Ex Parte O et alDownload PDFBoard of Patent Appeals and InterferencesApr 13, 200911276026 (B.P.A.I. Apr. 13, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ 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 ____________ Decided: April 13, 2009 ____________ 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 ssl LARSON & ANDERSON, LLC RE: LEXAN PO BOX 4928 DILLON, CO 80435 3 Copy with citationCopy as parenthetical citation