Elevance Renewable Sciences, Inc.

Patent Trials and Appeals Board

Aug 13, 2020

14832738 - (D) (P.T.A.B. Aug. 13, 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.
14/832,738 08/21/2015 Kamlesh Mody ERS-139-1-US-1 1092
144757 7590 08/13/2020
Elevance Renewable Sciences, Inc. (Main)
Kilpatrick Townsend & Stockton LLP
1100 Peachtree St. NE
Suite 2800
Atlanta, GA 30309
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
08/13/2020 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):
elevance_docketing@cardinal-ip.com
ipefiling@kilpatricktownsend.com
patents@elevance.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAMLESH MODY
____________

Appeal 2019-005722
Application 14/832,738
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 6, 10–12, 14–16, 19, 20, 23–25, and 27–30. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Elevance
Renewable Sciences, Inc. Appeal Br. 3.
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The invention is generally directed to a powder coating composition
comprising a polyester polyol. Spec. ¶ 2. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A powder coating composition comprising a
polyester polyol, wherein the polyester polyol comprises one or
more constitutional units according to formula (I):

wherein X1 is -(CH2)16-; and
wherein the polyester polyol is capped with carboxylic
acid groups.

Appellant (see generally Appeal Br.) requests review of the
Examiner’s rejection of claims 1, 6, 10–12, 14–16, 19–20, 23–25 and 27–30
under 35 U.S.C. § 103 as unpatentable over Wu (US 2006/0009591 A1,
published January 12, 2006). Appeal Br. 8; Final Act. 2.
Appellant argues independent claim 1 and relies on these same
arguments to address the rejection of all dependent claims. See
generally Appeal Br. Accordingly, we select the independent claim 1 as
representative of the subject matter claimed and decide the appeal as to the
ground of rejection before us for review based on the arguments Appellant
makes in support of patentability of claim 1.

OPINION
After review of the respective positions that Appellant provides in the
Appeal Brief and the Examiner provides in the Final Action and the Answer,
we AFFIRM the Examiner’s prior art rejection of claims 1, 6, 10–12, 14–16,
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19–20, 23–25 and 27–30 for the reasons the Examiner presents. We add the
following for emphasis.
Claim 1
Claim 1 is directed to a powder coating composition comprising a
polyester polyol, wherein the polyester polyol comprises one or more
constitutional units according to formula (I) capped with carboxylic acid
groups. For the purposes of the prosecution of this application, both the
Examiner and Appellant agree that the claimed formula (I) capped with
carboxylic acid groups is a polyol having 1,18-octadecanedioic moieties.
Final Act. 3; Appeal Br. 9–10.
The Examiner finds that Wu discloses a powder coating composition
comprising a polyester polyol, wherein the polyester polyol comprises 1,16-
hexadecanedioic moieties. Final Act. 2–3; Ans. 5; Wu Abstr.; ¶ 42. The
Examiner finds that 1,16-hexadecanedioic acid/moiety is a homolog of the
claimed 1, 18-octadecanedioic acid/moiety and that polyols having either
moiety would have similar chemical structures differing regularly by the
successive addition of the same chemical group. Final Act. 3. The
Examiner determines that the two compounds are of sufficiently close
structural similarity that one skilled in the art would have had a reasonable
expectation that such compounds possess similar properties. Final Act. 3; In
re Wilder, 563 F.2d 457, 460 (CCPA 1977). Based on this determination,
the Examiner concludes that it would have been obvious to one of ordinary
skill in the art to arrive at the claimed invention from the teachings of Wu.
See generally Final Act.
Appellant’s arguments focus on Wu’s Example A (Wu ¶¶ 84, 85),
which relates to an embodiment of Wu’s invention addressing the use of
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dodecanedioic acid, a 12-carbon dicarboxylic acid. See generally Appeal
Br. 9–10. The premise of this focus is Appellant’s assertion that, while Wu
discloses a genus of linear dicarboxylate moieties having from 4 to 16
carbon atoms, including 1,16-hexadecanedioic acid, Wu does not exemplify
polyester polyols containing 1,16-hexadecanedioate moieties. Appeal Br. 9–
10; Reply Br. 3; Wu ¶ 42.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
It is well established that “the test [for obviousness] is what the []
teachings of the references [or reference] would have suggested to those of
ordinary skill in the art.” Further, it is well settled that a reference may be
relied upon for all that it discloses and not merely the preferred
embodiments as suggested by Appellant. See Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘[A]ll disclosures of the
prior art, including unpreferred embodiments, must be considered’” (quoting
In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681
F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s
disclosure is not limited to its examples). The disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971).
Appellant’s arguments are not persuasive of reversible error because
the arguments do not address the rejection the Examiner presents.
Specifically, the arguments do not address the Examiner’s reliance on Wu’s
disclosure of 1,16-hexadecanedioic acid to make polyols containing 1,16-
hexadecanedioate moieties. While Appellant contends that Wu does not
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exemplify such a polyol, this argument does not address Wu’s express
disclosure that 1,16-hexadecanedioic acid can be used to make it. Wu ¶ 42.
Moreover, Wu provides specific examples of dicarboxylic acids useful for
making desired polyols that range from 4 to 16 carbons, with 1,12-
dodecanedioic acid as well as 1,16-hexadecanedioic acid among those listed.
Id. Thus, Appellant does not explain adequately why one skilled in the art,
using no more than ordinary creativity, would not have been capable of
making a powder coating composition comprising a polyester polyol,
wherein the polyester polyol comprises 1,16-hexadecanedioate moieties
given the totality of Wu’s disclosure. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in
the art).
Appellant argues that using the claimed 1,18-octadecanedioate
moieties in place of Wu’s 1,12-dodecanedioate moieties would result in a
50% increase in the length of the hydrophobic spacers between the ester
groups in the resulting polyester and, thus, Wu's polyester would have 50%
more hydrophilic ester groups than a comparable polyester according to the
claimed invention. Appeal Br. 9–10. According to Appellant, this would be
a substantial decrease in the number of hydrophilic moieties within the
polyester that would undoubtedly have a substantial effect on its resulting
properties. Id. at 10.
These arguments also lack persuasive merit because they fail to
address the rejection the Examiner presents. As we note above, the
Examiner relies on Wu’s teaching or suggestion with respect to making
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polyols having 1,16-hexadecanedioic moieties. Moreover, Appellant does
not contest the Examiner’s finding that the 1,18-octadecanedioate and 1,16-
hexadecanedioic moieties are homologs. Final Act. 3; see generally Appeal
Br. Further, Wu discloses specific homologs of 4 to 16 carbons useful in
making polyols for powdered coating compositions. Wu ¶ 42. Thus, Wu
suggests that these homologs would have a sufficiently close structural
similarity that one skilled in the art would have had a reasonable expectation
that such compounds possess similar properties useful in making powdered
coating compositions, as the Examiner asserts. Final Act. 3; Wu ¶ 42. As
such, Appellant has not explained adequately why these polyols and the
claimed polyols having 1,18-octadecanedioate moieties lack sufficient
structural similarity that one skilled in the art would not have reasonably
expected them to possess similar properties. Nor does Appellant direct us to
any objective evidence that the claimed compounds possess unexpectedly
advantageous or superior properties. In re Deuel, 51 F.3d 1552, 1558 (Fed.
Cir. 1995). See also In re Wilder, 563 F.2d 457, 460 (CCPA 1977) (“one
who claims a compound, per se, which is structurally similar to a prior art
compound must rebut the presumed expectation that the structurally similar
compounds have similar properties”).
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
6, 10–12, 14–16, 19–20, 23–25 and 27–30 under 35 U.S.C. § 103 for the
reasons the Examiner presents and the reasons we give above.

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CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6,
10–12,
14–16,
19–20,
23–25,
27–30
103 Wu 1, 6, 10–
12,
14–16,
19–20,
23–25,
27–30

TIME PERIOD
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