Kari MacInnis et al.

Patent Trials and Appeals Board

Mar 16, 2022

2020006472 (P.T.A.B. Mar. 16, 2022)

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. 13/039,598 03/03/2011 Kari L. MacInnis HC7190 C1 1206 24114 7590 03/16/2022 LyondellBasell Industries Legal IP Department 1221 McKinney Street, Suite 700 LyondellBasell Tower Houston, TX 77010 EXAMINER MUKHOPADHYAY, BHASKAR ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): legal-IP@lyondellbasell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KARI L. MACINNIS, TOMY WIDYA, and COREY CAPASSO ____________ Appeal 2020-006472 Application 13/039,598 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, GEORGE C. BEST, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final Office Action, dated February 6, 2020, rejecting claims 21, 25-39, and 42- 45. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2022). Appellant identifies A. Schulman Inc. as the real party in interest. Appeal Br. 3. Appeal 2020-006472 Application 13/039,598 2 The invention “relate[s] to optimization of flavored polymeric compositions and methods of producing optimized flavored polymeric compositions.” Spec. ¶ 2. Independent claims 21, 25, 26, and 36 all require the presence of a melt-processable thermoplastic polymer. Independent claims 21and 36 are directed to methods of making a flavored article. Independent claims 25 and 26 are directed to a flavored article. We limit our discussion to independent claim 36, reproduced below, with the understanding that our discussion applies to all independent claims and their respective dependent claims presented for review on appeal. 36. A method for enhancing the organoleptic perception of flavor in a flavored article comprising the steps of: a) blending 0.1 to 20% by weight of one or more flavor enhancing agent selected from the group consisting of sucralose, stevia extracts, acesulfame K, maltodextrin and combinations thereof, wherein the flavor enhancing agent is heat stable and provides a taste component of flavor; 0.01 to 20% by weight of one or more flavorant, wherein the flavorant is heat stable and provides an aroma component of flavor; with one or more thermoplastic polymer selected from the group consisting of methylacrylate, polyethylene, polypropylene and co-polymers or terpolymers thereof, and optionally one or more additives selected from the group consisting of antioxidants, antistatics, antifogs, antimicrobials, slips, antiblocks, minerals, fillers, optical brighteners, foaming agents, nucleating agents, impact modifiers, dispersing aids, release agents, waxes, colorants, pigments and UV stabilizers; Appeal 2020-006472 Application 13/039,598 3 to form a flavored thermoplastic composition, wherein the one or more flavor enhancing agent and the flavorant are blended throughout the one or more polymers; and b) molding or extruding said flavored thermoplastic composition into an article wherein the taste component of flavor and the aroma component of flavor migrate and are released from the article without being significantly destructed, masticated or fully or partially dissolved; wherein said flavored article imparts flavor to a user for at least one hour; said aroma component of flavor enhances taste of said taste component of flavor; and wherein said flavored article is selected from the group consisting of dental mold, retainer, nightguard, dental appliance, gumshield, mouthguard, diet aid, pen, tongue depressor, mouth swab, protective dental film, toothbrush, tooth bristle, oral baby toy, pacifier, teething toy, teething ring, straw, drinking receptacle, drinking receptacle component, utensil, adult novelty device, snorkel, evacuator, ejector, aspirator, x- ray sleeve, animal trap, non-perishable animal bait, animal toy, respirator, nebulizer, peekometer, thermometer, smoking apparatus, action figure, food-like toy, artificial finger nail, cosmetic applicator, show, shoe component, golf tee, guitar pie, wallpaper, consumer electronic device and drink stir stick. Appellant (see generally Appeal Br.) requests review of the following rejections from the Examiner’s Final Office Action dated December 14, 2019: I. claims 21 and 25-35 rejected under 35 U.S.C. § 103(a) as unpatentable over Noda (US 2003/0143261 A1, published July 31, 2003), White (US 2003/0039617 A1, published February 27, 2003), Wool (US 5,162,392, issued November 10, 1992), and Hall (US 4,548,821, issued October 22, 1985); II. claims 36-39 rejected under 35 U.S.C. § 103(a) as unpatentable over Noda, White, Wool, and Hall; and Appeal 2020-006472 Application 13/039,598 4 III. claims 42-45 rejected under 35 U.S.C. § 103(a) as unpatentable over Noda, White, Wool, Manning (US 2006/0088574 A1, published April 27, 2006), and Sucralose (Sweetener Values including Calories and Glycemic Index, http://www.sugar-and-sweetener-guide.com/sweetener- values.html, accessed July 11, 2018). OPINION Prior Art Rejections After reconsideration of the record, including the respective positions Appellant and the Examiner provides, we now reverse the Examiner’s prior art rejections of claims 21, 25-39, and 42-45 for the reasons Appellant presents. We add the following for emphasis. Claim 36 We refer to the Examiner’s Final Office Action for a complete statement of the rejection of claim 36 but limit our discussion to the primary reference to Noda for which Appellant presents arguments. Final Act. 7-9. With respect to Noda, the Examiner finds the reference discloses a method of making a flavored article, such as a mouth guard, by molding a flavored thermoplastic composition polymer comprising polyethylene and flavorants. Final Act. 7-8; Noda ¶¶ 87, 88, 93, 94, 113, 144. The Examiner also finds Noda teaches making the articles by expanding the polyethylene polymer to low density preformed beads and processing to make a stable cellular crystalline structure. Final Act. 8; Noda ¶¶ 122, 123. Appellant argues the Examiner has failed to provide an analysis indicating a teaching, suggestion or motivation to include nonbiodegradable polymers like polyethylene in Noda’s compositions. Appeal Br. 27-28. Appeal 2020-006472 Application 13/039,598 5 After full consideration of Appellant’s arguments, we determine that Appellant has identified reversible error in the Examiner’s determination of obviousness for the reasons expressed in the dissenting opinion of our prior decision.2 We explain further. We now agree with Appellant that the Examiner has misinterpreted Noda’s teachings. As informed by the dissenting opinion, the Examiner’s rejection hinges on the finding that Noda affirmatively discloses including polyethylene in making the disclosed articles. Dissenting Op. 3. The Examiner relies on the disclosures in Noda’s paragraphs 113, 122, and 123. After careful review of these disclosures, we find that the Examiner’s affirmative finding is not supported by the record. Dissenting Op. 3. Noda is directed to methods of forming biodegradable and compostable items. Dissenting Op. 2; Noda ¶¶ 2, 3, 16, 18, 35, 36, 42, 43, 46. Noda mentions “polyethylene” only in paragraphs 45, 46, and 123. Dissenting Op. 2. The disclosures in paragraphs 45 and 46 expressly teaches against the use of polyethylene as a component of biodegradable/compostable material. Id. Thus, these disclosures do not support the Examiner’s finding noted above. We now turn to Noda’s paragraph 123. In this paragraph, Noda describes a process usually used to make cellular polyethylene as a suitable decompression expansion process to stabilize articles made from expandable 2 The Dissenting Opinion is included in the Decision dated March 13, 2018. We use the citation format “Dissenting Op.” when referring to this opinion and “Dec.” when referring to the majority opinion. Note that each opinion has its individual set of pagination. Appeal 2020-006472 Application 13/039,598 6 formulations recited in paragraph 122. Thus, contrary to the Examiner’s finding, “[p]aragraph 123 does not state that polyethylene may be blended into the composition to be foamed.” See Dissenting Op. 3. Therefore, this disclosure also fails to support the Examiner’s finding noted above. Our previous decision additionally relied on Noda’s disclosure in paragraph 107 as supporting the Examiner’s determination that the reference encompassed products containing non-biodegradable components (latex). Dec. 7-8. We have reconsidered our stated position after further review of Noda’s disclosure. Noda discloses an embodiment where latex-containing substrates are coated with biodegradable polyhydroxyalkanoate (PHA) copolymers “to provide a barrier between the latex-containing substrate and an individual's skin.” Noda ¶ 107. Noda defines “latex” as “intended to refer to the sap of the commercial rubber tree, Hevea Brasiliensis.” Id. ¶ 38. That is, Noda discloses “latex” to be natural latex. “[N]atural latex is 100% biodegradable.”3 Therefore, we find that Noda’s disclosure of “latex,” within the context of the products described, refers to biodegradable natural latex. This finding is consistent with Noda’s objective of making articles that “avoid an accumulation of man-made material in the soil.” Dissenting Op. 2; Noda ¶ 46. Thus, a preponderance of the evidence fails to support the Examiner's obviousness conclusion. 3 Is Latex Biodegradable? What You Need To Know. Dated November 20, 2020 (https://ecogradable.com/is-latex-biodegradable/)(accessed March 8, 2022). Appeal 2020-006472 Application 13/039,598 7 Once more, “[n]ote that the Examiner fails to provide an analysis that it would have been obvious to the ordinary artisan to incorporate polyethylene; instead, the Examiner's rejection hinges on the finding that Noda affirmatively discloses including polyethylene.” Dissent Op. 3; see Final Act. 7-8.4 Accordingly, we reverse the Examiner’s prior art rejections of claims 21, 25-39, and 42-45 for the reasons Appellant presents and we give above. CONCLUSION The Examiner’s prior art rejections of claims 21, 25-39, and 42-45 are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 25-35 103 Noda, White, Wool, Hall 21, 25-35 36-39 103 Noda, White, Wool, Hall 36-39 42-45 103 Noda, White, Wool, Manning, Sugralose 42-45 Overall Outcome 21, 25-39, 42-45 REVERSED 4 The Examiner’s reliance on Wool to teach a specific polyethylene (LDPE) does not overcome the deficiency in Noda’s teachings. See Final Act. 8