Ex Parte Giza et al

Patent Trial and Appeal Board

Jan 31, 2017

14437215 (P.T.A.B. Jan. 31, 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.
14/437,215 04/21/2015 Kendra M. Giza 73881-WO-US 4779
109 7590 02/02/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENDRA M. GIZA, MARK A. BARGER, RICHARD T. FOX,
SUZANNE M. GUERRA, and BRIAN W. WALTHER
Appeal 2017-000442
Application 14/427,215
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and AVELYN M. ROSS,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—11. We have jurisdiction pursuant to
35 U.S.C. §6.
Appellants’ claimed invention is directed to a styrenic polymer foam
and a process of preparing the foam.
Claim 1 is illustrative and reproduced below:
1. A styrenic polymer foam comprising a polymer composition that
is in a form of a continuous matrix defining multiple cells therein, the
polymer composition comprising a first polymer and a second polymer, the
first polymer being a maleic anhydride grafted high density polyethylene
and the second polymer being a styrenic polymer resin that is free of grafted
maleic anhydride, wherein the first polymer contains on average 0.05 or
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Application 14/437,215
more weight-parts grafted maleic anhydride based on total weight of the first
polymer and wherein the concentration of first polymer in the polymer
composition is sufficient to provide at least six weight-parts of grafted
maleic anhydride per million weight parts of the polymer composition.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
The Examiner maintains the following grounds of rejection:
Claims 1—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zucchelli (Italmach Chemical) in view of Sano or Taber.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zucchelli in view of Sano or Taber, and Patel.
After review of the opposing positions articulated by Appellants and
the Examiner and the evidence of obviousness adduced by the Examiner and
the countervailing evidence marshalled by Appellants, we determine that the
Appellants’ arguments and evidence are insufficient to show reversible error
in the Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for
substantially the findings of fact and the reasons set forth by the Examiner in
the Examiner’s Answer, the Final Office Action, and the Non-final Office
Action (December 24, 2015). We offer the following for emphasis.
Sano
Tabor
Patel
US 4,433,073
US 4,684,576
US 2007/0299152 A1
WO 2012/168746 A1
Feb. 21, 1984
Aug. 4, 1987
Dec. 27, 2007
Dec. 13,2012Zucchelli
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Concerning the Examiner’s rejection of claims 1—10 under 35 U.S.C.
§ 103(a) as being unpatentable over Zucchelli in view of Sano or Taber,
Appellants argue the rejected claims together as a group. Accordingly, we
select claim 1 as the representative claim on which we decide this appeal as
to this ground of rejection.
Appellants argue that: (1) Sano and Taber represent non-analogous
art, (2) the Examiner’s rejection is premised on impermissible hindsight and
a purported lack of sufficient motivation for one of ordinary skill in the art to
select a polymer corresponding to the polymer comprising maleic anhydride
grafted high density polyethylene (MAH-g-HDPE) of representative claim 1
as a constituent of the styrene-containing foam of Zucchelli in a manner to
suggest a polymeric foam formulation satisfying all the limitations of
representative claim 1 based on the applied prior art teachings, and (3)
Appellants present evidence that is contended to show surprising results for
the claimed foam formulation, which evidence is argued to be commensurate
in scope with the claimed subject matter and of such character as to
outweigh the proffered evidence of obviousness applied by the Examiner
(App. Br. 7—14; Reply Br. 2—6).
Contrary to Appellants’ argument, Appellants’ contentions do not
establish that Sano and/or Tabor represents non-pertinent prior art (Ans. 3).
The two separate tests for determining whether a prior art reference is
analogous are as follows: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed; and (2) if the reference is not
within the inventor’s endeavor, whether the reference is reasonably pertinent
to the particular problem with which the inventor is involved. In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004).
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Here, the Examiner is relying on Sano and Taber to evince the
existence of maleic anhydride grafted high density polyethylene polymers as
an available material within the scope of the polyethylene grafted with
maleic anhydride that is described by Zucchelli as being useful for
increasing cell size of the polystyrene- containing foam of Zucchelli (Ans.
3^4; Non-final Office Act. 3^4; Zucchelli, p. 10,11. 15—30). Appellants have
not persuasively articulated why Sano and Taber are not pertinent references
to one of ordinary skill in the art to evidence a known available type of
maleic anhydride grafted polyethylene.
As our reviewing court has indicated, labeling a reference as
analogous art “merely connotes that it is relevant to a consideration of
obviousness under § 103 as ‘prior art.’” In re Sovish, 769 F.2d 738, 742
(Fed. Cir. 1985). Contrariwise, considering a reference as non-analogous art
is a determination that removes it as prior art to be considered; that is, it is
construed as being non-relevant evidence for consideration of the
obviousness question mandated by statute.
Thus, Appellants’ arguments fail to establish that Sano and Taber are
non-relevant evidence for establishing that high density polyethylene grafted
with maleic anhydride is a known type of maleic anhydride grafted
polyethylene that is available to one of ordinary skill in the art.
Nor have Appellants established that Zucchelli would have excluded
MAH-g-HDPE as a known and workable choice for the maleic anhydride
grafted polyethylene taught to be useful as a cell size increasing agent for the
styrene foam of Zucchelli (p. 10,11. 15—26). In this regard, Appellants have
not shown that one of ordinary skill in the art would have failed to recognize
high density polyethylene as one of a few available sources of polyethylene,
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categorized by density, which high density polyethylene is known to be
available grafted with maleic anhydride as determined by the Examiner
(Ans. 3). As such, we concur with the Examiner that it would have been
prima facie obvious for one of ordinary skill in the art to select high density
polyethylene grafted with maleic anhydride as the maleic anhydride grafted
polyethylene taught by Zucchelli as a cell size enlarging polar polymer
based on the applied references’ teachings (Ans. 3—6).
Moreover, Appellants have not persuasively articulated why one of
ordinary skill in the art would not have been led to employ a workable
amount of maleic anhydride grafting of the polyethylene, including grafting
amounts within the claimed range of 0.05 or more parts by weight of grafted
maleic anhydride based on the weight of the polymer to be grafted and such
that at least six parts by weight of grafted polymer per million parts by
weight of polymer composition is employed in the styrene-containing
polymer based on the teachings/suggestions of Zucchelli to add such cell
size increasing polar polymer materials in amounts for increasing cell size
for reasons as set forth by the Examiner (Ans. 6—8; Non-final Act. 3—4).
After all, one of ordinary skill in the art has some skill and would have
readily recognized that selecting workable/ amounts of the grafted polymer
for increasing cell size would have reasonably led to selecting amounts of
the grafted polymer that overlap or fall within with the claimed ranges. As
pointed out by the Examiner, representative claim 1 provides for a relatively
low minimum amount of the grafted polymer and one of ordinary skill in the
art would have arrived at employing workable amounts of grafted polymer
meeting the low minimum amount required by representative claim 1 (Ans.
7).
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Consequently, Appellants’ assertions as to the Examiner’s
obviousness position lacking the requisite motivation and being grounded on
impermissible hindsight is not substantiated by the record before us and,
consequently, the argument lacks merit.
As for Appellants’ proffered evidence of unexpected results, it is
well settled that it is Appellants’ burden of production to present evidence
that establishes that the reported tests results for the claimed subject matter
are unexpected, that the comparisons are with the closest prior art, and that
the showing is commensurate in scope with the claimed subject matter. See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Here, Appellants have not established that the evidence supplied in
the Declaration under 37 C.F.R. § 1.132 by Dr. Richard Fox, a named co­
inventor, and in the subject Specification presents data that is of a sufficient
quantity and character to meet the above-noted production standard of
furnishing evidence showing test results for the claimed invention that are
truly unexpected and that is reasonably co-extensive in scope with
representative claim 1 when compared with results for the closest prior art,
as determined by the Examiner (Final Office Action 6—7; Ans. 6—11).
In this regard, the relied upon test results from the Declaration under
37 C.F.R. § 1.132 by Dr. Fox shows that an example utilizing an amount of
MAH-g-HDPE within the scope of representative claim 1 (Ex. 2(ii))
furnishes a cell size that is reported to be the same as a new comparative
Example utilizing the same amount (1.25 parts by weight) of low density
polyethylene grafted with maleic anhydride (MAH-G-FDPE) (Fox Deck, p.
3, Table 3(a)). Appellants’ argument that test results for five other examples
within the scope of claim 1 in the Declaration of Dr. Fox show that the
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grafted HDPE yielded slightly larger cell sizes (6-22% larger) than a
similarly grafted LDPE does not militate against the fact that Appellants
have not shouldered their burden to establish unexpected results
commensurate in scope with representative claim 1 as evinced by Example
2(h) of the Declaration. Appellants have not presented any logical reasoning
or evidence explaining why the latter example should be considered as a
sport (compromised example) and excluded from consideration (App. Br.
13). Nor have Appellants adequately explained how an increase in cell size
ranging from zero to 22 percent over the six Declaration examples evinces
differences in cell size that are truly unexpected.1
Moreover, Appellants have not otherwise articulated how the six
examples presented in the subject Specification together with the six
examples presented in the Declaration are adequate to show unexpected
results commensurate in scope with the breadth of representative claim 1
given that claim 1 is not limited to the particular foam formulations tested
and is open to the inclusion of a variety of other components, including other
polymers, by use of the open “comprising” transitional term.
1 We recognize that the Examiner emphasized the comparison examples in
the subject Specification, as if the other comparisons employed in the
Declaration of Dr. Fox were not supplied (Ans. 10). However, we consider
this error to be harmless as it is clear that the Examiner considered the
Declaration of Dr. Fox by discussing the same cell enlargement obtained for
one of its examples (Final Act. 6). Moreover, the Examiner correctly
determined that the evidence furnished was insufficient to be commensurate
in scope with the claims and to establish an improvement of results
associated with the claimed subject matter that is adequate to refute the
inference of prima facie obviousness presented by the evidence supplied by
the Examiner (Ans. 10-11; Final Act. 6-7).
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Based on the totality of the record, including due consideration of
Appellants’ evidence and arguments, we determine that the preponderance
of evidence weighs most heavily in favor of an obviousness determination as
to the claimed subject matter. Thus, upon consideration of the arguments
and evidence of record, we determine that the Examiner has reasonably
established that representative claim 1 is rendered obvious over the applied
prior art based on the evidence of record.
Accordingly, we affirm the first stated obviousness rejection.
Appellants rely on their arguments and evidence set forth for the base
rejection, as discussed above, for traversing the Examiner’s separate
obviousness rejection of dependent claims 11. Additionally, Appellants
contend that dependent claim 11 is limited to the use of a carbon dioxide
concentration range as a blowing agent (“less than 4.5 weight-parts per
hundred weight parts of polymer composition”) that excludes Example 2(ii)
of the subject Specification, wherein 4.5 parts by weight of carbon dioxide
per hundred weight parts of polymer composition was employed as blowing
agent (App. Br. 11—12; Spec. 9, Table 3).
However, Appellants have not established that a significantly different
cell size enlargement would result from employing an amount of carbon
dioxide that is slightly less than 4.5 parts by weight of carbon dioxide per
hundred weight parts of polymer composition as embraced by claim 11, say
4.49 parts by weight of carbon dioxide per hundred weight parts of polymer
composition employed as blowing agent, as compared to the results shown
in Table 3(a) of the Fox Declaration for both MAH-g-HDPE and MAH-G-
LDPE where 4.5 parts by weight of carbon dioxide per hundred weight parts
of polymer composition was employed.
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It follows that we shall sustain the separate obviousness rejection of
dependent claim 11 for substantially the reasons discussed above with
respect to the Examiner’s rejection of claim 1.
CONCLUSION/ORDER
The Examiner’s decision to reject claims the appealed claims 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).
AFFIRMED
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