Zeon Chemicals L.P.

Patent Trials and Appeals Board

Jan 28, 2022

2021005293 (P.T.A.B. Jan. 28, 2022)

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. 15/472,682 03/29/2017 Andrew MITTERMILLER 121342.021521 4057 30734 7590 01/28/2022 BakerHostetler Washington Square, Suite 1100 1050 Connecticut Ave. N.W. Washington, DC 20036-5304 EXAMINER DILLON, DANIEL P ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): edervis@bakerlaw.com eofficemonitor@bakerlaw.com patents@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW MITTERMILLER, CLARK CABLE, and ZHIYI BAO Appeal 2021-005293 Application 15/472,682 Technology Center 1700 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-12, 14, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Zeon Chemicals L.P. (Appeal Br. 3). (We provide the page numbers herein for the unnumbered pages in the Appellant’s briefs.) Appeal 2021-005293 Application 15/472,682 2 CLAIMED SUBJECT MATTER The claims are directed to an electrostatic dissipating mat. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electrostatic mat, wherein the mat comprises at least one electrostatic layer, wherein the at least one electrostatic layer comprises an elastomeric rubber, wherein the elastomeric rubber comprises 20-100phr elastomeric polyether, wherein the elastomeric polyether comprises 10-75wt% ethylene oxide, and 20-70wt% epihalohydrin, wherein the system used to cure the elastomeric rubber in vulcanization is selected from sulfur and sulfur donor curatives. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Barnhouse US 4,408,013 Oct. 4, 1983 Federl US 4,588,773 May 15, 1986 Lu US 2011/0092648 A1 Apr. 21, 2011 Zacarias US 7,955,940 B2 June 7, 2011 Penland US 2016/0177515 A1 June 23, 2016 REJECTION Claims 1-12, 14, and 21 stand rejected under 35 U.S.C. § 103 over Penland in view of Zacarias, Federl, Lu, and Barnhouse. OPINION The Appellant argues the claims as a group (Appeal Br. 4-11). We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Penland discloses a mat comprising at least one outer layer and, to provide strength and rigidity to the mat, a core that can be made of treated wood, metal, an elastomeric material, a thermoplastic material, a Appeal 2021-005293 Application 15/472,682 3 thermosetting material, or a combination thereof (¶¶ 8, 9). The preferred elastomeric materials, for strength and hardness, are unsaturated rubbers that are curable by sulfur vulcanization (¶¶ 122, 123). The exemplified non- vulcanizable, non-preferred rubbers include epichlorohydrin rubber (¶¶ 131, 134). Zacarias prepares a thermoplastic vulcanizate by dynamically curing a rubber with a curing agent while the rubber is mixed with a thermoplastic polymer, resulting in a crosslinked or cured phase and an uncrosslinked phase (col. 3, ll. 49-53). Zacarias exemplifies rubbers, one of which is epichlorohydrin terpolymer rubber, capable of being cured or crosslinked by peroxides, and states that the curing agent for crosslinking, or vulcanizing, the elastomers can be any of those known to those skilled in the art, the disclosed examples of which include peroxides and sulfur (col. 3, ll. 56-64; col. 10, ll.54-62). Federl prepares a copolymer of epihalohydrin and an alkylene oxide, preferably ethylene oxide and/or propylene oxide, most preferably ethylene oxide (col. 3, l. 53 - col. 4, l. 11). Preferably, the epihalohydrin copolymer includes about 25-75 wt% epihalohydrin and about 75-25 wt% of another monomer (col. 4, ll. 20-23). Federl is silent as to the curing agent used to make the epihalohydrin copolymer.2 The Appellant argues: Penland is teaching there are two groups of rubbers, those that are unsaturated and can be cured by sulfur vulcanization and those that cannot be vulcanized. Epichlorohydrin rubber is considered to be in the non-vulcanizable rubber group. The claims require epihalohydrin. Since Penland teaches away from 2 A discussion of Lu and Barnhouse is not necessary to our decision. Appeal 2021-005293 Application 15/472,682 4 vulcanizing epichlorohydrin with sulfur, a person of ordinary skill in the art would not be motivated to do so. [(Appeal Br. 7- 8)] . . . Zacarias only mentions epichlorohydrin once and only as a polymer that may be cured with peroxide. A person of skill in the art would not look to Zacarias to be motivated to use a sulfur cure system which is not connected in any way to epichlorohydrin. Especially after Penland taught not to do so. None of the other references teaches a sulfur cure system. [(Appeal Br. 9)] “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Zacarias discloses that epichlorohydrin terpolymer rubber (which differs from epichlorohydrin rubber) is capable of being crosslinked by peroxides (col.3, ll. 56-63) and also indicates that it can be crosslinked by sulfur (col. 10, ll. 54-63). Thus, in view of Penland’s disclosure that elastomers curable by sulfur vulcanization are preferred for strength and hardness (¶ 123), one of ordinary skill in the art, through no more than ordinary creativity, would have used a sulfur-cured epichlorohydrin terpolymer rubber in Penland’s mat’s core instead of an epichlorohydrin rubber to obtain increased strength and hardness desired by Penland (¶ 8). The Appellant argues that a comparison of the Appellant’s Specification’s Example 15 (sulfur cure system, 2571 psi tensile strength, 1.0E+07 resistance) with Example 16 (triazine curing, 1512 psi tensile strength, 6.1E+07 resistance) and Example 17 (peroxide curing, 867 psi Appeal 2021-005293 Application 15/472,682 5 tensile strength, 3.5E+08 resistance) shows that use of the Appellant’s sulfur cure system produces unexpected results (Appeal Br. 10; Reply Br. 3). We have begun anew and determined that for the following reasons the totality of the evidence supports a conclusion of obviousness of the Appellant’s claimed electrostatic mat. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). First, it is not enough for the Appellant to show that the results for the Appellant’s invention and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The Appellant does not provide evidence, particularly in view of Penland’s disclosure that elastomers curable by sulfur vulcanization are preferred for strength and hardness (¶ 123), that the Appellant’s observed superior tensile strength obtained using sulfur system curing would have been unexpected by one of ordinary skill in the art. Nor does the Appellant provide evidence that the volume resistivity values would have been unexpected by one of ordinary skill in the art. Second, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The Appellant’s independent claim encompasses polyethers comprising 10-75 wt% ethylene oxide and 20- 70 wt% epihalohydrin, but the Appellant’s evidence is limited to one undisclosed polymer composition (Hydrin Polymer E) (Spec. Table 5). We find in the evidence of record no reasonable basis for concluding that the great number of materials encompassed by Appellant’s claim would cure by sulfur vulcanization as a class in a manner comparable to the particular Appeal 2021-005293 Application 15/472,682 6 material tested. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971). Thus, the totality of the evidence supports a conclusion of obviousness of the Appellant’s claimed electrostatic mat. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-12, 14, 21 103 Penland, Zacarias, Federl, Lu, Barnhouse 1-12, 14, 21 TIME PERIOD FOR 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