Ex Parte Laverdure et al

Patent Trial and Appeal BoardSep 26, 2012

11782259 (P.T.A.B. Sep. 26, 2012)

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. 11/782,259 07/24/2007 Kenneth S. Laverdure COS-1096 (4176-02500) 7267 7590 09/26/2012 David J. Alexander Fina Technology, Inc. P.O. Box 674412 Houston, TX 77267-4412 EXAMINER ZEMEL, IRINA SOPJIA ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 09/26/2012 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 KENNETH S. LAVERDURE and ROBERTS DOTTER ____________ Appeal 2011-010831 Application 11/782,259 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, BEVERLY A. FRANKLIN, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-6, 9-14, and 17-20. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A method of making a polystyrene composition, Appeal 2011-010831 Application 11/782,259 2 comprising: contacting polystyrene with carbon black and expandable microspheres to form a composition; and expanding the micro spheres to foam the composition; wherein the carbon black is present in an amount of from 0.1 wt.% to 13 wt.% based on the total weight of the composition; and the expandable micro spheres are present in an amount of from 0.1 wt.% to 50 wt.% based on the total weight of the composition. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kron 6,509,384 B2 Jan. 21, 2003 Cleveland 2006/0160928 A1 Jul. 20, 2006 Hitchcock 5,557,847 Nov. 5, 1996 Elfving 6,582,633 B2 Jun. 24, 2003 Gehlsen 6,103,152 Aug. 15, 2003 Dow Chemical Com. EP0372343 Jan. 19, 2000 THE REJECTION Claims 1-6, 9-14, and 17-20 are rejected under 35 U.S.C. §103(a) as being unpatentable over Kron in combination with any one of Cleveland, Hitchcock, or Dow '343". ISSUE Did the Examiner err in determining that Appellants’ rebuttal evidence to the prima facie case is unconvincing? Appeal 2011-010831 Application 11/782,259 3 We answer this question in the negative and AFFIRM. ANALYSIS As an initial matter, Appellants have not presented separate arguments for all of the rejected claims. Rather, Appellants’ arguments are principally directed to independent claim 1. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). With regard to the prior art rejection, we adopt the Examiner’s findings pertinent to the issues raised by Appellants. We therefore incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. Appellants acknowledge that the Examiner has presented a prima facie case of obviousness. Br. 8-9. Appellants argue that their evidence of unexpected results shown in their Specification successfully rebuts the prima face case, for the reasons presented on pages 9-10 of the Brief. In reply, the Examiner states that the showing is not commensurate in scope with the claims (commensurate with the claimed amount of carbon black of from 0.1 wt. % to 13 wt. %). Ans. 11-13. In reply, Appellants argue that the alleged unexpected results are not found in the amounts of the components themselves, but in the combination of these components. Reply Br. 4. We are not convinced by Appellants’ arguments for the following reasons. First, we agree with the Examiner’s position that the showing is not commensurate in scope with Appellants’ claims for the reasons stated by the Examiner on pages 11-13 of the Answer. Appellants’ evidence is insufficient to establish a trend in the exemplified data that supports their Appeal 2011-010831 Application 11/782,259 4 position. Cf. In re Kollman, 595 F.2d 48, 56 (CCPA 1979) (acknowledging that in some cases several data points may enable an ordinary artisan “to ascertain a trend in the exemplified data which would allow him to reasonably extend the probative value thereof). In the instant case, the trend is not established for the lower limits of the claimed components as explained by the Examiner. See Ans. 11-12 (explaining that the claims embrace “amounts of [micro spheres] and carbon black as low as 0.1% . . . which is an order of magnitude below the” exemplary amount of micro spheres “and 50 times lower than the exemplified amount of carbon black”). Second, we note that the asserted unexpected property or result must actually be unexpected and of statistical and practical significance. See MPEP 716.02(a). Synergism is merely a property like any other property – it may be expected or unexpected depending on the particular art. The burden is on Appellants to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b); see also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992). A greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. See MPEP 716.02(a), Section I; see also Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991). In the instant case, while Appellants’ results show an improvement when compared with samples having a blowing agent versus expandable microspheres and with or without carbon black, such an effect may or may Appeal 2011-010831 Application 11/782,259 5 not be expected. Id. Appellants do not address that such results are greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. In view of the above, we therefore agree with the Examiner’s conclusion that Appellants’ rebuttal evidence is unconvincing. CONCLUSIONS OF LAW AND DECISION The rejection 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 tc