Ex Parte O et al

Board of Patent Appeals and Interferences

Apr 13, 2009

11276026 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GREGORY ALLEN, ALI ERSIN ACAR,
PAUL DEAN SYBERT, PRATIMA RANGARAJAN,
HONGYI ZHOU, and JOSEPH ANTHONY SURIANO
____________

Appeal 2009-1645
Application 11/276,026
Technology Center 1700
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Decided: April 13, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This is an appeal from the final rejection of claims 1-42, 45, and 46.
Appellants’ claimed invention is directed to a method of preparing a block
copolyestercarbonate and the polymer so produced. The process entails
preparing a hydroxy-terminated polyester intermediate by reacting a molar
Appeal 2009-1645
Application 11/276,026

excess of a dihydroxy-substituted aromatic compound with a diacid chloride
under interfacial conditions corresponding to a final salt level of greater than
31%. Appellants submit that when both reaction conditions are combined
there is an enhanced ability to control molecular weight build, and “one is
able to produce a polymer with enhanced optical properties” (App. Br. 7, last
sentence). Appellants maintain that Vollenberg, the cited reference,
does not expressly teach one skilled in the art that the
reaction is to proceed in the high salt environment; it does
not teach the combination of high salt content with the excess
diol/diacid chloride ratio; and it does not teach any benefit or
provide a suggestion or motivation to combine excess
diol/diacid chloride ratio with the high salt content

(App. Br. sentence bridging 5-6). According to Appellants, “[t]he Examples
provided in the present specification demonstrate the unexpected results
when both limitations are combined” (App. Br. 7, second para.). Appellants
devote pages 7 and 8 of the Principal Brief and the Reply Brief to a
discussion of the Specification data.
It is axiomatic that a proper evaluation of objective evidence offered
to demonstrate unexpected results involves a determination of whether the
data is reasonably commensurate in scope with the degree of protection
sought by the appealed claims,1 whether the data represents a comparison
with the closest prior art2, whether the data would be considered truly
unexpected by one of ordinary skill in the art3, and, ultimately, whether the
evidence of non-obviousness outweighs the evidence of obviousness.

1 In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
2 In re Johnson, 747 F.2d 1456, 1461 (Fed. Cir. 1984).
3 In re Merck & Company, 800 F.2d 1091, 1098-99 (Fed. Cir. 1986).
2
Appeal 2009-1645
Application 11/276,026

We have reviewed the Examiner’s Answer in vain for a discussion
and analysis of Appellants’ Specification data and Appellants’
accompanying arguments. While the Examiner states that “an excess of
either reactant in a polyester forming reaction is known to regulate MW”
(Ans. 5, third para.), this statement does not relieve the Examiner of the
burden to provide the record with an analysis of Appellants’ Specification
data and ascribe to it a probative value consistent with current patent
jurisprudence. Accordingly, this application is remanded to the Examiner to
place of record a substantive analysis of Appellants’ Specification data and
rebuttal of Appellants’ arguments associated therewith.
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286
Off. Gaz. Pat. Office 21 (September 7, 2004)) is made forth for the
consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if
a Supplemental Examiner’s Answer is written in response to this remand by
the Board.
REMANDED

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