PBI Performance Products, Inc.

Patent Trials and Appeals Board

Nov 17, 2020

15427381 - (D) (P.T.A.B. Nov. 17, 2020)

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.
15/427,381 02/08/2017 Brian C. Benicewicz 2006.144A 7474
29494 7590 11/17/2020
HAMMER & ASSOCIATES, P.C.
112 S. TRYON, SUITE 809
CHARLOTTE, NC 28284-2100
EXAMINER
PENG, KUO LIANG
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/17/2020 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):
kbyrd@hammerpatent.com
mail@hammerpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN C. BENICEWICZ,
ALEXANDER LANIER GULLEDGE, WARREN P. STECKLE, JR.,
GREGORY S. COPELAND, and BOBBY G. DAWKINS
Appeal 2020-000415
Application 15/427,381
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s January 10, 2019 decision to finally reject claims 1–7, 11, 12
and 14–16. An oral hearing was held telephonically on October 29, 2020.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as PBI
Performance Products, Inc. (Appeal Br. 3).
2 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.
Appeal 2020-000415
Application 15/427,381

2

CLAIMED SUBJECT MATTER
The claims are directed to method of making polybenzimidazole
(PBI) (Abstract). The claimed method includes reacting an organic
compound having at least 2 amino groups with an organic aldehyde adduct,
where the reactants comprises at least 8% by weight of the solution (id.).
Claim 1, reproduced below from the Claims Appendix, is illustrative of the
claimed subject matter:
1. A method of making a polybenzimidazole comprising the
steps of:
reacting, in a solution,
an organic compound having at least 4 amino
groups with
an organic dialdehyde bisulfite,
the reactants comprise at least 8% by weight of the solution.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
D’Alelio US 3,763,107 October 2, 1973
Cook “Synthesis of Polybenzimidazoles
Containing Arylene Sulfone and Ether
Linkages,” Master's Thesis, Oregon State
University
February 16, 1993

REJECTION
Claims 1–7, 11, 12, and 14–16 are rejected under 35 U.S.C. § 103 as
unpatentable over D’Alelio, optionally in view of Cook.

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Application 15/427,381

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DISCUSSION
Appellant does not argue any claim separately (see, Appeal Br. 7–9).
Accordingly, we select claim 1 as representative and focus our discussion on
the rejection of claim 1. The remaining claims will stand or fall with claim 1.
The Examiner finds that D’Alelio discloses each step of the claimed
invention, except that it does not explicitly teach the claimed reactant
concentration (Final Act. 3, citing D’Alelio 2:2–71, 8:5–30, Examples 3(a)
and 3(b)). The Examiner further finds that D’Alelio’s Example’s 3(a) and
3(b) show that increasing reactant concentration increases reaction yield
(Final Act. 3). Therefore, the Examiner determines that it would have been
obvious to increase the reactant concentration to at least 8% in order to
enhance the yield (id.). Alternatively, the Examiner determines that a person
of skill in the art would have understood that reaction rate generally increases
with reactant concentration (i.e. reactant concentration is a result effective
variable), so a person of skill in the art would have selected a reactant
concentration to achieve a desired polymerization rate (Final Act. 3–4).
Appellant argues that a person of ordinary skill in the art would have
understood D’Alelio’s Examples 3(a) and 3(b) as inoperable and, therefore,
D’Alelio cannot teach or suggest the claimed invention (Appeal Br. 7–8,
citing Benicewicz Decl.). In particular, Appellant cites the following
sentence in D’Alelio as evidencing the inoperability of Examples 3(a) and
3(b): “The polymers of Example 3 are unsuitable for the preparation of
films, fibers or adhesives, and for similar uses” (D’Alelio 22:47–48). This
argument is unpersuasive of reversible error. Claim 1 is not limited to
polymers suitable for a particular use. Instead, claim 1 simply recites a
method of making a polybenzimidazole, without specifying any particular
Appeal 2020-000415
Application 15/427,381

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use for the resulting polymer. While Appellant relies on D’Alelio’s
statement that the polymers of Example 3 were unsuitable for particular uses,
the Examples specifically state that that polymers were produced (D’Alelio
22:37–39, 22:45–46). Thus, the evidence of record does not support
Appellant’s argument that the examples were inoperable.
Appellant also argues that a person of skill in the art would not have
sought to increase the yield of the D’Alelio reaction, but instead would have
been interested in increasing the intrinsic viscosity of the resulting polymer,
and that the data from D’Alelio would not have suggested an improvement in
the intrinsic viscosity would result from an increase in reactant concentration
(Reply Br. 3–4). This argument is not persuasive of reversible error, because
(a) claim 1 does not recite any specific intrinsic viscosity, and (b) Appellant
has not demonstrated error in the Examiner’s finding that a person of skill in
the art would have been motivated to increase reactant concentrations in
order to increase reaction yield, even if that was different from the inventor’s
motivation in this instance. See In re Linter, 458 F.2d 1013, 1016 (CCPA
1972).
Based on the arguments and evidence, including the Rule 132
Declaration of Brian Benicewicz (“Benicewicz Decl.”), presented by
Appellant in the Appeal Brief, the Reply Brief, and during the oral hearing,
we determine that the preponderance of the evidence of record supports the
Examiner’s position, and we sustain the rejection.
.

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Application 15/427,381

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 11, 12,
14–16
103 D’Alelio, Cook 1–7, 11, 12,
14–16

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED