Ex Parte Culbert et al

Patent Trial and Appeal Board

May 24, 2016

13145477 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/145,477 07/20/2011
26936 7590 05/26/2016
SHOEMAKER AND MATT ARE, LTD
c/o DA VIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
FIRST NAMED INVENTOR
Brent Allan Culbert
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.
6684 5529
EXAMINER
DOLLINGER, MICHAEL M
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
USPTO@SHOMAT.COM
patent@nhpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT ALLAN CULBERT, MAURICIO RODRIGUES,
ANDREAS CHRISTEL, and FRANZ GIGER
Appeal2014-008777
Application 13/145,477
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 20-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed Jul. 20, 2011; Final Office
Action ("Final Act.") mailed Nov. 12, 2013; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify Buhler Thermal Processes AG as the real party in
interest. App. Br. 2.
Appeal2014-008777
Application 13/145,477
BACKGROUND
The subject matter involved in this appeal relates to a process for
producing a thermoplastic polyester. Spec. 1. Claim 20 illustrates the
subject matter on appeal and is reproduced from the Claims Appendix of the
Appeal Brief as follows:
20. A process for producing a thermoplastic polyester with
the following steps:
a) producing polyester prepolymer particles with an
intrinsic viscosity of from 0.35 to 0.75 dl/g,
b) crystallizing the polyester prepolymer particles to
produce semicrystalline polyester prepolymer particles,
c) preheating the semi crystalline polyester prepolymer
particles to a suitable reaction temperature for producing heated
polyester prepolymer particles,
d) reacting the heated polyester prepolymer particles to
produce polyester polymer particles with an intrinsic viscosity
of from 0.70 to 0.95 dl/g,
where the reaction in step d) takes place in at least one
reactor through which the particles flow under gravity,
where the residence time in the reactor is from 6 to 30
hours,
wherein the particles ( 1) are introduced at least into the
step d) with a mass flow rate of from 40 to 100 metric tons per
hour, and a descent velocity of from above 2.6 to 6 meters per
hour applies to the particles in the reactor.
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Application 13/145,477
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 20-22 and 24--31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Christel. 4
II. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Christel and Kirsten. 5
III. Claims 20-22 and 24--31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Christel and Meyer. 6
IV. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Christel, Meyer and Kirsten.
DISCUSSION
I
With regard to Rejection I, Appellants argue claims 20-22 and 24--31
as a group. App. Br. 8----23; Reply Br. 1--4. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 20 as representative and decide the
propriety of Rejection I based on the representative claim alone.
The Examiner found, and Appellants do not dispute, that Christel
discloses a polyester production process which includes each and every step
recited in claim 20 except that, in connection with step ( d), Christel does not
specify a mass flow rate of from 40 to 100 metric tons per hour and a
descent velocity of from above 2.6 to 6 meters per hour. Compare Ans. 2
3 Ans. 2-6.
4 US 2008/0019882 Al, published Jan. 24, 2008 ("Christel").
5 DE 103 14 991 Al, published Nov. 11, 2004 ("Kirsten"), as translated.
6 US 6,010,667, issued Jan. 4, 2000 ("Meyer").
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Application 13/145,477
with App. Br. 8-23, Reply Br. 1--4. The Examiner determined that operating
Christel's reaction process at the claimed production rate and particle
descent velocity would have been obvious to one skilled in the art. Ans. 2-3,
7-9 (noting that "where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation") (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955).
Appellants contend that the cited prior art does not suggest up-scaling
Christel's production rate, which Christel identifies as "at least 300 t/day
[12.5 t/h]." App. Br. 18; Christel at i-f 43. In connection with that argument,
Appellants rely on a text book, Modem Polyesters, 7 for the proposition that
conventional SSP reactors operate at a throughput of 450 t/d (18.75 t/h).
App. Br. 10, 18-19, 21-22; Reply Br. 1-2. However, Appellants do not point
us to any evidence that the throughput identified in Modem Polyesters was
considered a technoiogicai iimit. Moreover, Christei expressiy recognizes
that "the energy efficiency of a process can be increased with rising
throughput." Christel at i-f 43. Appellants acknowledge that there was an
"ongoing need for higher production-line-throughput ... to improve the
economics of these processes," Spec. 1, and that reactors capable of
processing up to 60 t/h were known, id. at 2. On this record, we are not
persuaded of reversible error in the Examiner's determination that one of
ordinary skill would have found it obvious to up-scale Christel's production
rate to attain the expected economic advantage.
7 Appellants introduced pages 143-72 of Modern Polyesters: Chemistry and
Technology of Polyesters and Copolyesters, (Scheirs & Long (eds.), Wiley
2003) into the record with their Jan. 8, 2014 response to the Final Action.
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Application 13/145,477
Neither are we persuaded by Appellants' argument, App. Br. 16, that
the observed relationship between particle descent velocity and particle
sticking would have been unexpected. Appellants do not point to any
evidence that rebuts the Examiner's finding, Ans. 7-8, that reduced sticking
would have been expected due to the increased kinetic energy of the
particles attributable to the increased velocity. The Modem Polyesters text
book relied upon by Appellants in their Appeal Brief is consistent with the
Examiner's reasoning. See Modem Polyesters at p. 72 ("In general, the
sticking tendency tends to increase with ... decreasing pellet velocity.").
Appellants further argue that the claimed invention "is based on a
careful and specific selection of various parameters," the result of which
made up-scaling of the SSP reaction "surprisingly" possible. App. Br. 16.
Generally, Appellants contend that any scale-up to increase reactor
throughput would have required an associated increase in reactor volume, so
that the particles moving through the reactor wouid experience a sufficient
residence time to reach the desired intrinsic viscosity. Id. at 11-13, 19.
Appellants argue that by sizing the increased reactor volume to yield a
relatively higher particle descent velocity, the reduced particle sticking made
it possible to operate the reaction at a higher temperature, thereby permitting
a shorter residence time and, consequently, a smaller increase in reactor
volume. Id. at 16. Much of Appellants' Appeal Brief is dedicated to
demonstrating the various mathematical relationships of these reaction
parameters. See App. Br. 11-23. However, except for the above-noted
relationship between velocity and particle sticking, Appellants do not
contend that that any of these relationships were unknown. See e.g. id. at 10
(known that reaction time decreases with increasing reaction temperature);
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Application 13/145,477
id. at 11 (known that residence time increases with increasing reactor
diameter and/or height). Thus, Appellants' various sample calculations
presented in the Appeal Brief tend to demonstrate the same type of
optimization calculations which one of ordinary skill reasonably would have
been expected to perform to up-scale Christel's production rate. Appellants
do not point to any evidence or technical reasoning to suggest that such
optimization would have involved more than routine effort with expected
results.
For the foregoing reasons, we sustain Rejection I.
II
Appellants solely rely on the same argument presented in support of
patentability of claim 20 to support the patentability of dependent claim 23.
App. Br. 23. Accordingly, we sustain Rejection II for the same reasons
given above in connection with Rejection I.
III-IV
Each of Rejections III and IV is premised on the Examiner's finding
that Meyer discloses a reactor having a height of 0.5 to 8 m. See Ans. 6.
Appellants argue that the Examiner erred in reaching that finding because
the relied-upon teaching in Meyer regards only the size of one of a plurality
of internal structures provided within the reactor. App. Br. 24. We agree.
See Meyer col. 2, 11. 56-59 ("The height of the internals is 0.5-8.0 m ... the
height preferably increasing in the direction of fall of the product.").
Because the Examiner's obviousness determination is premised at least in
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Application 13/145,477
part on the foregoing erroneous finding of fact, we do not sustain either
Rejection III or Rejection IV.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 3 7 C.F .R. § 1.13 6.
AFFIRMED
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