Ex Parte Mehta et al

Patent Trial and Appeal Board

Mar 6, 2017

13376284 (P.T.A.B. Mar. 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.
13/376,284 04/02/2012 Sanjay Mehta 6274 3392
22474 7590 03/08/2017
P1e.me.nts RemarH Walker PT T P
EXAMINER
4500 Cameron Valley Parkway
Suite 350
BOYLE, KARA BRADY
Charlotte, NC 28211 ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/08/2017 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):
patlaw @ worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANJAY MEHTA and RODOLFO AGUSTIN FLORES1
Appeal 2015-000720
Application 13/376,284
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and WESLEY B. DERRICK,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1-3 and 5-8. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Invista North America S.A.R.L.
Appeal Brief filed May 27, 2014 (“App. Br.”) at 1.
2 Non-Final Action entered December 27, 2013 (“Non-Final Act.”) at 2-8;
Advisory Action entered April 9, 2014 (“Advisory Act.”) at 2-14; and the
Examiner’s Answer entered August 13, 2014 (“Ans.”) at 2-12.
Appeal 2015-000720
Application 13/376,284
STATEMENT OF THE CASE
The subject matter on appeal is directed to “high melt strength polyester
compositions, [such as branched polyethylene terephthalate-co-isophthalate
comprising multifunctional monomers,] in particular for use in foamed articles.”
Spec. 1,11. 10-12. According to page 2, lines 19-24, of the Specification:
An embodiment of the present invention is a composition comprising
i) a polyethylene terephthalate-co-isophthalate comprising from about
5 to about 15 weight % of an isophthalic acid, and ii) a branching agent
comonomer, wherein the branching agent comonomer is a polyhydric
alcohol having functionality of 3 or more and the polyhydric alcohol is
present in an amount of from about 0.005 to about 0.01 equivalents per
mole of total diacids. The composition can have an intrinsic viscosity
of about 0.85 to about 1.5 dl/g.
“Polyhydric alcohols suitable for use as branching agents in the present
invention have a functionality (f) of three or more and will be understood to
have at least three hydroxyl groups per molecule.” Spec. 3,11. 27-29. “For
example, triethylol propane has a functionality of three and pentaerythritol
has a functionality of four. Examples of suitable polyhydric alcohols and
precursors thereto include glycerol, trimethylol propane, trimethylol ethane,
pentaerythritol or ester thereof, dipentaerythritol. . . etc.” Spec. 3,1. 29 4,1.
1. Table 1 illustrates pentaerythritol, a polyhydric alcohol branching agent,
present in an amount about 500 ppm to 1500 ppm as being equal to 0.002 to
0.007 equivalents per mole of the total diacids. Spec. 9. Page 4, lines 11-
13, of the Specification also states that “[a] composition containing 0.01
equivalent of pentaerythritol per mole of total diacids would have 0.34 g of
pentaerythritol per 166 g of diacids corresponding to 1,000,000 x 0.34/166 =
2049 ppm of penterythritol, based on the weight of the diacids.” “Properties
of the polyester compositions of the present invention can also be modified
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Application 13/376,284
by incorporations of various additives. . . . Nucleating agents can also be
added to the polymer composition to promote foaming and to control the
degree of crystallinity in the foam article.” Spec. 5,11. 13-20.
Details of the appealed subject matter are recited in representative claim l,3
which is reproduced below from the Claims Appendix of the Appeal Brief (with
disputed limitations in italicized form):
1. A composition comprising: i) a polyethylene
terephthalate-co-isophthalate comprising from about 5 to about 15
weight % of an isophthalic acid, and ii) a branching agent comonomer,
wherein said branching agent comonomer is a polyhydric alcohol
having functionality of 3 or more and the polyhydric alcohol is present
in an amount of from about 0.005 to about 0.01 equivalents per mole of
total diacids, wherein the weight average molecular weight of the
composition is about 75,000 g/mole or greater.
App. Br. 19, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the following
grounds of rejection:
1. Claims 1-3 and 5-8 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Wu (US 6,150,454; issued Nov. 21, 2000) and
Hergenrother (“ Vis cos i ly-Mo l ecular Weight Relationship for Fractionated Poly
3 Appellants do not separately argue claims 1-3 and 5-8 on appeal. Appeal Brief
filed May 27, 2014. (“App. Br”); Reply Brief filed October 10, 2014 (“Reply
Br.”). Therefore, for purposes of this appeal, we select claim 1 as representative of
the claims on appeal and decide the propriety of the Examiner’s rejections based
on this claim alone consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 13/376,284
(ethylene Terephthalate),”Journal Polymer Science: Polymer Chemistry Edition,
Vol. 12, pp. 2905-2915 (1974); and
2. Claims 1-3 and 5-8 under pre-AIA 35 U.S.C. §103(a) as unpatentable
over the combined disclosures of Wu and Manaresi (“Branched poly (ethylene
terephthalate) correlations between viscosimetric properties and polymerization
parameters, ” Polymer, Vol. 17, pp. 595-600 (1976). Non-Final Act. 2-8, Advisory
Act. 2-14, Ans. 2-12, and App. Br. 4.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we determine that
a preponderance of the evidence supports the Examiner’s determination that the
applied prior art would have rendered the subject matter recited in claims 1-3 and
5-8 obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a). Accordingly, we sustain the Examiner’s § 103(a) rejections of the above
claims substantially for the reasons set forth in the Non-Final Action, the Advisory
Action, and the Answer. We add the following primarily for emphasis and
completeness.
As evidence of obviousness of the subject matter recited in claims 1-3 and
5-8 under 35 U.S.C. § 103(a), the Examiner relies on the collective teachings of
Wu and either Hergenrother or Manaresi. The Examiner finds that Wu teaches that
a polyester composition comprising:
polyethylene-terephthalate-polyethylene isophthalate.. .produced by
mixing about 1 to about 30 mol[e] % isophthalic acid and about 99 to
about 70 [mole] % terephthalic acid wherein the total acid component
is 100 mole% with diols, [about 50 to about 3000 ppm] nucleating
agent, and about 250 to 5000 ppm chain-branching agent (column 3,
lines 46-56).
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Application 13/376,284
Ans. 2. The Examiner also finds that the chain-branching agent is selected from
polyfunctional alcohols having three or more hydroxyl functional groups and
pentaerythritol. Ans. 2-3 (citing Wu, col. 3,11. 16-21). According to the
Examiner, 250 to 5000 ppm of pentaerythritol taught by Wu encompasses 0.005 to
0.01 equivalents per mole of the total diacids based on the information provided in
Table 1 at page 9 of the Specification, which indicates that 900 to 1500 ppm
pentaerythritol corresponds to 0.004 to 0.007 equivalents/mole of the total diacids.4
4 Appellants argue for the first time in the Reply Brief that Wu does not teach or
suggest 0.005 to 0.01 equivalents per mole of the total diacids because Wu limits
the amount of a chain-branching agent used based on its molecular weight and
polyfunctionality and exemplifies 660 ppm and 1500 ppm trimethylolpropane
ethoxylate (ETMP) in its Table 4. Reply Br. 2-5. In support of this contention,
Appellants refer to the Rule 132 Declaration filed by Sanjay Mehta, one of the
inventors, on December 10, 2013. Id. We decline to consider these new
arguments raised in the Reply Brief, unless good cause is shown as to why they
could not have been raised in the Appeal Brief. Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (explaining that under the previous rules,
which are similar to the current rules, “the reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal to rebut
the Examiner’s rejections, but were not.”). Even if we were required to consider
them, together with the Declaration, we are not persuaded of reversible error in the
Examiner’s finding because Wu mentions that 500 ppm pentaerythritol, for
example, has the same chain-branching effect as 1500-2000 ppm ETMP, but does
not limit the amount of the pentaerythritol used to something less than its earlier
disclosed range of 250 to 5000 ppm. Wu, col. 3,11. 30-35. As stated by the
predecessor to our reviewing court in In re Lamberti, 545 F.2d 747, 750 (CCPA
1976), “all disclosures of the prior art, including unpreferred embodiments, must
be considered.” See also Ans. 20. Moreover, even if we were to assume that the
maximum amount of pentaerythritol used corresponds to 5000 ppm ETMP, Wu
implies that the amount of pentaerythritol used can be 1250pm to 1667 ppm (based
on 500ppm pentaerythritol equal to either 1500 or 2000 ppm ETMP), which
according to Appellants’ Table 1, is within the recited equivalents per mole of the
total diacids, to obtain the same chain-branching effect of 5000 ppm ETMP.
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Application 13/376,284
Ans. 3. The resulting product containing nucleating and/or chain-branching agents
taught by Wu has an intrinsic viscosity (IV) of about 0.7 to about 1.2, preferably
about 0.85 to 1.0. Ans. 3 (citing col. 8,11. 7-12). Although Wu does not
specifically mention that “the weight average molecular weight of the composition
is about 75,000 g/mole or greater” as required by claim 1, the Examiner relies upon
Hergenrother and Manaresi to show that Wu’s intrinsic viscosity, which is within
or overlaps with the intrinsic viscosity of the claimed composition disclosed at
page 2 of the Specification, is also related to or proportional to the weight average
molecular weight of the claimed composition. Ans. 5 (citing Hergenrother, Fig. 5
and p. 2912) and Ans. 11 (citing Manaresi, p. 598, col. 1,12).
Based on these findings, the Examiner concludes that one of ordinary skill in
the art interested in forming a composition containing the recited proportions of the
recited ingredients that has an intrinsic viscosity of about 0.7 to about 1.2, as
suggested by Wu, would have been led to the claimed composition having the
weight average molecular weight of “75,000 g/mole or greater” as recited in claim
1. Ans. 5-6 and 11-13. Alternatively, regardless of what is shown in either
Hergenrother or Manaresi, the Examiner determines that the above findings
demonstrate that the weight average molecular weight recited in claim 1 would
have naturally or necessarily flowed from following Wu’s suggestion of forming a
composition containing the recited proportions of the recited ingredients that has
Appellants’ intrinsic viscosity. Ans. 7, 12, 14.
Appellants do not question the above findings relating to the disclosure of
Wu. App. Br. 5-16. Nor do Appellants question the Examiner’s implicit finding
that the polyethylene-terephthalate-polyethylene isophthalate taught by Wu is a
different name for the polyethylene terephthalate-co-isophthalate recited in claim
1. Id. Rather, Appellants contend that “the Examiner has pointed to nothing to
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Application 13/376,284
demonstrate or suggest a composition according to the present claims having a
weight average molecular weight of about 75,000 g/mole or greater.” Id. at 9. We
are not persuaded by this argument.
Although Hergenrother notes the Mark-Houswink equation describing the
relationship between intrinsic viscosity and viscosity-average molecular weight as
argued by Appellants, it also illustrates the relationship between the weight-
average molecular weight of fractionated PET (polyethylene terephthalate) and the
intrinsic viscosity of the same at 25°C. See Hergenrother, p. 2912 and Fig. 5.
Consistent with Hergenrother, Manaresi also states that:
In the practical case of branched and poly dispersed polymers, a
comparison among intrinsic viscosities should be made, using
convenient average quantities taking into account the ‘viscosity
exponent’ in the Mark-Houwink equation. Semi-empirically and for
sake of simplicity we chose to consider the Mw values, the intrinsic
viscosity being nearly a weigh-average quantity. Our choice has also
been supported by the remarks reported in literature according to
which a correlation curve between (ij) and Mw constitutes one of the
most sensitive method for evidencing the presence of branches.
[(Manaresi, p. 598 (footnote omitted)).]
The Rule 132 Declaration filed by Sanjay Mehta on December 10, 2013 (“the
Mehta Declaration”) does not indicate to the contrary. As explained by the
Examiner (Ans. 15), the Mehta Declaration only shows that the intrinsic viscosity
and the weight average molecular weight of composition behave in the same
manner because it states that when the intrinsic viscosity (IV) of a composition is
constant, the weight average molecular weight of the same remains constant.
Moreover, according to page 8 of the Specification, Table 1 is directed to “[a]
series of polyethylene terephthalate-co-isophthalate copolyesters [that] were
prepared using different amounts of isophthalic acid and pentaerythritol [(chain­
branching agent)], polymerized to different final IV [(intrinsic viscosity)] levelsf.]”
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Application 13/376,284
Run Nos. 4 through 6 of Table 1 at page 9 of the Specification show that such
compositions having an intrinsic viscosity within the range disclosed in Wu happen
to have weight average molecular weights ranging from 100,827 to 110, 300, the
weight average molecular weight included in claim 1. Table 2 also shows
compositions having an intrinsic viscosity within the range disclosed in Wu happen
to have weight average molecular weights ranging from 98,250 to 135,770, the
weight average molecular weight included in claim 1.
Under these circumstances, with or without Hergenrother or Manaresi, we
concur with the Examiner that the weight average molecular weight recited in
claim 1 would have naturally or necessarily flowed from following Wu’s
suggestion of forming a composition containing the recited ingredients in the
recited proportions to provide an intrinsic viscosity that corresponds to Appellants’
disclosed intrinsic viscosity. Cf. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)
("The fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise have been obvious."); In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
explicitly discusses the [limitation], [applicants’] application itself instruct that [the
limitation] is not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed invention]”).
Appellants also contend that the presently claimed subject matter exhibits
unexpected results.5 App. Br. 9-14. In support of this contention, Appellants rely
upon Tables 1 and 2 at pages 9 and 10 of the Specification and the statements in
5 Appellants contend that their compositions having adequate melt strengths for
foam applications demonstrate unexpected results. App. Br. 10.
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Application 13/376,284
the specification referred to in paragraphs 9 and 10 of the Methta Declaration. Id.
10-14.
According to page 8 of the Specification, Table 1 is directed to “[a] series of
polyethylene terephthalate-co-isophthalate copolyesters [that] were prepared using
different amounts of isophthalic acid and pentaerythritol [(chain-branching agent)],
polymerized to different final IV [(intrinsic viscosity)] levels.” Of all of the Runs
in Table 1, only Run No. 6 is within the compositions included in claim 1. Run
No. 6, for example, employs a composition containing 6.5 weight percent of IP A
(isophthalic acid) and 1500 ppm of pentaerythritol (0.007 equivalents of
pentaerythritol (chain-branching agent)/mole diacid) that has an intrinsic viscosity
of 1.17 and a weight average molecular weight of 102,605. Spec. 9. Run Nos. 1-
5 employ IP A and/or pentaerythritol (chain-branching agent) in amounts below
those recited in claim 1. Spec. 9. Table 2 exemplifies copolyester compositions
that employ 6.5 weight percent of IP A and 500 ppm (0.004 equivalents/mole
diacid)6 of pentaerythritol which is below that recited in claim 1. Spec. 9-10.
These compositions have an intrinsic viscosity of about 1.1 dl/g. Spec. 9.
Appellants bear the burden of showing unexpected results. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results
rests on he who asserts them”). That burden requires Appellants to provide
evidence of unexpected results that are commensurate in scope with the claimed
subject matter. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(“Even assuming that the results were unexpected, Harris needed to show results
6 According to Example 2, 500 ppm of pentaerythritol is equal to 0.004
equiv./mole diacid. However, Table 1 indicates that 500 ppm of pentaerythritol is
equal to 0.002 equiv./mole diacid. These amounts are below the minimum amount
of the chain-branching agent recited in claim 1.
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covering the scope of the claimed range. Alternatively Harris needed to narrow the
claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that
one (or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to support.’”)
(Quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Such showing of
unexpected results must be established by facts. In re Mayne, 104 F.3d 1339, 1343
(Fed. Cir. 1997). However, as correctly explained by the Examiner at pages 16
through 20 of the Answer, Appellants fail to carry that burden. While the showing
is limited to a composition containing 6.5 weight percent of IP A (isophthalic acid),
the numerous additives not recited in claim 1, and 1500 ppm of pentaerythritol
(0.007 equivalents of pentaerythritol (chain-branching agent)/mole diacid) that has
an intrinsic viscosity of 1.17, claim 1 is not so limited. See also Ans. 16-20. On
this record, Appellants proffer no factual evidence to show that such limited
showing of unexpected results can be extended to the multifarious compositions
having different amounts of IPA relative to polyethylene terephthalate, different
amounts of different chain-branching agents, and different amounts of different
additives encompassed by claim 1. App. Br. 9-14. Appellants’ reliance on
conclusory statements in the Specification cannot take the place of objective
factual evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Lindner, 457 F.2d 506, 508 (CCPA 1972). As stated by our reviewing court in
Harris, 409 F.3d atl344:
The Board also correctly reasoned that the showing of unexpected
results is not commensurate in scope with the degree of protection
sought by the claimed subject matter because the elemental
composition of CMSX®-486 is at or near the midpoint of the claimed
range. While Harris's evidence may show a slight improvement over
some alloys, the record does not show that the improved performance
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would result if the weight-percentages were varied within the claimed
ranges. Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range.
Accordingly, we find no reversible error in the Examiner’s determination
that a preponderance of the evidence weighs heavily in favor of obviousness of the
subject matter recited in claims 1-3 and 5-8 within the meaning of 35 U.S.C.
§ 103(a).
DECISION
In view of the foregoing, the decision of the Examiner to reject claims 1-3
and 5-8 is AFFIRMED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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