prepared using a stirred 500 20 ml reaction kettle. The polymerization is initiated using a 21 LUPERSOL® 233 catalyst at a concentration of about 170 22 ppm. The reaction is run at about 267° F. (131º C.). The initial 23 melt flow of the polystyrene is 3.7 dg/minute. The second 24 Appeal 2013-010509 Application 12/395,578 11 monomer Zinc dimethacrylate “ZnMA” is added in stages by 1 first dissolving the ZuMA in styrene, the first monomer, and 2 then feeding the solution to the reactor. The reactor was 3 allowed to stabilize and samples 1-A, l-B, and 1-C were 4 collected at points where the concentration of ZnMA in styrene 5 is 400 ppm, 600 ppm and 800 ppm. The samples are tested and 6 the results shown below in Table 1. 7 Reimers, col. 6:20–33 (italics added). 8 Table 1 is reproduced in part below: 9 Table 1 Example 1–A Example 1–B Example 1–C [ZnMA] ppm 400 600 800 MFI NA 3.84 3.51 Vicat NA 220 ºF 220º F MWn 94,0003 95,000 94,000 MWw 249,000 298,000 315,000 MWz 424,000 1,978,000 2,433,000 Like Appellant (Specification ¶ 0003), the Reimers compositions are 10 said to be useful to for making articles (col. 1:63–64), such as microwave 11 safe dishes and utensils (col. 6:3). See also claim 10 (col. 9:51–52). 12 3 Molecular weight data set out in Table 1 has to be multiplied by 1000 to describe the molecular weights involved. Appeal 2013-010509 Application 12/395,578 12 D. Difference 1 The difference between the subject matter of claim 1 vis-à-vis 2 Reimers is that claim 1 requires a melt index of 7 g/10 min whereas the 3 highest specific melt index explicitly described by Reimers is 3.51 (Table 1, 4 Example 1–A). 5 E. Examiner’s Rationale 6 To overcome the difference, the Examiner turned to Akao. Ans., 7 page 2. 8 In particular, the Examiner refers to col. 8:34–44: 9 A suitable melt flow index (MFI, ASTM D-1238, 10 Condition G) of the rubber-containing aromatic monovinyl 11 resin is 3 to 40 g/10 minutes, preferably 5 to 35 g/10 minutes, 12 more preferably 7 to 30 g/10 minutes, the most preferably 10 to 13 25 g/10 minutes. The MFI of less than 3 g/10 minutes results in 14 the frequent occurrence of short shot and weld lines due to the 15 inferiority of resin fluidity and in the lengthening of molding 16 cycle. On the other hand, the MFI of more than 40 g/10 17 minutes results in small physical strength, the frequent 18 occurrence of burrs and the tendency to thermal degradation. 19 Akao does not describe the use of styrene/zinc dimethacrylate 20 copolymers for making its films. 21 Based on Akao, the Examiner reasoned that it would have been 22 obvious to use make a styrene/zinc dimethacrylate copolymer having an 23 MFI of at least 7 g/10 min. Why? Because Akao teaches that use of that 24 MFI minimizes short shot and weld line problems, as well as increasing 25 Appeal 2013-010509 Application 12/395,578 13 physical strength and minimizing burrs and thermal degradation. Ans., 1 page 3. 2 Appellant takes the position that the problems Akao set out to solve 3 only occur at a MFI less than 3 and because Reimers describes MFIs higher 4 than 3 in Table 1 that there is no motivation [i.e., reason] to use the claimed 5 MFI of at least 7. Br., page 13. 6 F. Discussion 7 Even if we assume that Appellant may have a point with respect to 8 Akao, the point misses the mark. 9 A problem Appellant set out to solve was reducing mold cycle time all 10 the while maintaining suitable polymer properties. Specification ¶¶ 0006 11 and 0013. 12 It is true that Reimers does not explicitly describe an MFI greater than 7 g/10 13 min. However, the mere fact that the prior art differs from the subject matter of a 14 claim does not mean that the claimed subject matter would not have been obvious. 15 Dann v. Johnston, 425 U.S. 219, 239 (1976) (The mere existence of differences 16 between the prior art and an invention does not establish the invention’s non-17 obviousness). 18 Significant, in our view, is the fact that Reimers does not limit its invention 19 to MFIs of 3.0 and 3.51 as set out in Table 1. Rather, the MFIs reported there 20 “illustrate the . . . [Reimers] invention.” Col. 6:14–15. Thus, Reimers does not 21 indicate that the explicitly described MFIs are critical. Rather, in our view, 22 Reimers leaves it to one skilled in the art to determine an appropriate MFI for a 23 particular use. 24 Appeal 2013-010509 Application 12/395,578 14 Appellant’s background discussion in its Specification, taken with the prior 1 art we mention in connection with our discussion of that background, is convincing 2 evidence that one skilled in the art would have known that use of a lower 3 molecular weight achieves faster mold cycle times. 4 Reduced mold cycle times were of interest to one having ordinary skill in the 5 art, and indeed to the industry making molded products from the styrene/zinc 6 dimethacrylate copolymers described by Reimers. 7 To be sure, there is a point below which the molecular weight cannot be 8 further reduced. Kihara, col. 1:46–52; Specification ¶ 0007. However, the prior 9 art makes it clear that one skilled in the art would have been capable of 10 determining MFIs which work and which do not work. To the extent that one 11 skilled in the art would have been interested in improving cycle time when 12 molding with the Reimers resins, we entertain no doubt that that person would 13 have been capable of doing so on the basis of routine experimentation to ascertain 14 cycle time as a function of MFI (or molecular weight). 15 Appellant maintains that the claimed compositions produce 16 unexpected results. The Examiner disagreed, finding inter alia that 17 Appellant failed to compare the closes prior art (e.g., Examples 1–B and 1–C 18 of Table 1 of Reimers). Ans., page 11. The Examiner was unable to discern 19 what feature of the claimed combination produces the alleged unexpected 20 results. Id. Furthermore, the Examiner found that the comparisons set out in 21 Table 1 of the Specification are not commensurate in scope with the breadth 22 of claim 1. Id. 23 Appeal 2013-010509 Application 12/395,578 15 We have been given no basis for disagreeing with the Examiner’s 1 assessment of the “unexpected results” evidence. 2 Appellant specifically maintains: 3 As shown in Table 1 [on page 10 of the Specification], the MFI 4 of monovinylidene aromatic copolymers within the claimed 5 range (Samples B - H) was higher than that of the polystyrene 6 polymer without the metal comonomer (Sample A). In 7 contrast, Reimers in Table 1 teaches that monovinylidene 8 aromatic copolymers outside the claimed range (Examples 1-B 9 and I-C) can be either higher or lower than that of the 10 polystyrene polymer without the metal comonomer (Example 1, 11 lines 25 and 26). Thus, one of ordinary skill in the art in 12 reading Reimers would not expect the increase in MFI seen in 13 monovinylidene aromatic copolymers within the claimed range. 14 Br., page 14. 15 Sample A in Table 1 relates to testing of a styrene homopolymer. 16 Samples B–H in Table 1 relate to testing of styrene/zinc dimethacrylate 17 copolymers. 18 Table 1 of the Specification is reproduced below. 19 Appeal 2013-010509 Application 12/395,578 16 Appeal 2013-010509 Application 12/395,578 17 Also reproduced below is Appellant’s Fig. 3. 1 2 Figure 3 depicts cycle times as a function of Vicat Temperature. 3 What becomes immediately apparent from the data in Table 1 and Fig. 3 is 4 that in the case of Sample G (within the scope of claim 1), the cycle time of 26.3 is 5 higher than the cycle time of Sample A (based on a homopolymer of styrene 6 without any zinc dimethacrylate). Both Samples A and G have MFIs and Vicats 7 within the scope of claim 1. On this basis, we have to ask: “How is claim 1 8 limited to an unexpected result?” 9 Claim 1 is not limited to an invention defining subject matter which 10 overcomes the cycle times sought to be achieved by Appellant. 11 G. Claim 24 12 Claim 24 calls for a monovinylidene aromatic copolymer that “is a general 13 purpose polystyrene.” Br., page 19. 14 Appeal 2013-010509 Application 12/395,578 18 In the Final Rejection, the Examiner found that Reimers describes general 1 purpose polystyrenes, citing to col. 5:66 – col. 6:10. 2 Appellant maintains in the Appeal Brief, that Reimers “does not specifically 3 disclose that the [Reimers] ionomers are crystal grade polystyrene.” Br., page 16. 4 Appellant also maintains that Akao relates to “rubber containing” resins. Id. What 5 Appellant does not address is the portion of Reimers on which the Examiner relied. 6 An appeal brief shall “explain why the examiner erred . . . .” 37 C.F.R. 7 § 41.37(c)(1)(iv). The Examiner again relied on col. 5:66 – col. 6:10 in the 8 Answer. Ans., page 13. The Reply Brief does not address col. 5:66 – col. 6:10. 9 The reference to crystal grade polystyrene appears to be a side-show apart from the 10 main event given that claim 24 refers to general purpose polystyrene—not crystal 11 grade polystyrene. 12 H. Claim 6 13 Dependent claim 6 refers to “a high impact polystyrene that includes a 14 conjugated 1,3-diene.” (Italics added.) 15 The Specification describes a “monovinylidene aromatic polymer [that] may 16 also be a high impact polystyrene, wherein a 1,3–conjugated diene is dispersed in a 17 styrenic matrix.” Specification ¶ 0010 (italics added). 18 “Includes” would cover a polymer in which the conjugated 1,3-diene is part 19 of the polymer chain, whereas “dispersed” means that the conjugated 1,3-diene is 20 mixed with, but does not form part of, the polystyrene. The subject matter of claim 21 6 is (1) not described in the Specification (35 U.S.C. § 112—written description 22 requirement) and/or (2) is indefinite (35 U.S.C. § 112—definiteness requirement). 23 Appeal 2013-010509 Application 12/395,578 19 On that basis, and apart from unpatentability under § 103(a), we enter a new 1 rejection of claim 6. 2 V. Other Arguments 3 We have considered applicant’s remaining arguments and find none that 4 warrant reversal of the Examiner’s rejections. Cf. In re Antor Media Corp., 689 5 F.3d 1282, 1294 (Fed. Cir. 2012). 6 VI. Decision 7 Upon consideration of the appeal, and for the reasons given herein, it is 8 ORDERED that the decision of the Examiner rejecting the claims on 9 appeal over the prior art is affirmed. 10 FURTHER ORDERED that since we have considered additional prior 11 art and provided additional rationale in support of unpatentability, our affirmance 12 of the § 103(a) rejections is designated as a new rejection. 37 C.F.R. § 41.50(b). 13 FURTHER ORDERED that claim 6 is rejected under 35 U.S.C. § 112 14 (lack of written description and indefiniteness). 37 C.F.R. § 41.50(b). 15 FURTHER ORDERED that our decision is not a final agency action. 16 FURTHER ORDERED that within two (2) months from the date of 17 our decision, appellant may further prosecute the application on appeal by 18 exercising on of the two following options: 19 Option 1: Request that prosecution be reopened by submitting 20 an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1). 21 Option 2: Request rehearing on the record presently before the 22 Board. 37 C.F.R. § 41.50(b)(2). 23 Appeal 2013-010509 Application 12/395,578 20 FURTHER ORDERED that no time period for taking any 1 subsequent action in connection with this appeal may be extended under 2 37 C.F.R. § 1.136(a)(1)(iv). 3 AFFIRMED 4 (New ground of rejection—37 C.F.R. § 41.50(b)) 5 bar 6