Ex Parte Devisme et al

Patent Trial and Appeal Board

Aug 31, 2016

13129155 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/129, 155 08/11/2011
21839 7590 09/02/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Samuel Devisme
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.
0078840-000030 6508
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL DEVISME, F ABRICE R. CHOPINEZ,
CHRISTIAN LAURICHESSE, THOMAS ROUSSEL,
and JEAN-LUC DUBOIS 1
Appeal 2014-006171
Application 13/129,155
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JENNIFER R. GUPTA,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1-4, 6, 7, 13, 18, and 20-25. 3 An
1 The real party in interest is said to be Arkema France. Appeal Brief filed
November 22, 2013 ("App. Br.") 1.
2 Final Action entered May 10, 2013 ("Final Act.") 2-13 and the Examiner's
Answer entered February 27, 2014 ("Ans.") 2-10.
3 Although, Appellants state that "[ t ]his appeal is from the Office Action ... finally
rejecting claims 1--4, 6, 7, 13, and 18-25, which are reproduced as the Claims
Appendix of this brief' at the cover page of the Appeal Brief, we note that
claim 19 was cancelled during prosecution of the above-identified application and
is not reproduced in the Claims Appendix to this Appeal Brief.
Appeal 2014-006171
Application 13/129,155
oral hearing was held on August 4, 2016. 4 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to "copolymers of ethylene and of at
least one vinyl ester, in which the ethylene is at least partially obtained from
renewable starting materials." Spec. 1, 11. 10-11 (emphasis added). According to
the Specification, "the term 'copolymers of ethylene and of at least one vinyl ester'
will be understood to mean both the copolymers consisting of two monomers and
the terpolymers comprising ethylene and at least one vinyl ester." Id. at 2, 11. 14-
17. "Advantageously, the vinyl esters used in the copolymers" include vinyl esters
of C2-Cs carboxylic acids, preferably vinyl esters of C2-C4 carboxylic acids, and
more preferably vinyl acetate and vinyl propionate. Id. at 2, 11. 19-22.
Details of the appealed subject matter are recited in illustrative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief (with
disputed limitations in italicized form):
1. A copolymer of ethylene and of at least one carboxylic acid
vinyl ester, in which the ethylene is at least partially obtained from
renewable starting materials, wherein said copolymer is chosen from:
• random copolymers of ethylene and of at least one carboxylic acid
vinyl ester;
• random terpolymers of ethylene, of at least one carboxylic acid
vinyl ester and of maleic anhydride;
• terpolymers of ethylene, of vinyl acetate and of a carboxylic acid
( meth )acrylic ester; or
4 A transcript of the Oral Hearing will be entered into the electronic record in due
course.
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Application 13/129,155
• random copolymers of ethylene and of at least one vinyl ester
which are grafted with an unsaturated carboxylic acid anhydride,
wherein the ethylene obtained from renewable starting materials has
been subjected to purification, wherein the purification comprises the
removal of ethanol, propane and acetaldehyde.
App. Br., Claims Appendix-I.
The Examiner has maintained the following grounds of rejection: 5
1. Claims 1,3, 7, 13, 18,and20-24under35U.S.C. §103(a)as
unpatentable over the combined teachings of Chabagno (US 5,654,062 issued
August 5, 1997) and Morschbacker (WO 2008/067627 A2 published June 12,
2008);
2. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Chabagno, Morschbacker and Klass (Donal L. Klass, "Biomass for
Renewable Energy, Fuels and Chemicals," ACADEMIC PRESS, 518-519 (1998) );
3. Claims 1, 4, 6, 18, and 20-23 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Seven (US 4, 177,336 issued
December 4, 1979) and Morschbacker; and
4. Claims 1, 20-22, and 25 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Fujii (US 5,321,07 6 issued June 14, 1994) and
Morschbacker. Final Act. 2-13 and Ans. 2-10.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we determine that
a preponderance of the evidence supports the Examiner's determination that the
5 The Examiner has withdrawn the rejection of claim 7 under 35 U.S.C. § 112,
second paragraph, set forth in the Final Action. Ans. 10.
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Application 13/129,155
applied prior art would have rendered the subject matter recited in claims 1--4, 6, 7,
13, 18, and 20-25 obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's§ 103(a) rejections of
the above claims substantially for the reasons set forth in the Final Action and the
Answer. We add the following primarily for emphasis and completeness.
We initially note that Appellants only focus on claim 1 and do not separately
argue claims 2--4, 6, 7, 13, 18, and 20-25. App. Br. 4-8. Therefore, we decide the
appeal as to all claims on the basis of claim 1, the sole independent claim on
appeal.
We begin our analysis by giving claim 1 its broadest reasonable construction
in light of the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (During prosecution of patent applications, "the PTO must
give claims their broadest reasonable construction consistent with the specification
... Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation."). As stated by
Appellants, claim 1 recites a "copolymer of ethylene and of at least on carboxylic
acid vinyl ester, in which the ethylene is at least partially obtained from renewable
starting materials, ... where the ethylene obtained from renewable starting materials
has been subjected to purification, wherein the purification comprises the removal
of ethanol, propane and acetaldehyde." See also App. Br. 4 (emphasis added).
The language of claim 1 requires that at least a portion (less than 1 % to 100%) of
the ethylene used to form the claimed copolymer is an ethylene having unspecified
amounts of ethanol, propane, acetaldehyde, and other impurities from unspecified
renewable starting materials. This ethylene having unspecified percentages of such
impurities, according to claim 1, is obtained from removing unspecified amounts
(negligible to substantial amounts) of ethanol, propane, and acetaldehyde from an
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Application 13/129,155
ethylene product having unspecified percentages of such impurities via an
unspecified purification method. The ethylene product having unspecified
amounts of the impurities is produced by unspecified conversion reactions and
treatments of unspecified renewable starting materials having any amounts of
impurities and/ or capable of producing any amount of impurities into the ethylene
product during the unspecified conversion reactions. Moreover, claim 1 does not
exclude using the ethylene obtained from non-renewable starting materials as the
remaining part (0.001 % to 99.99%) of the ethylene used to form the claim
copolymer. Nor does claim 1 preclude introducing ethanol, propane, acetaldehyde
and other impurities through using the ethylene obtained from the non-renewable
starting materials.
With the above claim interpretation in mind, we evaluate the propriety of the
Examiner's §103(a) rejections. We must be mindful that "even though product-by-
process claims are limited by and defined by the process, determination of
patentability is based on the product itself." In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985). "If the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process." Thorpe, 777 F.2d at 697. "[T]he Patent
Office bears a lesser burden of proof in making out a case of prima facie
obviousness for product-by-process claims because of their peculiar nature than
would be the case when a product is claimed in the more conventional fashion." In
re Fessmann, 489 F.2d 742, 744 (CCPA 1974).
Here, there is no dispute that Chabagno, Seven, and Fujii individually
disclose a random ethylene/vinyl acetate/maleic anhydride copolymer, an
ethylene/vinyl acetate/acrylic acid copolymer, and a random ethylene/vinyl acetate
copolymer grafted with maleic anhydride, respectively, which are all encompassed
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Application 13/129,155
by the term "copolymer of ethylene and at least one carboxylic acid vinyl ester"
recited in claim 1. Compare Ans. 2-3, 6, and 8 with App. Br. generally. Although
the Examiner acknowledges that Chabagno, Seven, or Fujii does not disclose that
at least a portion of the ethylene used for forming its copolymer is ethylene from
renewable starting materials as recited in claim 1, the Examiner finds that
Morschbacker teaches that ethylene obtained from renewable starting materials is
suitable as a feedstock for forming the polymers taught by Chabagno, Seven or
Fujii. See, e.g., Ans. 3, 6, 7, and 8; see also Morschbacker Fig. 1. In particular,
Morschbacker teaches that ethylene and propylene can be produced at low cost
from renewable raw materials and can be used to obtain polyethylene and its
copolymer and polypropylene and its copolymers, respectively. See Morschbacker
12, 11. 6-11 and 27, 11. 11-27. Morschbacker also exemplifies fermenting and
distilling a renewable natural raw material to obtain hydrated ethanol with 92.8%
purity, dehydrating the hydrated ethanol in three adiabatic reactors in series, and
then purifying the ethylene from the last reactor to remove "the impurities obtained
as by-products of the dehydration reaction (ether, ester, unreacted ethanol. .. )" to
recover polymer-grade ethylene. See Morschbacker, 30-32, Example 1.
Morschbacker further discusses its method of producing propylene and ethylene
from a renewable source as an alternative to the production of propylene and
ethylene from petrochemical products (fossil sources). See Morschbacker 1--4 and
12. Thus, we find no reversible error in the Examiner's determination that one of
ordinary skill in the art would have been led to employ ethylene from renewable
starting materials, as taught by Morschbacker, as at least part of the ethylene used
in forming the claimed copolymer taught by Chabagno, Seven, or Fujii with
reasonable expectation of successfully forming such claimed copolymer.
Appellants contend that:
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The claimed copolymer comprises ethylene obtained from
renewable starting materials that has been subjected to purification,
wherein the purification comprises the removal of ethanol, propane
and acetaldehyde. There is no disclosure or apparent reason for one
skilled in the art to include a purification step including the removal of
ethanol, propane and acetaldehyde in the method ofMorschbacker.
App. Br. 6. Appellants urge that this purification process limitation in claim 1
imparts the distinctive characteristics to the claimed copolymer. Id., citing In re
Garnero, 412 F.2d 276, 279 (CCPA 1979).
Although claim 1 recites removing ethanol, propane, and acetaldehyde from
an ethylene product from renewable starting materials to obtain ethylene used for
forming the claimed copolymer, it does not require such ethylene to have any
specific minimum amounts of ethanol, propane, and acetaldehyde. Claim 1, by
virtue of not specifying the amounts of ethanol, propane, and acetaldehyde
removed or the types of purification methods or conditions used for removing
ethanol, propane, and acetaldehyde, includes removing only negligible amounts of
ethanol, propane, and acetaldehyde from an ethylene product. In addition, claim 1
does not exclude purifying an ethylene product having ethanol, propane and
acetaldehyde in amounts much higher than the ethylene from renewable starting
material disclosed in Morschbacker such that the removal of some amounts of
ethanol, propane and acetaldehyde from the recited ethylene product via
purification does not necessarily result in ethylene having different amounts of
ethanol, propane, acetaldehyde, and other impurities than that suggested by
Morschbacker, i.e., Morschbacker's ethylene derived from less impurity producing
renewable starting materials subjected to fermentation, distillation, dehydration
and purification as discussed supra. The recited ethylene product having very high
contents of ethanol, propane and acetaldehyde can be derived from subjecting high
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Application 13/129,155
impurity producing renewable starting materials to any conversions, including
fermentation, with or without distillation. See claim 1.
Even if we construe the recited purification limitation as requiring some
minimum amounts of ethanol, propane, and acetaldehyde in ethylene from the
renewable starting materials, the outcome does not change. As indicated supra,
claim 1, as broadly recited, also encompasses using a substantial amount of
ethylene having any amounts of ethanol, propane, acetaldehyde, and other
impurities from non-renewable starting materials, together with the ethylene from
the renewable starting materials, to form the ethylene used for making the claimed
copolymer. In other words, the recited ethylene having any amounts of ethanol,
propane, acetaldehyde, and other impurities used for forming the claimed
copolymer does not exclude the ethylene for forming the same suggested by the
applied prior art. Thus, on this record, we concur with the Examiner that the
process limitation in question would not have rendered the claimed copolymer
patentably distinguishable over the copolymer suggested by the applied prior art.
Accordingly, we find no reversible error in the Examiner's determination
that the preponderance of the evidence weighs most heavily in favor of
obviousness of the subject matter recited claims 1--4, 6, 7, 13, 18, and 20-25 within
the meaning of 35 U.S.C. §103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-4,
6, 7, 13, 18, and 20-25 under 35 U.S.C. §103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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