Ex Parte Sodergard et al

Patent Trial and Appeal Board

Nov 26, 2012

11936170 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/936,170 11/07/2007 Nils Dan Anders Sodergard 2144.000900/KDG
(F/USP957
9336
23720 7590 11/26/2012
WILLIAMS, MORGAN & AMERSON
10333 RICHMOND, SUITE 1100
HOUSTON, TX 77042
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
11/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte NILS DAN ANDERS SODERGARD,
ERIK MIKAEL STOLT, and SAARA INKINEN
__________

Appeal 2011-011596
Application 11/936,170
Technology Center 1700
____________

Before BRADLEY R. GARRIS, RICHARD TORCZON, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-14 and 17-19. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is said to be directed to polylactic acid polymers
composed of lactic acid units, isosorbide and a polycarboxylic acid having
three carboxylic acid groups (Spec. 1:5; 2:1-5, 13-16 ).
Claims 1 and 18 are illustrative:
1. A polymer comprising units derived from: lactic acid;
isosorbide; and a polycarboxylic acid having at least three
carboxylic acid groups, the lactic acid units comprising at least
50 weight % of the polymer.
18. A composition according to Claim 17,[1] in which
said polyester is a polylactide.
Appellants appeal the following rejections:
1. Claims 1-14, 17, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Terado (US 5,914,381 issued June 22, 1999)
in view of Kunihiro (JP 2006/096845 published Apr. 13, 2006).
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Terado in view of Kunihiro and Dorgan (Hans J. Lehermeier &
John R. Dorgan, Melt Rheology of Poly(lactic acid): Consequences of
Blending Chain Architectures, 41 POLYMER ENGINEERING & SCI. 2172
(2001)).

Appellants’ arguments focus on claims 1 and 18 (App. Br. 5-13).

1 17. A composition comprising a copolymer according to Claim 1 in
admixture with at least one polyester.
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ISSUES
1. Did the Examiner reversibly err in concluding one of ordinary skill in
the art would have substituted Kunihiro’s isosorbide for a diol in
Terado’s lactic acid degradable polymer composition in order to
improve heat resistance of the polymer and thus arrive at the
composition required by claim 1? We decide this issue in the
negative.
2. Did the Examiner reversibly err in finding that Appellants’ evidence
of unexpected results is not probative of nonobviousness? We decide
this issue in the negative.
3. Did the Examiner reversibly err in concluding that Dorgan’s teaching
to blend linear polylactide with lactide polymer would have rendered
obvious blending polylactide with the lactide polymer of Terado and
Kunihiro as required by claim 18? We decide this issue in the
negative.

FINDINGS OF FACT AND ANALYSES
Issue (1):Claim 1
Appellants argue that there is no reason to combine (or reasonable
expectation of success in combining) Kunihiro’s isosorbide with Terado
because Kunihiro’s polymer is linear whereas Terado’s polymer is branched
(App. Br. 5-7). Appellants contend that a branched polymer already has
good heat resistance and there is no reason for adding isosorbide to improve
a property that already is suitable. Id. Appellants contend that in combining
the teachings of Kunihiro and Terado the Examiner is improperly equating
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Kunihiro’s “heat resistance” with regard to polymer degradation temperature
with the Specification’s “heat resistance” in the context of the glass
transition temperature (Tg) (Reply Br. 3-5).
The Examiner finds that Terado teaches a lactic acid polymer derived
from lactic acid, a polycarboxylic acid having at least three carboxylic acid
groups and a diol (Ans. 4). The Examiner finds that Terado does not teach
isosorbide. Id. The Examiner finds that Kunihiro teaches isosorbide in a
lactic acid containing polymer for improving heat resistance of the polymer
(id. at 5). The Examiner concludes that it would have been obvious to
substitute Kunihiro’s isosorbide for Terado’s diol in order to improve the
heat resistance of the resulting lactic acid polymer. (Id.).
The Examiner further finds that Appellants have not provided any
evidence to substantiate the argument that Terado’s branched polymer’s heat
resistance would not benefit from using Kunihiro’s isosorbide (id. at 7). The
Examiner further finds that no evidence was proffered by Appellants that
shows the heat resistance of a lactic acid derived branched polymer made
using isosorbide as compared to lactic acid polymer made using another diol
(e.g., ethylene glycol) such as taught by Terado (id.).
The preponderance of the evidence favors the Examiner’s obviousness
conclusion. The Examiner provides a reasonable basis from the teachings of
Kunihiro and Terado that one of ordinary skill in the art would have
substituted Kunihiro’s isosorbide for a diol in Terado’s composition in order
to arrive at and improve the heat resistance of the polymer as taught by
Kunihiro. As properly stated by the Examiner, no evidence has been
provided by Appellants showing any difference in heat resistance between
branched and linear lactic acid polymers. Appellants’ argument that
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Kunihiro’s heat resistance (i.e., degradation temperature) versus Appellants’
meaning of heat resistance (i.e, Tg), is not persuasive because Kunihiro’s
teachings would still have suggested the modification albeit for a different
reason. Once Kunihiro’s isosorbide is substituted for a diol in Terado’s
composition, it is reasonable to determine that the improvement in the glass
transition temperature would have flowed naturally from following the
teachings of the prior art.
Regarding Appellants’ reasonable expectation of success argument,
we note that Terado teaches using diols as part of the lactic acid polymer
composition. Isosorbide is a diol as depicted on page 3 of the Kunihiro
translation. Accordingly, Appellants have not explained why the
Examiner’s proposed substitution of one diol for another diol would not
have been reasonably expected to be a success.
On this record, we find that the Examiner has established a prima
facie case of obviousness.

Issue (2): Unexpected Results
Appellants contend that the data in Tables 1 and 2 of the Specification
evince unexpected results (App. Br. 7-11; Reply Br. 3, 7-9). Appellants
contend that the evidence in the Specification compares pure lactic acid
polymer, lactic acid polymer with isosorbide alone, lactic acid with the tri-
functional polycarboxylic acid alone and lactic acid with polycarboxylic acid
and isosorbide (App. Br. 7-11). According to Appellants, the evidence
shows that the combination of the a polycarboxylic acid having 3 carboxylic
acid groups, isosorbide and lactic acid units produces a much greater
increase in Tg with increasing degree of polymerization than the pure form
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or the combination of the pure form with either isosorbide or a
polycarboxylic acid alone. Id.
The Examiner finds that the evidence is not commensurate in scope
with the claimed invention because the data includes specific ranges of the
polycarboxylic acid and isosorbide while claim 1 is not limited to any
particular range of these compounds (Ans. 8). Furthermore, the evidence
provided in Table 1 of the Specification is limited to 1,2,3,4-
butanetetracarboxylic acid (BTCA). However, the claims are not limited to
this particular polycarboxylic acid such that the evidence is not
commensurate in scope with the claim for this additional reason. The
Examiner properly finds that claim 1 is broader than Appellants’ proffered
evidence.
Moreover, missing from Appellants’ analysis is any comparison of
their claimed invention with the closest prior art (i.e., Terado). Appellants
allege that Terado exemplifies that the glass transition temperature (Tg) of
compositions containing other diols, no diols, or no polycarboxylic acid
have about the same Tg as each other so that there would have been no
suggestion to use isosorbide in the composition (Reply Br. 11-12). But,
such analysis does not address whether the increase in Tg achieved using
isosorbide would have been unexpected. Appellants have not proffered any
evidence that compares Terado’s composition using one of Terado’s diols
with Appellants’ composition that uses isosorbide.
Without a comparison with the closest prior art, we cannot discern
whether the resulting Tg obtained by Appellants using isosorbide would
have been unexpected. Indeed, as noted by Appellants, Terado’s examples
all disclose similar Tg for the resulting polymer (i.e., 54.7 to 58.0°C). We
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note that Appellants’ evidence in Table 1 of the Specification where the
examples include isosorbide discloses a maximum Tg range from 47.08 to
63.67°C. Accordingly, it appears that the Tg values of Terado fall within the
range disclosed by Appellants. In other words, Appellants’ evidence does
not appear to show an unexpected improvement in Tg by using isosorbide
relative to other diols in combination with a polycarboxylic acid having
three carboxylic acid groups.
For these reasons, we find that Appellants’ evidence is not probative
of nonobviousness. We affirm the Examiner’s § 103 rejection of claims 1-
14, 17, and 19 over Terado in view of Kunihiro.

Issue (3): Rejection (2) Claim 18
Appellants argue that Dorgan deals solely with polylactides and its
teachings would not be relevant to any other polymer having non-lactide
units (App. Br. 12). Appellants contend that Dorgan only discloses star-
shaped polylactides which are different than the branched polylactides of the
present claims and thus the teachings are not applicable to the present claims
(id.). Appellants contend that control of rheological properties are merely
one of several factors and do not provide one of ordinary skill in the art a
reason to apply Dorgan’s teachings with Terado and Kunihiro (id.).
Contrary to Appellants’ arguments, it would appear that Dorgan is not
limited to star-shaped lactide molecules. The page 2172, bottom four lines
on the left hand column through the top four lines of the right-hand column
in Dorgan and the abstract do not limit the disclosure to star-shaped lactide
polymers only. Rather the abstract discloses blends of branched and linear
polylactides. The star-shaped polylactide disclosure in Dorgan regards prior
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work done by others, not Dorgan’s disclosure. Appellants’ other arguments
are without persuasive merit as rheology may be viable reason for modifying
Terado and Terado teaches lactide as suitable precursor for the polymer so
that the lactide polymer teachings in Dorgan would be applicable to Terado
too.
We further note that contrary to Appellants’ argument that claim 18
requires branched not star-shaped polylactides, the language of claim 18 is
not limited to any particular type of polylactide.
On this record, we affirm the Examiner’s § 103 rejection of claim 18
over Terado in view of Kunihiro and Dorgan.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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