Ex Parte Yang et al

Board of Patent Appeals and Interferences

May 15, 2012

10925097 (B.P.A.I. May. 15, 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.
10/925,097 08/24/2004 Li-Ying Yang FDN-2852 6959
7590 05/15/2012
GAF MATERIALS CORPORATION
Attn: William J. Davis, Esq.
Legal Department, Building No. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
05/15/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte LI-YING YANG and EDWARD NEBESNAK
________________

Appeal 2011-006890
Application 10/925,097
Technology Center 1700
________________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 31, 33-36, 42-46, 52-55, 57, 58, 60, and 61. We have jurisdiction
under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a flexible roofing membrane.
Spec. 1. Claim 31 is illustrative:

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A flexible roofing membrane consisting essentially of:

a blend of:

(A) 45 to 65 parts soft polypropylene based elastomer (PBE), the soft
polypropylene based elastomer being produced with a non-
metallocene catalyst, the non-metallocene catalyst allowing the
soft polypropylene based elastomer to yield a comonomer range of
between about 5-15%, a molecular weight distribution of between
about 2 to about 3, a crystallinity of up to 40% and an MFR (melt
flow rate) range of between about 0.5 to about 5g/10min measured
at 230°C with a constant load of 2.16kg;
(B) 20 to 40 parts rigid propylene/alpha-olefin copolymers that are
polypropylene impact copolymers (ICP) having a flexural modulus
range of 70,000 to 170,000 psi;
(C) 15 parts ethylene-propylene rubber (EPR); wherein the relative
amounts of (A) and (B) and (C) together make up 100 parts;
(D) fillers,
(E) color pigments,
(F) fire retardants,
(G) antioxidants,
(H) UV and thermal stabilizers, and
(I) processing aids;
wherein the flexible roofing membrane has a thickness of about 15 to about
100 mils, complies with ASTM D-6878 and has a shore hardness of about
60 to about 90.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Davis 5,389,715 Feb. 14, 1995
Dharmarajan WO 00/69965 Nov. 23, 2000
Mehta US 2005/0282449 A1 Dec. 22, 2005

Exxon Technical Data Sheets for PP8224E1, PP8224E2 and PP9122;
http://prospector.ides.com/datasheet.aspx?E=90286
http://prospector.ides.com/datasheet.aspx?E=64337
Appeal 2010-006890
Application 10/925,097

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Appellants request review of the following rejections (App. Br. 14)
from the Examiner’s final office action:
1. Claims 31, 33-36, 42-46, 52-55, 57, 58, and 61 stand rejected
under 35 U.S.C. 103(a) as being unpatentable over Dharmarajan,
Davis, and Exxon Technical Data Sheets.
2. Claims 52, 53, and 57 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Dharmarajan, Davis, Exxon Technical
Data Sheets, and Mehta.

OPINION
The dispositive issue for these rejections is: Did the Examiner err in
determining that the cited prior art would have led one of ordinary skill in
the art at the time of the invention to modify a polymer blend of propylene-
ethylene copolymer (PBE) and polypropylene/alpha-olefin copolymer (ICP)
by adding an ethylene-propylene copolymer (EPR) component as required
by the subject matter of independent claim 31?1
We answer this question in the negative and AFFIRM.
The Examiner finds that Dharmarajan discloses a polymer blend of a
polypropylene based elastomer and a propylene/alpha-olefin copolymer
(ICP) for use in a roofing membrane, but is silent as to the inclusion of an
EPR component as well as the flexural modulus value of the ICP component
and the melt flow rate of the PBE component. Ans. 4-7. The Examiner
finds that Davis teaches blends of EPR, 5 to 45 weight percent, with
crystalline polymers to improve the physical properties in roof sheeting

1 We limit our discussion to independent claim 31 since Appellants do not
present separate arguments for each of the pending claims.
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materials. Id. at 7. The Examiner finds that it would have been obvious for
one of ordinary skill to add EPR to the composition of Dharmarajan to
improve green strength and splice adhesion of heat seamable roof sheeting
material. Id.
Appellants’ principle argument is that there is no motivation to
modify Dharmarajan to include an EPR as taught by Davis in a non-curable
composition in accordance with the present invention. App. Br. 16.
We find the Examiner provided sufficient reasons for combining the
cited prior art. In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For
obviousness under § 103, all that is required is a reasonable expectation of
success.”). We agree with the Examiner that it would have been obvious to
one of ordinary skill in the art to add EPR to the blend of Dharmarajan
within the range of 5 to 45 weight percent to improve the properties of a
roofing material.
Appellants do not dispute that Davis discloses that a polymer blend of
EPR with a crystallinity enhancing polymer improves the green strength and
splice adhesion of roof sheeting material. Moreover, Appellants
acknowledge that in typical thermoplastic polyolefins, EPR is added to the
polymer blends to impart flexibility (Spec. 1), which is said to be a feature
of the claimed invention (App. Br. 7-12, 18, and 19). Therefore, it would
not be unexpected that the addition of EPR would improve the properties of
a polymer blend for a roofing membrane, including flexibility.
Appellants argue that Davis is directed to a curable rooftop sheet material
while the composition of independent claim 31 is not curable and an attempt
to cure a non-curable composition could lead to disastrous results. App. Br.
16. However, claim 31 is silent with respect to curing. Moreover,
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Appellants have not directed us to evidence to support the assertion that
disastrous results would result from curing a non-curable composition.
Appellants also distinguish Davis on the basis that it teaches a
predominantly polyethylene based composition rather than a polypropylene
based composition. App. Br. 17. Appellants’ argument is unpersuasive
because the cited “60 to 95 weight percent ethylene” disclosure refers to the
EPR itself and not the polymer blend. Davis, col. 5, lines 10-12.
In addressing separately rejected dependent claims 52, 53, and 57,
Appellants rely on the arguments presented when discussing independent
claim 31. (App. Br. 19). Appellants did not further distinguish the cited
references based on the additional limitations of dependent claims 52, 53,
and 57. Likewise, we affirm the rejection of claims 52, 53, and 57.
For the foregoing reasons, we affirm the rejections of claims 31, 33-
36, 42-46, 52-55, 57, 58, 60, and 61 under 35 U.S.C. 103(a).
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).

ORDER
AFFIRMED

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