Ex Parte Sun

Patent Trial and Appeal BoardSep 17, 2012

12142141 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/142,141 06/19/2008 Luyi Sun COS-1161 6771 25264 7590 09/17/2012 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 EXAMINER MIGGINS, MICHAEL C ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 09/17/2012 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) PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LUYI SUN ____________________ Appeal 2011-009418 Application 12/142,141 Technology Center 1700 ____________________ Before FRED E. McKELVEY, CATHERINE Q. TIMM and KAREN M. HASTINGS, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Statement of the case Fina Technology Inc. (“applicant”), the real party in interest (Brief, page 1), 1 seeks review under 35 U.S.C. § 134(a) of a final rejection dated 11 May 2010. 2 The application has been published as U.S. Patent Application Publication 3 2009/0315226 A1. 4 Appeal 2011-009418 Application 12/142,141 2 In support of prior art rejections, the Examiner relies on the following 1 evidence. 2 Batlaw et al. “Batlaw” U.S. Patent Application Publication 2005/0249904 A1 10 Nov. 2005 Page et al. “Page” U.S. Patent Application Publication 2008/0038500 A1 14 Feb. 2008 Batlaw is prior art under 35 U.S.C. § 102(b) and Page is prior art under 3 35 U.S.C § 102(a). Applicant has not attempted to antedate Page (37 CFR 4 § 1.131). 5 We have jurisdiction under 35 U.S.C. § 134(a). 6 Examiner’s rejections 7 Rejection 1: Claims 1-7 and 12-19 stand rejected under § 102(b) as 8 anticipated by Batlaw. Answer, page 3. 9 Rejection 2: Claims 8-11 stand rejected under § 103(a) as unpatentable over 10 Batlaw and Page. Answer, page 4. 11 Claims on appeal 12 Claims 1-19 are on appeal. 13 In connection with the § 102(b) rejection over Batlaw, applicant singles out 14 for separate consideration Claims 1, 5, and 11. Brief, page 4. However, Claim 11 15 has not been rejected under § 102(b). Accordingly, we elect to decide the § 102(b) 16 issue on the appeal on the basis of Claims 1 and 5. 37 CFR § 41.37(c)(1)(vii). 17 In connection with the § 103(a) rejection of Claims 8-11, no claim is set out 18 for separate consideration, the claims being argued as a group. Accordingly, we 19 Appeal 2011-009418 Application 12/142,141 3 elect to decide the appeal on the basis of Claim 11 given that some argument with 1 respect to that claim was presented in connection with the § 102(b) rejection. 2 37 CFR § 41.37(c)(1)(vii). 3 Claims 1, 5 and 11, which we reproduce from the Claim Appendix of the 4 Appeal Brief, read [matter in brackets and some indentation added; some 5 limitations in dispute in italics]: 6 Claim 1 7 An injection stretch blow molded (ISBM) article comprising: 8 a polypropylene-based impact copolymer. 9 Claim 5 10 The ISBM article of claim 1, wherein the article is opaque or 11 semi-opaque. 12 Claim 11 13 A semi-opaque injection stretch blow molded (ISBM) beverage 14 container comprising: a propylene-based impact copolymer exhibiting 15 [1] a melt flow rate of from about 1 dg/min to about 150 dg/min.; 16 [2] a maximum top load of at least about 160 N at a weight of 23 g; 17 and 18 [3] a cold temperature drop impact resistance of at least about 6 feet. 19 Definitions 20 The term “propylene based impact copolymer” generally “refers to those 21 copolymers composed primarily of [1] propylene and [2] an amount of other 22 comonomers, wherein the comonomers are present in an amount of from about 23 1.0 wt.% to about 15 wt.% . . . relative to the total weight of polymer, for 24 Appeal 2011-009418 Application 12/142,141 4 example.” Specification, page 8 ¶ 0032. See also Specification ¶¶ 0025-0026 1 describing a two-phase heterophasic polymer wherein the first phase may be 2 homopolymer of propylene and the second phase can include a rubber phase, such 3 as ethylene-propylene rubber. 4 The term “semi-opaque” means some, but not all, visible light passes 5 through an ISBM article. Specification ¶ 0013. 6 Analysis 7 Rejection 1 8 Point 1 9 Applicant challenges the anticipation rejection with a statement to the effect 10 that if a reference (Batlaw in this case) describes a broad range and the claims are 11 directed to a narrow range and there is evidence of unexpected results, one may 12 conclude that anticipation has not been established. Brief, page 3. However, 13 unexpected results are not relevant to an anticipation rejection. 14 Point 2 15 Applicant further challenges the anticipation rejection arguing that according 16 to Batlaw, any form of polypropylene is said to be useful to practice the Batlaw 17 invention. Brief, page 3; Batlaw ¶ 0043. Applicant points out that a description of 18 a genus may not render obvious a species within the genus, citing In re Baird, 19 16 F.3d 380 (Fed. Cir. 1994). Whether Baird survived KSR Int’l. Inc. v. Teleflex 20 Inc., 550 U.S. 398 (2007) could be debated. In this appeal, however, we need not 21 resolve that debate. 22 Batlaw reveals the following (¶ 0053) (matter in brackets added): 23 Appeal 2011-009418 Application 12/142,141 5 The polypropylene polymers employed in the practice of the 1 [Batlaw] invention may include [1] homopolymers (known as HPs), 2 [2] impact or block copolymers (known as ICPs) (combinations of 3 propylene with certain elastomeric additives, such as rubber, and the 4 like), and [3] random copolymers (known as RCPS) made from at 5 least one propylene and one or more ethylenically unsaturated 6 comonomers. Generally, co-monomers, if present, constitute a 7 relatively minor amount, i.e., about 10 percent or less, or about 5 8 percent or less, of the entire polypropylene, based upon the total 9 weight of the polymer. Such co-monomers may serve to assist in 10 clarity improvement of the polypropylene, or they may function to 11 improve other properties of the polymer. Co-monomer examples 12 include acrylic acid and vinyl acetate, polyethylene, polybutylene, and 13 other like compounds. 14 Batlaw, therefore, describes three types of polypropylene polymers, one 15 of which, i.e., item [2], is a polypropylene-based impact copolymer. Compare 16 (1) Batlaw’s description of item [2] with applicant’s description of its impact 17 copolymers at Specification ¶¶ 0014, 0025, and 0026. 18 The Examiner found the Batlaw disclosure as set out in ¶ 0053 constitutes a 19 description of a propylene-based impact copolymer. Answer, pages 5-6. 20 While Baird involved a “large” genus, the Batlaw “genus” includes only 21 three species, set out as items [1], [2], and [3], supra. As noted by the Examiner, 22 Batlaw describes the claimed species albeit other species are described. Answer, 23 page 6. The description of the single species anticipates Claim 1. Titanium Metals 24 Appeal 2011-009418 Application 12/142,141 6 Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985). See also In re Petering, 301 F.2d 1 676 (CCPA 1962) (description of genus of 20 compounds held to describe all 2 20 compounds) and In re Schaumann, 572 F.2d 312 (CCPA 1978). 3 Since Batlaw’s relevant disclosure is an anticipation of a propylene-based 4 impact copolymer, it does not matter whether other copolymers, such as random 5 copolymers, described by Batlaw are or are not “equivalent” copolymers. Brief, 6 page 4. 7 Point 3 8 While Claim 1 does not contain a “semi-opaque” limitation, Claim 5 9 requires that the article “is opaque or semi-opaque.” 10 According to applicant, Batlaw is said to teach away from “semi-opaque” 11 articles given that an objective of Batlaw is to obtain “clear, low haze 12 polypropylene articles . . .” Brief, page 4; Batlaw ¶ 0040. Applicant suggests that 13 Batlaw’s haze data is not relevant because it involves articles made from random 14 copolymers. Brief, page 4; Batlaw ¶ 0143. While “[h]igher levels of haze are 15 [said to be] undesirable (Batlaw ¶ 0085), the fact remains that Batlaw describes 16 containers having “low haze” (¶ 0040) and “substantially uniform clarity levels” 17 (¶ 0045). No evidence in the record has been called to our attention which would 18 establish that the low haze properties do not apply to Batlaw’s propylene-based 19 impact copolymers. 20 Appeal 2011-009418 Application 12/142,141 7 Rejection 2 1 Claim 11 calls for a beverage container made from a propylene-based 2 impact copolymer having a melt flow index (MFI) from about 1 dg/min to about 3 10 dg/min and resulting in two properties: (1) a maximum top load of at least 4 about 160 N at a weight of 23 g and (2) a cold temperature drop impact resistance 5 of at least about 6 feet. 6 Batlaw reveals to one skilled in the art that the MFI will affect the final 7 clarity of a beverage container because MFI is said to be significant in determining 8 the speed at which a chemical composition may be fed into an injection mold 9 cavity to form a preform article (¶ 0085). Because Batlaw reveals to one skilled in 10 the art that MFI is a relevant factor in determining feed speed and feed speed is 11 obviously significant from a commercial point of view, it is readily apparent that 12 MFI is a result oriented variable within the skill of the art. Accordingly, it would 13 appear that the MFI limitation is within the skill of the art. 14 The Examiner also cites Page. Answer, page 4. Page reveals top load is a 15 property considered by one skilled in the beverage-making art. In particular, Page 16 reveals (¶ 0031) (italics added): 17 Third, bottles with thin and thick areas in the sidewalls give the 18 consumer an impression of poor container quality. Fourth, during 19 filling and distribution, the ability of containers to resist crushing 20 force from above, commonly known as top load strength, is important 21 for container and pallet integrity. When top load failures occur, the 22 initial failure occurs at the weakest point of the container, which often 23 corresponds to the point at which the container sidewall is thinnest. 24 Appeal 2011-009418 Application 12/142,141 8 Uniformity of wall uses the container material more efficiently, i.e. 1 higher top load strength can be attained in a container of similar 2 weight when weak spots are diminished in the bottle sidewall. And 3 finally, the transmission rate of gaseous matter is dependent upon the 4 thickness of the barrier to be passed. Thus, thin sections of bottle wall 5 will allow gases such as oxygen, nitrogen, and water vapor to pass the 6 wall of the bottle at a higher rate than the thick sections. 7 The Examiner found that top load is a result-oriented variable within the 8 skill of the art. Answer, pages 4-5. Applicant disagrees. Brief, page 5. The 9 evidence supports the Examiner’s finding. Page reveals that by controlling 10 beverage wall thickness one skilled in the art can adjust top load. ¶ 0031. 11 Batlaw and Page do not appear to mention cold temperature drop impact 12 resistance. However, applicant reveals that a need existed for ISBM articles 13 having improved drop impact strength, particularly for beverage containers to be 14 refrigerated. Specification, ¶¶ 0002-0003. It appears therefore that drop impact 15 strength was a property taken into consideration by those skilled in the art. While 16 one can assume that applicant believes that a beverage container with improved 17 drop impact strength is obtained with its ISBM article, there is no showing that the 18 Batlaw ISBM article does not have a drop load strength the same as or similar to 19 that claimed by applicant. We note that both applicant and Batlaw use a two-step 20 process for making their respective bottles. Specification ¶ 0045; Batlaw, Figs. 2A 21 and 2B. The fact that data in the Specification can be argued to show that ISBM 22 bottles have a higher drop load strength than bottles made from random 23 copolymers, does not address the drop load strength of the Batlaw ISBM bottles 24 Appeal 2011-009418 Application 12/142,141 9 made from essentially the same process as that described by applicant. Moreover, 1 applicant has not provided convincing evidence that the superior cold temperature 2 properties stemming from the use of impact polymer were, in fact, unexpected 3 rather than expected by those of ordinary skill in the art. 4 Other arguments 5 We have considered applicant’s remaining arguments and find none that 6 warrant reversal of the Examiner’s prior art rejections. Cf. In re Antor Media 7 Corp., 2012 WL 3055928, 103 USPQ2d 1555, 1563 (Fed. Cir. 2012). 8 Decision 9 Upon consideration of the appeal, and for the reasons given herein, it is 10 ORDERED that the decision on the Examiner rejecting the claims on 11 appeal over the prior art is affirmed. 12 FURTHER ORDERED that no time period for taking any subsequent 13 action in connection with this appeal may be extended under 37 CFR §1.136(a) 14 (1)(iv). 15 AFFIRMED 16 17 cam 18