Christel, Andreas

Patent Trials and Appeals Board

Oct 1, 2019

14367390 - (D) (P.T.A.B. Oct. 1, 2019)

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.
14/367,390 06/20/2014 Andreas Christel HEPP P205US 5952
26936 7590 10/01/2019
SHOEMAKER AND MATTARE, LTD
c/o DAVIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
USPTO@SHOMAT.COM
patent@nhpat.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS CHRISTEL
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Appeal 2019-000998
Application 14/367,390
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed June 20, 2014
(“Spec.”); Final Office Action dated Feb. 20, 2018 (“Final Act.”); Advisory
Action dated May 31, 2018 (“Adv. Act.”); Appeal Brief filed July 17, 2018
(“Appeal Br.”); Examiner’s Answer dated Sept. 20, 2018 (“Ans.”); and
Reply Brief filed Nov. 14, 2018 (“Reply Brief”).
Appeal 2019-000998
Application 14/367,390
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Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 19, 20, 23–25, 27, 37, and 38.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Appellant’s disclosure relates to a process for the solid-state
polycondensation (SSP) of polyesters, in particular, of polyethylene
terephthalate or copolymers thereof. Spec. ¶¶ 1, 9. Claim 19 is illustrative
of the claimed subject matter on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief:
19. A process for a solid-state polycondensation of polyesters,
the process comprising:
carrying out the solid-state polycondensation using
polyester prepolymer particles having an intrinsic viscosity of
from 0.35 to 0.80 dl/g and having an average pellet size in the
range from 0.1 mm to 10 mm, in a reaction space in which an
absolute pressure in the range from 10 mbar to 200 mbar and a
process gas flow in the R value range from 0.005 to 0.05 is set,
where the R value is defined as a ratio of hourly amount
of process gas (in Kg) flowing through the reaction space to
hourly amount of polymer (in kg) flowing through the reaction
space:

2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Polymetrix AG as the real party in
interest. Appeal Br. 1.
3 Claims 1–18, 21, 22, 26 and 28–36 are canceled. Appeal Br. 20–21.
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carrying out the solid-state polycondensation over a period
of time from 2 to 30 hours at a temperature of from 180°C to 5°
below a crystalline melting point of the polyester prepolymer
particles so that a resulting polyester has an intrinsic viscosity
from 0.70 to 0.95 dl/g, and an increase in the intrinsic viscosity,
during solid-state polycondensation, is at least 0.05 dl/g.
Appeal Br. 20 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Al Ghatta et al. (“Al Ghatta”) US 5,708,124 Jan. 13, 1998
S. M. Aharoni, Handbook of Thermoplastic Polymers: Homopolymers,
Copolymers, Blends, and Composites Ch. 2 59–66 (2002) (“Aharoni”).
B. Culbert et al., Modern Polyesters: Chemistry and Technology of
Polyesters and Copolyesters Ch. 4 143–194 (2003) (“Culbert”).
Y. Ma et al., Solid-State Polymerization of PET: Influence of Nitrogen
Sweep and High Vacuum, Polymer 44, 4085–4096 (2003) (“Ma”).
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 19, 20, 23, 25, 27, 37, and 38 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Aharoni in view of
Culbert and Al Ghatta (“Rejection 1”). Ans. 3; Final Act. 3.
2. Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Aharoni in view of Culbert and Al Ghatta as applied to
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claim 19 above, and further in view of Ma (“Rejection 2”). Ans. 6; Final
Act. 5–6.
OPINION
Rejection 1
The Examiner determines that the combination of Aharoni, Culbert,
and Ghatta suggests a process for production of polyesters satisfying all of
the steps of claim 19 and concludes the combination would have rendered
the claim obvious. Ans. 3–6. Regarding the recitation “an absolute pressure
in the range from 10 mbar to 200 mbar,” the Examiner relies on Aharoni for
suggesting this element of the claim. Id. at 3–4, 10–12. In particular, the
Examiner finds Aharoni discloses an SSP reaction of polyester conducted at
a pressure of “2–3 psig” (Aharoni 81 (Fig. 5)), which, according to the
Examiner’s calculation,4 corresponds to a range of approximately 138 mbar
to 207 mbar, and overlaps the claimed range of “from 10 mbar to 200 mbar.”
Id. at 11.
Appellant argues the Examiner’s rejection should be reversed because
Aharoni does not teach or suggest “an absolute pressure in the range from 10
mbar to 200 mbar,” as recited in the claim. Appeal Br. 7–8; Reply Br. 3–4.
Appellant essentially argues the Examiner did not correctly convert
Aharoni’s psig units to mbar units, and had the Examiner correctly
performed the calculation, Aharoni “would indicate even a higher pressure

4 According to the Examiner (Ans. 11), the calculation is based on a
conversion table from a Wikipedia article cited by Appellant at page 8 of the
Appeal Brief.
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than normal pressure.” Appeal Br. 8. See also Reply Br. 3 (arguing the
Examiner “confuses ‘psi’ units with ‘psig’ units”).
We agree with Appellant’s argument. On the record before us, we are
not persuaded the Examiner has established by a preponderance of the
evidence that Aharoni teaches or suggests “an absolute pressure in the range
from 10 mbar to 200 mbar,” as recited in the claim. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (holding the examiner bears the initial burden of
establishing a prima facie case of obviousness).
As Appellant explains (Appeal Br. 7–8; Reply Br. 3–4), the
Examiner’s findings regarding Aharoni’s teachings are erroneous because, in
converting from psig units to mbar units, the Examiner’s does not correctly
calculate the pressure range Aharoni actually discloses. As Appellant points
out (Appeal Br. 8; Reply Br. 3–4), Figure 5 of Aharoni discloses a pressure
range of 2–3 in psig (pounds per square in gauge) units, which indicates the
pressure is relative to atmospheric pressure. Claim 19, however, recites “an
absolute pressure in the range from 10 mbar to 200 mbar” (emphasis
added). Thus, in converting Aharoni’s pressure from psig to mbar, the
Examiner erred because the Examiner should have, first, converted the
pressure range from psig units to psia (pounds per square inch absolute)
units, which indicates the pressure is absolute and relative to a vacuum
rather than the ambient, atmospheric pressure.
The Examiner should have, then, converted the pressure range, now in
psia units, to mbar units, which as Appellant argues (Appeal Br. 8), would
have resulted in much higher absolute pressure values. The preponderance
of the evidence supports Appellant’s argument in this regard. For example,
based on the unit conversion information provided in the Wikipedia page
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Application 14/367,390
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cited by Appellant and relied upon by the Examiner, it appears that when the
calculation is performed correctly, 2–3 psig actually converts to an absolute
pressure in the range from about 1150 mbar to 1215 mbar, which is
substantially higher than and falls outside the claimed range.
The Examiner also does not identify evidence or provide reasoning
sufficient to support a finding that one of ordinary skill would have had
reason to modify Aharoni’s process to operate at such a substantially
reduced pressure, as would be required to arrive at the claimed invention.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring
“reasoning with some rational underpinning to support the legal conclusion
of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In particular, at pages 10–12 of the Answer, the Examiner does not
adequately explain why Aharoni’s disclosure at pages 81 and 82 would have
led one of ordinary skill to modify Aharoni’s process to operate at “an
absolute pressure in the range from 10 mbar to 200 mbar,” as recited in the
claim. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015) (“[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”).
The Examiner’s assertions that “the combination of reduced pressure
and Nitrogen sweep is well known in the art” (Ans. 10) and “Aharoni . . .
provide[s] clear motivation to use reduce pressure in combination with
Nitrogen sweep” (id. at 12) are conclusory and, without more, insufficient to
sustain the Examiner’s rejection. Kahn, 441 F.3d at 988 (holding “rejections
on obviousness grounds cannot be sustained by mere conclusory
statements”).
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The Examiner’s assertion that “one of ordinary skill will be motivated
to optimize this combination in order to reach mostly suitable pressure,
temperature and R value for [a] specific SSP process by routine
experimentation” (Ans. 10) is equally unpersuasive because it, too, is
conclusory and the Examiner does not identify persuasive evidence in the
record to support it.
We, therefore, cannot sustain the Examiner’s rejection of claim 19 and
determination that it would have been obvious to combine the teachings of
Aharoni, Culbert, and Ghatta to arrive at the claimed subject matter.
Because claims 23, 25, and 27 depend from claim 19, we also cannot
sustain the Examiner’s rejection of these claims. Similarly, because claims
37 and 38 recite the same “absolute pressure in the range from 10 mbar to
200 mbar” limitation as claim 19, we also cannot sustain the Examiner’s
rejection of those claims.
Accordingly, we reverse the Examiner’s rejection of claims 19, 20,
23, 25, 27, 37, and 38 under 35 U.S.C. § 103(a) as obvious over the
combination of Aharoni, Culbert, and Ghatta.
Rejection 2
The foregoing deficiencies in the Examiner’s analysis and conclusion
regarding Rejection 1 and the Aharoni reference are not remedied by the
Examiner’s findings regarding the additional reference and combination of
references cited in support of the second ground of rejection (Rejection 2).
Accordingly, for principally the same reasons discussed above in reversing
Rejection 1, we reverse Rejection 2.
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CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
19, 20, 23, 25,
27, 37, 38
§ 103(a)
Aharoni, Culbert,
Ghatta
19, 20, 23, 25,
27, 37, 38
24 § 103(a)
Aharoni, Culbert,
Ghatta, Ma
24
Overall
Outcome
19, 20, 23–25,
27, 37, 38

REVERSED