Ex Parte Stanga et al

Patent Trial and Appeal Board

Aug 30, 2018

13131355 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/131,355 05/26/2011
22511 7590 09/04/2018
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Milena Stanga
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.
17987/007001 5209
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
docketing@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILENA STANGA, CLAUDIA MANZONI,
GIOVANNI COMINO, and MARGHERITA ALBANO
Appeal2017-010415
Application 13/131,355
Technology Center 1700
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision rejecting claims 1, 7-9, and 11-15 under 35 U.S.C.
§ 103(a) as unpatentable over Chen2 in view of Apostolo 3 and Morikawa. 4
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify Solvay Specialty Polymers Italy S.P.A. as the real party
in interest (Appeal Br. 4).
2 Chen et al., US 6,310,141 Bl, October 30, 2001 ("Chen").
3 Apostolo et al., US 6,310,142 Bl, October 30, 2001 ("Apostolo").
4 Morikawa et al., WO 2008/133004 Al, November 6, 2004; hereinafter we
refer to the English translation US 2010/0120988 Al, published May 13,
2010 ("Morikawa").
Appeal2017-010415
Application 13/131,355
WeAFFIRM. 5
STATEMENT OF THE CASE
The invention relates to (per)fluoroelastomer compositions
comprising particles of perfluoropolymers dispersed in a
(per)fluoroelastomer matrix (Spec. ,r,r 1, 10).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. Some paragraphing has
been added to facilitate review.
1. A (per)fluoroelastomer composition comprising:
at least one (per)fluoroelastomer ((per)fluoroelastomer (A))
matrix comprising particles of at least one perfluoropolymer
(polymer (F)) having a melt flow index (MFI), measured at
372°C under a 5 Kg load according to ASTM D1238 standard,
of less than 10 g/10 min and at least 1.8 g/10 min, said particles
having an average size of less than 100 nm; wherein polymer
(F) particles are present in an amount of at least 2 % by weight
and at most 30 % by weight, with respect to the weight of
(per)fluoroelastomer (A);
wherein the polymer (F) is selected from the group
consisting of TFE/P A VE copolymers consisting essentially of
recurring units derived from TFE and from
perfluoromethylvinylether (MVE);
wherein the (per)fluoroelastomer (A) has one of the
compositions, consisting essentially of in mol %, selected from
the group consisting of:
(i) tetrafluoroethylene (TFE) 50--80 %,
perfluoroalkyl vinyl ethers (PAVE) 20--50 %; and
5 Our decision refers to the Specification ("Spec.") filed May 26, 2011, the
Examiner's Final Office Action ("Final Act.") dated October 25, 2016,
Appellants' Appeal Brief ("Appeal Br.") filed April 21, 2017, the
Examiner's Answer ("Ans.") dated June 2, 2017, and Appellants' Reply
Brief ("Reply Br.") filed August 2, 2017.
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Application 13/131,355
(ii) tetrafluoroethylene (TFE) 20-70 %,
fluorovinyl ethers (MOVE) 30-80 %, perfluoroalkyl
vinyl ethers (PA VE) 0-50 %;
wherein the PA VE of (i) and (ii) are of formula
CF2=CFORf, wherein Rf is a C1---C6 perfluoroalkyl group; and
wherein the MOVE of (i) and (ii) are of formula
CFX2=CX20CF20R11 f, wherein X2 is F and R"f is a group
selected from---CF2CF3 (MOVEl);---CF2CF20CF3 (MOVE2);
or -CF 3 (MOVE3).
ANALYSIS
Appellants state that all the pending claims stand or fall together
(Appeal Br. 5). In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select
claim 1 as representative in deciding the issues on appeal.
The Examiner finds Chen discloses compositions including a
fluoroelastomer and a fluoroplastic at a blend ratio by weight of 80:20,
wherein the fluoroplastic includes perfluoropolymers such as
tetrafluoroethylene perfluoro(alkoxy alkane) copolymers (Ans. 2). In
addition, the Examiner finds that the fluoroplastic has a melt flow index
(MFI) of 2.2 g/10 min tested at 372°C under a 5 kg load, and is a reaction
product of a plurality of monomers including tetrafluoroethylene (TFE) and
perfluorovinyl ethers such as perfluoromethylvinylether (PMVE) and
perfluoropropylvinyl ether (PPVE) (id.). The Examiner further finds the
fluoroelastomer is the reaction product of a plurality of monomers, at least
two of which include TFE and perfluorovinyl ethers (id.). The Examiner
concludes that it would have been obvious to substitute the PPVE in Chen's
example with PMVE, not only because Chen suggests these two materials as
alternatives for each other in the fluoroplastic, but also because one would
expect similar compounds would have similar properties (id. at 2-3, citing In
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Application 13/131,355
re Payne, 606 F.2d 303,313 (CCPA 1979); In re Papesch, 315 F.2d 381
(CCPA 1963); In re Dillon, 919 F.2d 688 (Fed. Cir. 1990); and MPEP
§ 2144.09). The Examiner treats the transitional phrase, "consisting
essentially of," as used in claim 1, as "comprising" because Appellants
disclose non-limiting examples of suitable (per)fluorinated monomers for
the (per)fluoroelastomer include functional fluoroalkylvinyl ethers (PA VE)
(Ans. 3).
The Examiner acknowledges that Chen fails to disclose the average
particle size of the perfluoropolymer is less than 100 nm, but finds Apostolo
teaches TFE copolymers with one or more monomers containing at least one
ethylene unsaturation in amounts ranging from 0.01-10 mol%, wherein the
average particle size of the fluoropolymer is 10-100 nm (Ans. 3). The
Examiner finds Chen and Apostolo are analogous art in the same field of
endeavor, namely compositions containing fluoroelastomer and fluoroplastic
(id.). The Examiner concludes that it would have been obvious to provide
Chen's fluoroplastic with an average particle size of 10-100 nm to obtain a
good dispersion of the fluoroplastic particles in the fluoroelastomer as
Apostolo teaches (id.).
The Examiner additionally acknowledges that Chen fails to disclose
the (per)fluoroelastomer has one of compositions (i) or (ii), as recited in
claim 1 (Ans. 3--4). However, the Examiner finds Morikawa teaches
perfluoroelastomer sealing compositions comprising 18-33 mol%
perfluoroalkylvinyl ether, 0.3---0.6 mol% of a monomer unit having a nitrile
group, a carboxyl group, and/or an alkoxycarbonyl group, and 69.15-73.69
mol% TFE (id. at 4). The Examiner finds Chen and Morikawa are
analogous art in the same field of endeavor, namely molded articles prepared
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from fluoroelastomers containing TFE and fluorovinyl ethers (id.). The
Examiner concludes that it would have been obvious to substitute Chen's
fluoroelastomer with a fluoroelastomer as taught in Morikawa because
Morikawa teaches such provides excellent chemical, solvent, and heat
resistance, and small compression set (id.).
Appellants argue that there is no motivation to combine Chen and
Apostolo (Appeal Br. 9). In particular, Appellants urge that Apostolo's
teaching that the very good dispersability is the result of polymerizing the
fluoropolymer and the fluoroelastomer in the same reactor (id. at 9-10;
Reply Br. 3). According to Appellants, Apostolo teaches two methods of
forming the composition, one method of which the fluoroplastic particles are
simply mixed with the fluoroelastomer followed by a coagulation step, and
the second method of which polymerizes the two components in two
separate steps within the same reactor (Appeal Br. 10). Appellants contend
that Apostolo teaches that it is the second method, and not the specific
particle size, that leads to the very good dispersion (id.). Because Chen uses
the first method, Appellants urge that the ordinary artisan would only be
motivated to apply Apostolo' s second method, not Apostolo' s particle size,
to achieve a very good dispersion (id. at 11 ).
In related arguments, Appellants contend that the Examiner's
selection of Apostolo's fluoroplastic particle size alone, while excluding
other characteristics, entails impermissible hindsight reconstruction (Appeal
Br. 13-14), and the Examiner overlooks potential technical difficulties
creating the fluoroplastic having a high molecular weight, while maintaining
a small particle size (id. at 15).
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These arguments are not persuasive of reversible error. As the
Examiner finds, Chen's fluoroplastics are semicrystalline polymers having
MFis that overlap the range recited in claim 1 and are produced by emulsion
polymerization (Ans. 6; Chen 4:7-22; 5:60-62). Likewise, as the Examiner
finds, Apostolo's fluoroplastic particles are semicrystalline polymers having
particle sizes from 10-100 nm and produced by emulsion polymerization
(Ans. 6; Apostolo 2: 19-20, 41--49). In addition, the Examiner finds, without
dispute, that particle size would affect the viscosity and how well the
fluoroplastic particles are mixed in the fluoroelastomer (Ans. 7). Further,
although Appellants urge that Apostolo's teaching regarding dispersability is
only in reference to the second method, we disagree. Apostolo teaches both
methods in the same paragraph and concludes the paragraph by generally
stating that "[b ]y operating in this way, the fluoroelastomer should cover the
semicrystalline fluoropolymer latex particles, allowing to obtain a very good
dispersion of the latter in the fluoroelastomer" (Apostolo 2:33-36).
Contrary to Appellants' argument, there is no clear indication that Apostolo
intended to limit this dispersion benefit to only the second method as
opposed to both methods. Moreover, Appellants fail to provide persuasive
technical reasoning or an evidentiary showing establishing any technical
difficulties obtaining Chen's fluoroplastic particles having particle sizes of
10-100 nm. Because Chen is silent as to the particle size of the
fluoroplastic, it is reasonable to expect that the ordinary artisan would look
to teachings in the same field of endeavor, including Apostolo, for guidance
as to suitable particle sizes. Thus, we are not persuaded that the Examiner's
proposed combination of Chen and Apostolo depends on impermissible
hindsight.
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Appellants next argue that Morikawa's fluoroelastomer requires a
component, a cross-linking agent comprising 0.3---0.6 mol% of the
composition, that is excluded by claim 1 's recitation of a fluoroelastomer
"consisting essentially of' one of two copolymers, neither of which
including a cross-linking agent (Appeal Br. 16; Reply Br. 9-10). Appellants
contend that the Examiner misinterprets the transitional phrase, "consisting
essentially of," as used in claim 1 as meaning "comprising" (Appeal Br. 17).
Appellants urge that, by using "consisting essentially of," the recited
fluoroelastomer expressly excludes Morikawa's cross-linking agent because
the cross-linking agent would necessarily have an effect on the nature of the
composition (id. at 18). Appellants also note that this phrase excludes the
embodiment in their Specification wherein the fluoroelastomer includes
cyanide groups (id.).
This argument is also not persuasive of reversible error. "[I]t is
necessary and proper to determine whether [the] specification reasonably
supports a construction" that would exclude or include particular ingredients
such as those in the prior art. In re Herz, 537 F.2d 549, 551-52 (CCPA
197 6). Use of "consisting essentially of' language "opens the claims to the
inclusion of ingredients which would not materially affect the basic and
novel characteristics of appellant's compositions as defined in the balance of
the claim." In reJanakirama-Rao, 317 F.2d 951,954 (CCPA 1963).
Appellants have the burden of showing that the ingredients not specifically
claimed, but taught in the applied prior art, would materially affect the basic
and novel characteristics of the claimed invention. In re De Lajarte, 337
F.2d 870, 874 (CCPA 1964). The ingredients that are not disclosed in the
Specification as detrimental to the desired properties of a claimed
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composition are not construed as materially affecting the basic and novel
characteristics of a claimed invention. Herz, 537 F.2d at 551-52; see also
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
(Patentees "could have defined the scope of the phrase 'consisting
essentially of for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel
characteristics of the invention.").
Here, Appellants argue not that Morikawa's cross-linking agent
materially affects the basic and novel characteristics of the claimed
invention, but that the cross-linking agent materially affects the basic and
novel characteristics of Morikawa's invention. Appellants do not carry their
burden of establishing that their use of "consisting essentially of' in claim 1
affects the basic and novel characteristics of the claimed composition by
establishing that the cross-linking agent is required by Morikawa. In
addition, Appellants fail to direct our attention to a teaching in the
Specification, or otherwise establish, that ingredients such as the cross-
linking agent of Morikawa are, or would be, detrimental to the desired
properties of the claimed invention. We are, therefore, not persuaded that
Appellants' claim 1 should be read to exclude Morikawa's cross-linking
agent.
Appellants next argue that the claimed invention provides a unique
synergism due to the combination of the recited (per)fluoroelastomer with
particles ofperfluoropolymer of given MFI and size (Appeal Br. 19).
According to Appellants, this synergism provides a composition with an
improved balance of mechanical properties, including tensile
strength/elongation ratio (TS/EB), and improved sealing properties, which
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Application 13/131,355
results Appellants contend are unexpected (id.). In particular, Appellants
direct our attention to the data in Tables 1 and 2 of the Specification (Spec.
,r,r 88-89), and explain that, when only one of the particle size and the MFI
limitations is fulfilled, the TS/EB ratio is much worse than when the
fluoropolymer meets both particle size and MFI limitations (Appeal Br. 20).
Appellants urge, therefore, that when the fluoropolymer's particle size is
sufficiently small, specifically not exceeding 100 nm, and molecular weight
is sufficiently large, specifically with an MFI not exceeding 10 g/10 min,
"there is a synergistic and unexpected improvement in the mechanical
properties of the resulting product" (id.). In addition, Appellants state that
"the two classes of perfluoroelastomers recited presently in the main claim
possess similar mechanical features and therefore skilled artisans would
expect compositions made using either ... to have similarly improved
properties" (id. at 21 ).
Appellants' arguments and evidence is insufficient to establish
unexpected results for the entire scope of claim 1. The burden of
establishing that unexpected results support a conclusion of nonobviousness
rests with Appellants. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
The relied-upon results must be commensurate in scope with the claims. See
In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). "Establishing that
one ( or a small number of) species gives unexpected results is inadequate
proof, for 'it is the view of [the CCPA] that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support."' See In re Greenfield, 571 F.2d 1185, 1189
(CCP A 1978) ( quoting In re Tiffin, 448 F .2d 791, 792 (CCP A 1971 )).
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As the Examiner finds (Ans. 9), Appellants' evidence is limited to two
inventive examples and two comparative examples, each utilizing a single
fluoroelastomer. Moreover, this evidence uses a single fluoropolymer, i.e.,
98 mol% TFE, 2 mol% MVE, 6 and the same proportion of fluoropolymer to
fluoroelastomer, i.e., 10:90 parts by weight (Spec. ,r 88, Table 1).
Appellants fail to establish that these few examples are sufficient to establish
that the entire scope of fluoroelastomers, fluoropolymers, particle sizes, and
MFis recited in claim 1 would likewise exhibit similar unexpected
synergism (Ans. 9). Indeed, there is no evidence to suggest that MFis up to
10 g/10 min and particle sizes up to 100 nm, let alone other fluoroelastomers
and fluoropolymers having more or less TFE than those tested, would
reasonably have been expected to be similarly synergistic.
Appellants also argue that "a skilled artisan would recognize that any
variability in the composition reflected in the claims would be expected to
have similar properties as those for the Example composition presented in
the specification" (Reply Br. 10). However, Appellants fail to provide either
persuasive technical reasoning or evidentiary support for this argument.
Therefore, the relied on results are insufficient when weighed against the
applied prior art because these results are not commensurate in scope with
claim 1.
Accordingly, we sustain the Examiner's obviousness rejection of
claims 1, 7-9, and 11-15.
6 We note comparative Example 4c uses a fluoropolymer with a slightly
lower amount of MVE without explanation (Spec. ,r 88, Table 1 ).
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DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1,
7-9, and 11-15 under 35 U.S.C. § 103(a) as unpatentable over Chen in view
of Apostolo and Morikawa 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)(l).
AFFIRMED
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