Ex Parte Bieser et al

Patent Trial and Appeal BoardApr 18, 2016

12812279 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/812,279 11/22/2010 John Bieser 25264 7590 04/19/2016 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 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 ATTORNEY DOCKET NO. CONFIRMATION NO. F-1100 5883 EXAMINER LOPEZ, RICARDO E. ART UNIT PAPER NUMBER 1786 MAILDATE DELIVERY MODE 04/19/2016 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 JOHN BIESER, GUILLAUME PA VY, HUGUES HAUBRUGE, ALAIN STANDAERT, and WILLIAM RUSTY WHEAT Appeal2014-008873 Application 12/812,2 79 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. Â§ 134(a) from a rejection of claims 16-23. Appeal Br. 10. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is "TOT AL PETROCHEMICALS RESEARCH FELUY." Appeal Br. 5. Appeal2014-008873 Application 12/812,2 79 STATEMENT OF CASE Appellants describe the present invention as relating to fibers including a metallocene random copolymer of propylene and one or more comonomers. Appeal Br. 9. The fibers could be used for, for example, the agricultural industry, sanitary and medical articles, carpets, or textiles. Spec. 1: 18-21. Claim 16, reproduced below with emphasis added, is the only independent claim on appeal and is illustrative of the claimed subject matter: 16. Fibers comprising a metallocene random copolymer of propylene and one or more comonomers, said comonomers being alpha-olefins different from propylene, wherein the metallocene random copolymer has a comonomer content of from 0.1 wt.% to 1.0 wt.% relative to the total weight of the metallocene random polymer; wherein the metallocene random copolymer has a melting temperature of at least 147 Â°C. Appeal Br. 14 (Appendix of Claims). REFERENCES The Examiner relied upon the prior art below when rejecting the claims on appeal: Stahl Thurman US 5,763,080 Jun. 9, 1998 US 2008/0249248 Al Oct. 9, 2008 REJECTIONS The Examiner made the following rejections: Rejection 1. The Examiner rejected claims 16 and 18-23 under 35 U.S.C. Â§ 103 as unpatentable over Stahl. Final Act. 2. Rejection 2. The Examiner rejected claim 17 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Stahl and Thurman. Id. at 5. 2 Appeal2014-008873 Application 12/812,2 79 ANALYSIS Rejections 1 and 2. Appellants' arguments with respect to the Examiner's rejections are discussed below. Appellants do not separately argue dependent claims 17-23. Appeal Br. 11, 13. We therefore limit our discussion to claim 16. Claims 17-23 stand or fall with that claim. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). Appellants argue that Stahl does not teach or suggest a fiber of a metallocene random copolymer that has a melting temperature of at least 14 7Q C. Appeal Br. 11. The Examiner finds that Stahl teaches such a copolymer because it discloses copolymers exhibiting melting points in the range of from about lOOQ to about 145Q C. Ans. 4; Final Act. 4--5. The Stahl reference explains temperature ranges for "a preferred embodiment" as follows: The polymers will exhibit melting points in the range of from about lOOQ C. to about 145Q C., more preferably, in the range of from about 110 QC. to about 135Q C., most preferably in the range of from about 110 QC. to about 130Q C. Stahl 6: 12-16. In this preferred embodiment context, the two degree Celsius difference between Stahl's explicit top end range (145Q C) and claim 16's bottom range (147Q C) is small relative to Stahl's teaching melting points in the range of about 1 OOQ C to about 145Q C. We also note that in Stahl, aside from using the word "about" in the context of 145Q C, all of the ranges provided appear to be approximate because each end point is a multiple of five. The apparent rounding of the melting point temperatures to the nearest multiple of five suggests that Stahl's metallocene random copolymer fiber having a melting point of "about" 145Q C includes the melting point of 14 7Q C recited in claim 16. Thus, we agree with the Examiner that a 3 Appeal2014-008873 Application 12/812,2 79 preponderance of the evidence supports that a person of ordinary skill in the art would have viewed Stahl's teaching of melting point ranges of up to "about 145Q C" as including the 147Q melting point recited in claim 16. Ans. 4; Final Act. 4--5. Cf, e.g., Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995) ("The use of the word 'about,' avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context."); In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990) (holding that prior art teaching of"about 1-5%" allows for concentrations "slightly above 5%"). Our reviewing court has held that "even a slight overlap in range establishes a prima facie case of obviousness." See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also, e.g., In re Woodruff, 919 F.2d at 1577 (concluding that claimed invention was rendered obvious by prior art reference whose disclosed range ("about 1-5%" carbon monoxide) abutted claimed range ("more than 5% to 25%" carbon monoxide)). Here, the claimed range and prior art Stahl range overlap slightly, and prima facie obviousness is therefore established. Alternatively, even if Stahl's range going up to "about 145Q C" merely comes close to but does not overlap the claimed lower range of 14 7Q C, our conclusion would not be altered. As our reviewing court has stated, "a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties." In re Peterson, 315 F.3d at 1329 (citing Titanium Metals Corp. v. Banner, 778 F.2d 778, 783 (Fed. Cir. 1985)). In Titanium Metals Corp. of Am. v. Banner, 778 F.2d at 782-783, the court held that a claim requiring 0.3% molybdenum (Mo) and 4 Appeal2014-008873 Application 12/812,2 79 0.8% nickel (Ni) was obvious in view of prior art alloys having 0.25% molybdenum and 0.75% nickel and 0.31 % molybdenum and 0.94% nickel because "[t]he proportions are so close that prima facie one skilled in the art would have expected [the claimed alloys] to have the same properties." We note that the notion of "same" in Titanium Metals must be understood as meaning requiring not only strictly identical properties but also similar properties. One of skill in the art would know or would reasonably expect, for example, 0.3% versus 0.31 % molybdenum is not strictly the same and will not result in precisely the same properties (i.e., it would be impossible for differing composition percentages to have exactly zero effect on melting point, density, etc.). The decision inin re Dillon, 919 F.2d 688, 692---693 (Fed. Cir. 1990) (en bane) further confirms the reasoning of Titanium Metals. There, the court reaffirmed "that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prim a facie case of obviousness, and the burden (and opportunity) then falls on an applicant to rebut that primafacie case." Id. Rebuttal could consist of "showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have." Id. The claims at issue there were thus obvious because "[t]he art provided the motivation to make the compositions in the expectation that they would have similar properties." Id. at 693 (emphasis added). Thus, just as in Titanium Metals involving similar (close) ranges of the same materials claimed matter was obvious where one skilled in the art would have expected the claimed 5 Appeal2014-008873 Application 12/812,2 79 matter and the prior art to have similar properties due to the chemical structural similarities. Here one would expect the claimed fibers with a melting temperature of 14 7Q C and the prior art fibers having a melting temperature of "about 145Q C" to be have substantially similar properties. This is because the range of difference here is narrow (less than two degree differential as compared to Stahl's about 145Q C acceptable range). Moreover, as the Examiner explains and as taught by Stahl, fiber melting point is a factor that can be adjusted across wide ranges to optimize the melting point differentials between copolymers. Ans. 4--5 (citing, e.g., Stahl 3:53-57; 60- 64); cf In re Aller, 220 F.2d 454, 456 (CCP A 1955) ("where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation") (citations omitted). The conclusion that fibers with a 14 7Q C melting point would have been obvious is further reinforced by Stahl's teaching of M copolymers which could be metallocene catalyzed polymers (Ans. 5; Stahl 8: 1 :21) and could have melting points as high as 161 QC (Stahl 7: 1-8; 7:36-65). Although Stahl does not explicitly teach that the M copolymer also has claim 16's recited comonomer content ranging from 0.2 to 6 mole percent (Reply Br. 9), Stahl's discussion of the M copolymer nonetheless teaches the utility of higher melting point polymers (Ans. 5). Therefore, based on the reasoning of Titanium Metals, In re Dillon, and In re Aller, we conclude that claim 16 would have been prima facie obvious even if Stahl's teaching of "about 145Q C" does not overlap the claimed lower range of 147Q C. 6 Appeal2014-008873 Application 12/812,2 79 Appellants can rebut the above prima facie case of obviousness by establishing "that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the [closest] prior art range." In re Peterson, 315 F.3d at 1330 (internal quotes and citations omitted). Appellants, however, provide no evidence or reasoning as to why claim 16 's claimed range is critical or unexpected. On this basis, we agree with the Examiner's conclusion that claim 16 would have been obvious. We therefore sustain the Examiner's rejection of claim 16 and claims 17-23. DECISION For the above reasons, we sustain the Examiner's rejection of claims 16-23. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7