SABIC GLOBAL TECHNOLOGIES B.V.

Patent Trials and Appeals Board

Jan 29, 2021

2020006663 (P.T.A.B. Jan. 29, 2021)

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.
15/578,116 11/29/2017 Madhav Ghanta 15PLAS0062-US-PCT 7289
43249 7590 01/29/2021
CANTOR COLBURN LLP - SABIC (NORYL)
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
TRUONG, DUC
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHAV GHANTA
Appeal 2020-006663
Application 15/578,116
Technology Center 1700

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–20. (See Non-Final Act. 1.) We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as SABIC Global
Technologies B.V. (Appeal Br. 2.)
Appeal 2020-006663
Application 15/578,116

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CLAIMED SUBJECT MATTER
The claims are directed to a poly(phenylene ether) having an intrinsic
viscosity of 0.5 to 2.0 deciliters per gram, measured in chloroform using an
Ubbelohde capillary glass viscometer at 25 °C, a polydispersity of 1 to 10,
and a unimodal molecular weight distribution. Claim 11, reproduced below,
is illustrative of the claimed subject matter:
11. A poly(phenylene ether) having an intrinsic viscosity of 1.2
to 2.0 deciliters per gram, measured in chloroform using an
Ubbelohde capillary glass viscometer at 25 °C, a polydispersity
of 2 to 7, and a unimodal molecular weight distribution made
by a method comprising:
in an exotherm period, continuous addition of oxygen
and a monohydric phenol of the structure:

wherein each occurrence of Z1 is independently halogen,
unsubstituted or substituted C1-C12 hydrocarbyl provided that
the hydrocarbyl group is not tertiary hydrocarbyl, C1-C12
hydrocarbylthio, C1-C12 hydrocarbyloxy, or C2-C12
halohydrocarbyloxy, wherein two to twelve carbon atoms
separate the halogen and oxygen atoms; and each occurrence of
Z2 is independently hydrogen, halogen, unsubstituted or
substituted C1-C12 hydrocarbyl provided that the hydrocarbyl
group is not tertiary hydrocarbyl, C1-C12 hydrocarbylthio, C1-
C12 hydrocarbyloxy, or C1-C12 halohydrocarbyloxy, wherein
two to twelve carbon atoms separate the halogen and oxygen
atoms, to a non-polar solvent and a polymerization catalyst
comprising a metal salt, an amine, and a quaternary ammonium
salt in a vessel, to form a polymerization mixture, wherein the
oxygen and monohydric phenol are added in a mole ratio of
0.9:1 to 1.2:1;
and
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Application 15/578,116

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cessation of the continuous addition of the monohydric
phenol; and
in a build period, continuation of oxygen addition until
there is no further increase in viscosity of the polymerization
mixture.

REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Braat US 6,472,499 B1 Oct. 29, 2002

REJECTION
Claims 11–20 are rejected under 35 U.S.C. § 103 as unpatentable over
Braat. (Non-Final Act. 2.)
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential)).
After review of the respective positions Appellant and the Examiner
provide, we determine that Appellant has identified reversible error in the
Examiner’s rejection under 35 U.S.C. § 103.
We limit our discussion to independent claim 11 as Appellant argues
in the Appeal Brief. (Appeal Br. 3–6).
Appeal 2020-006663
Application 15/578,116

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The Examiner finds Braat discloses polyarylene ether resins having an
intrinsic viscosity of 1.65 dl/g. The Examiner specifically states:
The reference discloses polyarylene ether resins having
an intrinsic viscosity of 1.65 dl/g (example 1, line 56; table 1,
line 31; col. 8, lines 1-7); 1.73 dl/g in table, example 4;
Examples 5-6; 1.80 and 2.10 dl/g; claims 26-29; and
polydispersity of 5-15 (col. 8, lines 16-18), overlapped with
those in claim 11), in exothermic reaction (col. 8, line 54),
produced in the reaction of a monohydric phenol with Oxygen
at a molar ratio O/monohydric phenol=0.796/1 per Applicant’s
calculation, in the presence of a metal complex catalyst in the
presence of a metal complex catalyst in the presence of an
organic solvent (col. 2, line 39 to col. 3, line 15; col. 4, line 16;
col. 8, line 18).
The disclosure of the reference differs from the instant
claims in that it does not disclose the newly amended claimed
O/monohydric phenol=0.9:1 to 1.2:1 (instead of 0.5:1 to 1.2:1
in the original claim). However, said 0.5:1 to 1.2:1 are included
everywhere in the Specification (page 2, line 19; page 4, line 5,
{0016, line 3), figures 2-9 in that 0.796/1 molar ratio in the
reference is included.
Therefore, it would have been obvious to one of ordinary
skill in the art to modify said molar ratio in the reference within
the limitation of the instant claims since they have been shown
to be effective in a similar system and thus would have been
expected to provide adequate results, unless Applicant provides
evidence to show the unexpected characteristics in the use of
0:5-1, 0.72:1, 0.796:1 compared to the new limitation 0:9:1, in
the claimed poly(phenylene ether).
(Non-Final Act. 2–3.)
Appellant argues Braat does not disclose a poly(phenylene ether)
having a “unimodal molecular weight distribution” as required by the
present claims. Appellant determined in Braat’s examples the O/monomer
mole ratio is calculated to be 0.796: 1, which is outside of the claimed range
of 0.9: 1 to 1.2:1. (Appeal Br. 6.) Appellant argues the poly(phenylene ether)
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Application 15/578,116

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prepared by the method of Braat at an O/monomer mole ratio of 0.796:1 has
a bimodal molecular weight distribution. (Appeal Br. 5–6.) Appellant argues
the chemical and physical properties of the poly(phenylene ether) are in part
a function of the O/monomer ratio. Appellant points to the examples from
the Specification to exhibit that the poly(phenylene ether) having an
O/monomer mole ratio of 0.72:1 does not have the same properties as the
claimed invention. Appellant specifically states:
The microstructure of the poly(2,6-dimethyl-1,4-phenylene
ether) polymers, as evidenced by molecular weight distribution
modality, biphenylene content, and terminal DBA content, is
different between polymers prepared at an O/monomer ratio
within the claimed range (e.g. 1.0 as in Ex. 2) and polymers
prepared at an O/monomer ratio below the claimed range (e.g.
0.72 or 0.796 as in Ex. 3 and Braat Ex. 1, respectively).
(Appeal Br. 7.)
The Examiner’s response to the evidence presented in the examples
from the Specification is largely dismissive. In fact, even though Appellant’s
Brief places extensive reliance on the Specification evidence to overcome
the prima facie case, the Examiner’s Answer never addresses it. (Ans. 4–5.)
This is improper. Whether the claimed invention would have been obvious
cannot be determined without considering evidence attempting to rebut the
prima facie case. In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (“The
claimed composition cannot be held to have been obvious if competent
evidence rebuts the prima facie case of obviousness. By failing to consider
the submitted evidence, the Board thus committed error.”). Since the
Examiner did not consider the submitted evidence, the rejection cannot be
sustained. It further appears that, in light of this evidence, the Examiner has
not shown by a preponderance of the evidence that Braat discloses
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polyarylene ether resins having a unimodal molecular weight distribution as
recited in claim 11. The decision of the Examiner is reversed.
CONCLUSION
The Examiner’s decision to reject claims 11–20 is REVERSED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–20 103 Braat 11–20

REVERSED