Ex Parte Sosa et al

Board of Patent Appeals and Interferences

Feb 25, 2011

11425618 (B.P.A.I. Feb. 25, 2011)

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.
11/425,618 06/21/2006 Jose M. Sosa COS-1053 (4176-01300) 9536
25264 7590 02/28/2011
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
02/28/2011 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 JOSE M. SOSA,
SHAZIA ULLAH, and BILLY ELLIS
____________

Appeal 2010-001803
Application 11/425,618
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil action,
as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in
37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery
mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.

Appeal 2010-001803
Application 11/425,618

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s refusal to allow claims 1 through 7 and 18 through 21.2 We have
jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of preparing a high
impact polystyrene. Claim 1 is illustrative:
1. A method of preparing a high impact polystyrene (HIPS)
comprising:
contacting styrene monomer;
from 1 wt.% to 15 wt.% of a high cis polybutadiene
elastomer having a greater than 90% cis content; and an initiator
under high shear within a reaction zone, wherein the high shear is
from 50 s-1 to 500 s-1, to thereby produce HIPS having an
elastomer particle size distribution in a polystyrene matrix of from
0.5 microns to 15 microns,
Appellants appeal the following rejections:
1) claims 1, 2, 7 and 21 under 35 U.S.C. § 102(b) as anticipated by
Cantrill (US 5,514,750, issued May 7, 1996);

2 We note that claims 8-10 and 12-17 are pending and stand rejected by the
Examiner. See Final Office Action mailed on May 6, 2008. However, in the
Appeal Brief dated October 21, 2008, Appellants only appealed the rejection of
claims 1-7 and 18-21. (App. Br. 2 and 4; see also Corrections to Appeal Brief
dated November 20, 2008). As Appellants did not appeal the rejection of
claims 8-10 and 12-17, we do not have jurisdiction over these claims. Ex parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). Upon return of
jurisdiction to the Examiner, the Examiner may cancel the unappealed claims or
direct Appellants to do so.
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Application 11/425,618

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2) claim 3 under 35 U.S.C. § 103(a) as unpatentable over Cantrill and
Westphal (US 3,996,311, issued Dec. 7, 1976);
3) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Cantrill and
Demirors (US 6,706,814 B2, issued Mar. 16, 2004);
4) claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Cantrill
and Ishii (US 5,489,652, issued Feb. 6, 1996); and
5) claims 18-20 under 35 U.S.C. § 103(a) as unpatentable over Cantrill,
Ishii, and Walter (US 4,282,334, issued Aug. 4, 1981).
With respect to rejection (1), Appellants focus their arguments on
features recited in claim 1. (App. Br. 3-4 and Reply Br. 1-2).3 Accordingly, we
limit our discussion to claim 1 only. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to rejections (2) through (5), Appellants provide no
additional arguments for these rejections and instead refer to their arguments
made regarding the rejection of claim 1 in rejection (1). (App. Br. 4-5).
ISSUE
Did the Examiner reversibly err in finding that Cantrill teaches that its
high impact polystyrene is produced under high shear as required by claim 1
within the meaning of § 102? We decide this issue in the negative.

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office Action
as our own, except for those findings that we expressly overturn or set aside in
the Analysis that follows. We add the following factual findings:

3 We refer to the Appeal Brief dated October 21, 2008, and the Reply Brief
dated December 7, 2009.
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Application 11/425,618

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1. The Specification discloses that “[a]s used herein, high shear refers to the
shear rate.” (Spec. para. [0017]).
2. Appellants do not specifically dispute the Examiner’s finding that “[a]
HIPS is produced by polymerizing some styrene in the presence of the
rubber to form the syrup at low shear [i.e., the low shear step] followed
by treatment of the syrup in a controlled shear device under extreme
conditions of shear [i.e., the high shear step] and pressure.” (Compare
Ans. 4 with App. Br. 3 and 4 and Reply Br. 1 and 2).
3. Appellants do not specifically dispute the Examiner’s finding that “the
conversion of the reacting monomers in the initial reaction step of the
process disclosed by Cantrill is much less than 100%, and . . . [that] the
reaction to some extent, continues in the high shear device.” (Compare
Ans. 11 with App. Br. 3 and 4 and Reply Br. 1 and 2).
Additional findings of fact may appear in the Analysis that follows.

PRINCIPLES OF LAW, ANALYSIS, AND CONCLUSION
Appellants do not dispute the Examiner’s finding that Cantrill teaches the
invention recited in claim 1 except for the requirement that the high impact
polystyrene is produced under a high shear. (Compare Ans. 3-6 with App. Br. 3
and 4 and Reply Br. 1 and 2). Specifically, Appellants argue that “the key
feature of producing High Impact Polystyrene under high shear is missing from
. . . Cantrill” because Cantrill teaches that its polymer is formed under low shear
conditions followed by an optional high shear step to alter the particle size
thereof. (App. Br. 4) (emphasis in original).
While Cantrill teaches the use of a low shear step prior to its high shear
step, Appellants do not specifically dispute the Examiner’s finding that “the
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conversion of the reacting monomers in the initial reaction step of the process
disclosed by Cantrill [i.e., the low shear step] is much less than 100%, and . . .
[that] the reaction to some extent, continues in the high shear device [i.e., the
high shear step]” to form a high impact polystyrene. (FF 2 and 3) (emphasis
added). In other words, since Cantrill teaches that the reaction to form a high
impact polystyrene continues during the high shear step, Appellants’ argument
that Cantrill does not teach producing high impact polystyrene under high shear
as required by claim 1 is without persuasive merit.
In addition, we note that Appellants’ open-ended transitional claim
language “comprising” does not exclude any additional shear steps, such as a
low shear step. Abbot Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir.
2008) (stating that the term “comprising” is “inclusive or open-ended” and
“does not exclude additional unrecited elements or method steps.”) (internal
quotations omitted).
Accordingly, based on the factual findings set forth in the Answer and
above, we sustain the Examiner’s decision to reject claims 1, 2, 7 and 21 under
§ 102(b) over Cantrill and non-separately argued rejections (2) through (5).

ORDER
The Examiner’s decision is affirmed.

TIME PERIOD
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).

AFFIRMED
Appeal 2010-001803
Application 11/425,618

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FINA TECHNOLOGY INC
P.O. BOX 674412
HOUSTON, TX 77267-4412