Lisa Draexlmaier GmbHDownload PDFPatent Trials and Appeals BoardDec 1, 20202020003692 (P.T.A.B. Dec. 1, 2020) Copy Citation 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. Appeal 2020-003692 Application 15/509,468 2 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 Appeal 2020-003692 Application 15/509,468 3 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 Appeal 2020-003692 Application 15/509,468 4 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. Appeal 2020-003692 Application 15/509,468 5 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). Appeal 2020-003692 Application 15/509,468 6 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. Appeal 2020-003692 Application 15/509,468 7 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 Copy with citationCopy as parenthetical citation