Ex Parte Ellul et al

Patent Trial and Appeal Board

Mar 15, 2018

12597515 (P.T.A.B. Mar. 15, 2018)

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.
12/597,515 10/26/2009 Maria Dolores Ellul 2007EM118/2 1784
23455 7590 03/19/2018
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
chem.law.prosecution@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA DOLORES ELLUL, HARI PRASAD NADELLA,
and OSCAR OANSUK CHUNG
Appeal 2016-004604
Application 12/597,515
Technology Center 1700
Before KAREN M. HASTINGS, DEBRA L. DENNETT, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of a decision
of the Primary Examiner to reject claims 1-3, 6, 8-16, 18-20, 22, and 23
under 35 U.S.C. § 103(a) over at least the combined prior art of Ellul,2
Paganelli,3 4 5and Shaw.4,5
1 The real party in interest is stated to be ExxonMobil Chemical Patents Inc.
(Appeal Br. 3).
2 US 2003/0125454 A1 (July 3, 2003).
3 US 5,384,366 (Jan. 24, 1995).
4 US 2006/0084762 A1 (Apr. 20, 2006).
5 The Examiner applies additional prior art to dependent claims 9, 22, and 23
(Final Action 6 and 7). Appellants do not argue these rejections separately
(Appeal Br. 6 nn.2a, 2b).
Appeal 2016-004604
Application 12/597,515
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key disputed limitation):
1. A method for preparing a thermoplastic vulcanizate, the
method comprising:
i. introducing an elastomer and a thermoplastic resin to a
reaction extruder, where the elastomer is not prepared by
gas-phase polymerization methods, and where the
elastomer includes a polyolefin copolymer rubber having
a weight average molecular weight of less than 850,000
g/mole and a number average molecular weight of less
than 300,000 g/mole, and where the elastomer contains
less than 25 parts by weight of oil extension;
ii. introducing a curative to the extruder after said step (i) of
introducing the elastomer and the thermoplastic resin;
iii. introducing an upstream oil to the extruder after said step
(i) of introducing an elastomer but before or together
with said step (ii) of introducing a curative, where the
total oil introduced to the extruder in this step (iii) is
greater than 8 parts by weight per 100 parts by weight
elastomer, and wherein the total amount of the upstream
oil and the oil from any extension oil is greater than 50
parts by weight per 100 parts by weight elastomer;
iv. introducing a downstream oil to the extruder after said
step (ii) of introducing a curative,
wherein the ratio of said upstream oil to said downstream oil is
greater than or equal to 1:1 and less than or equal to 2.25:1;
and
wherein the thermoplastic vulcanizate is substantially devoid of
ester plasticizers.
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Application 12/597,515
Independent claim 11 is similar to claim 1, but recites “the ratio of
said upstream oil to said downstream oil is greater than or equal to 1.25:1
and less than or equal to 2.25:1” (Claims Appendix Appeal Br. 23).
Appellants argue the claims as a group, and do not argue any of the
claims separately from one another (Appeal Br. 7-18). Accordingly, we
select claim 1 as representative.
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejections under
35 U.S.C. § 103(a) for the reasons set forth in the Final Office Action, the
Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(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) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”).
Appellants’ arguments are directed to the lack of any explicit
disclosure in the applied prior art to choose the claimed introduction of
upstream and downstream oil amongst three possibilities (see Appeal Br. 10
(stating only possibility (2) “meets the requirement” of claims 1 and 11))
and a lack of guidance to choose the claimed ratios of upstream oil to
downstream oil (Appeal Br. 11-15; Reply Br. 2^4). Appellants further
argue that even if a prima facie case of obviousness has been established, the
Specification examples have demonstrated unexpected results sufficient to
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Application 12/597,515
rebut any such obviousness determination (Appeal Br. 16-17; Reply Br. 3-
4).
These arguments are not persuasive. It is noted that the claims recite
an open-ended process, “comprising” and thus do not preclude, for example,
additional amounts of oil both before and after the introduction of curative
and oil (possibility (3) as discussed by Appellants at Appeal Br. 10). In any
event, a preponderance of the evidence supports the Examiner’s
determination that one of ordinary skill in the art would have found it
obvious to use oil in Ellul/Paganelli process both with the curative and after
(e.g., Ans. 4 (discussing Paganelli’s benefits of adding oil with a curative
and Shaw’s teaching that oil may be “typically added during manufacturing
of TPV [thermoplastic vulcanizates] before and/or after curing the rubber”
(Shaw ^ 23); see also Ans. 6)). The applied prior art amply demonstrates
that the amount of oil used is a result-effective variable (e.g., Ellul 41, 51
(discussing that amounts of oil used depends upon the properties desired for
the rubber)). A “recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Thus, as de facto indicated by the Examiner, one of ordinary skill in
the art would have appreciated that the amount of oil added in each location
is a result-effective variable in a rubber vulcanization process (e.g., Ans. 3).
Moreover, it is well settled that it would have been obvious for an artisan
with ordinary skill to develop workable or even optimum ranges for result-
effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range, the applicant
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Application 12/597,515
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results). Thus, the use of the recited
ratios of upstream to downstream oil (claims 1 and 11) is deemed within the
level of ordinary skill in the art. Appellants have not shown error in the
Examiner’s determination that one of ordinary skill in the art, using no more
than ordinary creativity, would have determined appropriate amounts of oil
to be used in each of the claimed process locations such that the claimed
ratios encompass the applied prior art suggestions for amounts of oil to be
used.6
To the extent that the Appellants are arguing unexpected results, the
Appellants have not provided the required side-by-side comparison of the
claimed invention with the closest prior art which is commensurate in scope
with the claims, and explained why the results would have been unexpected
by one of ordinary skill in the art. The burden of showing unexpected
results rests on the person who asserts them by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Baxter Travenol Labs., 952 F.2d 388, 392
6 The claimed ratios were not explicitly disclosed in the Specification;
rather, Appellants rely upon the amounts disclosed in paragraphs 69 and 71
in order to carve out the claimed ratios (Appeal Br. 4; Appellants’ response
submitted April 9, 2013). However, other ratios may be derived from the
amounts disclosed in these paragraphs. Accordingly, in any further
prosecution of this application, the question of whether Appellants were in
possession of the claimed ratios should be considered. See Purdue Pharma
L.P. v. Faulding Inc., 230 F.3d 1320, 1328 (Fed. Cir. 2000) (“[T]he
specification does not clearly disclose to the skilled artisan that the inventors
. . . considered the . . . ratio to be part of their invention .... There is
therefore no force to Purdue’s argument that the written description
requirement was satisfied because the disclosure revealed a broad invention
from which the [later-filed] claims carved out a patentable portion.”).
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Application 12/597,515
(Fed. Cir. 1991); In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972). Further,
a showing of unexpected result supported by factual evidence must be
reasonably commensurate in scope with the degree of protection sought by
the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In
re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
The Examiner’s determination that the alleged unexpected results in
Table 3b of the Specification have not been compared to the closest prior art
of Ellul is reasonable, since the compositions differ (Ans. 9; Appeal Br. 17).
The alleged unexpected results are also not commensurate with the claimed
invention, since, for example only, there are no examples at the claimed 1:1
ratio. The evidence must show that the unexpected results extend
throughout the claimed subject matter but do not extend into the prior art
teachings that fall outside of the claimed subject matter, i.e., that the claimed
ranges are critical for obtaining the unexpected result. See, e.g., In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”); In
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
‘it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.”’ (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971))); and/n re
Hill, 284 F.2d 955, 958-59 (CCPA 1960) (To establish unexpected results
over a claimed range, an applicant should compare a sufficient number of
tests both inside and outside the claimed range to show the criticality of the
claimed range.).
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Appellants’ mere conclusion that there is a trend does not make it so,
considering that each example relied upon in Table 3b (i.e., those “bolded
and shaded” Examples 11, 14, 17) uses a ratio of 2.14:1 (Appeal Br. 17
(94.4/44 equals 2.14)). Indeed, as Appellants discuss, Example 12 (likewise
also Example 18) has comparable cross linking to the inventive examples
identified but has a ratio outside the claimed ratios (Appeal Br. 16 n.7).
Furthermore, Example 10 with a ratio of 0.73:1 has a degree of crosslinking
that appears roughly the same as Examples 11, 13, 14(100 versus 98 or 99).
In light of these circumstances, there is no persuasive showing of
unexpected results demonstrated for the claimed ratios.
Accordingly, all of the Examiner’s § 103 rejections on appeal are
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
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