Ex Parte Dubois et al

Patent Trial and Appeal Board

Jan 26, 2015

12442481 (P.T.A.B. Jan. 26, 2015)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/442,481 10/05/2009 Philippe Dubois F-1020 1984
25264 7590 01/26/2015
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
01/26/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIPPE DUBOIS, PHILIPPE COSZACH,
GLORIA VENDRELL, PHILIPPE DEGEE, MICHAEL ALEXANDRE,
IBRAHIM BARAKAT, and JEAN MARIE RAQUEZ
____________

Appeal 2013-002136
Application 12/442,481
Technology Center 1700
____________
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner has finally rejected claims 1‒13 and 16‒19 of
Application 12/442,481 under 35 U.S.C. § 103(a) as obvious. Final
Rejection (“FR”) (April 20, 2012). Appellants1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 Fina Technology, Inc., is identified as the real party in interest. (App.
Br. 5.)
Appeal 2013-002136
Application 12/442,481
2
BACKGROUND
The ’481 Application describes polylactide-polyurethane copolymers
that have increased glass transition temperatures and improved mechanical
properties relative to polylactic acid. Spec. 1‒2.
Claim 1 is representative of the ’481 Application’s claims and is
reproduced below:
1. A polylactide-urethane copolymer made by the process
comprising contacting:
• an α,ω dihydroxyl polylactide prepolymer of general
formula I

wherein: X is NH or O,
R is an alkyl or an aryl group,
n and n' are integer numbers which are
substantially the same and which are
comprised in the range from 35 to 140,
• a diisocyanate compound of general formula II
O═C═N─R'─N═C═O
wherein: R' is an alkyl or an aryl group and
• an amine or an alcohol of general formula III
R"─[X']2
wherein the alcohol is selected from the group
consisting of 1,3-propanediol, 1,3-butanediol, 1,6-
hexanediol, 1,7-heptanediol, 1,8-octanediol, and
xylene glycol;
Appeal 2013-002136
Application 12/442,481
3
wherein the amine is selected from the group
consisting of 1,4-butanediamine, 1,4-
phenyldiamine, 4,4'-diaminodiphenylmethane;
with the proviso that at least one of R or R" is an
aryl group.
(App. Br. 17‒18 (Claims App’x) (some indentation added.))
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1‒13, 16, 17, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Kim,2 Ferencz,3 Wang,4
Higuchi,5 and Greiner.6 (Ans. 3).
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kim, Ferencz, Wang, Higuchi, Greiner, and
Lorenz.7 (Ans. 7).
DISCUSSION
We affirm the rejection of claims 1‒13 and 16‒19 for the well-stated
reasons expressed in the Final Rejection and the Examiner’s Answer, which
we adopt. We add the following.

2 US Patent No. 6,372,876 B1, issued April 16, 2002.
3 US Patent No. 6,093,270, issued July 25, 2000.
4 Wenshou Wang et al., Polylactide-Based Polyurethane and Its Shape
Memory Behavior, 42 EUR. POLYMER J. 1240 (2006).
5 JP-11-043538, published February 16, 1999.
6 G. Haderlein et al., Synthesis and Properties of Liquid Crystalline
Aromatic Copolyesters with Lactide Moieties, 200 MACRMOL. CHEM. PHYS.
2080 (1999). To avoid confusion, we shall follow the Examiner and
Appellants in referring to this reference as “Greiner.”
7 US Patent No. 6,737,471 B2, issued May 18, 2004.
Appeal 2013-002136
Application 12/442,481
4
Appellants’ sole argument on appeal is that the Examiner erred in
finding that Kim describes or suggests the dihydroxyl polylactide
prepolymer of general formula I as recited in claim 1.8 (App. Br. 14‒16.)
We disagree.
The Examiner found that Kim describes the use of a dihydroxyl
polylactide prepolymer with the following formula:
HO-(-CHR1-CO-O-)n-R-O-(-CO-CHR2-O-)m-H
wherein
R1 and R2 are each H, C1‒C5 alkyl or aryl,
R is a radical derived from a diol (alkylene radical) with 2‒8
carbons, and
n and m are each 1‒30.
FR 2; see also Kim col. 3, ll. 13‒40. The Examiner further found that the
polylactide diol precursor described in Kim differs from the claimed
compound of general formula I because in Kim’s compound n and m each
have a maximum value of 30, while the corresponding values in general
formula I each have a minimum value of 35. FR 2. The Examiner,
however, found that the number of lactide units in the prepolymer is a result-
effective variable and that a person of ordinary skill in the art at the time of
the invention would have arrived at the claimed precursor in the course of
optimizing the properties of the polylactide polyurethane polymer. Id. at 3.
Appellants argue that Kim does not describe or suggest the claimed
compound of general formula I because:

8 Appellants only present specific arguments with respect to claim 1. We,
therefore, limit our discussion to that claim. The remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Appeal 2013-002136
Application 12/442,481
5
1. The polycondensate of lactic acid and a polyol taught by
Kim has a carboxylic acid ester attached to the center alkylene
radical:
[Appellants’] formula does not recite a repeating
carboxylic acid aster [sic, ester]. Therefore Kim does not teach,
disclose or suggest the dihydroxyl polylactide prepolymer of
the present claims.
2. Kim’s repeating carboxylic acid ester does not include an
oxygen that is attached to the same carbon attached to R1.
Kim’s repeating unit:
Applicant’s repeating unit:
Thus, Kim does not teach, disclose or suggest the
dihydoxyl polylactide prepolymer of the present claims, nor
does the Examiner suggest that compounds in Ferencz, Wang,
Higuchi, or Greiner could be substituted for the polyesterols of
Kim.
(App. Br. 15‒16.)
This argument is incorrect for the reasons provided by the Examiner
on pages 9‒10 of the Examiner’s Answer.
Furthermore, Appellants have not challenged the Examiner’s finding
that the number of polylactide units in the polylactide diol precursor was a
known result-effective variable. Nor have they challenged the Examiner’s
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Application 12/442,481
6
implicit finding that the values of n and m in Kim’s precursor are
substantially the same.
We affirm the rejection.
CONCLUSION
We affirm the rejection of claims 1‒13, 16, 17, and 19 as obvious over
the combination of Kim, Ferencz, Wang, Higuchi, and Greiner. We also
affirm the rejection of claim 18 as obvious over the combination of Kim,
Ferencz, Wang, Higuchi, Greiner, and Lorenz.
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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