Ex Parte Sun et al

Patent Trial and Appeal Board

May 15, 2018

12814552 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/814,552 06/14/2010 LuyiSun
25264 7590 05/17/2018
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
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.
COS-1218 RCE 9585
EXAMINER
MULCAHY, PETER D
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
05/1712018 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):
tammy.brzozowski@total.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUYI SUN, MICHAEL MUSGRAVE, and MARESH
PATKAR
Appeal2017-006989
Application 12/814,552 1
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4--10, 12-16, 18, and 21-23. We have
jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is FINA
TECHNOLOGY, INC. Appeal Br. 5.
Appeal2017-006989
Application 12/814,552
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a polymer that has
both mechanical strength in thermoforming (for example, into a packaging
material) and improved optical properties. Spec. i-f 2. Claim 1, reproduced
below with emphases added to certain key recitations, is illustrative of the
claimed subject matter:
1. A method of forming a clear packaging container
compnsmg:
providing a propylene based polymer formed from a
metallocene catalyst and exhibiting a melt flow rate of from
about 1 dg/min. to about 100 dg/min, or providing a blend of
propylene based polymers wherein each propylene based
polymer in the blend is formed from a metallocene catalyst and
exhibits a melt flow rate of from about 1 dg/min. to about 100
dg/min;
blending the propylene based polymer or the blend of
propylene based polymers with a nonitol-based clarifying agent
to form clarified polypropylene; and
thermoforming the clarified polypropylene into a
packaging container, wherein the packaging container exhibits a
gloss retention of at least about 40%, upon thermoforming.
Appeal Br. 21 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Lopez et al.
("Lopez")
US 2010/0098586 Al Apr. 22, 2010
2 In this opinion, we refer to the Final Office Action dated March 23, 2016
("Final Act."), the Appeal Brief filed October 27, 2016 ("Appeal Br."), the
Examiner's Answer dated January 27, 2017 ("Ans."), and the Reply Brief
filed March 27, 2017 ("Reply Br.").
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Application 12/814,552
Kazmnasa et al.
("Kazmnasa") 3
JP 2009-120797 June 4, 2009
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 4--10, 12-16, 18, 21, and 22 4 under 35
U.S.C. § 102 as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Lopez or Kazumasa. Ans. 4.
Rejection 2. Claim 23 under 35 U.S.C. § 102 as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over Lopez or
Kazumasa. Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections.")). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
3 Appellants refer to Kazumasa by the last name of a different one of the
reference's inventors, "Shinya." Appeal Br. 12.
4 The cover page of the Final Office Action refers to claims 1, 2, 4--16, 18,
and 21-23. Our understanding, however, is that claim 11 was not actually
subject to the Final Office Action and is not on appeal.
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Application 12/814,552
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellants do not present substantively separate arguments for any
claims other than claims 1 and 23 other than referencing the gloss retention
recitations of claims 4, 21, and 22 (Appeal Br. 17, 18). We therefore limit
our discussion to claims 1 and 23 and also discuss gloss retention to address
claims 4, 21, and 22. All other claims stand or fall with that claim with the
claim they depend from. 37 C.F.R. § 41.37(c)(l)(iv)(2013).
Claim 1. The Examiner rejects claim 1 under 35 U.S.C. § 102 as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Lopez or Kazumasa. Ans. 4. We first address the
rejections based on Lopez. The Examiner finds that Lopez teaches a
polymer formed from a metallocene catalyst along with a nonitol-based
clarifying agent. Id. (citing Lopez). The Examiner finds that articles,
including packaging containers, resulting from the Lopez process would
have the recited gloss retention property. Id.
Appellants argue that Lopez does not teach thermoforming as recited
by claims 1 and 23. Appeal Br. 13-16; Reply Br. 2-3. Lopez states: "The
molded article may be produced using any method known to those of
ordinary skill in the art, such as blow molding, compression molding,
injection stretch blow molding, etc." Lopez i-f 49. With respect to
anticipation, the Examiner must show that the cited reference describes (or
inherently discloses) each claim recitation. See, e.g., ClearValue, Inc. v.
Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012). Here,
Appellants present evidence sufficient to persuade us that the Examiner has
not adequately established that thermoforming is the same as one of the
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Application 12/814,552
three molding techniques expressly referenced by Lopez. Appeal Br. 17
(citing June 25, 2016, declaration of Mr. Michael Musgrave ("Musgrave
Deel.")). We therefore do not sustain the Examiner's rejections to the extent
they are based on anticipation by Lopez.
We agree with the Examiner, however, that thermoforming would
have been obvious to a person of skill in the art given the teachings of
Lopez. Ans. 10. Lopez teaches that its article may be produced using "any
method known to those of ordinary skill in the art." Lopez i-f 49. The
evidence presented by Appellants that thermoforming would be one example
of a known method. Musgrave Deel, Attachment A at 1289 ("The process
of thermoforming is considered one of the four major fabricating processes
following extrusion, injection molding, and blow molding."). Appellants'
argument therefore does not identify error in the Examiner's obviousness
rejection based on Lopez.
Appellants also argue that the Examiner "fails to establish that the
cited references inherently exhibit the claimed gloss retention properties."
Appeal Br. 12, 16-20; Reply Br. 3---6. Appellants direct us to the gloss
retention recitations of claims 1, 12, and 21-23. Id. at 17. The recited gloss
retention properties define a characteristic of the container formed by claim
1 's method. Our reviewing court has held that where "the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d
1252, 1256 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) ("[W]hen the PTO shows sound basis for believing that the products
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Application 12/814,552
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.").
Here, a preponderance of the evidence supports that the claimed and
prior art products are identical or substantially identical and produced by
identical or substantially identical processes. In particular, the Examiner
finds that Lopez teaches "compositional components and molding
techniques" that are the same as Appellants' components and techniques.
Ans. 4. As explained above, it would have been obvious to employ
thermoforming with Lopez, and this technique as the same as Appellants'
technique.
With respect to components, Appellants argue that "[t]he Examiner
fails to establish that Lopez or Shinya teach the same or an equivalent
propylene." Appeal Br. 18. The Examiner found that the composition is the
same, and Appellants present no argument as to why this is incorrect.
Appellants do not, for example, present reasoning as to why the composition
of Kazumasa is different than that of the instant Specification. Appellants'
position is unpersuasive absent some argument as to why the Examiner's
factual finding is incorrect. See Ex parte Frye, 94 USPQ2d 1072 at 107 5
("the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection").
Moreover, the preponderance of the evidence does not support
Appellants' position. Rather, with examples summarized in the table
provided below, the Specification describes acceptable polypropylene
characteristics that substantially overlap with polypropylene characteristics
taught by Lopez.
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Application 12/814,552
Polypropylene Specification
Percent "at least about 50
polypropylene wt.%" (Spec. ii 36)
relative to total
weight of polymer
Molecular weight "from about 1.0 to
distribution about 20" (Spec. ii 3 7)
melting point (Tm) "at least 120Q C" (Spec.
as measured by ii 42)
DSC
percent xylene "12 wt.% or less"
soluble material (Spec. ii 39)
(XS) as measured
by ASTM D5492-
06
melt flow rate "about 1 dg/min to
about 100 dg/min"
(Spec. ii 40)
Comonomers "may be selected from
C2 to C10 alkenes"
(Spec. ii 42)
Lopez
Teaches, e.g., 95%
polypropylene (Lopez ii
44 (explaining that
polymer is propylene and,
e.g., 5% copolymer)
"from about 1.5 to about
8" (Lopez ii 40)
"from about 140QC to 155
QC" (Lopez ii 38)
"12 wt.% or less" (Lopez
ii 43)
"from 20 dg/min. to 45
dg/min." (Lopez ii 40)
"may be selected from C2
to C10 alkenes" (Lopez ii
49)
In sum, the Specification indicates that a wide variety of propylene based
polymers may be used to reach the recited gloss characteristics, and Lopez
teaches use of propylene based polymers within the range taught by the
Specification. Thus, there is a reasonable basis for the Examiner to
determine, for a prima facie case, that Lopez will also have the recited gloss
characteristics.
Because the claimed product and that of Lopez are identical or
substantially identical, or are produced by identical or substantially identical
processes, the burden shifts to Appellants to present evidence that Lopez
would not have the recited haze characteristics. Appellants have not made
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Application 12/814,552
such a showing here. Because Appellants have not established reversible
error with regard to the Examiner's obviousness rejection based on Lopez,
we sustain the rejection.
With respect to Kazumasa, the Examiner finds that Kazumasa also
teaches a polymer formed with a metallocene catalyst and incorporating a
nonitol-based clarifying agent. Id. at 5 (citing Kazumasa). The Examiner
finds that Kazumasa teaches haze values "essentially identical to those of the
prior art." Id.; see also Kazumasa i-f 15 (teaching haze value).
Kazumasa explicitly teaches thermoforming (Ans. 5; Kazumasa i-f 48),
and Appellants do not dispute this point (Appeal Br. 17).
Appellants also argue that Kazumasa does not teach the recited gloss
retention properties. Our analysis is similar to that above with Lopez. The
Examiner finds that Kazumasa would necessarily meet the gloss retention
recitations because Kazumasa teaches the "same compositional components
and molding techniques." Ans. 5-6. The Examiner also finds, for example,
that the polymer has a melt flow rate within the scope of Appellants' claims
and is formed with a metallocene catalyst. Id. at 5. As above, Appellants
argue that the Examiner does not establish that Shinya teaches the same or
equivalent polypropylene. Appeal Br. 18. But the Examiner found that the
composition is the same, and Appellants present no argument as to why this
is incorrect. Appellants do not, for example, present reasoning as to why the
composition of Kazumasa is different than that of the instant Specification.
Moreover, the preponderance of the evidence supports that the
Kazumasa polypropylene is the same or substantially the same as that of the
Specification. See, e.g., Kazumasa i-fi-111 (teaching 90 to 99.9% by weight
propylene), 25 (teaching random copolymer of propylene and ethylene);
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Application 12/814,552
Ans. 5 (finding that Kazmnasa teaches polymer with melt flow rate within
scope of Appellants' claims).
Because the Examiner finds that the claimed product and that of
Kazumasa are identical or substantially identical or are produced by
identical or substantially identical processes and because Appellants do not
present evidence persuasively disputing the Examiner's factual findings in
this regard, the burden shifts to Appellants to present evidence that
Kazumasa would not have the recited haze characteristics. Appellants have
not made such a showing here. Because Appellants have not established
reversible error with regard to the Examiner's rejections based on
Kazumasa, we sustain the rejections.
Claim 23. In the Office Action from which this appeal is taken, the
Examiner did not provide a rationale for rejecting claim 23. App. Br. 10-11.
The Examiner provided a rationale for rejecting claim 23 in the Answer as a
new ground of rejection. Ans. 6-8. Appellants responded to the new
ground of rejection in the Reply Brief by raising the arguments addressed
above with respect to claim 1. Reply Br. 2-7. Because claim 23, like claim
1, requires thermoforming, we do not sustain the Examiner's rejection of
claim 23 as anticipated by Lopez for the reasons explained above. The
remainder of Appellants' arguments, however, are unpersuasive for the
reasons explained above, and we sustain the remainder of the Examiner's
rejection of claim 23.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1, 2, 4--10, 12-16, 18, and 21-23 as (1) unpatentable as obvious over
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Lopez, (2) anticipated by Kazmnasa, and (3) unpatentable as obvious over
Kazmnasa. We reverse the Examiner's rejection of claims 1, 2, 4--10, 12-
16, 18, and 21-23 as anticipated by Lopez.
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 )(iv).
AFFIRMED
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