Ex Parte O et al

Board of Patent Appeals and Interferences

Mar 11, 2010

11276026 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY ALLEN O’NEIL, ALI ERSIN ACAR,
PAUL DEAN SYBERT, PRATIMA RANGARAJAN,
HONGYI ZHOU, and JOSEPH ANTHONY SURIANO
____________

Appeal 2009-013795
Application 11/276,026
Technology Center 1700
____________

Decided: March 11, 2010
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-42, 45, and 46.
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:

Appeal 2009-013795
Application 11/276,026

1. A method of preparing a block copolyestercarbonate comprising
chain members derived from at least one dihydroxy-substituted aromatic
hydrocarbon moiety and at least one aromatic dicarboxylic acid moiety, said
method comprising the steps of:

(a) preparing a hydroxy-terminated polyester intermediate comprising
structural units derived from at least one dihydroxy-substituted aromatic
hydrocarbon moiety and at least one aromatic dicarboxylic acid moiety, by
reacting under interfacial conditions at least one dihydroxy-substituted
aromatic compound with at least one diacid chloride, said dihydroxy-
substituted aromatic compound being present in an amount corresponding to
from about 10 mole percent excess to about 125 mole percent excess relative
to the amount of diacid chloride, said reacting under interfacial conditions
comprising an amount of water corresponding to a final salt level of greater
than 31 percent; and

(b) conducting a reaction of the hydroxy-terminated polyester
intermediate with phosgene in a reaction mixture comprising water, a
substantially water-immiscible organic solvent, and a base.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 2):
Vollenberg 2001/0016626 A1 Aug. 23, 2001

12 Encyclopedia of Polymer Science and Engineering 28-35 (2d ed. 1988)
(hereafter Encyclopedia of Polymer Science).

Appellants’ claimed invention is directed to a method of preparing a
block copolyestercarbonate. The method entails preparing a hydroxy-
terminated polyester intermediate by reacting a dihydroxy-substituted
aromatic compound with a diacid chloride. The dihydroxy-substituted
aromatic compound is present in an amount corresponding to from about 10
mole percent excess to about 125 mole percent excess relative to the diacid
chloride. Also, the reaction is conducted under interfacial conditions
comprising an amount of water corresponding to a final salt level of greater
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Application 11/276,026

than 31 percent (independent claim 1) or 30 percent (independent claim 23).
According to Appellants, consistent and reliable control of the
intermediate’s molecular weight is accomplished by preparing the
intermediate with the claimed excess of dihydroxy-substituted aromatic
compound and the claimed final salt level.
Appealed claims 1-42, 45, and 46 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
being obvious over Vollenberg.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the Specification data relied upon in support thereof.
However, we are in complete agreement with the Examiner that the claimed
subject matter would have been obvious to one of ordinary skill in the art
within the meaning of § 103 in view of the applied prior art. Accordingly,
we will sustain the Examiner’s rejection to the extent that it is based upon
§ 103 for essentially those reasons expressed in the Answer.
There is no dispute that Vollenberg, like Appellants, discloses the
preparation of a block copolyestercarbonate wherein a hydroxy-terminated
polyester intermediate is prepared by reacting a dihydroxy-substituted
aromatic compound with a diacid chloride. Vollenberg exemplifies
resorcinol, Appellants’ preferred dihydroxy-substituted aromatic compound,
and isophthalic acid dichloride and terephthalic acid dichloride, Appellants’
two preferred diacid dichlorides. Also, Appellants acknowledge that “[i]n
Examples 68-70 of Vollenberg, Applicants have detailed that the salt
concentration is 32% in the reaction mixture to prepare the intermediate”
(App. Br. 4, penultimate para.). While Examples 68-70 of Vollenberg use a
2.5 excess of diol to diacid chloride, this amount of excess does not meet the
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Application 11/276,026

claim requirement of from about 10 mole percent to about 125 mole percent.
However, as emphasized by the Examiner, Vollenberg expressly teaches that
the excess of diol to diacid chloride is “more preferably in the range of about
1.01-1.25: 1” (p. 4, [0038]), and Examples 12 and 14 of the reference use an
excess of 15 percent, and Example 18 uses an excess of 13 percent.
Consequently, when the reference is considered in its entirety, we are in full
agreement with the Examiner that it would have been obvious for one of
ordinary skill in the art to use a molar excess of diol to diacid chloride of
greater than about 10 mole percent in Examples 68-70 of the reference.
We find no merit in Appellants’ argument that “[t]here is no
disclosure or suggestion of combining the two limitations as required by the
claims of the present application” (App. Br. 4, penultimate para.). We
concur with the Examiner that Vollenberg’s exemplification of the claimed
final salt level and preference for a molar excess of diol to diacid chloride
greater than 10 percent is a clear disclosure and suggestion of employing
both reaction parameters in preparing the intermediate.
Appellants cite Specification Examples as evidence of unexpected
results regarding controlling the molecular weight of the intermediate by
conducting its preparation using the two reaction parameters. We agree with
the Examiner, however, that Appellants have not carried their burden of
demonstrating that the Specification results would be considered truly
unexpected by one of ordinary skill in the art. In re Merck & Co., Inc., 800
F.2d 1091, 1099 (Fed. Cir. 1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). For one, Appellants have proffered no credible evidence, e.g.,
testimony by an expert in the art that the tabulated results regarding
molecular weight of the intermediate would have been unexpected. Also,
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we find that the Specification data is hardly commensurate in scope with the
degree of protection sought by the appealed claims. Examples 1-8 of the
present invention use 35 percent salt and Examples 9-10 of the invention use
34 percent salt. On the other hand, independent claims 1 and 23 recite salt
levels of greater than 31 percent and greater than 30 percent, respectively,
thereby encompassing considerably higher salt levels. In addition, as noted
by the Examiner, the Specification does not provide a comparison to the 32
percent salt exemplified by Vollenberg which value, of course, is within the
scope of the independent claims. Furthermore, Appellants have presented
no evidence which establishes that the molecular weight control of the
intermediate at salt levels of 34 and 35 percent translates to the myriad of
reactants over the wide range of excess of diol to diacid chloride embraced
by the appealed claims. For instance, Appellants have not demonstrated that
the molecular weights achieved with the claimed salt levels are also obtained
when the molar excess of diol is in the upper region of the claimed range of
10-125 mole percent, and when the diol and diacid chloride are other than
the specific ones tested..
Also, the Examiner has demonstrated that one of ordinary skill in the
art would have reasonably expected that an excess of diol to diacid chloride
would lessen the molecular weight of the intermediate, citing Vollenberg’s
Examples 12 and 14 in Table 2. Furthermore, Appellants have not refuted
the Examiner’s finding that the Encyclopedia of Polymer Science teaches
that an excess of either reactant in a reaction to prepare a polyester regulates
its molecular weight.
As for the asserted unexpected optical properties of
copolyestercarbonate shown in Examples 22-47, the data is not
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commensurate in scope with the broad class of block copolyestercarbonates
embraced by the appealed claims. Nor do the Examples present a
comparison to the closest prior art exemplified by Vollenberg. In addition,
as pointed out by the Examiner, the results themselves are not convincing
since some of the Examples are characterized as hazy (Examples 34 and 37)
whereas some of the comparative Examples are considered clear (C16) (see
Supp. Ans. 3, second full para.).
As for separately argued claims 45 and 46, we agree with the
Examiner that Vollenberg’s exemplified salt level of 32 percent renders
obvious the claimed values of “about 34%”. Appellants have not explained
why a salt level of “about 34%” is patentably distinct.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, we find that the evidence of obviousness presented by the
Examiner outweighs the evidence of non-obviousness submitted by the
Appellants. Accordingly, the Examiner’s decision rejecting the appealed
claims is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).
AFFIRMED

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RE: LEXAN
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