DOW GLOBAL TECHNOLOGIES LLC

Patent Trials and Appeals Board

Jun 4, 2020

2019004244 (P.T.A.B. Jun. 4, 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.
14/762,484 07/22/2015 Stephanie M. Whited 74357-US-PCT 5814
109 7590 06/04/2020
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
HOCK, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/04/2020 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHANIE M. WHITED, TROY M. TAMBLING,
MRIDULA KAPUR, SARAH E. PATTERSON,
DANE CHANG, and WILLIAM J. MICHIE
____________

Appeal 2019-004244
Application 14/762,484
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from a Final
Office Action, dated June 8, 2018, rejecting claims 1–5 and 7–21. We have
jurisdiction under 35 U.S.C. § 6. An oral hearing was held on May 11,
2020.1
We AFFIRM.

1 A written transcript of the oral hearing (hereinafter “Oral Hearing
Transcript” or “Tr.”) was entered into the record on May 19, 2020.

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Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A composition comprising the following
components:

A) a first composition, wherein the first composition
comprises a first ethylene-based polymer and a second
ethylene-based polymer, and wherein the ratio of the “high load
melt index (I21) of the first composition” to the “high load melt
index (I21) of the first ethylene-based polymer” is from 40 to
120, and wherein the first composition has a density greater
than 0.940 g/cm3; and

B) one or more azide compounds present in an amount
greater than, or equal to, 50 ppm, based on the weight of the
first composition.

The Appellant2 requests review of the Examiner’s rejection of claims
1–5 and 7–21 under pre-AIA 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over Michie (WO
2006/065651 A2, published June 22, 2006). Appeal Br. 8, 10; Final Act. 3.
Appellant argues independent claims 1, 20, and 21 together and relies
on these arguments to address the patentability of the remaining dependent
claims. Appeal Br. 8, 10. We select claim 1 as representative of the subject
matter on appeal and decide the appeal as to all grounds of rejection based
on the arguments Appellant makes in support of the patentability of claim 1.

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Dow
Global Technologies LLC. Appeal Br. 2.
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OPINION
After review of the respective positions the Appellant and the
Examiner present, we REVERSE the Examiner’s rejection of claims 1–5 and
7–21 under 35 U.S.C. § 102 (b) for the reasons Appellant presents in the
Appeal and Reply Briefs. However, we AFFIRM the Examiner’s rejection
of claims 1–5 and 7–21 under 35 U.S.C. § 103(a) for the reasons the
Examiner provides in the Final Action and the Answer. We add the
following for emphasis.
Rejection under 35 U.S.C. § 102(b) (Claim 1)
Claim 1 recites a composition comprising a first composition, wherein
the first composition comprises a first ethylene-based polymer and a second
ethylene-based polymer, and wherein the ratio of the “high load melt index
(I21) of the first composition” to the “high load melt index (I21) of the first
ethylene-based polymer” (herein after referred to as “ratio of I21 melt
indices”) is from 40 to 120.
The Examiner determines that Michie discloses a composition
satisfying all of the limitations of claim 1 and thus, concludes the reference
anticipates the claim. Final Act. 3. Regarding the recitation noted above,
the Examiner relies on Michie’s description of the composition’s properties
to calculate a ratio of I21 melt indices of 0.08 to 7500 or of 0.08 to 375,
depending on the specific properties used for the calculations. Id. The
Examiner’s calculated ratio completely encompasses the claimed ratio of
40–120.
Appellant contends that Michie does not expressly teach the claimed
ratio of I21 melt indices. Appeal Br. 8–9. Appellant further contends that
Michie does not inherently disclose this claimed ratio of I21 melt indices.
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Id. at 9. With respect to inherency, Appellant asserts that the Examiner’s
calculated ratio of I21 melt indices is not sufficient to establish that Michie
inherently teaches the claimed ratio of I21 melt indices. Id. That is,
Appellant argues that Michie does not describe the claimed range for the
disputed ratio of I21 melt indices with sufficient specificity.
Appellant’s arguments identify error in the Examiner’s finding of
anticipation.
Anticipation requires a showing that each limitation of a claim is
found in a single reference, either expressly or inherently. Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1369 (Fed. Cir. 2005). When a
patent claims a range, as in this case, that range is anticipated by a prior art
reference if the reference discloses a point within the range. Titanium
Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). If the prior art
discloses its own range, rather than a specific point, then the prior art is only
anticipatory if it describes the claimed range with sufficient specificity such
that a reasonable fact finder could conclude that there is no reasonable
difference in how the invention operates over the ranges. Atofina v. Great
Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006).
Moreover, the fact that a prior art reference may disclose a very broad
range that encompasses or overlaps the claimed range, does not necessarily
mean that the prior art anticipates the claimed range. Atofina, 441 F.3d at
999. Rather, to anticipate a claimed range, the prior art must disclose the
claimed range with “sufficient specificity.” Atofina, 441 F.3d at 999
(holding that “[g]iven the considerable difference between the claimed range
and the range in the prior art, no reasonable fact finder could conclude that
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the prior art describes the claimed range with sufficient specificity to
anticipate this limitation of the claim”).
The Examiner does not direct us to any portion of Michie that
discloses a specific data point or example that falls within the claimed range
for the ratio of I21 melt indices. See generally Final Act.
We also do not find the Examiner’s calculations for the ratio of I21
melt indices at pages 6 and 7 of the Answer establish that Michie discloses a
ratio of I21 melt indices with sufficient specificity to anticipate the claimed
ratio of I21 melt indices. Here, although the prior art calculated range
encompasses the claimed range for the ratio of I21 melt indices, the claimed
range is narrower than the prior art range and Michie does not specifically
disclose a narrow range that falls within the claimed range. See Atofina, 441
F.3d at 1000 (“the disclosure of a range . . . does not constitute a specific
disclosure of the endpoints of that range”). See also ClearValue, Inc. v.
Pearl River Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012) (“We
explained [in Atofina] that the prior art’s teaching of a broad genus (i.e.,
broad temperature range) does not disclose every species within that
genus.”).
Moreover, given the considerable difference between the claimed
range of 40–120 and the prior art range of 0.08 to 7500, or even of 0.08 to
375, the Examiner has failed to direct us to persuasive evidence in the record
or provide an adequate technical reasoning as to why the claimed narrow
range is disclosed with sufficient specificity in Michie such that a reasonable
fact finder could conclude that the prior art anticipates the claim. Atofina,
441 F.3d at 999. That is, the Examiner points to no data in Michie that
would lead to the claimed range.
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Accordingly, we reverse the Examiner’s prior art rejection of claims
1–5 and 7–21 under pre-AIA 35 U.S.C. § 102 (b) for the reasons the
Appellant presents and we give above.
Rejection under 35 U.S.C. § 103(a) (Claim 1)
The Examiner relies on the same findings presented for the
anticipation rejection. Final Act. 3. The Examiner concludes that the
Examiner’s calculated ranges for Michie’s ratio of I21 melt indices
significantly overlaps the claimed range for the ratio of I21 melt indices. Id.
Appellant argues that the Examiner has not established that a ratio of
I21 melt indices is recognized by one skilled in the art as a result-effective
variable. Appeal Br. 11. According to Appellant, Michie does not disclose
this ratio and the Examiner provides no motivation as to why it would be
obvious to optimize a broad calculated ratio from 0.08–7500 for Michie to
achieve the claimed ratio of 40 to 120. Id. Appellant further asserts that the
Examiner provides no motivation to optimize the Michie’s specified I21
ranges or the calculated I21 and/or calculated ratio ranges to achieve
Appellant’s claimed ratio. Id. Thus, Appellant argues that, absent
impermissible hindsight, the Examiner has not established a prima facie case
of obviousness. Id.
Appellant’s arguments are not persuasive of reversible error.
Where a claim range overlaps or is fully encompassed by a prior art
range, a prima facie case of obviousness exists. In re Peterson, 315 F.3d
1325, 1329–30 (Fed. Cir. 2003) (“Selecting a narrow range from within a
somewhat broader range disclosed in a prior art reference is no less obvious
than identifying a range that simply overlaps a disclosed range. In fact,
when, as here, the claimed ranges are completely encompassed by the prior
art, the conclusion is even more compelling than in cases of mere overlap.”).
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Appellant does not dispute the Examiner’s calculations for Michie’s
ratio of I21 melt indices or that the Examiner’s calculated ratio of I21 melt
indices encompasses the claimed range for the ratio of I21 melt indices. See
generally Appeal Br. Therefore, the burden has shifted to Appellants to
show that the claimed invention would not have been obvious. Peterson,
315 F.3d at 1330.
To overcome the prima facie case of obviousness, Appellant argues
that the Declaration from co-inventor Stephanie M. Whited3 (hereinafter
“Declaration” or “Decl.”) shows evidence of the criticality of the claimed
ratio ranges. Appeal Br. 11.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence;
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).

3 The Declaration under 37 C.F.R. § 1.132 dated February 27, 2018 was
entered into the record by the Examiner in the Final Office Action dated
June 8, 2018.
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The Declaration relies on the Comparative and Inventive Examples
disclosed in the Specification. Decl. ¶ 3; Spec. 25 (Table 3, showing the
composition of the resins tested), 26 (Table 4, showing the properties of the
resins tested), Figure 1. The Declaration also presents data for additional
Comparative and Inventive Samples. Decl. ¶ 4, Table A1 and Figure A1.
Declarant states that Table 4 of the Specification shows that
Comparative Examples A–C have a ratio of I21 melt indices of less than 40
that results in either an undesirable inner pipe appearance (Comparative
Examples B and C) or the need for greater amount of specific energy to form
a pipe (Comparative Example A). Decl. ¶ 3. Declarant also states that
Table A1 and Figure A1 show that the gel rating reaches undesirable levels
for ratios of I21 melt indices below 40. Decl. ¶ 4. Appellant discloses a
desirability to minimize the presence of gel. Spec. 12.
First, it is not clear that Appellant has compared the claimed invention
against the closest prior art (Michie).4 Further, the evidence presented in the
Specification and the Declaration compares a limited number of inventive
resins having a ratio of I21 melt indices within the claimed range against
Comparative Examples having a ratio of less than 40. Appellant and
Declarant do not explain why the limited number of inventive resins tested is
representative of the broad scope of resins claimed. In addition, Declarant
states that the gel rating worsens as the ratio increases above 120. Decl. ¶ 4.

4 At the oral hearing, Appellant argued that Comparative Example B in the
Specification “is similar to what is found in the Michie reference. It’s not
exactly the same rates because it’s hard to reproduce the resin exactly the
same, but they are very, very close.” Tr. 11. Thus, Appellant has not
adequately established that the single Comparative Example B is
representative of Michie’s compositions.
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Declarant appears to rely solely on an extrapolation of data from Figure A1
to support this statement and does not direct us to any objective evidence in
support of this statement. Appellant’s attorney arguments cannot take the
place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
In re Payne, 606 F.2d 303, 315 (CCPA 1979).
We also note that, like Appellant, Michie seeks to minimize the gel
content in the resins. Michie 7, 15.
Thus, on this record, Appellant has not adequately explained why the
evidence relied upon would have been unexpected by one of ordinary skill in
the art or is reasonably commensurate in the scope with the claims.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
5 and 7–21 under pre-AIA 35 U.S.C. § 103(a) for the reasons the Examiner
presents and we give above.
CONCLUSION
Because the affirmed rejection reaches all the claims presented for
review on appeal, our decision is an affirmance.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–21 102(b) Michie 1–5, 7–21
1–5, 7–21 103(a) Michie 1–5, 7–21
Overall
Outcome
1–5, 7–21

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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)(iv).

AFFIRMED