Ex Parte Appel et al

Patent Trial and Appeal Board

Sep 27, 2012

11931494 (P.T.A.B. Sep. 27, 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.
11/931,494 10/31/2007 Reiner Appel MOH-P060163 1253
24131 7590 09/27/2012
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
HARLAN, ROBERT D
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
09/27/2012 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 PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte REINER APPEL, HERALD VON GODIN
and GERHARD LUGERT
______________

Appeal 2011-005976
Application 11/931,494
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1, 2,
4-10 and 12-14 in the Office Action mailed March 25, 2010. We have
jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2010).
We affirm-in-part the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a thermoplastic molding
material, and is representative of the claims on appeal:
1. A thermoplastic molding material, comprising:
a polymer matrix formed primarily or entirely of an ethylene
copolymer wax containing hydrophilic groups and having a melting point of
75 ºC to 110 ºC; and
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cellulose-containing fibers embedded in said matrix;
wherein said ethylene copolymer wax is present in the molding
material with a share of 10% to 35% by weight and said cellulose-containing
fibers are present with a share of 45% to 90% by weight relative to a dry
mass of said fibers.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 1 and 2 under 35 U.S.C. § 102(b) over
Pfannmüller (DE 1 956 625), and claims 4-10 and 12-14 under 35 U.S.C.
§ 103(a) over Pfannmüller and Lugert (DE 198 55 325 A 1).1 Br. 3; Ans. 4,
5.
Appellants argue the first ground of rejection on claims 1 and 2, and
argue the second ground of rejection on the claims as a group. See generally
Br. Thus, we decide this appeal based on claims 1, 2 and 4. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).
Opinion:
I. Claims 1 and 2: § 102(b) - Pfannmüller
We first interpret claim 1, in light of the Specification and the
positions of the Examiner and Appellants, to specify a thermoplastic
molding material comprising at least a polymer matrix formed either entirely
of the specified ethylene copolymer wax or from a combination of the
ethylene copolymer wax and one or more other ingredients wherein the
ethylene copolymer wax constitutes the main ingredient,2 and the ethylene

1 We refer to the automated translation of each of Pfannmüller and Lugert
prepared by the EPO and to the translation of Pfannmüller’s abstract which
are of record. Appellants do not dispute the Examiner’s reliance on the
translations and the abstract.
2 See, e.g., primarily, The American Heritage Dictionary of the English
Language 1393 (4th ed., Houghton Mifflin Co., 2000).
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copolymer wax in the polymer matrix constitutes 10% to 35% by weight of
the thermoplastic molding material; and the polymer matrix has embedded
therein cellulose-containing fibers which constitute 45% to 90% by weight,
relative to the dry mass of the fibers, of the thermoplastic molding material.
The transitional term “comprising” opens claim 1 to include additional
ingredients in amounts permitted by the weight percent ranges of the
ethylene copolymer wax and the cellulose-containing fibers. We interpret
claim 2 as limiting claim 1 by specifying that the cellulose-containing fibers
embedded in the polymer matrix constitute 60% to 90% by weight, relative
to the dry mass of the fibers, of the thermoplastic molding material. Spec.,
e.g., ¶¶ 0007, 0010, 0011, 0013. Ans. 5, 6-8; Br. 4-6. See, e.g., In re Suitco
Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010; In re Morris, 127 F.3d
1048, 1054-55 (Fed. Cir. 1997).
We agree with Appellants that the Examiner erred in finding that the
thermoplastic molding material disclosed as consisting of 100 parts by
weight of wood particles, 25 to 900 parts by weight of an olefin
polymerizate, and 5 to 30 “weight percentage” in Pfannmüller would have
described to one skilled in the art an embodiment(s) of a thermoplastic
molding material that meets all of the limitations specified in claims 1 and 2
in a manner that enables the practice of that embodiment without undue
experimentation. Ans. 4-5, 7-8, citing Pfannmüller abstract, 1:15-26,
2:18-21, Examples 1, 2; Br. 5-8. See, e.g., ClearValue, Inc. v. Pearl River
Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v.
Apotex Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008).
There is no dispute with respect to the teachings of Pfannmüller even
in view of the disclosure of the amount of ethylene copolymer wax in
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“weight percentage” in the generic disclosure of the thermoplastic molding
material in the translation, and in “parts” in the generic disclosure of the
thermoplastic molding material in the abstract and in the examples in the
translation. We find that, as Appellants point out, the thermoplastic molding
material disclosed as consisting of 500 parts of an olefin polymerizate and
250 parts of polyethylene wax in Pfannmüller Example 1 and the
thermoplastic molding material disclosed as containing 500 parts of an
olefin polymerizate and 300 parts of polyethylene wax in Pfannmüller
Example 2 do not describe a thermoplastic molding material in which the
polyethylene wax is the main ingredient of the polymer matrix as specified
in claims 1 and 2 as we interpreted these claims. Br. 5-6.
We find that the % by weight of the 100 parts of the wood particles in
a thermoplastic molding material falling within Pfannmüller’s generic
disclosure is dependent upon the amount of olefin polymerizate and
polyethylene copolymer wax in the thermoplastic molding material. We
further find that the 500 parts of wood meal in each of Pfannmüller’s
examples 1 and 2 is outside of the 100 parts of wood particles in the generic
thermoplastic molding material disclosed by Pfannmüller. We find that, as
Appellants point out, the thermoplastic molding materials in each of
Pfannmüller’s Examples 1 and 2 contain 500 parts of wood meal which
constitutes 40% by weight and 38% by weight of the respective
thermoplastic molding materials, which amounts are below the cellulose-
containing fiber % by weight ranges specified in each of claims 1 and 2. Br.
8.
On this record, we find that Pfannmüller’s generic disclosure and
examples would not have described a thermoplastic molding material falling
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within claims 1 and 2 without undue experimentation. Indeed, the
thermoplastic molding materials illustrated in Pfannmüller’s examples do
not fall within Pfannmüller’s generic disclosure of thermoplastic molding
materials. The Examiner’s reliance on Pfannmüller’s “specification as a
whole” is misplaced because there is no disclosure directing one skilled in
the art to an embodiment of the claimed thermoplastic molding materials
without any need for picking, choosing and combining various parts of
Pfannmüller which are clearly not directly related to each other. Ans. 8.
See, e.g., In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (quoted with
approval in Sanofi-Synthelabo, 550 F.3d at 1083).
Accordingly, in the absence of a prima facie case of anticipation, we
reverse the ground of rejection of claims 1 and 2 under 35 U.S.C. § 102(b).
II. Claims 4-10 and 12-14: § 103(a) - Pfannmüller and Lugert
The issue of whether the Examiner erred in determining that one of
ordinary skill in the art would have combined Pfannmüller and Lugert and
thus would have been led to a thermoplastic molding material falling within
representative claim 4, which limits claim 1 to include a filler in the claimed
thermoplastic molding material, stands on a different factual foundation.
Ans. 5-6, 8-9; Br. 8-11.
Appellants admit that there is overlap between the claimed
thermoplastic molding materials of claim 4 and the thermoplastic molding
materials of Pfannmüller modified to contain the filler of Lugert as
determined by the Examiner. Br. 8-9. Appellants contend that the claimed
molding materials address problems known in the art and achieve
“‘surprising” results” as disclosed in the Specification. Br. 9, citing Spec.
¶¶ 0003, 0004, 0007-0009. Appellants contend this disclosure “speak[s] to
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the criticality of the specifically claimed features and to the criticality of the
differences between the claims and the prior art, as represented by
Pfannmüller.” Br. 9-10. The difficulty we have with Appellants’ position is
that Appellants do not support the contentions with evidence or scientific
explanation which compares the claimed thermoplastic molding materials
and the thermoplastic molding materials taught by Pfannmüller. See, e.g., In
re Hoch, 428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an
actual comparison of the properties of the claimed invention with the
disclosure of the reference). Thus, on this record, Appellants have not
established that the Examiner erred in combining Pfannmüller and Lugert
leading to a thermoplastic molding material falling within representative
claim 4.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Pfannmüller and Lugert with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 4-10 and 12-14 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
We affirmed the ground of rejection under 35 U.S.C. § 103(a) and
reversed the ground of rejection under 35 U.S.C. § 102(b) based on the
different factual considerations required to support a ground of rejection
under these statutory provisions. The issue of whether claims 1 and 2 are
patentable under 35 U.S.C. § 103(a) is a matter for the Primary Examiner
when the Application is again before the Primary Examiner for
consideration upon termination of the appeal. MPEP § 1214.04 (8th ed.,
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Rev. 3, August 2005).
The Primary Examiner’s decision is affirmed-in-part.
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-IN-PART