Ex Parte Shi et al

Board of Patent Appeals and Interferences

Jan 31, 2012

10967803 (B.P.A.I. Jan. 31, 2012)

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.
10/967,803 10/18/2004 Yu Shi 25040-1222 9190
29052 7590 02/01/2012
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
ATLANTA, GA 30309
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
02/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte YU SHI, MARK RULE,
CHRISTOPHER C. KJORLAUG, LINDA K. ANTHONY,
and THOMAS H. MILTON
______________

Appeal 2011-001883
Application 10/967,803
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 1-3, 5-7, 9, 10, and
12-22 in the Office Action mailed August 5, 20091. 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2009).
An oral hearing was held January 12, 2012.
We affirm the decision of the Primary Examiner.

1 This appeal is related to Appeal 2010-010987 in Application 11/126,962.
Appeal 2011-001883
Application 10/967,803
2
Claim 1 illustrates Appellants’ invention of a container made from an
injection molded preform, and is representative of the claims on appeal:
1. A container made from an injection molded preform, the preform
having an open ended mouth forming portion, an intermediate body forming
portion, and a closed base forming portion and comprising a poly(ethylene
terephthalate) copolymer (PET Copolymer) comprising a diol component
having repeat units from ethylene glycol and a non-ethylene glycol diol
component and a diacid component having repeat units from terephthalic
acid and a non-terephthalic acid diacid component, wherein the total amount
of non-ethylene glycol diol component and non-terephthalic acid diacid
component present in the PET Copolymer is in an amount from about 0.2
mole percent to less than about 2.2 mole percent, the repeat units from the
non-terephthalic acid diacid component are present in the PET Copolymer in
an amount from about 0.1 to about 1.0 mole percent, and the repeat units
from the non-ethylene glycol diol component are present in the PET
Copolymer in an amount from about 0.1 to about 2.0 mole percent, based on
100 mole percent of the diol and 100 mole percent of the diacid component.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-3, 5-7, 9, 10, and
12-22 over Takahashi (US 6,320,014 B1).2 App. Br. 3;3 Ans. 3.
Appellants do not argue any particular claim and thus we decide this
appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Opinion
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness

2 The Examiner states the rejection as involving claims 1-3, 5-7, 9, 10, and
12-17, 19, and 22 at page 3 of the Answer but discusses claims 18, 20, and
21 at page 4 of the Answer. Thus, the Examiner’s ground of rejection
encompasses all of appealed claims 1-3, 5-7, 9, 10, and 12-22 as Appellants
recognize. App. Br. 3; Reply Br. 2.
3 We considered these documents: the Appeal Brief filed February 22, 2010;
the Answer mailed April 27, 2010; and the Reply Brief filed June 28, 2010.
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Application 10/967,803
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of the claimed container encompassed by claim 1. In this respect, we are in
agreement with the Examiner’s analysis of the evidence in Takahashi and
the findings of fact and conclusions of law stated in the Answer, to which we
add the following for emphasis with respect to Appellants’ arguments.
We initially determine that claim 1 specifies a container made from an
injection molded preform comprising at least any amount of a PET
copolymer comprising at least the specified diol components and the diacid
components. The open-ended term “comprising” opens claim 1 to include
containers prepared from preforms prepared with any amount of the
specified PET copolymer and any amount of any other polymer(s) and/or
copolymer(s) which can be used to form a preform to make a container. We
find no disclosure in the Specification requiring a different construction of
the term “comprising.” See, e.g., In re Crish, 393 F.3d 1253, 1257 (Fed. Cir.
2004)(“[I]t is well-established that ‘[c]omprising’ is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.’” (citation omitted)); Exxon Chem. Pats., Inc. v. Lubrizol Corp.,
64 F.3d 1553, 1555 (Fed. Cir. 1995) (“The claimed composition is defined
as comprising - meaning containing at least - five specific ingredients.”).
Appellants submit that the Examiner erred in determining that
Takahashi would have taught one of ordinary skill in the art a claimed
container made from an injection molded preform comprising a specified
PET copolymer, and in finding that the evidence in the Kriegel declaration4

4 Declaration Under 37 C.F.R. 1.132 of Robert Michael Kriegel executed
“July 15th 2009” and submitted July 15, 2009.
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Application 10/967,803
4
does not establish unexpected results that patentability distinguish
Takahashi. We disagree.
The Examiner finds that Takahashi would have disclosed a container
that is formed from an injection molded preform “comprising polyethylene
terephthalate (column 6, line 34)” in which the diol component can include a
non-ethylene glycol diol component and the diacid component can include a
non-terephthalic diacid component, each in an “amount of between 0 mole%
and 20 mol%.” Ans. 3-4, citing Takahashi col. 6, l. 34 to col. 7, l. 1. The
Examiner determines that while Takahashi does not teach the claimed mole
percent range of about 0.1 to about 2.0 for the non-ethylene glycol diol
component, the claimed mole percent range of about 0.1 to about 1.0
non-terephthalic diacid component, and the claimed mole percent range of
from about 0.2 to about 2.2 for the total amount of these components in the
PET copolymer, the relied on disclosure encompasses the claimed mole
percent ranges in the disclosed “0% and 20 mol%” range for each of the
components. Ans. 4. The Examiner concludes that one of ordinary skill in
the art would have selected ranges within the disclosed mole percent ranges
for each of the diol and diacid components through routine optimization.
Ans. 4.
Appellants submit that as shown in the Kriegel declaration, Takahashi
discloses broad ranges for the amounts of a non-ethylene glycol diol
component and a non-terephthalate acid diacid component based on a
polyester formed by mixing a PET polyester and a polyethylene isophthalic
acid copolymer (hereinafter PEI polyester). App. Br. 6 and 9. Appellants
contend “[t]he ranges in Takahashi are so large . . . that they encompass a
significantly greater number of possible formulations than the claimed
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invention.” App. Br., 6, citing Kriegel decl. ¶¶ 4-7; Reply Br., 3, citing
Kriegel decl. ¶¶ 4-7. According to Appellants, “Takahashi provides two
examples of the [PET polyester] (compounds A & C) with different
viscosities, either of which can be mixed with the [PEI polyester]
(compound B) to form a polyester.” App. Br. 9, citing Takahashi col. 6,
ll. 18-25 and col. 11, ll. 55-65. Appellants contend that “[t]he lowest
amount of non-terephthalic acid diacid component is approximately 9 mol %
(as compared to Appellants’ claimed range of 0.1 to 1.0 mol %) and the
lowest combined amount non-terephthalic acid diacid components and non-
ethylene glycol diol components is approximately 9.5 mol % (as compared
to Appellants’ claimed range of 0.2 to 2.2 mol %).” App. Br. 9, citing
Kriegel decl. ¶¶ 9-12.
We find that declarant Kriegel attests that Takahashi discloses a PET
polyester pellet that can contain 15 to 99.5 mole % terephthalic acid, 0.5 to
85 mol % isophthalic acid, and < 20 mole % other acids; and 25 to 99.5 mol
% ethylene glycol, 0.5 to 75 mole % “1-3-bisbenzene” diol, that is, 1,3-bis
(2-hydroxyethoxy)benzene, and < 15 mol % other diols. Kriegel decl. ¶ 4,
citing Takahashi col. 4, ll. 5-61. In this respect, we find that support for
declarant Kriegel’s discussion of Takahashi includes column 3, line 66, to
column 4, line 4: “The polyester pellets of the invention are made of a
polyester which comprises dicarboxylic acid constituent units derived from
dicarboxylic acids containing terephthalic acid and isophthalic acid and diol
constituent units derived from diols containing ethylene glycol and 1,3-bis
(2-hydroxyethoxy)benzene.”
We find that Declarant Kriegel attests, based on his review of
Takahashi, that “Takahashi teaches a polyester made of 0.5 to 85 mol % of
Appeal 2011-001883
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6
non-terephthalic acid units and 0.5 to 75 mol % of non-ethylene glycol
units.” Kriegel decl. ¶ 4. We find that on this basis and the claimed mol %
ranges in claim 1, declarant Kriegel attests that “Takahashi teaches a total of
645,525 possible combinations [855 x 755] while Applicants’ claims
disclose a total of 164 possible combinations [(10 x 200) – 36],” establishing
that Takahashi’s ranges encompass “nearly 4,000 times the number of
possible combinations” than the claimed ranges. Kriegel decl. ¶ 7.
We find declarant Kriegel attests that “Takahashi provides two
examples of the [PET polyester] (compounds A & C) with different
viscosities, either of which can be mixed with the [PEI polyester]
(compound B) to form a polyester. (Col. 6, lines 18-25; Col. 11, lines
55-65).” Kriegel decl. ¶ 10. We find further declarant Kriegel attests that
“Takahashi’s Example 1 describes the synthesis of a polyester from blending
prepolymer A and copolymer B. (Col. 16, Line 14 – Col. 19, Line 46).”
Kriegel decl. ¶ 11.
The difficulty we have with Appellants’ position, including declarant
Kriegel’s testimony, is that the Examiner relies on Takahashi’s disclosure of
a preform “comprising polyethylene terephthalate” as specified in column 6,
line 34 to column 7, line 1, of Takahashi, and indeed relies specifically on
the ranges for the components in this PET polyester set forth in this
disclosure. Ans. 3-4. Indeed, the Examiner relies on the combination of
Takahashi’s PET polyester per se and Takahashi’s PEI polyester per se to
form Takahashi’s pellet for the preform. See Takahashi col. 6, l. 16 to col.
11, l. 53. Thus, the Examiner does not rely on the further teachings of
Takahashi to form the pellet for a preform from a single polyester formed by
solid state polymerization of a blend of PET and PEI polyesters upon which
Appeal 2011-001883
Application 10/967,803
7
Appellants’ arguments are based.
In this respect, we find that Takahashi, taken as a whole, would have
disclosed to one of ordinary skill in the art forming a preform from a pellet
prepared from a mixture of a PET polyester and a PEI polyester wherein the
pellet contains terephthalic acid, isophthalic acid, and other dicarboxylic
acid constituent units, and ethylene glycol, 1,3-bis(2-hydroxyethoxy)
benzene, and other diol constituent units. Takahashi col. 3, l. 66 to col. 5,
l. 5. Takahashi teaches processes (1) and (2) for preparing the mixtures of
PET polyesters (A) or (C), respectively, and PEI polyester (B) by blending
PET and PEI polyesters, pelletizing the blend, and crystallizing the pellets.
Takahashi col. 3, ll. 4-43. We find that Takahashi further discloses that “[i]n
the present invention, the blend may be subjected to solid phase
polymerization after crystallization,” thus disclosing to one of ordinary skill
in the art that solid state polymerization of the blend of PET and PEI
polyesters to form a product polyester is optional. Takahashi col. 3,
ll. 42-43; see also col. 3, ll. 21-22.
We further find that, as relied on by the Examiner, Takahashi
illustrates process (1) for preparing polyester pellets by blend of PET
polyester (A) and PEI polyester (B). Takahashi col. 6, l. 16 to col. 11, l. 53.
We find that Takahashi discloses that the blend of PET (A) and PEI (B)
polyesters is pelletized, the pellet crystallized, “and preferably further
subjecting the pellets to solid phase polymerization.” Takahashi col. 6,
ll. 20-31. We find that Takahashi discloses that the blend can be melt
kneaded at 260ºC for 2 seconds without a transesterification catalyst, and
that solid state polymerization of the blend containing PET and PEI
polyesters does not proceed during crystallization. Takahashi col. 9, l. 66 to
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8
col. 11, l. 10. We find that Takahashi then discloses that “[i]n the present
invention, the crystallized blend may be subjected to solid phase
polymerization, if desired.” Takahashi col. 11, ll. 14-15. We find that
Takahashi discloses that the polyester pellets produced by the process can be
used to prepare molded products including injection molded preforms and
stretch blow molded bottles from such preforms. Takahashi col. 11,
ll. 45-48, and col. 30, ll. 9-37.
Thus, we find that Takahashi would taught one of ordinary skill in the
art to form a preform from a pellet formed from a blend comprising a PET
polyester (A) per se and a PEI polyester (B) per se, which polyesters have
not been formed into a third polyester by the optional solid state
polymerization step, with a reasonable explanation of success. See, e.g.,
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, (Fed. Cir.
1989), quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“But in a
section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.’”); Lamberti, 545 F.2d at 750
(“The fact that neither of the references expressly discloses asymmetrical
dialkyl moieties is not controlling; the question under 35 U.S.C. 103 is not
merely what the references expressly teach, but what they would have
suggested to one of ordinary skill in the art at the time the claimed invention
was made.”).
On this record, and contrary to Appellants’ contentions, we find that a
preponderance of the evidence in Takahashi supports the Examiner’s
position that, prima facie, Takahashi teaches a container made from an
injection molded preform “comprising polyethylene terephthalate”
Appeal 2011-001883
Application 10/967,803
9
containing non-terephthalic acid diacid and non-ethylene glycol diol
components in amounts which encompass the claimed amounts of these
components specified in claim 1. Ans. 3-4; App. Br. 14-15. Thus, the
Examiner reasonably concludes that one of ordinary skill in the art routinely
following the teachings of Takahashi would have reasonably arrived at a
workable or optimum ranges of amounts of the two “non-” components by
routine experimentation in the expectation that preforms prepared from such
PET polyesters blended with PEI polyesters would have the same or similar
properties as other preforms prepared within the teachings of such PET
polyesters, including those outside of the claimed “non-“ component ranges
specified in claim 1. See, e.g., In re Peterson, 315 F.3d 1325, 1330, (Fed.
Cir. 2003) (“The normal desire of scientists or artisans to improve upon what
is already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”); In re Boesch, 617 F.2d 272, 275-76 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” (citations omitted)); In re
Aller, 220 F.2d 454, 456-58 (CCPA 1955) (“[W]here the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).
We find that Appellants have not carried the burden of establishing
the patentability of the claimed containers encompassed by claim 1 over
Takahashi. We determined above that Appellants’ contentions based on a
third polyester prepared by solid state polymerization of a blend of PET and
PEI polyesters does not address the thrust of the Examiner’s ground of
rejection. Thus, Appellants’ contentions do not point out errors in the
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Examiner’s position. Appellants further contend that one of ordinary skill in
the art would have used the “conventional” PET polyesters that “likely”
contain large amounts of the non-ethylene glycol diol component in
following the teachings of Takahashi. App. Br. 9-10, citing Kriegel decl.
¶ 12. See Spec. 8:4-20. We find that attestations of declarant Kriegel are
based on the unsupported “[assumption] that the amount of diethylene glycol
in Takahashi’s polyester is comparable to conventional polyester
compositions (which contain from about 2.4 to about 2.9 mol % of
diethylene glycol).” Kriegel decl. ¶ 12. We find that Appellants also
disclose in the Specification that PET can be prepared with lower amounts
of diethylene glycol by “[s]uitable methods.” Spec. 8:14-20. Thus, on this
record, there is no evidence that Takahashi is non-abled with respect to PET
polyesters that “contain ethylene glycol units in amounts of . . . preferably . .
. 100% by mol” and no other diol components. Takahashi col. 6, ll. 62-67.
Thus, Appellants’ unsupported contention that Takahashi’s PET polyesters
as relied on by the Examiner contain at least about 2.4 mol % of ethylene
glycol is entitled to little weight. See, e.g., In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re
Lindner, 457 F.2d 506, 508 (CCPA 1972).
We agree with the Examiner’s finding that Appellants’ contentions of
unexpected results are not based on a comparison between the claimed
container and Takahashi which is the closest prior art, and therefore does not
establish that unexpected results are obtained within Takahashi’s ranges.
Ans. 5-6. Indeed, Appellants do not contend that the comparison between
“representative sample #3,” representing claim 1, and “comparative samples
#1 and #2,” identified as “conventional PET copolymers, in the evidence in
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the Specification reflect the teachings of Takahashi. App. Br. 11-14, citing
Kriegel decl. ¶¶ 8 and 14-23, citing Spec. 18:1 to 21:3. Indeed, there is no
evidence that the evidence in the Specification considered by declarant
Kriegel reflects Takahashi’s container prepared from a blend of PET and
PEI polyesters as relied on by the Examiner, which is the closest prior art,
thus reflecting the thrust of the ground of rejection. See, e.g., In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” (citation omitted)); In re
Burckel, 592 F.2d 1175, 1179-80 (CCPA 1979) (the claimed subject matter
must be compared with the closest prior art in a manner which addresses the
thrust of the rejection); In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“[W]e
do not feel it an unreasonable burden on appellants to require comparative
examples relied on for non-obviousness to be truly comparative. The cause
and effect sought to be proven is lost here in the welter of unfixed
variables.”). To the extent that the comparison is considered an indirect
comparison, Appellants have not established that such evidence reliably
demonstrates unexpected results for the claimed container vis-à-vis the
container prepared from Takahashi’s blend of PET and PEI polyesters. See,
e.g., In re Blondel, 499 F.2d 1311, 1317 (CCPA 1974) (“Appellants’ brief
goes through a detailed, step-by-step analysis of the evidence in support of
the conclusion to be drawn from the indirect comparison,” establishing that
the indirect evidence provided a reliable indication of the performance of the
closest claimed and prior art compounds). Thus, on this record, the asserted
comparisons establish no more than the properties of the claimed containers
encompassed by claim 1. See, e.g., In re Hoch, 428 F.2d 1341, 1343-44
Appeal 2011-001883
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(CCPA 1970) (evidence must provide an actual comparison of the properties
of the claimed invention with the disclosure of the reference).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
teachings of Takahashi with Appellants’ countervailing evidence of and
argument for nonobviousness and conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 1-3, 5-7, 9, 10, and 12-22 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED
tc