Ex Parte Colhoun et al

Patent Trial and Appeal Board

Feb 6, 2017

12909084 (P.T.A.B. Feb. 6, 2017)

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.
12/909,084 10/21/2010 Frederick Leslie Colhoun 376949US103CONT 5230
22850 7590 02/08/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WOOD, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK LESLIE COLHOUN and
PERRY MICHAEL MURDAUGH SR.1
Appeal 2015-001739
Application 12/909,084
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—14, 17—20, 22—31, 34, 35, and 38. An oral
hearing was held on January 26, 2016. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to polyesters having desirable
injection molding properties while retaining good crystallization rates and
1 According to the Appellants, the real party in interest is Grupo Petrotemex,
S.A. de C.V. App. Br. 1.
Appeal 2015-001739
Application 12/909,084
natural stretch ratio characteristics. E.g., Spec. 12; Claim 1. Claim 1 is
reproduced below from the Claims Appendix of the Appeal Brief (emphasis
added to identify the limitation focused on by the Appellants in this appeal):
1. A polyester comprising:
i) a carboxylic acid component comprising at least 95 mol%
terephthalic acid residues and up to 5 mol% of carboxylic
acid comonomer residues;
ii) a hydroxyl component comprising at least 94.2 mol%
ethylene glycol residues and the balance being additional
hydroxyl residues; wherein the additional hydroxyl residues
comprise diethylene glycol residues and hydroxyl
comonomer residues;
based on 100 mol% of carboxylic acid component residues and
100 mol% of hydroxyl component residues in the polyester;
wherein the hydroxyl components comprises the hydroxyl
comonomer residues such that the molar ratio of the total
hydroxyl comonomer residues to diethylene glycol residues is
1.3:1.0 or greater; and
wherein the polyester comprises less than 1.6 mol% of
diethylene glycol and has an intrinsic viscosity greater than 0.40
dL/g and less than 0.80 dL/g[.]
App. Br., Claims App’x i.
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Appeal 2015-001739
Application 12/909,084
REJECTIONS ON APPEAL2
1. Claims 1—7, 11—14, 17—20, 22—24, 28—31, 34, 35, and 383 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Schiavone
(US 6,284,866 Bl, issued Sept. 4, 2001).
2. Claims 8—10 and 25—27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schiavone in view ofNakamachi et al. (US 6,355,319 Bl,
issued Mar. 12, 2002).
ANALYSIS
The Appellants argue the claims as a group, focusing on a limitation
appearing in claim 1. We select claim 1 as representative of the rejected
claims. The remaining claims on appeal will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, in the Advisory Action dated Mar. 20, 2014, and in the
2 In the Examiner’s Answer, the Examiner withdraws rejections of claims 1—
14, 34, 35, and 38 under 35 U.S.C. § 112, || 1 and 2. Ans. 9—10.
Additionally, we note that the “Office Action Summary” attached to the
Final Action lists claims 34—38 as being rejected. However, it does not
appear that any ground of rejection actually includes claims 36 and 37. See
Final Act. 2—8. In the event of further examination, we encourage the
Examiner and the Appellants to clarify the status of claims 36 and 37.
3 In both the Final Action and the Answer, the Examiner’s header for this
rejection omits claims 34, 35, and 38, see Final Act. 4; Ans. 2, but the
Examiner’s analysis includes claims 34, 35, and 38, see Final Act. 7; Ans. 6.
We consider claims 34, 35, and 38 to be subject to Rejection 1.
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Application 12/909,084
Examiner’s Answer. See generally Final Act. 3—11; Advisory Act. 2; Ans.
2-9, 11-13.
The Examiner finds, and the Appellants do not dispute, that
Schiavone teaches a polyester comprising each element of claim 1 except
that Schiavone teaches that its polyester comprises about 2 mol% to about 6
mol% of diethylene glycol instead of the “less than 1.6 mol%” recited by
claim 1. See Advisory Act. 2, | 3; Ans. 3; see also, e.g., Schiavone at 4:51—
52, 4:61—62, 7:24—60. In the Final Action, the Examiner cited Titanium
Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985), for the
proposition that “[a] prima facie case of obviousness exists where the
claimed ranges and prior art ranges do not overlap but are close enough that
one skilled in the art would have expected them to have the same
properties.” Final Act. 8. In a subsequent Advisory Action, the Examiner
explained:
The applicant’s specification provides examples 2 and 3 and
comparative examples 1, 4 and 5. The inventive examples both
have diethylene glycol content of about 2 mole%. The
polyester maintained an intrinsic viscosity of greater than 0.40
dl/g and less than 0.80 dl/g. The comparative examples 1, 4,
and 5 have diethylene glycol contents of 3.38 mol%, 2.7 mol%,
and 2.7 mol%, respectively. The comparative examples also
produced a polyester with an intrinsic viscosity of greater than
0.40 dl/g and less than 0.80 dl/g.
Advisory Act. 2. The Examiner repeats that explanation in the Answer and
further explains that Schiavone teaches that its polyester actually possesses
an intrinsic viscosity—the only property recited by claim 1—that falls
within the scope of claim 1. See Ans. 11—12.
The Appellants argue that Schiavone’s range of about 2 mol% to
about 6 mol% and the claimed range of “less than 1.6 mol%” are “mutually
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Appeal 2015-001739
Application 12/909,084
exclusive,” and that the Examiner “provides no reasoned argument” to
support the finding that the ranges “are close enough that one skilled in the
art would have expected them to have the same properties.” App. Br. 10-12
(internal quotation marks omitted). The Appellants do not argue that
criticality or unexpected results support a conclusion of nonobviousness in
this case.
The Appellants’ arguments do not persuade us of reversible error in
the rejection. As an initial matter, we note that, contrary to the Appellants’
position that “there is no suggestion [in Schiavone] of amounts of diethylene
glycol that are less than 2 mole percent,” Reply Br. 5, Schiavone repeatedly
refers to the lower end of its range as “about 2 [mol%],” e.g., Schiavone at
4:51—52, 4:61—62, 7:24—60 (emphasis added). Moreover, the Appellants’
claim 1 recites “less than 1.6 mol%,” but the Specification states:
[A]ll numbers expressing quantities used in the specification
and claims are to be understood as being modified in all
instances by the term ‘about.’ Accordingly, unless indicated to
the contrary, the numerical parameters set forth in the present
specification and attached claims are approximations that may
vary depending upon the desired properties sought to be
obtained by the present invention.
Spec. 143 (emphasis added). Thus, both Schiavone and the Appellants’
Specification expressly provide some flexibility to the numerical boundaries
of the recited ranges. See Pall Corp. v. Micron Separations, Inc., 66 F.3d
1211, 1217 (Fed. Cir. 1995) (“The use of the word ‘about,’ avoids a strict
numerical boundary to the specified parameter.”).
We are unpersuaded by the Appellants’ assertion that the Examiner
“provides no reasoned argument” to support the finding that the Schiavone’s
range and the claimed range “are close enough that one skilled in the art
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Application 12/909,084
would have expected them to have the same properties.” App. Br. 10-12
(internal quotation marks omitted). As discussed above, the Examiner finds
that Schiavone teaches that its polyester possesses an intrinsic viscosity that
falls within the scope of claim 1. See Ans. 11; see also Advisory Act. 2;
Final Act. 4. The Appellants do not dispute that finding. Thus, the evidence
of record supports a determination not only that a person of ordinary skill in
the art “would have expected [the compositions] to have the same
properties,” but that Schiavone’s composition does, in fact, possess the only
property specifically recited by claim 1. Moreover, the Appellants make no
effort to refute the Examiner’s determination that the claimed amount of
diethylene glycol is not critical to the properties of the polyester, at least
relative to the amounts of diethylene glycol taught by Schiavone. See Ans.
12; see also Advisory Act. 2.
The Appellants’ discussion of the Federal Circuit’s nonprecedential
decision in In re Patel, 566 F. App’x 1005 (Fed. Cir. 2014), does not
persuade us of reversible error in the Examiner’s rejection. See Reply Br. 3—
4. Contrary to the position apparently taken by the Appellants, see App. Br.
11; Reply Br. 4, Patel does not purport to create a rule that ranges must
literally overlap in order to support a conclusion of obviousness. Patel
expressly recognizes that “a rejection based on ranges approaching each
other might well be appropriate where there is a teaching in the prior art that
the end points of the prior art range are approximate, or can be flexibly
applied.” Patel, 566 F. App’x at 1010.
In view of (1) the fact that the end points of both the range of claim 1
and the range of Schiavone are approximate and/or suggest at least some
flexibility in application, as evidenced by use of the word “about,” and
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Application 12/909,084
(2) the Examiner’s undisputed findings concerning the similar properties
possessed by the claimed composition and the composition of Schiavone, we
are persuaded that a preponderance of the evidence supports the rejection.
See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“We have also
held that a prima facie case of obviousness exists when the claimed range
and the prior art range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same properties.”
(citing Titanium Metals, 778 F.2d at 783)); see also In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which
the difference between the claimed invention and the prior art is some range
or other variable within the claims . . . [and] in such a situation, the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.”
(citations omitted)).
Accordingly, we affirm the Examiner’s rejection of claim 1.
CONCFUSION
We AFFIRM the Examiner’s rejections of claims 1—14, 17—20, 22—31,
34, 35, and 38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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