Ex Parte Brown et al

Patent Trial and Appeal BoardSep 17, 2012

11609159 (P.T.A.B. Sep. 17, 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. 11/609,159 12/11/2006 John Mark Brown 210836US00 CPCM:0072/FLE/ 1628 7590 09/17/2012 Michael G. Fletcher FLETCHER YODER P.O. Box 692289 Houston, TX 77269-2289 EXAMINER MULLIS, JEFFREY C ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 09/17/2012 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 JOHN MARK BROWN, MICHAEL A. SMITH, NATHAN E. STACY, CARLETON E. STOUFFER, and JOHN D. WILKEY ____________ Appeal 2011-003594 Application 11/609,159 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and MICHAEL P. COLAIANNI, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-40. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A monovinylarene-conjugated diene block copolymer, comprising: a proximal conjugated diene block comprising from about 5 phm conjugated diene units to about 50 phm conjugated diene units; and a plurality of monovinylarene-conjugated diene mixed blocks, wherein each monovinylarene-conjugated diene mixed block contains Appeal 2011-003594 Application 11/609,159 2 conjugated diene units and monovinylarene units with a weight ratio of conjugated diene units to monovinylarene units of about 0.05 to about 0.33, wherein: the loss tangent value obtained by dynamic viscoelasticity measurement for the monovinylarene-conjugated diene block copolymer at a temperature of about 10 °C less than the temperature at the maximum loss target is in the range of about 42 % to about 70 % of the maximum loss target; and the loss tangent value obtained by dynamic viscoelasticity measurement for the monovinylarene-conjugated diene block copolymer at a temperature of about 30 °C less than the temperature at the maximum loss tangent is in the range of about 5 % to about 15 % of the maximum loss tangent. The Examiner relies upon the following references in the rejection of the appealed claims: Keane et al. (Keane) US 2005/0166551 A1 Aug. 4, 2005 Stacy et al. (Stacy) 7,037,980 B2 May 2, 2006 Brown et al. (Brown) US 2007/0173605 A1 Jul. 26, 2007 Appellants’ claimed invention is directed to a monovinylarene- conjugated diene block copolymer comprising the recited properties, such as loss tangent value at different temperatures. Appealed claims 1-22, 28, 35, and 36 stand rejected under 35 U.S.C. § 112, first paragraph, written description requirement. Claim 28 stands rejected under 35 U.S.C. § 112, second paragraph. Claims 1-4, 7, 26-31, and 34-40 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Stacy. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stacy. Claims 8-25 and 40 stand rejected under 35 U.S.C. Appeal 2011-003594 Application 11/609,159 3 § 103(a) as being unpatentable over Keane in view of Stacy. Also, claims 1-24, 26-31, and 34-40 stand rejected under 35 U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Brown. We have thoroughly reviewed each of Appellants’ arguments for patentability, as well as the declaration evidence relied upon in support thereof. However, with the exception of the Examiner’s rejection of claim 35 over §112, first paragraph, we agree with the Examiner that the claimed invention is unpatentable in view of the rejections lodged by the Examiner. Accordingly, with the noted exception, we will sustain the Examiner’s rejections for the reasons set forth in the Answer. We add the following for emphasis only. We consider first the Examiner’s § 112, first paragraph, written description requirement, rejection of claims 1-22, 28, 35, and 36. Although Appellants have proffered declaration evidence which demonstrates that copolymers exemplified in the Specification have the claimed loss tangent values, Appellants have not rebutted the Examiner’s reasoned analysis that the Specification examples are far from commensurate in scope with the broad degree of protection sought by the appealed claims. As explained by the Examiner at pages 7-9 of the Answer, the Specification examples are limited to styrene/butadiene block copolymers whereas the Specification teaches that the monovinylarene-conjugated diene block copolymers may be derived from 16 monovinylarene monomers aside from styrene and 5 dienes aside from butadiene. Appellants have not established that the at least 96 different combinations of monomers encompassed by the appealed claims Appeal 2011-003594 Application 11/609,159 4 exhibit the claimed loss tangent values. We note Appellants’ offer to amend the claims to refer to styrene and butadiene as the monomers (see Reply Br. 4, third paragraph). We also agree with the Examiner that the language “reverse tapered blocks” of claim 28 does not have original descriptive support in the Specification. Appellants acknowledge that the language is not found in the Specification but maintain that one of ordinary skill in the art would recognize that the terms “reverse tapered” and “tapered” essentially mean the same thing, i.e., the higher mole fraction of conjugated diene could be included on either end of the block. However, if Appellants’ definition of “tapered” in the Specification allows either end of the block to contain the higher mole fraction of conjugated diene, there is no need to use the redundant language “reverse tapered”, unless there is, in fact, a meaningful distinction between “tapered” and “reverse tapered.” As set forth by the Examiner, there is no descriptive support for such a distinction. We will not sustain the Examiner’s rejection of claim 35 under § 112, first paragraph, written description requirement. It is the Examiner’s position that a single value of haze disclosed in the Specification cannot support the claimed range of less than about 5%. As pointed out by Appellants, however, their Specification discloses that “the film formed from the [polystyrene] composition may have a haze of less than about 10%” (Spec. 13, line 15). Also, Appellants’ Examples R, Q, P, N, and J all have different haze values less than 5%. We will also sustain the Examiner’s § 102 rejections over both Stacy and Brown. There is no dispute that both references, like Appellants, Appeal 2011-003594 Application 11/609,159 5 disclose the preparation of monovinylarene-conjugated diene block copolymers but don’t teach that the copolymers have the claimed properties with respect to loss tangent value, haze, and shrinkage. However, it is well settled that when a claimed product or process reasonably appears to be substantially the same as a product or process disclosed by the prior art, the burden is on the applicant to prove with objective evidence that the prior art product or process does not necessarily or inherently, possess characteristics attributed to the claimed product or process. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In the present case, the Examiner has established a sufficient correspondence between the processes of Stacy and Brown and Appellants’ process for making the monovinylarene-conjugated diene block copolymer to shift to Appellants the burden of demonstrating that the prior art copolymers do not necessarily or inherently possess the claimed properties. Appellants have not proffered any convincing evidence that satisfies their burden. A principal argument advanced by Appellants is that Stacy and Brown use different amounts of randomizers than the amount used by Appellants, and, therefore, the copolymers of Stacy and Brown do not necessarily possess the claimed properties. However, Appellants have not refuted the Examiner’s finding that the present Specification teaches that the randomizer may be a mixture of randomizers (page 8, line 28), and that the randomizers THF and KTA may be used in amounts disclosed by Stacy and Brown. Regarding separately argued claims 26-28, Appellants maintain that “nothing in Stacy appears to disclose mixed tapered blocks” (Prin. Br. 28, Appeal 2011-003594 Application 11/609,159 6 penultimate paragraph). However, as acknowledged in Appellants’ Reply Brief, Stacy discloses tapered blocks at column 6, lines 20 et seq. Regarding separately agued claims 29-33 and 40 which require the addition of two coupling agents, we agree with the Examiner that it would have been obvious for one of ordinary skill in the art to use either one or two charges of coupling agent in the same amounts. As pointed out by the Examiner, claims 29-32 define a copolymer and Appellants have not demonstrated any difference in the copolymer resulting from using two additions of a coupling agent. We will also sustain the Examiner’s §103 rejections of claims 5 and 56 over Stacy and claims 8-25 and 40 over Keane in view of Stacy for the reasons set forth by the Examiner. Appellants have not rebutted the Examiner’s position that it would have been obvious for one of ordinary skill in the art to use the copolymer of Stacy in the film of Keane in order to prepare a film having a lower Tg and more ready heat shrink processability (see Stacy, col. 1, lines 65-67). As a final point, we note that Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner is affirmed. Appeal 2011-003594 Application 11/609,159 7 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 cam