Ex Parte Iacobucci et al

Patent Trial and Appeal Board

Jan 8, 2019

14648801 (P.T.A.B. Jan. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/648,801 06/01/2015 Paul Albert Iacobucci
141081 7590 01/08/2019
MCDONNELL BOEHNEN HULBERT & BERGH OFF LLP/ AkzoNobel
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
16-1060-WO-US 4795
EXAMINER
BOYLE, ROBERT C
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
01/08/2019 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 PAUL ALBERT IACOBUCCI,
WILHELM KLAAS FRIJLINK, and BART FISCHER
Appeal2018-002577
Application 14/648,801
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-14. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Akzo Nobel Chemicals International B.V.,
which, according to the Appeal Brief, is also the real party in interest.
Appeal Br. 2.
Appeal2018-002577
Application 14/648,801
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a masterbatch
comprising dimeric and/or trimeric cyclic ketone peroxide. Spec. 1 :3-5.
The masterbatch is used for modifying polymers. Id. According to the
Specification, the masterbatch is useful because the particular liquid cyclic
ketone peroxide avoids crystal formation at low temperatures. Id. 1 :20-2:5.
Such crystals are problematic because they are sensitive to exploding. Id.
Claim 1, reproduced below with formatting modified for readability, is
illustrative of the claimed subject matter:
1. A masterbatch comprising
3,6,9-triethyl-3,6,9-trimethyl-l,4,7-triperoxonane
dispersed in a polymeric matrix with a porosity, expressed as
percentage of voids on the volume of the matrix, of O .1-80
vol%,
wherein said masterbatch comprises, per 100 g of
polymeric matrix,
1-30 g 3,6,9-triethyl-3,6,9-trimethyl-l,4,7-
triperoxonane and
less than 0.20 g saturated hydrocarbons with 17-51
carbon atoms.
2 In this Decision, we refer to the Non-Final Office Action dated February 1,
2017 ("Non-Final Act."), the Final Office Action dated May 16, 2017
("Final Act."), the Appeal Brief filed October 13, 2017 ("Appeal Br."), the
Examiner's Answer dated November 15, 2017 ("Ans."), and the Reply Brief
filed January 11, 2018 ("Reply Br.").
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Application 14/648,801
Appeal Br. 7 (Claims App.). Claim 11 recites a process for preparing the
masterbatch according to claim 1.
REJECTION
On appeal, the Examiner maintains the rejection of claims 1-14 under
35 U.S.C. § 103 as unpatentable over Marzola et al., US 5,698,617, Dec. 16,
1997, ("Marzola") in view of Torenbeek et al., US 5,808,110, Sept. 15, 1998
("Torenbeek"). Non-Final Act. 3; Final Act. 2 (stating that prior rejection is
maintained).
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
Here, the Examiner finds that Marzola teaches a concentrate to be
added to polyolefins comprising an olefin polymer and free radical
generating inhibitor. Ans. 3; see also Non-Final Act. 3. The Examiner finds
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Application 14/648,801
that Marzola teaches peroxides as examples of free radical generators. Ans.
3. The Examiner further finds that Marzola does not disclose saturated
hydrocarbons with 17-51 carbon atoms and does not teach addition of a co-
crystallizing agent. Id. at 3--4.
The Examiner finds that Marzola does not expressly teach that its free
radical generators (which may be peroxides) are cyclic ketone peroxides. Id.
at 4. The Examiner finds that Torenbeek teaches a storage stable peroxide
composition comprising a cyclic ketone peroxide including peroxides having
a formula that encompasses the 3,6,9-triethyl-3,6,9-trimethyl-l,4,7-
triperoxonane recited by claim 1. Id. The Examiner determines that
[i]t would have been obvious at the time the instant invention
was made to use the peroxides of Torenbeek, including an
organic peroxide phlegmatizer, as the peroxide in the invention
of Marzola because the cyclic ketones of Torenbeek et al. are
storage stable, safe, and provide a high degree of polymerization
compared to their non-cyclic ketone peroxide counterparts (see
abstract of Torenbeek).
Id. at 4--5.
Appellant argues that the Examiner has not adequately established
that a person of ordinary skill in the art would have combined the teachings
of Marzola and Torenbeek to reach the recitations of claims 1 and 11.
Appeal Br. 3-5. With respect to the Examiner determining that Torenbeek's
peroxides would be attractive because they are "storage stable" and "safe,"
Appellant argues that a person having ordinary skill in the art at the time of
the invention would have understood that the claimed cyclic ketone
peroxides were neither storage stable nor safe at low temperatures. Appeal
Br. 3--4. Appellant provides citations to Fischer et al, WO 2004/052877,
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Application 14/648,801
June 24, 2004 ("Fischer") and to Akzo Nobel, Safety Alert Storage
Temperature of Trigonox 301 to support this point. Id.
The Examiner does not squarely dispute the factual merit of
Appellant's argument. Ans. 6-7. Rather, the Examiner argues that low
temperatures are not required by the claim or the prior art. Id. Appellant,
however, persuasively explains that ensuring relatively warm temperatures
for the entire manufacture and use chain of the cyclic ketones (i.e., to
prevent them from exploding) presents a "burden that would have dissuaded
the ordinary artisan from combining Marzola and Torenbeek." Reply Br. 2.
With respect to the Examiner's determination that Torenbeek's
peroxides would be attractive because they provide a high degree of
polymerization, Appellant argues that Marzola seeks to avoid degradation
and cross-linking but Torenbeek's cyclic ketone is particularly useful to
promote degradation and cross-linking. Appeal Br. 4--5. In particular,
Marzola states, for example, a goal of "reducing the secondary degradation,
branching and/or cross-linking reactions in the polymer matrix." Marzola
3 :62---66. Torenbeek states, on the other hand, that its formulation is useful
for "cross-linking, degradation or other types of modification of
(co)polymers." Torenbeek 7:5-8.
The Examiner responds by emphasizing that Marzola states that the
invention may be used in conjunction with "[ a ]ny free radical generating
initiator that is not active at temperatures [l]ower than or equal to 70Q C."
Ans. 8 (quoting Marzola 5:4--15). The Examiner also emphasizes that
Torenbeek teaches its peroxides may be useful for "other types of
modification" rather than only cross-linking and degradation. Ans. 9.
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On the whole, the preponderance of the evidence supports Appellant's
position. The evidence supports that a person of skill in the art at the time of
the invention would have believed that introducing Torenbeek's peroxide
into Marzola's system would have created a risk of crystal formation and
explosion if the peroxide was brought to a low temperature. While the risk
could be avoided by keeping the peroxide warm, Appellant persuasively
argues that requiring such precautions burdens the product by creating a
hazard that would be better to eliminate entirely. Reply Br. 2. A person of
skill in the art reading Torenbeek as a whole also would have also
understood that Torenbeek's peroxides, while perhaps useful for polymer
modification generally, were likely to cause the degradation or cross-linking
that Marzola seeks to avoid. Although the Examiner maintains that
Marzola's processing avoids degradation and cross-linking (Ans. 8), it is not
certain whether or not this would be true if Torenbeek's specific peroxides
were used in the Marzola process (Reply Br. 3--4). Given this factual
background, it is unclear whether using Torenbeek's peroxides in Marzola's
process would provide any advantages that would outweigh its
disadvantages (i.e., risk of explosion). We thus agree with Appellant that
the Examiner has not adequately shown that a person of skill in the art
would have combined the references in the manner proposed by the
Examiner.
Because the Examiner's rejection of each claim at issue relies on the
Marzola/Torenbeek combination addressed above, we do not sustain the
Examiner's rejection of any claim.
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DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-14.
REVERSED
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