Ex Parte Desbois et al

Patent Trial and Appeal Board

Feb 14, 2017

13058779 (P.T.A.B. Feb. 14, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/058,779 02/11/2011 Philippe Desbois 13156-00382-US 3639
123223 7590 02/16/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE DESBOIS,
FAISSAL-ALI EL-TOUFAILI, MICHAEL GALL,
and ANDREAS WOLLNY
Appeal 2016-000956
Application 13/058,779
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
November 18, 2014 decision finally rejecting claims 11—17, 20, and 21. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as BASF SE (Appeal Br. 1).
Appeal 2016-000956
Application 13/058,779
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a batch process for polyamide
production in a stirred-tank reactor and, subsequently, in an extruder (Spec,
p.l, 11. 6—7). Independent claim 11 is representative and is reproduced
below from the Claims Appendix of the Appeal Brief (key claim limitations
shown in italics)'.
11. A batch process for the production of copolyamides,
wherein the copolyamides comprise the reaction product of
a) a dicarboxylic acid selected from the group consisting of
adipic acid, sebacic acid, dodecanedioic acid,
tetradecanedioic acid, isophthalic acid, terephthalic acid, and
a mixture thereof; and
b) a diamine selected from the group consisting of an aliphatic
diamine having from 6 to 12 carbon atoms, a cycloaliphatic
diamine having from 6 to 24 carbon atoms, and mixtures
thereof; with the proviso that no meta-xylylen[e]diamine is
present,
said process comprising
1) feeding the entire amount of monomer composed of
dicarboxylic acid, of diamine, and, optionally, of further
polyamide-forming monomers, in the desired stoichiometry,
in a closed stirred-tank reactor,
2) heating the monomer mixture in the stirred-tank reactor,
with stirring, and with setting of a certain pressure, to a
desired reaction temperature for the production of a
prepolymer, wherein the reaction in stage 2) is carried out at
a temperature in the range from 70 to 350°C and at a
maximum pressure in the range from 3 to 100 bar and the
reaction in the stirred-tank reactor is terminated once the
conversion reached is in the range from 50 to 97%, based on
the amino groups and carboxy groups, wherein the intrinsic
viscosity of the prepolymer is in the range from 3 to 200
ml/g, determined by solution viscometry, and
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Application 13/058,779
5) [sic] reacting the reaction mixture from stage 2) in the melt
in a vented extruder for further increase of the molecular
weight, with discharge of water vapor, and without use of
additional polyamide-forming monomers or of polyamides,
at a temperature in the range from 120 to 370°C and at a
pressure in the range from 0.01 to 20 bar,
wherein the reaction mixture from stage 2) is passed directly
into the vented extruder in stage 5) and two or more stirred-tank
reactors installed in parallel are operated alternately, and their
reaction products are introduced alternately to the vented
extruder.
Appeal Br. 17—18 (App. A—Listing of Claims on Appeal).
REJECTIONS
(1) Claims 11, 12, 13, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sage2 in view of Haering,3 and further in view Tsujii.4
(2) Claims 11, 13, and 15—17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamura5 in view of Tsujii.
(3) Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamura in view of Tsujii, and further in view of Ueda.6
(4) Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tamura in view of Tsujii, and further in view of Bush.7
2 Sage, U.S. Patent No. 5,362,846, issued November 8, 1994.
3 Haering et al., U.S. Patent No. 4,760,129, issued July 26, 1988.
4 Tsujii et al., JP 2004204027 A, published July 22, 2004. Because Tsujii is
in Japanese, we will refer to the machine translation of record, as do both
Appellants and the Examiner.
5 Tamura et al., U.S. Patent No. 6,156,869, issued December 5, 2000.
6 Ueda et al., U.S. Patent No. 3,579,414, issued May 18, 1971
7 Bush et al., U.S. Patent No. 6,169,162 Bl, issued January 2, 2001.
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Application 13/058,779
With the exception of claims 20 and 21, Appellants do not make
separate substantive arguments in support of patentability of any of the
claims (see generally, Appeal Br. 4—16; Reply Br. 1—5). Accordingly, our
discussion will focus on the rejections of independent claim 11. Claims 12—
17 will stand or fall with claim 11. 37 C.F.R. § 41.37(c)(l)(iv). Claims 20
and 21 will be addressed separately.
DISCUSSION
Rejection (1)
The Examiner finds that Sage exemplifies the addition of dicarboxylic
acid and diamine into a “stirred reactor,. . . but is silent as to whether the
reactor is closed” as required by independent claim 11 (Non-Final Act. 4,
citing Example 1 (6:52—68)). The Examiner further finds that Sage’s
disclosed reactor pressures overlap ranges recited in step 2) of the claim
(Non-Final Act. 3, citing Sage 5:19-26). The Examiner, however, finds that
the ordinary skilled artisan “would have been motivated by common sense to
employ a closed reactor in order to utilize and maintain the above-
atmospheric pressures suggested by Sage” (Non-Final Act. 4).
The Examiner finds that Sage teaches all of the other limitations
recited in claim 11, but is silent as to: (i) the intrinsic viscosity of the
prepolymer prior to extruder transfer, (ii) the temperature and pressure
conditions for the extruder step in a vented extruder, and (iii) the installation
of two more stirred-tank reactors in parallel and operated alternately (id.).
The Examiner relies on Haering for suggesting the recited “vented
extruder” and the temperature and pressure conditions recited in step 5) (id.,
citing Haering 3:1—6; 3:14—17; 3:20-25).
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Application 13/058,779
The Examiner relies on Tsujii for teaching that “it is preferred to use
two or more parallel batch reaction tanks for carrying out the initial
polymerization process” (Non-Final Act. 7). The Examiner further relies on
Tsujii for suggesting the “recited intrinsic viscosity and conversion of the
prepolymer at the termination of instant step []2)” (id. at 6). Specifically,
the Examiner finds “Tsujii teaches that the ‘initial polymerization process’
in the stirred tank reactor is carried out until the relative viscosity of the
prepolymer is 1.4 to 2.7” (id.). The Examiner determines
that the degree to which prepolymerization is allowed to
proceed in an initial polymerization stage is a result effective
variable, because [Tsujii suggests that] changing it will clearly
affect the level of heat deterioration versus the number of gels
or fisheyes in the final product, as well as the economic
efficiency of the process.
id. at 7; see also Tsujii 140.
Appellants make the following arguments urging reversal of the
Examiner’s § 103(a) rejection: (1) the ordinary skilled artisan would not
have been motivated to combine the teachings of Tsujii with Sage and
Haering because “the condensation reaction of an aromatic diamine with a
diacid differs significantly from the condensation reaction of an aliphatic
diamine . . . with a diacid” (Appeal Br. 8); (2) Tsujii’s process requires the
addition of aromatic meta-xylylene diamine [i.e., “MXD”] “over a three
hour period”, whereas “Appellants’] process step 1) requires the ‘feeding
[of] the entire amount of monomer’, ... in one addition with the one
mixture having the ‘desired stoichiometry’” (id. at 9; see claim 11; see also
generally Reply Br.); and (3) the ordinary skilled artisan would glean from
Tsujii that such slow addition of MXD to the diacid is necessary “to avoid
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Application 13/058,779
excess overheating of the polymerization mixture and thermal
decomposition of the desired polymer” (Appeal Br. 9, citing Tsujii 138).
These arguments are not persuasive of reversible error. As explained
by the Examiner, the rejection relies on Tsujii only for the purpose of
teaching: (i) the intrinsic viscosity of the prepolymer prior to extruder
transfer and (ii) the limitations regarding two more stirred-tank reactors
(Non-Final Act. 4). Therefore, the Examiner’s reliance on Tsujii’s teachings
with respect to intrinsic viscosity do not require incorporation of Tsujii’s
slow addition of MXD into Sage’s method (see Ans. 5 (“. . . Appellants’]
argument regarding Tsujii’s particular method of diamine addition to diacid
is not relevant to the rejection of record over Sage in view of selected
teachings in Haering and Tsujii.”)).
Moreover, Tsujii does not teach that the intrinsic viscosity range is
only possible with polyamides containing aromatic MXD. Rather, Tsujii
specifically teaches that the disclosed “initial polymerization process ... is
applicable to both aliphatic polyamide and aromatic content polyamide
. . . .” Tsujii 11. It is well established that a reference is good for all it
fairly teaches a person having ordinary skill in the art, even when the
teaching is a cursory mention. E.g., In re Mills, 470 F.2d 649, 651 (CCPA
1972).
With respect to argument (2), Appellants further argue that their
“construction of the claims requires that an entire amount of monomer be
present in the reactor before polymerization can occur” (Reply Br. 1).
Appellants assert that:
[t]he correct construction of the claims is important to this
Appeal because there is no teaching in the art of record of a
batch process of preparing a poly[a]mide in which the entire
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Application 13/058,779
amount of monomer is added to the reactor to provide a
monomer mixture of desired stoichiometry, and therefore, is
present in the reactor before a desired reaction temperature is
reached and any measurable polymerization to prepolymer can
begin.
{id. at 5).
We agree with Appellants’ position regarding the proper construction
of claim 11 because step 1) requires feeding the entire amount of monomer
composed of, at least, dicarboxylic acid and diamine in the desired
stoichiometry in a closed stirred-tank reactor before step 2)’s heated
prepolymer production.
The Examiner’s incorrect construction of claim 11 does not constitute
reversible error, however, because Rejection (1) is not dependent on this
construction.8 As the Examiner found, Sage specifically teaches the known
“first polymerisation step” (Sage 5:53) in which “the single step of reacting
terepthalic acid [i.e., a dicarboxylic acid]. . . and the HMDA [i.e.,
hexamethylene diamine]” {id. 5:20—22) takes place in a heated stirred-tank
reactor before the pre-polymer is transferred to an extruder (Non-Final Act.
3—4, citing Sage 5:19-26; 5:52—64; Example 1 (6:52—68)). Absent factual
evidence showing otherwise, we discern no reversible error in the
Examiner’s reasonable determination that one of ordinary skill in the art
would have inferred that Sage’s disclosure suggests claimed step 1).
Therefore, for the reasons set forth above and explained in the
Examiner’s Non-Final Office Action and Answer, we are unpersuaded by
8 The Examiner argues that claim 11 “does not exclude processes wherein
one or both reactants are added over an extended period of time” (Ans. 5—6).
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Application 13/058,779
Appellants’ arguments (l)-(3). Accordingly, we affirm the rejection of claim
11. We likewise affirm the rejection of dependent claims 12, 13, and 15.
Rejections (2) and (4)
Appellants urge reversal of Examiner’s § 103(a) rejections based on
Tamura in view of Tsujii, with or without Bush, by relying on the same
arguments that the Examiner’s proposed combination would have to ignore
Tsujii’s slow-addition of MXD (see, e.g., Appeal Br. 13, 15). We, however,
discern no reversible error in the Examiner’s reasonable determination that
one of ordinary skill in the art would have inferred that Tamura’s disclosure
suggests Appellants’ claimed step 1). As the Examiner found, Tamura
exemplifies feeding the entire amount of monomer into a closed stirred-tank
reactor to produce the primary polycondensate (Non-Final Act. 9, citing
Tamura Example 4 (15:28—38)).
Thus, for the same reasons set forth above and explained in the
Examiner’s Non-Final Office Action and Answer, Appellants’ arguments are
not persuasive. Accordingly, we affirm the rejection of claim 11. We
likewise affirm the rejection of dependent claims 13—17.
Rejection (3)
Appellants urge reversal of the Examiner’s § 103(a) rejection by
arguing, inter alia, that there would have been no reason modify Tamura’s
and Tsujii’s two-step polymerization process for polyamide production by
incorporating Ueda’s caprolactam for polyamide melting point reduction
(Appeal Br. 14). Appellants, however, provide no explanation as to why the
improvements associated with lowering a polyamide melting point would
not also be beneficial when making copolyamides by the known two-step
process. Furthermore, Appellants’ additional arguments (see id. at 15) do
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Application 13/058,779
not squarely address the teachings of the combined references, nor the
Examiner’s reasons for combining them. Rather, Appellants argue each
reference separately. Thus, we affirm the rejection of dependent claims 20
and 21.
CONCLUSION
We AFFIRM the rejection of claims 11, 12, 13, and 15 under
35 U.S.C. § 103(a) as obvious over Sage in view of Haering, and further in
view Tsujii.
We AFFIRM the rejection of claims 11, 13, and 15—17 under
35 U.S.C. § 103(a) as obvious over Tamura in view of Tsujii.
We AFFIRM the rejection of claims 20 and 21 under
35 U.S.C. § 103(a) as obvious over Tamura in view of Tsujii, and further in
view of Ueda.
We AFFIRM the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Tamura in view of Tsujii, and further in view of Bush.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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