Ex Parte Bhadane et al

Patent Trial and Appeal Board

Oct 16, 2017

14047190 (P.T.A.B. Oct. 16, 2017)

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.
14/047,190 10/07/2013 Prashant A. Bhadane TEK-AC-l 9649
28862 7590 10/16/2017
HUDAK, SHUNK & FARINE, CO., L.P.A.
2020 FRONT STREET
SUITE 307
CUYAHOGA FALLS, OH 44221
EXAMINER
JOHNSTON, BRIEANN R
ART UNIT PAPER NUMBER
1768
MAIL DATE DELIVERY MODE
10/16/2017 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 PRASHANT A. BHADANE, BASIL D. FAVIS,
ALAIN PERREAULT, KEVIN CAI, YUNDONG WANG, and
RYSZARD BRZOSKOWSKI
(Applicants: TEKNOR APEX COMPANY and CERESTECH, INC.)
Appeal 2016-007292
Application 14/047,1901
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 2,
12, 15, 17, 19, and 20.2 Claims 14 and 16 were also rejected in the Final
1 The real parties in interest are identified as “TEKNOR APEX
COMPANY” and “CERESTECH, INC.” (Appeal Brief filed January 18,
2016, hereinafter “Appeal Br.,” 1).
2 Appeal Br. 3—15; Reply Brief filed July 21, 2016, hereinafter “Reply Br.,”
2—8; Examiner’s Answer mailed May 26, 2016, hereinafter “Ans.,”2—12;
Final Office Action mailed June 22, 2016, hereinafter “Final Act.,” 8—15.
Appeal 2016-007292
Application 14/047,190
Office Action (Final Act. 3—5), but claim 14 has since been canceled
(Amendment filed October 5, 2015; Advisory Action mailed October 22,
2015) and, in the Answer, claim 16 has not been rejected on any ground
(Ans. 2—9).3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
I. BACKGROUND
The subject matter on appeal relates to a thermoplastic elastomer
composition and to a process for its preparation (Specification filed October
7, 2013, hereinafter “Spec.,” 12). Representative claim 1 is reproduced
from page 16 of the Appeal Brief (Claims Appendix), with key limitations
emphasized, as follows:
1. A thermoplastic elastomer composition, comprising:
a styrenic block copolymer;
a biorenewable softener comprising one or more of a
natural ester; a natural, fatty ether; and a natural, fatty alcohol
in an amount from 1 to 90 parts by weight; and
at least one synergistic additive comprising one or more of
thermoplastic starch, a biorenewable polar polymer, and a high
molecular weight styrenic block copolymer, wherein all said
parts are based on 100 parts by weight of the composition,
wherein the high molecular weight styrenic block copolymer has
a number average molecular weight greater than 300,000 g/mol,
wherein the high molecular weight styrenic block copolymer is
a tri-block copolymer having styrenic end blocks, and wherein
the high molecular weight styrenic block copolymer is present in
an amount from 1 to 30 parts by weight based on 100 total parts
by weight of the composition.
3 Claims 3—11, 13, and 18 are also pending but are withdrawn from further
consideration pursuant to a restriction requirement (Final Act. 2).
2
Appeal 2016-007292
Application 14/047,190
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains4 three rejections under pre-AIA 35
U.S.C. § 103(a):
A. claims 1,2, 12, 19, and 20 as unpatentable over Zhao (WO
2010/134915 Al, published November 25, 2010) in view of
Lysenko et al. (US 2010/02998486 Al, published November
25, 2010; hereinafter “Lysenko”), as evidenced by Date (US
2012/0059108 Al, published March 8, 2012; hereinafter “Date
’108”);
B. claims 1, 2, 12, 17, 19, and 20 as unpatentable over Date
(WO 2011/135927 Al, published November 3, 2011;
hereinafter “Date ’927”)5 in view of Lysenko, and further
in view of Zhao; and
4 The Examiner states that rejections under 35 U.S.C. § 112, || 2 and 4, and
a provisional rejection under the judicially-created doctrine of obviousness-
type double patenting over the claims of co-pending Application 14/047,342,
all as set forth in the Final Office Action (Final Act. 3—8), have been
withdrawn (Ans. 9; Advisory Action mailed October 22, 2015). The double
patenting rejection was withdrawn after the Appellants filed a Terminal
Disclaimer on October 5, 2015 (id.). We note further that an Appeal Brief
was filed on January 18, 2016 in Application 14/047,342 (Appeal No. 2016-
007295) and, therefore, that appeal should have been identified in the current
Appeal Brief under a “Related Appeals” section. See 37 C.F.R. §
41.37(c)(l)(ii).
5 With respect to Date ’927, the Appellants do not object (Appeal Br. 8—13)
to the Examiner’s reliance on Date (US 8,658,727 B2, issued February 25,
2014; hereinafter “Date ’727”) as an English language translation (Final Act.
11). Therefore, for the purposes of this opinion, any discussion of the
reference to Date ’927 will be based on the text of the English equivalent of
the reference to Date ’727.
3
Appeal 2016-007292
Application 14/047,190
C. claim 15 as unpatentable over Zhao in view of Lysenko,
or Date ’927 in view of Lysenko, and further in view of
Zhao and White (US 5,955,163, issued September 21,
1999).
(Ans. 2—9; Final Act. 8—15.)
III. DISCUSSION
Rejection A. The Appellants provide arguments under separate sub­
headings for each claim (Appeal Br. 3—8). In our opinion below, however,
we address a claim individually only to the extent that the argument(s) for
the claim comply with 37 C.F.R. § 41.37(c)(l)(iv). Under this rule, merely
pointing out what a claim recites or asserting that the prior art references do
not disclose or suggest a claim limitation is not an argument for separate
patentability requiring our separate consideration. In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011).
1. Claim 1
The Examiner finds that Zhao describes a thermoplastic elastomer
(TPE) composition comprising on a calculated basis, inter alia, 6—13 parts
by weight of KRATON® 1651 (a styrenic block SEBS copolymer), 41 parts
by weight of Primol 352 (a mineral oil that is a purified mixture of liquid
saturated hydrocarbons), and 13—19 parts by weight of KRATON® 1633 (a
high molecular weight styrenic block SEBS copolymer having a number
average molecular weight of 400,000, as evidenced by Date ’108) (Ans. 2—
3). To address the “biorenewable softener” limitations, the Examiner relies
on Lysenko (id. at 3). Specifically, the Examiner finds that, for
monovinylidene aromatic polymer compositions, Lysenko teaches certain
4
Appeal 2016-007292
Application 14/047,190
advantages in using non-mineral oil plasticizers, including some of the same
vegetable oils disclosed in the current Specification as suitable biorenewable
softeners, over mineral oil {id. at 3—4). Based on these findings, the
Examiner concludes {id. at 4):
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have used a nonmineral oil in
place of the mineral oil of Zhao, as Lysenko teaches that the
vegetable oils are capable of the same function but are less
expensive, also teaching that they can be used in smaller amounts
while improving the heat distortion temperature and the tensile
strength than that of mineral oil.
The Appellants contend that the inventors solved certain problems
encountered in prior art compositions that contain biorenewable components
and that “the problems encountered by the [inventors] would not have led
one of ordinary skill in the art to arrive at the invention set forth [in]
independent claim 1, based on the scope and content of the references cited,
absent impermissible hindsight” (Appeal Br. 4). According to the
Appellants, “there is no recognition at all of the problems encountered using
mineral oil, nor a solution thereto as set forth in claim 1 ” {id. at 5) and that
“the invention set forth [in claim 1 ] yields more than predictable results” {id.
at 6). The Appellants further contend that Lysenko’s monovinylidene
aromatic polymers are not styrenic block copolymers, as required by claim 1
{id.), and, therefore, “[t]here is no unambiguous disclosure within Lysenko
that would lead one or ordinary skill in the art to select a nonmineral oil and
then incorporate the same into Zhao to arrive at the invention set forth in
independent claim 1” {id. at 6). In addition, the Appellants argue that Zhao
discloses that the mineral oil must be purified so that the resulting TPE
composition will pass stringent pharmacopeia extraction tests but “[t]here is
5
Appeal 2016-007292
Application 14/047,190
no scope and content whatsoever within Lysenko that any of the Lysenko
oils or compositions would pass the required pharmacopeia extraction tests
required by Zhao” (id.). The Appellants urge that “[t]here is no scope and
content within either of the cited references that would lead one of ordinary
skill to modify Zhao and incorporate isolated features from Lysenko into
Zhao, absent impermissible hindsight” (id.).
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Supreme Court of the United States emphasized that an
obviousness reasoning is not foreclosed by “holding that. . . patent
examiners should look only to the problem that the [applicant] was trying to
solve.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “The
question is not whether the combination was obvious to the [applicant] but
whether the combination was obvious to a person with ordinary skill in the
art.” Id.
Under the correct obviousness standard set forth in KSR, we discern
no error in the Examiner’s findings, analysis, and conclusion of law. As the
Examiner finds (Ans. 2—3), Zhao describes a TPE composition comprising,
inter alia: KRATON® 1651 (a styrenic block SEBS copolymer); Primol 352
(a mineral oil that is a purified mixture of liquid saturated hydrocarbons) as a
lubricant that assists in providing desired reseal properties, eases release
from a mold cavity, and provides a slippery feel to an otherwise tacky
molded article; and KRATON® 1633 (a high molecular weight styrenic
block SEBS copolymer having a number average molecular weight of
400,000, as evidenced by Date ’108) (Zhao ^fl[ 20-22, 30-33). The
Examiner determined the amounts for KRATON® 1633 and Primol 352 in
6
Appeal 2016-007292
Application 14/047,190
Zhao are calculated as 13—19 parts by weight and 41 parts by weight,
respectively, based on 100 parts by weight of the composition (Ans. 3).6
Lysenko teaches that it was known that “in appropriate amounts,
mineral oil provides improvement to the bulk polymer [in particular,
monovinylidene aromatic polymer] in terms of, among other things, flow”
(Lysenko 1 6). Lysenko further teaches that “non-mineral oil, with or
without mineral oil, typically exhibit the same melt flow rate (MFR) and a
higher Vicat heat distortion temperature as similar composition containing
twice as much plasticizer of only or mostly mineral oil” and “typically
exhibit the same elongation at rupture and a higher tensile strength than do
similar polymers mixed with twice as much of. . . mineral oil” {id. 111).
According to Lysenko, the non-mineral oils include vegetable oils such as
“those derived from peanuts, cottonseed, olives, rapeseed, high-oleic
sunflower, palm and com” (Lysenko 133), which are identical to
compounds disclosed in the current Specification as suitable biorenewable
softeners (Spec. H 72, 80—81).
Given these facts, we agree with the Examiner that a person having
ordinary skill in the art would have been prompted to substitute Lysenko’s
non-mineral oils for at least some of Zhao’s mineral oil in order to obtain the
advantages explicitly disclosed in Lysenko. The mere fact that Lysenko’s
reasons for using non-mineral oils corresponding to the inventors’
biorenewable softener differ from the inventors’ reasons (Spec. 118) does
not preclude a determination of obviousness based on the combined
teachings in the prior art references. KSR, 550 U.S. at 420 (“[A]ny need or
6 The Appellants do not dispute the Examiner’s determination regarding
these amounts (Appeal Br. 3—8).
7
Appeal 2016-007292
Application 14/047,190
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”).
Although the Appellants allege that “the invention set forth [in claim
1] yields more than predictable results” (Appeal Br. 6),7 they fail to direct us
to objective evidence sufficient to support such an allegation of surprising or
unexpected results. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (mere lawyer’s arguments and conclusory statements, which are
unsupported by concrete factual evidence, are entitled to little probative
value).
We discern no merit in the Appellants’ argument (Appeal Br. 5) that
Lysenko’s polymers are not styrenic block copolymers. Consistent with the
Examiner’s findings (Ans. 12), Lysenko teaches that the monovinylidene
aromatic copolymers can be blended or grafted with one or more rubbers to
form a high impact monovinylidene aromatic polymer or copolymer and that
the preferred rubbers include block copolymers of 1,3-butadiene and
monovinylidene aromatic monomer (Lysenko ^fl[ 29—31). Such polymers
fall within the broad scope of “styrenic block copolymer” as recited in
claim 1.
With respect to the argument that Zhao’s mineral oil must pass
stringent pharmacopeia tests (Appeal Br. 5), we find no reversible error in
the Examiner’s findings in the Answer (Ans. 12), which we adopt as our
own. There, the Examiner finds that Lysenko’s non-mineral oils are not
7 See KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.”).
8
Appeal 2016-007292
Application 14/047,190
prepared from harmful petroleum products like mineral oil and are used to
prepare compositions suitable for food and drinking applications (Lysenko
13). The Appellants fail to direct us to any evidence or technical reasoning
that would explain why such non-mineral oils could not be purified in the
same manner as disclosed in Zhao in order to produce a medical device.
Moreover, Zhao would have suggested using TPE compositions for a wide
variety applications—not solely medical uses (Zhao H 3, 27).
For these reasons, we sustain the Examiner’s rejection as to claim 1.
2. Claim 2
The Appellants argument for claim 2 repeats the argument for claim 1
that Lysenko does not disclose styrenic block copolymers and that,
therefore, “there would be no reasonable expectation of success nor
motivation to replace the mineral oil of Zhao that is required to pass
pharmacopeia extraction tests with the non[-]mineral oil of Lysenko”
(Appeal Br. 6—7). As we discussed above, that argument is incorrect.
2. Claim 12
Claim 12 depends from claim 2, which depends from claim 1, and
recites: “wherein the ester-containing oil comprises hydrogenated oil”
(Appeal Br. 12).
The Appellants acknowledge that Lysenko teaches subjecting the non­
mineral oils to hydrogenation but argue that “the claim yields more than
predictable results as too many inventive steps would need to be taken in
order to arrive at the invention” {id. at 7—8). According to the Appellants,
the replacement oil would have to meet the pharmacopeia extraction tests
required by Zhao and a person having ordinary skill in the art would have
9
Appeal 2016-007292
Application 14/047,190
had to discover that hydrogenated ester-containing oils would be suitable {id.
at 8).
These arguments are unpersuasive. Lysenko explicitly teaches
hydrogenated non-mineral oils are suitable (Lysenko 133). Therefore, a
person having ordinary skill in the art would have been prompted to replace
Zhao’s mineral oil in part or whole with a reasonable expectation of
obtaining the advantages disclosed in Lysenko (Lysenko 111). Regarding
the argument concerning Zhao’s pharmacopeia extraction tests requirement,
we find it unpersuasive for the same reasons given above for claim 1.
4. Claims 19 & 20
The Appellants’ arguments for these claims (Appeal Br. 8) are
skeletal and do not require our separate consideration. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection B. The Appellants provide arguments under separate sub­
headings for each claim (Appeal Br. 9-13). Again, however, we address a
claim individually only to the extent that the argument(s) for the claim
comply with 37 C.F.R. § 41.37(c)(l)(iv). SeeLovin, 652 F.3d at 1356—57.
1. Claim 1
The Examiner finds that Date ’927 describes every limitation recited
in claim 1 except for the specified “biorenewable softener” (Ans. 5).
Relying on Lysenko, the Examiner concludes {id. at 6):
[I]t would have been obvious to one of ordinary skill in the
art at the time the invention was made to have used a nonmineral
oil in place of the mineral oil of Date, as Lysenko teaches that the
vegetable oils are capable of the same function but are less
expensive, also teaching that they can be used in smaller amounts
10
Appeal 2016-007292
Application 14/047,190
while improving the heat distortion temperature and the tensile
strength than that of mineral oil.
The Appellants offer several arguments that are the same as or
analogous to those made against Rejection A (Appeal Br. 9-10). We find
them unpersuasive for the same reasons given above.
The Appellants also argue that “one of ordinary skill in the art would
not be led to specifically select [Date ’927’s] example 4 . . . out of the 30
examples and then further to substitute the required essential mineral oil
softener thereof, with the nonmineral oil of Lysenko” {id. at 9). But the
mere fact “[t]hat the [reference] discloses a multitude of effective
combinations does not render any particular formulation less obvious.”
Merck & Co. v. Bio craft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
For these reasons, we sustain the Rejection A as to claim 1.
2. Claim 2
The Appellants argue that Lysenko’s polymers are not styrenic block
copolymers (Appeal Br. 11). As we explained above, that is incorrect.
2. Claim 12
The Appellants argue that “claim 12 yields more than predictable
results as too many inventive steps would need to be taken in order to arrive
at the invention set forth therein, which depends on claim 2, and in turn
claim 1” (Appeal Br. 11). As we discussed above, Lysenko explicitly
teaches hydrogenated non-mineral oils (Lysenko 133), and, therefore, a
person having ordinary skill in the art would have been prompted to replace
Zhao’s mineral oil in part or whole with a reasonable expectation of
obtaining the advantages disclosed in Lysenko (Lysenko 111). In addition,
the Appellants do not direct us to any evidence that the use of Lysenko’s
11
Appeal 2016-007292
Application 14/047,190
hydrogenated non-mineral oils corresponding to the inventors’ biorenewable
softeners yields more than predictable results.
4. Claim 17
For claim 17, the Appellants repeat several arguments already made in
support of other claims—namely, that a person having ordinary skill in the
arty would not have selected Date ’927’s Example 4 and that Lysenko does
not disclose styrene block copolymers (Appeal Br. 12—13). These
arguments are unpersuasive for the same reasons given above.
5. Claims 19 & 20
The Appellants’ arguments for these claims (Appeal Br. 13) are
skeletal and do not require our separate consideration. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection C. The Appellants argue that “[f]or the sake of brevity, all
arguments set forth hereinabove with respect to claim 1 are incorporated by
reference” (Appeal Br. 14). We have already found the arguments for claim
1 to be insufficient to identify any reversible error in the Examiner’s
rejection.
The Appellants also argue (id.):
On page 14 of the Office Action it is indicated that White
teaches a gasket for a crown cap and that the copolymers thereof
may be functionalized with carboxylate derivatives, which may
improve the compatibility with and adhesion to polar materials.
White does not include any scope and content that would lead
one of ordinary skill in the art to utilize a biorenewable softener
and at least one synergistic additive in combination therewith as
specifically claimed. White oil is specifically utilized in the
examples, see column 6, line 31. Absent impermissible
hindsight, one of ordinary skill in the art would not be led to
12
Appeal 2016-007292
Application 14/047,190
consider White nor specifically select the functionalized styrenic
block copolymer thereof, and then incorporate the same with
isolated features from the other cited references in order to arrive
at claim 17. Too many inventive steps would need to be taken
by one of ordinary skill in the art and there would be no
reasonable expectation of success.
These skeletal arguments amount to a mere disagreement with the
Examiner’s position and fail to identify a reversible error in the Examiner’s
articulated reason for combining the references in the manner claimed.
IV. SUMMARY
Rejections A through C are affirmed. Therefore, the Examiner’s
decision to reject claims 1, 2, 12, 15, 17, 19, and 20 is affirmed.
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).
AFFIRMED
13