Ex Parte Ellul et alDownload PDFPatent Trial and Appeal BoardMar 15, 201812597515 (P.T.A.B. Mar. 15, 2018) Copy Citation 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. 2 Appeal 2016-004604 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 3 Appeal 2016-004604 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 4 Appeal 2016-004604 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.”). 5 Appeal 2016-004604 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.). 6 Appeal 2016-004604 Application 12/597,515 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 7 Copy with citationCopy as parenthetical citation