Ex Parte Tatarka et al

Patent Trial and Appeal BoardMar 28, 2016

13066118 (P.T.A.B. Mar. 28, 2016)

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. 13/066,118 04/07/2011 Paul D. Tatarka TAP-10-1 3356 40256 7590 03/29/2016 FERRELLS, PLLC P. O. BOX 312 CLIFTON, VA 20124-1706 EXAMINER KRYLOVA, IRINA ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 03/29/2016 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 PAUL D. TATARKA and TIMOTHY M. KNEALE ____________________ Appeal 2014-007414 Application 13/066,118 Technology Center 1700 ____________________ Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–17 and 26–28. We have jurisdiction. 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is Topas Advanced Polymers, Inc. Appeal Br. 2. Appellants provided a corrected appeal brief on November 29, 2013. Citations are to the November 29, 2013, appeal brief. We do not review or consider the defective October 1, 2013, appeal brief. Appeal 2014-007414 Application 13/066,118 2 STATEMENT OF CASE Appellants describe the present invention as “drawn to polymer blends and film and sheet made therefrom for transparent packaging.” Appeal Br. 2. The polymer could be used in, for example, trays, containers, bags, pouches, and films. Spec. 7:4–9. Claims 1, 12, and 13 are pending independent claims.2 Claim 1, reproduced below with emphasis added to a key recitation at issue here, is illustrative of the claimed subject matter: 1. A melt-blend resin composition prepared by melt-blending: (a) from 60 parts to 99 parts per hundred weight resin in the blend of an amorphous cycloolefin polymer composition exhibiting a glass transition temperature (Tg) in the range of from 30° C to 200°C; and (b) from 40 parts to 1 part per hundred weight resin in the blend of a partially crystalline, cycloolefin copolymer elastomer of norbornene and ethylene having a glass transition temperature (Tg) of less than 30°C, a crystalline melting temperature in the range of from 60°C to 125°C and a % crystallinity by weight of 40% or less. Appeal Br. A1 (Claims Appendix) (emphasis added). Independent claims 12 and 13 similarly recite a “cycloolefin copolymer elastomer of norbornene and ethylene.” Id. at A2–A3 (Claims Appendix). REFERENCES The Examiner relied upon the prior art below when rejecting the claims on appeal: Yamamoto et al. (hereinafter, “Yamamoto”) US 4,499,511 Feb. 12, 1991 Khanarian et al. (hereinafter, “Khanarian”) US 6,090,888 July 18, 2000 2 Appellants submitted a corrected claim appendix on January 24, 2014. Reference to claims in this opinion refer to claims as listed in the January 24, 2014, corrected appendix. Appeal 2014-007414 Application 13/066,118 3 REJECTIONS The Examiner made the following rejections: Rejection 1. The Examiner rejected claims 1–14, 16, 17, and 26–28 under 35 U.S.C. § 103 as unpatentable over Yamamoto. Final Act. 3. Rejection 2. The Examiner rejected claims 13–17 under 35 U.S.C. § 103 as unpatentable over the combination of Yamamoto and Khanarian. Id. at 4. The Examiner also made rejections based in part on “the TOPAS E- 140 flyer.” Id. at 3. Appellants argued that this flyer is not prior art. See, e.g., Appeal Br. 7. The Examiner subsequently withdrew rejections based on the TOPAS E-140 flyer. Ans. 6–7. ANALYSIS Rejection 1. The Examiner rejected claims 1–14, 16, 17, and 26–28 as unpatentable over Yamamoto. Final Act. 3. The Examiner explains that Yamamoto teaches “cycloolefin copolymer elastomer of norbornene and ethylene” as recited by independent claims 1, 12, and 13 because it explains that the flexible cycloolefin copolymer “may be the same as described with regard to copolymer (A)” and explains that the options for copolymer (A) include norbornene. Ans. 8–9. Applicants argue that it would not have been obvious to “pluck” norbornene/ethylene elastomer from the many possibilities Yamamoto teaches for the flexible cycloolefin. Appeal Br. 9. Applicants correctly note that Yamamoto identifies four broad categories of copolymers that could serve as its flexible polymer. Reply Br. 2–3 (quoting Yamamoto at 9:4–54). One of those four broad categories is coextensive with any of Yamamoto’s Appeal 2014-007414 Application 13/066,118 4 many possibilities for copolymer (A) either alone or in combination. Appeal Br. 8–9; Yamamoto 35–43. The possibilities for copolymer A include (but are not limited to) any variations of five different open-ended cycloolefin structures I through V. Appeal Br. 9; Yamamoto 2:1–42. Yamamoto identifies norbornene (i.e., bicyclo[2.2.1]hept-2-ene) as just one of dozens of example possibilities for just one of the five open-ended structures. Yamamoto 3:49–6:46; see also Spec. 1:20–25 (“Norbornene is also sometimes referred to as bicyclo[2.2.1]hept-2-ene . . . .”). The Examiner does not provide any specific rationales for why a person of skill in the art would choose a norbornene/ethylene elastomer as the flexible polymer among the many possibilities Yamamoto offers. Rather than directing one of skill in the art toward a norbornene/ethylene elastomer, Yamamoto discusses the properties of nine different example copolymers which do not make use of norbornene/ethylene elastomer. Reply Br. 3; Yamamoto 15:8–16:61. The Examiner admits, for example, that Example 6 of Yamamoto is not the same as claim 1’s recited norbornene/ethylene elastomer. Ans. 9. Yamamoto states “cyclo-olefins of formulae (I) and (II) are especially preferred,” but this statement appears to refer to a preference in choosing the “cyclo-olefinic random copolymer (A)” as opposed to a preference in choosing the flexible polymer. Id. at 3:43–44. Yamamoto would not have made a norbornene/ethylene copolymer “obvious to try” because Yamamoto does not identify only a finite number of identified, predictable solutions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Because of Yamamoto’s lack of guidance towards selecting norbornene/ethylene over other possibilities in Yamamoto’s broad disclosure, we do not sustain the Examiner’s first rejection of claims 1, 12, Appeal 2014-007414 Application 13/066,118 5 13, and claims 2–11, 14, 16, 17, and 26–28 depending upon those independent claims. Cf. In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (reversing Board affirmation of obvious rejection where prior art did not suggest selection of biphenol A within broader disclosure). Rejection 2. The Examiner rejects claims 13–17 based upon combining Yamamoto and Khanarian. Final Act. 4; Ans. 15. The Examiner does not assert that Khanarian relates to use of a norbornene/ethylene elastomer. Appeal Br. 14; Ans. 15–17. Thus, Khanarian does not cure the deficiencies of Yamamoto in this regard, and, for the reasons explained above, we do not sustain the Examiner’s second rejection. DECISION For the above reasons, we reverse the Examiner’s rejections of claims 1–17 and 26–28. REVERSED