Per Kristiansen et al.

Patent Trials and Appeals Board

Oct 15, 2020

13496207 - (D) (P.T.A.B. Oct. 15, 2020)

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.
13/496,207 04/12/2012 Per Magnus Kristiansen 438314US99PCT 6482
22850 7590 10/15/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HALL, DEVE V.
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
10/15/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PER MAGNUS KRISTIANSEN, DANIEL MULLER and
MICHELE GERSTER

Appeal 2020-000971
Application 13/496,207
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 29–32, 35 and 39–40. We have
jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was heard via telephone October 1, 2020.
We affirm in part. We additionally issue a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE.
Appeal Brief dated July 16, 2019 (“Appeal Br.”) 1.
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CLAIMED SUBJECT MATTER
The present application generally relates to polymer compositions
“showing improved mechanical properties.” Specification filed March 15,
2012 (“Spec.”) 1. The Specification teaches that the described compositions
show improved flexural modulus, haze, and scratch resistance. Id. The
subject compositions comprise a polymer, an organic compound A carrying
at least two amide functionalities and a compound B. Id.
Claim 29 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:

29. A composition comprising:
(i) at least one polymer selected from the group
consisting of a polypropylene homopolymer and a
polypropylene random copolymer containing ethylene as a
comonomer, wherein the total amount of propylene and the
comonomer in the polymer is 100 wt%,
(ii) 150 to 300 parts per million (ppm) of an organic
compound A which is 1,3,5-tris[2,2 dimethylpropionylamino]
benzene, based on the weight of the polymer, and
(iii) 150 to 300 parts per million (ppm) of at least one
compound B selected from the group consisting of 1,3:2,4-
bis(3,4-dimethylbenzylidene)sorbitol, a metal salt of 2,2' –
methylene bis(4,6-di-tert-butylphenyl)phosphate lithium
2,2'-methylene-bis(4,6-di-tertbutylphenyl) phosphate,
aluminium-hydroxy-bis[2,2'-methylene-bis(4,6-di-tert-
butylphenyl) phosphate, and a zinc glycerolate, based on the
weight of the polymer.
Appeal Brief dated July 16, 2019 (“Appeal Br.”) (Claims App. i).

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DISCUSSION
The Examiner rejects claims 29–32, 35, 39, and 40 as obvious over
Schmidt et al. (US 2007/0149663, published June 28, 2007 (“Schmidt”)).
Final Office Action dated March 8, 2019 (“Final Act.”) 3–4. In support of
the rejection, the Examiner finds that Schmidt teaches a composition
containing a natural or synthetic polymer which may be “polypropylene
homopolymer, random copolymer, alternating or segmented copolymer,
block copolymer, or a blend of polypropylene with another synthetic
polymer.” Id. at 3 (citing Schmidt ¶¶ 184–186, 189).
The Examiner further finds that Schmidt teaches that the composition
may include one or more additional compounds that may include 1,3,5-
tris[2,2-dimethylpropionyl amino]benzene which, the Examiner finds,
satisfies component (ii)2 of claim 29. Id. (citing Schmidt ¶ 33). The
composition may further include one or more nucleating agents including
1,3:2,4-bis(3,4-dimethylbenzylidene) sorbitol; 2,2'-methylen-bis-(4,6-di-tert-
butylphenyl)phosphate; and zinc (II) monoglycerate. Id. (citing Schmidt ¶¶
205, 207, 209). These compounds each fall within the scope of component
(iii) of claim 29. The Examiner further finds that the components are taught
to be used in concentrations that overlap the claimed ranges. Id.
In the “Response to Arguments” section of the Final Office Action,
the Examiner indicates that Appellant’s previous argument regarding the
criticality of claim 29 is not persuasive because the scope of the claim is
considerably broader than Appellant’s evidentiary showing. Id. at 4–5.

2 The second element of claim 29 is referred to alternatively as “component
(ii)” or “compound A.” Similarly, the third element of claim 29 is referred
to alternatively as “component (iii)” or “compound B.”
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More specifically, the Examiner finds that “the Examples recite specific
polymers (i.e. Moplen HP 500N), however, the claims recite generic
polymers (polypropylene homopolymer).” Id. at 5. The Examiner further
finds that Appellant failed to present “a sufficient number of tests both
inside and outside the claimed range to show the criticality of the claimed
range” of the claimed components. Id.
Appellant argues that the rejection is in error. Appeal Br. 4–10.
Appellants do not present separate arguments with respect to the claims
other than claim 35. Accordingly, we first address appealed claim 29 and
claims 30–32, 39, and 40 will stand or fall with claim 29. 37 C.F.R.
§ 41.37(c)(1)(iv)(2018) . We address claim 35 separately.
Appellant does not meaningfully dispute that the Examiner has
established a prima facie case of obviousness. Appeal Br. 5. Rather,
Appellant argues that the prima facie case is rebutted by evidence that the
claimed composition exhibits unexpected beneficial properties. Id.
Appellant asserts that the Declaration of Heinz Herbst filed October
26, 2017 (“the First Herbst Declaration”) demonstrates the high scratch
resistance of compositions achieved when compound A (component (ii)) and
compound B (component (iii)) are used in combination. Id. at 6. The data
in the First Herbst Declaration concern compositions based on a
polypropylene ethylene (4 mole percent) random copolymer. First Herbst
Declaration 2 (indicating that the polymer is sold commercially as “RD 204
CF”). Appellant further asserts that Table 7 of the Specification shows data
indicating favorable haze properties for compositions “using a combination
of the organic compound A and a compound B as a phosphate.” Appeal Br.
6–8. The Specification teaches that the compositions of Table 7 are based
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on “polypropylene (PP) random copolymer comprising 4 mole% ethylene
(RD 204 MFI 8[)].” Appellant additionally relies on the Declaration of
Heinz Herbst filed October 24, 2018 (“the Second Herbst Declaration”) as
showing favorable haze properties for compositions including compounds A
and B (components (ii) and (iii)) of claim 29. Id. at 8. The Second Herbst
Declaration shows data for compositions based on the following polymers:
RD 204 CF, RD 204 MFI 8, and polypropylene homopolymer (Moplen HP
500N).
Appellant asserts that, in view of the foregoing, it has submitted
evidence sufficient to show beneficial properties of compositions including
each of the listed compounds A and B as well as several polypropylenes. Id.
at 8–9.
In the Answer, the Examiner determines that “the showing of
unexpected results for the claimed range of (ii) and (iii) are commensurate in
scope with the claims,” but “the polymers (i.e., polypropylene homopolymer
and polypropylene random copolymer) in the Examples do not reflect the
broadly claimed (i) polypropylenes.” Examiner’s Answer dated Sept. 18,
2019 (“Ans.”) 5. That is, the Examiner finds that submission of testing data
for compositions including polypropylene homopolymer and polypropylene
random copolymer comprising 4 mole percent ethylene is insufficient to
demonstrate the properties of compositions including all claimed
polypropylene copolymers. Id. at 5–6.
In its Reply Brief, Appellant argues that it has offered evidence of
unexpected results for a number of compositions including compositions
having three different polymers. Appellant contends that, “even though
Appellants may have demonstrated only three polypropylene species, when
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all the data is looked at in its totality the skilled artisan would ascertain a
trend from which they can reasonably extend the probative value thereof to
the scope of claimed polypropylenes.” Appellant’s Reply Brief dated Nov.
18, 2019 (“Reply Br.”) 4–5. Appellant cites In re Kao for the proposition
that “if an applicant demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner, this
will generally establish that the evidence is commensurate with the claims.”
Reply Br. 3–4 (quoting In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)).
Appellant further asserts that the Examiner has offered no evidence to rebut
its evidence of criticality. Id. at 5.
With respect to claim 35, Appellant asserts that the data it submitted
for compositions that include a polypropylene homopolymer is
commensurate in scope with the claim which requires that “the polymer is a
polypropylene homopolymer.” Reply Br. 3; Appeal Br. (Claims App. ii).
Obviousness is a determination of law that is based on underlying
factual inquiries including objective evidence of nonobviousness, also
known as, secondary considerations. Graham v. John Deere Co., 383 U.S.
1, 17–18 (1966). Such evidence may include a showing that the claimed
invention yields unexpectedly improved properties not present in the prior
art. In re Fenn, 639 F.2d 762, 765 (CCPA 1981). “It is the established rule
that ‘objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support.”’ Allergan, Inc. v.
Apotex Inc., 754 F.3d 952, 965 (Fed. Cir. 2014) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)).
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Here, the Examiner finds that Appellant has not presented evidence of
nonobviousness that is commensurate with the scope of element (i) of claim
29. Element (i) requires “at least one polymer selected from the group
consisting of a polypropylene homopolymer and a polypropylene random
copolymer containing ethylene as a comonomer, wherein the total amount of
propylene and the comonomer in the polymer is 100 wt%.” Appeal Br.
(Claims App. i). Thus, the limitation at issue may encompass a combination
of polymers (“at least one polymer”) as well as a polypropylene random
copolymer containing any amount of ethylene (“containing ethylene”).
Appellant has offered evidence of certain properties of a composition
including a polypropylene homopolymer and compositions including a
polypropylene random copolymer containing four molar percent ethylene.
Appellant has not offered evidence relating to the properties of any
composition including multiple polymers or any polypropylene random
copolymer containing a high percentage of ethylene or even other
comonomers (e.g., butene or hexene) in addition to ethylene. Nor has
Appellant directed us to evidence of record indicating that such
compositions would have the same properties as those for which testing data
is offered. Absent such evidence, we find Appellant’s argument that one
“can reasonably extend the probative value [of the testing data] to the scope
of claimed polypropylenes” (Reply Br. 5) to be unpersuasive.
In view of the foregoing, we determine that Appellant has failed to
show harmful error in the rejection of claim 29. As Appellant argues the
claims, other than claim 35, as a group (Appeal Br. 10; Reply Br. 3), we
determine that Appellant has failed to show error in the rejection of claims
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29–32, 39, and 40 as obvious over Schmidt. We consider claim 35
separately.
Claim 35 requires that “the polymer is a polypropylene
homopolymer.” Appeal Br. (Claims App. ii). Appellant argues that the
prima facie case of obviousness of claim 35 is rebutted by the testing data.
Appeal Br. 4–9; Reply Br. 3. The Examiner has determined that Appellant
has shown unexpected results commensurate with the scope of claim
elements (ii) and (iii) of claim 29. As discussed above, the Examiner has
determined that Appellant has not shown unexpected results commensurate
with the scope of claim element (i) of claim 29. Dependent claim 35,
however, is more narrow in scope than claim 29 with respect to claim
element (i). As claim 35 is limited to compositions where “the polymer is a
polypropylene homopolymer,” and Appellant has offered evidence
indicating that compositions where the polymer is a polypropylene
homopolymer have improved properties, we determine that Appellant has
shown error with respect to the rejection of claim 35 as obvious over
Schmidt.

New Ground of Rejection
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
issue a new ground of rejection as to claims 29, 31, 35, and 39 under 35
U.S.C. § 112, second paragraph, for failure to particularly point out and
distinctly claim the subject matter regarded as the invention, and claim 31
under 35 U.S.C. § 112, fourth paragraph, as failing to further limit the
subject matter of claim 29 from which it depends.
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Claim 29 requires “[a] composition comprising . . . (iii) 150 to 300
parts per million (ppm) of at least one compound B selected from the group
consisting of . . . a metal salt of 2,2’-methylene bis(4,6-di-tert-butylphenyl)
phosphate lithium 2,2'-methylene-bis(4,6-di-tert-butylphenyl)phosphate . . .
.” Appeal Br. (Claims App. i).
The Specification teaches that “[a]n example of metal salt of an
organic phosphoric acid is a metal salt of 2,2'-methylene-bis(4,6-di-tert-
butylphenyl)phosphate . . . . Further examples of metal salts of 2,2'-
methylene bis(4,6-di-tert-butylphenyl)phosphate are lithium 2,2'-
methylene-bis (4,6-di-tert-butylphenyl) phosphate sold under the
tradename ADK Stab NA 71 by Adeka.” Spec. 8–9. Thus, the Specification
indicates that the lithium salt is a species of the described metal salts.
There is, thus, some ambiguity as to whether “a metal salt of 2,2’-
methylene bis(4,6-di-tert-butylphenyl)phosphate lithium 2,2'-methylene-
bis(4,6-di-tert-butylphenyl)phosphate” as used in claim 29 names a single
compound (as the plain meaning would suggest) or lists both a genus and a
species falling within such genus. The former construction is consistent
with the plain meaning of the claim but may conflict with the Specification.
The latter interpretation would require us to infer punctuation that is absent
from the claim and would result in a Markush group broader than that
described in Appellant’s briefing. See Appeal Br. 8–9; Reply Br. 4.
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, second paragraph, by determining whether the claim meets
threshold requirements of clarity and precision. In re Skvorecz, 580 F.3d
1262, 1268 (Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be
rejected as indefinite when it is amenable to two or more plausible claim
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constructions. Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (B.P.A.I.
2008); In re Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (“There are
good reasons why unnecessary incoherence and ambiguity in claim
constructions should be disapproved”). Here, we determine that the “metal
salt of 2,2’-methylene bis(4,6-di-tert-butylphenyl)phosphate lithium 2,2'-
methylene-bis(4,6-di-tert-butylphenyl)phosphate” of claim 29 fails to meet
threshold requirements of clarity and precision and is indefinite under 35
U.S.C § 112, second paragraph. This ambiguity is similarly present in claim
35 which incorporates component (iii) of claim 29. Appeal Br. (Claims
App. i, ii). We further determine that claim 31 is indefinite in view of its
apparent improper dependency and also fails to further limit the subject
matter of claim 29. See 35 U.S.C § 112, second paragraph; see also 35
U.S.C. § 112, fourth paragraph. Claim 39 is likewise indefinite for improper
dependency because it depends from canceled claim 38. Id.

CONCLUSION

For the reasons stated by the Examiner in the Final Office Action and
the Examiner’s Answer as well as the reasons set forth above, the
Examiner’s obviousness rejection is affirmed in part. More specifically, the
rejection of claims 29, 30, 31, 32, 39, and 40 is affirmed. The rejection of
claim 35 is reversed.
We additionally issue new grounds of rejection based on 35 U.S.C.
112, second paragraph, as to claims 29, 31, 35, and 39 and 35 U.S.C. § 112,
fourth paragraph, as to claim 31.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
29, 30–
32, 35,
39, 40
103 Schmidt 29, 30–32,
39, 40
35
29, 31,
35, 39
112,
second
paragraph
Indefiniteness 29, 31,
35, 39
31 112, fourth
paragraph
Improper
dependency
31
Overall
Outcome
29, 30–32,
39, 40
35 29, 31,
35, 39

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED IN PART; 37 C.F.R. § 41.50(b)