Ex Parte Qin et al

Patent Trial and Appeal Board

Oct 31, 2017

14024812 (P.T.A.B. Oct. 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.
14/024,812 09/12/2013 Jian Qin 64887803US01 1250
23556 7590 11/01/2017
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI54956
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
11/01/2017 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 JIAN QIN, CHARLES WILSON COLMAN,
DEBORAH JOY CALEWARTS, and
PALANIRAJ RAMASWAMI WALLAJAPET
Appeal 2017-000891
Application 14/024,812
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 5—7, 9-10, and 21 of
Application 14/024,812 under 35 U.S.C. §§ 102 and 112. Final Act. (Dec.
8, 2015) 2—3. Appellant1 seeks 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 Kimberly-Clark Worldwide, Inc. is identified as the real party in interest,
Appeal Br. 1, and is also the Applicant.
Appeal 2017-000891
Application 14/024,812
BACKGROUND
The present application generally relates to a frothed polymer foam
including a highly crystalline polyolefin dispersion, a cross-linkable binder
and a surfactant. Spec., Abstract. The foam of the present application may
find use in products which absorb aqueous fluids, such as diapers, training
pants, youth pants, feminine hygiene products, adult incontinence garments
and pads, wiping towels, sponges, wound dressings, surgical sponges, and
the like. Spec. 1.
Claim 1 is representative of the pending claims and is reproduced
below:
1. An open cell foam comprising a composition comprising
a highly crystalline polyolefin dispersion; a cross-linkable
binder; and a surfactant.
Appeal Br. 10 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 5—7, 9, 10, and 21 are rejected under 35 U.S.C.
§ 112(b) as failing to particularly point out and distinctly claim the subject
matter which the inventors regard as their invention. Final Act. 2.
2. Claims 1, 2, 5, 7, and 10 are rejected under 35 U.S.C. § 102(a)
as anticipated by Strandburg et al. (US 2006/0211781 Al, pub. Sept. 21,
2006) (hereinafter “Strandburg”). Id. at 3.
3. Claims 1, 2, 5—7, 9, 10, and 21 are rejected under 35 U.S.C.
§ 102(a) as anticipated by Wang (US 5,939,464, iss. Aug. 17, 1999)
(hereinafter “Wang”). Id. at 3.
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Application 14/024,812
DISCUSSION
Rejection 1. The Examiner rejected all pending claims on the basis
of indefmiteness. Final Act. 2. The Examiner determined that the limitation
“highly crystalline polyolefin” (found in all claims) is indefinite.
Specifically, the Examiner determined that “highly crystalline polyolefin” is
not a term of art which one of ordinary skill in the art could readily define
nor does the Specification define the degree of crystallinity that a polyolefin
must have in order to be “highly crystalline.” Final Act. 2; Answer 6.
A patent must “conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor or
a joint inventor regards as the invention.” 35 U.S.C. § 112(b). The Board
recently reiterated that a patent claim is accorded its broadest reasonable
interpretation in evaluating indefmiteness. In re McAward, Appeal No.
2015-006416, 2017 WL 3669566 (PTAB Aug. 25, 2017) (precedential); see
also In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam).
“[Djuring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
“If a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable ... as indefinite.” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential).
Claim 1 requires, inter alia, “a highly crystalline polyolefin
dispersion.” Appeal Br. 10 (Claims App.). The term “highly” is one of
degree. Terms of degree are not inherently indefinite but must provide
“enough certainty to one of skill in the art when read in the context of the
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Application 14/024,812
invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed.
Cir. 2014). Here, Appellant argues that the phrase “highly crystalline
polyolefin” is well known in the art and understood to mean having a
crystalline content of 50% or greater. Appeal Br. 3^4. Appellant cites to a
reference from Dow Chemical which provides that “conventional olefin
fiber, such as drawn polypropylene fiber (Figure 1 b, page 5), is highly
crystalline with degree of crystallinity greater than 50 percent.” Appeal Br.
3.2 Appellant additionally submits a journal article which refers to certain
“highly crystalline (62—80%) materials.” G. Rojas et al., Precision
polyolefin structure: Modeling polyethylene containing alkyl branches, 49
Polymer 2985—2995 (2008). Moreover, the Specification identifies three
specific commercially available materials it describes as “highly crystalline
pure polyolefin polymers.” Appeal Br. 5—6.
The Examiner does not accept Appellant’s proffered evidence. The
Examiner finds as follows:
A search for “highly crystalline polyolefin” produces references
teaching] that “greater than 35%” or “greater than 40%” meet
“highly crystalline polyolefin.” Other reference patent [sic]
disclose that a range of 80% or greater is required for a “highly
crystalline polyolefin.” Still other references state that the
requirement is 95% or more crystallinity.
Answer 8.
In the Reply, Appellant appears to abandon their prior position that
“highly crystalline” is known to mean having a degree of crystallinity
greater than 50 percent. Reply 2—6. Appellant further indicates agreement
2 Dow Chemical reference available at following url:
www.ftc. gov/ sites/ default/files/documents/advisory_opinions/new-generic-
fiber-petitiondow- chemical-company/petition_dowsubclass.pdf
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Appeal 2017-000891
Application 14/024,812
with the Examiner’s finding that “‘[h]igh’ crystallinity can vary from
polyolefin to polyolefin” and various polyolefins “may have entirely
different properties and requirements for ‘high’ crystallinity.” Reply 2.
Appellant further argues that “the present application does not provide the
same specific value for ‘every type of polyolefin,’ but it does provide the
same definition of ‘highly crystalline polyolefin’ via characterization and
examples.” Id. at 4. Here, Appellant appears to argue that highly crystalline
polyolefin polymer dispersions will have a sharp melting phase transition
point rather than a gradual softening process. Id.
In regard to polyolefin melting point, the Specification provides as
follows:
In an embodiment, the polyolefin polymer can be highly
crystalline pure polyolefin polymer. In an embodiment, the
polyolefin polymer can be characterized by exhibiting a
particular type of differential scanning calorimetry (DSC) plot
of the polyolefin endotherm. In such an embodiment, the
observed endotherm can exhibit what is generally considered
to be a sharp melting point.
Spec. 5 (emphasis added). This falls short of defining “highly crystalline” in
terms of sharpness of melting point in a DSC plot.
Indefiniteness is a question of law. Indefiniteness, however,
sometimes requires resolution of underlying questions of fact. Teva Pharm.
USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 838 (2015). Here, the underlying
question of fact is whether or not the scope of “highly crystalline polyolefin”
would be understood by those of skill in the art.
Appellant first submits evidence and argument in support of the
notion that “the generally accepted definition in the scientific literature of
highly crystalline polyolefins are those polyolefin materials with [a] degree
of crystallinity greater than 50%.” Appeal Br. 3. Appellant then changes
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Application 14/024,812
tack and assert that “[t]he instant application does not provide one specific
value for ‘every type of polyolefin’ because there isn't a specific value for
every type of polyolefin. . . . The present application defines highly
crystalline polyolefin by its characteristics and by examples [ ] because one
skilled in the art knows there are different values.” Reply 2.
Appellant’s evidence and argument in support of their “crystallinity
greater than 50%” argument is insufficient in view of its conflict with the
Examiner’s factual findings and Appellant’s subsequent reversal.
Appellant’s argument that the “application defines highly crystalline
polyolefin by its characteristics” is poorly supported by the Specification
and is in tension with Appellant’s earlier argument.
Accordingly, Appellant has not shown reversible error in the
Examiner’s determination that the pending claims are indefinite in view of
their recitation of the term “highly crystalline polyolefin.”
Rejections 2 and 3. The Examiner rejected claims 1, 2, 5, 7, and 10
as anticipated by Strandburg and claims 1,2, 5—7, 9-10, and 21 as
anticipated by Wang. Final Act. 3.
It is ordinarily improper to reject a claim over prior art when the
meaning of a claim cannot be determined. As the predecessor to our
reviewing court explained, “[a]ll words in a claim must be considered in
judging the patentability of that claim against the prior art. If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.” In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970); see also In re Steele, 305 F.2d
859, 862—63 (CCPA 1962) (“As we have previously indicated, our analysis
of the claims leaves us in a quandary as to what in fact is covered by them.
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Application 14/024,812
We think the examiner and the board were wrong in relying on what at best
are speculative assumptions as to the meaning of the claims and basing a
rejection under 35 U.S.C. § 103 thereon.”).
Here, the anticipation rejections require evaluation of the “highly
crystalline polyolefin” limitation. See Appeal Br. 6 (“Strandburg does not
disclose, teach, or suggest the use of a highly crystalline polyolefin
dispersion”), 7 (“Wang does not disclose, teach, or suggest the use of a
highly crystalline polyolefin dispersion”) (emphasis added).
Accordingly, because we cannot ascertain the scope of the claims we
reverse pro forma the rejections of claims 1, 2, 5—7, 9, 10, and 21 on the
basis of anticipation. The present reversal is predicated upon procedure
rather than on the merits of the obviousness rejections. The reversal does
not mean that we consider the claims to be patentable as drawn.
CONCLUSION
The rejections of claims 1, 2, 5—7, 9, 10, and 21 as indefinite is
affirmed. We reverse the rejections of claims 1, 2, 5—7, 9, 10, and 21 on the
basis of anticipation.
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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