Martin Bussmann et al.

Patent Trials and Appeals Board

Sep 26, 2019

14422902 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/422,902 02/20/2015 Martin Bussmann 074008-1638-US-522893 1313
123223 7590 09/26/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN BUSSMANN,
UWE WITT, and JÖRG KOHL
____________

Appeal 2019-000341
Application 14/422,902
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 7–11, 13, and 16–21 of
Application 14/422,902 under 35 U.S.C. § 103(a) as obvious. Final Act. 2–3,
7, and 8 (Oct. 11, 2017). After Appellant amended the claims, the Examiner
modified the grounds of rejection.1 Adv. Act. 2, 6 (filed Jan. 12, 2018).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE.
Appeal Br. 2.
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Appellant seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).2
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’902 Application describes biodegradable polymer mixtures for
the production of thin-walled injection-molded parts. Spec. 1:1–6.
Claim 1 is representative of the ’902 Application’s claims and is
reproduced below from the claims listing in the Corrected Claims Appendix
to the Appeal Brief:
1. An injection-molded item that comprises a wall thickness
from 0.3 to 0.7 mm, the item formed from a polymer mixture
comprising:
(A) from 15 to 50% by weight, based on components
A and B, of a biodegradable, aliphatic-aromatic polyester with
MFR (190°C/2.16 kg in accordance with ISO 1133) of from
[110] to 150 g/10 min comprising:
i. from 52 to 65 mol%, based on components i to ii,
of adipic acid and/or of sebacic acid derivatives;
ii. from 48 to 35 mol%, based on components i to ii,
of a terephthalic acid derivative;
iii. from 98 to 100 mol%, based on components i to ii,
of a C2–C8-alkylenediol or C2–C6-oxyalkylenediol; and
i[v]. from 0 to 2% by weight, based on the total weight
of components i to iii, of a chain extender and/or branching
agent selected from the group consisting of: a di- or
polyfunctional isocyanate, isocyanurate, oxazoline, epoxide,
and carboxylic anhydride, and/or of an at least trihydric alcohol,
or of an at least tribasic carboxylic acid;

2 Appellant canceled claims 18 and 19 by Amendment (filed Dec. 11, 2017).
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(B) from 50 to 85% by weight, based on components
A and B, of polylactic acid with MFR (190°C/2.16 kg in
accordance with ASTM D1238) of from 5 to 50 g/10 min, a
melting point below 240[]°C, and a glass transition temperature
above 55[]°C, and the polylactic acid B forms a continuous
phase and the polyester A forms the disperse phase,
(C) from 0 to 40% by weight, based on the total weight
of components A to D, of an organic filler selected from the
group consisting of: native or plastified starch, natural fibers,
and wood flour, and/or of an inorganic filler selected from the
group consisting of: chalk, calcium carbonate, graphite,
gypsum, conductive carbon black, iron oxide, calcium chloride,
dolomite, kaolin, silicon dioxide (quartz), sodium carbonate,
titanium dioxide, silicate, wollastonite, mica, montmorillonite,
talc powder, glass fibers, and mineral fibers, and
(D) from 0 to 3% by weight, based on the total weight
of components A to D, of at least one stabilizer, nucleating
agent, lubricant and release agent, surfactant, wax, antistatic
agent, antifogging agent, dye, pigment, UV absorber, UV
stabilizer, or other plastics additive.
Corrected Appeal Br., Claims App. 3–4.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 7–11, 16, 17, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hale,3

3 US 2005/0137356 A1, published June 23, 2005.
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Bastioli,4 Knights,5 and Sudo,6 as evidenced by Ingeo 3251D
Technical Data Sheet.7 Answer 3.
2. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hale, Bastioli, Knights, Sudo, and
Murphy.8 Answer 7.
DISCUSSION
Appellant argues for the reversal of the rejection of claims 1, 7–11,
16, and 17 on the basis of limitations recited in claim 1. Appeal Br. 5–15.
Appellant presents additional arguments for reversal of the rejections of
claims 13, 20, and 21. Id. at 15–18. We shall address these additional
arguments below.
Rejection 1. The Examiner rejected claims 1, 7–11, 16, 17, 20, and 21
as obvious over the combination of Hale, Bastioli, Knights, and Sudo, as
evidenced by Ingeo 3251D Technical Data Sheet. Answer 3.

4 US 2008/0194770 A1, published Aug. 14, 2008.
5 Knights, M., Injection Molding Biopolymers: How to Process Renewable
Resin, Plastic Technology, 1–11 (2009) (hereinafter “Knights”).
6 US 2008/0195059 A1, published Aug. 14, 2008.
7 Ingeo™ Biopolymer 3251 D Technical Data Sheet, available at
https://web.archive.org/web/20140323015638/http://www.natureworksllc.co
m/~/media/Technical_Resources/Technical_Data_Sheets/TechnicalDataShe
et_3251D_injection-molding_pdf.pdf, last visited Sept. 3, 2019 (hereinafter
“Ingeo 3251D Technical Data Sheet”).
8 Murphy, J., Chapter 4. Modifying Specific Properties: Mechanical
Properties — Fillers, Additives for Plastics Handbook 20–2135 (2nd ed.
Elsevier 2001) (hereinafter “Murphy”).
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Claim 1
In rejecting claim 1, the Examiner found that Hale describes or
suggests every component and limitation of the claimed injection-molded
item, with the exception of: (i) the wall thickness of the item; and (ii) two
properties exhibited by polymer mixture components, which form the item.
Answer 3–4. Regarding these missing properties, the Examiner specifically
found that Hale is silent regarding the melt flow rates (MFR) of the
copolyester (A) and the polylactic acid (B) components. Id. at 4.
The Examiner found Sodu teaches that an injection-molded syringe
comprising a barrel portion having a hexagonal shape, with sidewalls having
a thickness of 0.5 to 4 mm, reduces the amount of material used to produce
the syringe. Id. (citing Sodu ¶¶ 1, 7, 8, 16, 21, 25–27, and Fig. 3). 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 have formed Hale’s syringe
in Sudo’s configuration in order to reduce the amount of material used to
produce the syringe. Answer 5.
With respect to the copolyester (A) component’s MFR, the Examiner
found Bastioli teaches that polyesters comprising a biodegradable and
flexible copolyester (A) component having an MFR between 1–500 g/10
min as measured at 190°C/2.16 kg were known to be useful for injection-
molding applications. Answer 4 (citing Bastioli ¶¶ 1, 12–36, 93, 94, and
Abstract). The Examiner determined that it would have been obvious to the
ordinarily skilled artisan to have modified Hale’s composition by selecting
Bastioli’s biodegradable and flexible copolyester (A) component, which
exhibits an MFR between 1–500 g/10 min as measured at 190°C/2.16 kg,
because it was known in the art that polyester resins that exhibit an MFR in
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this range are suitable for injection-molding applications. Answer 5. The
Examiner concluded that the MFR of Bastioli’s modified resin would have
rendered obvious the MFR range recited in claim 1. Id. at 6.
Regarding the polylactic acid (B) component’s MFR, the Examiner
found Knights teaches that NatureWorks made an injection-molding grade
polylactic acid resin commercially available under the tradename Ingeo
3251D. Id. at 4 (citing Knights 8). The Examiner found that Knights
discloses that this resin is “useful for forming thin walled injection molded
articles and exhibits good toughness as well as a high modulus.” Answer 4
(citing Knights 8). The Examiner found that Ingeo 3251D Technical Data
Sheet provides evidence that the polylactic acid resin possesses an MFR of
35 g/10 min (as measured at 190°C/2.16 kg), a Tm of 155–170°C, and a Tg of
55–60°C. Answer 4 (citing Ingeo 3251D Technical Data Sheet 1). The
Examiner determined that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made [to have] modified [Hale’s]
composition . . . with teachings of Knights by utilizing
NatureWorks Ingeo 3251D as the PLA component in the
composition because it was known to be suitable for use in
injection molding applications ([see] MPEP §[]2144.07) and
because it exhibits good toughness and a high modulus.
Answer 5. The Examiner concluded that the MFR, Tg, and Tm of Bastioli’s
resin, modified by Knights’ polylactic acid resin, would have met the MFR,
Tg, and Tm requirements of polylactic acid component (B) recited in claim 1.
Id. at 6.
Appellant admits that Hale discloses aliphatic-aromatic polyester
components of the disclosed composition. Appeal Br. 8. Appellant, however,
argues that this component exhibits a maximum MFR of 6 g/10 min, which
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is about 20 times lower than the minimum claimed MFR value. Appeal Br.
8–10; see also Reply Br. 2.
Appellant’s arguments are not persuasive because Hale’s aliphatic-
aromatic polyester, which exhibits an MFR of about 1.8–6 g/10 min, is
merely a preferred embodiment. In other words, Hale’s disclosure is not
limited to this preferred embodiment having “a very low MFR.” Reply Br. 2;
see also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[A]ll disclosure
of the prior art, including unpreferred embodiments, must be considered.”).
We, moreover, agree with the Examiner that the ordinarily skilled artisan
would have been motivated to look to Bastioli, Knights, and Sudo for
teachings regarding suitable MFR values for an injection-molded
application. Answer 9.
Appellant argues that Sudo’s disclosure is “very general” and “does
not specifically disclose” forming a syringe barrel from the claimed polymer
composition. Appeal Br. 10. Appellant further argues that Sudo does not
teach or suggest biodegradable polymers and, thus, cannot direct the
ordinarily skilled artisan to the claimed injection-molded item. Reply Br. 3.
We are not persuaded by these arguments because the Examiner relied
upon Sudo only to teach an injection-molded syringe barrel having a wall
thickness of 0.5–4.0 mm. See generally Answer 3–7. The Examiner,
moreover, did not rely on Sudo for teaching or suggesting the claimed
composition. Id.
Appellant argues that Knights teaches that biopolymers cannot simply
be used as drop-in substitutes for familiar resins, such as polypropylene.
Appeal Br. 11–12. Appellant argues that Knights discloses that one
biopolymer cannot be simply substituted for another biopolymer. Id. at 12.
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Appellant’s arguments are not persuasive because the Examiner does
not propose mere substitution of one biopolymer for another. Answer 10.
Appellant, therefore, has not identified reversible error in the Examiner’s
rejection, which is based on selecting specific grades of polylactic acid and
aliphatic-aromatic polyester resins, each having the claimed MFR values. Id.
As the Examiner found, these grades were known to those of ordinary skill
in the art as suitable for injection-molding. Id.
Although Appellant acknowledges Knights discloses that the
polylactic acid grade “INGEO® 3251 is suitable for thin wall
application[s],” Appellant argues that Knights “does not define the size of
the wall.” Reply Br. 3.
Appellant, however, fails to identify error in the Examiner’s reasons
for combining Knights’ teachings with Hale’s. As the Examiner found, the
ordinarily skilled artisan would have been motivated to modify Hale’s
composition to incorporate Knights’ Ingeo 3251D because doing so would
have provided a thin walled injection-molded article, which exhibits good
toughness as well as a high modulus. See Answer 4; see also, e.g., KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.”).
Appellant argues that the Specification provides data showing the
criticality of the MFR range of the claimed polyester (A). Appeal Br. 13.
According to Appellant, the claimed polymer mixture results in “unexpected
superior results.” Id. at 15. Appellant “believes that maybe the combined
teaching of Hale and Bastioli might lead to reasonable results with a wall
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size of approx. 1 mm[,] but not with a thin wall.” Reply Br. 2. In contrast,
Appellant asserts that the claimed aliphatic-aromatic polyester provides “for
a thin wall from 0.3 to 0.7 mm[,] which delivered surprisingly better
results.” Id. at 3, 13–15.
Appellant’s arguments are not persuasive, inter alia, because
“‘arguments of counsel cannot take the place of evidence lacking in the
record.’” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).
We, furthermore, agree with the Examiner that Appellant has not
provided sufficient evidence showing criticality with respect to the MFR
value of from 110 to 150 g/10 min as claimed. See Appeal Br. 15 (describing
that the MFR for inventive polyester A1 exhibited an MFR of 129–130 g/10
min, but the MFR for comparative example 2 exhibited an MFR of 83–84.5
g/10 min), 13; see also Answer 11. On this evidence, Appellant has not
sufficiently demonstrated that the allegedly unexpected results of thin walls
and reductions in injection pressure and mold fill occur across the claimed
MFR range of 110–150g/ 10 min., but do not occur below and above that
range. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Unexpected
results must also be “commensurate in scope with the degree of protection
sought by the claims on appeal.”); see also In re Graselli, 713 F.2d 731, 743
(Fed. Cir. 1983) (It is well settled “that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.”).
Thus, when we consider all of the evidence, we determine that the
preponderance of the evidence supports the Examiner’s conclusion of
obviousness for claim 1.
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We, therefore, affirm Rejection 1 of claim 1. Thus, we also affirm
Rejection 1 of claims 7–11, 16, and 17, which ultimately depend from claim
1. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 20 and 21
Claims 20 and 21 are reproduced below from the claims listing in the
Corrected Claims Appendix to the Appeal Brief:
20. The injection-molded item according to claim 1, wherein
the MFR (190°C/2.16 kg in accordance with ISO 1133) of the
biodegradable, aliphatic-aromatic polyester is from 110 g/[]10
min to 130 g/10 min.
21. The injection-molded item according to claim 1, wherein
the MFR (190°C/2.16 kg in accordance with ISO 1133) of the
biodegradable, aliphatic-aromatic polyester is from 129 to 150
g/10 min.
Appeal Br., Claims App. 5.
Appellant relies on the same evidence for reversal of the rejection of
independent claim 1. Appeal Br. 17–18. In other words, Appellant argues
that data provided in the Specification demonstrates the criticality of the
claimed MFR ranges. Id.
For the reasons set forth above, the preponderance of the evidence
supports the Examiner’s conclusion of obviousness for claims 20 and 21. On
this record, Appellant has not sufficiently demonstrated that the allegedly
unexpected results of thin walls and reductions in injection pressure and
mold fill occur across the claimed MFR ranges of: (i) 110–130g/10 min and
(ii) 129–150 g/10 min, but do not occur outside of these ranges. See Appeal
Br. 13–15.
We, therefore, affirm Rejection 1 of claims 20 and 21.
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Rejection 2. The Examiner rejected claim 13 as obvious over the
combination of Hale, Bastioli, Knights, Sudo, and Murphy. Answer 7.
Claim 13
Claims 9 and 13 are reproduced below from the claims listing in the
Corrected Claims Appendix to the Appeal Brief:
9. The injection-molded item according to claim 1, where
filler C includes the calcium carbonate and/or the chalk present
from 5 to 30% by weight.
13. The injection-molded item according to claim 9, where
filler C further include[s] talc, where a weight ratio of chalk:talc
is from 2:5 to 5:1.
Appeal Br., Claims App. 4.
In rejecting claim 13, the Examiner found that modified Hale teaches
or suggests every limitation of the polymer mixture composition that forms
an injection-molded item recited in claims 1 and 9. Answer 7. Although
Hale teaches incorporating 0–30 wt% of one or more fillers (such as calcium
carbonate and talc) into the composition, the Examiner found that modified
Hale is silent regarding the selection of the specific ratio of fillers recited in
claim 13. Id.
The Examiner, however, relied upon Murphy’s teachings that calcium
carbonate is useful as a pigment, while talc improves the stiffness, creep
resistance, and tensile strength of polymer compositions. Answer 7–8 (citing
Murphy 20–21, Table 4.2). The Examiner determined, inter alia, that
[i]t would have been obvious to one of ordinary skill in the art
at the time of invention to have adjusted the amounts of calcium
carbonate and talc added to the composition of modified Hale
through routine experimentation in order to arrive at a desired
level of pigmentation and stiffness or tensile strength.
Answer 8.
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Appellant argues that an ordinarily skilled artisan would have had no
reason to modify the ratio of chalk to talc as claimed because Murphy
“discloses a laundry list of . . . []19 types of fillers[].” Appeal Br. 16 (citing
Murphy 20), 17. Appellant further argues that Murphy neither discloses nor
teaches that chalk:talc is present in a ratio from 2:5 to 5:1 as required by
claim 13.
Appellant’s arguments fail to identify reversible error in the
Examiner’s reasoning that one of ordinary skill in the art would have been
motivated to vary the amounts of chalk and talc through routine
experimentation in order to arrive at a desired balance between whiteness
and stiffness. See Murphy 24, 26; see also Answer 8.
We, furthermore, are not persuaded by Appellant’s assertion that
Murphy’s disclosure of 19 types of fillers detracts from the obviousness of
claim 13. Appeal Br. 16–17. On these facts, we agree with the Examiner that
selection of the 2 claimed ingredients to balance whiteness and stiffness out
of Murphy’s 19 possible options would have provided one of ordinary skill
in the art at the time of the invention with a predictable outcome. Answer 8;
see KSR, 550 U.S. at 421 (explaining that where a skilled artisan merely
pursues “known options” from “a finite number of identified, predictable
solutions,” the resulting invention is obvious under Section 103); see also In
re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (Obviousness rejection of
claims affirmed in light of prior art teaching that “hydrated zeolites will
work” in detergent formulations, even though “the inventors selected the
zeolites of the claims from among ‘thousands’ of compounds.”); and In re
Susi, 440 F.2d 442, 445 (CCPA 1971) (Obviousness rejection affirmed
where the disclosure of the prior art was “huge, but it undeniably include[d]
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at least some of the compounds recited in [A]ppellant’s generic claims and
[was] of a class of chemicals to be used for the same purpose as
[A]ppellant’s additives.”).
We, therefore, affirm the Examiner’s Rejection 2 of claim 13.
CONCLUSION
In summary:
Claims
Rejected Basis Affirmed Reversed
1, 7–11, 16, 17,
20, and 21
§ 103(a)
Hale
Bastioli
Knights
Sudo
1, 7–11, 16,
17, 20, and 21
13
§ 103(a)
Hale
Bastioli
Knights
Sudo
Murphy
13
Overall Outcome
1, 7–11, 13,
16, 17, 20, and
21

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)(iv).
AFFIRMED