Ex Parte Vo

Patent Trial and Appeal Board

Mar 7, 2017

13201881 (P.T.A.B. Mar. 7, 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.
13/201,881 08/17/2011 Van-Chau Vo 67593-US-PCT 4122
109 7590 03/09/2017
The Dow Chemical Company
P.O. BOX 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VAN-CHAU VO
Appeal 2014-004026
Application 13/201,8811
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1, 3—8, and 10—15. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Dow Global
Technologies LLC. Appeal Br. 3.
Appeal 2014-004026
Application 13/201,881
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a polymeric foam
providing a thermally insulating additive. Spec. 2:26-30. In particular, the
Specification describes including alumina boehmite as a thermally insulating
additive that does not cause undesirably small cell sizes, allows formation of
closed cell foam, and has minimal effect on color. Id. at 3:2—7. Claim 1,
reproduced below with emphases added to certain key recitations and some
spacing added for readability, is illustrative of the claimed subject matter:
1. A process for producing a polymeric foam comprising the
following steps:
a. providing a foamable polymer composition
comprising a blowing agent dispersed in a polymer
matrix, the polymer matrix having a softening
temperature; and
b. exposing the foamable polymer composition while
at a temperature at or above the softening
temperature of the polymer matrix to an
environment having a pressure low enough to cause
the foamable polymer composition to expand into a
polymeric foam;
wherein the foamable polymer composition further
comprises alumina boehmite dispersed in the polymer matrix
and
wherein more than 50 percent by weight of the polymers
in the polymer matrix are thermoplastic polymers selected from
olefmic polymers and alkenyl aromatic polymers
wherein the process is an extrusion process where the
foamable polymer composition is provided in an extruder at an
2 In this decision, we refer to the Final Office Action mailed August 29,
2013 (“Final Act.”), the Appeal Brief filed October 18, 2013 (“Appeal Br.”),
the Examiner’s Answer mailed December 24, 2013 (“Ans.”), and the Reply
Brief filed January 1, 2015 (“Reply Br.”).
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Application 13/201,881
initial temperature that is above the softening temperature of the
polymer matrix and at an initial pressure that precludes foaming
of the foamable polymer composition and
where step (b) occurs by expelling the foamable polymer
composition to an environment having a pressure lower than the
initial pressure and sufficiently low to cause the foamable
polymer composition to expand into an extruded polymeric foam
and wherein the foamable polymer composition expands into
an extruded polymeric foam having a density of 8 to 35
kilograms per cubic meter.
Appeal Br. 16 (Claims App’x).
REJECTIONS AND REFERENCES
The Examiner maintains rejection of claims 1 and 3—7 and also claims
8 and 10-15 under 35 U.S.C. § 103 as unpatentable over Naito et al., US
2006/0106122 Al, published May 18, 2006 (hereinafter “Naito”), in view of
Yamamoto et al., JP 2008-302640 A, December 18, 2008 (hereinafter
“Yamamoto”). Ans. 2, 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that Appellant identifies reversible error. Thus, we
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affirm the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant argues all claims as a group. See Appeal Br. 10. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit
our discussion to claim 1, and all claims on appeal stand or fall together with
claim 1.
The Examiner finds that Naito teaches producing an extruded
polystyrene/polymer foam and teaches the various process steps recited in
claim 1. Ans. 3—5 (providing citations to Naito). The Examiner finds that
Naito teaches that foam produced from its method has a density in the range
of 20 to 60 kg/m3 which overlaps Appellant’s recited range of 8 to 35 kg/m3.
Id. at 5. The Examiner finds that it would have been obvious to prepare
foam with density at the lower range disclosed by Naito because “lower
density foams provide advantages such a [sic, as] reduced material costs and
lighter weight products.” Id. at 6.
The Examiner finds that Naito teaches that additives such as cell
controlling agents may be added to the foam. Id. at 4; see also, e.g., Naito
4, 61, 67, 68. The Examiner finds that Naito does not specifically teach
adding alumina boehmite to the foam, but the Examiner finds that
Yamamoto teaches alumina boehmite may be included in polymeric foam.
Ans. 4 (providing citations to Yamamoto). The Examiner finds that
Yamamoto teaches that the introduction of boehmite “provides a foam with
excellent properties, including rigidity, shock-resistance and a uniform
structure . . . .” Id. at 5 (citing Yamamoto 17). The Examiner concludes
that it “would have been obvious to a person of ordinary skill in the art to
add alumina boehmite in the amount suggested by Yamamoto et al. to the
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Application 13/201,881
polystyrene resin used to prepare the foam of Naito et al.” Id. at 4—5. A
preponderance of the evidence supports the Examiner’s findings and
conclusions.
Appellant argues that it would not have been obvious to combine
Naito and Yamamoto because Yamamoto teaches molded foam and Naito
teaches extrusion foaming. Appeal Br. 10-13. Appellant does not,
however, persuasively explain why a person of ordinary skill would not have
understood that the benefits of alumina boehmite taught by Yamamoto
would have been applicable in the context of Naito’s extrusion foaming.
Appellant argues that “[teachings relating to alumina boehmite in molded
thermoplastic foam would not be considered transferable to preparing
extruded thermoplastic polymer foam” {id. at 13), but Appellant provides no
explanation as to why this is the case and provides no evidence supporting
this point. Moreover, the Examiner persuasively explains that Yamamoto
teaches that its foam may be extruded and that such extrusion could occur
“into a mold or into a non-enclosed space” with a reasonable expectation of
success. Ans. 9-10. Appellant’s argument therefore does not establish
reversible error.
Appellant also argues that the Examiner has not established a
reasonable likelihood of success in combining the teachings of Yamamoto
and Naito to achieve a foam with the recited density of 8 to 35 kg/m3.
Appeal Br. 13—15; Reply Br. 4—6. Appellant argues “Naito may teach a
foam density in the range of the present invention, but those teachings do not
account for a presence of alumina boehmite.” Appeal Br. 15. Appellant,
however, presents no evidence that adding alumina boehmite to foam
produced by Naito’s process would materially impact the density of the
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Application 13/201,881
Naito product. See Estee Lauder Inc. v. L ’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997) (“Counsel’s argument cannot take the place of evidence
lacking in the record.”); see also In re Best, 562 F.2d 1252, 1256 (CCPA
1977) (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”).
Moreover, Appellant does not persuasively rebut the Examiner’s
findings that a person of skill would be motivated to achieve lower density
foams to achieve reduced material costs and lighter weight products, that
Yamamoto teaches adding alumina boehmite in an amount as low as 0.05
parts by weight based upon the weight of the resin/polymeric matrix, and
that Yamamoto does not suggest that its beneficial properties only arise
when incorporated into a foam of a particular density or foam formed by a
particular process. Ans. 4—5, 8—9; see also Yamamoto 118 (teaching that
the boehmite could be as low as 0.01 parts by weight to 100 parts by weight
of thermoplastics). Claim 1 does not recite a minimum amount of alumina
boehmite, and Yamamoto teaches that the amount of alumina boehmite
added could be small; these facts weigh against Appellant’s argument that
the addition of alumina boehmite to Naito’s process would necessarily
increase density beyond the range of claim 1. Thus, a preponderance of the
evidence supports the Examiner’s conclusion that it would have been
obvious to produce foams with the recited density using the Naito process
while adding alumina boehmite as taught by Yamamoto. Ans. 5.
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Because Appellant fails to identify reversible error, we sustain the
Examiner’s rejection of claims 1, 3—8, and 10—15.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
3—8, and 10-15.
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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