Ex Parte Dubois et al

Patent Trial and Appeal Board

Jun 18, 2015

12442478 (P.T.A.B. Jun. 18, 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.
12/442,478 01/20/2010 Philippe Dubois F-1019 1946
25264 7590 06/19/2015
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
06/19/2015 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,
FABRICE STASSIN, CAROLINE JOURDANNE,
LUC LIENARD, PHILIPPE DEGEE,
IBRAHIM BARAKAT, MICHAEL ALEXANDRE,
and JEAN MARIE RAQUEZ
__________

Appeal 2013-002135
Application 12/442,478
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter new grounds of rejection under 37 C.F.R. § 41.50(b).
The subject matter on appeal is directed to a process for producing
polylactide-urethane copolymers comprising the step of contacting a polylactide
with a diisocyanate compound. The Appellants define polylactide as “a polymer in
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Application 12/442,478

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which the majority of repeating units are lactide-based monomers.” Spec. 3, ll. 1–
2.
Independent claims 1, 7, and 8 are reproduced below from the Claims
Appendix of the Appeal Brief dated September 24, 2012 (“App. Br.”). The
limitations at issue are italicized.
1. A process for producing polylactide-urethane
copolymers, which comprises the step of contacting:
a polylactide having terminal hydroxyl groups,
produced by contacting at least one lactide monomer
with a diamine of general formula R1(A)2 wherein A is
NH2 and R1 is an alkyl or aryl group in the presence of a
catalytic system under polymerisation conditions with
a diisocyanate compound of general formula
O=C=N-R2-N=C=O wherein R2 is an alkyl or aryl group,
optionally in the presence of a diol or second diamine of
general formula R3(A)2 wherein A is OH or NH2 and R3
is an alkyl or aryl group in the presence of a catalytic
system under polymerisation conditions characterised in
that the polylactide and the polylactide-urethane
copolymers are produced by reactive extrusion.
App. Br. 18 (emphasis added).
7. A process for producing polylactide-urethane
copolymers, which comprises the step of contacting:
a polylactide having terminal hydroxyl groups,
produced by contacting at least one lactide monomer
with 1,3,-propandiol, 1,3-butanediol, 1,4-butanediol, 1,6-
hexanediol, 1,7-heptanediol, 1,8-octanediol or xylene
glycol in the presence of a catalytic system under
polymerisation conditions with
a diisocyanate compound of general formula
O=C=N-R2-N=C=O wherein R2 is an alkyl or aryl group,
optionally in the presence of a second diol or a diamine
of general formula R3(A)2 wherein A is OH or NH2 and
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R3 is an alkyl or aryl group in the presence of a catalytic
system under polymerisation conditions characterised in
that the polylactide and the polylactide-urethane
copolymers are produced by reactive extrusion.
App. Br. 19 (emphasis added).
8. A process for producing polylactide-urethane
copolymers, which comprises the step of contacting:
a polylactide having terminal hydroxyl groups,
produced by contacting at least one lactide monomer
with a diol or diamine of general formula R1(A)2 wherein
A is OH or NH2 and R1 is an alkyl or aryl group in the
presence of a catalytic system under polymerisation
conditions with
a diisocyanate compound selected from the group
consisting of 4,4’-dicyclohexylmethane diisocyanate,
4,4’-methylene diphenylisocyanate, toluene diisocyanate,
and p-phenylene diisocyanate, optionally in the presence
of a second diol or diamine of general formula R3(A)2
wherein A is OH or NH2 and R3 is an alkyl or aryl group
in the presence of a catalytic system under
polymerisation conditions characterised in that the
polylactide and the polylactide-urethane copolymers are
produced by reactive extrusion.
App. Br. 19–20 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over Higuchi1 in
view of Miyoshi2 and Pohlmann3;

1 JP 11-43538. We refer to the English translation dated August 16, 2011, which is
of record in the instant application.
2 JP 08-27256. We refer to the English translation dated August 16, 2011, which is
of record in the instant application.
3 US 2004/0171767 A1, published September 2, 2004.
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(2) claims 1–7 under 35 U.S.C. § 103(a) as unpatentable over
Neuenschwander4 in view of Higuchi, Miyoshi, and Pohlmann; and
(3) claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Neuenschwander in view of Miyoshi and Pohlmann.
B. DISCUSSION
1. Rejections (1) and (2)
The sole issue on appeal with respect to rejections (1) and (2) is whether
Higuchi discloses a polylactide within the scope of claims 1, 7, and 8.
The Examiner finds Higuchi discloses a polylactide having terminal
hydroxyl groups that is prepared from lactide monomers and a short chain diamine,
such as ethylene diamine, in the presence of a catalyst. For support, the Examiner
directs our attention to paragraph 8 and the working examples in Higuchi. Ans. 3.5
The Appellants argue that paragraph 30 of Higuchi (i.e., the first working
example) teaches “production of a lactide acid denaturation polyol that is a
copolymer of DL-lactide and propylene oxide.”6 App. Br. 14. The Appellants
argue that “the copolymer taught at paragraph [0030] of Higuchi is predominately
propylene oxide, with less than 50% being DL-lactide (45 copies)” and thus is not
a polylactide within the scope of the claims on appeal. App. Br. 14; see also App.
Br. 15. For support, the Appellants direct our attention to paragraph 12 of their
Specification which defines “polylactide” as “a polymer in which the majority of
repeating units are lactide-based monomers.” App. Br. 14 (emphasis added).

4 US 5,665,831, issued September 9, 1997.
5 Examiner’s Answer dated October 15, 2012.
6 According to the first working example disclosed in Higuchi, “45 copies of DL-
lactide and 50 copies of propylene oxide were made to react to five copies of . . .
ethylenediamine under existence of 2-ethyl-hexanoic-acid tin.” Higuchi ¶ 30.
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The Examiner concludes that “[t]he claims are not limited to only the
diamine and lactide component when making the polylactide polyol and therefore
do not exclude the use of the propylene oxide reactant of Higuchi.” Ans. 12, 14.
The Examiner’s interpretation of the claims is supported by the record.
Nonetheless, the lactic acid denaturation polyol disclosed in the first working
example of Higuchi does not comprise a majority of lactide-based monomers as
required by the Appellants’ definition of polylactide. The Higuchi disclosure,
however, is not limited to the first working example. See In re Lamberti, 545 F.2d
747, 750 (CCPA 1976) (“all disclosures of the prior art . . . must be considered”).
Higuchi discloses:
[T]he rates of lactide (B) and alkylene oxide (C) are
weight ratio (B) / (C) =10 / 90 - 90/10, and are (B)/(C)
=30 / 70 - 70/30 preferably. The rates of a compound
(A)[7] of having active hydrogen are weight ratio (A) /
[(B)+(C)] =1 / 99 - 50/50 to the sum total of lactide (B)
and alkylene oxide (C), and are 5 / 95 - 30/70 still more
preferably.
Higuchi ¶ 11.
Based on this disclosure in Higuchi, we find Higuchi teaches that the
disclosed polylactide polyols may comprise a majority of lactide-based monomers.
Thus, we find Higuchi teaches polylactide polyols that fall within the scope of the
polylactides recited in claims 1, 7, and 8. For this reason, the § 103(a) rejection of
claims 1–8 based on Higuchi in view of Miyoshi and Pohlmann and the § 103(a)

7 Higuchi discloses that compound (A) may be various diols or amines. See
Higuchi ¶ 8.
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rejection of claims 1–7 based on Neuenschwander in view of Higuchi, Miyoshi,
and Pohlmann are affirmed.8
2. Rejection (3)
The sole issue on appeal with respect to rejection (3) is whether the
Examiner reversibly erred in finding that Neuenschwander discloses one of the
diisocyanate compounds recited in claim 8.
The Examiner finds Neuenschwander discloses that “the diisocyanate
component can be selected from methylenedicyclohexyl diisocyanate which is
chemically synonymous with 4,4-dicyclohexylmethane diisocyanate.” Ans. 15.
The Examiner also finds “Miyoshi discloses [that] 4,4-diphenylmethane
diisocyanate can be used in analogous polyurethane reactions.” Ans. 15. The
Appellants do not direct us to any error in the Examiner’s findings. Therefore, the
§ 103(a) rejection of claim 8 based on Neuenschwander in view of Miyoshi and
Pohlmann is affirmed.
C. DECISION
The decision of the Examiner is affirmed.
In affirming rejections (1) and (2), we have relied on a portion of Higuchi
that was not relied on by the Examiner (i.e., paragraph 11 of Higuchi). Therefore,
the affirmances of rejections (1) and (2) are designated new grounds of rejection
under 37 C.F.R. § 41.50(b).9

8 The Appellants do not present arguments in support of the separate patentability
of dependent claims 2–6. See 37 C.F.R. § 41.37(c)(iv) (2012).
9 See In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011) (“Had the Board
labeled its rejection as a new ground of rejection, Stepan could have reopened
prosecution to address the newly-alleged deficiencies in its Declaration with the
examiner.”).
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37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b)
also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with respect
to the new ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED; 37 C.F.R. § 41.50(b)
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