Ex Parte Sigworth et al

Board of Patent Appeals and Interferences

Jun 18, 2012

12077765 (B.P.A.I. Jun. 18, 2012)

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.
12/077,765 03/21/2008 William D. Sigworth 2007P005.US 7714
7590 06/18/2012
Daniel Reitenbach
CHEMTURA CORPORATION
199 Benson Road
Middlebury, CT 06749
EXAMINER
CHEUNG, WILLIAM K
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
06/18/2012 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 WILLIAM D. SIGWORTH and PETER FRENKEL

__________

Appeal 2011-006975
Application 12/077,765
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-4,12 and 25-31. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

Appeal 2011-007904
Application 11/552,591

2
Claim 1 is illustrative:1
1. A composition consisting of:

(A) from 48.9 wt % to 10 wt % of a polyolefin resin;
(B) from 40 wt % to 80 wt % of a raw granular starch;
(C) from 0.1 wt % to 10 wt % of a functionalized polyolefin coupling
agent for coupling the polyolefin resin to the raw granular starch,
the functionalized polyolefin coupling agent being selected from
the group consisting of maleic anhydride modified high-density
polyethylene, maleic anhydride modified low linear density
polyethylene and maleic anhydride modified polypropylene, and
optionally
(D) an additive selected from the group consisting of lubricants,
inorganic particles, antioxidants, foaming agents, dyes, pigments,
cross-linking agents, accelerators, mold-releasing agents, coating
materials, humectants, sealing materials, thickening agents,
diluting agents, binders and mixtures thereof.

Appellants appeal the following rejection:
Claims 1-4, 12 and 25-31 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dehennau (US 5,510,401, patented April 23, 1996).

ISSUES
Did the Examiner reversibly err by finding that the prior art
composition discloses unplasticized starch as an embodiment and/or
Appellants’ composition as claimed does not preclude plasticizer as a
component? We decide this issue in the negative.

1 Claims 1-4, 12 and 25-31 are argued together as a group (App. Br. 4),
accordingly, all of the claims on appeal either stand or fall together with
Claim 1.
Appeal 2011-007904
Application 11/552,591

3
FINDINGS OF FACT AND ANALYSES
Appellants contend that all of the examples disclosed by Dehennau
include glycerin as a plasticizer, and, therefore, Dehennau does not enable a
composition without the “optionally plasticized” starch component (App. Br.
4). Appellants further argue that plasticizers are explicitly absent from the
claimed invention (App. Br. 5).
Based on the teachings of Dehennau, we agree with the Examiner that
Dehennau discloses the claimed composition and additionally discloses
plasticized starch as merely a preferred embodiment. (Ans. 4-5; Dehennau,
col. 6, claims 1, 4, 7; col. 7, claim 16.) The disclosure of starch as a
component, as distinguished from the optional plasticized starch, is further
supported by the Dehennau disclosure. (Dehennau, col. 3, ll. 34-39.)
Appellants’ assertion that the examples of Dehennau all include plasticized
starch is without persuasive merit. In re Mills, 470 F.2d 649, 651 (CCPA
1972) (citation omitted) (“a reference is not limited to the disclosure of
specific working examples.” ). Thus, the Examiner has established that
Dehennau anticipates claim 1. Verdegall Bros., Inc. v. Union Oil Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.”).
We also agree with the Examiner that Appellants’ claim 1 does not
exclude the incorporation of plasticizers, even under a narrow construction
attributed to the “consisting of” language in claim 1. (Ans. 5). Appellants
have not directed us to any evidence that would rebut the Examiner’s
explanation that the additives recited in Appellants’ claim 1, specifically,
lubricants, diluting agents, binders, thickening agents (polymeric type),
Appeal 2011-007904
Application 11/552,591

4
which are effective in lowering the glass transition temperatures of the
claimed polymeric composition, would have a plasticization effect.
For the foregoing reasons stated above and in the Answer, we affirm
the Examiner’s decision to reject claims 1-4, 12 and 25-31.
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).

DECISION
The Examiner’s decision is affirmed.
ORDER
AFFIRMED
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