Ex Parte Ritz

Patent Trial and Appeal Board

Jun 7, 2018

13684663 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/684,663 11/26/2012
25280 7590
Legal Department (M-495)
P.O. Box 1926
Spartanburg, SC 29304
06/07/2018
FIRST NAMED INVENTOR
Ricky Lee Ritz
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.
6620A 1058
EXAMINER
ANTHONY, JOSEPH DAVID
ART UNIT PAPER NUMBER
1761
MAILDATE DELIVERY MODE
06/07/2018 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 RICKY LEE RITZ 1
Appeal2017-009566
Application 13/684,663
Technology Center 1700
Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
AVEL YN M. ROSS, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Millikin ("Ritz") timely appeals under 35 U.S.C. § 134(a) from the
Final Rejection2 of all pending claims 1, 3, 4, 6-9, 11, and 18-28. We have
jurisdiction. 35 U.S.C. § 6. We affirm for reasons well-stated by the
Examiner in the Final Rejection and in the Answer.
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Milliken &
Company ("Millikin"). (Appeal Brief, filed 13 December 2016 ("Br."), 2.)
2 Office Action mailed 13 July 2016 ("Final Rejection").
Appeal2017-009566
Application 13/684,663
A. Introduction 3
OPINION
The subject matter on appeal relates to compositions comprising
alkoxylated Bisphenol A ("BP A") compounds, wherein the amount of
residual bisphenol A, measured prior to filtration or purification, is less
than 100 ppm. Alkoxylated BPA compounds are disclosed to be useful in a
wide variety of products, such as packaging materials, printing ink, and
container linings (Spec. 1, 11. 14--16), but there is a growing demand for
materials with low BP A content (id. at 1, 1. 26-2, 1. 1 ).
The '663 Specification teaches that, "[ w ]hen alkylene oxide is added
by prior art methods, there remains a significant amount (greater
than 200 ppm) of residual Bisphenol A in the alkoxylated Bisphenol A
product." (Spec. 8, 11. 15-17.) However, the Specification reveals that when
alkylene oxide is added to BP A in two separate stages, separated by a rest
period during which the reacting mixture is held at elevated temperature and
pressure, "the amount of residual Bisphenol A remaining in the final product
is reduced and such a reduction is achieved on a consistent basis." (Id. at 10,
11. 3-5.) In the words of the Specification, "[t]his discovery is considered to
be unexpected and counter-intuitive to normal manufacturing processes."
(Id. at 11. 5-6.)
3 Application 13/684,663, Low residual bisphenol A alkoxylated materials,
their preparation and use thereof, filed 26 November 2012, claiming the
benefit of a provisional application filed 6 December 2011. We refer to the
'"663 Specification," which we cite as "Spec."
2
Appeal2017-009566
Application 13/684,663
Ritz seeks patent protection for various compositions of BP A made by
this process.
Claim 28 is representative of the dispositive issues and reads:
A composition comprising:
(I)
(a) an alkoxylated Bisphenol A compound represented by
structure (I):
,=, CH:,,= ' . -, \
H{OCHf~H1~"{0C!-hCH)xO----·,~- !,'.)-.... + ... ,~. 1.!1----0iCHCH-,Qh(CHCH,>k'H .. T , ,, "l ' \), ! \), I/ ' I '~" ' > l Ao ho
' I ...... CH--·····'· !
R;;:: Ri ,• R1 R2
wherein Ri and R2 are independently selected from
H, CH3, CH2CH3 and wherein
x + y = 2.2 to 50 and
w + z = 0 to 50; and
(b) residual Bisphenol A in an amount
greater than zero but less than 100 PPM;
wherein the amount of residual Bisphenol A is
determined prior to filtration or purification.
(Claims App., Br. 25.)
The Examiner maintains the following grounds of rejection4• 5 :
A. Claim 28 stands rejected under 35 U.S.C. § 103(a) in view of
the teachings of Hirano. 6
4 Examiner's Answer mailed 20 April 2017 ("Ans.").
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Yoshiaki Hirano et al., Aromatic ethers and process for producing
aromatic ethers, U.S. Patent Application Publication 2004/0181099 Al
(2004).
3
Appeal2017-009566
Application 13/684,663
Al. Claims 1, 3, 4, 7-9, 11, 20, 21, and 25-27 stand rejected
under 35 U.S.C. § 103(a) in view of the combined teachings
of Hirano and Ito. 7
A2. Claims 6, 18, 19, and 22-24 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Hirano and either Satou 8 or Lent. 9
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Ritz, citing Hirano, urges the Examiner erred harmfully in holding
claim 28 obvious in view of Hirano because "Hirano teaches that unreacted
phenols at less than 500 ppm can only be produced after purification."
(Br. 7, 11. 9-10.) Ritz (id. at 11. 12-18) quotes the following passage from
Hirano in support of this statement:
Furthermore, in case of using the anion exchange resin as a
catalyst, it is possible to efficiently carry out purification of
reaction products since it is easy to separate the catalyst from
the reaction solution. Thereby, the content of unreacted
phenols is suppressed as low as less than 500 ppm relative to
the aromatic ethers (the unit is mass, hereinafter, the unit is
the same unless otherwise specified), preferably less
than 100 ppm, and more preferably less than 30 ppm.
(Hirano 9 [0093].)
7 Senji Ito, Heatable package of food, U.S. Patent No. 3,890,448 (1975).
8 Hiroyuki Satou et al., UV-curable ink-jet ink, electronic circuit board,
electronic component and display device, U.S. Patent Application
Publication 2008/0038570 Al (2008).
9 Bruce A, Lent and Nicolay Shevelev, Etch-resistant jet ink and process,
U.S. Patent No. 5,270,368 (1993).
4
Appeal2017-009566
Application 13/684,663
It is well-settled that product-by-process claims are claims to the
product, and the recited process steps have patentable weight only to the
extent that the product made by those steps differs from a similar product
made by a different process. As our reviewing court has explained,
[r]egardless of how broadly or narrowly one construes a
product-by-process claim, it is clear that such claims are
always to a product, not a process. It has long been
established that one cannot avoid anticipation by an earlier
product disclosure by claiming the same product more
narrowly, that is, by claiming the product as produced by a
particular process.
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed.
Cir. 2006). The court held, "[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process." Id., quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Ritz does not dispute that Hirano discloses alkoxylated BP A with low
residual BPA content within the scope of the appealed claims. Nor does
Ritz argue that the claimed alkoxylated BP A compositions differ in
nonobvious ways from compositions described or suggested by Hirano in
any way other than the amount of residual BP A before purification. Thus,
the claimed low-residual BPA alkoxylated BPA compositions read on, or
would have been obvious over, the low-residual BP A alkoxylated BP A
compositions described or suggested by Hirano.
Ritz does not raise substantively distinct arguments for patentability
of the other claimed compositions.
We therefore affirm the appealed rejections.
5
Appeal2017-009566
Application 13/684,663
C. Order
It is ORDERED that the rejection of claims 1, 3, 4, 6-9, 11, and 18-
28 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).
AFFIRMED
6