Ex Parte Roodvoets et al

Patent Trial and Appeal Board

Mar 15, 2017

13395306 (P.T.A.B. Mar. 15, 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.
13/395,306 05/09/2012 Mark Ryan Roodvoets PR1030USPCT 7048
26158 7590 03/17/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
IPDocketing@WCSR.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK RYAN ROODVOETS and
FRANK WILHELM EMBS
Appeal 2016-002720
Application 13/395,3061
Technology Center 1700
Before JAMES C. HOUSEL, AVELYN M. ROSS, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—31, 33, and 34. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Invista North
America S.A.R.L. Appeal Br. 1.
Appeal 2016-002720
Application 13/395,306
STATEMENT OF THE CASE2
Appellants describe the invention as relating to methods of preparing
certain oxygen scavenging polymeric resins and articles produced by such
methods. Appeal Br. 2. An oxygen scavenger may be introduced into
polyester packaging for food products in order to inhibit spoilage of the food
products. Spec. 1:32—2—2. Claim 1, reproduced below, is the only
independent claim on appeal and is illustrative of the claimed subject matter:
1. A method for producing an oxygen scavenging resin
comprising:
a) reacting an aromatic diacid or its diester, and an
ionic diacid or its diester, with a diol and a metal compound to
produce an ionic copolyester,
b) cooling, cutting and drying the ionic copolyester
into solid pellets, and
c) mixing the dried ionic copolyester with a dried
oxidizable polymer, provided that the oxidizable polymer is not
a partially aromatic polyamide.
Appeal Br. 24 (Claims App’x).
REJECTION AND REFERENCES
On appeal, the Examiner maintains rejection of claims 1—31, 33, and
34 under 35 U.S.C. § 103 as unpatentable over Kezios et al., US
2007/0128389 Al, published June 7, 2007 (hereinafter “Kezios”) in view of
Cyr et al., US 6,455,620 Bl, issued September 24, 2002 (hereinafter “Cyr”).
Ans. 3.
2 In this decision, we refer to the Final Office Action mailed December 19,
2014 (“Final Act.”), the Appeal Brief filed May 19, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed November 6, 2015 (“Ans.”), and the Reply Brief
filed January 5, 2016 (“Reply Br.”).
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Application 13/395,306
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by appellants and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ contentions,
we are not persuaded that Appellants identity reversible error. Thus, we
affirm the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
The Appellants present separate arguments for claim 1, claims 23 and
24, and claims 25 and 26. We limit our discussion to those claims. Claims
2—22, 27—31, 33, and 34 will stand or fall with claim 1, from which they
depend. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Kezios teaches production of an ionic
copolyester as recited as element (a) of claim 1. Ans. 3 (providing citations
to Kezios). The Examiner also finds that the resin may be pelletized as
recited in element (b). Id. The Examiner further finds that Kezios teaches
co-barrier resins including active oxygen barrier resins and “optional
inclusion of. . . thermoplastic polymeric fillers, oxygen scavengers, barrier
enhancing aids, etc.” Id. at 3—4, 8. The Examiner finds that Kezios does not
specifically teach an oxidizable co-barrier resin that is not a partially
aromatic polyamide but finds that Cyr teaches poly(alkylene glycol)
polyethers and polyester/poly(alkylene glycol) copolymers which act as
active oxygen scavenging polymers suitable for use in thermoplastic
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Application 13/395,306
polymers including polyesters. Id. at 4 (providing citations to Cyr). The
Examiner concludes that it would have been obvious to include the active
polyethers of Cyr in the resin composition of Kezios because Kezios teaches
the inclusion of such materials and Cyr teaches such polyethers “are suitable
for providing oxygen scavenging in polyester thermoplastic resin
compositions.” Id. A preponderance of the evidence supports the
Examiner’s findings and conclusion.
With respect to claim 1, Appellants argue that a person of skill in the
art would not have combined Cyr’s oxygen scavengers with Kezios because
Kezios teaches polyester resins that exhibit improved gas barrier resistance.
Appeal Br. 6; see also Reply Br. 2—6. In particular, Appellants argue that
Kezios suggests only combining its teachings with resins “having a greater
gas barrier resistance than the polyester resin itself’ (Appeal Br. at 6—7
(citing Kezios 146) and argue that Cyr’s oxygen scavengers do not meet this
criteria {id. at 12—13 (citing August 25, 2014, Declaration of Dr. Geoffrey
Scantlebury)). Appellants further argue that because of Kezios’s teachings
regarding gas barrier resistance, a person of skill in the art would not have
reasonably expected success in the proposed combination. Appeal Br. 14-
lb; Reply Br. 6.
Kezios as a whole, however, does not support Appellants’ argument.
Rather, a preponderance of the evidence supports the Examiner’s position
(Ans. 8) that Kezios teaches co-barrier resins as referred to by Appellants
“as well as,” for example, inclusion of oxygen scavengers. See, e.g., Kezios
1 63 (“Also, although not required, other additives normally used in
polyesters and/or other thermal plastic compositions, may be present in the
invention resin composition. Such additives may include . . . oxygen
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Application 13/395,306
scavengers . . . .”) (emphasis added), 1104 (“An active oxygen barrier resin
may be formed by including a material that reacts with oxygen and
chemically traps the oxygen . . . Appellants do not persuasively dispute
the Examiner’s finding that “Kezios teaches . . . the objective of improved
gas barrier properties is obtainable by the method of Kezios and by selection
of the polyester of Kezios and may further be improved a number of ways,
including . . . inclusion of fillers, of co-barrier resins . . . Ans. 8—9; see
also Kezios Fig. 1 (referring to “Standard additives” as “Co-barrier
components”).
The preponderance of evidence supports that the use of oxygen
scavengers of Cyr in Kezios would have been predictable use of a prior art
element according to established function. See Ans. 4; 12—13; Cyr 3:38—55
(describing preferred copolymers for oxygen scavenging). Appellants’
argument therefore does not identify error in the Examiner’s obviousness
conclusion. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellants also argue that the method of claim 1 results in
“unexpectedly short induction times and low haze.” Appeal Br. 16.
Appellants further assert that the recited method is “more effective than a
master batch process in reducing haze and decreasing the induction
period. . . .” Id. A party asserting unexpected results as evidence of
nonobviousness has the burden of proving that the results are unexpected. In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires
Appellants to proffer factual evidence that actually shows unexpected results
relative to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). Here, Appellants cite examples from the
Specification to support this point (id.), but Appellants do not present
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evidence establishing improved properties as compared to the closest prior
art (i.e., an embodiment of Kezios making use of an oxygen scavenger).
Ans. 14. Rather, Appellants merely state, without evidentiary support, that
“it is unexpected” that Kezios’s resins would exhibit the same beneficial
properties as resins made from the recited method. Appeal Br. 17—18.
Appellants’ unexpected results argument thus does not overcome the
evidence establishing obviousness as explained above.
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection of claims 1—22, 27—31, 33, and 34.
Claim 23 recites “[t]he method of claim 1 wherein said oxidizable
polymer is a polymer comprising an allylic, a benzylic or a a-hydrogen atom
adjacent to a functional group, wherein the a-hydrogen atoms is in the
backbone of, or as a pendant side-chain to, the polymer chain.” Appeal
Br. 27 (Claims App’x). Appellants argue that a person of skill in the art
“would not be led to pluck the specific types of oxidizable polymers recited”
in claim 23 from Cyr. Appeal Br. 19. We agree with the Examiner,
however, that claim 23 is broadly directed to general types of oxidizable
polymers having various broadly recited functional groups. Ans. 15.
Moreover, Appellants do not persuasively dispute the Examiner’s finding
that Cyr teaches preferred oxygen scavengers that read on claim 23. Id. As
such, Appellants’ argument does identify Examiner error. See Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a
reference “discloses a multitude of effective combinations does not render
any particular formulation less obvious.”).
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Appellants do not argue claim 24 separately from claim 23. Appeal
Br. 18—19. We thus sustain the Examiner’s rejection of claims 23 and 24 for
the reasons explained above. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 25 recites “[t]he method of claim 23 wherein said oxidizable
polymer is present in an amount of from about 1 to 10 weight % of the ionic
copolyester.” Appeal Br. 28 (Claims App’x). Appellants argue that a
person of skill would not have understood Kezios as teaching a percentage
within this range as alleged by the Examiner. Appeal Br. 20—21. A
preponderance of the evidence, however, supports the Examiner’s finding
that Kezios teaches 2—8 weight percent co-barrier resins when used in a low-
IPA PET (i.e., a polyethylene terephthalate polymer with low isopropyl
alcohol). Ans. 16. Kezios suggests that low-IPA PET could have zero or
near-zero isopropyl alcohol. Id.', see also Kezios Fig. 1 (indicating that low
IPA resins are up to 5% IP A), | 84 (indicating that low-IPA PET resin
contains IPA up to 6% by mol).
If the co-barrier resin is 2—8 weight percent and IPA is approximately
zero percent, the ionic copolyester would be about 92—98%. See Kezios Fig.
1 (indicating that its composition is TPA and EP/DEG (i.e., components of
the ionic copolyester), IPA, and “Standard additives (Co-barrier
components)”). Thus, 2—8 weight percent additive as a percentage of the
overall composition would be about 2—8.7 percent as a percentage of ionic
copolyester.3 The preponderance of the evidence therefore supports the
Examiner’s conclusion that “one of ordinary skill in selecting the amount of
3 This range is calculated by dividing 2 parts additive divided by 98 parts
ionic copolyester and by dividing 8 parts additive by 92 parts ionic
copolyester.
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barrier resin [i.e., amount of oxygen scavenger] for a polyester that is free of
IPA would look to this range [i.e., the recited range of claim 25].”
Appellants also do not persuasively dispute the Examiner’s reasoning
as to why Kezios’s teachings regarding a high-IPA resin and Cyr’s teachings
further support that a person of skill in the art would have utilized the recited
range. Ans. 16. Because the range taught by Kezios overlaps the recited
range, obviousness is established. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“Aprima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art.”).
Appellants do not argue claim 26 separately from claim 25. Appeal
Br. 20—21. We thus sustain the Examiner’s rejection of claims 25 and 26 for
the reasons explained above. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1—31, 33, and 34.
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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