Ex Parte Wright et al

Patent Trial and Appeal Board

Aug 8, 2017

12765362 (P.T.A.B. Aug. 8, 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.
12/765,362 04/22/2010 Kathryn Wright H0006 9273
30522 7590 08/10/2017
KRATON POLYMERS U.S. LLC
16400 Park Row
HOUSTON, TX 77084
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
kr atonip @ kraton .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHRYN WRIGHT and CHANDRA BROWN
Appeal 2015-006915
Application 12/765,362
Technology Center 3600
Before CATHERINE Q. TIMM, CHRISTOPHER L. CRUMBLEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 1, 5-11, 14, and 15 under 35 U.S.C.
§ 112 ^ 1 as lacking enablement, and under 35 U.S.C. § 112 ^ 2 as
indefinite. Ans. 2-5. We have jurisdiction under 35 U.S.C. § 6(b).
1 In explaining our Decision, we cite to the Specification dated April 22,
2010 (Spec.), the Appeal Brief dated December 10, 2014 (Appeal Br.), the
Examiner’s Answer dated June 2, 2015 (Ans.), and the Reply Brief dated
July 14, 2015 (Reply Br.).
2 Appellants identify the real party in interest as Kraton Polymers U.S. LLC.
Appeal Br. 2.
Appeal 2015-006915
Application 12/765,362
We AFFIRM.
The claims are directed to an article made from an elastomeric
compound or a laminate including an elastomeric compound layer. See, e.g.,
claims 1 and 11. All of the claims require the presence of what Appellants
term a cyclic aliphatic tackifying resin. Claims 1 and 11. Claim 1 is
illustrative:
1. An article having high tensile strength and good
adhesion properties comprising:
film, fiber, filament, plurality of filaments, foam,
nonwoven web, parallel strands, or sheet of an elastomeric
compound, or a laminate formed by bonding an elastomeric
compound layer in the form of a film, fiber, filament, plurality
of filaments, foam, nonwoven web, or parallel strands to one or
more facing layers,
said elastomeric compound comprising:
from about 60 to about 80 wt. % selectively
hydrogenated thermoplastic styrenic block copolymer of S-EB-
S, S-EP-S, S-EP-S-EP, S-EB-S-EB, or S-EB/S-S,
from about 17 to about 25 wt. % of cyclic aliphatic
tackifying resin,
from about 4 - 13 wt. % polyolefin, said polyolefin is
polyethylene wax,
said article having a tensile strength of at least 6000 psi
in the MD and/or TD direction, and a Probe Tack (ASTM D
2979) of at least 0.110 Newtons.
Claims Appendix, Appeal Br. 14 (emphasis added).
OPINION
The Examiner has rejected all the claims as both indefinite and as
lacking a disclosure enabled for the full scope of the claims. Ans. 2-5. In
2
Appeal 2015-006915
Application 12/765,362
order to properly consider the enablement question, we must first consider
the question of indefmiteness. This is because to determine “whether the
scope of enablement provided to one of ordinary skill in the art by the
disclosure is such as to be commensurate with the scope of protection sought
by the claims” as is required under the enablement inquiry, In re Moore, 439
F.2d 1232, 1236 (CCPA 1971), one must understand the scope of the claims,
id. at 1235.
The Examiner rejects the claims as indefinite “for failing to
particularly point out and distinctly claim the meaning of ‘cyclic aliphatic’
tackifying resin.” Ans. 11; see also Ans. 5. Appellants contend that the
meaning is clear. Appeal Br. 11-13; Reply Br. 6.
The issue is whether one of ordinary skill in the art would have
understood what tackifying resins are encompassed by the phrase “cyclic
aliphatic tackifying resins.”
After weighing the evidence cited by the Examiner and Appellants,
particularly the evidence found in the Specification and prior art relevant to
the meaning of the phrase to one of ordinary skill in the art, we determine
that a preponderance of the evidence supports the Examiner’s rejection.
The relevant facts are as follows.
According to the Specification, Appellants’ invention “relates to an
elastomeric compound having selectively hydrogenated thermoplastic block
copolymer, cyclic aliphatic tackifying resin and polyolefin and/or
polystyrene.” Spec. 1.
The Specification indicates that such elastomeric compositions
containing tackifying resins were known in the art. Spec. ^ 4, citing U.S.
Patent 6,916,750 to Thomas. According to the Specification, the product
functions well, but is expensive. Id. Appellants state that the components of
3
Appeal 2015-006915
Application 12/765,362
Thomas’ composition are the same as the composition of the present
invention except for the cyclic aliphatic content of the tackifying resin.
Appeal Br. 11; see also Spec. ^ 8. According to the Specification, it is
desirable to produce elastic articles having superior tensile strengths, among
other properties, at a reduced cost. Spec. ^ 7.
The Specification includes examples that compare compositions
containing either Arkon P125 or Arkon PI40 or their mixtures to a
composition containing Regalrez 1126. Spec. 31-34.
Appellants indicate that Reglarez 1126 “is used in the closest prior art
to Thomas et al.” Appeal Br. 12.3 The comparative composition containing
Regalrez 1126 has lower tensile strength whereas the tested compositions
containing Arkon PI25 and PI40 had, according to the Specification,
“unexpectedly high tensile properties.” Spec. ^ 33.
From the examples, one can deduce that Appellants intend Arkon
PI25 and PI40 to be included in the scope of “cyclic aliphatic tackifying
resin[s]” whereas Regalrez 1126 is not. Spec. ^ 32.
Paragraph 27 of the Specification appears to enlarge the scope of
cyclic aliphatic tackifying resins beyond Arkon PI25 and PI40 to include
those sold under the trademark Oppera. Spec. ^ 27. This paragraph even
further enlarges the scope by stating that cyclic aliphatic tackifying resins
“include polystyrene block compatible resins as well as polyolefin block
compatible resins and midblock (rubbery block) compatible resins” that
“may be selected from the group consisting of compatible Cs hydrocarbon
resins, hydrogenated Cs hydrocarbon resins, styrenated Cs resins, Cs/ C9
3 Although Thomas discloses Regalrez 1126 as a preferred tackifying resin,
Thomas also suggests using Arkon resins. Thomas col. 7,11. 8-22.
4
Appeal 2015-006915
Application 12/765,362
resins, styrenated terpene resins, fully hydrogenated or partially
hydrogenated C9 hydrocarbon resins, rosin esters, rosin derivatives and
mixtures thereof.” Spec. ^ 27.
On October 1, 2013, Appellants filed declarations by Dr. Tracy
Armstrong, an employee of the assignee, Kraton Polymers U.S. LLC, and
Dr. Kathryn Wright, one of the named inventors. Dr. Armstrong’s
Declaration states that she conducted proton NMR analyses on Arkon P125,
Arkon PI40, Regalrez 1126 and Oppera 100A to determine their chemical
structure. Armstrong Decl. ^ 5.
Dr. Armstrong declares that Arkon PI40 had the highest amount of
cyclic aliphatic content and a significant aromatic content, and Arkon PI25
had more cyclic aliphatic structure than Oppera 100A or Regalrez 1126.
Armstrong Decl. ^ 6. Oppera 100A is a cyclic aliphatic molecule with
aromatic content mixed throughout, but with less aromatic content than
Arkon. Armstrong Decl. ^ 7. Moreover, Regalrez 1126 had very little
cyclic aliphatic content. Armstrong Decl. ^ 8.
The Appellants and Examiner agree that when referring to a single,
simple compound, “aliphatic” and “aromatic” are mutually exclusive.
Compare Appeal Br. 12, with Ans. 5 (citing definition of “aliphatic” in
Wikipedia). According to the Wikipedia entry that we believe was cited by
the Examiner,
In organic chemistry, hydrocarbons (compounds
composed of carbon and hydrogen) are divided into two
classes: aromatic compounds and aliphatic compounds
(/.seh'fsetik/; G. aleiphar, fat, oil) also known as nonaromatic
compounds. Aliphatics can be cyclic, but only aromatic
compounds contain an especially stable ring of atoms, such as
benzene.
5
Appeal 2015-006915
Application 12/765,362
Wikipedia, https://en.wikipedia.org/wiki/Aliphatic_compound (last visited
August 8, 2017) (citing IUPAC, Compendium of Chemical Terminology,
2nd ed. (the “Gold Book”) (1997). Online corrected version: (1995)
“aliphatic compounds”)). The Gold Book defines aliphatic compounds as
“[a]cyclic or cyclic, saturated or unsaturated carbon compounds, excluding
aromatic compounds.” IUPAC. Compendium of Chemical Terminology,
2nd ed. (the “Gold Book”) corrected version: http://goldbook.iupac.org
(2006) Last update: 20140224; version: 2.3.3.
Neither the Specification nor the Declarations provide any guidance
on how much acyclic aliphatic and aromatic content can be present in a
tackifying resin before it is no longer a cyclic aliphatic tackifying resin. Nor
have Appellants provided evidence that tackifying resins were
conventionally classified as cyclic aliphatic as opposed to acyclic aliphatic
or aromatic. Nor have Appellants provided evidence that those of ordinary
skill in the art understand how to divide the tackifying resins into such
classifications, if such classifications exist.
Moreover, paragraph 27 of the Specification refers to resins
containing aromatic groups, such as styrenated Cs resins, as cyclic aliphatic
tackifying resins.
The second paragraph of 35 U.S.C. § 112 requires the specification
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112^2 (2011). “As the statutory language of ‘particular[ity]’ and
‘distinctness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). Exact precision is not required. The test for
determining the question of indefmiteness may be formulated as whether the
6
Appeal 2015-006915
Application 12/765,362
claims “set out and circumscribe a particular area with a reasonable degree
of precision and particularity.” Moore, 439 F.2d at 1235. With regard to the
reasonableness standard, one must consider the language in the context of
the circumstances. Packard, 751 F.3d at 1313. “[T]he definiteness of the
language employed must be analyzed—not in a vacuum, but always in light
of the teachings of the prior art and of the particular application disclosure as
it would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” Moore, 439 F.2d at 1235.
Given the broad disclosure in the Specification as to what a “cyclic
aliphatic tackifying resin” may include (Spec ^ 27), the fact that such resins
may include aromatic groups such as styrene {id.), the exemplified and
tested resins may include acyclic as well as aromatic components
(Armstrong Decl. 6-8), and the lack of guidance on how tackifying resins
are classified as cyclic aliphatic versus acyclic aliphatic or aromatic, a
preponderance of the evidence on this record supports the Examiner’s
determination that “cyclic aliphatic tackifying resins” as that phrase is used
in the claim is unclear such that this language fails to provide the ordinary
artisan with notice as to the scope of tackifying resins encompassed.
Turning to the rejection of the claims under 35 U.S.C. § 112 ^ 1 as
non-enabled for the full scope of the claims, review of this rejection would
require us to understand the scope of the claims. Because the full scope of
the claims is unclear, we cannot determine whether the claims are enabled
over their full scope. In this case, engaging in speculation as to claim scope
to reach the rejection would be improper. In re Steele, 305 F.2d 859, 134
USPQ 292 (CCPA 1962). Thus, we procedurally reverse the rejection under
35 U.S.C. §112 ^ 1 without reaching the merits of the rejection.
7
Appeal 2015-006915
Application 12/765,362
CONCLUSION
We sustain the Examiner’s rejection of claims 1, 5-11, 14, and 15
under 35 U.S.C. § 112^2. We do not reach the merits of the rejection under
35U.S.C. § 112 ^ 1, but instead procedurally reverse this rejection.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
8
Application/Control No. Applicant(s)/Patent Under Patent
Notice of References Cited 12/765,362
Appeal No.
2015-006915
Examiner Art Unit
3649 Page 1 of 1
U.S. PATENT DOCUMENTS
7C Document Number
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Date
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A us-
B US-
C US-
D US-
E c GO
F US-
G US-
H US-
i US-
J US-
K US-
L US-
M c GO
FOREIGN PATENT DOCUMENTS
* Document Number
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Dste
MM-YYYY Country Name Classification
N
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P
Q
R
S
T
NON- PATE NT DOC U M ENTS
* include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
U Wikipedia, https://en.wildpedia.org/wiki/Aiiphaiic___compound (iast visited August 8, 2017).
V IUPAC, Compendium of Chemical Terminology, 2nd ed. (the "‘Gold Book”) (1997).
w
X
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Dates in MM-YYYY forma! are publication dates. Classifications may be US or foreign.
tJ.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Nolice o? References Cited Part of Paper No.
8/3/2017 Aliphatic compound - Wikipedia
Aliphatic compound
From Wikipedia, the free encyclopedia
In organic chemistry, hydrocarbons (compounds composed of carbon and
hydrogen) are divided into two classes: aromatic compounds and aliphatic
compounds (/.teh'faettk/; G. aleiphar, fat, oil) alsc
■ A1 iphatie compounds
can be saturated, like hexane, or unsaturated, like hexene and hexyne.
Open-chain compounds (whether straight or branched) contain no rings of
any type, and are thus aliphatic.
Contents
■ 1
■ 2
■ 3
■ 4
■ 5
Structure
Properties
Examples of aliphatic compounds / non-aromatic
See also
References
Structure
Aliphatic compounds can be saturated, joined by single bonds (alkanes), or
unsaturated, with double bonds (alkenes) or triple bonds (alkynes). Besides
hydrogen, other elements can be bound to the carbon chain, the most common
being oxygen, nitrogen, sulfur, and chlorine.
l—l l_Jn n n
! H-C-C-C-
H H H
t-in
1
C-H !
1
H
acyclic aliphatic compound or non­
aromatic (butane)
H H
I I
H-C-C-H
I I
...... C' i—iw w n
i i
....... H.... H.......
Cyclic aliphatic/non­
aromatic compound
(cyclobutane)
The least complex aliphatic compound is methane (CH4).
Properties
Most aliphatic compounds are flammable, allowing the use of hydrocarbons as fuel, such as methane in Bunsen
burners and as liquefied natural gas (LNG), and acetylene in welding.
Examples of aliphatic compounds / non-aromatic
The most important aliphatic compounds are:
■ n-, iso- and cyclo-alkanes (saturated hydrocarbons)
■ n-, iso- and cyclo-alkenes and -alkynes (unsaturated hydrocarbons).
Important examples of low-molecular aliphatic compounds can be found in the list below (sorted by the number of
carbon-atoms):
https ://en. wi ki pedia.org/wi ki/AI i phatic_com pound 1/3
8/3/2017 Aliphatic compound - Wikipedia
Formula Name Structural Formula Chemical Classification
ch4 Methane
H
!
H vhH
Alkane
c2h2 Ethyne H-CSSC-HH Alkyne
c2h4 Ethene
Li LJn n
\ /
c=c
/ \
H H
Alkene
c2h6 Ethane
H H
§ 1
H__c—-C—B
! !
H H
Alkane
c3h4 Propyne
H
H C—;0 e H
H
Alkyne
c3h6 Propene
Li LJn ri
\ /
/C=C
LJ f^LJn Urlg
Alkene
c3h8 Propane
B H H
i ; 1
H“C“C“C“H
f : 1
H H H
Alkane
c4h6 1,2-Butadiene
(CAS# 590-19-2)
CH,
^ \
B
Diene
c4h6 1-Butyne
H H
i i
H—C—'C—^—H
H H
Alkyne
c4h8 1-Butene Alkene
C4H10 Butane
H H H H
l T Y ;t-i-C-D-e-C-H
S i f ■
H H H H
Alkane
C6H10 Cyclohexene
f VlN
Cycloalkene
C5H12 w-pcntanc H$0‘ v' CHy Alkane
c7h14 Cycloheptane \
\...../
Cycloalkane
C7H14 Methylcyclohexane Cyclohexane
CgH8 Cubane
H
H i
W)
\/H
Cyclobutane
https ://en. wi ki pedia.org/wi ki/AI i phatic_com pound 2/3
8/3/2017 Aliphatic compound - Wikipedia
C9H20 Nonane \ Alkane
cioH12 Dicyclopentadiene AA b-.. . | Diene, Cycloalkene
y jJQly 1
^10^16 Phellandrene
CH.- C^d-
••'•s ..it, ̂ :
bv,9 b...-■ \ Terpene, Diene Cycloalkene
...-V .--'-s iH,:’-'' 'C-H. H.C CH-,
^10^16 a-Terpinene
pH.
h3c - v $ ; \ Terpene, Cycloalkene, Diene
CHS :
ck)H16 Limonene
L>N CHi ]
b J b ,J i Terpene, Diene, Cycloalkene
C11H24 Undecane w' ■ v'ch:; \ Alkane
C30H50 Squalene ' Tcrpene, Polyene
C2nH4n Polyethylene
/ H H \
/ 1 1 \
4-C-C-4 | Alkane
\H h/
See also
■ Aromatic compound
References
1, IUPAC, Compendium of Chemical Terminology, 2nd eel. (the ’‘Gold Book") (1997). Online correc
version: 0995) "aliphatic compounds (http://goldbook.iupac.org/A00217.html)".
Retrieved from "https://en.wikipedia.org/w/index.php?title=Aliphatic_compound&oldid=777918408"
■ This page was last edited on 30 April 2017, at 02:22.
■ Text is available under the Creative Commons Attribution-ShareAlike License; additional terms may apply.
By using this site, you agree to the Terms of Use and Privacy Policy. Wikipedia® is a registered trademark
of the Wikimedia Foundation, Inc., a non-profit organization.
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8/2/2017 IUPAC Gold Book - aliphatic compounds
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Cite as:
IUPAC. Compendium of Chemical Terminology, 2nd ed. (the "Gold Book"). Compiled
by A. D. McNaught and A. Wilkinson. Blackwell Scientific Publications, Oxford (1997).
XML on-line corrected version: http://goldbook.iupac.org (2006-) created by M. Nic, J.
Jirat, B. Kosata; updates compiled by A. Jenkins. ISBN 0-9678550-9-8.
https://doi.org/10.1351/goidbook.
Last update: 2014-02-24; version: 2.3,3.
DO I of this term: https://doi.org/10.1351/goidbook.A00217.
Original PDF version: http://www.iupac.org/goldbook/A00217.pdf. The PDF version is
out of date and is provided for reference purposes only. For some entries, the PDF
version may be unavailable.
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Current PDF version | Version for print | History of this term
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