Ex Parte 7943216 et al

Patent Trial and Appeal Board

May 16, 2016

90013218 (P.T.A.B. May. 16, 2016)

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.
90/013,218 04/29/2014 7943216 MG.R.006.US.2 7604
26158 7590 05/16/2016
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/16/2016 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
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.
90/013,342 09/12/2014 7943216 MG.R.006.US.2 2291
26158 7590 05/16/2016
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/16/2016 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
____________

INVISTA NORTH AMERICA, S.À.R.L
Patent Owner and Appellant
____________

Appeal 2016-001727
Reexamination Control 90/013,218 and 90/013,342
U.S. Patent 7,943,216 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner appeals from the Patent Examiner’s final rejection of
claims 1–15 in the above-identified merged ex parte reexamination of U.S.
7,943,216 B2. The Board’s jurisdiction for this appeal is under 35 U.S.C.
§§ 6(b) and 134(b). We affirm.

I. STATEMENT OF CASE
This appeal involves U.S. 7,943,216 B2 (“the ’216 patent) which
issued May 17, 2011. A first Request for Ex Parte Reexamination
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(“Request”) under 35 U.S.C. §§ 301–307 and 37 C.F.R. § 1.510 was filed
April 18, 2014 by M & G USA Corporation (“Requester”). A second
Request for Ex Parte Reexamination, also by M & G USA Corporation, was
filed September 11, 2014. Reexamination was ordered in both cases.
Subsequently, the proceedings were merged by the Office. Ex Parte
Reexamination Communication mailed Oct. 22, 2014. A Final Rejection in
the merged reexamination was mailed Jan. 29, 2015 (“Final Rej.”). Patent
Owner appeals from the Final Rejection. An oral hearing in the appeal was
held April 13, 2016. A transcript will be entered into the record in due
course.
There is a pending ex parte reexamination of a related patent, U.S.
Pat. No. 7,919,159 (Reexamination Control No. 90/013,456). The ’216
patent and U.S. Pat. No. 7,919,159 were involved in a federal court
proceeding, which has now terminated. Appeal Br. 1.

REJECTIONS
Claims 1–15 are pending and stand finally rejected by the Examiner
as follows:
1. Claims 1–15 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Yamamoto et al. (JP 2-135259 A, published May 24, 1990)
(“Yamamoto”) and Yuo et al. (U.S. Pat. No. 5,623,047, issued Apr. 22,
1997) (“Yuo”). Final Rej. 5.
2. Claims 13 and 14 under 35 U.S.C. § 103(a) (pre-AIA) as obvious
in view of Yamamoto, Yuo, Cochran et al. (U.S. 5,021,515, issued June 4,
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1991) (“Cochran”), and Kulkarni et al. (DE 101 26 942 A, published Dec.
20, 2001) (“Kulkarni”). Final Rej. 12.
3. Claim 15 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in view
of Yamamoto, Yuo, and Scantlebury (WO 03/064267 A2, published Aug. 7,
2003) (“Scantlebury ’267”). Final Rej. 13.
4. Claims 1–15 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Yamamoto and Kulkarni. Final Rej. 14.
5. Claims 13 and 14 under 35 U.S.C. § 103(a) (pre-AIA) as obvious
in view of Yamamoto, Kulkarni, and Cochran. Final Rej. 21.
6. Claim 15 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in view
of Yamamoto, Kulkarni, and Scantlebury ’267. Final Rej. 22.
Patent Owner did not argue the rejections separately, but focused on
the rejection based on Yamamoto and Yuo or Kulkarni (Rejections 1 and 4
above). Appeal Br. 11–28. Yuo and Kulkarni are cited by the Examiner for
the same teaching. Patent Owner did not distinguish between Yuo and
Kulkarni. Consequently, we have principally addressed the rejection over
Yamamoto and Yuo for deciding all issues in this appeal.
In addition to the cited prior art, four declarations have been provided
during the Reexamination:
Declaration of S. Richard Turner, Ph.D. (Dec. 22, 2014) on behalf of
Patent Owner (“Turner Decl.”).
Declaration of Uwe Bayer, Ph.D. (Nov. 6, 2013) on behalf of Patent
Owner (“Bayer Decl.”).
Declaration of Geoffrey Scantlebury, Ph.D. (Nov. 23, 2010) on behalf
of Patent Owner (“Scantlebury Decl.”)
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Declaration of Douglas David Callander, Ph.D. (Sept. 10, 2014) on
behalf of Requester (“Callander Decl.”)
We find that the declarants are qualified to testify on the matters
discussed in their declarations.
Claims 1 and 12 are representative and reads as follows:
1. A composition for containers comprising:
a copolyester comprising a metal sulfonate salt;
a partially aromatic polyamide; and
a cobalt salt.

12. An article comprising the composition of any one of claims
1–11; wherein said article is a preform or a container.

SUBSTANTIAL NEW QUESTION OF PATENTABILITY1
During the prosecution of the application that led to the ’216 patent,
the Examiner had rejected the claims as obvious in view of 1) Yamamoto
and Cochran or Share (US 6,933,055); and 2) Share and Lee (US
2004/0013833). Non-Final Rej. 3–4 (May 27, 2010).
With respect to the first rejection based on Yamamoto, the Examiner
found that Yamamoto differed from the claims in not disclosing the use of a
cobalt salt. Id. at 3. However, the Examiner found that it would have been
obvious to have utilized cobalt for its oxygen-scavenging properties as
described in Cochran or Share. Id. The second rejection was based on the

1 Patent Owner appears to have complied with the requirements in order to
preserve the SNQ issue for appeal in that the issue was raised in at least
Patent Owner’s comments filed December 23, 2014 pages 12-15, and the
issue was raised in Patent Owner’s Appeal Brief, 5-8. See 75 Fed. Reg.
36,357 (June 25, 2010.)
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composition of Share that already comprises the cobalt salt, but not a metal
sulfonate salt as recited in the claims. Id. at 4–5. The Examiner found it
obvious to have added the sulfonate for its expected benefit to “exhibit
greater layer-to-layer lamination strength.” Id. at 5.
In response to the rejection, Patent Owner provided a declaration by
Dr. Scantlebury who stated that cobalt would have been expected to increase
the gas permeation through the polyester bottle and that the combination of a
copolyester, metal sulfonate salt, and cobalt salt yields a “surprisingly
synergistic effect on yellowness.” Remarks and Amendment 9, 11 (Nov. 23,
2010). The Examiner subsequently mailed a Notice of Allowance (Jan. 25,
2011).
In the Reexamination proceeding, Requester proposed new Section
103 rejections based on Yamamoto and “Modern Polyesters” or Kulkarni.
Request 6. Requester argued that it would have been obvious to one of
ordinary skill to include a cobalt salt in Yamamoto’s composition “to reduce
the yellow of Yamamoto’s compositions because Yamamoto suggests
combining a transparent colorant additive.” Request 20. Requester also
provided a declaration by Dr. Callander providing evidence that the synergy
data in the ’216 patent, as discussed by Dr. Scantlebury, was flawed because
of the undisclosed presence of sodium acetate. Id. at 107–108.
The Examiner adopted the rejections, as well as a rejection based on
Yamamoto and Yuo. (Yuo had been cited in an Information Disclosure
Statement filed Feb. 17, 2011 in the application which led to the ’216
patent.) The Examiner acknowledged that Yamamoto was “old art” and had
been cited in the prosecution that led to the ’216 patent, but found that
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“[n]either the Patent Owner nor the Examiner [in the initial examination]
pointed to or discussed Yamamoto's teaching that additives, such as
transparent colorants, can be combined with the composition (see p. 426, 1st
col., ¶ 2 of the English translation of Yamamoto accompanying the
Request).” Determination Ordering Reexamination 10 (Oct. 9, 2014). The
Examiner also cited Yuo for its teaching of a catalyst comprising cobalt
which would increase the reaction rate in the production of PET. Id. at 8.
Patent Owner contends that there is no substantial new question of
patentability (“SNQ”) because “the question of whether it would have been
obvious to modify Yamamoto’s compositions to include a cobalt salt was
already considered by the Examiner during the prosecution of the
’216 Patent.” Appeal Br. 7.

Discussion
We do not agree with Patent Owner that an SNQ does not exist
merely because the PTO had already considered the “question” of whether it
would have been obvious to add a cobalt salt to Yamamoto’s composition.
Appeal Br. 7.
Under 35 U.S.C. § 302, “Any person at any time may file a request for
reexamination by the Office of any claim of a patent on the basis of any
prior art cited under the provisions of section 301.” The Director determines
“whether a substantial new question of patentability affecting any claim of
the patent concerned is raised by the request, with or without consideration
of other patents or printed publications.” 35 U.S.C. § 303(a). “The
existence of a substantial new question of patentability is not precluded by
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the fact that a patent or printed publication was previously cited by or to the
Office or considered by the Office.” Id. “The ‘substantial new question of
patentability’ requirement prevents potential harassment of patentees by
‘act[ing] to bar reconsideration of any argument already decided by the
[PTO], whether during the original examination or an earlier
reexamination.’” In re Swanson, 540 F.3d 1368, 1375 (Fed. Cir. 2008)
(quoting from H.R. Rep. No. 96–1307(I)(1980)).
Thus, the issue in determining an SNQ is whether an “argument” had
already been decided by the PTO. In this case, the PTO had not considered
the argument that it would have been obvious to add cobalt to Yamamoto’s
composition because Yamamoto suggested adding colorants and cobalt as a
known colorant. The PTO also had not considered whether it was obvious
to add cobalt because it is a component of the PET catalyst described by
Yuo. Because neither argument (or question) was decided by the PTO in the
original examination that led to the ’216 patent, the Examiner in this
proceeding properly found an SNQ and ordered reexamination. Although
Yamamoto was previously cited in a rejection during the original
examination, and Yuo had been considered by the Examiner in the initial
examination, the publications are “being presented/viewed in a new light, or
in a different way, as compared with its use in the earlier examination(s), in
view of [this] material new argument . . . presented in the request.” MPEP
§ 2242 (March 2014).
Therefore, we deny Patent Owner’s request to overturn the
Examiner’s determination that a substantial new question of patentability
was raised to warrant reexamination.
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CALLANDER DECLARATION
The Callander Declaration was provided in the Request for
Reexamination to provide evidence that the prior art rejections proposed in
the Request rendered unpatentable the claimed subject matter of the ’216
patent and to establish that the synergy data in the ’216 patent was flawed
because of undisclosed components in the trial runs upon which the synergy
was based.
Patent Owner contends that the Callander Declaration should not be
considered because it is not a patent or printed publication upon which a
reexamination may be based. Appeal Br. 8. Patent Owner also contends
that the experiments described by Dr. Callander “do not ‘explain the
contents or pertinent dates of prior art patents or printed publications in more
detail’ as permitted by the MPEP [2258].” Id. at 9. Patent Owner states that
it is being denied due process because it did not have the opportunity to
cross-examine Dr. Callander. Id. at 9–10.
The SNQ is based on Yamamoto, Yuo, and Kulkarni. The Callander
declaration provides a detailed explanation of the prior art and therefore is a
permissible declaration under MPEP § 2258 (“In reexaminations ordered
under 35 U.S.C. § 304, any rejection must be based upon the prior art
patents or printed publications as explained by the affidavits or declarations
or other written evidence.”)
Dr. Callander also provided evidence that Patent Owner’s data in the
’216 patent did not disclose that sodium acetate had been used in certain
runs upon which synergy was found. Dr. Callander describes additional
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experiments, in which sodium acetate was included in all the trial runs or
omitted from all of them. These experiments did not show synergy.
Dr. Callander’s data does not serve as one of the “prior art
[references] consisting of patents or printed publications,” as set forth in 35
U.S.C. § 301. Rather, it is rebuttal evidence to Patent Owner’s evidence of
nonobviousness or evidence that explains the applied prior art references.
We have not been directed to any language in the statute, or binding legal
precedent, which would prohibit consideration of a declaration by a
Requester rebutting evidence of non-obviousness or explaining the applied
prior art references.
We are also not persuaded by Patent Owner’s argument that they have
been denied due process because it did not have the opportunity to cross-
examine Dr. Callander. PTO procedure permits affidavits and declarations
in reexamination proceedings. MPEP § 2258. Thus, notwithstanding Patent
Owner’s objection to Dr. Callander’s declaration based on its ability to
cross-examine him, the PTO permits declarations to be considered in an ex
parte reexamination proceedings. Here, Patent Owner was not precluded
from submitting its own declaration(s) or evidence to refute or impeach the
credibility of Dr. Callander’s testimony.
Therefore, we do not find Patent Owner’s argument against Dr.
Callendar’s Declaration persuasive.

REJECTION OVER YAMAMOTO AND YUO
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Claim 1 is directed to “composition for containers,” comprising 1) a
copolyester comprising 2) a metal sulfonate salt, 3) a partially aromatic
polyamide; and 4) a cobalt salt.
The ’216 patent teaches that a polyester resin can be copolymerized
with the metal sulfonate salt (“ionic compatibilizer”) to form a copolymer.
’216 patent, col. 5, ll. 50–53. A preferred polyester is disclosed in the ’216
patent as polyethylene terephthalate (PET) (id. at col. 4, ll. 3–4; col. 8, ll.
16–17), a preferred polyamide is MXD6 (poly (m-xylylene adipamide) (id.
at col. 1, ll. 35–38; col. 4, ll. 55–56; col. 9, Example 1), and a preferred
metal sulfonate salt is 5-sulfoisophthalic acid (SIPA) (id. at col. 8, ll. 39–41).
Based on this evidence, the Examiner found that Yamamoto describes a
container composition comprising PET (component 1), MXD6 (component
3), and SIPA (component 2), but not with a cobalt salt (component 4). Final
Rej. 5–6. However, the Examiner found that Yuo describes an improved
catalyst composition for the preparation of PET which can be used to make
bottles. Id. at 6. The Examiner found that the catalyst includes an antimony
component, a cobalt component, e.g., cobalt acetate, and an alkali metal
acetate. Id. The Examiner found that Yuo’s catalyst composition not only
increases the reaction rate in the production of PET, but it also improves the
color of the produced product. Id. The Examiner determined it would have
been obvious to one of ordinary skill in the art to have utilized Yuo’s
catalyst in Yamamoto’s to increase the polymerization reaction rate and
improve the composition’s color. Id. at 7.
Patent Owner contends that it would not have been obvious to one of
ordinary skill in the art to have included cobalt in Yamamoto’s container
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composition. Patent Owner argues that there would have been no
motivation to have used cobalt in Yamamoto because Yamamoto did not
disclose a concern with the color of its composition (Appeal Br. 13), cobalt
would have been expected to be detrimental to the barrier properties,
including gas permeability, of the container (id. at 15), cobalt would been
undesirable because of its toxicity (id. at 14), and cobalt would have been
expected to have a negative effect on the container color (id.). Patent Owner
also provides evidence that a composition comprising PET, SIPA, MXD6,
and cobalt had a synergistic effect in reducing the yellowness of the
preforms and bottles made from them. Id. at 4.

Reason to combine
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), the
Supreme Court wrote that the “combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” To make this determination, the Court explained
it will be necessary . . . to look to interrelated teachings of
multiple patents . . . and the background knowledge possessed
by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.
Id. at 418.
In this case, the Examiner identified two reasons to have added cobalt
to Yamamoto’s composition based on the teachings in Yamamoto and Yuo.
Final Rej. 7. First, Yamamoto teaches that its composition can further
comprise “transparent colorants.” Yamamoto, p. 426, col. 1, ll. 11–12.
Second, Yuo teaches a catalyst comprising a cobalt that would improve the
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polymerization reaction in the making of poly(ethylene terephthalate) such
as Yamamoto’s PET copolyester, and also the color of the resulting product.
Yuo, Abstract. Kulkarni also teaches that cobalt improves the color of
beverage bottles:
The problem of a yellow color appearing in the polyester end
product is frequently encountered in the production of bottles.
The yellow color in polyester articles can be attributed to
products of undesirable side reactions of the esterification and
polycondensation reactions, which cause such yellowness. The
yellow color of the polyester resin has resulted in the wide-
spread use of cobalt compounds as blue coloring agents in the
production process. Blue coloring agents counteract the yellow
color, resulting in a neutral bottle color. Cobalt acetate is the
most common substance, and in general sufficiently conceals
the yellow coloration of the resin or of the bottle . . . . The use
of cobalt as a blue coloring agent is described in detail in the
specification US 5,623,047 [Yuo].
Kulkarni ¶ 3.
Patent Owner provided a declaration by Dr. Turner which Patent
Owner asserts establishes “that ‘transparent colorants’ would be understood
by the person skilled in the art to refer to dyes and toners, and not cobalt, so
the person skilled in the art would not understand Yamamoto as providing
any suggestion to include cobalt as a coloring agent. Turner Decl. (Exhibit
B), ¶¶ 53-62.” Appeal Br. 13.
We have reviewed the paragraphs in the Turner declaration referenced
by Patent Owner and the only mention of “dyes and toners” is in paragraph
61 where Dr. Turner states a person of ordinary skill in the art “would
understand that the ‘transparent colorants’ include dyes and toners;
therefore, Yamamoto teaches the use of dyes or toner, rather than cobalt, to
adjust the color of the composition.” Turner Decl. ¶ 61. Dr. Turner did not
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provide an adequate explanation as to why cobalt is not a “transparent
colorant” as that term is utilized by Yamamoto. Requester’s Declarant Dr.
Callander, on the other hand, provided evidence in his declaration that cobalt
acetate is a transparent colorant which is a preferred additive in the polyester
bottle industry. Callander Decl. ¶¶ 22–26. The weight of the evidence thus
supports the Examiner’s conclusion that Yamamoto’s suggestion to add
“transparent colorants” to its composition would have reasonably suggested
the addition of cobalt for its coloring property.

Patent Owner’s reasons not to have utilized cobalt in Yamamoto’s
composition
Although we find that Yamamoto reasonably suggests the addition of
cobalt to its composition, Patent Owner provides several arguments as to
why the skilled worker would have been dissuaded from using it. These
arguments were summarized above. We address them individually below.

Patent Owner argues that Yamamoto has no concern with the color of
its composition
Dr. Turner states that the PET utilized in Yamamoto’s container “is
made through a polymerization process that results in the composition
having a mild yellow color.” Turner Decl. ¶ 33. Dr. Callander’s testimony
is consistent with Dr. Turner’s. Callander Decl. ¶ 24. To support his
testimony, Dr. Callander referred to “‘Modern Polyesters,’” said to “present
. . . the knowledge of one of ordinary skill in the art at the time of [the ’216
patent] filing.” Id. at ¶ 23. Modern Polyesters teaches that “[y]ellowing of
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the polymer can be caused by thermal as well as by oxidative degradation
and is a severe problem in PET synthesis, especially in the production of
bottle grades.” Id. at ¶ 24.
In addition to the yellowing associated with PET polymerization, both
Drs. Turner and Callander testify that a yellow color results from the
combination of PET and a polyamide. Dr. Turner stated that “it was well-
known in the art, at least since 1998, that the combination of PET and a
polyamide in a melt often separately results in a yellow color from the
condensation between amino end groups and acetaldehyde, a by-product of
PET polymerization.” Turner Decl. ¶ 34. Dr. Turner stated the
“PET/MXD6 blend creates a separate and more intense yellow color as
compared to the milder yellow tone yielded in a typical PET polymerization
process.” Id. at ¶ 35. Dr. Callander concurred with Dr. Turner that the use
of partially aromatic polyamides would be a second source of yellowing.
Callander Decl. ¶ 24. Dr. Callander referred to the Background section of
the ’216 patent for this teaching. Id., citing ’216 patent, col. 1, ll. 44–46
(“However, the use of partially aromatic polyamides as the low gas
permeable polymer gives an increase in the yellowness of the resultant
container.”)
Although both Turner and Callander testified that a PET composition
made with MDX6 would exhibit yellowing, Yamamoto does not describe its
polymer as yellow, but rather characterizes it as transparent. Yamamoto, p.
427, col. 2, (“transparency of the hollow molded article of the present
invention was markedly increased”). However, Dr. Callander stated that
“[t]he problem of yellowing in bottle grade PET resins is well known to me,
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and to one of ordinary skill in the art. One of ordinary skill would also
expect Yamamoto’s compositions to suffer from an additional yellowing
problem due to the use of the partially aromatic polyamide.” Callander
Decl. ¶ 24. Dr. Turner stated that Yamamoto does describe its polymer as
yellow (Turner Decl. ¶¶ 53, 62), but did not explain why Yamamoto’s
composition would not be yellow in view of his testimony that both PET
polymerization and PET’s combination with a polyamide would result in a
yellow color. We do not see Yamamoto’s silence on the yellow color
necessarily inconsistent because Dr. Turner stated that, when MXD6 is
added to PET, the resulting container is “often . . . very hazy, or even
opaque.” Id. at ¶ 30. Thus, in this context, Yamamoto’s teaching that the
“transparency of the hollow molded article of the present invention was
markedly increased” (Yamamoto, p. 427, col. 2) would reasonably be
understood to address the haze observed in a polymer of PET and MXD6,
and not to necessarily exclude the composition from having a yellow tint or
color.
Nonetheless, because Yamamoto expressly teaches the addition of
colorants, and cobalt is a colorant, even if Yamamoto’s composition is not
yellow, there would have still have been reason to add cobalt to the PET
composition for its coloring properties.

Patent Owner argues that cobalt would not reduce the yellow color
associated with polyamide reaction but would rather produce an
undesirable color
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Dr. Turner stated that “none of the references cited in the Office
Action teach that cobalt can reduce the distinct and more intense yellowing
that results from adding MXD6, or another polyamide, to the composition.”
Turner Decl. ¶ 60. Dr. Turner contends that U.S. Patent 5,314,987 to Kim
(“Kim”) teaches that adding cobalt to PET/MXD6 blend
. . . resulted in compositions that ‘had a pronounced green
color, i.e., darker than that of Blend A, with Blend C2
appearing darker than Blend C1.’ (’987 patent at 7:40-42.)
Therefore, one skilled in the art would conclude from reading
the ‘987 patent that adding cobalt to a PET/MXD6 blend would
not decrease the color and may actually cause additional
undesirable color issues.

Id. at ¶ 58.
Dr. Turner’s argument does not persuade us that a skilled worker
would not have utilized cobalt in Yamamoto’s composition. First, Kim
provides express evidence that cobalt was in fact utilized with PET and
MXD6 blend, the same blend which is covered by the claims. In addition to
this, Kim’s disclosure as a whole does not teach that cobalt necessarily had a
negative impact on color.
Kim teaches:
The present invention provides blends of germanium and
antimony catalyst based PET and/or PBT (or PET and/or PBT
containing virtually no residual cobalt and manganese), nylon,
e.g., MXD6 nylon, and, a metal complex, especially a cobalt
complex, preferably cobalt octoate. Such blends surprisingly
exhibit neutralization of the green or yellow color and/or
shortening of the incubation or aging period.
Kim, col. 2, ll. 15–22 (emphasis added). Thus, in contrast to Dr. Turner’s
statements, Kim teaches that the green or yellow color is neutralized in the
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composition comprising PET, MXD6, and cobalt – the same component
which are recited in claim 1 of the ’216 patent.
Kim also teaches that: Blend A having a catalyst of antimony, cobalt,
and manganese with PET 9663 and MXD6 exhibited a green color; and
Blend B, having a catalyst of germanium and antimony (with less than 0.1
ppm cobalt and manganese) blended with MDX6 and a different PET resin
than A, had a yellow color. Id. at col. 7, ll. 22–53.
Kim further teaches that the addition of cobalt to Blend B, to
produced Blend D, neutralized the yellow color, but additional cobalt added
to Blend A, to produce Blend C, resulted in a more pronounced green color.
Id. Thus, Dr. Turner is correct that a more pronounced green color resulted
when cobalt was added to certain compositions in Kim. However, Kim also
teaches that cobalt neutralized the yellow color is other compositions.
Following this disclosure about the effect of additional cobalt on PET
coloration of Blends A and B, Kim teaches:
Thus, blends of a/g - PET [PET with virtually no residual cobalt
and manganese may hereinafter be called “a/g - PET” blends
(col. 4, ll. 18–21)] and nylon surprisingly, exhibit improved
clarity, and, blend of a/g - PET, nylon and cobalt octoate
surprisingly exhibit neutralized color (i.e., neutralization of
green or yellow color), and, shortened incubation (aging
period).
Id. at col. 7, ll. 64–68.
In other words, when cobalt was added to Blend B (“no residual
cobalt and manganese”) to form Blend D, no green color was reported and
the yellow color was neutralized. Thus, Dr. Turner appears to have focused
on the effect of cobalt on Blend A, but did not consider Blends B and D. Dr.
Turner’s statement that cobalt would be expected cause undesirable color
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issues (at ¶ 58) is therefore not supported by a preponderance of the
evidence. Moreover, Kim’s blend comprises PET and a polyamide,
undermines the argument that cobalt would not be expected to treat the
yellow color that results from the chemical reaction of these components –
the same components which are recited in claim 1 of the ’216 patent.
Patent Owner further argues that the yellow color observed in Yuo is a
result of the PET polymerization reaction, and not the chemical reaction
between a polyamide and PET. Appeal Br. 16. Consequently, Patent Owner
argues it would not be expected that Yuo’s catalyst comprising cobalt would
improve Yamamoto’s composition comprising PET and MXD6, where any
yellowing would be a result of the reaction between PET and the polyamide.
Id. at 16–17.
We recognize that the two chemical reactions may be different.
However, Patent Owner, other than identifying these differences, has not
provided an adequate scientific or factual basis as to why cobalt would
improve yellowing in one instance and not the other. To the contrary, as
already discussed, Dr. Turner cited the Kim patent which describes the use
of cobalt to improve the color of a composition comprising PET and the
polyamide MXD6. The evidence of record therefore does not support Patent
Owner’s arguments that the addition of cobalt to a blend of PET and MXD6
would be expected to be detrimental to the composition color and
unexpected to improve its color.

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Patent Owner argues that cobalt would have been expected to be
detrimental to the gas permeability of the PET container
Patent Owner contends that cobalt would have been expected to be
detrimental to the barrier properties and increase the gas permeability of the
container. Appeal Br. 13, 15. To support their argument, Patent Owner
relied on testimony by Dr. Scantlebury. Dr. Scantlebury stated in his
declaration:
Permeation of a gas through a polyester bottle depends on the
degree of crystallinity and the orientation of the amorphous
regions. A gas cannot permeate through the crystalline regions
and will favor the amorphous regions with the least orientation.
The addition of compounds, such as cobalt salts, disrupt the
structure to accommodate the compound, leading to a slightly
less ordered and less crystalline bottle. The addition of cobalt
salt compounds will therefore increase the permeation of the
gas.
Scantlebury Decl. ¶ 9.
Dr. Scantlebury’s testimony is inconsistent with his own reported
work. Dr. Callander testified about the work described in Scantlebury ’267.
Scantlebury ’267 was published on August 7, 2003 which is before the
priority date of the ’216 patent.
Dr. Callander stated that Scantlebury ’267 “provides examples of 0.59
L polyester bottles containing 5% by weight MXD6 6007 with 0.05 wt-%
(500 ppm) cobalt octoate. These bottles achieved an oxygen permeation rate
of 0.003 cc.cm.m-2.atm-1.day-1.” Callander Decl. ¶ 34. Scantlebury ’267
discloses that MXD6 is an oxygen scavenging compound. Scantlebury ’267,
p. 9. Scantlebury ’267, consistent with Yuo’s teaching of a catalyst
comprising cobalt, discloses that “a transition metal catalyst, typically a
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cobalt salt, is used in these active oxygen scavenging system.” Id. As
indicated by Dr. Callander, Table 6 of Scantlebury ’267 shows that addition
of cobalt octoate to a PET/MXD6 blend decreased oxygen permeation from
0.083 (Sample 13) to 0.003 (Sample 14), with a smaller rise in carbon
dioxide from 4.7 to 5.5. Id. at 17. However, Scantlebury ’267 also reports
that “the combination of Al powder and MXD6 containing cobalt had a
synergistic effect on the CO2 permeation of the bottles.” Id. In sum, Dr.
Scantlebury’s statement that cobalt would “increase the permeation of the
gas” is not supported by a preponderance of the evidence and is inconsistent
with the data in his own patent document.

Cobalt toxicity
Citing evidence from the Turner declaration, Patent Owner argued
that cobalt would not be used because of its toxicity. Appeal Br. 14. The
Examiner found that Dr. Turner did not establish the state of the art in 2003
when the claimed invention was made. Answer 18. Furthermore, the
Examiner found that cobalt was still in use after the application priority date.
Id. at 19. The Examiner concluded, based on these facts, “even if cobalt was
not the most desired ingredient in the art, it still was a known, useful
ingredient in the art at the time the invention was made.” Id. Indeed, Dr.
Turner states that the “industry has been trying to phase out [cobalt’s] use in
the manufacturing process,” which indicates that it was still employed in the
industry for its known properties. Turner Decl. ¶ 26. Thus, we do not
consider Appellant’s argument that cobalt toxicity would have dissuaded the
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skilled worker from using it in Yamamoto’s composition to be supported by
the weight of the evidence.

Secondary considerations
Patent Owner contends that even if a prima facie case of obviousness
were to be made over Yamamoto in view of Yuo or Kulkarni, several
objective indicia support a finding that the claims of the ’216 patent would
not have been obvious.
Factual considerations that underlie the obviousness inquiry include
the scope and content of the prior art, the differences between the prior art
and the claimed invention, the level of ordinary skill in the art, and any
relevant secondary considerations. Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966). Relevant secondary considerations include commercial
success, long-felt but unsolved needs, failure of others, praise, and
unexpected results. KSR, 550 U.S. at 406; Institut Pasteur & Universite
Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1344 (Fed. Cir. 2013); In
re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Secondary considerations are
“not just a cumulative or confirmatory part of the obviousness calculus but
constitute [] independent evidence of nonobviousness . . . [and] enable [] the
court to avert the trap of hindsight.” Leo Pharm. Prods., Ltd. v. Rea, 726
F.3d 1346, 1358 (Fed. Cir. 2013) (internal quotation marks and citations
omitted). “This objective evidence must be ‘considered as part of all the
evidence, not just when the decisionmaker remains in doubt after reviewing
the art.’” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (internal citations omitted).

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Long felt but unsolved need
Patent Owner contends that the claimed subject matter in ’216 patent
“fulfilled a long-felt need that was present as of August 2003 for a cost-
effective, monolayer PET container possessing active and passive barrier
properties and improved color and clarity characteristics.” Appeal Br. 18.
Dr. Turner stated that, prior to August 2003, “none of the single layer active
barrier products on the market provided a suitable combination of clarity,
color, and gas barrier properties to meet the requirements of the packaging
industry.” Turner Decl. ¶ 69. As evidence of the problem, Patent Owner
relied on a publication by R.D. Leaversuch dated March 2003
(“Leaversuch”).
First, we note the claims are not limited to monolayer containers.
Claim 1 is drawn to a composition. Claim 12 is drawn to a container, but
does not require the container to be a monolayer. Apparently, and Patent
Owner has not made this clear, the argument is that the claimed composition
enables a monolayer container to be made that is “a cost-effective,
monolayer PET container possessing active and passive barrier properties
and improved color and clarity characteristics.” Appeal Br. 18.
Patent Owner has not provided adequate evidence that the claimed
subject matter solved a long-felt need. Leaversuch discloses that one of the
problems for making barrier PET bottles is the price of the material.
Three years ago, hopes for barrier PET beer bottles were high,
but success has proved more difficult than anticipated. In fact,
less than 0.1% of the 250 billion beer containers used
worldwide in 2002 were in PET. Economics, not performance,
were PET's biggest deficit.
Leaversuch, INVISTA09153514.
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Leaversuch states that “sources concede that few practical ‘monolayer
solutions’ are as yet on the horizon, mainly because suitable materials are
high priced.” Id. at INVISTA09153516. Leaversuch describes barrier
coating technologies which “use monolayer PET bottles, which helps their
economics.” Id. at INVISTA09153518.
Thus, Leaversuch indicates that the deficiency in the prior art is the
lack of a low-cost material that can be used as a monolayer for a PET
container. Patent Owner did not provide sufficient evidence that the claimed
composition solved the “economic” issue. Specifically, Patent Owner did
not provide evidence that its product is a low-cost material that solved the
problem of the “high priced” materials discussed by Leaversuch.
In addition to this, Leaversuch provides evidence of an alternative—a
barrier coated monolayer—which Leaversuch stated helped the economic
issue. So, it is not clear whether such material solved the problem posed by
Patent Owner, i.e., there was no unsolved need because alternatives existed.
We further note that the long-felt need identified by Patent Owner is
for a monolayer PET container. Claims 1 and 12, however, are not limited
to a PET container, but more broadly are drawn to “a copolyester.” Thus,
even if the argument was persuasive, it is not commensurate with the full
scope of the claim.

Commercial Success
Commercial success is another indicia of non-obviousness. In the
Appeal Brief, it is argued that the “inventions claimed in the ’216 patent
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fulfilled this long felt need with a commercially successful embodiment,
named PolyShield® resin.” Appeal Br. 19. Dr. Turner states:
As explained during the jury trial, PolyShield® is a resin sold in
the United States for blending with nylon, making the
combination a commercial embodiment of the ‘216 Patent. (See
Exhibit 13 at 818:17-20.) Through the first quarter of 2013,
PolyShield® for blending with MXD6 had worldwide sales of
$200 million. (Exhibit 18 at 242:21-23.) As testified to at trial,
INVISTA considers PolyShield® one of the most successful
products across its six specialty materials business. (Exhibit 18
at 242:24-243:2.)
Turner Decl. ¶ 66.
Evidence of commercial success, or other secondary
considerations, is only significant if there is a nexus between
the claimed invention and the commercial success. As we
explained in J.T. Eaton & Co. v. Atlantic Paste & Glue Co.,
106 F.3d 1563 (Fed. Cir. 1997), “[w]hen a patentee can
demonstrate commercial success, usually shown by significant
sales in a relevant market, and that the successful product is the
invention disclosed and claimed in the patent, it is presumed
that the commercial success is due to the patented invention.”
Id. at 1571; see also Brown & Williamson, 229 F.3d at 1130
(stating the presumption that commercial success is due to the
patented invention applies “if the marketed product embodies
the claimed features, and is coextensive with them.”). Thus, if
the commercial success is due to an unclaimed feature of the
device, the commercial success is irrelevant. So too if the
feature that creates the commercial success was known in the
prior art, the success is not pertinent.
Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–1312 (Fed. Cir.
2006)
There are several issues to consider. First, we note that the product
sold by Patent Owner is not the invention claimed in the ’216 patent. The
claimed composition requires a partially aromatic polyamide, but a
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polyamide is not present in the product, PolyShield, relied upon for
commercial success. Turner Decl. ¶ 66. Thus, we must consider whether the
sales of a product not embodied by the claim, but used to produce a
composition within the scope of the claim, is suitable to establish
commercial success of the claimed invention.
Next, we must consider whether the reported sales of PolyShield is
due to the patented invention rather than a feature which is readily available
in the prior art. Ormco Corp., 463 F.3d at 1311–1312. “[I]f the feature that
creates the commercial success was known in the prior art, the success is not
pertinent.”); J.T. Eaton, 106 F.3d at 1571 (“[T]he asserted commercial
success of the product must be due to the merits of the claimed invention
beyond what was readily available in the prior art.”)
Claim 1 is directed to composition comprising a copolyester, a metal
sulfonate salt, a partially aromatic polyamide, and a cobalt salt. Patent
Owner argues that PolyShield is “a commercially successful embodiment”
of the inventions claimed in the ’216 patent (Appeal Br. 19), but did not
direct us to evidence that all four components are present in PolyShield. To
the contrary, Patent Owner acknowledges that PolyShield lacks the partially
aromatic polyamide (Turner Decl. ¶ 66), but apparently considered this
trivial because PolyShield sales were used exclusively with the partially
aromatic polyamide MXD6. Exhibit 13, p. 818.
Nonetheless, we shall not discount the sales simply because the
commercial success is not based on the sale of a product embodied by the
claim, but rather is based on the use of another product to make a
composition embodied by the claim. In other words, because the success is
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based on Polyshield’s use to make a product embodied by the claim, it
should not be counted against Patent Owner that it is the container
manufacturer that makes the product, rather than Patent Owner.
Next, it must be determined whether the sales of PolyShield are due to
the merits of the claimed invention. J.T. Eaton, 106 F.3d at 1571. We focus
on MXD6 because that is the component missing from PolyShield.
MXD6 was well-known in the prior art to be an advantageous
component of PET containers. Specifically, MXD6 is described in
Leaversuch as a commercially available barrier resin used in PET bottle.
Leaversuch, INVISTA09153516–17. Kim teaches that “blends of
polyethylene terephthalate (PET) and nylon (e.g., MXD6 nylon) with and
without cobalt provide oxygen barrier properties superior to most known
barrier materials (almost zero permeation).” Kim, col. 1, ll. 15–19.
Yamamoto describes the advantages of a composition comprising PET, a
metal sulfonate salt, and the polyamide MXD6. Yamamoto’s PET container
said to have excellent barrier properties contains MXD6 and the metal
sulfonate salt. Yamamoto, pgs. 423, 427. In other words, MXD6 is
described in three publications of record as being advantageous when used
in PET containers. For this reason, it cannot be discerned whether the sales
of PolyShield are due to 1) the benefits of MXD6 or 2) the benefits of the
combination of components recited in claims 1 and 12.
In fact, the evidence supports a nexus between the sales and the
benefits of MXD6. In Exhibit 72 provided by Patent Owner as a description
of PolyShield and its advantages, the gas barrier properties of PolyShield
made containers are mentioned – consistent with the known properties of
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MXD6 to improve PET barrier properties. Exhibit 72, p. 7. Exhibit 72 also
discloses that the product has “outstanding clarity for tinted bottles.”
Exhibit 72, p. 7 (emphasis omitted). Yamamoto characterizes its product as
“excellent in terms of transparency.” Yamamoto p. 428.
Consequently, it cannot be concluded from the evidence before us that
the sales are due to the merits of the invention.
Moreover, as argued by the Examiner, Patent Owner has not
established what else is added by the party who combines PolyShield and
MXD6. Answer 32. Consequently, there may be other unclaimed
ingredients present in the blend which are responsible for the alleged
commercial success.

Unexpected results
Patent Owner contends that the specific components recited in the
claims exhibit a surprising and unexpected synergistic decrease in
yellowness that is more than the additive effects of each component’s
individual effect on color. Appeal Br. 21.
A showing of “unexpected results” can be used to demonstrate the
non-obviousness of a claimed invention. Soni, 54 F.3d at 750 (“One way for
a patent applicant to rebut a prima facie case of obviousness is to make a
showing of ‘unexpected results,’ i.e., to show that the claimed invention
exhibits some superior property or advantage that a person of ordinary skill
in the relevant art would have found surprising or unexpected.”). These
results must be “surprising or unexpected” to one of ordinary skill in the art
when comparted to closest prior art. Soni, 54 F.3d at 750. Unexpected
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results must also be “commensurate in scope with the degree of protection
sought by the claimed subject matter.” In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005).
According to Patent Owner, the combination of the recited cobalt salt
component and the recited metal sulfonate salt component led to a decrease
in yellowness that exceeds the effect of cobalt salt alone plus the effect of
metal sulfonate salt alone. Appeal Br. 21. Patent Owner provided a
summary of data described in the ’216 patent. The summary is reproduced
below:

Yellowness is measured in the b* scale. A positive number indicates
a yellow color and a negative number indicates a blue color. According to
Dr. Turner, the preform is the most accurate measure of b* because it does
not have the same influence of stretch blow molding on the color and haze
as the bottle sidewalls. Turner Decl. ¶ 75.
Table 1 shows that when cobalt alone was added to the blend of
polyester and MXD6, the preform b* value was 4.2 (Run 4), an
improvement of -15.1 over the control (Run 2). When SIPA alone was
employed (Run 6), an improvement of -1.8 over the control (Run 2) was
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observed. Cobalt and SIPA together would be expected to show an
improvement of -16.9 if additive. However, when the actual experiment was
conducted (Run 8), the value was -25.9, a difference of -9.0.
This data was presented by Patent Owner during the prosecution of
the ’216 patent in Application Serial No. 12/768,541 (“the ’541
application”). See Applicant Remarks filed Nov. 23, 2010 in the ’541
application. After the remarks discussing the evidence of synergy were
filed, the Examiner mailed a Notice of Allowance (Jan. 25, 2011). When the
Request for Reexamination was filed, the Requester provided the declaration
by Dr. Callander in which he discussed evidence, submitted in the European
Patent Office Proceeding of the counterpart European application, that the
runs containing SIPA had sodium acetate (“NaAc”) present, while the
control and cobalt runs, alone, did not. Request 106–107. Patent Owner has
not challenged these facts. The addition of sodium acetate was never
mentioned or explained during Liu’s original prosecution and was not
disclosed in the ’216 patent. Dr. Callander testified in his declaration that
the “use of sodium acetate in the working examples [comprising SIPA], but
not the controls is significant because sodium acetate is known to interact
with cobalt salts to achieve a more intense blue color as discussed in my
point 57.” Callander Decl. ¶ 40. Dr. Callander thus attributed the enhanced
blue color observed in the SIPA and cobalt run to result from the addition of
sodium acetate. Id. at ¶ 57.
Because sodium acetate was included in some runs, but not others, Dr.
Callander testified that the experiments in the ’216 patent provided as
evidence of unexpected synergy failed to follow a proper design.
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Specifically, Dr. Callander stated that an additional independent variable,
namely sodium acetate, was present in Runs 6 and 8. Id. at ¶ 47 (see Table
F).
Dr. Callander explained that the flaw could be addressed by
conducting all runs in the presence of sodium acetate or all runs in the
absence of sodium acetate. Id. at ¶ 48. When these experiments were
performed, Dr. Callander reported that no synergy was found. Id. at ¶ 52
(sodium acetate), ¶ 53 (no sodium acetate). Dr. Callander also described
results of a third set of experiments submitted during the European
Opposition Proceedings which showed no synergy in the absence of sodium
acetate. Id. at ¶ 54. Patent Owner repeated the experiments, but once again
utilized sodium acetate in the SIPA only runs. Id. at ¶ 55. Based on a
comparison of all the data, Dr. Callander once again concluded that the
increase blue shift in color observed in Patent Owner’s experiments “is
caused by the use of sodium acetate.” Id. Dr. Callander provided scientific
evidence of the mechanism as to how sodium acetate enhances cobalt’s
blue.2 Id. at ¶ 57.
Dr. Turner argued unpersuasively that the data for the sodium acetate
experiment (Callander Decl. ¶ 52) was flawed because the values reported in
it were different than the values in the same experiments in the ’216 patent.
Turner Decl. ¶ 80. However, Dr. Turner did not explain why such a

2 “[T]he addition of sodium acetate to cobalt salts caused the cobalt to
recoordinate from a pale red or purple octahedral complex to an intense blue
tetrahedral complex, thus explaining why Liu’s working examples with
sodium acetate are more blue than the controls without sodium acetate.”
Callander Decl. ¶ 57.
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difference made the experiments unreliable when all the run’s in Dr.
Callander’s experiments were conducted under the same conditions with
same materials, and thus internally consistent. Patent Owner also compared
raw numbers of Dr. Callander’s different experiments to attempt to show
synergy was actually observed. Appeal Br. 26–27. However, such
comparisons are like comparing apples and oranges because they represent
different experiments, and synergy is calculated by using the raw data in a
single experiment in a specific algorithm described by Dr. Callander.
Callander Decl. ¶¶ 51–52

DEG
Patent Owner contends that the reason why Dr. Callander’s
experimental results differed from their own is because of the production of
diethylene glycol (“DEG”) which is produced as a by-product from ethylene
glycol during the polymerization reaction. Tanaka et al. (US 5,262,513,
issued Nov. 16, 1993) (“Tanaka”), col. 2, 61–65 (cited by Dr. Callander at
¶¶ 49, 66, 73). According to Dr. Turner, sodium acetate is a buffer which is
added to control acidity. “By controlling acidity, the formation of DEG and
other higher molecular weight diols is minimized.” Turner Decl. ¶ 76. Dr.
Turner stated without sodium acetate, the DEG levels are not controlled. Id.
at ¶ 84. Dr. Turner further stated that “the resulting polyesters are different
in structure and cannot be comparted on a head to head analysis.” Id.
Dr. Callander cited the Tanaka patent for a discussion of DEG.
Tanaka teaches the manufacture of PET. Tanaka teaches that terephthalic
acid and ethylene glycol are the main components commonly used for PET
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manufacture. Tanaka, col. 2, ll. 50–53. Tanaka also teaches the addition of
isophthalic units, including SIPA. Id. at col. 2, ll. 54–60. Tanaka teaches
the DEG is produced during the polymerization reaction. Id. at col 2, ll. 61–
65. Tanaka teaches that DEG levels can be controlled by selecting reaction
conditions and additive. Id. at col. 2, ll. 65–67. Tanaka teaches that
different levels of DEG may be desired, e.g., low levels which are achieved
with additives, such as sodium acetate, or increased levels by promoting
formation of DEG, e.g., with an acid. Id. at col. 2, l. 65 to col. 3, l. 23.
Neither Dr. Turner nor Dr. Callander explained the significance of the DEG,
but based on Tanaka (at col. 2, ll. 33–40), it appears that the DEG is
incorporated into the polymer.
To address the DEG issue, additional experiments were provided by
Patent Owner from the European Opposition proceedings. These
experiments, carried out by Dr. Uwe Bayer, controlled the DEG levels. Dr.
Bayer specifically stated: “I increased the DEG concentration in the sodium
acetate containing NaSIPA resins to be as close as possible to the DEG
concentration in the sodium acetate free NaSIPA resins.” Bayer Decl. ¶ 6.
The results obtained by Dr. Bayer were summarized in a table which
is reproduced below.

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The results show that when DEG levels were increased in the sodium
acetate experiments (2 and 4 having 76 ppm NaOAc) to match the levels in
the no acetate runs (1 and 3 having 0 ppm NaOAc), synergy was observed.
Thus, the unrebutted data provided in Dr. Bayer’s declaration shows
that when DEG levels were controlled in runs in which sodium acetate was
absent, synergy resulted. Bayer Decl. ¶ 4 (see Runs 1 and 4, using two
different cobalt salts). The claims, however, do not require a specific
amount of DEG. In fact, Dr. Bayer did not disclose the levels of DEG in his
experiments or whether they were comparable to those in the experiments
described by Dr. Callander. The data provided by Dr. Bayer, therefore, at
most establishes that, in the absence of sodium acetate, synergy is obtained
under certain controlled DEG levels, conditions, and using PET as the
copolyester. However, the claims are unrestricted as to the type of
copolyester and Patent Owner’s own expert Dr. Turner testified that DEG
levels affect the structure of the final polyester. Turner ¶ 84. Thus, even if
the showing without sodium acetate constitutes an “unexpected result,” it is
not commensurate in scope with claim 1 because the claim encompasses
compositions for which no showing has been made, namely compositions
with different levels of DEG and copolyester structures. Because Dr.
Callander in his experiment (at ¶ 53) shows no synergy in the absence of
sodium acetate, the weight of the evidence supports the conclusion that there
are other compositions within the scope of the claim which lack synergy
with respect to the composition color. A claim is unpatentable under § 103
if any embodiment within its scope would have been obvious to the person
of ordinary skill in the art at the time the invention was made. In re Klein,
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987 F.2d 1569, 1570 (Fed. Cir. 1993); In re Muchmore, 433 F.2d 824, 826
(CCPA 1970).
Similarly, Dr. Bayer’s declaration shows synergy in the presence of
sodium acetate in all runs. In contrast, Dr. Callander’s experiments did not
show synergy (at ¶ 53). Patent Owner did not compare the differences
between Bayer’s and Callander’s experiments. However, it appears that at
least the cobalt salt (’216 patent, col. 8, l. 60 discloses cobalt octoate while
Bayer used cobalt methane and cobalt stearate) and the polyesters (Bayer
used a commercial resin but the ’216 did not) differ. Consequently, the
results of Bayer are not commensurate in scope with the claim because there
are other compositions within its scope which lack synergy with respect to
the composition color.

Summary
In sum, the Examiner’s decision not to accept the data in the ’216
patent as adequate evidence to establish non-obviousness of the claims is
supported by a preponderance of the evidence. As discussed by Dr.
Callander and in the Request for Reexamination, the data was not
comparative because some runs contained sodium acetate and others did not.
Dr. Callander provided compelling evidence that sodium acetate intensifies
the blue color, and therefore could have influenced the results in the runs in
which it was present.

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CONCLUSION
Rejections 1–6 of claims 1 and 12 as obvious in view of Yamamoto
and Yuo or Kulkarni, and the additional publications are affirmed. Claims
2–11, 13, 14, and 15 were not argued separately and therefore fall with
claims 1 and 12.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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PATENT OWNER:

WOMBLE CARLYLE SANDRIDGE & RICE, LLP
P.O. Box 7037
Atlanta, GA 30357-0037

THIRD PARTY REQUESTER:

Edwin A. Sisson
Attorney at Law, LLC
1332 Sharon Copley Rd.
P.O. Box 603
Sharon Center, OH 44274-0603