Lisa Draexlmaier GmbH

Patent Trials and Appeals Board

Dec 1, 2020

2020003692 (P.T.A.B. Dec. 1, 2020)

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.
15/509,468 03/07/2017 Wolfgang FISCHER 12326.0088-00000 1054
22852 7590 12/01/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
12/01/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOLFGANG FISCHER and BERNHARD HUBER1
____________

Appeal 2020-003692
Application 15/509,468
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 22–27 and 30. An oral hearing was held on
November 17, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods for the production of
surface-modified molded bodies, such as injection-molded bodies. E.g.,

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as LISA
DRAEXLMAIER GMBH. Appeal Br. 3.
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Spec. ¶ 1; Claim 22. Claim 22 is reproduced below from page 19 (Claims
Appendix) of the Appeal Brief:
22. A method for the production of a surface-modified molded body,
the method comprising:
providing a mixture comprising a thermoplastic polymer matrix
and a second polymer material, the thermoplastic polymer matrix
having a first weight average molecular weight and a first
polarity and the second polymer material having a second weight
average molecular weight that is lower than the first weight
average molecular weight and a second polarity that is higher
than the first polarity, wherein the second polymer material is
configured to function as an adhesive, the thermoplastic polymer
matrix and the second polymer material being statistically
distributed in the mixture;
injection molding the mixture into an injection-molding tool to
form an injection-molded body, the thermoplastic polymer
matrix and the second polymer material at least partly entering
into a phase separation such that the second polymer material
accumulates on a surface of the injection-molded body;
removing the molded body from the injection-molding tool;
heating and cooling the injection-molded body; and
adhering the surface of the injection-molded body to a first
component, the second polymer material bonding the injection-
molded body to the first component;
wherein the injection-molded body contains a 10-30%
proportion by mass of the second polymer material.
ANALYSIS
Claims 22–27 and 30 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wevers (US 2008/0058455 A1, published Mar. 6, 2008)
and Hess (US 2013/0221731 A1, published Aug. 29, 2013). The Appellant
argues the claims as a group. We select claim 22 as representative, and the
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remaining claims will stand or fall with claim 22. See 37 C.F.R.
§ 41.37(c)(1)(iv).
After review of the cited evidence in the appeal record and the
positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated June 3, 2019, and in the Examiner’s Answer.
Of particular relevance to the arguments raised by the Appellant in
this appeal, the Examiner finds that Wevers discloses a method of making an
injection-molded body comprising a mixture of a thermoplastic polymer and
a second polymer material, and that Wevers teaches that its injection-molded
body may contain 0.3–33 wt% of the second polymer. Ans. 5. The
Examiner finds that the claimed range of 10–30% would have been prima
facie obvious in view of the substantially overlapping range of Wevers.
Ans. 4.
As to the claim requirements that (1) the second polymer has a
“weight average molecular weight that is lower than” that of the first
polymer, and (2) the second polymer has a “polarity that is higher than” that
of the first polymer, the Examiner finds that Wevers teaches first polymers
(e.g., “conventional polypropylene”) that are the same as first polymers
disclosed by the Appellant’s Specification, and that Wevers teaches second
polymers (e.g., AFFINITY GA 1900) that are the same as second polymers
disclosed by the Appellant’s Specification. Id. The Examiner finds that,
“[s]ince the same composition is taught by WEVERS, the same properties
must be present – i.e. the weight average molecular weight of the second
polymer material is lower than that of the thermoplastic matrix, the polarity
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of the second polymer material is greater than that of the thermoplastic
matrix, and the second polymer material is configured to function as an
adhesive.” Id.2
In view of those and other findings less relevant to the issues raised by
the Appellant, the Examiner concludes that the subject matter of claim 22
would have been obvious to a person of ordinary skill in the art. See id. at
3–6.
The Appellant first argues that the disclosure of Wevers concerning
the amount of second polymer in Wevers’ injection-molded body is too
broad to render the claimed range of 10–30% obvious. Appeal Br. 9–12;
Reply Br. 2–4.
That argument is not persuasive. Consistent with the Examiner’s
findings, Wevers teaches a preferred weight % range for its second polymer
of 0.3–33 wt%. See Ans. 3–5 (citing Wevers ¶¶ 8, 22). The Appellant does
not dispute the accuracy of the Examiner’s calculations concerning Wevers’
range. The Wevers range of 0.3–33% substantially overlaps the recited
range of 10–30%. “[E]ven a slight overlap in range establishes a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).

2 As discussed below, the Examiner’s finding in this regard is not
specifically contested, but, for completeness, we observe that the Examiner’s
finding is consistent with Wevers’ disclosures concerning melt flow index
and viscosity, which are indicia of molecular weight. Wevers discloses that
the viscosity of the second polymer “will be below the viscosity of the
polyolefin in the first material.” Wevers ¶ 25. Wevers also discloses that
AFFINITY GA 1900 has a melt flow index substantially higher than
polypropylenes suitable for use as the first polymer. Compare Wevers Table
1, with Wevers Table 4.
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The fact that Wevers discloses working examples that do not fall within the
claimed range of 10–30%, see Appeal Br. 10, is not indicative of reversible
error in the rejection because “a reference is not limited to the disclosure of
specific working examples.” See In re Mills, 470 F.2d 649, 651 (CCPA
1972).
The Appellant also argues that Wevers’ disclosures concerning the
identity of Wevers’ first and second polymers are too broad to render the
claimed mixture obvious. Appeal Br. 12–15; Reply Br.3 5–9.
That argument is not persuasive. Consistent with the Examiner’s
findings, Wevers explicitly teaches polypropylene polymers as suitable
choices for the first polymer of Wevers, see Wevers ¶ 8, Table 4, and
Wevers explicitly teaches AFFINITY GA 1900 as a suitable choice for the
second polymer, id. ¶ 26, Table 1. A person of ordinary skill in the art
would have had reason to select such polymers as the first and second
polymers of Wevers because Wevers explicitly identifies them as suitable
choices. See Wevers ¶¶ 8, 26. The fact that Wevers teaches other suitable
choices does not negate Wevers’ disclosures concerning polypropylenes and
AFFINITY GA 1900. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude
of effective combinations does not render any particular formulation less
obvious.”).
The Appellant does not specifically dispute that selection of polymers
taught or suggested by Wevers as suitable for the first and second polymers

3 To the extent that the Appellant argues unexpected results for the first time
in the Reply Brief, e.g., Reply Br. 7, that argument is waived because it was
not presented in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2).
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would result in a mixture that meets the average molecular weight and
polarity requirements of claim 1, and we discern no reason to reject the
Examiner’s findings concerning those claim requirements. See Reply Br. 7
(acknowledging that, “[i]n the Appeal Brief, Appellant did not argue that
specific combinations of agents would not result in the relationship of
weight average molecular weights and polarities recited in claim 22”). The
Appellant does argue, however, that “Wevers is silent regarding the relative
molecular weights and polarities of its polyolefins,” and that “obviousness
cannot be predicated on what is unknown.” Appeal Br. 13, 15.
That argument is not persuasive because the Examiner’s reason for
selecting polypropylene polymers and AFFINITY GA 1900 as the polymers
of Wevers is not based on allegedly unknown molecular weights and
polarities of those compositions; as set forth above, it is based on the fact
that Wevers expressly discloses those polymers as suitable choices. See
Wevers ¶ 8, ¶ 26, Table 1, Table 4. There does not appear to be any
meaningful dispute that Wevers discloses polymers that, when selected,
result in the recited molecular weight and polarity requirements. See In re
Best, 562 F.2d 1252, 1255–56 (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.”).
On the record before us, we are not persuaded of reversible error in
the Examiner’s rejection of claim 22.
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
22–27, 30 103 Wevers, Hess 22–27, 30
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