Ex Parte Doux et al

Patent Trial and Appeal Board

Aug 25, 2017

13376548 (P.T.A.B. Aug. 25, 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.
13/376,548 12/06/2011 Marjolaine Doux 706.1007 8632
23280 7590 08/29/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARJOLAINE DOUX and DIDIER VERCHERE
Appeal 2016-006658
Application 13/376,548
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006658
Application 13/376,548
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
15, 17, and 18.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE CLAIMED SUBJECT MATTER
The claims are directed to a composite metal and polymer part used
for motor vehicles. Spec. 1. Claim 1 is independent. App. Br., Claims
App’x A, 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A composite part, comprising a sheet of steel
coated with a polymeric film formed
beforehand by extrusion of a polymeric blend
comprising:
(a) a polymer formed from a dispersion of
elastomer nodules in a polypropylene
matrix, wherein a proportion of elastomer in
the matrix is less than 20% by weight of a
combination formed by the matrix and the
elastomer;
(b) a first antioxidant from the family of
phenolic antioxidants in a content by weight
of greater than or equal to 0.2%;
(c) a second antioxidant from the family of
hydroperoxide-decomposing antioxidants
in a content by weight of greater than or
equal to 0.1%; and
(d) a reinforcing filler in a content by weight of
less than 10%.
1 The Examiner’s rejections of claim 16 under 35 U.S.C. § 112(b) and of
claims 19 and 20 under 35 U.S.C. § 103(a) were withdrawn. Ans. 8.
Accordingly, claims 16, 19, and 20 are not before us for review.
2
Appeal 2016-006658
Application 13/376,548
REFERENCES
Bacskai
Takano
Doufas
US 3,582,427
US 5,837,360
US 8,217,116 B2
EP 1249471 A1
WO 2005/123822 A1
June 1, 1971
Nov. 17, 1998
July 10, 2012
Oct. 16, 2002
Dec. 29, 2005
Sumitimo
Widjanta
REJECTIONS
Claims 1—3, 5—9, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Takano, Sumitimo, and Widjanta. Final Act. 3.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Takano, Sumitimo, Widjanta, and Doufas. Id. at 5.
Claims 1—3, 5—8, 10-12, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bacskai, Sumitimo, and Widjanta. Id. at 6.
Claims 15, 17, and 18 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Id. at 8.
For claim 1, the Examiner relies on Takano to teach a composite part
comprising a sheet of steel coated with a polypropylene film, but
acknowledges that Takano does not teach, “the polypropylene film should
comprise components (a)-(d).” Final Act. 3. The Examiner relies on
Sumitimo and Widjanta to teach these limitations. Id. at 3^4. In particular,
the Examiner relies on Widjanta to teach the claimed components (b) and (c)
and that their relative amount “in the composition is preferably 9:1 to 1:9.”
Id. at 4 (citing Widjanta, 5). Widjanta does not teach the claimed weight
ANALYSIS
Claims 1—3, 5—9, and 13—Unpatentable over
Takano, Sumitimo, and Widjanta
3
Appeal 2016-006658
Application 13/376,548
percentage amounts of the first and second antioxidants as recited;2 however,
the Examiner finds that it would have been obvious to one of ordinary skill
in the art to optimize these amounts “in order to obtain the desired level of
anti-oxidant effects.” Id. at 5; see also Ans. 11—12.
Appellants respond that the combined references do not “teach or
suggest a polymeric film comprising two different antioxidants in the
amounts recited in instant claim 1.” App. Br. 8 (emphasis omitted).
According to Appellants, the claimed antioxidant quantities are optimized to
create a polymeric film that withstands electrocoating, and since none of the
references teaches electrocoating, they cannot “provide a reason for the
skilled person to optimize the amounts of the antioxidants disclosed therein
to the instantly claimed amounts and such that the resulting composition can
withstand electrocoating.” Id. at 8—9.
The Examiner is correct that “[w]here 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.” Ans. 12; In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955)). However, this rule “is limited to
cases in which the optimized variable is a ‘result-effective variable.’”
Applied Materials, 692 F.3d at 1295 (citing In re Antonie, 559 F.2d 618, 620
(CCPA 1977)). Therefore, the Examiner must first establish that the
quantities of the first and second antioxidants are result-effective variables,
thus rendering their optimization within the grasp of one of ordinary skill in
the art. Because the Examiner has not done so, we do not sustain the
2 The Examiner does not appear to contend that the relative amounts that
Widjanta teaches corresponds to the claimed weight percentages in claim 1.
4
Appeal 2016-006658
Application 13/376,548
rejection of claim 1, as well as dependent claims 2, 3, 5—9, and 13 as
unpatentable over Takano, Sumitimo, and Widjanta.
Claim 4—Unpatentable over Takano, Sumitimo, Widjanta, and Doufas
Claim 4 depends from claim 1 and additionally recites, “the
reinforcing filler (d) is microtalc.” App. Br., Claims App’x A, 1. This
rejection relies on the Examiner’s finding that it was within ordinary skill to
optimize the weight percentages of the antioxidants disclosed in Widjanta.
But, as discussed above, the Examiner has not asserted or established that
these amounts are result-effective variables. Therefore, we do not sustain
the Examiner’s rejection of claim 4 as unpatentable over Takano, Sumitimo,
Widjanta, and Doufas.
Claims 1—3, 5 8, 10—12, and 14—Unpatentable over
Bacskai, Sumitimo, and Widjanta
As with the previous rejections, the Examiner relies on Widjanta to
teach the claimed antioxidants, and finds that it would have been within
ordinary skill to optimize their quantities. However, as discussed above, the
Examiner has not asserted or established that these amounts are result-
effective variables. Therefore, we do not sustain the Examiner’s rejection of
claims 1—3, 5—8, 10-12, and 14 as unpatentable over Bacskai, Sumitimo, and
Widjanta.
Claims 15, 17, and 18—Indefinite
Claim 15
Claim 15 recited the “composite part of claim 1, wherein the polymer
is adapted to withstand a cathodic electrocoating at a temperature of between
150°C and 210°C for about 30 minutes without a delamination between the
sheet of steel and the polymeric film.” App. Br., Claims App’x A, 3. The
5
Appeal 2016-006658
Application 13/376,548
Examiner asserts that it is “unclear how the skilled artisan would go about
determining whether the polymer ‘is adapted to withstand’ the claimed
conditions.” Final Act. 8; Ans. 7. Appellants counter that a person of
ordinary skill in the art would be able to make this determination. App. Br.
17-18.
We agree with Appellants. The claim itself provides a very specific
test: exposing a composite part comprising a sheet of steel laminated with
polymeric film to cathodic electrocoating at a temperature of between 150°C
and 210°C for about 30 minutes, then check for delamination between the
steel and polymeric film. The presence or absence of delamination
determines whether the polymeric film “withstands” the test, and thus
whether the composite part is within the scope of claim 15. We do not
sustain this rejection.
Claims 17 and 18
In response to the Examiner’s rejection of claims 17 and 18 as
indefinite, Appellants state that these claims “are hereby canceled without
prejudice.” App. Br. 18. The Examiner responds “said claims are pending”
and Appellants “ha[ve] not presented arguments with regards to claims 17
and 18.” Ans. 17. We agree. We have not found in the prosecution history
any entered claim amendment that cancels claims 17 and 18. See MPEP
§ 1215.03 (9th ed., Rev. 7, Nov. 2015) (“If an appellant wishes to remove
claims from consideration on appeal, the appellant must submit an
amendment to cancel the claims from the application.”). Therefore, because
Appellants have not presented any argument pertaining to the Examiner’s
rejection of claims 17 and 18 as indefinite, we summarily sustain the
6
Appeal 2016-006658
Application 13/376,548
rejection. See id. § 1205.02 (“[T]he Board may summarily sustain any
grounds of rejections not argued.”).
DECISION
For the above reasons, (1) the Examiner’s rejections of claims 1—14
under 35 U.S.C. § 103(a) are reversed; (2) the Examiner’s rejection of claim
15 under 35 U.S.C. § 112, second paragraph, is reversed; and (3) the
Examiner’s rejection of claims 17 and 18 under 35 U.S.C. § 112, second
paragraph, 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)(l)(iv).
AFFIRMED-IN-PART
7