Ex Parte CODD et al

Patent Trial and Appeal Board

Aug 1, 2016

12760030 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121760,030 04/14/2010 Helen J. CODD
22850 7590 08/03/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
355672US23 8245
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELEN J. CODD, GEORGE F. ROLLEND,
and NORMAN W. LISSON
Appeal2014-005485
Application 12/760,030
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 18 and 25-31. 1 A hearing was held on July 6,
2016. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Claims 1 and 18 are reproduced below from the Claims Appendix of the
Appeal Brief dated November 29, 2013 ("App. Br.").
1 Claims 1-1 7 and 19-24 are also pending but have been withdrawn from
consideration.
Appeal2014-005485
Application 12/760,030
Claim 18: An ultra-high IV [intrinsic viscosity] polyester resin
prepared by the method of claim 1.
App. Br., Claims App. iii.
Claim 1: A method for producing an ultra-high intrinsic viscosity
(IV) polyester resin having a final (IVf) of at least 0.9 dL/g,
compnsmg:
solid-state polymerizing, a polyester starting material having a
starting IV (IVst) meeting the following relationship:
0.65 dL/g < IVst < 0.9 dL/g;
wherein the polyester starting material is a polyethylene
terephthalate polymer, optionally containing one or more comonomers
in amounts up to 30 mol%, wherein the polyester starting material has
been prepared by melt polymerization up to the IVst with no more than
0.05 dL/g of IV lift due to solid-state polymerization, and wherein the
polyester starting material is in solid form as a resin particle having
been subjected to latent heat crystallization upon formation of the
resin particle, and having a variation of IV of no more than 0.05 dL/g
across any dimension of the resin particle.
App. Br., Claims App. i.
The claims on appeal stand rejected as follows:
(1) claims 18 and 25-30 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Schaaf et al.;2
(2) claims 18 and 25-29 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Kezios et al.; 3 and
(3) claims 18 and 25-31under35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Morawetz et al. 4
2 US 6,559 ,271 B2, issued May 6, 2003 ("Schaaf').
3 US 2007/0128389 Al, published June 7, 2007 ("Kezios").
4 US 4,080,317, issued March 21, 1978 ("Morawetz").
2
Appeal2014-005485
Application 12/760,030
B. DISCUSSION
The Examiner finds Schaaf discloses a high molecular weight polyester
having an IV up to 1.0 dL/g, Kezios discloses a high molecular weight polyester
having an IV of 0.9 dL/g or more, and Morawetz discloses a high molecular weight
polyester having an IV up to 1.1 dL/g or more. Final 3-5.5
The Appellants do not direct us to any error in the Examiner's findings.
Rather, the Appellants argue that the following process limitations recited in claim
1 distinguish the claimed invention from the prior art:
solid-state polymerizing a polyester starting material having an IV of
from greater than 0.65 dL/g to less than 0.9 dL/g prepared by melt
polymerization "with no more than 0.05 dL/g of IV lift due to solid-
state polymerization" and which is in the form of resin particles that
have been latent heat crystallized and have an IV variation "of no
more than 0.05 dL/g."
App. Br. 7.
Claim 18, which depends from claim 1, is written in product-by-process
format. Thus, the patentability of claim 18 is based on the product (i.e., "[a]n
ultra-high IV polyester resin"), not on the method of making the product. See In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the product in a product-by-
process claim is the same as ... a product of the prior art, the claim is unpatentable
even though the prior art product was made by a different process.").
The Appellants argue that paragraphs 15, 19-21, and 25-28 of the Kezios
Declaration6 show that the Appellants' polyester resins are different from
"conventional" or "comparative" polyester resins. App. Br. 8. More specifically,
5 Final Office Action dated February 28, 2013 ("Final").
6 Declaration of Dr. Peter S. Kezios dated November 21, 2012 ("Kezios Deel.").
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Appeal2014-005485
Application 12/760,030
the Appellants argue that the IV lift rate 7 for the inventive resins is higher than the
IV lift rate for a conventional or comparative resin "prepared by solid-state
polymerizing a polyester material having a different [i.e., lower] starting IV than
that specified in the present claims." App. Br. 9. The Appellants rely on Table 1
on page 10 of the Appeal Brief for support. App. Br. 10 (comparing IV lift rate of
0.028 dL/g/hr for inventive batch no. 1 with IV lift rate of 0.019 dL/g/hr for
conventional or comparative resin 3001 ).
Significantly, the Appellants have failed to show that any of the comparative
or conventional resins identified in Table 1 correspond to any of the resins
described in Schaaf, Kezios, or Morawetz. Thus, the evidence relied on by the
Appellants fails to show that the lift rate (or any of the other process limitations
recited in the claimed method)8 results in a different polyester resin from the
polyester resins described in Schaaf, Kezios, and Morawetz. See Ans. 5 (finding
that "lift rate is not a property of final polymer, but rather depend[s] on many
characteristics of starting polymer and processing parameters").9
On this record, we find that the IV lift rate affects the final IV of the
polyester resin. In this regard, the Examiner finds, and the Appellants do not
dispute, that Schaaf, Kezios, and Morawetz describe high molecular weight
polyester resins having a final IV as claimed.
The Appellants argue that Schaaf "describes a process which is carried out
'via a catalyzed polycondensation in the melt ... '" rather than "a process that
7 "IV lift rate" is said to represent "the increase in IV that a polyester starting
material undergoes per unit of time during solid-state polymerization" and "is
expressed in units of dL/g/hr." Kezios Deel. i-f 11.
8 Claim 1 does not recite a lift rate.
9 Examiner's Answer dated January 29, 2014 ("Ans.").
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Appeal2014-005485
Application 12/760,030
includes subjecting a polyester resin to solid-state polymerizing" as recited in
claim 1. App. Br. 12. Similarly, the Appellants argue that Kezios "explicitly
excludes solid state polymerization." App. Br. 12.
According to Dr. Kezios:
[W]hile it may be possible to form ultra-high IV polyester resins by
continuing melt polymerization to achieve high IV, such processes
must be carried out at substantially higher temperature than solid-state
polymerization. A practical consequence of carrying out melt phase
polymerization to form an ultra-high IV polyester resin is substantial
discoloration and degradation in physical properties in the resultant
material. The ultra-high polyester resin of the present claims is not
burdened by these problems.
Kezios Deel. i-f 31 (emphasis added).
The Examiner finds that "no factual data to support this statement ha[ s] been
presented by Declaration." Final 2. The Examiner's finding is supported by the
record. See In re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) ("the affidavits
fail in their purpose since they recite conclusions and few facts to buttress said
conclusions"). Moreover, Morawetz uses solid state polymerization, not melt
polymerization, to form a polyester resin having a final IV within the ranges
recited in claims 1, 30, and 31. See Morawetz, col. 4, 11. 8-10 (intrinsic viscosity
of polycondensate of higher viscosity preferably ranges between 0.90 and 1.80
dL/g). Neither the Appeal Brief nor the Kezios Declaration discusses Morawetz in
any detail.
Claim 1 also recites solid-state polymerizing a starting polyester material
having an IV variation "of no more than 0.05 dL/g across any dimension of the
resin particle." App. Br., Claims App. i. In the Reply Brief, the Appellants argue
for the first time on appeal that "[p ]olyester pellets having a greater IV gradient
inhibit the egress of ethylene glycol. This in tum substantially affects the ability of
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Appeal2014-005485
Application 12/760,030
the polyester resin pellets to undergo solid-state polymerizing." 10 Reply Br. 6. 11
Suffice it to say that the Appellants have failed to direct us to any evidence
showing that the claimed IV gradient results in a different polyester resin from the
polyester resins described in Schaaf, Kezios, and Morawetz.
For the reasons set forth above and in the Examiner's Answer, the
Examiner's finding that the polyester resin recited in claim 18 is anticipated by the
polyester resins described in Schaaf, Kezios, and Morawetz is supported by a
preponderance of the evidence. Therefore, the rejections on appeal are sustained.
C. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
10 The Appellants' argument was not raised in the Appeal Brief and is not
responsive to an argument raised in the Examiner's Answer. Moreover, the
Appellants have failed to show good cause why the argument could not have been
raised in the Appeal Brief. Therefore, the Appellants' argument is not entitled to
consideration on appeal. 37 C.F.R. § 41.41(b)(2) (2012).
11 Reply Brief dated March 5, 2014.
6