Ex Parte Moseley et alDownload PDFPatent Trial and Appeal BoardApr 23, 201813833193 (P.T.A.B. Apr. 23, 2018) Copy Citation 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." 2 Appeal2016-007106 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). 3 Appeal2016-007106 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]) 4 Appeal2016-007106 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. 5 Appeal2016-007106 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, 6 Appeal2016-007106 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 7 Appeal2016-007106 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 8 Copy with citationCopy as parenthetical citation