Ex parte Talkowski

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.
12/358,835 	0112312009 	Charles John Talkowski 	PP0042USNA 	3258
23906 	7590 	05/24/2013 	EXAMINER
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER 	JONES JR., ROBERT STOCKTON
BARLEY MILL PLAZA 25 ART UNIT 	PAPER NUMBER
4417 LANCASTER PIKE
WILMINGTON, DE 19805 	1762
NOTIFICATION DATE 	DELIVERY MODE
0512412013 	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 addressees):
PTO-Legal.PRC@usa.dupont.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES JOHN TALKOWSKI
Appeal 2012-002290
Application 12/358,835
Technology Center 1700
Before FRED E. McKELVEY, GEORGE C. BEST and DONNA M. PRAISS,
Administrative Patent Judges.
McKELVEY, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2012-002290
Application 12/358,835
Statement of the case
1 	E.!. du Pont de Nemours and Company ("applicant"), the real party in
2 	interest (Brief, page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection
3 	dated 22 December 2010.
4 	The application was filed in the USPTO on 23 January 2009.
5 	The application on appeal claims priority of Provisional Application
6 	611023,220, filed 24 January 2008.
7 	The application has been published as U.S. Patent Application Publication
8 	2009/0192268 Al (30 July 2009).
9 	In support of prior art rejections, the Examiner relies on the following
10 	evidence.
Chen et al.
"Chen"
U.S. Patent 5,554,120 	10 Sept. 1996
Kurian et al.
"Kurian"
U.S. Patent 6,245,844 Bl 	12 June 2001
Ro lland et al.
"Rolland"
U.S. Published Patent Application
2005/0112372 Al
26 May 2005
Wakabayashi et al.
"Wakabayashi I"
Coassembly ofFatty Acid Salts and
Semicrystalline Ionomers,
AMERICAN PHYSICAL SOCIETY
ABSTRACT #N17.004
APS March 2003 meeting
Mar. 2003
C. E. Carraher, Jr.
"Carraher"
POLYMER CHEMISTRY, pages 49-53
(ISBN 0-203-91130) (6th ed.)
2003
Applicant does not contest the prior art status of the Examiner's evidence.
2
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Appeal 2012-002290
Application 12/358,835
We mention the following additional evidence in this opinion:
Wakabayashi et al.
"Wakabayashi 2"
Ethylenel(meth)acrylic acid ionomers
plasticized and reinforced by metal
soaps, 47 POLYMER 2874-2883
2006
K. Wakabayashi
"Wakabayashi 3"
Structure-Property Relationships in
Semicrystalline Copolymers and
Ionomers, Ph.D. Thesis
Princeton University
Jan. 2006
2 	We have jurisdiction under 35 U.S.C. § 134(a).
3 	Claims on appeal
4 	Claims 1-20 are on appeal. 	Brief, page 1; Answer, page 3.
5 	Claim 1, which we reproduce from the Claims Appendix of the Brief
6 	(page 15), reads [matter in brackets and some indentation added; principal
7 	limitations in issue in italics]:
8 	A thermoplastic composition comprising or produced from,
9 	based on the weight of the thermoplastic composition, [A] about 70 to
10 	about 99.8 % of a polyester composition and [B] a modifier wherein
11 	[1] 	the polyester composition [A] comprises poly(trimethylene
12 	terephthalate) or poly(tetramethylene terephthalate), or combinations
13 	thereof;
14 	[2] 	the modifier [B] comprises [2.1] at least one aliphatic,
15 	monofunctional organic acid, [2.2] at least one ionomer derived from
16 	an ethylene acid copolymer, and [2.3] optionally at least one ethylene
17 	ester copolymer;
18 	[3] 	the organic acid [2.1] has 4 to 36 carbon atoms, optionally
19 	substituted with a C l -8 alkyl group;
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Application 12/358,835
1 	[4] 	the [ethylene] acid copolymer [basis of ionomer 2.2]
2 	comprises [4.1] copolymerized comonomers of ethylene, [4.2] all]
3 	copolymerized comonomers of at least one C 3-8 a,~-ethylenically
4 	unsaturated carboxylic acid, and [4.3] optionally a copolymerized
5 	comonomer of at least one C 3-8 a,~-ethylenically unsaturated
6 	carboxylic acid ester;
7 	[5] 	the ethylene ester copolymer [2.3] J.vherein [2] comprises,
8 	based on the weight of the ethylene ester copolymer,
9 	(i) about 20 to about 95% of copolymerized units of
10 	ethylene,
11 	(ii) 0 to about 25% of copolymerized units of at least one
12 	ester of the formula CH 2 =C(R I )C0 2 R 2 , and
13 	(iii) 0 to about 80 vieight[3] % of copolymerized units of
14 	at least one ester of the formula CH 2 =C(R 3 )C0 2 R 4 ;
15 	[wherein] (ii) and (iii) cannot both be 0 vieight[4] %;
16 	RI is hydrogen or an alkyl group having 1 to 6 carbon
17 	atoms;
18 	R2 is a glycidyl group;
19 	R3 is hydrogen or an alkyl group having 1 to 8 carbon
20 	atoms; and
21 	R 4 is an alkyl group having 1 to 8 carbon atoms;
The word "a" appears to be unnecessary.
2 	The word "wherein" appears to be unnecessary.
3 	The word "weight" appears to be unnecessary in view of the language "based
on the weight of the ethylene ester copolymer" set out earlier in the claim.
4 	See n.3.
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[6] 	from about 75 % to about 100 % of the combined
acid moieties in the modifier [B] are neutralized to form salts
with metal cations; and
[7] 	the cations [6] comprise at least about 75
equivalent % of magnesium, calcium, zinc, or combinations of
two or more thereof
The rej ections
In the Answer, the Examiner maintains the following rejections.
Rejection 1: 	Claims 1-4,14-16 and 18-19 stand rejected under § 103 as
being unpatentable over Chen and Wakabayashi 1. 	Answer, page 5.
In presenting its appeal, applicant does not separately argue the patentability
of Claims 2-4, 14-16 and 18-19 apart from Claim 1. 	Accordingly, we address only
Claim 1. 	37 C.P.R. § 41.37(c)(l)(vii).
Rejection 2: 	Claims 5-7 stand rejected under § 103 as being unpatentable
over Chen, Wakabayashi 1 and Rolland. 	Answer, page 11.
In presenting its appeal of Rejection 2, applicant does not make an argument
apart from the arguments presented with respect to Rejection 1. 	The patentability
of Claims 5-7 therefore stands or falls with the patentability of Claim 1.
Rejection 3: 	Claims 8-9, 12-13, 17 and 20 stand rejected under § 103 as
being unpatentable over Chen, Wakabayashi 1 and Kurian. 	Answer, page 13.
In presenting its appeal of Rejection 3, applicant does not make an argument
apart from the arguments presented with respect to Rejection 1. 	The patentability
of Claims 8-9, 12-13, 17 and 20 therefore stands or falls with the patentability of
Claim 1.
Rejection 4: 	Claims 10-11 stand rejected under § 103 as unpatentable over
Chen, Wakabayashi 1, Kurian and Rolland. 	Answer, page 16.
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In presenting its appeal of Rejection 4, applicant does not make an argument
apart from the arguments presented with respect to Rejection 1. 	The patentability
of Claims 10-11 therefore stands or falls with the patentability of Claim 1.
Analysis
Background
A Background of the Invention portion of applicant's Specification states
(page 1:16 to page 3:12; see also Brief, page 6) (bold added):
Thermoplastic polymers are commonly used to manufacture
various shaped articles that may be utilized in applications such as
automotive parts, food containers, signs, and packaging materials.
Shaped articles may be prepared from polyester by a number of melt
extrusion processes known in the art, such as injection molding,
compression molding, blow molding, and profile extrusion.
The most common polyester currently used is polyethylene
terephthalate (PET). 	Due to recent trends toward sustainability and
reduced use of petroleum, altenlatives to PET are being investigated.
Poly(trimethylene terephthalate), herein abbreviated 3GT, also
referred to as PTT or polypropylene terephthalate, may be useful in
many materials and products .... 	3GT has properties including a
semi-crystalline molecular stnlcture.
British Patent 578097 disclosed the synthesis of3GT in 1941.
3GT may be prepared using 1,3-propanediol derived from petroleum
sources or from biological processes using renewable resources
("bio-based" synthesis). The ability to prepare 3GT from renewable
resources makes it an attractive alternative to PET.
* * *
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Application 12/358,835
Use of reinforcements [in 3GT] may lead to higher viscosity,
poor surface gloss, and poor scratch and mar resistance and other
esthetic effects. 	The increased interest in 3GT as a replacement for
PET is [said to be] prompting the use of3GT in applications that do
not permit the use of reinforcing materials. These applications using
unreinforced 3GT may have problems with inadequate impact
resistance and/or moisture concerns when 3GT with lower IV
[intrinsic viscosity] is used.
Another polyester of interest is poly(tetramethylene
terephthalate), herein abbreviated 4GT, also referred to as PBT or
polybutylene terephthalate.
* * *
U sing higher viscosity polyester may improve impact
resistance, but the high viscosity may lead to processing difficulties.
Higher viscosity polymers may decompose at higher temperatures and
may have thennallimits that preclude viscosity reduction by operating
at very high temperatures.
* * *
Methods to lower viscosity and thereby improve injection
molding of 3GT compositions, while simultaneously maintaining as
much "bio-based" content as possible, are desirable. 	Increasing
toughness and/or impact resistance is also desirable.
According to applicant:
polyesters require better mechanical strength for making suitable
articled [sic, articles] for society's daily use such as bottles for water,
soft drinks, etc. As disclosed in ... [the portion of the Specification
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Application 12/358,835
reproduced supra], improving such mechanical strength inevitably
increases the melt viscosity of PTT thereby making the PTT more
difficult to be melt-processed because it is less fluid at melt
temperatures and may decompose. 	Producing a higher molecular
weight PTT also improves the mechanical strength, but also increases
the PTT melt viscosity. 	Use of impact modifier (reinforcement) may
also increase the mechanical strength, but inevitably increase [s] the
melt viscosity, again, making the PTT more difficult to be melt-
processed.
Brief, page 5 (with some minor grammatical modifications to the quoted material).
Applicant says that the problem it sought to address "was ... how to
eliminate the increase in melt viscosity of PTT, as a result of the modification by
addition of impact modifier to the PTT." Briefpage 5. 	Applicant goes on to say
that it would have been "[ e]ven more desirable ... to reduce the absolute melt
viscosity of the PTT without substantial reduction in molecular weight and
consequently avoid the loss of mechanical strength of the PTT." Id.
Chen
Chen's invention relates generally to polymer blends that can be extnlded,
molded, or otherwise formed into articles of manufacture having certain desired
characteristics. 	Chen, col. 1:9-12. 	For example, the Chen polymer blends can be
processed to form medical catheters. More particularly, Chen concerns a balloon
material for medical balloon dilatation catheters made from blends of (1) a first
crystalline polymer component, and (2) a second softening polymer component.
The balloon material can also include (3) a third compatibilizing polymer
component. While the Chen invention relates generally to polymer blends, Chen
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Application 12/358,835
discusses the invention in terms of preferred end uses in medical devices such as
catheters and dilatation balloons. 	Chen, col. 1 :9-22.
According to Chen, it was desirable to provide a polymeric blend for
balloons for balloon dilatation catheters with a combination of the best features of
the softer balloon materials and the stronger balloon materials, including good
flexibility with (l) a thin, low profile, (2) high resistance to fatigue, (3) low
compliance, and (4) high burst strength, with (5) a lower susceptibility to defects
through mechanical handling, and (6) a lower susceptibility to pin-hole defects,
compared with balloons made from PET. 	Chen, col. 2:30-38.
Difference between Claim 1 and Chen
Claim 1 requires a modifier [B] that includes at least a combination of both
an organic acid (Item [2.1]) and an ionomer (Item [2.2]).
The essential difference between the subject matter of Claim 1 and the
subject matter described by Chen is that Chen does not describe the use of a second
softening polymer component that is a combination of (1) an organic acid with
(2) an ionomer (Claim 1, Item [2.2]). 	Instead, Chen describes the use of the
ion orner, i.e., Chen's "second polymeric component". 	Chen, col. 2:54-55;
col. 3:37-57; col. 5:40 to col. 6:44. 	See also Answer, page 19 (discussing the
difference).
Wakabayashi 1, Wakabayashi 2 and Wakabayashi 3
To overcome the difference, the Examiner turned to Wakabayashi 1.
Wakabayashi 1 is an Abstract of a presentation that was to be made at a
March 3-7, 2003 meeting of the American Physical Society. 	We do not know if
the presentation occurred. 	An attempt by personnel at the Board to locate an
underlying paper upon which the Abstract might have been based also was not
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Appeal 2012-002290
Application 12/358,835
successful. As a result of that attempt, however, Wakabayashi 2 and
Wakabayashi 3 came to our attention.
Based on all three Wakabayashi publications, we understand that Katsuyuki
Wakabayashi (now Dr. Wakabayashi) was a graduate student at Princeton
University in 2003 working under the direction of Dr. Richard A. Register.
Dr. Register is a professor and polymer researcher at Princeton University. 	Based
on the Wakabayashi publications, it appears that research which may have begun
as early as 2003 (Wakabayashi 1) was probably completed in 2005-2006.
Wakabayashi 2 and Wakabayashi 3 were published in 2006.
Applicant DuPont likely knew of the WakabayashilRegister research.
Wakabayashi 2, page 2875, col. 2 ("[t]he preparation ofionomer:metal soap
blends was carried out at DuPont by melt mixing"); id. at 2883, col. 1; see also
Wakabayashi 3, page 152. "Dupont Packaging and Industrial Polymers generously
provided both financial support for this work and the materials studied herein.
The authors are especially grateful to ... [numerous individuals one of whom
was] Dr. George Prejean of DuPont for providing all the materials employed
herein, often on demand." Wakabayashi 2, page 2883, col. 1. 	See also
Wakabayashi 3, page xv. DuPont provided copolymers for Wakabayashi's
research. 	Wakabayashi 3, page 88; see also Wakabayashi 3, page 150. Melt index
measurements were conducted at DuPont. 	Wakabayashi 3, page 160.
The Wakabayashi publications describe blends of magnesium aliphatic acid
salts (magnesium stearate and magnesium oleate) with magnesium neutralized
ethylene-alkyl acrylate-(meth)acrylic acid terpolymer ionomers. Wakabayashi 1
states that a magnesium neutralized ionomer and magnesium stearate coexist and
that no phase separation was observed.
10

Appeal 2012-002290
Application 12/358,835
1 	Wakabayashi 2 confirms a lack of separation when magnesium is used to
2 	neutralize the acid [-COOH] groups on both the stearic acid and the ionomer.
3 	Page 2878, col. 1 ["no tendency towards de mixing was ever observed at any
4 	temperature"]; page 2882, col. 2. 	See also Wakabayashi 3, page 161. "While
5 	MgSt [magnesium stearate] remains intimately mixed (coassembled) with the
6 	ionomer upon cooling, NaSt [sodium stearate] phase-separates to give a composite
7 	consisting of domains of essentially pure ionomer and NaSt ... " Wakabayashi 2,
8 	page 2882, col. 2. 	On the other hand, use of sodium for neutralization resulted in
9 	phase separation upon cooling forming relatively large and pure domains.
10 	Wakabayashi 2, page 2882, col. 2; see also Wakabayashi 3, page 181.
11 	Wakabayashi 2 also notes the "obvious structural similarity between
12 	E/(M)AA ionomers and metal soaps, since they share both a common functional
13 	group (COO-M+) as well as long sequences ofCH 2 units."s Paragraph bridging
14 	pages 2874-75. 	The ten11 E/(M)AA means "ethylene (meth)acrylic acid". 	See also
15 	Wakabayashi 3, page 150.
16 	Prima facie obviousness
17 	The Examiner reasoned that one skilled in the art would have found it
18 	obvious to use the Wakabayashi 1 blend as the "second polymeric component"
19 	of Chen. 	Answer, pages 8-9.
20 	The Chen component is described as being "a softening polymer"
21 	(col. 5 :41), or as the Examiner accurately points out, a crystallinity-reducing
22 	component (Answer, page 9).
S 	The Wakabayashi research involved study of acids with chain lengths from C 16
to C 22 . 	Applicant has provided no objective evidence that "short" chain acids
achieve applicant's objective. 	Claim 1 calls for an acid having 4-36 carbon atoms.
Blend behavior is said to be quite sensitive to the acid (metal soap) selected.
Wakabayashi 3, page 181.
11

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Appeal 2012-002290
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Wakabayashi 2 indicates that typical E/(M)AA ionomers are semi-
crystalline, with crystallinity depending on the content of acid comonomer.
Page 2878, col. 1, first full paragraph, and page 2875, Table 1; see also
Wakabayashi 3, pages 161-62.
The acid (also referred to as "soaps" or "metal soaps") in the Wakabayashi
blends prevents formation of a percolated hard phase. 	Wakabayashi 3, page 166.
A hard phase is something Chen seeks to avoid with respect to its softening second
polymer component.
Applicant is using a known acid/ionomer blend (Wakabayashi 1,
Wakabayashi 2 and Wakabayashi 3) consistent with a known purpose (Chen's
second polymeric component) to achieve an expected result-a composition useful
for Chen's purpose. Use of known materials for a known purpose is evidence of
obviousness. 	KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007)
(combination of familiar elements according to known methods is likely to be
obvious when it yields no more than predictable results).
Wakabayashi 2 provides a cogent analysis in support of its conclusion that
use of magnesium vis-a-vis sodium to accomplish neutralization is desirable. Use
of magnesium minimizes or eliminates phase separation and achieves other
desirable properties relevant to Chen's softening second polymer component.
Applicant's arguments
Chen's crystalline requirements
Applicant maintains that there would be no reason to use the Wakabayashi
blends in the Chen combination because use of the blend would have been
expected to destroy crystalline structures. Brief, page 12. 	However, some
acid/ionomer blends have more crystalline ionomer than others. Wakabayashi 3,
pages 181-82. Obviously, one skilled in the art seeking to minimize crystalline
12

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Application 12/358,835
1 	content in Chen's softening second polymer component would have been inclined
2 	to use the Wakabayashi blends which do not increase crystalline content.
3 	We also find that applicant appears to have overlooked the fact that any
4 	emphasis by Chen on crystalline structures relates to Chen's "first polymeric
5 	component". According to Chen, the first polymeric component is preferably a
6 	relatively strong crystalline polymer. 	Chen, col. 4:53. 	The Chen "second
7 	polymeric component" is added as a softening polymer. 	There is no reason why
8 	the Chen second polymeric component should need to maintain any high degree of
9 	crystallization given the purpose for which it is added to the overall Chen
10 	composition. Nor has applicant presented any credible evidence that use of the
11 	Chen second polymeric composition or the Wakabayashi blends alters in any
12 	negative manner the crystalline structure of Chen's first polymeric component.
13 	The Examiner found that crystalline regions of a polymer contribute to
14 	strength, while amorphous regions (i.e., non-crystalline regions) contribute to
15 	flexibility or softness. Answer, page 22. Fig. 2.26 of Carraher illustrates the
16 	general physical nature of materials as a function of the amount of crystallinity and
17 	molecular weight.
Am(jW1,~l(
('.t>~lam!lJty
{%j
18 	Carraher Fig. 2.26 depicts a graph of crystallinity v. molecular weight
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Application 12/358,835
1 	Combination of Chen and Wakabayashi 1
2 	According to applicant, Chen and Wakabayashi 1 are what is referred to in a
3 	§ 103 context as "non-analogous" art. 	We will assume applicant would also
4 	maintain that Wakabayashi 2 and Wakabayashi 3 are non-analogous vis-a-vis
5 	Chen. 	If applicant is correct, then Chen cannot be combined with Wakabayashi 1,
6 	Wakabayashi 2 or Wakabayashi 3 to defeat Claim 1 under § 103.
7 	The PTO and its reviewing courts have developed and applied a two-step
8 	"test" to determine whether a prior art reference is "analogous" art and therefore
9 	may be used as evidence with respect to a question of obviousness under § 103.
10 	In re Wood, 599 F.2d 1032 (CCPA 1979).
11 	Step 1 requires an answer to the following question: 	"Is the reference within
12 	the field of the inventor's endeavor?" If the answer is "yes," then the reference is
13 	"analogous" and therefore may be used as evidence. 	Id. at 1036.
14 	If the answer is "no", then Step 2 requires an answer to the following
15 	question: 	"Is the reference reasonably pertinent to the particular problem the
16 	inventor was trying to solve?" If the answer is "yes", then the reference is
17 	analogous and therefore may be used as evidence. 6 Id.
18 	Wood explains that the rationale behind the two-step "test" is a "realization
19 	that an inventor could not possibly be aware of every teaching in every art." Id.
20 	The Wood rationale is consistent with earlier CCPA "non-analogous" art
21 	discussions. 	See In re Antle, 444 F.2d 1168,1171-72 (CCPA 1971):
22 	As 	we 	also 	said 	in 	Winslow, 	[365 	F.2d 	1017, 	1020
23 	(CCPA 1966)] 'Section 103 requires us to presume full
24 	knowledge by the inventor of the prior art in the field of
6 	An example of a reference related to solving an inventor's mechanical closure
problem is the Livingston patent discussed in connection with the Scroggins patent
before the Court in Graham v. John Deere Co., 383 U.S. 1,35 (1966).
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1 	his endeavor', but it does not require us to presume full
2 	knowledge by the inventor of prior art outside the field of
3 	his endeavor, i.e., of 'non-analogous' art. 	In that respect,
4 	it only requires us to presume that the inventor would
5 	have that ability to select and utilize knowledge from
6 	other arts reasonably pertinent to his particular problem
7 	which would be expected of a man of ordinary skill in the
8 	art to which the subject matter pertains.
9 	Wood and similar earlier precedent seems to have approached the "non
10 	analogous" art issue from a perspective of an inventor. Notwithstanding Wood and
11 	similar precedent, and as will become apparent, a "no" answer to both Step 1 and
12 	Step 2 does not always compel a decision that a reference is non-analogous and
13 	therefore may not be used as a reference in a § 103 context. 7 Since Wood, § 103
14 	obviousness considerations have not been restricted to an analysis based solely
15 	from an inventor's point of view. Rather, § 103 analysis focuses on what is
16 	claimed apart from the motivation of the inventor. 	In re Dillon, 919 F.2d 688 (Fed.
17 	Cir. 1990) (en bane), is illustrative.
18 	Dillon involved the patentability under § 103 of claims directed to a
19 	composition comprising (l) fuel and (2) a particular tetra-orthoester. 	Inventor
20 	Dillon discovered that use of the tetra-orthoester in fuel reduced particulate
21 	emissions when the fuel was burned. 	However, use of the tri- and tetra-orthoesters
22 	in fuel to minimize or eliminate water freezing in fuel transportation pipelines
23 	valves in cold weather was taught by a prior art Elliott patent. Preventing water
24 	freezing in valves in fuel pipeline transportation systems in cold weather regions of
25 	the United States was not a problem which inventor Dillon was trying to solve.
26 	Tetra-orthoester prior art did not describe its use in fuel as a means for reducing
7 	Whether future development of the law results in creation of a Step 3 is a matter
we (1) do not foreclose and (2) leave for another day.
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particulate emissions. However, as Dillon notes:
Howk teaches use of both tri- and tetra-orthoesters in a
similar type of chemical reaction. 	Elliott teaches their
equivalence 	for 	a 	particular 	practical 	use 	[i.e.,
prevention of water freezing].
Id. at 692.
The issue before ... [the Dillon] court ... [was] whether
the Board erred in rejecting as obvious under 35 U.S.C.
§ 103 	claims to Dillon's new compositions and to the
new method of reducing particulate emissions, when the
additives in the new compositions are structurally similar
to additives in known compositions, having a different
use, 	but 	the 	new 	method 	of 	reducing 	particulate
emissions is neither taught nor suggested by the prior art.
Id. at 691.
Dillon held that the claimed compositions would have been obvious
notwithstanding the different utility discovered by inventor Dillon and that
disclosed in the orthoester prior art. 	Dillon notes that:
it is not necessary in order to establish a prima facie case
of obviousness that 	. . . there be 	a suggestion in or
expectation from the prior art that the claimed compound
or composition will have the same or a similar utility as
one newly discovered by applicant.
Id. at 693 (emphasis in original).
Subsequent precedent continues Dillon's approach. 	See, e.g., In re Kemps,
97 F.3d 1427,1430 (Fed. Cir. 1996) ("Although the motivation to combine here
differs from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.").
In KSR, the Supreme Court understood the court below to have held in a
§ 103 context that "unless the 'prior art references address [ed] the precise problem
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that the patent was trying to solve,' the problem would not motivate an inventor to
look into those references." 550 U.S. at 414. 	However, the Court observed that
(italics added):
In determining whether the subject matter of a ... claim
is 	obvious, 	neither 	the 	particular 	motivation 	nor 	the
avowed purpose of the patentee controls. 	What matters
is the objective reach of the claim. 	If the claim extends
to what is obvious, it is ... [unpatentable] under § 103.
One of the ways in which a patent's subject matter can be
proved obvious is by noting that there existed at the time
of the invention a known problem for which there was an
obvious solution encompassed by the patent's claims.
Id. at 419-20.
The Court's observation is consistent with Dillon and Kemps. 	The reason
for declining to allow a claim for subject matter that would have been obvious
under § 103 is based on the proposition that such allowance withdraws from the
public domain subject matter that those skilled in the art should be free to use.
Graham v. John Deere Co., 383 U.S. at 6 (patents that remove existent knowledge
from the public domain or to restrict free access to materials already available
should not be issued); see also In re Kubin, 561 F.3d 1351,1358 (Fed. Cir. 2009)
("[ a] patent on such a structure would remove from the public that which is in the
public domain by virtue of its inclusion in, or obviousness from, the prior art"); In
re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007) ("obvious variants
of prior art references are themselves part of the public domain").
It may be true that Chen and applicant set out to solve different problems.
However, those practicing the Chen invention should be free to make a
modification to that invention by including in the Chen composition the blends
described by the Wakabayashi publications. Allowance of Claim 1 on appeal on
the record before us would preclude those skilled in the art from practicing an
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obvious modification of Chen's invention. As KSR notes, § 103 is designed to
prevent that from happening.
When a Wood analogous art analysis is made from the point of view of
combining the Chen patent and the Wakabayashi publications, it then becomes
manifest that the Wakabayashi publications are related to Chen's field of endeavor.
On that basis, the patent and publications can be combined to determine whether
Claim 1 on appeal is unpatentable under § 103 . We agree with the Examiner's
observation (Answer, page 21):
the fact that Wakabayashi [1] is not concerned with ...
[applicant's] 	field 	of 	endeavor 	(ostensibly 	the
manufacture of shaped articles from PTT compositions)
and solves a problem other than that identified by . . .
[applicant] 	does 	not 	preclude 	the 	use 	of 	. 	. 	.
[Wakabayashi 1] in a proper rejection under 35 USC [§]
103(a).
For the reasons given, we reject applicant's argument that Chen and the
Wakabayashi publications are non-analogous art which cannot be used to support a
§ 103 rejection.
Magnesium neutralized ionomer
Applicant maintains that Chen does not describe the use of magnesium
neutralized ionomers. Brief, page 10. 	In initially describing its second polymeric
ionomer component, Chen explicitly describes neutralization with sodium,
potassium, zinc, lithium calcium and ammonium ions. 	Col. 3:56-57. However, in
subsequent discussion Chen includes magnesium ions. 	Col. 6:43. Wakabayashi 2
sets out the reasons for neutralizing both the acid and ionomer with magnesium. A
mixture of an acid neutralized with magnesium ions and an ionomer neutralized
with sodium ions separates. Page 2882, col. 2. 	Separation is not a desirable
18

Appeal 2012-002290
Application 12/358,835
1 	property. One skilled in the art would have recognized the benefit of using a blend
2 	of magnesium neutralized materials.
3 	Detrimental effect of use of acids neutralized with sodium
4 	Applicant maintains that the use of sodium neutralized carboxylic acid failed
5 	to reduce viscosity. 	Brief, page 8. 	Wakabayashi 2 reveals why. 	One skilled in the
6 	art would have used magnesium neutralized vis-a-vis sodium neutralized acid salts
7 	in a Chen composition. 	Sodium neutralized acids tend to phase separate when
8 	blended with the ionomer. 	Wakabayashi, page 2882, col. 2.
9 	Unexpected results
lOWe, like the Examiner, believe that applicant maintains that it has
11 	discovered a new and unexpected result, viz., an ability to reduce PTT (3GP)
12 	viscosity while maintaining PTT molecular weight. 	Brief, page 6; Answer,
13 	page 18 ("[a]though not expressly stated, it is believed that ... [applicant] wishes
14 	to establish evidence for unexpected results based on ... data [in Tables A and B
15 	(Brief, pages 7 and 10)] and ... subsequent discussion of [those] results.").
16 	Relying on experimental data from the Specification, applicant says that its
17 	unexpected result is achieved when magnesium acid salts, and not sodium acid
18 	salts, are blended with the ionomer. 	Brief, page 6.
19 	A showing of unexpected results generally must be commensurate in scope
20 	with a claimed range. 	In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("[T]he
21 	record does not show that the improved performance would result if the weight
22 	percentages were varied within the claimed ranges. 	Even assuming that the results
23 	were unexpected, Harris needed to show results covering the scope of the claimed
24 	range. ").
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Appeal 2012-002290
Application 12/358,835
1 	Based on data set out in Tables A and B8 (Brief: page 7), it may be possible
2 	under certain circumstances to achieve applicant's viscosity/molecular weight
3 	desired result.
4 	For a variety of reasons, the Examiner declined to give controlling weight to,
5 	i.e., declined to credit, applicant's proffered evidence of unexpected results.
6 	The Examiner found that the experimental data is not commensurate in
7 	scope with the breadth of the claims. The Examiner's findings are made apparent
8 	from a "table" on page 19 of the Answer as follows.
{I"phatic,
mQI1>c'ttlf1cbQnal org3~lC
acid
IOfiOmer ii6f1vsd frQm
-em ethW,;:1$ acid
(DPo~Jt11er
Ethyte:le €5ter
copol~mfir
wpolymell;.csd Clifl'Or.Ofllf);S of
ethylene;, :at lim»! Ofli! C3·8
unGalufslild (i'lroox;-k add, and
optlor.ai:va cs·e ~-n"al.l,ri>\ed
carbo-.('1;i~ aCid ""t.or: 15·100%
rleuh'ah,ed
poly(<rimelttv1ei'le terephlr.ela!e) OR 	70·898%	
pc,i'f(l<>trame!hyleM (,,(ephthal~!~
orgeniG acid >~ith 4-36 eVID1:lf1 aWms. arnourltnot	
optiOl1Bfly sutJst!Wt0(\ W!!n8 C1 il cikyl 	sp~'u1Je(,	
group
8mo~ntr;>1t i
51-'eClFifJd I
30% or 40%'1bilSBd Ml	OI1~' nwgnesiu:n Sleai/Jte. SQdlum
t;12r:dWlttl
IOrl.omer :
~te6mt'-'. or ;;oclum belltmat8
0:11\1 COlJOI~Tn~m; Q! e!hylene. acrytc ·'Jf 1: 60% Q,-;O%'
metlacrVdc i3(1d, an;jn·buM ilcry,at0 (8 	baS0(lon
<:4 unsaturated <:arbo>:-,1:c aCId G'Ohnl. ' b!GnQ \,~tIJ
100% n"U!tz;liz8C 	ewJ
9 	The Examiner found that applicant tested PTT as a polyester composition.
10 	Claim 1 covers the use of both PTT and PTB. Answer, page 19. No PTB testing is
11 	reported. 	The Examiner also found that applicant's testing related "only [to] a very
12 	narrow range of compounds falling within the ... [Claim 1] genus for the
13 	remaining components." Id. 	Applicant did not file a Reply Brief responsive to the
14 	Examiner's findings as set out in the Answer.
8 	The data in Tables A and B are said to be based on experimental work reported
in the Specification. We assume that the data are based on actual experimentation
and that the Specification's examples are not prophetic.
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The Examiner's analysis is consistent with observations made in
Wakabayashi 2. 	Discussing blends with different carboxylic acid salts (MgSt
magnesium stearate), (MgOl-magnesium oleate and MgEt-magnesium erucate),
and results set out in Fig. 11 , Wakabayashi 2 found that only magnesium stearate
crystallizes to reinforce compositions. Page 2862, col. 1. 	The metal cation used
has a substantial impact on phase separation. Wakabayashi 3, page 181. Applicant
has not established that the result can be achieved with zinc and calcium cations.
Blend behavior is also said to be "quite sensitive to the metal soap chosen". 	Id.
There is no objective evidence that "short" chain acid will achieve applicant's
results. 	See n.5, supra.
The Examiner also observed, correctly, that reduced viscosity while
maintaining molecular weight is not recited in the claims. Answer, page 20. The
Examiner declined, again correctly, to read a viscosity or molecular weight
limitation into Claim 1. 	Accordingly, it is apparent that Claim 1 is not explicitly
limited to compositions having the alleged unexpected result. 	When an applicant
alleges an unclaimed unexpected result, the burden of establishing results
commensurate in scope with a claim may be difficult. 	On the other hand, when the
unexpected result (e.g., a particular property) is claimed, then applicant's burden is
simplified because the applicant can then focus on establishing that the prior art
relied upon by an examiner does not achieve the result, or to use the words of
McClain, the new function. 	Applicant in this case elected not to claim the result
and therefore labored under a burden to establish unexpected results commensurate
in scope with the breadth of Claim 1.
On the record before us, we have no basis for disagreeing with weight the
Examiner assigned to applicant's unexpected result evidence. 	In re Am. Acad of
Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (Board has broad discretion as
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to the weight given to iive declarations oiIered in the course of prosecution); in re
NTP, Inc., 654 F.3d 1268, 1275 (Fed. Cir. 2011) (Board has discretion as to the
weight to give declarations).
For the reasons given, we find that applicant has not established that the
subject matter of Claim 1 possesses unexpected properties commensurate in scope
with the breadth of the claim.
Other arguments
We have considered applicant's remaining arguments and find none that
warrant reversal of the Examiner's rejections. 	Cf In re Antor Media Corp.,
689 F.3d 1282, 1294 (Fed. Cir. 2012).
Decision
Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that the decision of the Examiner rejecting the claims on
appeal under § 103 over the prior art is affirmed.
FURTHER ORDERED that since we have relied on Wakabayashi 2
and Wakabayashi 3, and perhaps have advanced new rationale in support of
obviousness, our affirmance is designated as a new rejection. 	37 C.F.R.
§ 41.50(b).
FURTHER ORDERED that our decision is not a final agency
action.
FURTHER ORDERED that within two (2) months from the date of
our decision, appellant may further prosecute the application on appeal by
exercising one of the two following options:
Option 1: 	Request that prosecution be reopened by submitting
an amendment or evidence or both. 	37 C.F.R. § 41.50(b)(l).
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1 	Option 2: 	Request rehearing on the record presently before the
2 	Board. 	37 C.P.R. § 41.50(b)(2).
3 	FURTHER ORDERED that no time period for taking any
4 	subsequent action in connection with this appeal may be extended under 37 C.P.R.
5 	§ 1. 136(a)(l)(iv).
6 	AFFIRMED
7
8 	bar
23