Ex Parte Cheng et al

Patent Trial and Appeal Board

Oct 19, 2016

12266588 (P.T.A.B. Oct. 19, 2016)

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.
12/266,588 11/07/2008 Shan Cheng 08006218P1 4437
24959 7590 10/19/2016
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
10/19/2016 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 SHAN CHENG, HONGYING ZHOU,
DAVID R. FENN, and JACKIE L. KULFAN
____________

Appeal 2015-004577
Application 12/266,588
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
1 through 12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Appellants’ invention is generally directed to a radiation curable
coating comprising a reaction product of a natural oil derived polyol
containing hydroxyl groups introduced through modification of a naturally
occurring carbon-carbon double bond in a natural oil, a lactide, and a
compound comprising a radiation curable moiety. App. Br. 2.
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Application 12/266,588

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Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A radiation curable coating comprising a reaction product
of:
a) a natural oil derived polyol containing hydroxyl
groups introduced through modification of a naturally occurring
carbon-carbon double bond in a natural oil;
b) a lactide; and
c) a compound comprising a radiation curable
moiety, wherein the radiation curable moiety is on the terminus
of the reaction product and not within the backbone of the
reaction product.

App. Br. 7 (Claims Appendix).
Appellants (see generally App. Br.) request review of the following
rejections from the Examiner’s Office Action1:
I. Claims 1, 2, 4–7, and 10 under 35 U.S.C. § 103(a) as
unpatentable over Helminen, Branched and Crosslinked Resorbable
Polymers Based on Lactic Acid, Lactide, and ε-Caprolactone (2003)
(“Helminen”), Brown (US 2007/0299156 Al, published December 27, 2007)
(“Brown”), and Lühmann et al. (US 5,352,730, issued October 4, 1994)
(“Lühmann”).
II. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over
Helminen, Brown, Lühmann, and Narine et al. (US 2007/0175793 Al,
published August 2, 2007) (“Narine”).
III. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Helminen, Brown, Lühmann, and Kurihara et al. (CA 2628551 A1,
published May 31, 2007) (“Kurihara”).

1 Non-final Office Action entered March 24, 2014 (“Office Act.”).
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Application 12/266,588

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IV. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Helminen, Brown, Lühmann, Kurihara, and Wooten et al. (US 4,352,924,
issued October 5, 1982) (“Wooten”).
V. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Helminen, Brown, Lühmann, and Ogasawara et al. (US 4,330,643,
issued May 18, 1982) (“Ogasawara”).
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the rejections of claims 1–12 under 35 U.S.C.
§ 103(a) for the reasons presented by Appellants. We add the following.2
The Examiner has the burden of establishing a prima facie case of
obviousness with respect to the subject matter recited in the claims on
appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[The] [patent]
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.”); see also In re
Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining that while “the
applicant must identify to the Board what the examiner did wrong, . . . the
examiner retains the burden to show invalidity”).
The Examiner finds that Helminen discloses preparing polyurethane
networks by reacting hydroxyl groups of polyester polyols with difunctional
isocyanate. Ans. 12 citing Helminen section 1.3.2, pg. 6. The Examiner
finds that Helminen discloses preparing copolymers of ε-caprolactone and

2 For the purposes of this appeal, we select claim 1, the broadest claim on
appeal, as representative, and decide the propriety of the rejections under
35 U.S.C. § 103(a) based on this claim alone.
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DL-lactide via ring-opening polymerization by reacting ε-caprolactone, DL-
lactide, and pentaerythritol. Ans. 12 citing Helminen section 2.2.3, pg. 19.
The Examiner finds that Helminen discloses end-capping copolymers of ε-
caprolactone and DL-lactide with methacrylate groups (radiation curable
moieties). Ans. 12–13 citing Helminen section 3.1.3, pg. 25. The Examiner
determines that these disclosures of Helminen constitute an explicit teaching
of a reaction product of a polyol, a lactide, and a compound comprising a
radiation curable moiety. Ans. 13. The Examiner finds that Helminen
discloses use of this reaction product in biomedical implants, orthopaedic
implants and sutures, and biodegradable and compostable molded articles,
films and packages, and the Examiner determines that the reaction product is
capable of being applied as a coating. Office Act. 4–5.
The Examiner acknowledges that Helminen does not disclose natural
oil-derived polyols containing hydroxyl groups introduced through
modification of a naturally occurring carbon-carbon double bond in a natural
oil, and the Examiner relies on Brown and Lühmann for this feature. Office
Act. 5. The Examiner finds that Brown discloses biodegradable block
copolymers comprising polyol residues, including copolymers of
polycaprolactone and polylactic acid, that can be used as a coating on
medical devices such as prostheses, sutures, screws, nails, and bone plates.
Id. The Examiner finds that Lühmann discloses a biologically degradable
coating composition that includes a polyol such as a natural oil or a
derivative of a natural oil. Id.
The Examiner concludes that one of ordinary skill in the art would
have been motivated to substitute the polyol disclosed in Helminen with a
natural oil-derived polyol as disclosed in Lühmann, because Brown teaches
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Application 12/266,588

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that polyols are utilized in copolymer materials used in implantable medical
devices and Lühmann discloses that natural oil-derived polyols are suitable
for use in biologically degradable materials utilized in articles for medical
purposes. Office Act. 6.
However, we agree with Appellants that the Examiner does not
demonstrate that there would have been an apparent reason or suggestion to
modify the applied prior art in such a way as to arrive at the claimed
invention. App. Br. 3–4. Specifically, the Examiner does not articulate an
apparent reason or suggestion that would have prompted one of ordinary
skill in the art to utilize a natural oil-derived polyol in Helminen’s process
for preparing copolymers of ε-caprolactone and D,L-lactide via a ring-
opening polymerization.
Section 1.3.2 of Helminen—relied on by the Examiner—discloses
preparing polyurethane networks by reacting polyols with difunctional
isocyanates, but this section of Helminen does not disclose reacting a polyol
with a lactide. Helminen 6–7. The Examiner also relies on a separate
section of Helminen, Section 2.2.3, which discloses preparing poly(ε-
caprolactone/D,L-lactide) copolymers via a ring-opening polymerization
reaction of D,L-lactide and ε-caprolactone monomers using pentaerythritol
as a co-initiator. Helminen 19–20.
Lühmann discloses that polyols, natural oils, and derivatives of
natural oils can each be used to prepare polyurethanes by reacting the
hydroxyl groups in these compounds with isocyanates. Lühmann col. 2, ll.
4–7, 13–15, 54–61. Thus, one of ordinary skill in the art would have
understood Lühmann to indicate that polyols and natural oil derivatives
could be used interchangeably, or equivalently, to produce polyurethanes.
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However, we find no teaching in Lühmann indicating that a natural oil
derivative would be useful as a co-initiator in a ring-opening polymerization
reaction. Furthermore, the Examiner does not set forth a factual basis
establishing that a natural oil derivative as disclosed in Lühmann could be
used interchangeably with pentaerythritol as a co-initiator for ring-opening
polymerization of D,L-lactide and ε-caprolactone monomers as disclosed in
Helminen. Accordingly, the Examiner does not adequately explain, or
provide any evidence to show, why one of ordinary skill in the art
reasonably would have substituted a natural oil derivative taught by
Lühmann as useful for producing polyurethanes for the pentaerythritol co-
initiator in the ring-opening polymerization reaction disclosed in Helminen.
Therefore, on this record, we concur with Appellants that the
Examiner’s evidence and explanation are not sufficient to establish a prima
facie case of obviousness of the subject matter recited in claims 1–12 within
the meaning of 35 U.S.C. § 103(a). We therefore, do not sustain the
rejections of these claims.
ORDER
For the reasons set forth above and in the Appeal Brief, the decision
of the Examiner is reversed.
REVERSED