Ex Parte Bostrom et al

Patent Trial and Appeal Board

Aug 24, 2018

11884900 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/884,900 11/20/2007
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
08/24/2018
FIRST NAMED INVENTOR
Jan-Ove Bostrom
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.
KADZ 200061US01 7719
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
08/24/2018 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 ANNIKA SMEDBERG, RUTH DAMMERT, LENA LINDBOM,
NIGEL HAMPTON, BILL GUSTAFSSON, ULF NILSSON,
PERRY NYLANDER, and CLAES BROMAN
Appeal2017-009419
Application 11/884,900
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 5-10, 12-14, 16-32, and 34--
39. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Borealis Technology Oy as the real party in interest.
Appeal Brief filed February 21, 2017 ("App. Br."), 1.
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Application 11/884,900
STATEMENT OF THE CASE
Appellants claim a peroxide crosslinkable polymer composition
(independent claims 1 and 10) and process for the production of a
multilayered article (independent claim 26). Claim 1 illustrates the subject
matter on appeal and is reproduced below with contested language italicized:
1. A peroxide crosslinkable polymer composition,
compnsmg
(i) an unsaturated polyethylene having a total amount
of carbon-carbon double bonds/I 000 carbon atoms of 0.4 to
1.17,
(ii) at least one scorch retarder selected from the
group consisting of 2,4-diphenyl-4-methyl-l-pentene,
substituted or unsubstituted diphenylethylene, and mixtures
thereof, and
(iii) at least one crosslinking agent;
wherein the unsaturated polyethylene has a total amount
of vinyl groups/1000 carbon atoms of 0.04 to 0.82.
App. Br. 11 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered September 28, 2016 ("Final Act."), and maintains the
rejections in the Examiner's Answer entered April 26, 2017 ("Ans."):
I. Claims 1, 5-8, 10, 12-14, 16-26, 30-32, and 34--38 under
35 U.S.C. § 103(a) as unpatentable over Gustafsson et al. (U.S. 5,539,075,
issued July 23, 1996) in view of Suyama et al. (U.S. 5,298,564, issued
March 29, 1994);
II. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Gustafsson in view of Suyama and A. Smedberg et al., Characterisation and
Crosslinking Properties of a Poly(ethylene-co-divinylsiloxane), 45 Polymer
4845--4855 (2004);
III. Claims 27-29 under 35 U.S.C. § 103(a) as unpatentable over
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Application 11/884,900
Gustafsson in view of Suyama and Keogh (U.S. 6,231,978 Bl, issued May
15, 2001); and
IV. Claim 39 under 35 U.S.C. § I03(a) as unpatentable over
Gustafsson in view of Suyama and Akermark et al. (EP 1605473 Al,
published December 14, 2005).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affirm the Examiner's rejections of
claims 1, 5-10, 12-14, 16-32, and 34--39 under 35 U.S.C. § I03(a) for the
reasons set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each issue Appellants
identify. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the examiner had
failed to make a prima facie case, "it has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's
rejections.")).
Rejection I
Claims 1, 5---8, 10, 12-14, 16-25, 30-32, and 34-38
Appellants argue claims 1, 5-8, 10, 12-14, 16-25, 30-32, and 34--38
together on the basis of limitations common to independent claims 1 and 10.
App. Br. 5-8. We accordingly select claim 1 as representative, and decide
the appeal as to claims 1, 5-8, 10, 12-14, 16-25, 30-32, and 34--38 based on
claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Gustafsson discloses an unsaturated ethylene copolymer (unsaturated
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polyethylene) used to produce an insulating material for electric cables. Col.
1, 11. 6-7; col. 5, 11. 37-58. Gustafsson discloses forming the insulating
material by extruding the unsaturated ethylene copolymer (unsaturated
polyethylene) at a temperature of about 125QC-140QC, and crosslinking the
extruded copolymer at elevated temperature using a vulcanization process.
Col. 5, 1. 56-col. 6, 1. 17. Gustafsson discloses adding a peroxide-type free-
radical forming agent ( crosslinking agent) to the copolymer before
extrusion, and explains that the free-radical forming agent should remain
stable during the extrusion process, but decompose in the subsequent
vulcanization step to form free radicals that initiate crosslinking. Col. 5, 1.
61---col. 6, 1. 1.
Gustafsson discloses that premature crosslinking during extrusion
shows as "'scorch"' or inhomogeneity, surface unevenness, and
discoloration in the finished cable. Col. 6, 11. 1--4. Gustafsson explains that
"[ c ]onsequently, the polymer material and the radical forming agent must
not, in combination, be too reactive at the temperatures prevailing in the
extruder (about 125°-140°C)." Col. 6, 11. 4--7. Gustafsson further explains
that "[i]t is desirable that cross-linking is rapid but requires as little free-
radical-forming agent as possible, since this reduces the risk of scorch in the
extruder." Col. 6, 11. 17-19.
The Examiner finds that Gustafsson does not disclose use of a 2, 4-
diphenyl-4-methyl-1-pentene scorch retarder in combination with the
unsaturated ethylene copolymer (unsaturated polyethylene) and peroxide-
type free-radical forming agent (crosslinking agent), and the Examiner relies
on Suyama for suggesting this feature. Final Act. 4--5.
Suyama discloses a composition for crosslinking an ethylene polymer
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that includes the polymer, a peroxide, and 2, 4-diphenyl-4-methyl-1-pentene.
Col. 3, 11. 30-35; col. 4, 11. 43--48. The Examiner finds that Suyama
discloses that suitable ethylene polymers for crosslinking with the
composition include polyethylene and ethylene/propylene/diene copolymers.
Final Act. 4--5 (citing Suyama col. 4, 11. 59---68). Suyama discloses that the
composition precludes scorching during crosslinking of the ethylene
polymer and enhances the final crosslinking degree of the resulting product
as compared to a product crosslinked with peroxide alone. Col. 5, 11. 5 5---61.
Suyama discloses that if 2, 4-diphenyl-4-methyl-1-pentene is present in the
composition in an amount of less than 0.1 part by weight, insufficient scorch
retardation occurs, but if the amount of 2, 4-diphenyl-4-methyl-1-pentene
present in the composition is greater than 3 parts by weight, the degree of
crosslinking is low. Col. 4, 11. 53-58.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants' invention "to include the
scorch retarder 2, 4-diphenyl-4-methyl-1-pentene in the amount as taught by
Suyama in the composition as disclosed by Gustafsson [] motivated by the
express desire of Gustafsson to reduce the risk of scorch in the extruder."
Final Act. 5 (citing Suyama col. 4, 11. 53-58 and Gustafsson col. 6, 11. 1--4
and 17-22).
Appellants argue that those skilled in the art were armed with
Gustafsson and Suyama for over a decade before the priority date of their
patent application but never made the modification of Gustafsson proposed
by the Examiner. App. Br. 6. Citing Leo Pharmaceutical Products, Ltd. v.
Rea, 726 F.3d 1346, 1355 (Fed. Cir. 2013), Appellants argue that "[t]his
suggests, in light of the technological level and common technical
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knowledge in the art on the priority date, that one of ordinary skill in the art
would not have conceived of mixing MSD [2, 4-diphenyl-4-methyl-1-
pentene] with a highly unsaturated ethylene copolymer" before their
invention. App. Br. 6; Reply Br. 2.
However, as explained in Nike, Inc. v. Adidas AG, 812 F.3d 1326
1338 (Fed. Cir. 2016) (overruled on different grounds in Aqua Prods., Inc. v.
Mata!, 872 F.3d 1290, 1314 (Fed. Cir. 2017)), reversal of the Board's
decision in Leo Pharmaceutical "hinged on the fact that nothing in the cited
prior art appreciated the problem the invention recognized and then solved."
Unlike Leo Pharmaceutical, in the present case Gustafsson appreciates the
same problem addressed by Appellants-scorching that occurs due to
premature crosslinking during extrusion of an unsaturated ethylene
copolymer (unsaturated polyethylene) and a peroxide-type free-radical
forming agent ( crosslinking agent }-and Suyama explicitly discloses a
solution to this problem. Compare Spec. 1, 11. 3--4; 2, 11. 8-20; 3, 11. 7-9,
with Gustafsson col. 6, 11. 1--4, 17-19 and Suyama col. 5, 11. 55-61.
Accordingly, Appellants' arguments regarding the time period
between publication of Gustafsson and Suyama and the priority date of the
present application do not constitute objective evidence necessary to support
a conclusion of non-obviousness. Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004) ("Absent a showing of long-felt need
or the failure of others, the mere passage of time without the claimed
invention is not evidence of nonobviousness.").
Appellants argue that Gustafsson already mitigates the risk of scorch
by selecting specific polymers and crosslinking agents, and by reducing the
amount of crosslinking agent utilized. App. Br. 6. Appellants contend that
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the Examiner's proposed modification "purportedly solves a problem that an
ordinarily skilled artisan would have recognized was already addressed by
Gustafsson," which Appellants assert evidences that the Examiner's
rejection is based on impermissible hindsight. App. Br. 6-7.
However, although Gustafsson does disclose that the polymer material
and radical forming agent must not be too reactive at the temperatures
prevailing in the extruder, and to reduce the risk of scorch in the extruder, as
little free-radical-forming agent should be used as possible, we find no
disclosure in Gustafsson indicating that these measures eliminate scorch
entirely, and Appellants do not direct use to any such disclosure in
Gustafsson.
Accordingly, in view of Suyama's disclosure that an effective amount
of 2, 4-diphenyl-4-methyl-1-pentene precludes scorching during
crosslinking of an ethylene polymer with a peroxide crosslinking agent, one
of ordinary skill in the art seeking to produce an insulating material for
electric cables as described in Gustafsson would have been led to include an
effective amount of 2, 4-diphenyl-4-methyl-1-pentene with Gustafsson's
unsaturated ethylene copolymer (unsaturated polyethylene) and peroxide-
type free-radical forming agent (crosslinking agent) during extrusion and
subsequent crosslinking to preclude scorching of the insulating material. Cf
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill."). Contrary to Appellants' arguments, the Examiner's rejection is
therefore not based on impermissible hindsight reasoning.
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Appellants argue that Suyama's disclosure of utilizing a scorch
retarder with an ethylene/propylene/diene copolymer (EPDM) does not
teach or suggest that the scorch retarder could be used with the highly
unsaturated ethylene diene copolymer disclosed in Gustafsson. App. Br. 8.
Appellants contend that "EPDM copolymers are commonly understood by
those of ordinary skill in the art to refer to copolymers where the diene is
dicyclopentadiene, ethylidene norbomene, or vinyl norbomene," and
Appellants assert that the "comonomer of Gustafsson is described as
requiring at least four carbon atoms without ethylenic unsaturation between
the double bonds," which "requirement is not met by the three dienes used in
EPDM." Id.
However, contrary to Appellants' arguments, Gustafsson does not set
forth a requirement for at least four carbon atoms without ethylenic
unsaturation between double bonds in the unsaturated ethylene copolymer
described in the reference. Rather, Gustafsson discloses forming the
unsaturated ethylene copolymer (unsaturated polyethylene) by high-pressure
polymerization of ethylene and a polyunsaturated comonomer, such as
decadiene. Col. 1, 11. 6-10; col. 4, 11. 3-8, 52-56; col. 5, 11. 20-36.
Gustafsson discloses that "[t]o obtain an optimal result," the polyunsaturated
comonomer "[p ]referably" includes at least four unsaturated carbon atoms
between double bonds. Col. 4, 11. 29-33. In addition, as discussed above,
Suyama broadly discloses crosslinking "ethylene polymers" with peroxide in
the presence of 2, 4-diphenyl-4-methyl-1-pentene, and indicates that EPDM
is only one of numerous exemplary ethylene polymers suitable for use in
Suyama's invention. Col. 4, 1. 59---col. 5, 1. 2.
In view of these disclosures, one of ordinary skill in the art reasonably
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would have expected that 2, 4-diphenyl-4-methyl-1-pentene would preclude
scorching during extrusion of the unsaturated ethylene copolymer
(unsaturated polyethylene) and peroxide-type free-radical forming agent
disclosed in Gustafsson. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
("[ o ]bviousness does not require absolute predictability of success ... all
that is required is a reasonable expectation of success.")
Appellants argue that "[t]he claimed compositions and processes also
yield unexpected results." App. Br. 7. In support of this argument,
Appellants point to statements in their Specification indicating that the
claimed composition unexpectedly maintains good crosslinking properties in
a vulcanization step and unexpectedly shows an improved resistance to
scorch. Id. (citing Spec. 9, 11. 1-9; 10, 11. 13-19). Appellants also assert that
their Specification shows that the composition of their invention decreases
degassing time for removing volatile by-products. App. Br. 7-8 ( citing
Spec. 11, 11. 1-21; Table 5). Appellants further argue that "a comparison of
Formulations 1 and 6 of the present application to Comparative Examples 1
and 3" as set forth in Tables 2--4 of the Specification shows "the superior
technical effect of the present application" with respect to "improved
resistance to scorch (increased torque times) while maintaining good
crosslinking properties (hot set elongation)." App. Br. 7-8. Appellants
further contend that "the present claims also achieve superior crosslinking
properties even with lesser amounts of crosslinking agent." App. Br. 8.
However, Appellants do not meet their burden of demonstrating that
the composition of claim 1 imparts results that would have been unexpected
by one of ordinary skill in the art at the time of their invention. Appellants
do not provide any persuasive evidence to support the assertions in their
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Specification that the crosslinking properties in the vulcanization step and
improved resistance to scorch exhibited by the composition of claim 1 would
have been unexpected by one of ordinary skill in the art at the time of their
invention. App. Br. 7-8; Tyco Healthcare Group LP v. Mutual Pharm. Co.,
642 F.3d 1370, 1377 (Fed. Cir. 2011) ("Tyco ... contends that the
experimental results described in the '954 patent were unexpected. In
support, Tyco cites the patent specification's description of the inventor's
experimental results as 'unexpected.' Unsupported statements in the
specification, however, cannot support a finding of unexpected results."
(citations omitted)). Nor do Appellants direct us to any persuasive evidence
demonstrating that the decreased time required to remove volatile by-
products, and superior crosslinking properties using lesser amounts of
crosslinking agent, asserted in their Specification to be exhibited by the
composition of their invention, would have been unexpected by one of
ordinary skill in the art at the time of their invention. App. Br. 7-8; Tyco,
642 F.3d at 1377.
Furthermore, the "comparison of Formulations 1 and 6 of the present
application to Comparative Examples 1 and 3" identified by Appellants
refers to a comparison between the scorch performance of two inventive
formulations (1 and 6) that include a polyethylene, an antioxidant, a
crosslinking agent, and a scorch retarder, and two comparative formulations
(1 and 3) that include a polyethylene, an antioxidant, and a crosslinking
agent. Spec. 21-22; Tables 2--4. As the Examiner correctly finds, in view
of Suyama's disclosure that an effective amount of 2, 4-diphenyl-4-methyl-
1-pentene precludes scorching during crosslinking of an ethylene polymer-
thus functioning as a scorch retarder----one of ordinary skill in the art
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reasonably would have expected that utilizing a scorch retarder during
crosslinking of polyethylene (as in inventive formulations 1 and 6) would
preclude, or at least reduce, scorching relative to crosslinking polyethylene
in the absence of a scorch retarder (as in comparative formulations 1 and 3).
Ans. 6. Accordingly, Appellants do not meet their burden of establishing
that the scorch performance of inventive formulations 1 and 6 relative to that
of comparative formulations 1 and 3 would have been unexpected by one of
ordinary skill in the art at the time of their invention.
Therefore, considering the totality of the evidence relied upon in this
appeal,2 a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372
(Fed. Cir. 2007) (Evidence of unexpected results and other secondary
considerations will not necessarily overcome a strong prima facie showing
of obviousness.); see also e.g., In re Nolan, 553 F.2d 1261, 1267 (CCPA
1977) ("Considering all of the evidence, we are not persuaded that the
evidence of the unexpected higher luminous efficiency and lower peak
discharge current rebuts the strong showing of obviousness.").
We accordingly sustain the Examiner's rejection of claims 1, 2, 7, 11,
20, 22, and 23 under 35 U.S.C. § 103(a).
2 We do not consider the arguments that Appellants present for the first time
at page 3 of their Reply Brief because Appellants do not show good cause
for raising these arguments in their Reply Brief. 37 C.F.R. § 4I.37(c)(l)(iv);
37 C.F.R. § 41.41(b)(2) (arguments raised for the first time in the Reply
Brief that could have been raised in the Appeal Brief will not be considered
by the Board unless good cause is shown).
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Claim 26
Independent claim 26 recites a process for the production of a
multilayered article that comprises, inter alia, extruding one or more layers
of a peroxide crosslinkable polymer composition onto a substrate. Claim 26
requires extrusion to be effected at a temperature satisfying the relationship
(19517/(273.15+T))-ln t :S 43.55, in which Tis the extrusion temperature
in °C and t is the time in minutes it takes at the extrusion temperature T from
the start of the torque measurement to reach an increase in torque of 1 dNm
from the minimum value in the torque curve.
The Examiner finds that the relationship recited in claim 26 is not
explicitly disclosed in Gustafsson or Suyama, but finds that Gustafsson
discloses utilizing a temperature range for extrusion (125QC to 140QC)
encompassed by the extrusion temperature range (120QC to 160QC) indicated
to be preferable in Appellants' Specification. Final Act. 7 ( citing Gustafsson
col. 6, 11. 4--7, Spec. 16, 11. 6-8). Based on these disclosures, the Examiner
determines that "one of ordinary skill in the art would have expected for the
conditions disclosed in Gustafsson to meet the time( t )/temperature(T)
relationship as claimed by applicant since extrusion is a conventional
process and the preferred extrusion temperature range taught by applicant
overlaps entirely the range disclosed in the prior art." Ans. 8; see also Final
Act. 7-8.
Appellants argue "that at best it appears Gustafsson only discloses the
temperature element (T). There is no disclosure, however, of the time
element (t). This appears to be assumed by the Examiner." App. Br. 9.
However, as discussed above, the Examiner determines that because
Gustafsson discloses utilizing a temperature range for extrusion (125QC to
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140QC) encompassed by the extrusion temperature range ( 120QC to 160QC)
indicated by Appellants' Specification to be preferable, and because
extrusion is a conventional process, the relationship recited in claim 26--
including the time element-would be met by the extrusion conditions
disclosed in Gustafsson. Appellants' arguments that Gustafsson does not
explicitly disclose the time element of the recited relationship does not
directly challenge or dispute the Examiner's factual findings, reasoning, or
conclusions. Appellants' arguments therefore do not identify reversible
error in the Examiner's rejection of claim 26, which we accordingly sustain.
Jung, 637 F.3d at 1365.
Rejections II-IV
Appellants argue that the dependent claims subject to these grounds of
rejection are patentable for the reasons Appellants provide for independent
claims 1, 10, and 26. App. Br. 9-10. Because we are unpersuaded of
reversible error in the Examiner's rejection of claims 1, 10, and 26 for the
reasons discussed above, Appellants' arguments regarding these rejections is
also without merit.
We accordingly sustain the Examiner's rejections of claims 9, 27-29,
and 39 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1, 5-10, 12-14, 16-32,
and 34--39 under 35 U.S.C. § 103(a).
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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).
AFFIRMED
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