Ex Parte Sipos

Patent Trial and Appeal Board

Jul 27, 2016

13142614 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/142,614 08/03/2011
23869 7590
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
07/27/2016
FIRST NAMED INVENTOR
Laszlo Sipos
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.
903-421 PCT/US/RCE 5959
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
MAILDATE DELIVERY MODE
07/27/2016 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 LASZLO SIPOS
Appeal2014-005939
Application 13/142,614
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's maintained rejection of claims 17, 29, and 30 under 35 U.S.C.
§ 102(b) as anticipated or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Matsuda. 1 A hearing was held on July 12, 2016. We have
jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 WO 2007 /05284 7 Al, published May 10, 2007. The Examiner relies on
the corresponding publication US 2009/0124763 Al, published May 14,
2009, which use as an equivalent is not contested.
Appeal2014-005939
Application 13/142,614
CLAIMED SUBJECT MATTER
Appellant's invention relates to a polymer-poly( ethylene 2,5-furan-
dicarboxylate }-having particular molecular weight and absorbance
characteristics.
The sole independent 17 is illustrative:
17. A polymer having a 2,5-furandicarboxylate moiety
within the polymer backbone, and having a number average
molecular weight of at least 20,000 (as determined by GPC
based on styrene standards), and an absorbance as a 5 mg/mL
solution in a dichloromethane : hexafluoroisopropanol 8:2 at
400 nm of below 0.05, the polymer being poly( ethylene 2,5-
furan-dicarboxylate ).
App. Br. 26.
The Specification describes a two-step process to provide the
disclosed polymer. See Spec. 6-8. 2 The first step is a catalyzed
transesterification step to form an intermediate product from diol monomers
and diacid monomers. Spec. 6, 11. 3-6. Various tin(IV) based catalysts are
preferred. Spec. 6, 11. 23-24, 31-35. The second step is a catalyzed
polycondensation. Spec. 6-7. Various tin(II) based catalysts are preferred,
including those obtained by reduction of the tin(IV) catalyst used in the first
step. Spec. 7, 11. 17-19, 24-29.
2 The Specification as filed-a copy of WO 2010/077133-lacks page
numbering. Accordingly, we cite to the pages of the Specification
sequentially from the beginning.
2
Appeal2014-005939
Application 13/142,614
DISCUSSION3
On the record before us, we find that the Examiner has failed to meet
the required burden to establish unpatentability of the claims. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he Examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability. ").
The Examiner finds Matsuda discloses a polymer according to
formula (2) in which the aliphatic hydrocarbon group A can be ethylene and
the degree of polymerization can be 185 to 600 and determines this polymer
is poly(ethylene 2,5-furan-dicarboxylate). Ans. 2-3. The Examiner further
determines the molecular weight limitation of claim 17 is clearly met where
the molecular weight of a monomeric ethylene 2,5-furan-dicarboxylate is
182. Ans. 3, see also 4-5. As noted by the Examiner, a poly( ethylene 2,5-
furan-dicarboxylate and its synthesis is the subject of Matsuda's Example 2.
Matsuda i-fi-179-82. The polymer of Matsuda's Example 2 is reported to
have a degree of polymerization of 126 (Matsuda i181); however, the
Examiner correctly relies on Matsuda's disclosure that the polymer can have
a degree of polymerization up to 600, which meets the molecular weight
limitation (Ans. 5). We find these particular findings and determinations by
the Examiner to be well-founded. 4
3 We cite to the Final Office Action ("Final Act.") mailed July 25, 2013; the
Appeal Brief ("Appeal Br.") filed January 13, 2014; Examiner's Answer
("Ans.") mailed February 19, 2014; and Reply Brief ("Reply Br.") filed
April 16, 2014.
4 At oral argument (Hearing held July 12, 2016), Appellant's counsel
conceded that the molecular weight limitation is met by Matsuda's
disclosure.
3
Appeal2014-005939
Application 13/142,614
The critical issue in this appeal is whether the Examiner has set forth a
sufficient basis for the poly( ethylene 2,5-furan-dicarboxylate) polymer of
Matsuda to have the particular absorbance characteristics specified in claim
1 7. Regarding the recited absorbance limitation, the Examiner relies on
Matsuda's disclosure that the "'polymer ... has sufficient physical
properties satisfying specification for an optical device'. Therefore, it is
reasonable to assume that polymer disclosed by Matsuda will inherently
have [the] same light absorbance." Ans. 3, 6 (citing Matsuda i-f 58). The
Examiner relies on the rationale that because Matsuda discloses the same
polymer, the absorbance properties recited in the claim are inherent, and the
burden is shifted to Appellant to overcome the§§ 102/103 rejection by
presenting evidence to the contrary. Ans. 8.
Appellant argues that Matsuda does not disclose a poly( ethylene 2,5-
furan-dicarboxylate) polymer---or any other polymer-meeting the
absorbance limitation and that Matsuda also fails to teach or suggest such a
polymer. App. Br. 12-15, 19-24. Appellant proffers evidence that
Matsuda's polymers have different light absorbance characteristics and do
not necessarily meet the limitation as to absorbance, including evidence that
a poly( ethylene 2,5-furan-dicarboxylate) polymer made in accordance with
Matsuda's Example 2 had absorbances of0.377 and 0.299. App. Br. 21-22;
Declaration-2012 5 i-f 8, Annex 2 (Comparative Example).
The Examiner discounts the Declaration and Comparative Example
evidence on the basis that Matsuda disclosed that other temperatures and
5 Declaration of Laszlo Sipos dated August 1, 2012, with accompanying
Annex, which includes the "Comparative Example" corresponding to
Matsuda's Example 2.
4
Appeal2014-005939
Application 13/142,614
catalysts could be used. Ans. 9-10 (citing Matsuda ilil 47, 50, 53 [sic, 54]).
The Examiner's reasoning is that because the proffered evidence "fails [to]
provide Data for all process conditions disclosed by [Matsuda]," it is
insufficient to overcome the rejection. Ans. 10. The Examiner further relies
on data for a different polymer-poly(hexamethylene 2, 5-difuran-
dicarboxylate }-from Appellant's submitted Declaration-2012-as support
for higher temperatures leading to higher values of light absorbency. Ans.
10. We note that the pertinent data is also found in Table 2 of the
Specification. It is apparently on the basis of the instant application's own
disclosure, therefore, that the Examiner concludes that "conducting [the]
process at low temperature will reduced [sic] coloration of the final
polymer." Ans. 10.
On this record, we are persuaded the Examiner erred reversibly in
maintaining the rejection.
While a prior art reference may anticipate even if an element is not
expressly disclosed "if that element is 'inherent' in its disclosure ...
Inherency ... may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Having established that the poly( ethylene 2,5-furan-dicarboxylate) polymer
made in accordance with Matsuda's teachings differs in absorbance from
that of the instant invention, it follows that what remains is no more than the
probability or possibility that any poly( ethylene 2,5-furan-dicarboxylate)
polymer made in accordance with Matsuda at other possible conditions
including lower temperatures would meet the limitation as to absorbance.
Matsuda provides no indication that modifying the condensation temperature
5
Appeal2014-005939
Application 13/142,614
for poly(ethylene 2,5-furan-dicarboxylate) would reduce absorbance. We
cannot, therefore, sustain the anticipation rejection where it is grounded on
the property being inherent by mere probabilities or possibilities.
Nor has the Examiner provided "some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). Having relied solely on the rationale
that the absorbance properties are inherent to the polymer and then having
shifted the burden to Appellant to provide evidence to the contrary sufficient
to overcome the determination (Ans. 10), the necessary basis to sustain the
obviousness rejection is lacking (generally Ans.).
For these reasons, we cannot sustain the obviousness rejection.
CONCLUSION
For the reasons set forth above, we reverse the Examiner's rejection of
claims 17, 29, and 30 under 35 U.S.C. § 102 or, in the alternative, under 35
U.S.C. § 103.
REVERSED
6