Ex Parte Sollmann et al

Patent Trial and Appeal Board

Aug 4, 2017

13684752 (P.T.A.B. Aug. 4, 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.
13/684,752 11/26/2012 Henner SOT CM ANN 30474 1021
535 7590
KF ROSS PC
311 E York St
Savannah, GA 31401-3814
EXAMINER
LOWREY, DANIEL D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENNER SOLLMANN and GEORG BALDAUF
Appeal 2016-004718
Application 13/684,752
Technology Center 1700
Before MICHAEL P. COLAIANNI, ELIZABETH M. ROESEL, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—11 and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Specification filed November 26, 2012, the
Final Office Action mailed February 26, 2015 (“Final Act.”), the Advisory
Action mailed May 8, 2015, the Appeal Brief filed August 25, 2015
(“Appeal Br.”), the Examiner’s Answer mailed January 29, 2016 (“Ans.”),
and the Reply Brief filed February 5, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Mondi Gronau GmbH.
Appeal Br. 1.
Appeal 2016-004718
Application 13/684,752
The claims are directed to an elastic film for making a diaper fastener.
Spec. 1,11. 3—7. Claim 1, reproduced below, is illustrative of the claims on
appeal.
1. An elastic film for making diapers, the film comprising:
an extruded elastic layer of a polymer comprised of a
mixture of a styrene block copolymer and a plasticizer, the
plasticizer being over 50% by weight of at least one vegetable-
based oil; and
at least one cover layer coextruded with the polymer
composition and composed of polyethylene, polyethylene
copolymers, polypropylene, polypropylene copolymers or a
mixture thereof.
App. Br. 17 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 2, 4, 6—9, 11, and 14 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Cardinali
(US 2011/0160335 Al, published June 30, 2011) (“Cardinali”) in view of
Middlesworth et al. (US 2007/0234529 Al, published October 11, 2007)
(“Middlesworth”) (Final Act. 4—5; Ans. 2—3);
Rejection 2: Claim 3 stands rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Cardinali in view of Middlesworth,
Przybylski, Canola Oil: Physical and Chemical Properties, June 2000,
http://www.canolacouncil.org/media/515239/canola_oil_physical_chemical
properties_l.pdf (last visited July 27, 2017) (“Przybylski”) and Pasquier
(US 6,156,113, issued December 5, 2000) (“Pasquier”) (Final Act. 5—6;
Ans. 3^4);
2
Appeal 2016-004718
Application 13/684,752
Rejection 3: Claim 5 stands rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Cardinali in view of Middlesworth and
Weirich (US 2007/0287820 Al, published December 13, 2007) (“Weirich”)
(Final Act. 6—7; Ans. 4—5); and
Rejection 4: Claim 10 stands rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Cardinali in view of Middlesworth of
Sambasivam et al. (US 6,391,960 Bl, issued May 21, 2002) (Final Act. 7;
Ans. 5).
DISCUSSION
Rejection 1
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 7—10. Thus, we select claim 1 as representative of the
rejected claims, and the remaining claims on appeal will stand or fall with
claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner finds that Cardinali discloses a product of
thermoplastic polymers comprising a styrenic block copolymer and a
plasticizer wherein the plasticizer is a natural oil, which is a vegetable oil.
Final Act. 4 (citing Cardinali || 16, 17, 24). In addition, the Examiner finds
that Cardinali discloses extrusion of its components. Final Act 4. The
Examiner, however, finds that Cardinali does not disclose a coextruded
cover layer. Id. To resolve this difference, the Examiner relies on
Middlesworth.
The Examiner finds that Middlesworth discloses elastomeric films
coextruded with skin layers made from polyolefin, such as polyethylene. Id.
(citing Middlesworth H 40-42). The Examiner determines that one of
3
Appeal 2016-004718
Application 13/684,752
ordinary skill in the art would have been motivated to coextrade the skin
layers of Middlesworth with the composition of Cardinali “in order to gain
the benefit of reduced stickiness and improved comfort as taught by
Middlesworth.” Final Act. 5 (citing Middlesworth H 40-42).
Appellants argue that coextrading the biodegradable film of Cardinali
with a cover layer of a polyethylene base would clearly make Cardinali’s
film unable to benefit from its most critical characteristic, namely
biodegradability. Appeal Br. 7. Appellants contend that a person skilled in
the art would never consider taking a material that is specifically engineered
for biodegradability and coextrading it with one that is clearly not
biodegradable. Id.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection because Appellants have not pointed to evidence
sufficient to show that the reduction in biodegradability, if any, would be
enough to discourage a person of ordinary skill in the art from modifying
Cardinali’s film to include Middlesworth’s skin layer, in order to obtain the
desirable properties of such a skin layer. Indeed, one of ordinary skill in the
art may be motivated to pursue the desirable properties taught by one
reference, even if that means foregoing the benefit taught by another
reference. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see also
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A]
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.”). Here, the
Examiner finds that Middlesworth discloses certain benefits for a
combination of a styrene block copolymer core and a cover layer composed
of polyethylene (i.e., reduced stickiness and improved comfort.
4
Appeal 2016-004718
Application 13/684,752
Middlesworth 141. Moreover, Williams et al. (US 6,756,434 Bl, issued
June 29, 2004) (“Williams”), which is of record and cited by Appellants in
their Appeal Brief (Appeal Br. 8—9), teaches that it was known in the art to
combine less degradable polyethylene and a more degradable styrene-
butadiene block copolymer to create biodegradable products. Williams
1:62—2:10. Thus, on this record, a preponderance of the evidence weighs
more heavily in favor of the obviousness of the subject matter recited in
claim 1 within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain
the Examiner’s rejection of claims 1, 2, 4, 6—9, 11, and 14.
Rejection 2
Claim 3 depends from claim 1, and requires the vegetable-based oil
has an iodine number of less than 150, and/or a smoke point of more than
180°C, and/or a kinematic viscosity at 20°C of less than 85 mm2/sec and
more than 60 mm2/sec.
Although Cardinali does not disclose the iodine number, smoke point,
or kinematic viscosity of the vegetable-based oil, the Examiner finds that
because Cardinali discloses the same oils as disclosed by Appellants, the oils
in Cardinali inherently have the same properties as claimed by Appellants.
Final Act. 6; see also Spec. 9 (Table 1) (disclosing the iodine number for
soybean oil is 120-141 and the iodine number of rapeseed oil is 105—115).
The Examiner relies on Przybylski and Pasquier as evidence that colza oil
(also known as rapeseed oil (Weirich 118)) has the properties recited in
claim 3. Final Act. 6 (citing Przybylski 1 (Table 1), 2,11; Pasquier 4:13—
17).
In addition to Appellants’ arguments regarding Cardinali and
Middlesworth, which are not persuasive for the reasons discussed with
5
Appeal 2016-004718
Application 13/684,752
respect to Rejection 1 above, Appellants argue that “[tjhere is no suggestion
anywhere in Przybylski to incorporate [rapeseed oil] in a coextruded
laminate as described in the instant invention, or any hint that its use in a
diaper film is known.” Appeal Br. 11.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection because the Examiner does not rely on Przybylski for a
teaching or suggestion to incorporate rapeseed oil in a coextruded laminate.
Rather, the Examiner finds that Cardinali, as modified by Middlesworth,
suggests incorporating rapeseed oil in a coextruded laminate. As discussed
above, Appellants have not identified any error in the Examiner’s
combination. Przybylski and Pasquier are relied upon by the Examiner as
evidence that colza oil has the claimed properties. Appellants do not argue
that colza oil would not necessarily possess the iodine number, smoke point,
or kinematic viscosity recited in claim 3. Accordingly, we sustain the
Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a).
Rejection 3
Claim 5 depends from claim 1 and requires that rapeseed oil is used as
the vegetable-based oil.
The Examiner finds that Cardinali discloses colza oil, which is also
known as rapeseed oil, as evidenced by Weirich (Weirich 118).
In addition to Appellants’ arguments regarding Cardinali and
Middlesworth, which are not persuasive for the reasons discussed with
respect to Rejection 1 above, Appellants argue that it would not have been
obvious to coextrude colza oil with a non-biodegradable polyolefin. Appeal
Br. 13.
6
Appeal 2016-004718
Application 13/684,752
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. Appellants’ argument does not adequately explain
how or why the Examiner errs in concluding that one of ordinary skill in the
art would not have been led to combine Cardinali’s biodegradable product
with Middlesworth’s elastic skin layer. Thus, for the same reasons as
discussed above with respect to Rejection 1, on this record, a preponderance
of the evidence weighs more heavily in favor of the obviousness of the
subject matter recited in claim 9 within the meaning of 35 U.S.C. § 103(a).
Thus, we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. §
103(a).
Rejection 4
Claim 10 depends from claim 1 and requires that the polymer
comprises, in addition to the mixture of styrene block copolymer and
plasticizer, 30% to 60% by weight of a linear SBS block copolymer.
The Examiner finds that Cardinali does not disclose the mixture may
comprise, in addition to styrenic block copolymers, such as SBS (Styrene-
Butadiene-Styrene) (see Cardinali 122), a linear SBS block copolymer at 30
to 60 wt%. Final Act. 7. The Examiner relies on Sambasivam to resolve
this difference. The Examiner finds that Sambasivam discloses a polymer
composition advantageous for use as a construction or elastic attachment
adhesive comprising SBS wherein the SBS is preferably linear SBS and is
mixed with 0 to 25 % of other block copolymers (such as SBS) and 0 to
30 % oil, where there is 5 to 35 % linear SBS. Final Act. 7 (citing
Sambasivam 3:15—29, 4:10-34, 4:35—46, and 6:34—52). The Examiner
determines that one of ordinary skill in the art would have been motivated to
use the SBS blend of Sambasivam in Cardinali’s product “to gain the benefit
7
Appeal 2016-004718
Application 13/684,752
of creep resistance, bond strength, and low viscosity profile as taught by
Sambasivam.” Final Act. 7 (citing Sambasivam 3:15—29).
In addition to Appellants’ arguments regarding Cardinali and
Middlesworth, which are not persuasive for the reasons discussed with
respect to Rejection 1 above, Appellants argue that “[tjhere is nothing in
[Sambasivam] to imply that [its SBS blend] would [have added] beneficial
properties to an elastic diaper tape, rather it is merely cited to show that a
certain material exists.” Appeal Br. 15.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection because the Examiner has identified a reason why one
of ordinary skill in the art would have been led to use Sambasivam’s SBS
blend in Cardinali’s product. Final Act. 7. Appellants do not identity an
error in the Examiner’s findings or reasoning in support of the rejection, and
we find none. See, e.g., Sambasivam 3:15—29, 3:39, 4:47—52 (teaching a
multipurpose hot melt adhesive comprising 5% to 35% of a linear SBS
polymer is suitable as an elastic attachment and has a high level of creep
resistance, bond strength, and a low viscosity profile). Therefore, we sustain
the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner’s rejections of claims 1—11 and
14 are 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