Ex Parte Vogel et al

Patent Trial and Appeal Board

Mar 28, 2017

10960134 (P.T.A.B. Mar. 28, 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.
10/960,134 10/07/2004 Randall Allen Vogel AD7046 US NA 5628
23906 7590 03/30/2017
E I DU PONT DE NEMOURS AND COMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL ALLEN VOGEL ET AL.
Appeal 2014-000722
Application 10/960,134
Technology Center 1700
Before SALLY GARDNER LANE, SALLY C. MEDLEY, and
DEBORAH KATZ, Administrative Patent Judges.
LANE, Administrative Patent Judge.
DECISION ON APPEAL
37 C.F.R. §41.50
I. Statement of the Case
1 Randall Allen Vogel et al. (“Appellants”) seek review under 35 U.S.C.
2 § 134(a) of the final rejection of claims 1-4, 9-17, 19-26, 28 and 29 of application
3 10/960,134, filed October 7, 2004.
4 The real party in interest is identified as E.I. du Point de Nemours and
5 Company. (Appeal Brief at 1).
6 We have jurisdiction under 35 U.S.C. § 134(a).
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The Examiner relies on the following evidence.
Vogel WO 01/78981 Published 25
Oct. 2001
Dewart U.S. Patent 6,114,456 Issued Sept. 5,
2000
Jeong U.S. Patent 6,569,935 Issued May 27,
2003
Malo et al U.S. Patent 4,207,049 Issued June 10,
1980
Appellants do not contest the prior art status of the Examiner’s evidence, all
of which is prior art under 35 U.S.C. § 102(b).1
II. Claims on Appeal
Appellants appeal the rejection of claims 1-4, 9-17, 19-26, 28 and 29.
(Appeal Brief at 1; Answer at 3 and 5). The claims are directed to a multi-layer
sheet that is said to be useful for automobile, truck and recreational vehicle panels.
(Specification at 2).
III. Rejection
Claims 1-4, 9, 14-17, 19, 23-26, and 28 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over Vogel in view of Dewart and Jeong. (Answer
at 3-5).
We are referring to pre-AIA statutes unless otherwise indicated.
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Application 10/960,134
Claims 10-13, 20-22, and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vogel in view of Dewart and Jeong and further in view of Malo
et al. (Answer at 5).
For reasons discussed below we affirm the rejections of the claims.
IV. Analysis
A. Claim 1
Claim 1 is representative of claims 1-4, 9, 14-17, 19, 23-26 and 28 and
reads:
1. A multi-layer sheet comprising, or produced from
a. a first co-extruded layer comprising an ionomer resin of a
copolymer of ethylene and 8-25% by weight, based on the weight of
the copolymer, of a C3-C8 a, (3 ethylenically unsaturated
monocarboxylic acid at least 35% of acid moieties neutralized with
metal ions;
b. a second co-extruded polymeric layer comprising an ionomer
resin, an ethylene acid copolymer, an ethylene copolymer, an ethylene
acid terpolymer, a metallocene catalyzed very low density
polyethylene [VLDPE], or combinations of two or more thereof; and
the layer comprises pigments, dyes, flakes, or combinations of two or
more thereof; and
c. a third co-extruded polymeric adhesive layer in direct contact
with the second co-extruded layer comprising a metallocene catalyzed
very low density polyethylene; and
d. optionally, a co-extruded backing layer adhered to the third
adhesive layer of polypropylene, polymeric mixtures of polypropylene
and another polyolefin, or copolymers of polypropylene.
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Under 35 USC §103(a) a patent may not be obtained if the differences
between the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art. When reviewing a conclusion of
obviousness we consider whether the Examiner has provided articulated reasoning
with some rational underpinning sufficient to support the conclusion. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner found that Vogel teaches the limitations of claim 1 either
expressly or inherently except that Vogel does not teach that the VFDPE should be
metallocene catalyzed. (Answer at 3). The Examiner found that Dewart teaches
that VLDPE polymers exhibit improved impact resistance and optical properties
when they are metallocene catalyzed. The Examiner determined that one skilled in
the art therefore would have had reason to utilize metallocene catalyzed VLDPE in
the laminate taught by Vogel, i.e. to achieve improved impact resistance and
optical properties. (Answer at 4-5).
The Examiner found that Vogel also does not teach that the optional backing
layer should comprise a random copolymer of polypropylene. The Examiner
found that Jeong teaches that propylene random copolymers are well known in the
automobile industry as a molding material. The Examiner concluded that it would
have been obvious to one of ordinary skill in the art to utilize a random copolymer
of polypropylene as the backing layer of the laminate taught in Vogel since the
copolymers are commonly used in the automotive industry as molding materials.
(Answer at 5).
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Appellants argue that the Examiner’s rejection does not articulate any reason
why the differences between the relied upon prior art and its claimed invention
would have been obvious to those of skill in the art. (Appeal Brief at 5-6). We
disagree. As we note above, the Examiner explained why one skilled in the art
would have had sufficient reason to modify the teachings of Vogel to arrive at the
claimed invention. Appellants do not explain why the reasons provided by the
Examiner and found in the prior art are incorrect or insufficient.
Appellants argue that none of the references individually teach or suggest
every element of the claims. (Appeal Brief at 5). Attacking references individually
is not persuasive because here the rejection is based upon the teachings of a
combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In particular, Appellants argue that Vogel does not teach or suggest that a
metallocene catalyzed VLDPE also should comprise one or more pigments, dyes
or flakes. (Appeal Brief at 5). This argument is not convincing. As the Examiner
notes Vogel teaches a co-extruded VLDPE layer and that each co-extruded layer
may comprise pigments dyes and flakes or mixtures thereof. (Answer at 4
referring to Vogel at 7:26-27). The Examiner’s rejection does not rely upon Vogel
for a teaching of a VLDPE that is metallocene catalyzed. Instead, that teaching
comes from Dewart. (Answer at 4 referring to Dewart at col. 2).
Appellants state that “the plain language of claim 1 excludes the presence of
a tie layer between the first and second coextruded layer.” (Appeal Brief at 5). It
is unclear if Appellants are arguing this as a point of distinction from the prior art
but at any rate, as the Examiner notes Vogel expressly states that the first and
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second co-extraded layers are in contact such that no tie layer is required. (Answer
at 7 referring to Vogel at 7:5).
Appellants separately address claims 14-17 and 19 (Appeal Brief at 6), and
claims 23-26 and 28 (Appeal Brief at 6-7), but do not provide reasoning separate
from that discussed above as to why these claims would not have been obvious.
Appellants argue “[i]n the alternative” that the superior adhesion obtained by
the claimed invention is a surprisingly superior result sufficient to overcome any
prima facie case of obviousness based on Vogel, Dewart and Jeong. In support of
its argument, Appellants direct us to the “Examples of the invention” and in
particular page 14, lines 24 to 29 and pages 21 to 22 which are said to provide data
to “substantiate these unexpected advantages” although Appellants provide little
discussion or analysis of this data (Appeal Brief at 7).
"[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art." In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). We agree with the
Examiner that Appellants have not pointed to a comparison of the claimed
invention with the closest prior art to Vogel. (Answer at 8).
To be persuasive the evidence of unexpected results must be
commensurate with the scope of the rejected claims. In re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003). Appellants argue that the m-VFDPE develops good
adhesion to a polypropylene layer that is cladded onto the three-layer film structure
through injection molding. (Appeal Brief at 7). As noted by the Examiner, the
claims do not require the presence of a polypropylene layer and the backing layer,
where included, does not necessarily comprise polypropylene. (Answer at 9).
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Thus, the results shown, to the extent that one skilled in the art would have
considered them unexpected, are not commensurate with the scope of the claims.
We have considered the evidence of unexpected results pointed out to us by
Appellants in combination with the other evidence relied upon in the Examiner’s
rejection. We also have considered the arguments presented in the Appellants’
Reply but do not find these arguments to provide any additional or persuasive
reason why the Examiner’s conclusion of obviousness was incorrect. Based upon
a consideration of the totality of this evidence and the record before us we
conclude that the Examiner’s rejection of claims 1-4, 9, 14-17, 19, 23-26, and 28
was not in error.
B. Claim 10
Claim 10 is representative of claims 10-13, 20-22 and 29 and reads:
10. The multi-layer sheet of claim 1 further comprising an auto part, a
truck part, an auto or truck body panel, or a part or panel of a
recreational vehicle having a Class A surface.
The Examiner found that Vogel teaches the coated backfill layer may be
used in the automotive industry but does not teach the back fill layer should have a
Class A finish. The Examiner found that Malo teaches molded parts used in
visible areas of an automotive require Class A finish so that the part has an
acceptable finish. The Examiner concluded that it would have been obvious to one
of ordinary skill in the art at the time the invention was made to utilize a backfill
layer with a Class A finish because such a finish is the industrially accepted
standard in the automotive industry. (Answer at 5).
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Appellants argue that Malo “includes no teaching or suggestion whatsoever
regarding metallocene-catalyzed polyethylenes.” (Appeal Brief at 8). Appellants’
argument attacking the Malo reference separately when the Examiner’s rejection is
based upon a combination of references is not convincing. The rejection relies
upon Dewart as showing the “metallocene-catalyzed” feature of the claims. We
note that in the Answer the Examiner also states that this feature is a method
limitation which does not distinguish the claimed VLDPE from a VLDPE
polymerized by a different method. (Answer at 9). This rationale was not set forth
in the final rejection and we do not find it necessary to the conclusion of
obviousness as Dewart provides sufficient reason for one skilled in the art to have
used metallocene catalysts.
Appellants separately address claims 10-13 and 19 (Appeal Brief at 9),
claims 20, 21 and 22 (Appeal Brief at 9), and claim 29 (Appeal Brief at 10) but do
not provide reasoning separate from that discussed above as to why these claims
would not have been obvious.
Appellants argue “[i]n the alternative” that the superior adhesion obtained by
the claimed invention is a surprisingly superior result sufficient to overcome any
prima facie case of obviousness based on Vogel, Dewart, Jeong and Malo.
Appellants do not point to evidence of unexpected results in addition to that
discussed above with respect to the rejection based on Vogel, Dewart and Jeong.
We have considered the evidence of unexpected results pointed out to us by
Appellants in combination with the other evidence relied upon in the Examiner’s
rejection. We have considered the arguments presented in the Appellants’ Reply
but do not find these arguments to provide any persuasive reason why the
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Examiner’s conclusion of obviousness was incorrect. Based upon a consideration
of the totality of this evidence and the record before us we conclude that the
Examiner’s rejection of claims 10-13, 20-22, and 29 was not in error.
V. Decision
Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that the decision of the Examiner rejecting claims 1-4, 9,
14-17, 19, 23-26, and 28 under 35 U.S.C. § 103(a) as being unpatentable over
Vogel in view of Dewart and Jeong is affirmed',
FURTHER ORDERED that the decision of the Examiner rejecting
claims 10-13, 20-22, and 29 under 35 U.S.C. § 103(a) as being unpatentable over
Vogel in view of Dewart and Jeong and further in view of Malo et al. is affirmed',
and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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