ExxonMobil Chemical Patents Inc.

Patent Trials and Appeals Board

May 14, 2021

2020003752 (P.T.A.B. May. 14, 2021)

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.
13/879,997 07/10/2013 Galen C. Richeson 2010EM306/2 8191
23455 7590 05/14/2021
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
WORRELL, KEVIN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
05/14/2021 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):
chem.law.prosecution@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GALEN C. RICHESON, ALISTAIR D. WESTWOOD, and
ASPY K. MEHTA
Appeal 2020-003752
Application 13/879,997
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–8, 10–12 and 23–25. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ExxonMobil
Chemical Company. Appeal Br. 3.
Appeal 2020-003752
Application 13/879,997

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CLAIMED SUBJECT MATTER
The claims are directed to a bicomponent polymer fiber. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A bicomponent polymer fiber, comprising:
a core comprising a core polymer, wherein the core
polymer is selected from a propylene-based polymer, an
ethylene-based polymer, a propylene-ethylene block copolymer,
a styrenic block copolymer, an acrylate, or a combination of the
foregoing; and
a sheath comprising a sheath polymer, wherein the sheath
polymer is a polyolefin selected from a polypropylene wax, a
polyethylene wax, and combinations thereof having a weight
average molecular weight (Mw) less than about 65,000 g/mole,
wherein the Mw of the core polymer is at least about 20,000
g/mole greater than the Mw of the sheath polymer,
wherein the polymers have limited miscibility and
incomplete separation,
wherein there is no defined boundary between the core and
sheath of the fiber, and the fiber has a cross-sectional gradient, in
which the concentration of the sheath polymer is highest at the
surface of the fiber, and the concentration of the core polymer is
highest at the center of the fiber, and
wherein the Mw of the sheath polymer is greater than
about 14,850 g/mole, and
wherein the fiber comprises at least 50 wt% of the core
polymer, based on the total weight of the fiber.
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Application 13/879,997

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tanaka US 2004/0038028 A1 Feb. 26, 2004
Autran US 2005/0215964 A1 Sept. 29, 2005
Sauerer US 2007/0060685 A1 Mar. 15, 2007
Gabbay US 2008/0193496 A1 Aug. 14, 2008
Ohbi US 2008/0230567 A1 Sept. 25, 2008
Shanghai Beya Import & Export Co., LTD, (Exxon EPR elastomers
VISTAMAXX).
REJECTIONS
Claims 1, 3–8, 12, and 23–25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Autran and Tanaka, with evidence from Sauerer,
Shanghai, and Ohbi. Final Act. 2.
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Autran, Tanaka, with evidence from Sauerer, Shanghai,
and Ohbi, and Gabbay. Final Act. 5.
OPINION
We review the appealed § 103 rejections for error based upon the
issues Appellant identifies, and in light of the arguments and evidence
produced thereon. Cf. 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 having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
the Final Office Action and the Answer.
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Application 13/879,997

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We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed.
Cir. 1992).
First, we note that Appellant focuses on a rejection that is no longer
applied to the claims (Appeal Br. 5–7; Ans. 6, 7). Appellant first presents
arguments relevant to the rejection on appeal in the Reply Brief. Any
argument not presented in the Appeal Brief will not be considered when
filed in a Reply Brief, absent a showing of good cause explaining why the
argument could not have been presented in the Appeal Brief. 37 C.F.R. §
41.41(b)(2) (2013).2 Appellant has not explained why these arguments
could not have been made in the Appeal Brief, thus we need not consider
them.
In any event, these arguments are not persuasive of error in the
Examiner’s rejections. Appellant’s arguments fail to consider the breadth of

2 See also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”); see also Optivus Tech., Inc. v. Ion
Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived)
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Application 13/879,997

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the claim language, the applied prior art as a whole, and the inferences that
one of ordinary skill in the art would have made therefrom.
As aptly pointed out by the Examiner, Autran exemplifies a
bicomponent polymer fiber with core and sheath polymers as claimed and
disclosed (Final Act. 2, 3; Ans. 7), while Tanaka exemplifies that it was
known to use core and sheath polymers in a configuration wherein the
bicomponent fiber has a cross-sectional gradient as recited in claim 1 (e.g.,
Final Act. 4; Ans. 7, 8). Appellant does not dispute the Examiner’s findings
that Autran’s polymers would necessarily have the properties recited in
claim 1, including limited miscibility and incomplete separation (Ans. 7;
Reply Br. generally). Rather, Appellant argues that Tanaka’s exemplified
structures do not have these properties (Reply Br. 3). This argument does
not fully address the Examiner’s rejection which relies upon the polymers of
Autran to have these properties. The Examiner only relies upon Tanaka for
its cross-sectional gradient, and for having the fiber comprise at least 50
wt% of the core polymer (Final Act. 4).
Notably, Appellant has not directed us to any limiting definition of
“cross-sectional gradient.” The Examiner’s determination that Tanaka’s
structures have a cross-sectional gradient as recited in claim 1 is reasonable
(Ans. 8).3 “During examination, claim terms are given their broadest
reasonable interpretation consistent with the specification as understood by
those of ordinary skill in the art.” In re Hodges, 882 F.3d 1107, 1115 (Fed.
Cir. 2018). “[T]he PTO must give claims their broadest reasonable

3 Notably, Spec. ¶ 74 merely states that “the polymers may not completely
separate during the extrusion process” and “there may not be a defined
boundary between the core and sheath”.
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construction consistent with the specification . . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” Id.
Appellant has not directed us to any persuasive reasoning or credible
evidence to refute the Examiner’s determination that one of ordinary skill in
the art, using no more than ordinary creativity, would have used a cross-
sectional gradient as exemplified in Tanaka for a bicomponent polymer fiber
of Autran with sheath and core polymers as disclosed therein such that all of
the properties recited in claim 1 would have necessarily followed (e.g., Final
Act. 3; Ans. 7).
The Examiner reasons that once the relevant teachings of the applied
references in the rejection are combined, the claimed properties as recited in
claim 1 would have reasonably been obtained (e.g., Final Act. 3; Ans. 4).
Notably, Appellant’s independent claim 1 does not require any minimum or
maximum amount of the recited polymers, nor any minimum amount of
their “limited miscibility” or “incomplete separation” (Claims Appendix).
Further, it has been held that when the Examiner establishes a
reasonable basis that the products or processes claimed by the applicant and
disclosed or suggested by the prior art appear to be the same or substantially
similar, the burden is properly shifted to the applicant to show that they are
not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1254–56 (CCPA 1977).
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Contrary to Appellant’s argument, a preponderance of the evidence
supports the Examiner’s determination that these properties would indeed
necessarily occur once polymers as exemplified in Autran that are
appropriate for the same purpose as disclosed and claimed by Appellant
were used in a configuration having a cross-sectional gradient as exemplied
in Tanaka. See, PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.,
773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (inherency may be used to
establish the existence of a claim limitation in the prior art in an obviousness
analysis, when “the limitation at issue necessarily must be present, or the
natural result of the combination of elements explicitly disclosed by the prior
art.”); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (a prima
facie case of obviousness does not require both structural similarity and a
suggestion in or expectation from the prior art that the claimed compound or
product will have the same or a similar usefulness as the applicants newly
discovered compound; exactly what amounts to a prima facie case varies
from case to case);4 cf. also, In re Papesch, 315 F.2d 381, 391 (CCPA 1963)
(“From the standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.”).
Here, the Examiner’s determination that the claimed product that one
of ordinary skill in the art would have predictably obtained from the applied
prior art combination appears to be the same or substantially similar to those
as claimed and disclosed is reasonable. Appellant fails to adequately show

4 See also, Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff’d mem.,
795 F.2d 1017 (Fed. Cir. 1986) (the recognition of another advantage
flowing naturally from following the suggestion of the prior art cannot be
the basis for patentability when the difference would otherwise have been
obvious).
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that such a product would not have resulted in the claimed properties.
Attorney’s arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Thus, Appellant’s arguments do not point out reversible error in the
Examiner’s rejection of claim 1 (as well all other claims not separately
argued, including those separately rejected), for at least the above noted
reasons.
Accordingly, the Examiner’s § 103 rejections are affirmed with
respect to all of the claims on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–8, 12,
23–25
103(a) Autran, Tanaka,
Sauerer,
Shanghai, Ohbi
1, 3–8, 12,
23–25

10, 11 103(a) Autran, Tanaka,
Sauerer, Shanghai,
Ohbi, Gabbay
10, 11
Overall
Outcome
1, 3–8, 10–12,
23–25

Appeal 2020-003752
Application 13/879,997

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RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED