Ex Parte Chen et al

Board of Patent Appeals and Interferences

Oct 28, 2010

11383262 (B.P.A.I. Oct. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MINGFEI CHEN, PEIWEN CHENG, YA GUO and
KISHORE UDIPI
____________

Appeal 2010-007477
Application 11/383,262
Technology Center 1600
____________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 2, 5, 11, and 13.
Pending “[c]laims 3, 4, 6-10, and 15-26 were withdrawn from consideration”
(App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-007477
Application 11/383,262

2

STATEMENT OF THE CASE
The claims are directed to a biodegradable polymer. Claim 2 is
representative and is reproduced in the “Claims Appendix” of Appellants’
Brief (App. Br. 13). With regard to the first and second monomers set forth
in claim 2, the Examiner notes “that the elected species under examination
include the monomers 4-tert-butyl-caprolactone as the first monomer and
glycolide as the second monomer” (Ans. 3).
Claims 2, 5, 11, and 13 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Kupperblatt2 and Dobrzynski.3
We affirm.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 2 is representative.
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find no error in the Examiner’s conclusion that
claim 2 is prima facie obvious over the combination of Kupperblatt and

2 Kupperblatt et al., WO 99/10404, published March 4, 1999.
3 Piotr Dobrzynski et al., Structure-Property Relationships of Copolymers
Obtained by Ring-Opening Polymerization of Glycolide and ε-Caprolactone.
Part 1. Synthesis and Characterization, 6 Biomacromolecules 483-488
(2005).
Appeal 2010-007477
Application 11/383,262

3
Dobrzynski. See, e.g., In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990).
Accordingly, we sustain the Examiner’s rejection for the reasons set forth in
the Answer, which we incorporate herein by reference.

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 2 under 35 U.S.C § 103(a) as
unpatentable over the combination of Kupperblatt and Dobrzynski is
affirmed. Claims 5, 11, and 13 fall together with claim 2.

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).

AFFIRMED

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