Trade Associates, Inc.

Patent Trials and Appeals Board

Nov 1, 2021

2020004376 (P.T.A.B. Nov. 1, 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.
15/846,853 12/19/2017 Bang Fang Lin P235161.US.05 1067
27076 7590 11/01/2021
DORSEY & WHITNEY LLP - Seattle
701 Fifth Avenue, Suite 6100
Columbia Center
Seattle, WA 98104
EXAMINER
WOODWARD, ANA LUCRECIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/01/2021 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):
ip.docket.se@dorsey.com
seattle.ip@dorsey.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BANG FANG LIN

Appeal 2020-004376
Application 15/846,853
Technology Center 1700
____________

Before DONNA M. PRAISS, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 7–11, which constitute all the
claims pending in this application. Claim 3 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Trade
Associates, Inc.” Appeal Br. 3.
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Application 15/846,853

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An elastomeric sanding block conformable to curved or
flat surfaces, wherein the elastomeric sanding block has a Shore
A hardness ranging from about 30 to about 90, and wherein the
elastomeric sanding block is made from a composition
comprising:
an admixture of about 70 to about 90 weight percent of an
ethylene-vinyl acetate copolymer and about 10 to about 30
weight percent of a low-density polyethylene homopolymer,
wherein the admixture is in an amount that ranges from about 35
to about 70 weight percent of the composition;
a filler in an amount that ranges from about 25 to about 60
weight percent of the composition; and
a pigment in an amount of 5 weight percent to about 18
weight percent of the composition, wherein the pigment is
carbon.
Claims Appendix (Appeal Br. 22).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Obeng US 2005/0266226 Al Dec. 1, 2005
Haneda WO 2011/118762 Al Sept. 29, 2011
Igarashi US 2013/0040157 Al Feb. 14, 2013
Copeland US 6,503,612 B1 Jan.7, 2003

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REJECTION2
Claims Rejected 35 U.S.C. § References/Basis
1, 2, 7–11 103 Obeng, Haneda, Copeland

OPINION
Obviousness Rejection of Claim 13
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in 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.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejection for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant argues that the Examiner reversibly erred in finding that
Obeng teaches or suggests “an admixture of about 70 to about 90 weight
percent of an ethylene-vinyl acetate copolymer,” as recited in claim 1
because “[t]he EVA weight percentages of Obeng are notably much lower”
as shown by “the preferred amounts of EVA copolymer in Obeng [which]

2 The Examiner objects to claims 4–6 as being dependent from a rejected
claim and notes that these claims would be allowable if written in
independent form. Final Act. 4.
3 Appellant does not separately argue claims 2 and 7–11. See Appeal Br. 10–
21. All claims stand or fall together with claim 1. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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are at least 25 percentage points less than and up to 85 percentage points less
than the claimed amounts.” Appeal Br. 12. Appellant, however,
acknowledges that “Obeng also discloses ratios of EVA to PE (‘from about
1:9 to about 9: l’ . . . in the blends as further guidance as to how the weight
percentage of each of EVA and PE relate to each other.” Id. at 13 (citing
Obeng ¶ 32).
“But in a section 103 inquiry, ‘the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’” Merck & Co. Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). In this case, the
preferred embodiment of “from about 5 to about 45 wt%” of EVA in Obeng
(Obeng ¶ 33) does not support Appellant’s argument that Obeng teaches “a
maximum 45% by weight EVA.” See Appeal Br. 13.
Moreover, Obeng explicitly provides:
In some advantageous embodiments, the blend has an
ethylene vinyl acetate:polyethylene weight ratio ranging from
about 1:9 to about 9:1. In some preferred embodiments, the blend
has an ethylene vinyl acetate:polyethylene weight ratio ranging
from about 0.6:9.4 to about 1.8:8.2. In other preferred
embodiments, the blend has an ethylene vinyl
acetate:polyethylene weight ratio ranging from about 0.6:9.4 to
about 1.2:8.8.

Obeng ¶ 32. The Examiner’s finding that Obeng’s teachings are not limited
to the 45 wt% EVA embodiment and that Obeng teaches or suggests “an
admixture of about 70 to about 90 weight percent of an ethylene-vinyl
acetate copolymer” is therefore supported by evidence in the record.
Appellant’s argument that “[o]ne of skill would also have no expectation of
successfully increasing the amount of EVA copolymer to be twice the
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maximum disclosed amount” (Appeal Br. 15) is unpersuasive as
unsupported by evidence. See Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”); see
also In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“Obviousness
does not require absolute predictability of success. . . . For obviousness
under § 103, all that is required is a reasonable expectation of success.”).
Appellant’s arguments that “Copeland makes no mention of the
claimed low-density polyethylene homopolymer” and “Haneda makes no
mention of the claimed ethylene-vinyl acetate copolymer” (Appeal Br. 14,
15) are unpersuasive because these references are not cited for these
limitations.
Appellant’s argument that “Haneda guides one of skill to select
titanium oxide, and only titanium oxide, as a pigment” (Appeal Br. 16) is
unpersuasive because it does not explain why other teachings of Haneda
should be ignored – particularly Haneda’s carbon pigment disclosure which
the Examiner relies upon for the limitation “the pigment is carbon.” See
Final Act. 3 (citing Haneda ¶¶ 18, 33, 63, claim 7). Appellant’s own
quotation of Haneda paragraph 33 shows that Haneda describes “carbon
black” as an inorganic pigment along with titanium oxide. Appeal Br. 17
(quoting Haneda ¶ 33). Appellant’s argument that a skilled artisan “would
have no reason to select carbon black from the more than 40 possible
disclosed pigments” (Appeal Br. 17) is unpersuasive. Merely because a prior
art reference discloses a multitude of effective compositions does not render
any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (affirming obviousness of
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composition selected from among more than 1200 compositions disclosed in
patent).
With regard to the limitation “a pigment in an amount of 5 weight
percent to about 18 weight percent of the composition,” the Examiner finds
that “Obeng’s upper limit of ‘about 2%’, which necessarily includes
amounts higher than 2%.” Final Act. 3. We find that the Examiner erred in
finding that “about 2%” encompasses the recited amount of “5 weight
percent to about 18 weight percent.” Such an error, however, is harmless,
because the Examiner additionally finds that it would have been a matter of
routine experimentation for a skilled artisan “to select the appropriate
pigment content in accordance with the desired product color level.” Ans. 8;
see also Final Act. 4 (“Where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.”) (quoting In re Aller, 220 F.2d 454, 456
(CCPA 1955)).4 Appellant does not respond to the Examiner’s finding that a
skilled artisan would have arrived at the recited weight percentages through
routine experimentation. See Appeal Br. 17–19; see also Reply Br. 4–6
(arguing only that the amount disclosed in Obeng is not close enough to the
recited weight percentages). No reversible error has therefore been
identified.
Appellant’s arguments that “Obeng cannot provide any guidance to
include carbon pigment in a sanding bock” (Appeal Br. 15) and that “[a]
pigment is not an ingredient of the sanding blocks of Copeland” (Appeal Br.

4 The Examiner additionally finds that “Haneda clearly discloses preferred
pigment amounts of up to 10 parts by mass based on 100 parts by mass of
the total of polyolefin and EVA.” Final Act. 5 (citing Haneda ¶ 63).
Appellant does not challenge this finding.
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19) is unpersuasive because Obeng and Copeland were not cited for the
teaching of a carbon pigment and a pigment, respectively.
Appellant lastly argues that “Haneda is directed to food packaging
materials” and “provides no guidance on components of sanding blocks.”
Appeal Br. 19. Appellant, however, does not argue that Haneda is non-
analogous art. Appellant argues “Haneda provides no guidance to modify the
cited references to include a pigment in a sanding block, let alone a carbon
pigment, as claimed” (Appeal Br. 20), but a proper obviousness “analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[W]hen the question is
whether a patent claiming the combination of elements of prior art is
obvious,” the answer depends on “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 417. The record before us shows that the Examiner’s
obviousness analysis is supported by “some articulated reasoning with some
rational underpinning” (id. at 418; see Final Act. 3–4) and no reversible
error has been identified by Appellant.
CONCLUSION
The Examiner’s rejections are affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 7–11 103 Obeng, Haneda,
Copeland
1, 2, 7–11
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED