Ex Parte Laskoski et al

Board of Patent Appeals and Interferences

May 2, 2011

11851411 (B.P.A.I. May. 2, 2011)

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.
11/851,411 09/07/2007 Matthew Laskoski 98474-US2 9265
26384 7590 05/02/2011
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
SHEH, ANTHONY H
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
05/02/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MATTHEW LASKOSKI and TEDDY M. KELLER
__________

Appeal 2010-009070
Application 11/851,411
Technology Center 1700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to chemical
compounds. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 1-3, 5, 6, 23, and 24 stand rejected and appealed (App. Br. 2).
Claims 1 and 5, the independent claims, are representative and read as
follows:
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1. A compound having the formula:

wherein each R
1
is an independently selected aromatic-
containing group;
wherein each R
2
is independently selected from methyl
and phenyl;
wherein each M is an alkali metal; and
wherein n is 1, 2, 3, or 4.

5. A compound having the formula:

wherein each R
1
is an independently selected aromatic-
containing group;
wherein each R
2
is independently selected from methyl
and phenyl; and
wherein n is 1, 2, 3, or 4.

The following rejections are before us for review:
(1) Claims 1-3, under 35 U.S.C. § 103(a) as obvious over McGrath1
(Ans. 3-4);
(2) Claims 5 and 6, under 35 U.S.C. § 103(a) as obvious over Keller2
and McGrath (Ans. 4-6); and

1
U.S. Patent No. 5,387,629 (filed July 30, 1993).
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(3) Claims 23 and 24, under 35 U.S.C. § 103(a) as obvious over
Keller and McGrath (Ans. 6-8).
OBVIOUSNESS -- MCGRATH
In rejecting claims 1-3 as obvious over McGrath, the Examiner finds
that McGrath teaches a compound with the structure required by claim 1,
except that McGrath‟s compound “differs from the claimed compound in
that it does not specify the claimed terminating group, i.e. the „M
+
O
-
‟ group
found at each end of the claimed compound” (Ans. 4).
The Examiner reasons, however, that because the reaction producing
McGrath‟s compound “occurs in the presence of potassium carbonate
(K2CO3), it is clear that the potassium salt, i.e. an alkali metal salt, of the
disclosed compound would be present” (id.). The Examiner concludes
therefore that “it would have been obvious to one of ordinary skill in the art
at the time of the instant invention that the claimed compound would be
present under the conditions disclosed by the prior art” (id.).
Appellants do not dispute that McGrath describes polymers that meet
the structural requirements of claim 1. Appellants contend, however, that
although the values for the variable “n” designating the number of repeated
monomers in McGrath‟s formula overlaps with claim 1‟s values of 1, 2, 3, or
4, claim 1 would nonetheless have been unobvious because McGrath
“teaches against using the presently claimed small values for n. The patent
does not contemplate the presently claimed low molecular weight oligomers,
which would be made using an excess of diol, rather than the disclosed
equimolar amounts of diol” (App. Br. 4; see also Reply Br. 1-2).

2
U.S. Patent No. 7,452,959 B2 (filed March 17, 2004).
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Specifically, Appellants argue, the “thermal properties of [McGrath‟s]
polymers were compared to other engineering thermoplastics (col. 7, lines
20-38). This teaches against the presently claimed oligomers as one would
not expect to replace the other engineering thermoplastics with the presently
claimed oligomer” (App. Br. 4-5). Appellants argue that McGrath further
teaches against the oligomers recited in claim 1 because McGrath discloses
the desirability of its polymers “in non-linear optics because they have high
glass transition temperatures (col. 10, lines 44-49)” whereas “[l]ow
molecular weight oligomers do not have a glass transition” (id. at 5).
The Examiner responds that McGrath‟s failure to focus on the
oligomers encompassed by its generic formula does not “rise to the level of a
teaching away” (Ans. 9). The Examiner notes that “nowhere does
[McGrath] indicate that oligomers are not desired” (id.).
To the contrary, the Examiner finds, the formula recited in McGrath‟s
claims expressly includes species in which the repeating unit “n” is greater
than 1 (id.). The Examiner further urges that, in the context of describing
the important feature of the compounds, the phosphine oxide moiety,
McGrath defines the variable “n” as being greater than 1, which
encompasses the values of 2, 3, and 4 of Appellants‟ claim 1 (see id.)
We find that the Examiner has the better position. It is undisputed
that McGrath‟s phosphine oxide-containing compounds (McGrath, col. 3, ll.
27-34) meet the structural requirements of claim 1. It is also undisputed that
McGrath teaches, with respect to the repeating structure, that “n is greater
than 1” (id. at col. 5, l. 1; see also id. at col. 18, l. 31 (claim 2)), which
overlaps Appellants‟ claim 1 “n” values of 2, 3, or 4.
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As Appellants have pointed out, “even a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). Once a prima facie case of obviousness based
on overlapping or close ranges has been established, however, “an applicant
may rebut [the] prima facie case of obviousness by showing that the prior art
teaches away from the claimed invention in any material respect.” Id. at
1331.
“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 Kahn, 441 F. 3d 977, 990
(Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
However, the fact that certain embodiments in a reference might be
less preferred than others does not demonstrate that the reference teaches
away from the less preferred embodiments. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“The prior art‟s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed. . . .”).
We agree with the Examiner that McGrath does not teach away from
the oligomeric compounds recited in Appellants‟ claim 1. Appellants point
to no teachings in McGrath that directly or specifically criticize, discredit, or
otherwise discourage preparation of the oligomeric compounds encompassed
by its generic disclosure.
To the contrary, those compounds are not only expressly encompassed
by McGrath‟s generic description of its invention, but also explicitly
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included in McGrath‟s claims. Thus, the fact that McGrath might not have
focused on the oligomeric compounds encompassed by its generic teachings,
or even exemplified them, does not persuade us that McGrath failed to
contemplate those compounds, much less teach away from them.
We acknowledge, as Appellants point out, that McGrath focuses on
the advantages of its polymeric compounds compared to the prior art, as
opposed to the oligomeric compounds encompassed by its generic disclosure
(see McGrath, col. 7, ll. 20-38; id. at col. 10, ll. 44-49). However, the fact
that the reference might not contain a specific affirmative teaching of the
comparative advantages of every embodiment within the generic invention
does not persuade us that McGrath teaches away from embodiments not
mentioned in that context.
In sum, because Appellants‟ arguments do not persuade us that the
Examiner failed to make a prima facie case with respect to claim 1, and
because Appellants point to no secondary considerations of non-obviousness
that might rebut the Examiner‟s prima facie case, we affirm the Examiner‟s
obviousness rejection of claim 1 over McGrath. Claims 2 and 3 fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS – KELLER AND MCGRATH
In rejecting claims 5 and 6, the Examiner finds that Keller teaches a
phthalonitrile-containing monomer similar to the phthalonitriles of claim 5,
“the difference between the compound of [Keller] and that of instant claim 5
[being] the phosphine oxide moiety” (Ans. 5). To meet that deficiency, the
Examiner cites McGrath as teaching compounds with a repeating unit that
comprises a phosphine oxide (id. at 6). The Examiner finds that “when the
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repeating unit of [Keller] is equal to [McGrath‟s] repeating unit, the
resulting compound is exactly that of instant claim 5” (id.).
The Examiner concludes that an ordinary artisan would have
considered it obvious to modify Keller‟s phthalonitrile monomer to contain
McGrath‟s phosphine oxide moiety, “as the phosphine oxide moiety would
impart self-extinguishing behavior via char formation” (id.). In separately
rejecting claims 23 and 24 over the same references, the Examiner similarly
reasons that it would have been obvious for an ordinary artisan, “interested
in imparting self-extinguishing behavior into [Keller‟s] thermosets by
incorporating [McGrath‟s] phosphine oxide moiety, to utilize the
dihaloaromatic phosphine oxide . . . containing compound of [McGrath]”
(id. at 7-8).
As to claims 5 and 6, Appellants contend that “there is no showing
that such [self-extinguishing] properties of [McGrath‟s] polymers would still
be found in the presently claimed oligomers. Further [McGrath] teaches the
use of high molecular weight polymer, while [Keller] teaches the use of
oligomers, so it would not be obvious to substitute one for the other” (App.
Br. 6).
As to claims 23 and 24, Appellants content that there is “no evidence
in the record that the phosphine oxide benefits would actually occur in the
presently claimed compounds, where n is 1” (id. at 7). Thus, Appellants
urge, as “there is no rationale supporting the conclusion of obviousness, a
prima facie case has not been made” (id.).
We conclude that the Examiner has the better position.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that “that when a patent „simply arranges old elements with
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each performing the same function it had been known to perform‟ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273
(1976)).
In the instant case, it is undisputed that claim 5 and its dependent,
claim 24, recite a phthalonitrile compound that differs from Keller‟s
phthalonitriles in that the claimed compound contains a phosphine oxide
moiety that would be introduced using McGrath‟s phosphine oxide-
containing diarylhalide (see McGrath, col. 3, ll. 20-25) as Keller‟s
dihaloaromatic (see Keller, col. 3, ll. 36-64).
As the Examiner points out (Ans. 10), and Appellants do not dispute,
the advantageous, self-extinguishing properties of McGrath‟s polymers are
tied to the presence of the phosphorus in the polymer backbone (McGrath,
col. 8, ll. 35-40 (“Thus, it can be concluded that phosphorus presence along
the backbone of these [poly(arylene ethers)] promotes primarily
carbonaceous char formation upon pyrolysis . . . .”)).
It may be true that McGrath describes the advantages of its phosphine
oxide moiety in the context of polymers (see id. at cols. 6-8), rather than the
monomers described by Keller and recited in claims 5 and 24. However,
Keller‟s monomers are ultimately to be used to form thermosets, that is,
crosslinked polymers (see Keller, col. 9, l. 40 through col. 12, l. 13).
Given McGrath‟s teaching that its phosphine oxide-containing unit
imparts desirable properties to polymers that contain it, we agree with the
Examiner that an ordinary artisan would have been prompted to incorporate
it into Keller‟s monomers, in order to confer the improved properties to the
polymers ultimately produced from those monomers. While an ordinary
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artisan might not have been able to absolutely predict success, it is well
settled that that is not the standard for obviousness. See In re O’Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not require absolute
predictability of success. . . . For obviousness under § 103, all that is
required is a reasonable expectation of success.”).
In sum, for the reasons discussed, we are not persuaded that the
Examiner failed to make a prima facie case of obviousness. As Appellants
point to no evidence of secondary considerations that might rebut the
Examiner‟s prima facie case, we affirm the Examiner‟s obviousness
rejections of claims 5 and 24 over Keller and McGrath.
Claims 6 and 23 fall with claims 5 and 24. See 37 C.F.R. §
41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner‟s obviousness rejection of claims 1-3 over
McGrath.
We also affirm the Examiner‟s obviousness rejections of claims 5, 6,
23, and 24 over Keller and McGrath.

TIME PERIOD
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

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