Ex Parte Lutz et al

Patent Trial and Appeal Board

Oct 24, 2018

14263063 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/263,063 04/28/2014
23413 7590 10/26/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Eric Lee Lutz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08ULT0015-US-CNT 8830
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC LEE LUTZ, WILLIAM HOY HEATH, ROY
RAY ODLE, THOMAS LINK GUGGENHEIM,
JUAN JUSTINO RODRIGUEZ ORDONEZ,
and JOSE ROMAN GALDAMEZ PENA
Appeal2017-009832
Application 14/263,063
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
JANEE. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The Appellants claim a poly(aryl ether sulfone ). Claim 1 is
illustrative:
1. A poly( aryl ether sulfone) comprising units of
formula (I):
Appeal2017-009832
Application 14/263,063
+O-Ar1-0-Ar2-i-Ar3 l 8 Tn (1)
wherein Ar1 is a divalent C6-C1s aromatic group, Ar2 is a
divalent C6-C1s aromatic group, Ar3 is a divalent C6-C1s
aromatic group, and n is greater than 1;
and a terminal group of formula (II) derived from a
monofunctional phenoxide
Px
-o (U)
wherein X is a hydrogen atom or an organic substituent
having from 1 to 20 carbon atoms and
wherein the polymer is methoxy free and the polymer has an OH
content greater than O and less than 50 ppm, based on polymer weight, a
glass transition temperature of 180 to 290°C, a weight average molecular
weight of 20,000 to 100,000, and a halogen content of more than O and less
than 3000 ppm.
Kanomata
Ota2 (as translated)3
The References
US 2011/0311816 Al 1
JP H05-I63352 A
Dec. 22, 2011
June 29, 1993
1 The Examiner relies upon US 2011/0311816 Al as an English language
equivalent of WO 2009/022591 Al (Feb. 19, 2009) (Ans. 2).
2 The Examiner (Ans. 2) and the Appellants (App. Br. 3) refer to
JP-H05-I63352 A by the second-named inventor (Ota). For consistency, we
likewise do so.
3 Human translation of record in parent application 13/285,043.
2
Appeal2017-009832
Application 14/263,063
The Rejection
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) over Ota in view
of Kanomata. 4
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 11. That claim requires a poly(aryl ether sulfone) having
an OH content greater than O and less than 50 ppm, based on polymer
weight. To meet that claim requirement the Examiner relies upon Ota
(Ans. 2-3).
Ota makes a poly( aryl ether sulfone) by reacting dihalogenodiphenyl
sulfone and a divalent phenolic compound in an organic polar solvent in the
presence of an anhydrous alkali metal compound and a monovalent phenolic
compound (Abstract; ,r 5). To control the poly(aryl ether sulfone) molecular
mass and melt viscosity, Ota uses a weight of dihalogenodiphenyl sulfone
equal to 0.9 to 1.0 times the equivalent weight of the divalent phenolic
compound and uses a weight of monovalent phenolic compound equal to 1
to 1.5 times the equivalent weight of the excess chlorine atom terminal ends
(Abstract; ,r,r 3, 5, 12).
The Examiner finds that 1) "Ota et al. teaches that the presence of
chlorine and hydroxyl groups at the terminal positions of the polymer lead[ s]
to undesirable viscosity increase (i-f0005 [ sic, i-f 0003 ]). Thus a person having
ordinary skill in the art at the time of the invention would consider the
4 We do not consider Elbl-Weiser (US Pat. 5,723,525) relied upon by the
Examiner (Ans. 4) because is not included in the statement of the rejection
(Ans. 2) and, therefore, is not properly before us. See In re Hoch, 428 F.2d
1341, 1342n.3 (CCPA 1970).
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Appeal2017-009832
Application 14/263,063
hydroxyl and chlorine contents to be result effective variables" (Ans. 3),
2) Ota "exemplifies polymers with low hydroxyl contents" (Ans. 4), and
3) Ota discloses the general conditions of the Appellants' claim 1 (Ans. 5).
The Examiner concludes that "[i]t would have been obvious to a person
having ordinary skill in the art at the time of invention to have optimized the
hydroxyl content and chlorine content of the polymer through routine
experimentation, and the motivation to do so would have been, as
Ota et al. suggests, to minimize the viscosity increase during heating caused
by the reaction of the hydroxyl and chlorine end units of the polymer (i-f0005
[sic, i-f0003])" (id.).
The Declaration under 37 C.F.R. § 1.132 of James Schulte shows in
Table 1 that the poly(aryl ether sulfone) hydroxyl contents in Ota's three
working examples are 2,606, 8,659 and 2,839 ppm, which are far above the
Appellants' claim 1 's less than 50 ppm upper limit. The Examiner does not
establish that Ota discloses the general conditions used to achieve the
Appellants' claim 1 's poly( aryl ether sulfone) hydroxyl content such that
optimizing Ota's process would lead to a hydroxyl content of less than
50 ppm. The Examiner's mere speculation to that effect is insufficient to
establish a prima facie case of obviousness of the Appellants' claimed
poly(aryl ether sulfone). See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) ("The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not ... resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis.").
Accordingly, we reverse the rejection.
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Appeal2017-009832
Application 14/263,063
DECISION
The rejection of claims 1-11 under 35 U.S.C. § 103(a) over Ota in
view of Kanomata is reversed.
The Examiner's decision is reversed.
REVERSED
5