Ex Parte Smedberg et al

Patent Trial and Appeal BoardFeb 25, 2019

12667551 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/667,551 02/18/2010 29052 7590 02/27/2019 Eversheds Sutherland (US) LLP 999 PEACHTREE STREET, N.E. Suite 2300 ATLANTA, GA 30309 FIRST NAMED INVENTOR Annika Smedberg 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. 19727-0028 9366 EXAMINER YOUNG, WILLIAM D ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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@eversheds-sutherland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANNIKA SMEDBERG, BILL GUSTAFSSON, and DANIEL NILSSON Appeal 2018-003153 Application 12/667 ,551 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and LILAN REN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's rejections of claims 1, 3, 17, 23, 26, 27, 39, and 40 under 35 U.S.C. Â§ 103(a) as unpatentable over the combined prior art of Gustaffsson (US 5,535,075, July 23, 1996) and Naarmann (US 3,914,329, Oct. 21, 1975), and of claims 1, 19, 27, and 41 over Lal ( US 3,666,737). We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 The real party in interest is stated to be Borealis Technology OY (Br. 2). Appeal 2018-003153 Application 12/667 ,551 Claim 19 is illustrative: Claim 19. A polymer composition A) an unsaturated polyethylene polymer wherein the unsaturated polymer is a polyethylene or polypropylene, and B) a free radical generating compound of formula wherein Ar and Ar' independently represent a phenyl, benzyl or naphthyl group optionally substituted by 1 to 4 substituents, R 4 and R 4' each are methyl; and R5 and R5' each independently represent a straight chain alkyl group having C6-30 carbon atoms. (Br. Claims Appendix). Independent claims 1 and 17 are also directed to a "polymer composition comprising" 2 similar to claim 19 except the formula used to represent the free radical generating peroxide compound differs (Br. Claims Appendix). Appellants' arguments are directed to the each group of claims rejected, and do not separately argue any claim in either rejection (Br. 5-8). Thus, the claims stand or fall together in each rejection. 2 It appears to be an oversight that claim 19 does not similarly contain the word "comprising". In any event, absent any limiting transitional word (i.e. consisting of), we interpret the claim as being open-ended. 2 Appeal 2018-003153 Application 12/667 ,551 ANALYSIS Upon consideration of the evidence in this appeal and each of Appellants' contentions as set forth in the Appeal Brief filed July 10, 2017, we determine that Appellants have not demonstrated reversible error in the Examiner's rejections (e.g., Ans. 4--9 (mailed Oct. 5, 2017)). In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining the Board's long-held practice of requiring Appellants to identify the alleged error in the Examiner's rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. TheÂ§ 103 Rejection based on Gustafsson and Naarmann In assessing whether a claim to a combination of prior art elements or steps would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. Appellants' main argument is that the Examiner used impermissible hindsight in selecting the peroxide of N aarmann for use as the peroxide in Gustafsson (Br. 5-7), especially in light of the "surprising benefit" of producing "less methane than a cross-section of know[ n] peroxides" (Br. 6). 3 Appeal 2018-003153 Application 12/667 ,551 Appellants rely upon the Nilsson declarations 3 for their discussion of this benefit (id.) As found by the Examiner, there is no doubt that a skilled artisan knew how to construct a polymer system with polyethylene or polypropylene and a free radical generating peroxide crosslinking compound which is useful for the same purpose Appellants' describe ( of a layer surrounding the conductor of a wire or cable), as exemplified in Gustafsson 07 5 ( col. 5, 1. 40 to col. 6, 1. 51; Ans. 3--4, 6; see also Appellants' Background art section, Spec. 1-3). Appellants also do not dispute the Examiner's determination that Naarmann exemplifies that the free radical peroxide compounds encompassed by the claims are known for use in a reaction to make, e.g., an oligomer (which appears to be a crosslinking reaction) (Br. generally). Appellants' arguments that impermissible hindsight was used because Naarmann "is in such a remote field" (Br. 5) and because of the surprising benefit discussed are not persuasive of error in the Examiner's rejection because they fail to adequately consider the prior art as a whole, and the inferences that one of ordinary skill would have drawn therefrom, and thus do not adequately address the Examiner's obviousness position (generally Ans.). Appellants' conclusory statement that Naarmann is "in such a remote field" (Br. 5) is not sufficient to address the Examiner's reasoning that "the peroxide ofNaarmann would have been selected based upon Gustafsson's 3 See Declaration of Dr. Daniel Nilsson ( a named inventor of the case on appeal) and Second Declaration of Dr. Daniel Nilsson in the Evidence Appendix of the Brief. 4 Appeal 2018-003153 Application 12/667 ,551 design criteria for the peroxide initiator" (Ans. 6, (the Examiner points out the closely matching decomposition temperatures taught in each reference)). The Examiner only relies upon Naarmann to exemplify that it is known to use peroxide free radical generating compounds at a similar reaction temperature as needed by Gustafsson (Ans. 6). See In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. see also e.g., In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (it is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom). Appellants' reliance on the alleged surprising benefit of less methane production is inadequate for the reasons explained by the Examiner (Ans. 8- 9). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, it is well-established that the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). As the Examiner explains, Appellants' proffered evidence is not sufficient to satisfy their burden at least because the claims are directed to a polymer 5 Appeal 2018-003153 Application 12/667 ,551 composition per se whereas the alleged surprising benefit relates to a method of manufacturing cable layers (Ans. 8). In the appeal before us, it is questionable whether the results shown by the Declaration data are properly characterized as unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must be unexpected to be considered as evidence of non- obviousness"). Nowhere in the Specification do the Appellants characterize the combination of polymer component A with free radical generating component B as achieving results that are unexpected. Under these circumstances, we view this Declaration data as merely representing the optimization of the addition of a known peroxide free radical generating compound with a known polymer which would have been within the skill of and, thus, obvious to the artisan. Furthermore, Appellants have not shown how the results of two tested inventive samples (la and la') are commensurate in scope with the claims. Indeed Appellants do not refute the Examiner's determination that claim 19 does not even encompass the two inventive examples (Ans. 8). Furthermore, each independent claim 1 and 17 recites a "polymer composition comprising" components (A) and (B), thus permitting the inclusion of other unrecited components; each component may be present in any amount; and each component is somewhat generic and, thus, include very large numbers of species. Accordingly, Appellants have not provided persuasive technical rationale or adequate evidence to refute the Examiner's obviousness determination (generally Ans.; Br.). KSR, 550 U.S. at 416 (the predictable use of prior art elements according to known methods for their established 6 Appeal 2018-003153 Application 12/667 ,551 functions is likely to be obvious when it does no more than yield predictable results). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 4 21. Thus, we affirm theÂ§ 103 rejection of the claims based on Gustafsson and Naarmann. TheÂ§ 103 rejection based on Lal Appellants' argument that there is no reason to select the specifically required substituents of claim 1 ( or 19) so as to arrive at the claimed invention (Br. 8) is not persuasive of error in the Examiner's obviousness determination. Appellants do not dispute the Examiner's determination that Lal does indeed encompass the claimed polymer system. Appellants have not shown error in the Examiner's determination that one of ordinary skill in the art, using no more than ordinary creativity, would have readily selected the appropriate substituents for the peroxide following the teachings of Lal (Ans. 5, 7). Appellants do not sufficiently address the Examiner's position that there are a limited number of possibilities needed to arrive at the claimed invention that are all taught or suggested in Lal (id.). Cf Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of a multitude of 1200 possible combinations failed to render any particular formulation less obvious). The alleged surprising benefit of less methane produced is not convincing of reversible error in this rejection for similar reasons set out above. Thus, we affirm theÂ§ 103 rejection of the claims based on Lal. 7 Appeal 2018-003153 Application 12/667 ,551 CONCLUSION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 8