Ex Parte Shi et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11126962 (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.
11/126,962 05/11/2005 Yu Shi 25040-1318 3424
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, CHRISTOPHER C. KJORLAUG,
LINDA K. ANTHONY, and THOMAS H. MILTON
______________

Appeal 2010-010987
Application 11/126,962
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 1-14 in the Office
Action mailed September 30, 2009.1 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2009).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of an injection molded

1 This appeal is related to Appeal 2011-001883 in Application 10/967,803.
Appeal 2010-010987
Application 11/126,962
2
preform for making a stretch blow molded container, and is representative of
the claims on appeal:
1. An injection molded preform for making a stretch blow molded
container having an overall stretch ratio of the container relative to the
preform of from about 8 to about 12,
wherein the overall stretch ratio is a product of a hoop stretch ratio
and an axial stretch ratio, wherein the hoop stretch ratio of the container
relative to the preform=(maximum internal container diameter/internal
preform diameter) and the axial stretch ratio of the container relative to the
preform=(height of container below the finish/height of preform below the
finish),
wherein the hoop stretch ratio is form about 4.5 to about 5.4 and the
axial stretch ratio is from about 1.5 to about 2.2, and
wherein the preform comprises a LNSR PET copolymer, wherein the
LNSR PET copolymer has a free blow volume of from about 400 to less
than about 650 ml measured at 100ºC and 90 psi using a 25 gram weight
preform designed for a 500 ml container with maximum diameter of 65 mm
and height of 200 mm from below the container finish and having a hoop
stretch ratio of 5.5 and an axial stretch ratio of 2.6,
wherein the LNSR PET copolymer comprises as polye(ethylene
terephthalate) [sic] 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 poly(ethylene terephthalate) 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
poly(ethylene terephthalate) 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 poly(ethylene terephthalate) copolymer in
an amount from about 0.1 to about 2.0 mole percent, based on a total of 200
mole percent including 100 mole percent of the diol component 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 1-14 over Takahashi
Appeal 2010-010987
Application 11/126,962
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(US 6,320,014 B1) in view of Hosono (US 5,798,183). Br. 4;2 Ans. 3.
Appellants do not argue any particular claim and thus we decide this
appeal based on representative 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
of the claimed injection molded preform for making a stretch blow molded
container encompassed by claim 1. In this respect, we are essentially in
agreement with the Examiner’s analysis of the evidence in the combined
teachings of Takahashi and Hosono 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 an injection molded
preform for making a stretch blow molded container that has an overall
stretch ratio of the container relative to the preform in the specified range,
wherein the overall stretch ratio is the product of the defined hoop stretch
ratio in the specified range and the defined axial stretch ratio in the specified
range. Spec. 8:1-12 and 8:23 to 9:2. The claimed injection molded preform
comprises at least, among other things, an LNSR (low natural stretch ratio)
PET (polyethylene terephthalate) copolymer having the specified free blow
volume, the LNSR PET (polyethylene terephthalate) copolymer comprising
at least, among other things, the specified diol components and the diacid
components. Spec. 7:12-29 and 13:5-34. The open-ended terms
“comprises” and “comprising” opens claim 1 to include injection molded

2 We considered these documents: the Appeal Brief filed February 22, 2010,
and the Answer mailed May 10, 2010.
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preforms prepared from 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 an injection molded preform for making a stretch blow molded
container having the specified overall stretch ratio. We find no disclosure in
the Specification requiring a different construction of these open-ended
terms. 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.”).
The Examiner finds that Takahashi would have disclosed to one of
ordinary skill in the art an injection molded preform for a container wherein
the preform comprises a PET copolymer that contain a non-ethylene glycol
diol component and a non-terephthalic diacid component in mol percent
ranges that encompass the claimed mol percent ranges. Ans. 3-4. The
Examiner further finds that Hosono would have disclosed to one of ordinary
skill in the art a peripheral stretch factor, that is, ratio, range and an axial
stretch factor, that is, ratio, range for preparing a pressure resistant container
from a preform, and concludes that one of ordinary skill would have been
led to use peripheral stretch and axial stretch ratios in preparing Takahashi’s
preform and container depending on the use of the container. Ans. 4.
Appellants’ first principle contention is that the Examiner erred in
concluding that Hosono’s peripheral stretch and axial stretch ratios read on
the claimed hoop stretch and axial stretch ratios. Br. 4-5 and 6. We agree
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with Appellants that Hosono’s peripheral, that is, hoop, stretch ratio and
axial stretch ratio are not determined in the same way as the claimed hoop
stretch and axial stretch ratios, and thus would result in different ratios for
the same preform and container. Br. 6-10 and 14-15, citing Spec. 8:1-12,
and Hosono col. 9, ll. 30-43, and col. 10, ll. 15-21, and Kriegel I decl.
¶¶ 8-143. Ans. 5-7.
We cannot, however, agree with Appellants that the claimed preform
design achieves surprising and unexpected results when injection molded
preforms comprising an LNSR PET copolymer are used to make a stretch
blow molded container, wherein the preform and container conform with the
claimed hoop stretch, axial stretch, and overall stretch ratios, are “compared
to conventional containers made from conventional PET using conventional
stretch ratios.” Br. 18-19, citing Kriegel I decl. ¶¶ 15-19.
In this respect, we find that Takahashi would have disclosed to one of
ordinary skill in the art injection molding a preform comprising a PET
copolymer that is subjected to biaxial stretch blow molding to a plane
stretching ratio of 11 times to form a bottle. Takahashi col. 30, ll. 9-37. We
find that Hosono would have disclosed to one of ordinary skill in the art
injection molding a preform comprising a PET copolymer and subjecting the
preform to biaxial stretch blow molding to form a bottle wherein the axial
stretch and peripheral stretch ratios can have, but are not limited, to, the
disclosed stretch ratios. Hosono col. 5, ll. 6-23, col. 8. l. 59 to col. 9, l. 46,
and col. 10, ll. 15-21.

3 Declaration under 37 C.F.R. 1.132 of Robert Michael Kriegel (Kriegel I
declaration) executed “July 15 2009” and directed to and submitted in this
Application on July 16, 2009.
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Application 11/126,962
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We determine that while Hosono’s peripheral stretch and axial stretch
factors or ratios are measured differently from the claimed hoop stretch and
axial stretch ratios, Hosono nonetheless teaches one of ordinary skill in the
art that the peripheral stretch and the axial stretch factors or ratios are result
effective variables in biaxially stretch blowing injection molded PET
preforms into bottles. Thus, one of ordinary skill in the art would have been
led by Hosono to determine workable and optimum peripheral stretch and
axial stretch ratios for Takahashi’s PET copolymer preforms and containers.
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.”).
Thus, we determine that one of ordinary skill in the art routinely
following the combined teachings of Takahashi and Hosono would have
reasonably arrived at Takahashi’s containers from preforms comprising PET
copolymers which have peripheral, that is, hoop, stretch and axial stretch
ratios falling within claim 1. While Hosono does not disclose an overall
stretch ratio as claimed, the overall stretch ratio is a product of the peripheral
or hoop stretch ratio and axial stretch ratio, and thus does not distinguish the
claimed injection molded preform over the preform taught by the
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Application 11/126,962
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combination of Takahashi and Hosono simply because Hosono does not
determine the overall stretch ratio. See, e.g., In re Skoner, 517 F.2d 947, 950
(CCPA 1975) (“Appellants have chosen to describe their invention in terms
of certain physical characteristics . . . . Merely choosing to describe their
invention in this manner does not render patentable their method which is
clearly obvious in view of [the reference].” (citation omitted)).
On this record, we initially note that Appellants’ contentions with
respect to Hosono are directed solely to Hosono and not to the combination
of Takahashi and Hosono, and thus are entitled to little weight. See In re
Merck & Co., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425-26 (CCPA 1981)). Further, we find no evidence in the
Kriegel I declaration as argued in the Brief, which is directed to the
combined teachings of Takahashi’s preforms and containers comprising
Takahashi’s PET copolymer and Hosono’s teachings that peripheral stretch
and axial stretch ratios are result effective variables for preforms and
containers comprising Hosono’s PET copolymers, as relied on by the
Examiner. Ans. 3-4, citing Takahashi col. 6, l. 34 to col. 7, l. 1, and col. 14,
ll. 40-50, and Hosono col. 9, ll. 30-46.
Accordingly, Appellants have not adduced any contentions or
evidence in the Brief or in the Kriegel I declaration establishing that the
comparison of claimed performs and contains with “conventional” PET
copolymer preforms and containers reflect the combination of Takahashi and
Hosono which is the closest prior art in a manner that reflects 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
Appeal 2010-010987
Application 11/126,962
8
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 evidence based on “conventional” PET copolymer containers in the
Kriegel I declaration is considered an indirect comparison, Appellants have
not established in the Brief that such evidence reliably demonstrates
unexpected results for the claimed container prepared from a preform
comprising a PET copolymer vis-à-vis a container prepared from
Takahashi’s preform comprising a PET copolymer using Hosono’s result
effective peripheral stretch ratio and axial stretch ratio variables. 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 in the Kriegel I declaration argued in the Brief 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 (CCPA 1970) (evidence must
provide an actual comparison of the properties of the claimed invention with
the disclosure of the reference).
Appellants’ second principal contention is that the Examiner erred in
determining that Takahashi would have taught one of ordinary skill in the art
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a claimed injection molded preform for making a stretch blow molded
container made from a specified PET copolymer, and in finding that the
evidence in the Kriegel II Declaration4 does not establish unexpected results
that patentability distinguish Takahashi. Br. 11-13, 15-17, and 19-22. 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 contain a
non- ethylene glycol diol component and the diacid component can contain 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 polyester, 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.

4 Declaration Under 37 C.F.R. 1.132 of Robert Michael Kriegel (Kriegel II
declaration) executed “July 15th 2009” and directed to Application
10/967,803 (‘803 Application), and filed in the present Application on July
16, 2009.
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Appellants submit that as shown in the Kriegel II 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) to form a polyester. Br. 11 and
15-16. Appellants contend “[t]he ranges in Takahashi are so large . . . that
they encompass a significantly greater number of possible formulations than
the claimed invention.” Br. 11, citing Kriegel II 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.” Br. 16, 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 %).” Br.
16, citing Kriegel II 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 II 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
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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
non-terephthalic acid units and 0.5 to 75 mol % of non-ethylene glycol
units.” Kriegel II 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 II 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 II 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 II 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
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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
Appellants’ arguments and evidence 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)
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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
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 have 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
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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 an injection molded preform
“comprising polyethylene terephthalate” 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; Br. 22-23. 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., Peterson, 315 F.3d
at 1330; Boesch, 617 F.2d at 275-76; Aller, 220 F.2d at 456-58.
We find that Appellants have not carried the burden of establishing
the patentability of the claimed injection molded preforms 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 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
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following the teachings of Takahashi. Br. 16, citing Kriegel II decl.
¶ 12. See Spec. 14:30 to 15:16. 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 II decl. ¶ 12. We find that Appellants also
disclose in the Specification that PET can be prepared with lower amounts
of diethylene glycol by suitable methods. Spec. 15:9-16. 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 do not
establish that unexpected results are obtained within Takahashi’s ranges.
Ans. 7-8. Indeed, Appellants do not contend that the comparisons between
“representative sample #3,” representing claim 1, and “comparative samples
#1 and #2,” identified as “conventional PET copolymers, reflect the
teachings of Takahashi. Br. 18-22, citing Kriegel II decl. ¶¶ 8 and 14-23.
On this record, we find no evidence in the Brief or in the Kriegel II
declaration which identifies “comparative samples #1 and #2” and
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“representative sample #3” and the “Conventional PET Copolymers” which
Declarant Kriegel attests are disclosed evidence in the Specification of the
‘803 Application. Br. 19-21 citing Kriegel II decl. ¶¶ 15 and 20. See above
note 4. Thus, there is no evidence that the evidence 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., Baxter
Travenol Labs., 952 F.2d at 392; Burckel, 592 F.2d at 1179-80; Dunn,
349 F.2d at 439. 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., Blondel, 499 F.2d at 1317. Thus, on this record, the asserted
comparisons establish no more than the properties of the claimed containers
encompassed by claim 1. See, e.g., Hoch, 428 F.2d at 1343-44.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Takahashi and Hosono 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 1-14 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).
Appeal 2010-010987
Application 11/126,962
17
AFFIRMED