Ex Parte Inamdar

Patent Trial and Appeal Board

Aug 4, 2017

13612083 (P.T.A.B. Aug. 4, 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.
13/612,083 09/12/2012 Kapil Inamdar 092474.022160 3354
52674 7590 08/08/2017
Raker & Hostetler T T P
EXAMINER
1170 Peachtree Street NE HEINCER, LIAM J
Suite 2400
Atlanta, GA 30309-7676 ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAPIL INAMDAR
Appeal 2016-007390
Application 13/612,0831
Technology Center 1700
Before DONNA M. PRAISS, JEFFREY R. SNAY, and
SHELDON M. McGEE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3, 4, 6, 7, 10, 14, and 19-28 as obvious under 35
U.S.C. § 103(a) over each of Sutton3 or van Riel.4 App. Br. 5.
1 SABIC Global Technologies B.V. is identified as the real party in interest.
App. Br. 1.
2 In this Opinion, we refer to the Specification filed Sept. 12, 2012 (“Spec.”),
the Final Office Action dated Oct. 8, 2015 (“Final Act.”), the Appeal Brief
filed Jan. 29, 2016 (“App. Br.”), the Examiner’s Answer dated June 20,
2016 (“Ans.”), and the Reply Brief filed July 26, 2016 (“Reply Br.”).
3 Sutton et al., US 2006/0049541 Al, pub. Mar. 9, 2006 (“Sutton”).
4 van Riel et al., US 2009/0105404 Al, pub. Apr. 23, 2009 (“van Riel”).
Appeal 2016-007390
Application 13/612,083
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to “fiber reinforced thermoplastic polymer
compositions having rigidity and improved impact resistance.” Spec. 11.
Claim 1 is illustrative:
1. A fiber reinforced thermoplastic composition, comprising:
a) about 20 to about 30 weight percent of a
polypropylene polymer component;
b) about 20 weight percent of a low melt flow
elastomer component having a melt flow index (MFI) less than
about 10 g/10 minutes as measured at a temperature of 190°C
and under 2.16 kg of load, wherein the low melt flow elastomer
component is an ethylene-butene elastomer or an ethylene-
octene elastomer; and
c) about 50 weight percent of a long glass fiber
reinforcement component;
wherein the composition exhibits at least about a 25%
greater notched izod impact strength than that of a reference
composition comprising the polypropylene polymer component
and the glass fiber reinforcement component in the absence of
the low melt flow elastomer; and
wherein the composition exhibits at least about a 5%
greater multi axial impact strength than that of a reference
composition comprising the polypropylene polymer component
and the glass fiber reinforcement component in the absence of
the low melt flow elastomer.
App. Br. 18 (Claims Appendix).
OPINION
The Examiner finds that claims 1, 3, 4, 6, 7, 10, 14, and 19-28 would
have been obvious to one of ordinary skill in the art at the time of the
invention over each of Sutton and van Riel for the reasons stated on pages
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2—5 of the Final Office Action. We address below each claim argued
separately by Appellant. See 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness over Sutton
Regarding independent claim 1, Appellant essentially argues that the
Examiner erred in rejecting the claims over Sutton because Sutton broadly
discloses polymers and ranges for the components of its fiber reinforced
thermoplastic composition and the Examiner failed to articulate “why a
skilled person would have been motivated to make all the necessary
selections to arrive at the claimed sub-genus.” App. Br. 5. Specifically,
Appellant argues that because Sutton discloses thermoplastic polymers,
including polypropylene, employed in multiple preferred amounts, the
Examiner has not established why a skilled artisan would have selected
about 20 to about 30 weight percent of a polypropylene polymer as required
by claim 1. Id. at 5—6. Similarly, Appellant contends that Sutton’s broad
description of amounts of various elastomers does not inform a skilled
artisan of “about 20 weight percent of a low melt flow elastomer
component” as recited by claim 1. Id. ail. Appellant also argues that the
claimed amount of glass fibers recited in claim 1 (“about 50 weight percent
of a long glass fiber reinforcement component”) is not disclosed by Sutton,
but, rather, Sutton recites various preferred ranges. Id. at 9. Appellant
further argues that the claimed improved notched izod impact strength and
multi axial impact strength are neither suggested by Sutton (id. at 10-11) nor
inherent in Sutton’s disclosure because the Examiner’s rejection “is
premised upon a hypothetical composition” (id. at 11—13).
Regarding the dependent claims, Appellant contends that Sutton’s
disclosure of homopolymers and copolymers of “numerous thermoplastic
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polymers” fails to suggest polypropylene homopolymers and polypropylene
copolymers as required by claims 3 and 4, respectively. Id. at 6—7.
Appellant further contends that Sutton fails to specifically disclose ethylene-
butene or ethylene-octene elastomers should be combined with the claimed
polypropylene polymers and long glass fibers in the claimed amounts as
required by claims 6 (reciting “ethylene-butene elastomer”), 7 (reciting
“ethylene-octene elastomer”), and 10 (reciting “a melt flow index (MFI)
about 5 g/10 minutes as measured at a temperature of 190°C and under 2.16
kg of load.”). Id. at 7—9.
The Examiner responds that Appellant’s Specification teaches
similarly broad ranges for the thermoplastic polymer (10 to 90 weight
percent), the elastomer component (0 to 30 weight percent), and the fiber
reinforcement component (0 to 70 weight percent) as those discussed in
Sutton and that Appellant has not provided any evidence to establish the
criticality of the claimed range. Ans. 7—9 (citing Spec. H 31, 33, 34).
Regarding the dependent claims, the Examiner finds that Sutton teaches that
the polymer is preferably a polypropylene homopolymer or polypropylene
copolymer (id. at 7, citing Sutton 147) and that the preferred elastomer is
ethylene butene or ethylene octene and has a melt flow of 5 g/10 min in the
example (id. at 8, citing Sutton || 55, 68). The Examiner further finds that
“the reference teaches all of the claimed ingredients, claimed amounts, and
substantially similar process of making” and that the Specification indicates
that the improved properties result from the inclusion of the low melt flow
elastomer. Id. at 9—10. The Examiner also responds that, although Sutton
does not measure the specific properties claimed in comparison to the
claimed reference composition, Sutton teaches that “the purpose of adding
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the low melt flow elastomers of their invention is to increase the impact
resistance of the composition” and “that the impact properties claimed
should be improved by the addition of the elastomer component to the
reference.” Id. at 10 (citing Sutton 17). The Examiner concludes that
Appellant has not rebutted the evidence of obviousness because no showing
has been made comparing the claimed composition to the closest prior art.
Id. at 12.
In the Reply Brief, Appellant argues that the claimed properties
attributed to the elastomer component in the composition have not been
shown to be inherently present in Sutton’s composition. Reply Br. 1.
Appellant also argues that “the claimed compositions are novel and the
applied art, at best, only suggests a hypothetical composition. Hypothetical
compositions can only have expected properties.” Id. at 2. Appellant further
argues that “[hypothetical compositions do not possess properties, inherent
or otherwise.” Id. at 3. According to Appellant, comparing its claimed
composition to the closest prior art that suggests the composition “would be
requiring comparison of the results of the invention with the results of the
invention.” Id. (quoting In re Chapman, 357 F.2d 418, 422 (CCPA 1966)).
We are not persuaded by Appellant’s arguments for the reasons stated
by the Examiner in the Final Office Action and Answer. We add the
following primarily for emphasis.
The problem with Appellant’s argument is that Sutton teaches
multiple fiber-reinforced thermoplastic polymer compositions, not
hypothetical compositions. In a determination of obviousness, a reference
may be relied upon for all that it would have reasonably suggested to one
having ordinary skill in the art. Merck & Co., Inc. v. Biocraft Labs., Inc.,
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874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious”). The Examiner’s rejection here is not based on
picking and choosing among different references to the polypropylene
polymer, the low melt flow elastomer, the long glass fiber, and their
respective amounts to arrive at Appellant’s claimed composition. Such a
rejection would necessitate a reason for making modifications to a prior art
disclosure. Instead, the Examiner’s rejection is based on the teachings of
just one reference, Sutton, and the Examiner’s findings are supported by the
record.
Following the directions provided in Sutton for making the three-
component fiber-reinforced thermoplastic polymer composition (Sutton
111), polypropylene is disclosed as the polymer, including a homopolymer
or a copolymer {id. 146), an ethylene polymer comprising ethylene-octene
and ethylene-1-butene are disclosed as the elastomer {id. ]ff[ 16, 55), and
glass fiber is disclosed as the reinforcing fiber {id. 116). Final Act. 2.
Sutton also discloses that the ethylene elastomeric polymer has a melt flow
rate of 5 g/lOmin at 190°C and an applied load of 2.16 kg (Sutton | 68).
Final Act. 2. Sutton further teaches: (1) the amount of the polymer is “at
least 20 parts by weight” which overlaps the claimed range of about 20 to
about 30 weight percent of the polymer (Sutton | 53), (2) the amount of the
elastomer is “most preferably less than or equal to 20 parts by weight” which
overlaps the claimed amount of about 20 weight percent of the elastomer {id.
1 57), and (3) the amount of the fiber is “most preferably equal to or greater
than 25 parts by weight. . . [and] preferably equal to or less than 60 parts by
weight” which overlaps the claimed amount of about 50 weight percent of
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the glass fiber (id. 143). Final Act. 2. It is not necessary that Sutton
disclose the claimed composition as a working example as Appellant’s
arguments suggest. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation
omitted) (“a reference is not limited to the disclosure of specific working
examples.”).
To the extent that Appellant argues that the claimed amounts of the
components are critical to achieving the claimed properties of improved
impact strength, Appellant’s argument is not adequately supported by
evidence in the cited record on appeal. As the Examiner finds, Appellant’s
Specification belies such an argument because the ranges disclosed therein
are equally as broad as the ranges disclosed by Sutton. Ans. 7—9 (citing
Spec. H31, 33, 34).
In addition, Appellant does not adequately explain why the
compositions taught by Sutton would not be expected to share the same
properties as the claimed composition (App. Br. 13; Reply Br. 3). In the
absence of evidence to the contrary, the Examiner’s finding that the claimed
properties would be achieved by Sutton’s composition (Final Act. 3) is
supported by the record on appeal. The Examiner has provided the record
with a preponderance of evidence including commonalities shared by the
compositions of Sutton and the claims as well as the process in which they
are made, which justifies requiring Appellant to show that Sutton’s product
would not be expected to have the claimed properties of improved notched
izod impact strength and improved multi axial impact strength. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[T]he PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . Whether the rejection
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is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness'
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products.” (footnote omitted)).
No such proof has been provided by Appellant.
Appellant’s argument that Sutton “fails to suggest that any of the
claimed compositions would exhibit improvements in the claimed
properties” (App. Br. 11) and provides no direction as to which combination
is likely to be successful {id. at 10) is not persuasive. As discussed above,
Appellant provides no evidence to support its argument other than that
Sutton discloses multiple compositions. Appellant does not dispute the
Examiner’s finding that Sutton specifically discloses that the purpose of
adding the low melt flow elastomers of their invention is to increase the
impact resistance of the composition. Ans. 10; Sutton 17. This evidence
supports the Examiner’s finding that impact strength would have been
expected to be improved with the addition of low melt flow elastomers in
Sutton’s composition (Ans. 10). In addition, Appellant’s reliance on Leo
Pharm. Prods, v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) is factually
distinguishable. The factual background of Leo Pharma includes evidence
that “several medical research articles . . . discourag[ed] the combination of
a vitamin D analog with a corticosteroid because of the stability problems of
vitamin D analogs at lower pHs.” Id. at 1353. There was also a finding that
the cited prior art formulations were not storage stable and the problem of
storage stability was not recognized. Id. at 1354, 1357. Thus, Leo Pharma
included circumstances that are not present here. See Nike, Inc. v. Adidas
AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (the decision in Leo Pharma
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“hinged on the fact that nothing in the cited prior art appreciated the problem
the invention recognized and then solved”).
Appellant’s assertion that any comparison to the closest prior art
would impermissibly require Appellant to compare its invention against
itself (Reply Br. 3) is not persuasive. Appellant has not directed us to any
evidence in this record comparing a claimed compound to any composition
disclosed in Sutton. Moreover, the caselaw cited by Appellant is inapposite
because the prior art composition in Chapman was a combination of two
separate references, which is not the basis of the rejection here. Chapman,
357 F.2d at 422.
In sum, we affirm the Examiner’s rejection of claims 1,3,4, 6, 7, 10,
14, and 19-28 as obvious over Sutton.
Obviousness over van Riel
Appellant contends that, like Sutton, van Riel broadly discloses “a
very large number of possible distinct combinations.” App. Br. 13.
Appellant argues that van Riel lacks a disclosure of polypropylene in the
claimed range {id. at 13—14), lacks motivation to select a polypropylene
homopolymer or copolymer as required by dependent claims 3 and 4 {id. at
14), lacks motivation to select the claimed low melt flow elastomer
component {id. at 14—15), and so broadly discloses the range of amounts of
glass fibers and other components that a skilled artisan would not have been
motivated to select the claimed ranges {id. at 15—16). Appellant also argues
that the claimed physical properties are not inherent in van Riel because van
Riel fails to disclose the three claimed components in the claimed amounts.
Id. at 16—17.
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The Examiner responds that Appellant’s Specification teaches
similarly broad ranges for the thermoplastic polymer (10 to 90 weight
percent), the elastomer component (0 to 30 weight percent), and the fiber
reinforcement component (0 to 70 weight percent) as those discussed in van
Riel and that Appellant has not provided any evidence to establish the
criticality of the claimed range. Ans. 12—14 (citing Spec. 31, 33, 34).
Regarding the dependent claims, the Examiner finds that van Riel teaches
that the first polymer component is preferably a polypropylene
homopolymer or polypropylene copolymer and uses both in the examples
(id. at 13 citing van Riel 121, Table 3) and that the second polymer
component is a copolymer of ethylene and butene or octene (id. at 14, citing
van Riel Tflf 32, 33) and has a melt flow of 5 [g/10 min] in the example (id.,
citing van Riel 1176). The Examiner further finds that van Riel provides
ample direction and motivation to arrive at the claimed invention because it
“teaches preferred embodiments employing the three claimed components in
the examples (Table 3, Examples 16—22), teaches the workable ranges for
each component which encompass the claimed ranges as discussed above,
and provides descriptions of the purpose of each component.” Id. at 15.
The Examiner also responds that because the Specification indicates
that it is the inclusion of the low melt flow elastomer that results in the
improved properties and van Riel discloses the claimed ingredients, claimed
amounts, and uses a substantially similar process of making, the claimed
physical properties likewise would be achieved by van Riel’s composition.
Id. The Examiner concludes that Appellant has not rebutted the evidence of
obviousness because no showing has been made comparing the claimed
composition to the closest prior art. Id. at 17.
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In the Reply Brief, Appellant provides the same response as provided
for Sutton. Namely, Appellant argues that the claimed properties attributed
to the elastomer component in the composition have not been shown to be
inherently present in van Riel’s composition. Reply Br. 1. Appellant also
argues that “the claimed compositions are novel and the applied art, at best,
only suggests a hypothetical composition. Hypothetical compositions can
only have expected properties.” Id. ail. Appellant further argues that
“[hypothetical compositions do not possess properties, inherent or
otherwise.” Id. at 3. According to Appellant, comparing its claimed
composition to the closest prior art that suggests the composition “would be
requiring comparison of the results of the invention with the results of the
invention.” Id. (quoting Chapman, 357 F.2d at 422).
We are not persuaded by Appellant’s arguments for the reasons stated
by the Examiner in the Final Office Action and Answer. We also do not
find Appellant’s arguments over van Riel to be persuasive for essentially the
same reasons discussed above in connection with Sutton. We include the
following primarily for emphasis.
As with the rejection over Sutton, Appellant does not direct us to any
evidence that its claimed ranges are critical nor does the Specification
indicate criticality of the claimed ranges. In addition, Appellant does not
adequately explain why the compositions taught by van Riel would not be
expected to share the same properties as the claimed composition (App. Br.
16; Reply Br. 3). In the absence of evidence to the contrary, the Examiner’s
finding that the claimed properties would be achieved by van Riel’s
composition (Final Act. 4—5) is supported by the record on appeal. The
Examiner has provided the record with a preponderance of evidence
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including commonalities shared by the compositions of van Riel and the
claims as well as the process in which they are made, which justifies
requiring Appellant to prove that van Riel’s product would not be expected
to have the claimed properties of improved notched izod impact strength and
improved multi axial impact strength. See In re Best, 562 F.2d at 1255. No
such proof has been provided by Appellant.
In sum, we affirm the Examiner’s rejection of claims 1,3,4, 6, 7, 10,
14, and 19—28 as obvious over van Riel.
CONCLUSION
We affirm the Examiner’s rejections of claims 1,3,4, 6, 7, 10, 14, and
19-28 as obvious under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision 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)(1).
AFFIRMED
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