Ex Parte ENDO et al

Patent Trial and Appeal Board

May 24, 2017

13234561 (P.T.A.B. May. 24, 2017)

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.
13/234,561 09/16/2011 Ryokei ENDO 386625US99CONT 5042
22850 7590 05/26/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOKEI ENDO, YOSUKE WASHITAKE,
YUKIE HASHIMOTO, and AKIHIRO UEHATA1
Appeal 2015-006765
Application 13/234,561
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER M. KAISER, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 4—6, 10, 12—16, and 18—25. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to amorphous polyetherimide
fibers. E.g., Spec. 1:11—19; Claim 1. Claim 1 is reproduced below from the
Claims Appendix of the Appeal Brief (some formatting added):
1 According to the Appellants, the real party in interest is Kuraray Co., Ltd.
App. Br. 1.
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1. An amorphous polyetherimide fiber comprising
an amorphous polyetherimide polymer having
a molecular weight distribution (Mw/Mn) of less than 2.5, and
having
a shrinkage percentage under dry heat at 200 °C of 5% or less,
a single fiber fineness of 3.0 dtex or less, and
a tenacity of the fiber at room temperature is 2.0 cN/dtex or
greater,
wherein the fiber is an undrawn melt spun fiber.
REJECTIONS ON APPEAL2
1. Claims 1, 4—6, 10, 12—16, 18, 19, and 25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Dris (US 2010/0048853 Al, published
Feb. 25, 2010) as evidenced by Blackburn (US 2006/0084741 Al, published
Apr. 20, 2006).3
2 In the Answer, the Examiner withdraws a rejection of claim 1 as
anticipated by or, in the alternative, obvious over Dris alone. Ans. 3.
Although not expressly listed in the “Withdrawn Rejections” section of the
Answer, it appears that the Examiner also withdraws the rejection of claims
4, 5, and 25 as obvious over Dris alone, which relied on the reasoning of the
withdrawn rejection of claim 1. See Final Act. 4—5; Ans. 3; Reply Br. 1
(indicating the Appellants’ understanding that the rejection has been
withdrawn). For example, the Examiner specifies that the new ground (see
footnote 3 below) now includes “dependent claim 25 which relied on the
withdrawn 102/103 rejection of claim 1.” Ans. 3. Neither the Examiner’s
statement of the rejections nor the Examiner’s analysis includes a discussion
of claims 4, 5, and 25 as obvious over Dris alone, and each of those claims is
included in the ground of Dris as evidenced by Blackburn. See generally
Ans. Accordingly, we consider those claims only under the stated ground of
Dris as evidenced by Blackburn.
3 This ground of rejection is denominated in the Answer as a new ground of
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2. Claims 20-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dris in view of Blackburn.
3. Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dris in view of Blackburn, further in view of Gallucci (US
2006/0281840 Al, published Dec. 14, 2006).
4. Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dris in view of Ryang (US 5,962,608, issued Oct. 5, 1999).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections except with respect to claim 25. Accordingly, we affirm the
rejections of claims 1, 4—6, 10, 12—16, and 18—24 for reasons set forth
below, in the Final Action, and in the Examiner’s Answer. See generally
Final Act. 4—15; Ans. 4—14. We reverse the rejection of claim 25 for reasons
set forth below.
rejection. Ans. 3. The Final Action includes a similar ground, see Final
Act. 5, but the Examiner explains that the similar ground from the Final
Action “is being modified in this Answer in order to clarify the examiner’s
position with regards to the limitation in claim 1 requiring the fiber to be
undrawn and to include dependent claim 25 which relied on the withdrawn
102/103 rejection of claim 1.” Ans. 3.
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Rejection 1
Claims 1, 4, and 5.
Concerning claim 1, the Examiner finds that Dris teaches
polyetherimide (PEI) fibers comprising a PEI polymer. Ans. 4. The
Examiner finds that Dris teaches the use of a variety of “Ultem” PEI
polymers having a molecular weight distribution of 2.5,4 and that Dris
explicitly teaches that any known PEI polymer can be used with the
disclosure of Dris. Id.', see also Dris Tflf 152—159. The Examiner finds that
one such well-known PEI polymer at the time was Ultem XH 6050, which,
as evidenced by Blackburn, has a molecular weight distribution of 2.2 (i.e.,
“less than 2.5,” as recited by claim 1). Ans. 4 (“[T]he polymer ULTEM XH
6050 is well known in the art as having enhanced flow and highest heat
stability.”); see also Blackburn 119 (disclosing that Ultem XH 6050 has an
Mw/Mn of 2.2). The Examiner concludes that it would have been obvious
to use Ultem XH 6050 as a PEI polymer component in the fiber of Dris,
particularly “when it is desired to provide the fiber with high heat stability.”
Ans. 4—5.
Concerning the claimed “fiber fineness” of 3.0 dtex or less, the
Examiner finds that Dris teaches spinneret holes ranging from 0.001 mm to
3 cm and PEI fibers having deniers per filament of between 0.1 and 50,
which overlaps the fiber fineness of claim 1. Id. at 5.
4 In addition, the Examiner previously noted that two of the Ultem fibers
disclosed by Dris “have a molecular weight distribution as defined by
Applicant i.e. Mw/Mn or (47000/19000) of 2.47 which is less than 2.5.”
Final Act. 3.
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Concerning the claimed “tenacity” of 2.0 cN/dtex or greater, the
Examiner finds that Dris teaches PEI fibers having a tenacity from about 0.5
g/denier to about 50 g/denier, which corresponds to 0.44 to 44 cN/dtex and
overlaps the range of claim 1. Id. at 6.
Concerning the “undrawn” requirement of claim 1, the Examiner finds
that Dris teaches draw ratios of 0% (i.e., undrawn) to 100%. Id. at 5.
Concerning the claimed “shrinkage” of 5% or less, the Examiner finds
that such a shrinkage would be inherent in fibers rendered obvious by Dris
because Dris renders obvious PEI fibers that are the same as or essentially
the same as the claimed fibers. Id. at 5—6.
In view of those findings, the Examiner concludes that the subject
matter of claim 1 would have been obvious in view of Dris, as evidenced by
Blackburn. Id. at 4—6.
The Appellants raise several arguments in opposition to the
Examiner’s rationale, which we address in turn below.
1. The Appellants argue that Dris does not teach or suggest undrawn
fibers falling within the scope of claim 1. See Reply Br. 5—7. The
Appellants focus on 146 of Dris, which discloses that, after passing through
a quench system, the fibers are further processed “and are then drawn by at
least one roll.” Dris 146.
That argument is not persuasive. As the Appellants acknowledge, that
paragraph describes an embodiment of the invention. See Reply Br. 5; see
also Dris 44 (“A spinning apparatus that can be used in a process for
producing fiber according to an embodiment is now described.”).
Subsequently, in describing various working examples, Dris discloses “draw
ratio[s]” ranging “from 0% to 100%.” Dris 1165. The Examiner finds, and
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the Appellants do not persuasively dispute, that a draw ratio of 0% results in
an “undrawn” fiber. See Ans. 5.
Moreover, the Examiner explains that the portions of Dris relied upon
by the Appellants “would be understood by one of ordinary skill in the art as
the step of directing the filament to the winding bobbin or spool when the
[draw ratio] value is 0% as suggested by the Examples and not necessarily as
a step of reducing the diameter of the filaments.” Ans. 11. In the Reply
Brief, the Appellants do not contest the Examiner’s interpretation of Dris in
that regard. See Reply Br. 12.
On this record, a preponderance of the evidence supports the
Examiner’s determination that Dris teaches or suggests undrawn fibers.
2. The Appellants argue that Dris’s fibers of 4—10 dpf (denier per
filament, which, according to the Appellants, is equivalent to 4.4 to 11 dtex,
Reply Br. 6) fall beyond the claimed “fineness” range of 3.0 dtex or less.
Reply Br. 6.
That argument is not persuasive. Although certain examples in Dris
disclose a fiber fineness range of 4—10 dpf, see Dris 1165 Table 1, a
reference “is not limited to the disclosure of specific working examples.”
See In re Mills, 470 F.2d 649, 651 (CCPA 1972). More broadly, Dris
discloses fiber fineness ranges of 0.1—100,000 dpf. Dris 137. Although
Dris’s largest range of 0.1—100,000 dpf is broad, see Reply Br. 3 (describing
the range of Dris as “too broad to implement”), 12, Dris also discloses
several narrower ranges, including a range of 0.25—1.0 dpf, see Dris 37.
There is no dispute that Dris’s ranges overlap the claimed range, and that
some of Dris’s disclosed ranges (e.g., 0.25—1.0 dpf) fall fully within the
scope of the claimed range. “[E]ven a slight overlap in range establishes a
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prima facie case of obviousness.” See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003). On this record, we are not persuaded that Dris does not
teach or suggest fibers possessing the claimed fineness.
3. The Appellants explain that Dris teaches spinneret hole diameters
of 0.45-0.6 mm (resulting in hole sizes of 0.15 mm2 to 0.28 mm2, according
to the Appellants), which produce fibers of 2-4 denier, see Dris 1 52, and
that their own Specification discloses smaller hole sizes of 0.01 mm2 to
0.07 mm2. Reply Br. 6. The Appellants argue that “[o]ne of ordinary skill
in the art would appreciate that a hole diameter the size of Dris et al cannot
produce a fiber of about 2 to 4 denier (which is of the same order of
magnitude of 3.0 dtex or less in present Claim 1) without drawing.” Id.
(emphasis in original). They further argue that, because the fibers of Dris
are drawn, Dris “cannot attain a fiber having not only a relatively small
fineness but also low shrinkage.” Id.
Those arguments are not persuasive. The disclosure of Dris is not
limited to hole diameters of 0.45—0.6 mm. As the Examiner explains, see
Ans. 5, Dris teaches hole diameters 0.001 mm to 3 cm, and narrower ranges
of 0.1 mm to 1 cm and 0.3 mm to 5 mm, Dris | 52. At least some of those
hole diameters result in hole sizes that overlap the hole sizes disclosed by the
Appellants’ Specification.5 The Appellants do not persuasively argue that
undrawn fibers produced using the smaller diameters disclosed by Dris
would fall beyond the claimed fiber fineness range of 3.0 dtex or less. See
Mills, 470 F.2d at 651 (disclosure not limited to examples).
5 For example, a hole diameter of 0.2 mm results in a hole size of 0.03 mm2,
and a hole diameter of 0.3 mm results in a hole size of 0.07 mm2.
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Even if we were to agree with the Appellants that drawn fibers could
not attain the claimed shrinkage, the Appellants’ argument in that regard
provides no evidence that the claimed shrinkage would not flow naturally
from producing undrawn fibers using smaller hole diameters, both of which
are taught or suggested by Dris as set forth above. Cf Ex parte Obiaya, 227
USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”); In reKubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
(“Even if no prior art of record explicitly discusses the [limitation],
[applicants’] application itself instructs that [the limitation] is not an
additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention].”); cf.
also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”).
The Appellants also rely on two declarations of named-inventor
Akihiro Uehata in support of their position that hole diameters of 0.45 mm
cannot produce undrawn fibers that possess the claimed fiber fineness. See
Reply Br. 6—7. We have considered those declarations and accorded them
some weight,6 but we do not find them persuasive because, as set forth
6 Cf. In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by an
applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.”).
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above, Dris’s disclosure is not limited to hole diameters of 0.45 mm. Dris
discloses smaller hole diameters, and it discloses fiber finesses that fall
within the scope of the claim. The Uehata declarations narrowly focus on
hole diameters of 0.45 mm and do not persuasively address the broader
disclosure of Dris.
4. The Appellants further rely on the Uehata declarations to argue
that “an undrawn amorphous polyetherimide fiber according to the present
invention, surprisingly exhibits an unexpected improvement in sufficient
fiber tenacity, small fiber fineness, and extremely low shrinkage percentage
under dry heat.” Reply Br. 7 (citing Uehata Deck dated May 5, 2014). The
Appellants further argue that “the specification contains comparative data
demonstrating the significance of the Mw/Mn feature,” and that “[o]ne of
ordinary skill in the art could not have predicted” the significance of the
Mw/Mn feature. Reply Br. 8.
Those arguments are not persuasive. “[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The Appellants do not
specifically identify the closest prior art. The comparative examples
disclosed in the Specification all utilize molecular weight distributions
(Mw/Mn) of 2.6 or greater; several have fiber finenesses of 4.0, 5.0, or 6.0
dtex; and several utilize fibers that are drawn. See Spec. Table 2. As
discussed above, Dris discloses the use of polymers having molecular weight
distributions of 2.5, and Dris discloses finer fibers and undrawn fibers. On
this record, the Appellants do not show that the relied-upon comparison is to
the closest prior art. Cf. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
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(burden of establishing objective evidence of nonobvious rests with the
Appellants).
Nor do the Appellants provide meaningful argument that any obtained
results are, in fact, unexpected. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972) (“[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference.” (emphasis in original)); see also In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.”).
Moreover, where the Appellants are relying on unexpected results to
rebut a prima facie case of obviousness, the Appellants must show results
that are commensurate in scope with the claims. See Peterson, 315 F.3d at
1329—31. The Appellants have not attempted to do that. For instance,
claim 1 covers any molecular weight distribution of less than 2.5, but the
Appellants’ relied-upon data includes molecular weight distributions of only
2.2. See Spec. Table 1. The Appellants do not explain why the use of that
molecular weight distribution is representative of the full range of molecular
weight distributions that fall within the scope of claim 1. See, e.g., In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”).
On this record, we are not persuaded that unexpected results support a
conclusion of nonobviousness.
5. The Appellants argue that the Examiner’s reliance on Blackburn to
show that “Ultem” PEI polymers having molecular weight distributions of
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less than 2.5 “is akin to adopting an obvious to try rationale.” Reply Br. 9.
The Appellants further argue that “there are an infinite number of choices
from the disclosure of Dris.” Id.
Those arguments do not persuade us of reversible error in the
Examiner’s rejection. Although the disclosure of Dris teaches or suggests
PEI fibers that fall beyond the scope of claim 1, it also teaches or suggests
fibers that fall within the scope of claim 1. Dris expressly discloses the use
of (1) amorphous polymers, see, e.g., Dris 131, (2) fiber finenesses that fall
within the scope of claim 1, see, e.g., id. 137, (3) fiber tenacities that fall
within the scope of claim 1, see, e.g., id. 1 55, and (4) a draw ratio of 0%,
i.e., “undrawn” fibers, see, e.g., id. 1165. Dris expressly discloses the use of
a variety of “Ultem” PEI polymers having molecular weight distributions
that approach or meet the claimed range of less than 2.5, and Dris explicitly
teaches that any known PEI polymer may be used in association with its
disclosure. See, e.g., id. 1159. As noted elsewhere in this Decision,
Blackburn discloses some of the same Ultem polymers as Dris, and
Blackburn establishes that Ultem XH 6050 was a known PEI polymer
having a molecular weight distribution of less than 2.5. On this record, and
in view of the arguments presented, we are not persuaded of reversible error
in the Examiner’s determination that fibers falling within the scope of
claim 1 would have been obvious in view of the prior art. “That the [prior
art] patent discloses a multitude of effective [fibers] does not render any
particular [fiber] less obvious.” Merck & Co. v. Biocraft Labs., 874 F.2d
804, 807 (Fed. Cir. 1989); see also In re Susi, 440 F.2d 442, 445 (CCPA
1971) (obviousness rejection affirmed where the disclosure of the prior art
was “huge, but it undeniably include [d] at least some of the compounds
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recited in appellant’s generic claims and [was] of a class of chemicals to be
used for the same purpose as appellant’s additives”); cf. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”).
6. The Appellants argue that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining Dris
with Blackburn because Blackburn uses Ultem XH 6050 in connection with
the production of films rather than fibers. Reply Br. 10.
That argument is not persuasive. As explained above, Dris teaches
the use of a variety of “Ultem” PEI polymers, and it further teaches that any
known PEI polymer may be used. The Examiner relies on Blackburn only
as evidence that Ultem XH 6050 is a known PEI polymer having a Mw/Mn
value of less than 2.5. Blackburn discloses several of the same “Ultem”
polymers that Dris discloses. Compare Blackburn 119, with Dris Tfl[ 152—
159. The Appellants provide no persuasive explanation as to why
Blackburn’s disclosure that Ultem XH 6050 may be used in films would
have caused a person of ordinary skill in the art to doubt that it could also be
used in fibers such as those of Dris, particularly given that Dris and
Blackburn disclose several of the same PEI polymers and reasonably suggest
the interchangeability of those polymers. Cf. Jung, 637 F.3d at 1365.
7. The Appellants argue that the Examiner’s finding that Ultem XH
6050 is known to have high heat stability, see Ans. 4, is “not applicable” to
the claimed “shrinkage” limitation because “it is well-known that the heat
stability of a polymer is a different property from low shrinkage under dry
heat of the polymer,” Reply Br. 10. The Appellants further argue that, “even
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if one skilled in the art were to practice Dris et al at their smallest spinneret
diameter of 0.001 mm, one would be without a clue how to produce a fiber
meeting the shrinkage feature of the present claims.” Id. at 11.
Those arguments are not persuasive. Even assuming the Appellants’
contention regarding heat stability and shrinkage to be true, it provides no
basis to reject the Examiner’s determination that the claimed shrinkage
percentage necessarily would be present in PEI fibers rendered obvious by
the disclosure of Dris because those fibers are the same as, or essentially the
same as, the claimed fibers. See Ans. 5—6; cf. Best, 562 F.2d at 1255;
Obiaya, 227 USPQ at 60; Kubin, 561 F.3d at 1357. The Appellants’
assertion (which is not accompanied by citation to evidence or meaningful
elaboration) that a person of ordinary skill “would be without a clue” as to
how to achieve the shrinkage feature of claim 1 likewise fails to show
reversible error in the Examiner’s determination that the feature would have
been present in fibers rendered obvious by Dris.
Hs
In summary, we have carefully considered the Appellants’ arguments,
and we are not persuaded of reversible error in the Examiner’s rejection of
claim 1. We affirm the Examiner’s rejection of claim 1.
Claims 4 and 5 are subject to Rejection 1 and are not separately
argued. Accordingly, we likewise affirm the Examiner’s rejection of claims
4 and 5.
Claims 6 and 10.
Claims 6 and 10 depend from claim 1 and further narrow the
molecular weight distribution range from “less than 2.5” to “1.0 to 2.4
(claim 6) and “1.0 to 2.3” (claim 10). The Appellants argue that “each of the
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exemplified PEI polymers listed [in Dris] have an Mw/Mn of 2.5. A lower
Mw/Mn, i.e., [2.4 or 2.3], is not suggested.” App. Br. 11—12.
That argument is not persuasive because it fails to address (1) Dris’s
disclosure that any known PEI polymer may be used, (2) the evidence of
Blackburn that PEI polymers having a Mw/Mn value of 2.2 were known in
the art, and (3) the Examiner’s determination that a person of ordinary skill
in the art would have been motivated to use Ultem XH 6050, disclosed by
Blackburn as having an Mw/Mn of 2.2, as a PEI polymer in Dris.
We affirm the Examiner’s rejection of claims 6 and 10.
Claims 12,13,18 and 19.
Claims 12 and 18 narrow the claimed “shrinkage percentage ... of
5% or less” to “-1.0% to 4.5.” Claims 13 and 19 narrow the range to “0% to
4%.” As with claim 1, the Examiner finds that the claimed shrinkage would
be inherent in fibers rendered obvious by Dris. Ans. 7. The Appellants
argue, “[s]ince Dris et al neither discloses nor suggests the shrinkage feature
of Claims 1 or 4, it follows that Dris et al neither discloses nor suggests the
narrower shrinkage feature range in these claims.” App. Br. 12.
As set forth above, the Appellants fail to identify reversible error in
the Examiner’s determination that the claimed shrinkage feature of claim 1
would necessarily be present in fibers rendered obvious by Dris. Their
arguments concerning claims 12, 13, 18 and 19 do not add to their
previously discussed arguments and likewise fail to identify reversible error
in the Examiner’s determination.
We affirm the Examiner’s rejection of claims 12, 13, 18, and 19.
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Claims 14 and 15.
Claims 14 and 15 depend from claim 1 and narrow the claimed fiber
fineness from “3.0 dtex or less” to “0.1 to 2.6 dtex” (claim 14) and “0.1 to
2.3 dtex” (claim 15).
The Appellants argue, “[s]ince the evidence of record shows that
following Dris et al would not produce a fiber satisfying the fineness feature
of Claims 1 or 4, it follows that a fiber would also not be produced satisfying
the narrower fineness feature range” of claims 14 and 15. App. Br. 12—13.
As set forth above, we disagree with the Appellants’ assertion that
Dris does not teach or suggest a fiber satisfying the fineness feature of
claim 1. Dris expressly discloses fibers having finenesses that overlap the
ranges of claims 1,14, and 15. E.g., Dris 137. The Appellants fail to show
reversible error in the Examiner’s findings and conclusions. Cf. Jung, 637
F.3d at 1365. We affirm the Examiner’s rejection of claims 14 and 15.
Claim 25.
Claim 25 depends from claim 1 and further recites “wherein the
amorphous polyetherimide polymer has a weight-average molecular weight
(Mw) of about 1,000 to about 32,000.” The Examiner finds that Dris
discloses an embodiment in which the Mw of the PEI polymer ranges from
about 10,000 to about 75,000, “thus overlapping significantly with
Applicant’s claimed range.” Ans. 7 (citing Dris 153).
In the Reply Brief, the Appellants explain that the PEI polymer
identified by the Examiner as having a molecular weight distribution falling
within the scope of claim 1 (i.e., Ultem XH 6050) does not fall within the
Mw limitation of claim 25. Reply Br. 16; see also Blackburn 119
(disclosing that Ultem XH 6050 has an Mw of 52,000-58,000).
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On this record, we are constrained to reverse the Examiner’s rejection
of claim 25. Although Dris discloses an Mw range of about 10,000 to about
75,000, see Dris 153, the Examiner provides no evidence or adequate
explanation as to whether PEI polymers falling within the scope of that Mw
range would also fall within the scope of the molecular weight distribution
range of claim 1. The Examiner does not identify any PEI polymer
disclosed by the asserted references that falls within both the molecular
weight distribution range of claim 1 and the Mw range of claim 25. Nor
does the Examiner explain how or why a person of ordinary skill in the art
would have been motivated to identify and use such a polymer in view of the
specific teachings of Dris and Blackburn. Accordingly, we must reverse the
rejection of claim 25.
Rejection 2
Claim 20 depends from claim 1 and further recites “wherein the
amorphous polyetherimide polymer comprises a metallic oxide.” Claim 21
depends from claim 20 and further recites that “the metallic oxide comprises
a titanium oxide.” Claim 22 depends from claim 1 and further recites
“wherein the amorphous polyetherimide polymer comprises a thermal
stabilizer.”
The Examiner finds that Dris teaches the use of adjunct ingredients
effective to impart or improve desirable fiber properties, but that Dris does
not specifically teach the use of titanium oxide or a thermal stabilizer. Ans.
8. The Examiner finds that Blackburn teaches PEI polymer compositions
that, when converted to articles such as films, have improved dimensional
stability. Id. The Examiner finds that Blackburn teaches the addition of
titanium oxide to its PEI resins, and that Blackburn further teaches the
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incorporation of heat stabilizer into its PEI composition. Id. The Examiner
concludes that it would have been obvious “to have added titanium oxide
and thermal stabilizer as taught by Blackburn to Dris’s PEI composition
when it is desired to provide the fiber with improved thermal stability.” Id.
Concerning claims 20 and 21, the Appellants first argue that a person
of ordinary skill in the art would not have been motivated to add titanium
oxide to Dris because Dris “wishes to exclude foreign particulate matter.”
App. Br. 13.
That argument is not persuasive. Dris explicitly teaches the addition
of “adjunct ingredients effective to impart, or improve a desirable fiber
property such as, brightness of color, strength, cleanability, flame
retardance, colorfastness, or dyability.” Dris 160. Dris’s concern with
foreign particulate matter appears to be limited to foreign particulates
“greater than about 100 microns in size.” E.g., id. at Abstract. Blackburn
teaches that its additives have particle sizes of about 2.0 microns or less.
Blackburn 121. Thus, Dris’s disclosure of excluding foreign particulate
matter does not appear to apply to the particulates of Blackburn relied on by
the Examiner.
The Appellants also state, with no elaboration, that Blackburn’s
disclosure of using titanium dioxide “is in connection with a [sic] making a
film, not with improving processability of fiber production.” App. Br. 13.
The Examiner recognizes that Blackburn teaches articles such as films but
suggests that Blackburn’s disclosure of improved dimensional stability
would likewise be desirable in the compositions of Dris. See Ans. 8. The
Appellants identify no reversible error in that rationale. See Jung, 637 F.3d
at 1365. We affirm the Examiner’s rejection of claims 20 and 21.
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Appeal 2015-006765
Application 13/234,561
Concerning claim 22, the Appellants argue that neither Dris nor
Blackburn “discloses or suggests the inclusion of a thermal stabilizer with
PEI polymer in order to improve processability of fiber production.” App.
Br. 14.
That argument is not persuasive. The Federal Circuit has “repeatedly
held that the motivation to modify a prior art reference to arrive at the
claimed invention need not be the same motivation that the patentee had.”
Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368—69 (Fed. Cir.
2012). Thus, it is irrelevant whether the particular motivation to combine
would have been “processability” or, as the Examiner finds, “provid[ing] the
fiber with improved thermal stability.” See Ans. 8. The Appellants do not
meaningfully challenge the Examiner’s determination that a person of
ordinary skill in the art would have been motivated by Blackburn to add a
thermal stabilizer to the compositions of Dris. See App. Br. 14. We affirm
the Examiner’s rejection of claim 22. See Jung, 637 F.3d at 1365.
Rejections 3 and 4
The Appellants raise no new arguments with respect to Rejection 3
(claim 23) or Rejection 4 (claim 24). Because the claims subject to
Rejections 3 and 4 depend, directly or indirectly, from claim 1, the rejection
of which we affirm above, we likewise affirm the Examiner’s rejections of
claims 23 and 24.
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Appeal 2015-006765
Application 13/234,561
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1, 4—6, 10, 12—16,
and 18-24.
We REVERSE the Examiner’s rejection of claim 25.
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-IN-PART
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