Ex Parte Kristiansen et al

Patent Trial and Appeal Board

Aug 31, 2017

13496207 (P.T.A.B. Aug. 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.
13/496,207 04/12/2012 Per Magnus Kristiansen 438314US99PCT 6482
22850 7590 09/05/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PER MAGNUS KRISTIANSEN, DANIEL MULLER,
and MICHELE GERSTER
Appeal 2016-003680
Application 13/496,207
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3—13, 15, 16, and 21—28 of
Application 13/496,207 under 35 U.S.C. § 103(a) as obvious. Final Act.
(June 12, 2015) 2—13. Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 BASF SE is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-003680
Application 13/496,207
BACKGROUND
The present application generally relates to polymer compositions
having improved scratch resistance, improved mechanical properties and
reduced haze. Spec. 1
Claim 1 is representative of the pending claims and is reproduced
below:
1. A composition comprising:
(i) a polymer,
(ii) an organic compound of formula (1),
wherein
R1 is —NHC(0)R4,
R2 is —NHC(0)R6 and
R3 is —NHC(0)R8,
wherein R4, R6 and R8 are independently branched C3-20- alkyl
groups, and,
(iii) 12 to 1,000 parts per million, based on the weight of the
polymer, of a compound B selected from the group consisting
of a compound of formula (4),
(0
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Application 13/496,207
wherein Ml and M2 are the same or different and are selected
from the group consisting of calcium, strontium, lithium,
sodium and monobasic aluminum, and wherein R31, R32, R33,
R34, R35, R36, R37, R38, R39 and R40 are individually selected
from the group consisting of hydrogen, C 1.9-alkyl, wherein any
two vicinal or geminal alkyl groups may be combined to form a
carbocyclic ring of up to six carbon atoms, hydroxy, C1-9-
alkoxy, Ci-9-alkyleneoxy, amino, Ci-9-alkylamino, halogeno,
and phenyl, a compound of formula (5),
wherein M3 and M4 are independently selected from the group
consisting of metal cations and organic cations, or M3 and M4
together represent a bivalent metal ion and wherein R41, R42,
R43, R44, R45, R46, R47, R48, R49 and R50 are individually selected
from the group consisting of hydrogen, C 1.9-alkyl, wherein any
two vicinal or geminal alkyl groups may be combined to form a
carbocyclic ring of up to six carbon atoms, hydroxy, C1.9-
alkoxy, Ci-9-alkyleneoxy, amino, Ci-9-alkylamino, halogeno
phenyl and alkylphenyl, a sugar alcohol acetal a derivative of a
sugar alcohol acetal, a metal salt of an organic phosphoric acid,
an organic phosphoric acid combined with a base, a metal salt
of a polyol, a polyol combined with a base and mixtures
thereof.
Appeal Br. (Claims App. i—ii).
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Application 13/496,207
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 3—13, 15, 16, and 21—28 are rejected under 35 U.S.C.
§ 103(a) as obvious over Schmidt et al. (US 2007/0149663 Al, pub. June 28,
2007) (hereinafter “Schmidt”). Final Act. 2—13.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 3—13, 15, 16, and 21—
28 as obvious over Schmidt. Id. at 2—13.
Appellants’ brief does not contest that the Examiner has made out a
prima facie case of obviousness. Appeal Br. 11. Appellants seek to rebut
the Examiner’s prima facie case on the basis that the claimed compositions
exhibit unexpected and superior properties. Id. Appellants assert that the
combination of components (ii) and (iii) in the amounts recited yields
surprising results. Id.
In general, an applicant may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)
(alteration and italics in original). That same standard applies when, as here,
the applicant seeks to optimize certain variables by selecting narrow ranges
from broader ranges disclosed in the prior art. Id. at 1470 (“Only if the
‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be
obtained for the claimed critical range.”) (citations omitted).
Moreover, the applicant’s showing of unexpected results must be
commensurate in scope with the claimed range. See In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number
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Application 13/496,207
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.’”); see
also In re Peterson, 315 F.3d 1325, 1330—31 (Fed. Cir. 2003).
The Examiner finds that Appellants’ rebuttal evidence is insufficient.
The Examiner finds that Appellants failed to include testing data for
exemplary compositions falling outside the claimed range so as to contrast
with results falling within the claimed range; did not test a sufficient number
of compounds falling within the scope of component (ii); did not test a
sufficient number of compounds falling within the scope of component (iii);
and did not test sufficient polymers. Answer 14.
Claims 1, 3—12, 15, 16, and 23—25 are to a composition that includes,
as component (i), “a polymer.” Appeal Br. (Claims App. i — viii).
Appellants provide test data for only two polymers (polypropylene random
copolymer and polypropylene homopolymer) yet broadly claim every
polymer. Spec. 18, 26, 29, and 32. Accordingly, the testing data for these
claims are not commensurate with the scope of the claims and Appellants
have failed to rebut the prima facie case of obviousness.
Additionally, claim 1 includes a broad provision for component (iii)
that encompasses hundreds of compounds. Appeal Brief (Claims App. i—ii).
Claims 3, 13, 26 and 27 depend from claim 1 without further limitation of
component (iii). Id. at ii, v, viii. Claims 8 and 21 each limit component (iii)
to two different base structures, but with a wide variety of available
substituents. Id. at iii—iv, vi—vii. The Specification provides test data for
only seven compounds falling within the scope of the component (iii)
limitation. Spec. 19 (Table 1), 27 (Table 6). Accordingly, the testing data
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Application 13/496,207
for these claims are not commensurate with the scope of the claims and
Appellants have failed to rebut the prima facie case of obviousness.
Similarly, for component (iii), claim 1 requires “12 to 1,000 parts per
million ... of a compound B selected from . . . .” Appeal Brief (Claims
App. i). Claims 3—13, 16, 21, 22, and 27 depend from claim 1 and include
no additional limitation regarding the quantity of component (iii). The
lowest value (in parts per million) of any component (iii) compound
indicated to have been tested is 75 ppm. Spec. 19 (Table 1), 26 (Table 5), 29
(Table 8). Thus, the lowest concentration tested is higher, by a factor of
greater than 6, than the low end of the claimed range. Accordingly, the
testing data for these claims are not commensurate with the scope of the
claims and Appellants have failed to rebut the prima facie case.
Nor have the Appellants shown that any of their results are
unexpected. Appellants assert that the claimed combinations of nucleating
agents are “synergistic” and exceed calculated values. Appellants do not,
however, seek to establish that this would be surprising to a person of
ordinary skill in the art.
Our reviewing court has held as follows in this regard:
To be particularly probative, evidence of unexpected
results must establish that there is a difference between the
results obtained and those of the closest prior art, and that the
difference would not have been expected by one of ordinary
skill in the art at the time of the invention. Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed.Cir.2006); see also
Pfizer, 480 F.3d at 1371. Unexpected properties, however, do
not necessarily guarantee that a new compound is nonobvious.
While a “marked superiority” in an expected property may be
enough in some circumstances to render a compound
patentable, a “mere difference in degree” is insufficient. In re
Papesch, 50 CCPA 1084, 315 F.2d 381, 392 (CCPA 1963); In
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re Hoch, 57 CCPA 1292, 428 F.2d 1341, 1344 n. 5 (CCPA
1970) (explaining that unexpected “differences in properties”
can mean “significant difference in degree of the same
property” amounting to a “marked superiority” for purposes of
evaluating unexpected results) (quotation omitted).
And “differences in degree” of a known and expected
property are not as persuasive in rebutting obviousness as
differences in “kind”—i.e., a new property dissimilar to the
known property. . . . When assessing unexpected properties,
therefore, we must evaluate the significance and “kind” of
expected results along with the unexpected results. See
Hoffmann—La Roche Inc. v. Apotex Inc., 748 F.3d 1326, 1333—
34 (Fed.Cir.2014) (“The evidence of superior efficacy does
nothing to undercut the showing that there was a reasonable
expectation of success with the 150 mg monthly dose, even if
the level of success may have turned out to be somewhat
greater than would have been expected.”)
Bristol-Myers Squibb Co. v. Leva Pharm. USA, Inc., 752 F.3d 967,
977 (Fed. Cir. 2014). Here, the most Appellants can claim is a minor
improvement in efficacy. Appeal Br. 13. An applicant must establish
“substantially improved results.” In re Soni, 54 F.3d 746, 751 (Fed. Cir.
1995) (emphasis added); see Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346,
1358 (Fed. Cir. 2013) (“Unexpected results are useful to show the improved
properties provided by the claimed compositions are much greater than
would have been predicted.” (internal quotation marks omitted)). In
particular, Example 11 (which falls within claim 28) fails to show
“substantially improved” results. See Appeal Br. 13.
Further, Appellants argue that their results are surprising only as
compare to their own “calculated” results. Appeal Br. 12—13. Rebuttal of
the prima facie case, however, requires comparision with the closest prior
art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
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(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.”).
Moreover, Appellants’ calculated values are merely weighted
averages where both the compound of component (ii) and that of component
(iii) are present in the same concentration (in parts per million).2 See, e.g.,
Spec. 21—22 n. h. The source data (drawn from the Comparative Examples)
however, is highly nonlinear. Compare, e.g., Spec. 21 (Table 1) Comp. Exs.
3 and 4, or 6 and 7. Accordingly, the calculated values are sensitive to the
source data (concentration) chosen to be used as an input for the calculated
value.
In view of the foregoing, taken as a whole, we determine that
Appellants have failed to rebut the prima facie case as determined by the
Examiner.
CONCLUSION
The rejection of claims 1, 3—13, 15, 16, and 21—28 as obvious over
Schmidt is affirmed.
2 For example, Applicants provide data for the flexural modulus of
compositions having 230 ppm Hyperform HPN-68L and 230 ppm Ciba
Irgaclear XT 386. See Spec. 21 (Table 1, Comp. Exs. 9, 16). They use this
data to reach a calculated flexural modulus for a composition having 230
ppm of combined nucleating agent (75 ppm Hyperform HPN-68L 75 and
155 ppm Ciba Irgaclear XT 386). Id. (Ex. 6).
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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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