Ex Parte Fuertes et al

Board of Patent Appeals and Interferences

Oct 4, 2007

10148793 (B.P.A.I. Oct. 4, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK FUERTES,
RODOLPHE TAMION,
GUY FLECHE and
SERGE COMINI
____________

Appeal 2007-2187
Application 10/148,793
Technology Center 1700
____________

Decided: October 4, 2007
____________

Before CHUNG K. PAK, THOMAS A. WALTZ, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the rejection of claims 11-25 and 28, the only
claims pending in the application. Although the action appealed from was a
non-final rejection, we have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134
since these claims have been twice presented and rejected. See Ex parte
Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994).
We REVERSE.
Appeal 2007-2187
Application 10/148,793

Claim 11 is illustrative of the invention and is reproduced below:
11. A process for the preparation of a lactic acid ester composition
from a lactic acid composition, comprising:

a) a stage of conversion, with removal of water, of said lactic acid
composition into a lactic acid oligomeric composition exhibiting a mean
degree of polymerization (MDP) of between 3 and 30,

b) a subsequent stage of mixing and of reaction of said oligomeric
composition which is purified or unpurified with an alcohol, in the presence
of a transesterification catalyst, for the purpose of esterifying all or a portion
of the lactic acid present, in a monomeric, dimeric, oligomeric or polymeric
form, in said oligomeric composition, and

c) an optional stage of purification of the lactic acid ester composition
thus obtained.

The Examiner relies on the following prior art references to show
unpatentability:
Taniyama JP 8-040983 Feb. 13, 1996
Okada JP 6-065230 Mar. 1998

The Examiner made the following rejection1:
Claims 11-25 and 28 under 35 U.S.C. § 102(b) as anticipated by
Taniyama, as evidenced by Okada.

ISSUE
Appellants concede that Taniyama discloses a process for preparation
of a lactic acid ester composition. However, Appellants contend that

1 The Examiner has withdrawn the rejection of claims 11-25 and 28
under 35 U.S.C. § 103 as unpatentable over Taniyama, as evidenced by
Okada, in view of Verser. Answer 3.

2
Appeal 2007-2187
Application 10/148,793

Taniyama’s method utilizes a lactide (i.e., a dimer whose degree of
polymerization is constant at 2) and, therefore, does not anticipate the
claimed method which utilizes a lactic acid oligomeric composition having a
mean degree of polymerization between 3 and 30. The Examiner points out
that the Taniyama reference refers to Okada as a source of its lactide. The
Examiner notes that Okada discloses “the production of poly(lactic acid)
having a molecular weight of 200-4000 which, using a molecular weight for
lactic acid of 90 calculates to a mean degree of polymerization of 2 to 44.”
Answer 4. Therefore, the Examiner contends that Taniyama’s method
anticipates claims 11-25 and 28.
Based on the contentions of the Examiner and the Appellants, the
issue before us is: Has the Examiner established that Taniyama inherently
discloses the use of a lactic acid oligomeric composition in his method of
manufacturing a lactic acid ester?
For the reasons discussed below, we answer this question in the
negative.

RELEVANT FINDINGS OF FACT
1) Taniyama discloses a method for manufacturing a lactic acid ester
composition by reacting a lactide with alcohol in the presence of an acid
catalyst. Claim 1.
2) Taniyama notes that “lactide (3,6-dimethyl-1,4-dioxane -2,5-
dione) has been used as a raw material for lactic-acid polymers. . . . For
example, JP H6-65230 A discloses that the lactide is obtained almost
quantitatively after distillation, wherein said lactide is produced by
heating a low-molecular weight lactic acid oligomer, which is obtained
3
Appeal 2007-2187
Application 10/148,793

by heat dehydration of lactic acid, at the temperature of 130-230ºC under
a reduced pressure and in the presence of alkali metal compounds.”
[0004].
3) Okada (JP H6-65230 A) discloses a method for producing a
lactide in which a polylactic acid having a molecular weight of 200-4000
is used as a raw material. P. 3, para. 1.
4) According to Okada, lactic acid is preferably produced by
dehydrating condensation of the lactic acid in the presence of a high-
boiling point alcohol under reduced pressure. P. 3, para. 2.
5) Okada discloses that the reaction produces “lactic acid, a lactic
acid decomposition product, a lactic acid oligomer, and the compound of
the alkali metal used as a catalyst and the like, and they can be treated
without worrying especially about environmental contamination.” P. 4,
para 2.
6) Okada teaches that the lactide is distilled away, recrystallized and
used for a polymer raw material. P. 7, para. 4.

ANALYSIS AND CONCLUSIONS
Appellants concede that Taniyama’s method inherently includes a step
of forming a lactide. Reply Br. 2 (“the depolymerization and purification of
OKADA are necessarily included in TANIYAMA to the extent that
TANIYAMA makes its lactide according to the teachings of OKADA”).
However, Appellants argue that Taniyama’s method does not expressly or
inherently disclose a step of forming a lactic acid oligomeric composition,
i.e., an intermediate product formed during the step of forming a lactide. Br.
4-5.
4
Appeal 2007-2187
Application 10/148,793

A reference is anticipatory within the meaning of § 102 if it discloses
each and every claim limitation either expressly or inherently. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999);
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir.
1997). We are in agreement with Appellants that Taniyama’s method does
not anticipate Appellants’ claimed method because Taniyama’s process
clearly requires a “lactide,” not a lactic acid oligomeric composition as
claimed. While it may be true that a lactic acid oligomeric composition is
inherently produced during the step of producing the lactide used in
Taniyama’s method, Taniyama does not expressly or inherently disclose the
use of such intermediate product in its method.2
Because the Examiner has failed to make a prima facie showing of
anticipation, the rejection of claims 11-25 and 28 under 35 U.S.C. § 102(b)
as anticipated by Taniyama, as evidenced by Okada, is reversed.
OTHER ISSUES
Although we have concluded that the Examiner’s rejection is not
sustainable under 35 U.S.C. § 102, the Examiner and Appellants should
consider whether claims 11-25 and 28 are patentable under 35 U.S.C. § 103
in view of the combined teachings of Taniyama and Okada.
REVERSED

2 In this regard, Appellants emphasize that a lactic acid oligomeric
composition would not be present in Okada’s final product, since “Okada
seeks to make lactide of the highest purity possible.” Appeal 5.
5
Appeal 2007-2187
Application 10/148,793

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