Ex Parte Schiraldi et al

Patent Trial and Appeal Board

Jun 8, 2018

13836404 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/836,404 03/15/2013 David A. Schiraldi
59272 7590 06/12/2018
SWIMCLLC
101 PROSPECT A VENUE N.W.
1100 MIDLAND BLDG. - LEGAL DEPARTMENT
CLEVELAND, OH 44115-1075
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
16531 1623
EXAMINER
WHITELEY, JESSICA
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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@SHERWIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. SCHIRALDI, GAMIN! S.
SAMARANA YAKE, MADHUKAR RAO, PHILIP J.
UHOFF, and STACEY A. PORVASNIK
Appeal2017-008304
Application 13/836,404
Technology Center 1700
Before, ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
N. WHITNEY WILSON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-27, 31--45, 49 and 50. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a polymer. Claim 1 is illustrative:
1. A polymer prepared by admixing under reactive conditions
reactants comprising:
(i) an aliphatic diacid or reactive equivalent thereof;
(ii) one or more diols; and
(iii) a polyalkylene terephthalate or polyalkylene napthenate.
Appeal2017-008304
Application 13/836,404
Stavinoha
Ramaraju
The References
us 4,855,395
US 2007/0197738 Al
The Rejections
Aug. 8, 1989
Aug.23,2007
The claims stand rejected as follows: claims 1, 8, 9, 11-27, 31, 35-37
and 42--45 under 35 U.S.C. § 102(b) over Ramaraju, claims 2-7, 10, 32-34,
49 and 50 under 35 U.S.C. § 103 over Ramaraju, and claims 1-3, 9-12, 20,
31, 37--41and44 under 35 U.S.C. § 102(b) over Stavinoha. 1
OPINION
We affirm the rejection under 35 U.S.C. § 102(b) over Ramaraju,
affirm the rejection under 35 U.S.C. § 103 of claims 4 and 10, reverse the
rejection under 35 U.S.C. § 103 of claims 2, 3, 5-7, 32-34, 49 and 50, and
reverse the rejection under 35 U.S.C. § 102(b) over Stavinoha.
Rejections under 35 USC§ 102(b)
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. US.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Re} ection over Ramaraju
The Appellants argue only the independent claims ( 1 and 31) (Br. 10-
13 ). We therefore limit our discussion to those claims. The dependent
claims stand or fall with the independent claim from which they depend.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
1 The Examiner's explanation of the rejection over Stavinoha indicates that
"67-41" in the statement of the rejection should be "31and37-41" (Ans. 4--
5).
2
Appeal2017-008304
Application 13/836,404
Ramaraju discloses a block copolyester "prepared by the
transesterification of (a) straight or branched chain poly(alkylene
terephthalate) [which corresponds to the Appellants' claim 1 's
component (iii)] and (b) a copolyester of a linear aliphatic dicarboxylic acid
[which corresponds to the Appellants' claim 1 's component (i)] and,
optionally, an aromatic dibasic acid such as terephthalic or isophthalic acid
with one or more straight or branched chain dihydric aliphatic glycols
[which corresponds to the Appellants' claim 1 's component (ii) and can
include pentaerythritol and/or trimethylolpropane which correspond to the
Appellants' claim 31 's polyol component (iii) and are the Appellants' two
disclosed polyols (Spec. ,-r 9)]" (i-f 32).
The Appellants assert that "[ n ]othing in Ramaraju teaches using a
diacid and a diol as reactants along with polyalkylene terephthalate and
polyalkylene napthenate as a reactant to produce a new and unique polymer"
(Br. 10).
The Appellants' claims 1 and 31 require reaction with "polyalkylene
terephthalate or polyalkylene napthenate," not "polyalkylene terephthalate
and polyalkylene napthenate," and do not require that the polymer is new
and unique. As pointed out above, Ramaraju discloses a polymer made from
each reactant recited in the Appellants' claims 1 and 31.
The Appellants assert that "the claims are directed to a process
wherein the reactants are used in stoichiometric amounts" (Br. 11 ).
The Appellants' claims 1 and 31 claim a polymer, not a process, and
are not limited to stoichiometric amounts.
The Appellants argue that the Appellants' process does not require
Ramaraju's heating, byproduct removal, reheating and molten product
3
Appeal2017-008304
Application 13/836,404
draining steps (i1i1 20-24) and that, therefore, the claimed polymer differs
from Ramaraju's polymer (Br. 11-12).
The Appellants, like Ramaraju, use melt processing (Spec. i1 4), and
the Appellants' claims 1 and 31 do not exclude a polymer from which
reaction byproducts have been removed.
Thus, we are not persuaded of reversible error in the rejection under
35 U.S.C. § 102(b) over Ramaraju.
Rejection over Stavinoha
We need address only the independent claims ( 1 and 31). Those
claims require a polymer prepared from reactants including a polyalkylene
terephthalate or a polyalkylene napthenate.
Stavinoha makes a polyester by reacting a hydroxyethylnorbomene
(HEN) ester, which can be a carboxy-hydroxyethylnorbomene (CHEN)
ester, with 1) diols or polyols and 2) diacids or their esters or anhydrides
(col. 1, 11. 31-34; col. 2, 11. 59---63; col. 3, 11. 39-43; col. 3, 1. 58-col. 4, 1. 7).
The Examiner finds that Stavinoha's polyester "is made by a diol in
the presence of a diacid (abstract) and the polymer carboxy-
hydroxyethylnorbomene terephthalate (column 4, lines 3-7) (reading on the
polyalkylene terephthalate) that is created is mixed with a diol and a diacid
(claim 15)" (Ans. 4).
Stavinoha's CHEN terephthalate is an alkylene terephthalate, not a
polyalkylene terephthalate, and Stavinoha's claim 15 claims forming a
polyester by reacting a HEN ester, not a polyester, with 1) a diol or polyol
and 2) a diacid or its esters or anhydrides. The Examiner does not establish
that Stavinoha discloses a polymer made from reagents including a
4
Appeal2017-008304
Application 13/836,404
polyalkylene terephthalate or a polyalkylene napthenate. Accordingly, we
reverse the rejection over Stavinoha.
Rejection under 35 US.C. § 103
Regarding claims 2, 3, 7, 32 and 33 the Examiner finds (Ans. 5---6):
[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case,
one skilled in the art would know to alter the amounts of diol
and diacid to control the amount of the reaction. For example,
the more diol and diacid the more reaction occurs and the rate
of the reaction is altered.
The Appellants' claims 2, 3, 7, 32 and 33 require particular reactant
ratios, not a particular amount of reaction. The Examiner's finding
regarding the effect of the amounts of reagents on the amount of reaction
does not address the recited reactant ratios.
With respect to claims 4---6 and 34 the Examiner finds (Ans. 6):
[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case,
one skilled in the art would know to change the point of the
reaction in which to add the therphthalate [sic] or
naphthenate [sic] in order to achieve the proper molecular
weight.
Claim 4 depends from claim 1 and requires that "(i) and (ii) are
allowed to at least partially react before (iii) is added." As set forth above,
Ramaraju discloses forming a copolyester by reacting a linear aliphatic
dicarboxylic acid (which corresponds to the Appellants' component (i)) with
one or more straight or branched chain dihydric aliphatic glycols (which
5
Appeal2017-008304
Application 13/836,404
corresponds to the Appellants' component (ii)) before reacting it with a
straight or branched chain polyalkylene terephthalate (which corresponds to
the Appellants' component (iii)) (i-f 32). Anticipation is the epitome of
obviousness. See In re May, 574 F.2d 1082, 1089 (CCPA 1978); In re
Skoner, 517 F.2d 947, 950 (CCPA 1975); In re Pearson, 494 F.2d 1399,
1402 (CCPA 1974).
Claim 10, which also depends from claim 1 and is rejected under
35 U.S.C. § 103 (Ans. 5) but addressed in the explanation of the rejection
under 35 U.S.C. § 102(b) (Ans. 3), requires that "an end-capping or chain
stopping molecule is added to the reaction mixture before the polymerization
is complete." Ramaraju discloses the use of such an end-capping
molecule (i-f 29), and the Appellants do not address claim 10.
As for claims 5, 6 and 34, the Examiner's finding that one skilled in
the art would have known to change the point of the reaction in which to add
the terephthalate or napthenate in order to achieve the proper molecular
weight (Ans. 6) does not explain how Ramaraju would have led such a
person to the molecular weights required by those claims.
Regarding claims 49 and 50 the Examiner finds (Ans. 7):
[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation. In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case,
one skilled in the art would know to alter the amounts of the
phthalate component to control the viscosity. For example, the
more of the phthalate is added to the reaction, the higher the
viscosity.
The Appellants challenge that finding (Br. 20-21 ). Consequently, we
do not accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
6
Appeal2017-008304
Application 13/836,404
1964). The Examiner must provide support for the finding and has not done
so.
For the above reasons we affirm the rejection under 35 U.S.C. § 103
as to claims 4 and 10 and reverse it as to claims 2, 3, 5-7, 32-34, 49 and 50.
DECISION
The rejection of claims 1, 8, 9, 11-27, 31, 35-37 and 42--45 under
35 U.S.C. § 102(b) over Ramaraju is affirmed. The rejection under
35 U.S.C. § 103 of claims 2-7, 10, 32-34, 49 and 50 over Ramaraju is
affirmed as to claims 4 and 10 and reversed as to claims 2, 3, 5-7, 32-34, 49
and 50. The rejection of claims 1-3, 9-12, 20, 31, 37--41and44 under
35 U.S.C. § 102(b) over Stavinoha is reversed.
The Examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
7