Ex Parte Eibeck et al

Patent Trial and Appeal Board

Apr 30, 2014

12711313 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/711,313 02/24/2010 Peter Eibeck 12810-00411-US1 1502
30678 7590 04/30/2014
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
FANG, SHANE
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
04/30/2014 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 PETER EIBECK, VOLKER WARZELHAN, and
BERND BRUCHMANN
____________

Appeal 2013-000756
Application 12/711,313
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants2 appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 13-20 and 24-35.3 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

1 Our decision refers to Appellants’ Brief (Br.) filed April 23, 2012, the
Examiner’s Answer (Ans.) mailed August 8, 2012, and Appellants’ Reply
Brief (Reply Br.) filed October 4, 2012.
2 Appellants identify the Real Party in Interest in this appeal as BASF SE.
App. Br. 2.
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We AFFIRM.

STATEMENT OF THE CASE
The invention relates to a process for preparation of high-
molecular-weight polyamides, which comprises reacting a
polyamide A) at a temperature of from 150 to 350°C with a
compound B) which at this reaction temperature liberates
isocyanic acid, where the concentration of the amino end
groups in the polyamide A) used is greater than or equal to the
concentration of the carboxy end groups.

Spec. 1:5-9.

According to Appellants, “[t]he amount particularly preferably used
of compound B) is such that the molar ratio of compound B) to the amino
end groups of the polyamide A) is from 0.2:1 to 2:1, in particular from 0.3:1
to 1.5:1, and particularly preferably from 0.5:1 to 0.8:1.” Id. at 8:1-3.
Claims 13, 15, and 25, representative of the subject matter claimed,
are reproduced below:
13. A process for increasing the molecular weight of polyamides
which comprises:
reacting a polyamide A) at a temperature of from 150 to 350°C with a
compound B) which at this reaction temperature liberates isocyanic
acid, or with isocyanic acid which is prepared separately via thermal
decomposition of the compound B),

3 We note the Examiner has objected to claim 26 for improperly depending
from itself (Ans. 3). Although the Examiner indicates claim 26 should be
amended to depend from claim 25, determination of the intended
dependency is purely speculation. However, Appellants neither dispute the
Examiner’s asserted dependency, nor offer another dependency.
Accordingly, for purposes of this appeal, we will treat claim 26 as dependent
on claim 25.
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wherein the concentration of the amino end groups in the polyamide
A) used is greater than or equal to the concentration of the carboxy
end groups and the molar ratio of compound B) to the amino end
groups of the polyamide is from 0.3 : 1 to 1.5 : 1.
15. The process according to claim 13 further comprising a copper
compound C.
25. The process according to claim 13, wherein the concentration of
the amino end groups in the polyamide A) used is greater than the
carboxy end groups.
App. Br. 11, Claims App’x.
Rejections
The Examiner maintains, and Appellants appeal from, the following
rejections under 35 U.S.C. § 103(a):
1) Claims 13, 14, 17-20, 24, and 28-35 stand rejected as unpatentable
over Abe4 in view of Gähr;5
2) Claims 15, 16, 26, and 27 stand rejected as unpatentable over Abe
and Gähr, further in view of Hermann;6
3) Claims 13, 14, 17-20, 24, 25, and 28-35 stand rejected as
unpatentable over Abe in view of Gähr and Wang;7 and
4) Claims 15, 16, 26, and 27 stand rejected as unpatentable over Abe
and Gähr, further in view of Hermann and Wang.
In accordance with the provisions of 37 C.F.R. §
41.37(c)(1)(vii)(2010), to the extent any claim included within each rejection

4 US 5,280,060, issued January 18, 1994.
5 US 7,049,391 B2, issued May 23, 2006.
6 US 3,491,042, issued January 20, 1970. The Examiner refers to this patent
as “Heinz”, whereas Appellants reference to it as either “Heinz” or
“Heinze”. As the inventor is Karl Heinz Hermann, we adopt the convention
of referring to this patent using the inventor’s last name.
7 US 2003/0055209 A1, published March 20, 2003.
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is separately argued, such claims will be separately treated. Therefore, to
address the issues raised with respect to rejections (1) and (3), we select
representative independent claim 13. To address the issues raised with
respect to rejections (2) and (4), we select claim 15 as representative. We
note only claim 25 is separately argued, apart from the claims within each
rejection.8 Thus, other than claim 25, the remaining claims included within
each rejection stand or fall with the respective representative claims 13 and
15.
ANALYSIS
Rejection (1): Abe in view of Gähr
The Examiner finds Abe discloses a process for preparing polyamides,
such as Nylon 6, by reacting with at least one fluidity modifier, such as urea
and hexamethylenediamine, at a temperature of 250oC. Ans. 3. The
Examiner also finds Abe’s polyamide has an equal number of amino and
carboxy end groups. Id. Based on Abe’s disclosure of a range of urea of
0.01-20 wt.% to polyamide, the Examiner finds Abe discloses a range of
ratios of urea to amino end groups of 0.04-79:1. Id. at 4. However, the
Examiner acknowledges that Abe is silent with regard to increasing the
molecular weight of the polyamide as well as the thermal release of
isocyanic acid from urea. Id.
Nonetheless, the Examiner looks to Gähr for teaching that isocyanic
acid is released from urea by thermal decomposition. Id. Moreover, the
Examiner finds Gähr teaches the liberated isocyanic acid reacts with the

8 In this regard, we note Appellants argue claim 25 within the context of
rejection (1). App. Br. 7. However, claim 25 was not included in rejection
(1), but was included in rejection (3). Accordingly, Appellants’ arguments
regarding claim 25 will only be considered in the context of rejection (3).
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diamino end groups of the polyamide to form urea radicals, which pyrolyze
to isocyanates, and then re-combine with amino-radicals. Id. The Examiner
finds the developing addition compound, according to Gähr, reacts further,
such that longer changes are formed, which the Examiner determines
increases the molecular weight of the polyamide. Id.
The Examiner concludes it would have been obvious to use a
polyamide in Abe’s process having an excess of amino end groups as taught
by Gähr because the resultant process would necessarily yield polyamides of
increased molecular weights. Id. at 5, 6. The Examiner notes Gähr discloses
that such a process would have increased fluidity, just as in Abe. Id.
Appellants contend that neither Abe nor Gähr describe a process for
increasing the molecular weight of polyamides. App. Br. 5, 6; Reply Br. 2.
In particular, Appellants argue Abe teaches improving fluidity, which
excludes and teaches away from increasing molecular weight. App. Br. at 5.
In Gähr, Appellants argue the relative solution viscosity of the urea-treated
polyamides is not significantly different from the non-urea containing
polyamides. Id. at 6. Appellants assert that modifying Abe by increasing
the molecular weight of the polyamide would therefore be contrary to Abe’s
objectives. Id.
We do not find Appellants’ arguments persuasive. “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Here, Appellants have failed to show that Abe and Gähr either discourage
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one skilled in the art from following the path set out therein, or lead one the
ordinary artisan in a direction divergent from the path taken by Appellants.
Appellants do not dispute the Examiner’s finding that Gähr’s
“continuous reactions of polyamide with urea form longer chains of
polyamide because of the continuous addition reaction due to the pyrolysis
of urea to isocyanic acids and its derivatives reacting with amino ends.”
Ans. 9, citing Gähr, 4:20-25. Although Gähr does not explicitly state that
the molecular weight of the resulting polyamide is thereby increased,
Appellants fail to identify error in the Examiner’s determination that Gähr’s
continuous addition reaction process would necessarily do so. Indeed, the
materials and process conditions Gähr discloses for this reaction process are
the same materials and conditions Appellants disclose. It is therefore
reasonable to conclude that Gähr’s reaction process, like Appellants, will
increase the molecular weight of the resulting polyamide.
Further, as the Examiner notes, Appellants’ argument that Abe
teaches away because Abe’s process increases fluidity is premised upon the
assumption that increased molecular weight would necessarily result in
reduced fluidity. Ans. 9. Appellants do not direct our attention to any
evidence in the record supporting this premise. To the contrary, the
Examiner finds fluidity relates to a number of factors including, inter alia,
backbone structure, branching, molecular weight distribution, chain end and
interchain entanglement, known to those skilled in the art. Id. Further, the
Examiner finds Gähr’s process, which as we indicate supra, the Examiner
reasonably determines to increase the molecular weight, also increases
fluidity. Id., citing Gähr, 4:60-67 (“Another benefit are lower melt
viscosities of the modified polyamide 6 types.”)
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Appellants further argue that Abe fails to teach a ratio of component
B to amino end groups (AEG) between 0.3:1 to 1.5:1. App. Br. 6.
Specifically, Appellants assert that Abe uses 42 mmol/kg of AEG and 83
mmol/kg of urea, resulting in a ratio of about 2. Id., citing Abe, Table 1, Ex.
3. However, as the Examiner notes, Abe is not limited to the examples of
Table 1, but instead teaches a range between 0.01-20 wt.% for the amount of
urea used. Ans. 10. The Examiner finds therefore that Abe teaches a ratio
range for urea to AEG of between 0.04:1 to 79:1. Id. Thus, although Abe’s
Example 3 provides a ratio of about 2, Abe’s discloses a broader range of
0.04-79. Id. Since Abe’s disclosed range fully encompasses Appellants’
claimed range, this claimed range would have been prima facie obvious to
one of ordinary skill in the art over Abe’s range of 0.04:1 to 79:1. In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“the existence of
overlapping or encompassing ranges shifts the burden to applicant to show
that his invention would not have been obvious”). The obviousness
conclusion is further bolstered given Abe’s close teaching of a ratio of about
2:1 in Table 1, Example 5. Id. at 1329 (“We have also held that a prima
facie case of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties.”) (citing Titanium
Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed.Cir.1985)). We note
Appellants neither argue nor demonstrate unexpected results for the claimed
ratio range. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)
(Appellants may overcome a prima facie case of obviousness by establishing
that the claimed ranges are critical, or generally by showing that the claimed
ranges achieve unexpected results relative to the prior art range.)
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In their Reply Brief, Appellants present new arguments not raised in
the Appeal Brief concerning the Examiner’s interpretation of Gähr with
regard to the use of urea (end-capping versus increasing molecular weight)
and the relationship between “interlacing”, processing behavior, and
molecular weight (Reply Br. 2-3).9 However, Appellants have not shown
any good cause explaining why these arguments were not raised in the
Appeal Brief and, therefore, these arguments have been waived. See
37 C.F.R. § 41.37(c)(1)(vii) (second sentence); In re Hyatt, 211 F.3d 1367,
1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to
the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834
(BPAI 2010) (informative) (explaining that arguments and evidence not
timely presented in the principal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.”).

9 Appellants contest the Examiner’s interpretation of Gähr’s teaching,
arguing Gähr merely speculates on the mechanism regarding the continuous
addition reaction between urea-liberated isocyanic acid and the amino
groups of the polyamide. Reply Br. 2. Appellants also attempt to
distinguish Gähr by noting that Gähr is directed, not to poly-ureas, but to
polyamides of the AB-type. Id., referring to Gähr, 4:38-41. As such,
Appellants contend Gähr uses isocyanic acid for polyamide end capping, not
for increasing molecular weight. Id. In addition, Appellants contend the
Examiner erred in finding that Gähr explains the increased fluidity of the
products by reduced interlacing. Reply Br. 3.

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Rejection (2): Abe and Gähr, further in view of Hermann
Claim 15 depends from claim 13, and further requires a copper
compound C. The Examiner acknowledges that both Abe and Gähr are
silent as to the addition of a copper compound. Ans. 6. However, the
Examiner finds Hermann discloses adding a copper compound to Nylon 6 to
improve the stability against damaging effects of air and oxygen at elevated
temperatures. Id. The Examiner concludes it would have been prima facie
obvious to add a copper compound in the Abe process to improve the
stability of the resultant polyamide against damaging effects of air and
oxygen at elevated temperatures. Id.
Appellants do not dispute the Examiner’s findings regarding
Hermann. Instead, Appellants argue the use of copper compounds in the
claimed method leads to a synergistic result, i.e. a particularly high
molecular weight polyamide, directing our attention to Specification page
17, lines 13-15. App. Br. 7-8.
However, this argument is not persuasive. In order for a showing of
unexpected results to be probative evidence of non-obviousness, it falls upon
Appellants to at least establish: (1) that there actually is a difference
between the results obtained through the claimed invention and those of the
prior art, In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (noting that the
burden of analyzing and explaining data to support nonobviousness rests
with the appellants); and (2) that the difference actually obtained would not
have been expected by one skilled in the art at the time of invention, Id.; In
re D'Ancicco, 439 F.2d 1244 (CCPA 1971). See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973).
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Appellants’ Specification evidence in Table 2 does not on its face
purport to show unexpected results, merely improved results, using a copper
compound. Nor have Appellants established that one of ordinary skill in the
art would have found these results to have been unexpected. Moreover, as
the Examiner finds, and Appellants do not dispute, Hermann suggests
adding a copper compound to a polyamide to improve stability against
damaging effects of air and oxygen at elevated temperatures. Ans. 11. The
reason given for a combination need not be the same as that disclosed by
Appellants. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”):
In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (It is not required for a
finding of obviousness that the motivation or purpose of the skilled artisan
be the same as an applicant’s for practicing a claimed invention.); In re
Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (en banc), cert. denied (“it is not
required . . . that the prior art disclose or suggest the properties newly-
discovered by an applicant in order for there to be a prima facie case of
obviousness.”)
Appellants further repeat the argument that Abe describes improving
fluidity which excludes increasing molecular weight. We have fully
addressed this argument supra and do not here find it persuasive.
Accordingly, Appellants have failed to identify reversible error in the
Examiner’s proposed combination of Abe, Gähr, and Hermann.

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Rejection (3): Abe and Gähr, further in view of Wang
The Examiner relies on the previous findings regarding Abe and Gähr,
primarily adding Wang for teaching an amino terminated, highly branched
polyamide having improved processability and solubility. Ans. 7. The
Examiner concludes it would have been obvious to substitute Wang’s
amino-terminated, highly branched polyamide in Abe’s process to produce a
polyamide having improved processability and solubility. Id.
Appellants’ prior arguments regarding Abe and Gähr have been fully
addressed above. Appellants further contend Wang does not overcome the
earlier alleged deficiencies of Abe and Gähr. App. Br. 8. Since Appellants
failed to identify error in the Examiner’s prior combination of Abe and Gähr,
Wang is unnecessary to remedy any alleged deficiencies of this combination.
Nonetheless, Appellants note Wang relates to branched polyamides, in
solution, with amino end groups, whereas the claimed invention relates to
reaction of polyamide, in melt, with the specific reaction of amino groups
with isocyanate-liberating agents. Id. at 8-9. However, Appellants fail to
explain the significance of this difference as it relates to the Examiner’s
proposed combination. Indeed, Appellants’ claim 13 fails to indicate that
the process is carried out in melt form or in solution. Also, Appellants’
argument misapprehends the Examiner’s rejection. The Examiner’s
proposed combination relies on the substitution of Wang’s amino-
terminated, highly branched polyamide in the Abe process, not on the use of
Wang’s solution polymerization process. Ans. 7.
Appellants also argue “[b]ranching does not necessarily lead to a
higher Mw, it leads to a different structure of the polymer chain and
normally to a decreased Mw of the resulting polyamide.” App. Br. 9.
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However, as the Examiner finds, branching increases molecular weight since
many more amino ends are available for the continuous addition reaction
due to pyrolysis of urea to isocyanic acids. Ans. 12. Further, as we noted
above, Appellants fail to direct our attention to any evidentiary support for
the argument that branching normally leads to a decreased molecular weight.
Turning to claim 25, Appellants argue Abe only describes the use of
equimolar amounts of amino and carboxy end groups in combination with
urea. App. Br. 9. According to Appellants, an excess of amino groups leads
to further improved results, i.e. increased molecular weight. Id., citing
Spec., pp. 16-17, Tables 1 and 2. This argument also fails to persuade of
reversible error in the Examiner’s proposed combination. Initially, we note
this argument fails to address the Examiner’s proposed combination, and in
particular the use of the Wang amino-terminated, highly branched
polyamide in Abe’s process. Further, Appellants’ evidence of improved
results does not compare an excess of amino groups to an equimolar amount
as Abe teaches. Finally, given the abundance of amino groups in the Wang
polyamide, it is reasonable that the molecular weight would increase more
due to Abe’s and Gähr’s continuous addition reaction between the liberated
isocyanic acid and the amino groups.

Rejection 4: Abe, Gähr, Wang and Hermann
The Examiner relies on previous findings with regard to Abe, Gähr,
Wang, and Hermann. Ans. 8. Appellants do not raise any additional
argument against this rejection, instead relying on arguments regarding
alleged deficiencies in these references raised against the other rejections.
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As these arguments are not persuasive of reversible error as indicated supra,
we need not further treat these arguments.
ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claims 13-20
and 24-35 on appeal as unpatentable under 35 U.S.C. § 103(a) is affirmed;
and
FURTHER ORDERED that 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)(1)(iv) (2010).

AFFIRMED

kmm