Ex Parte Dubois et alDownload PDFPatent Trial and Appeal BoardJan 26, 201512442481 (P.T.A.B. Jan. 26, 2015) Copy Citation 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 Appeal 2013-002136 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 bar Copy with citationCopy as parenthetical citation