Ex parte Sébastien Quinebeche
| Docket Number | Appeal 2023-004386,Application 14/909,756,Technology Center 1700 |
| Decision Date | 19 January 2024 |
| Parties | Ex parte SÉBASTIEN QUINEBECHE, VINCENT PALLUAULT, and BENOÎT SAVIGNAT |
| Court | Patent Trial and Appeal Board |
Before TERRY J. OWENS, MERRELL C. CASHION, JR., and SHELDON M McGEE, Administrative Patent Judges.
MCGEE ADMINISTRATIVE PATENT JUDGE.
Pursuant to 35 U.S.C. § 134(a), Appellant[1] appeals from the Examiner's decision to reject claims 1-4, 8, 9, 11, and 13.[2] We have jurisdiction. 35 U.S.C. § 6(b). An oral hearing was held on January 9, 2024, the transcript of which will be entered into the record when it is available.
We reverse.
The claims are directed to "halogen-free fire-retardant thermoplastic composition[s]" limited to specific components and having certain elongation at break and breaking stress characteristics. Appeal Br. Claims App. 1 2-3 (independent claims 1, 13).
Claim 1 is illustrative of the claimed subject matter and is reproduced below with key limitations on appeal italicized:
Independent claim 13 is similar, but omits the optional additives of claim 1.
Name
Reference
Date
Keough
US 5,698,323
December 16, 1997
Hayashi
US 6,232,377 B1
May 15, 2001
Jungvist
EP 2 275 477 B1
January 19, 2011
REJECTIONS
The Examiner maintains the following rejections on appeal:
Claims Rejected
Reference(s) / Basis
1-4, 8, 9
103
Keough, Jungvist
11
103
Keough, Jungvist, Hayashi
1-4, 8, 9, 13
103
Jungvist, Keough
11
103
Jungvist, Keough, Hayashi
The dispositive issue with respect to these rejections is whether the Examiner has established that Keough teaches or suggests the claimed compositional percentage of the non-functionalized very-low-density polyethylene (VLDPE). Because the Examiner has failed to do so on this record, we do not sustain these rejections.
The Examiner finds that Keough discloses a VLDPE at a concentration of about 5 parts to about 40 parts by weight. Final Act. 6; Keough 2:39-41. Appellant and the Examiner agree that Keough's VLDPE concentration of about 5 parts to about 40 parts by weight is equivalent to "about 3 to about 8% by weight." Appeal Br. 14; Ans. 10-11. The Examiner finds that "it is reasonable to interpret the term 'about' 8%, to include 10%," such "that 'about 8% by weight' of VLDPE reasonably overlaps with Appellant's endpoint of 10 % by weight." Ans. 10. Alternatively, the Examiner finds that Keough's VLDPE concentration range is "close enough" to the claimed VLDPE concentration range such "that one skilled in the art would have expected them to have the same properties." Ans. 10-11 (citing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)).
We disagree with the Examiner on both accounts. As to the Examiner's finding of an overlap, the Examiner cites to no evidence within Keough that sufficiently establishes that the relative term "about"-which modifies what is undisputedly equivalent to 8% by weight-should include a value 25% greater than that disclosed (i.e., 8%) in order to reach the claimed 10% by weight endpoint. Thus, we disagree that Keough's disclosed range of about 3% to about 8% VLDPE by weight overlaps with the claimed range of 10% to 25% VLDPE by weight.
In re Patel, 566 Fed.Appx. 1005, 1010 (Fed. Cir. 2014).
Despite Keough's use of the term "about" in disclosing the endpoints of certain ranges, Keough-when considered as a whole-suggests that small differences are indeed meaningful. For example, Keough discloses very narrow density ranges of the various disclosed polymers. See Keough 2:39-41, 50-52 (specifying "a very low density polyethylene having a density in the range of 0.87 to 0.915" g/cm3, "a linear low density polyethylene having a density in the range of 0.905 to 0.940" g/cm3). Keough discloses further that very slight formulaic deviations can mean the difference between passing or failing the UL-1685 "Vertical Cable Tray Flame Test." Specifically, the compositional differences in Examples 1 and 4 are minor, but the Example 1 formulation received a "low pass" score while Example 4 failed. These two Examples also exhibited different burning times and propagation lengths despite their highly similar compositional makeups. Keough 8:20-54. Under these circumstances, we disagree with the Examiner that a person of ordinary skill in the art would have expected the same properties between Keough's composition and the claimed compositions. Cf. Titanium Metals, 778 F.2d at 783; Ans. 6-7.
Because the Examiner has failed to establish that Keough discloses the claimed concentration range of VLDPE or that the claimed concentration range of VLDPE would have been otherwise obvious, we do not sustain Rejections I and II.
The Examiner finds that Jungvist discloses each of the claimed composition's elements except for 1) the presence of a vinyl ester in the first recited ethylene-containing copolymer, and 2) the density range of the VLDPE. Final Act. 7-8. The Examiner also finds that Jungvist alone discloses the characteristics of the claimed composition, i.e., the elongation at break percentage and breaking stress measurement. Id. at 8. To account for the compositional differences between the prior art and the claims, the Examiner finds that Keough discloses an "art recognized functional equivalent]" copolymer containing ethylene and vinyl esters of saturated carboxylic acid, and finds further that Keough discloses the density range of VLDPE. Id. at 9. The Examiner determines that it would have been obvious to substitute Jungvist's ethylene / alkyl acrylate copolymer with Keough's ethylene / vinyl carboxylate copolymer, and to have used the VLDPE density range disclosed in Keough. Id.
The dispositive issue on appeal is whether the Examiner has established sufficiently that the modified prior art composition would have had the claimed properties, i.e., the claimed elongation at break and breaking stress measurements. Because the Examiner failed to do so on this record, we do not sustain these rejections.
Jungvist's composition requires an ethylene copolymer comprising alkyl acrylate comonomer units (¶ 7) and that composition has certain tensile strength and elongation at break properties that undisputedly overlap with the claimed properties (¶¶ 48-49). Here, the Examiner proposes eliminating Jungvist's ethylene copolymer comprising alkyl acrylate comonomer units in favor of Keough's ethylene copolymer comprising vinyl carboxylate, and furthermore using the density range of VLDPE disclosed in Keough. Final Act. 9. There is no evidence of record, however, that the properties disclosed by Jungvist would be maintained despite the Examiner's proposed structural modifications to Jungvist's...
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