Ex Parte Moseley et al

Patent Trial and Appeal Board

Apr 23, 2018

13833193 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/833, 193 03/15/2013
23377 7590 04/25/2018
BAKER & HOSTETLER LLP
CIRA CENTRE 12TH FLOOR
2929 ARCH STREET
PHILADELPHIA, PA 19104-2891
FIRST NAMED INVENTOR
Brian Hugh Moseley
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.
092482. 021622 6854
EXAMINER
FUNG, CHING-YIU
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/25/2018 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 BRIAN HUGH MOSELEY, 1
Mary Elaine Turner, and Neil Douglas Redpath
Appeal2016-0071062
Application 13/833,193
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Showa Best Glove, Inc. ("Showa") timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection3 of claims 1-3, 5-11, 14,
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Showa Best Glove,
Inc. ("Showa"). (Appeal Brief, filed 11 January 2016 ("Br."), 1.)
2 Heard 19 Apr 2018. The Official Transcript will be made of record in due
course.
3 Office Action mailed 11 June 2015 ("Final Rejection"; cited as "FR"), as
modified by the Advisory Action mailed 30 September 2015, entering
amendments filed under 37 C.F.R. § 1.116 on 11 September 2015 ("AAF").
Appeal2016-007106
Application 13/833,193
16, 18, 24, 27, 28, and 40-46. 4 We have jurisdiction. 35 U.S.C. § 6.
We affirm.
OPINION
A. Introduction 5
The subject matter on appeal relates to biodegradable elastomeric
gloves made from acrylonitrile butadiene based latex. As discussed infra,
the record indicates that it is well known that acrylonitrile butadiene based
articles, which typically include an alkali-stabilizing agent and metal oxide
cross-linking agents to crosslink carboxylic-acid sites in the rubber
polymers, are not easily biodegraded. Showa seeks patent protection for
gloves that are biodegradable under anaerobic conditions according to
ASTM standard D5511 due to the presence of a biodegradation agent that
comprises a carboxylic acid. Such gloves, it is explained, "can be
biodegraded in a natural environment, such as a landfill." (Spec. 1 [0004].)
Sole independent claim 1 is representative and reads:
A biodegradable elastomeric glove formed from a
composition comprising:
a) an acrylonitrile butadiene based rubber latex;
b) an alkali stabilizing agent;
c) a metal oxide crosslinking agent; and
4 Remaining copending claims 30-39 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
5 Application 13/833,193, Biodegradable compositions, methods and uses
thereof, filed 15 March 2013, claiming the benefit of a provisional
application filed 30 August 2012. We refer to the '"193 Specification,"
which we cite as "Spec."
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Application 13/833,193
d) a biodegradation agent comprising a carboxylic acid
compound,
wherein the biodegradable elastomeric glove exhibits a
biodegradation rate as measured according to an
ASTM D55 l l testing standard that is greater than that of
a substantially identical reference elastomeric glove in the
absence of the bi ode gradation agent.
(Claims App., Br. 12; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection6' 7, 8 :
A. Claims 1-3, 5-11, 14, 16, 18, 24, 27, and 40-46 stand
rejected under 35 U.S.C. § 103(a) in view of the combined
teachings of Lipinski, 9 Lake, 10 and Thompson. 11
Al. Claim 28 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Lipinski, Lake, and Yagi. 12
6 Examiner's Answer mailed 13 May 2016 ("Ans.").
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 It appears that a rejection of claim 40 under 35 U.S.C. § 112(2) has not
been maintained, following an amendment to that claim (AAF 8; see
generally Br. and Ans).
9 Timothy M. Lipinski, Nitrile rubber article having natural rubber
characteristics, U.S. Patent Application Publication 2006/0253956 Al
(2006).
10 John Allen Lake & Samuel David Adams, Chemical additives to make
polymeric materials biodegradable, U.S. Patent Application Publication
2008/0103232 Al (2008).
11 Jordan M. Thompson et al., Open-cell surface foam materials, U.S. Patent
Application Publication 2011/0309541 Al (22 December 2011), based on an
application filed 14 June 2011.
12 Noriko Yagi et al., Rubber composition and pneumatic tire using the
same, U.S. Patent Application Publication 2007 /0032593 Al (2007).
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Application 13/833,193
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
We find initially that Showa's arguments for patentability are based
solely on limitations recited in claim 1. Accordingly, all claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Briefly, the Examiner finds that Lipinski describes acrylonitrile
butadiene based latex articles, such as gloves, that further comprise an
alkali-stabilizing agent and a metal-oxide crosslinking agent, but not the
carboxylic-acid compound-biodegradation agent required by claim 1 that
provides for the greater rate of biodegradation recited by claim 1. (FR 4,
i-f 6.) The Examiner finds (id. at 5, i-f 7) that Lake describes biodegradable
additives that can be "physically blended" (Lake, Abstract) "to make a wide
variety of polymeric materials biodegradable no matter what their chemical
composition" (id. at 2 [0017]; emphasis added). The Examiner finds that
Lake describes, in paragraphs [0027]-[0030], a wide variety of polymers
that can be rendered at least partially biodegradable by the biodegradable
additives. (FR 7.) The Examiner finds that Lake discloses biodegradable
additives for polymeric materials including "a carboxylic acid compound
with a chain length from 5-8 carbons." (Id. at 6, 1st para., citing
Lake 1 [0010].) The Examiner also finds that Thompson teaches that
acrylonitrile butadiene based rubbers ("NBR") were known to be
substantially non-degradable polymers. (Id. at 7, 1st full para., citing
Thompson [0037].) Based on the wide variety of polymers named by Lake,
and the identity of the microbes disclosed by Lake (Lake 3 [0043]--4 [0052])
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Application 13/833,193
and in the '193 Specification (Spec. 14 [0069]-17 [0078]) 13 , the Examiner
determines that "the microbes disclosed in Lake would necessarily be
capable of digesting the acrylonitrile butadiene based rubber, as presently
claimed." (FR 6, 1st para.) Accordingly, the Examiner holds that the
claimed biodegradable acrylonitrile butadiene based biodegradable gloves
would have been obvious. (Id. at para. bridging 7-8.)
Showa urges that Lake, in paragraphs [0027] and [0028], "make[s]
clear that the invention is directed to thermoplastics." (Br. 3, last para.)
In Showa's view, Examiner has failed to come forward with evidence "of
how Lake's disclosure would have suggested and enabled the use of Lake's
biodegradation agent in any and all polymer systems," especially "given the
differences between acrylonitrile butadiene based rubber latex and
thermoplastics." (Id. at 5, last para.) These differences, according to
Showa, include the melting and molding of the thermoplastic during
processing to make a finished product, versus the use of a carrier system
such as water for the latex system. Showa argues that "[t]he solubility of the
ingredients used in a latex suspension may not be compatible with a
thermoplastic system and vice versa." (Id. at 6, 2d full para.) Because of
these differences, Showa urges, "one would not have had an expectation that
13 These two sets of paragraphs in Lake and in the '193 Specification are
substantially identical. Indeed, Lake is expressly incorporated by reference
into the '193 Specification (Spec. 9 [0045]), and many other paragraphs from
Lake setting out its general teachings may be found virtually verbatim in
the '193 Specification. Accordingly, we may assume, without prejudice, full
familiarity with Lake and its teachings by Showa.
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Application 13/833,193
the additives for one, including the bi ode gradation agent of Lake, would
necessarily be compatible in the system of the other." (Id.)
We do not find these arguments persuasive of harmful error. First,
Lake describes both thermoplastics, which can be remelted and remoulded,
and thermosets, which cannot. (Lake [0027].) Lake names specific
thermoplastics, including vinyl-chain growth polymers, e.g., polyethylene
(id.), as well as specific thermosetting polymers such as polyesters including
polyethyleneterephthalate and polyurethane (id. at [0028]). It is in this
context that Lake refers to "accelerating the biodegradation of a wide range
of polymers." (Id. at [0029].) Lake then names specific examples of both
thermoplastic and thermosetting polymers that can be made biodegradable,
stating, "[t]hese polymers include polystyrene [thermoplastic], polyurethane
[thermosetting], ... polycarbonate plastics [thermosetting]." (Id. at [0030].)
Example 3 (id. at 7 [0098] to 8 [O 102]) describes samples of the polyester
polyethylenephthalate with a biodegradable additive (sample A-
"significant evidence ofbiodegradation" (id. at [0100])) and without
(sample B--very smooth surface where most defects were a result of
mechanical processes (id. at [0101])). Thus, we find Showa's
characterization of Lake as being "directed to thermoplastics" an incomplete
characterization of Lake's disclosures.
Second, the only example of alleged differences between the
thermoplastics and NBR that Showa brings to our attention is the differing
modes of fabrication of articles. Showa only argues that additives that are
compatible with the water carrier and NBR latexes might not be compatible
with thermoplastics, which are melted and then shaped in molds. This
argument is undercut both by the breadth of polymer types named by Lake,
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Application 13/833,193
as well as by well-known characteristics ofNBR reported both by Lipinski
and by the background sections of the '793 Specification.
In regard to the latter point, Lipinski states, "[ n ]itrile rubber, a
synthetic polymer often used in emulsion (latex) form to manufacture
medical and industrial gloves is a random terpolymer of acrylonitrile,
butadiene, and a carboxylic acid such as methacrylic acid."
(Lipinski 1 [0007].) These acid groups, according to Lipinski, provide sites
for crosslinking by ionic binding to multivalent metal ions, provided by the
addition of zinc oxide. (Id.) Similarly, the '193 Specification states that the
"elastomeric material can further comprise a carboxylic acid or a derivative
thereof ... [which] provides a level of carboxyl groups sufficient to
crosslink with the acrylonitrile butadiene based rubber. Suitable carboxylic
acids include, but are not limited to carboxylic acid is ethylene acrylic acid."
(Spec. 23 [00116].) Crosslinking is provided by "including a divalent or
trivalent metal" in the composition. (Id.) The known presence of polar
carboxyl groups in NBR latexes would have encouraged, not dissuaded, the
routineer from using biodegradation agents such as carboxylic acids with a
chain length of from 5-18 carbons disclosed by Lake. Adding materials
having similar chemical functionality as moieties already present would
have provided a reasonable expectation of success. It is well settled that
certainty (implied by the "necessarily compatible" standard enunciated by
Showa) is not required. In re 0 'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
It is true that the Examiner set out the case for prima facie
obviousness rather tersely. It is also true that, to the extent the language of
inherency was used in determining that the microbes disclosed by Lake
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Application 13/833,193
"would necessarily be capable of digesting the acrylonitrile butadiene based
rubber," the Examiner overstated the fair teachings of the prior art. In light
of the teachings of the record, however, the circumstance that the references
relied on by the Examiner deal with subject matter well known to Showa
(NBR latex rubbers and additives to enhance biodegradation of polymers),
and Showa' s own overstatements and misinterpretations, we are not
persuaded that Showa has demonstrated harmful error in the prima facie case
of obviousness. We note further that Showa has not argued for patentability
based on so-called secondary considerations such as unexpected results or
commercial success.
C. Order
It is ORDERED that the rejection of claims 1-3, 5-11, 14, 16, 18, 24,
27, 28, and 40-46 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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