Ex Parte Sun

Patent Trial and Appeal Board

Sep 17, 2012

12142141 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/142,141 06/19/2008 Luyi Sun COS-1161 6771
25264 7590 09/17/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
MIGGINS, MICHAEL C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
09/17/2012 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)

PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LUYI SUN
____________________

Appeal 2011-009418
Application 12/142,141
Technology Center 1700
____________________

Before FRED E. McKELVEY, CATHERINE Q. TIMM and
KAREN M. HASTINGS, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Statement of the case
Fina Technology Inc. (“applicant”), the real party in interest (Brief, page 1), 1
seeks review under 35 U.S.C. § 134(a) of a final rejection dated 11 May 2010. 2
The application has been published as U.S. Patent Application Publication 3
2009/0315226 A1. 4

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In support of prior art rejections, the Examiner relies on the following 1
evidence. 2
Batlaw et al.
“Batlaw”
U.S. Patent Application
Publication
2005/0249904 A1

10 Nov. 2005
Page et al.
“Page”
U.S. Patent Application
Publication
2008/0038500 A1

14 Feb. 2008

Batlaw is prior art under 35 U.S.C. § 102(b) and Page is prior art under 3
35 U.S.C § 102(a). Applicant has not attempted to antedate Page (37 CFR 4
§ 1.131). 5
We have jurisdiction under 35 U.S.C. § 134(a). 6
Examiner’s rejections 7
Rejection 1: Claims 1-7 and 12-19 stand rejected under § 102(b) as 8
anticipated by Batlaw. Answer, page 3. 9
Rejection 2: Claims 8-11 stand rejected under § 103(a) as unpatentable over 10
Batlaw and Page. Answer, page 4. 11
Claims on appeal 12
Claims 1-19 are on appeal. 13
In connection with the § 102(b) rejection over Batlaw, applicant singles out 14
for separate consideration Claims 1, 5, and 11. Brief, page 4. However, Claim 11 15
has not been rejected under § 102(b). Accordingly, we elect to decide the § 102(b) 16
issue on the appeal on the basis of Claims 1 and 5. 37 CFR § 41.37(c)(1)(vii). 17
In connection with the § 103(a) rejection of Claims 8-11, no claim is set out 18
for separate consideration, the claims being argued as a group. Accordingly, we 19

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elect to decide the appeal on the basis of Claim 11 given that some argument with 1
respect to that claim was presented in connection with the § 102(b) rejection. 2
37 CFR § 41.37(c)(1)(vii). 3
Claims 1, 5 and 11, which we reproduce from the Claim Appendix of the 4
Appeal Brief, read [matter in brackets and some indentation added; some 5
limitations in dispute in italics]: 6
Claim 1 7
An injection stretch blow molded (ISBM) article comprising: 8
a polypropylene-based impact copolymer. 9
Claim 5 10
The ISBM article of claim 1, wherein the article is opaque or 11
semi-opaque. 12
Claim 11 13
A semi-opaque injection stretch blow molded (ISBM) beverage 14
container comprising: a propylene-based impact copolymer exhibiting 15
[1] a melt flow rate of from about 1 dg/min to about 150 dg/min.; 16
[2] a maximum top load of at least about 160 N at a weight of 23 g; 17
and 18
[3] a cold temperature drop impact resistance of at least about 6 feet. 19
Definitions 20
The term “propylene based impact copolymer” generally “refers to those 21
copolymers composed primarily of [1] propylene and [2] an amount of other 22
comonomers, wherein the comonomers are present in an amount of from about 23
1.0 wt.% to about 15 wt.% . . . relative to the total weight of polymer, for 24

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example.” Specification, page 8 ¶ 0032. See also Specification ¶¶ 0025-0026 1
describing a two-phase heterophasic polymer wherein the first phase may be 2
homopolymer of propylene and the second phase can include a rubber phase, such 3
as ethylene-propylene rubber. 4
The term “semi-opaque” means some, but not all, visible light passes 5
through an ISBM article. Specification ¶ 0013. 6
Analysis 7
Rejection 1 8
Point 1 9
Applicant challenges the anticipation rejection with a statement to the effect 10
that if a reference (Batlaw in this case) describes a broad range and the claims are 11
directed to a narrow range and there is evidence of unexpected results, one may 12
conclude that anticipation has not been established. Brief, page 3. However, 13
unexpected results are not relevant to an anticipation rejection. 14
Point 2 15
Applicant further challenges the anticipation rejection arguing that according 16
to Batlaw, any form of polypropylene is said to be useful to practice the Batlaw 17
invention. Brief, page 3; Batlaw ¶ 0043. Applicant points out that a description of 18
a genus may not render obvious a species within the genus, citing In re Baird, 19
16 F.3d 380 (Fed. Cir. 1994). Whether Baird survived KSR Int’l. Inc. v. Teleflex 20
Inc., 550 U.S. 398 (2007) could be debated. In this appeal, however, we need not 21
resolve that debate. 22
Batlaw reveals the following (¶ 0053) (matter in brackets added): 23

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The polypropylene polymers employed in the practice of the 1
[Batlaw] invention may include [1] homopolymers (known as HPs), 2
[2] impact or block copolymers (known as ICPs) (combinations of 3
propylene with certain elastomeric additives, such as rubber, and the 4
like), and [3] random copolymers (known as RCPS) made from at 5
least one propylene and one or more ethylenically unsaturated 6
comonomers. Generally, co-monomers, if present, constitute a 7
relatively minor amount, i.e., about 10 percent or less, or about 5 8
percent or less, of the entire polypropylene, based upon the total 9
weight of the polymer. Such co-monomers may serve to assist in 10
clarity improvement of the polypropylene, or they may function to 11
improve other properties of the polymer. Co-monomer examples 12
include acrylic acid and vinyl acetate, polyethylene, polybutylene, and 13
other like compounds. 14
Batlaw, therefore, describes three types of polypropylene polymers, one 15
of which, i.e., item [2], is a polypropylene-based impact copolymer. Compare 16
(1) Batlaw’s description of item [2] with applicant’s description of its impact 17
copolymers at Specification ¶¶ 0014, 0025, and 0026. 18
The Examiner found the Batlaw disclosure as set out in ¶ 0053 constitutes a 19
description of a propylene-based impact copolymer. Answer, pages 5-6. 20
While Baird involved a “large” genus, the Batlaw “genus” includes only 21
three species, set out as items [1], [2], and [3], supra. As noted by the Examiner, 22
Batlaw describes the claimed species albeit other species are described. Answer, 23
page 6. The description of the single species anticipates Claim 1. Titanium Metals 24

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Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985). See also In re Petering, 301 F.2d 1
676 (CCPA 1962) (description of genus of 20 compounds held to describe all 2
20 compounds) and In re Schaumann, 572 F.2d 312 (CCPA 1978). 3
Since Batlaw’s relevant disclosure is an anticipation of a propylene-based 4
impact copolymer, it does not matter whether other copolymers, such as random 5
copolymers, described by Batlaw are or are not “equivalent” copolymers. Brief, 6
page 4. 7
Point 3 8
While Claim 1 does not contain a “semi-opaque” limitation, Claim 5 9
requires that the article “is opaque or semi-opaque.” 10
According to applicant, Batlaw is said to teach away from “semi-opaque” 11
articles given that an objective of Batlaw is to obtain “clear, low haze 12
polypropylene articles . . .” Brief, page 4; Batlaw ¶ 0040. Applicant suggests that 13
Batlaw’s haze data is not relevant because it involves articles made from random 14
copolymers. Brief, page 4; Batlaw ¶ 0143. While “[h]igher levels of haze are 15
[said to be] undesirable (Batlaw ¶ 0085), the fact remains that Batlaw describes 16
containers having “low haze” (¶ 0040) and “substantially uniform clarity levels” 17
(¶ 0045). No evidence in the record has been called to our attention which would 18
establish that the low haze properties do not apply to Batlaw’s propylene-based 19
impact copolymers. 20

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Rejection 2 1
Claim 11 calls for a beverage container made from a propylene-based 2
impact copolymer having a melt flow index (MFI) from about 1 dg/min to about 3
10 dg/min and resulting in two properties: (1) a maximum top load of at least 4
about 160 N at a weight of 23 g and (2) a cold temperature drop impact resistance 5
of at least about 6 feet. 6
Batlaw reveals to one skilled in the art that the MFI will affect the final 7
clarity of a beverage container because MFI is said to be significant in determining 8
the speed at which a chemical composition may be fed into an injection mold 9
cavity to form a preform article (¶ 0085). Because Batlaw reveals to one skilled in 10
the art that MFI is a relevant factor in determining feed speed and feed speed is 11
obviously significant from a commercial point of view, it is readily apparent that 12
MFI is a result oriented variable within the skill of the art. Accordingly, it would 13
appear that the MFI limitation is within the skill of the art. 14
The Examiner also cites Page. Answer, page 4. Page reveals top load is a 15
property considered by one skilled in the beverage-making art. In particular, Page 16
reveals (¶ 0031) (italics added): 17
Third, bottles with thin and thick areas in the sidewalls give the 18
consumer an impression of poor container quality. Fourth, during 19
filling and distribution, the ability of containers to resist crushing 20
force from above, commonly known as top load strength, is important 21
for container and pallet integrity. When top load failures occur, the 22
initial failure occurs at the weakest point of the container, which often 23
corresponds to the point at which the container sidewall is thinnest. 24

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Uniformity of wall uses the container material more efficiently, i.e. 1
higher top load strength can be attained in a container of similar 2
weight when weak spots are diminished in the bottle sidewall. And 3
finally, the transmission rate of gaseous matter is dependent upon the 4
thickness of the barrier to be passed. Thus, thin sections of bottle wall 5
will allow gases such as oxygen, nitrogen, and water vapor to pass the 6
wall of the bottle at a higher rate than the thick sections. 7
The Examiner found that top load is a result-oriented variable within the 8
skill of the art. Answer, pages 4-5. Applicant disagrees. Brief, page 5. The 9
evidence supports the Examiner’s finding. Page reveals that by controlling 10
beverage wall thickness one skilled in the art can adjust top load. ¶ 0031. 11
Batlaw and Page do not appear to mention cold temperature drop impact 12
resistance. However, applicant reveals that a need existed for ISBM articles 13
having improved drop impact strength, particularly for beverage containers to be 14
refrigerated. Specification, ¶¶ 0002-0003. It appears therefore that drop impact 15
strength was a property taken into consideration by those skilled in the art. While 16
one can assume that applicant believes that a beverage container with improved 17
drop impact strength is obtained with its ISBM article, there is no showing that the 18
Batlaw ISBM article does not have a drop load strength the same as or similar to 19
that claimed by applicant. We note that both applicant and Batlaw use a two-step 20
process for making their respective bottles. Specification ¶ 0045; Batlaw, Figs. 2A 21
and 2B. The fact that data in the Specification can be argued to show that ISBM 22
bottles have a higher drop load strength than bottles made from random 23
copolymers, does not address the drop load strength of the Batlaw ISBM bottles 24

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made from essentially the same process as that described by applicant. Moreover, 1
applicant has not provided convincing evidence that the superior cold temperature 2
properties stemming from the use of impact polymer were, in fact, unexpected 3
rather than expected by those of ordinary skill in the art. 4
Other arguments 5
We have considered applicant’s remaining arguments and find none that 6
warrant reversal of the Examiner’s prior art rejections. Cf. In re Antor Media 7
Corp., 2012 WL 3055928, 103 USPQ2d 1555, 1563 (Fed. Cir. 2012). 8
Decision 9
Upon consideration of the appeal, and for the reasons given herein, it is 10
ORDERED that the decision on the Examiner rejecting the claims on 11
appeal over the prior art is affirmed. 12
FURTHER ORDERED that no time period for taking any subsequent 13
action in connection with this appeal may be extended under 37 CFR §1.136(a) 14
(1)(iv). 15
AFFIRMED 16
17
cam 18