Russell Neuman et al.

Patent Trials and Appeals Board

Nov 8, 2021

2020006468 (P.T.A.B. Nov. 8, 2021)

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.
15/389,391 12/22/2016 Russell Neuman ACT-0100 4641
117828 7590 11/08/2021
Richards IP Law
310 Chase Lane
Marietta, GA 30068
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
11/08/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUSSELL NEUMAN and PETER PFÖRTNER1
____________

Appeal 2020-006468
Application 15/389,391
Technology Center 1700
____________

Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, 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 1–21, 28, and 29. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to “extruded polymers having a
random coloration,” and to associated methods of extruding a mixture. E.g.,
Spec. 1:14–15; Claim 1. Claim 1 is reproduced below from page 20 (Claims
Appendix) of the Appeal Brief:

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
Advanced Color Technologies, LLC. Appeal Br. 4.
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1. A method comprising extruding a mixture wherein the mixture
comprises:
a plurality of pellets or granules of a first thermoplastic polymer;
a plurality of pellets or granules of a color masterbatch
comprising a thermoplastic carrier polymer having one or more
pigments dispersed therein for coloring the first thermoplastic
polymer to a first color or shade, wherein the thermoplastic
carrier polymer is compatible with the first thermoplastic
polymer;
a plurality of pellets or granules of a second thermoplastic
polymer having a second color or shade;
an amount of a compatibilizer such that the first thermoplastic
polymer and the second thermoplastic polymer do not
delaminate when extruded; and
wherein the second thermoplastic polymer is incompatible with
the first thermoplastic polymer and wherein the first color or
shade is different from the second color or shade.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1, 8, 9, 11–18, 28, and 29 over Royce (US 5,688,839,
issued Nov. 18, 1997) and Tomova (US 2005/0228102 A1, published
Oct. 13, 2005).
2. Claims 1, 8–18, 28, and 29 over Royce, Tomova, and Huynh-Ba
(US 5,234,993, issued August 10, 1993).
3. Claims 1–9, 11–21, 28, and 29 over Royce, Tomova, and Locke
(US 5,756,020, issued May 26, 1998), and Hostalen ACP 6031 D data sheet
(dated Feb. 13, 2013) (of record).
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ANALYSIS
The Appellant argues the claims as a group. We select claim 1 as
representative, and the remaining claims will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated May 3, 2019, and in the Examiner’s Answer.
The Examiner finds that Royce teaches methods for making colored
resin composites, and that Royce teaches or suggests each element of
claim 1 except that Royce does not teach inclusion of a compatibilizer in its
mixture. Ans. 4–7. The Examiner finds, inter alia, that Royce teaches or
suggests that its mixture may comprise polyethylene as a “background
component” (i.e., the first thermoplastic polymer of claim 1) and nylon as an
“accent component” (i.e., the second thermoplastic polymer of claim 1). Id.
at 4–6. The Examiner finds that Tomova teaches that “polyamides (i.e.
nylon) in general do not mix with polyolefins [e.g., polyethylene] due to
different polarities and structure differences,” and that “bonding agents are
used to improve compatibility.” Id. at 7. The Examiner finds that it would
have been obvious to use a compatibilizer with the polyethylene/nylon
mixture of Royce in view of Tomova’s disclosure that compatibilizers
improve miscibility and compatibility between polyethylene and nylon. Id.
at 8.
The Appellant does not contest the Examiner’s finding that Royce
teaches or suggests ingredients that correspond to the “first thermoplastic
polymer,” “color masterbatch,” and “second thermoplastic polymer” of
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claim 1. See generally Br. Nor does the Appellant contest the Examiner’s
finding that polyethylene and nylon constitute “incompatible” polymers
within the scope of claim 1. See generally id. Instead, the Appellant argues
that “Royce discloses eight exemplary polymers” for the component for
which the Examiner selected polyethylene, and “eleven exemplary
polymers” for the component for which the Examiner selected nylon. Id. at
9–10. The Appellant argues that, because Royce does not expressly disclose
a specific example that simultaneously uses polyethylene and nylon as two
of its components, Royce teaches away from the claimed subject matter, and
a person of ordinary skill in the art would not have selected both
polyethylene and nylon as components of Royce’s mixture because Royce
allegedly desires “compatible” polymers rather than “incompatible”
polymers as recited by claim 1. Id. at 11–13.
Those arguments are unpersuasive for reasons explained by the
Examiner in the Answer. See Ans. 9–15. We adopt the Examiner’s findings
and conclusions as our own. See id. We emphasize that it would have been
obvious to select polyethylene as Royce’s “background component” because
polyethylene is expressly disclosed as one of only eight preferred
background components, and it would have been obvious to select nylon as
Royce’s accent component because nylon is disclosed as one of only eleven
preferred accent components. See Royce at 3:5–7, 11–19; see also 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.”). That Royce does not
disclose a specific working example that includes both polyethylene and
nylon, see Br. 9–11, is not indicative of reversible error in the rejection
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because “a reference is not limited to the disclosure of specific working
examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
We disagree with the Appellant’s assertion that Royce teaches away
from the use of “incompatible” polymers such as polyethylene and nylon
because, as explained above, Royce expressly teaches limited numbers of
preferred ingredients, some of which are “incompatible” with each other,
and the Appellant does not persuasively identify any portion of Royce that
indicates that only compatible polymers may be selected for Royce’s
background and accent components. On the contrary, Royce expresses a
preference that certain of its ingredients are compatible with each other, but
expresses no preference that its background component and accent
component are compatible with each other. See Royce at 4:3–5. Moreover,
Royce teaches that its accent particles “do not disperse as readily through the
colorless natural resin,” which “creates the marbleized appearance” that is
specifically desired by Royce. Id. at 5:20–30. That disclosure is consistent
with the Examiner’s determination that a person of ordinary skill in the art
reasonably would have had reason to select incompatible polymers (e.g.,
polyethylene and nylon) as Royce’s background component and accent
component.
The Appellant’s argument that a person of ordinary skill in the art
would not have had reason to use Tomova’s compatibilizer with Royce
because “the polymers used by Royce are not incompatible,” Br. 12, is
unpersuasive because, as explained above, we disagree with the Appellant’s
assertion that Royce requires the use of compatible polymers. The
Appellant’s argument that the “object of the present invention” is different
from that of Royce, id., is unpersuasive because, “[i]n determining whether
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the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007).
We have carefully considered the Appellant’s arguments, and we are
not persuaded that the Appellant has identified reversible error in the
Examiner’s rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
1, 8, 9, 11–
18, 28, 29 103 Royce, Tomova
1, 8, 9, 11–18,
28, 29
1, 8–18, 28,
29 103
Royce, Tomova,
Huynh-Ba 1, 8–18, 28, 29
1–9, 11–21,
28, 29 103
Royce, Tomova,
Locke, Hostalen
1–9, 11–21, 28,
29
Overall
Outcome 1–21, 28, 29
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