Ex Parte Smedberg et al

Patent Trial and Appeal Board

Feb 25, 2019

12667551 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/667,551 02/18/2010
29052 7590 02/27/2019
Eversheds Sutherland (US) LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
FIRST NAMED INVENTOR
Annika Smedberg
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.
19727-0028 9366
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNIKA SMEDBERG, BILL GUSTAFSSON,
and DANIEL NILSSON
Appeal 2018-003153
Application 12/667 ,551
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
LILAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 3, 17, 23, 26, 27, 39, and 40 under 35 U.S.C. § 103(a)
as unpatentable over the combined prior art of Gustaffsson (US 5,535,075,
July 23, 1996) and Naarmann (US 3,914,329, Oct. 21, 1975), and of claims
1, 19, 27, and 41 over Lal ( US 3,666,737).
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 The real party in interest is stated to be Borealis Technology OY (Br. 2).
Appeal 2018-003153
Application 12/667 ,551
Claim 19 is illustrative:
Claim 19. A polymer composition
A) an unsaturated polyethylene polymer wherein the
unsaturated polymer is a polyethylene or polypropylene, and
B) a free radical generating compound of formula
wherein Ar and Ar' independently represent a phenyl, benzyl or
naphthyl group optionally substituted by 1 to 4 substituents,
R 4 and R 4' each are methyl; and
R5 and R5' each independently represent a straight chain alkyl
group having C6-30 carbon atoms.
(Br. Claims Appendix).
Independent claims 1 and 17 are also directed to a "polymer
composition comprising" 2 similar to claim 19 except the formula used to
represent the free radical generating peroxide compound differs (Br. Claims
Appendix).
Appellants' arguments are directed to the each group of claims
rejected, and do not separately argue any claim in either rejection (Br. 5-8).
Thus, the claims stand or fall together in each rejection.
2 It appears to be an oversight that claim 19 does not similarly contain the
word "comprising". In any event, absent any limiting transitional word (i.e.
consisting of), we interpret the claim as being open-ended.
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Application 12/667 ,551
ANALYSIS
Upon consideration of the evidence in this appeal and each of
Appellants' contentions as set forth in the Appeal Brief filed July 10, 2017,
we determine that Appellants have not demonstrated reversible error in the
Examiner's rejections (e.g., Ans. 4--9 (mailed Oct. 5, 2017)). In re Jung,
637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining the Board's long-held
practice of requiring Appellants to identify the alleged error in the
Examiner's rejection). We sustain the rejection for the reasons expressed by
the Examiner in the Final Office Action and the Answer. We add the
following for emphasis.
The§ 103 Rejection based on Gustafsson and Naarmann
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
Appellants' main argument is that the Examiner used impermissible
hindsight in selecting the peroxide of N aarmann for use as the peroxide in
Gustafsson (Br. 5-7), especially in light of the "surprising benefit" of
producing "less methane than a cross-section of know[ n] peroxides" (Br. 6).
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Application 12/667 ,551
Appellants rely upon the Nilsson declarations 3 for their discussion of this
benefit (id.)
As found by the Examiner, there is no doubt that a skilled artisan
knew how to construct a polymer system with polyethylene or
polypropylene and a free radical generating peroxide crosslinking compound
which is useful for the same purpose Appellants' describe ( of a layer
surrounding the conductor of a wire or cable), as exemplified in Gustafsson
07 5 ( col. 5, 1. 40 to col. 6, 1. 51; Ans. 3--4, 6; see also Appellants'
Background art section, Spec. 1-3). Appellants also do not dispute the
Examiner's determination that Naarmann exemplifies that the free radical
peroxide compounds encompassed by the claims are known for use in a
reaction to make, e.g., an oligomer (which appears to be a crosslinking
reaction) (Br. generally).
Appellants' arguments that impermissible hindsight was used because
Naarmann "is in such a remote field" (Br. 5) and because of the surprising
benefit discussed are not persuasive of error in the Examiner's rejection
because they fail to adequately consider the prior art as a whole, and the
inferences that one of ordinary skill would have drawn therefrom, and thus
do not adequately address the Examiner's obviousness position (generally
Ans.). Appellants' conclusory statement that Naarmann is "in such a remote
field" (Br. 5) is not sufficient to address the Examiner's reasoning that "the
peroxide ofNaarmann would have been selected based upon Gustafsson's
3 See Declaration of Dr. Daniel Nilsson ( a named inventor of the case on
appeal) and Second Declaration of Dr. Daniel Nilsson in the Evidence
Appendix of the Brief.
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Appeal 2018-003153
Application 12/667 ,551
design criteria for the peroxide initiator" (Ans. 6, (the Examiner points out
the closely matching decomposition temperatures taught in each reference)).
The Examiner only relies upon Naarmann to exemplify that it is known to
use peroxide free radical generating compounds at a similar reaction
temperature as needed by Gustafsson (Ans. 6). See In re Keller, 642 F.2d
413, 425-26 (CCPA 1981)
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
see also e.g., In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (it is
well established that in evaluating references it is proper to take into account
not only the specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom).
Appellants' reliance on the alleged surprising benefit of less methane
production is inadequate for the reasons explained by the Examiner (Ans. 8-
9). The burden of showing unexpected results rests on the person who
asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, it is well-established
that the showing of unexpected results must be commensurate in scope with
the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
As the Examiner explains, Appellants' proffered evidence is not sufficient to
satisfy their burden at least because the claims are directed to a polymer
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Application 12/667 ,551
composition per se whereas the alleged surprising benefit relates to a method
of manufacturing cable layers (Ans. 8).
In the appeal before us, it is questionable whether the results shown
by the Declaration data are properly characterized as unexpected. Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness"). Nowhere in the Specification do the Appellants characterize
the combination of polymer component A with free radical generating
component B as achieving results that are unexpected. Under these
circumstances, we view this Declaration data as merely representing the
optimization of the addition of a known peroxide free radical generating
compound with a known polymer which would have been within the skill of
and, thus, obvious to the artisan.
Furthermore, Appellants have not shown how the results of two tested
inventive samples (la and la') are commensurate in scope with the claims.
Indeed Appellants do not refute the Examiner's determination that claim 19
does not even encompass the two inventive examples (Ans. 8).
Furthermore, each independent claim 1 and 17 recites a "polymer
composition comprising" components (A) and (B), thus permitting the
inclusion of other unrecited components; each component may be present in
any amount; and each component is somewhat generic and, thus, include
very large numbers of species.
Accordingly, Appellants have not provided persuasive technical
rationale or adequate evidence to refute the Examiner's obviousness
determination (generally Ans.; Br.). KSR, 550 U.S. at 416 (the predictable
use of prior art elements according to known methods for their established
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Application 12/667 ,551
functions is likely to be obvious when it does no more than yield predictable
results). "A person of ordinary skill is also a person of ordinary creativity,
not an automaton." Id. at 4 21.
Thus, we affirm the§ 103 rejection of the claims based on Gustafsson
and Naarmann.
The§ 103 rejection based on Lal
Appellants' argument that there is no reason to select the specifically
required substituents of claim 1 ( or 19) so as to arrive at the claimed
invention (Br. 8) is not persuasive of error in the Examiner's obviousness
determination. Appellants do not dispute the Examiner's determination that
Lal does indeed encompass the claimed polymer system. Appellants have
not shown error in the Examiner's determination that one of ordinary skill in
the art, using no more than ordinary creativity, would have readily selected
the appropriate substituents for the peroxide following the teachings of Lal
(Ans. 5, 7). Appellants do not sufficiently address the Examiner's position
that there are a limited number of possibilities needed to arrive at the
claimed invention that are all taught or suggested in Lal (id.). Cf Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that
the prior art's disclosure of a multitude of 1200 possible combinations failed
to render any particular formulation less obvious).
The alleged surprising benefit of less methane produced is not
convincing of reversible error in this rejection for similar reasons set out
above.
Thus, we affirm the§ 103 rejection of the claims based on Lal.
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CONCLUSION
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. § 1.136(a).
AFFIRMED
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