ARKEMA FRANCE

Patent Trials and Appeals Board

Sep 10, 2020

2019006628 (P.T.A.B. Sep. 10, 2020)

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.
14/425,957 03/04/2015 Philippe Blondel 0078840-000161 2771
21839 7590 09/10/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE BLONDELL and THIERRY BRIFFAUD
Appeal 2019-006628
Application 14/425,957
Technology Center 1700

Before CATHERINE Q. TIMM, DONNA M. PRAISS,
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

PRAISS, 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 1–3, 5–9, 11–15, and 17–30. See Final
Act. 1. An oral hearing was held on August 25, 2020. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Arkema France as the real party in
interest. Appeal Br. 2.
Appeal 2019-006628
Application 14/425,957

2
CLAIMED SUBJECT MATTER
The claims are directed to a molded article comprising a copolyamide.
Claim 1, reproduced below, is illustrative of the claimed subject matter
(indentation and emphasis added):
1. A molded article comprising a copolyamide
comprising at least two
different repeating units corresponding to the following
formula:
A/X.Y
in which:
• A is an aliphatic repeating unit chosen from a unit
obtained from at least one amino acid having from 9 to 12
carbons and a unit obtained from at least one lactam having
from 9 to 12 carbons, and
• X.Y denotes a repeating unit obtained from the
polycondensation of at least one cycloaliphatic diamine and of
at least one dicarboxylic acid selected from the group consisting
of linear or branched aliphatic dicarboxylic acids, cycloaliphatic
dicarboxylic acids and aromatic dicarboxylic acids having 6 to
18 carbon atoms,
wherein the weight proportion of unit A in the
copolyamide A/X.Y is greater than or equal to 91%,
wherein the cycloaliphatic diamine of the unit X.Y is
selected from the group consisting of 3,3' -dimethyl-4,4'-
diamino-dicyclohexylmethane (B), p-
bis(aminocyclohexyl)methane (P), and mixtures thereof, and
wherein the molded article satisfies a ross flex fatigue
test, as measured with standard ASTM D1052, after 50,000
cycles.
Appeal Br. Claims Appendix 1 (emphasis added).
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Application 14/425,957

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REFERENCES
The Examiner relies upon the following prior art references.
Name Reference Date
Okushita US 6,297,345 B1 Oct. 2, 2001
Blondel US 2009/0264601 A1 Oct 22, 2009
Yuno US 2010/0296757 A1 Nov. 25, 2010

REJECTIONS
The Examiner maintains the following rejections.2 Final Act. 3–5;
Ans. 3–6.
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
1–3, 5–9, 11–13,
15, 17–30 103(a) Okushita, Blondel
14 103(a) Okushita, Blondel, Yuno

OPINION
Appellant does not separately argue the patentability of the claims,
therefore, in view of the lack of arguments directed to claims 2, 3, 5–9, 11–
13, 15, 17–30 and the subsidiary rejection of claim 14, we select claim 1 as
representative and claims 2, 3, 5–9, 11–15, 17–30 stand or fall together with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv); Appeal Br. 9–15.
Appellant contends the Examiner erred in finding claim 1 reads on
Okushita’s copolyamide because, in addition to bis(3-
aminocyclohexyl)methane, Okushita requires the inclusion of an additional

2 Appellant’s After Final Amendment filed January 18, 2019, cancelling
claims 24–26 and adding claims 31 and 32, has not been entered. Advisory
Action dated February 19, 2019, 2.
Appeal 2019-006628
Application 14/425,957

4
diamine compound, which additional compound Appellant argues is
precluded by claim 1’s transitional phrase “consisting of.” Appeal Br. 12–
14. According to Appellant, claim 1’s transitional phrase “comprising” does
not broaden the scope of the claimed cycloaliphatic diamines (prefaced by
“consisting of”). Id. at 13.
We are not persuaded by Appellant’s argument. Even if Okushita
requires the inclusion of a diamine compound in addition to bis(3-
aminocyclohexyl)methane, claim 1 does not preclude such an additional
diamine outside of the Markush group. Although, there is a “very strong
presumption” created by the transitional phrase “consisting of” that Markush
groups, such as those recited in claim 1, are closed to additional elements not
specified in the claim, Amgen Inc. v. Amneal Pharms. LLC, 945 F.3d 1368,
1378 (Fed. Cir. 2020) (quoting Shire Dev., LLC v. Watson Pharm., Inc., 848
F.3d 981, 983 (Fed. Cir. 2017)), the recitation of “comprising” in the
preamble and “at least one” before the recitation of the genus defined by the
Markush group may open the claim to other elements. See id. (holding a
claim using “comprising” in the preamble and requiring “at least one” of the
Markush members to be a binder or disintegrant in a pharmaceutical product
opened the binders and disintegrants to others not listed in the groups.). As
in Amgen, in Appellant’s claim 1, the terms “comprising” and “at least one
cycloaliphatic diamine” indicate claim 1 is not restricted to only the
cycloaliphatic diamines listed in the Markush group.
Appellant’s claimed copolyamide comprises “at least two different
repeating units” corresponding to A/X.Y where the repeating unit X.Y is
obtained from the polycondensation of “at least one cycloaliphatic diamine
and at least one dicarboxylic acid.” The “comprising” language in claim 1 is
Appeal 2019-006628
Application 14/425,957

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a standard term indicating that the claim does not preclude additional
components in addition to, though not inconsistent with, those recited in the
limitations that follow. Id. at 1379. Claim 1 uses the phrase “at least” five
times indicating that it is not limited to the specifically recited repeating
units, amino acid, lactam, cycloaliphatic diamine, and dicarboxylic acid. The
language “at least one cycloaliphatic diamine” in claim 1 indicates more
than one cycloaliphatic diamine may be present in the copolyamide.
Appellant also asserts that the claimed weight proportion of unit A
(claim 1’s aliphatic repeating unit) in the copolyamide being greater than or
equal to 91% is critical to the invention. Appeal Br. 14–15. Appellant’s
argument is based on the limited results set forth in Table 1 of the
Specification. Appeal Br. 15; Spec. 12–13. Table 1 includes two
copolyamides according to the invention that are said to meet the “Ross
Flex” test and three comparative examples that are said to either not meet the
“Ross Flex” test or that bubble/stick in molding. Spec. 12. All of the
examples include bis(3-methyl-4-aminocyclohexyl)methane (noted B); all of
the comparative examples include isophthalic acid (noted I) while the
inventive examples include either isophthalic acid (I) or adiptic acid (noted
DC6). Id. at 10–12. None of the comparative examples are said to represent
Okushita’s copolyamide.
The problem with Appellant’s argument is that not only do Okushita’s
weight proportions overlap the ranges of Appellant’s example I2 in Table 1
of the Specification, but based on Blondel’s teachings, a person having
ordinary skill in the art would have understood to select for a polyamide
having good mechanical properties as indicated by passing the Ross Flex
fatigue test after 50,000 cycles. Final Act. 3–4; Blondel Table 2, ¶¶ 23, 102.
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The Examiner notes that in order to show criticality, Appellant must show
why satisfaction of the Ross Flex fatigue test was an unexpected result.
Ans. 8. In order to properly evaluate whether a superior property was
unexpected, what properties were expected also must be considered. Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness.”). Appellant has not provided evidence that the Ross Flex test
result was unexpected rather than expected.
Appellant also failed to carry its burden of showing that the alleged
unexpected results are in comparison to the closest prior art. In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”). None of the
comparative examples has been shown on this record to be representative of
Okushita’s copolyamide, which is the closest prior art. Tr. 7:14–23.
Moreover, Appellant has not shown that the limited examples are
representative of the full scope of the claims. See In re Peterson, 315 F.3d
1325, 1329–31 (Fed. Cir. 2003); Tr. 8:4–15 (At oral hearing, counsel
pointed to the comparative examples including one of the claimed
cycloaliphatic diamines and two of the claimed dicarboxylic acids as the
extent to which the comparative examples cover the scope of the claims.).
Appellant’s further assertion that Blondel does not teach or suggest
how to achieve the mechanical properties for which the Ross Flex fatigue
test gauges (Reply Br. 6) is not persuasive of error because the rejection is
over the combination of Okushita and Blondel.
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Application 14/425,957

7
In sum, we find the preponderance of the evidence supports the
Examiner’s rejection of claim 1, along with claims 2, 3, 5–9, 11–15, and 17–
30, as unpatentable over the cited prior art references.
CONCLUSION
On this record and for the above reasons, we affirm the Examiner’s
rejections of claims 1–3, 5–9, 11–15, and 17–30.

DECISION
The Examiner’s decision is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/ Basis Affirmed Reversed
1–3, 5–9,
11–13, 15,
17–30
103(a) Okushita, Blondel
1–3, 5–9,
11–13, 15,
17–30

14 103(a) Okushita, Blondel, Yuno 14
Overall
Outcome
1–3, 5–9,
11–15, 17–
30

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED