Ex Parte Scherzer et alDownload PDFPatent Trial and Appeal BoardAug 6, 201813588446 (P.T.A.B. Aug. 6, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/588,446 08/17/2012 123223 7590 08/08/2018 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Dietrich Scherzer 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 074048-0143-286271 6596 EXAMINER KAHN, RACHEL ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 08/08/2018 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DIETRICH SCHERZER, PHILIPPE DESBOIS, FREDDY GRUBER, and ACHIM STAMMER1 Appeal2017-010667 Application 13/588,446 Technology Center 1700 Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and LILAN REN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. § 103(a) of claims 7, 9--12, 16, 23, and 24 as unpatentable over Hoogen et al. (US 6,579,965 B2, issued: June 17, 2003) in view of Land (Industrial Crystallization of Melts, Chapter 3: Cooling Belts, pp 45-77 (2005)), Butler (US 3,017,392, issued: January 16, 1962), and Faulhammer et al. (US 6,228,976 Bl, issued: May 8, 2001) and of claims 7, 1 BASF SE is identified as the real party in interest (App. Br. 2). Appeal2017-010667 Application 13/588,446 9-12, 16, and 22-24 as unpatentable over Hoogen in view of Land and Buckley et al. (GB 908,220, published: October 17, 1962).2 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim a process for producing moldings comprising: mixing a lactam, a catalyst, and an activator selected from a group including lactams N-substituted by electrophilic moieties; producing droplets from the mixture which are deposited on a belt; and producing moldings by cooling the belt to a temperature in the range from 100°C below to 20°C below the melting point of the mixture droplets (sole independent claim 7). Appellants also claim a narrower embodiment wherein the molding consists essentially of a polyamide having a certain molar mass ( dependent claim 12). A copy of representative claims 7 and 12, taken from the Claims Appendix of the Appeal Brief, appears below. 7. A process for producing moldings comprising a) mixing (A) at least one lactam, (B) at least one catalyst, 2 The Examiner has withdrawn a provisional rejection on the ground of nonstatutory double patenting (Ans. 23). 2 Appeal2017-010667 Application 13/588,446 (C) at least one activator selected from the group consisting of lactams N-substituted by electrophilic moieties, aliphatic diisocyanates, aromatic diisocyanates, polyisocyanates, aliphatic diacyl halides and aromatic diacyl halides, and (D) optionally at least one additional substance to form a mixture, b) metering the mixture into an apparatus for producing mixture droplets comprising (A), (B), (C) and optionally (D) to produce mixture droplets, c) depositing the mixture droplets on a belt, and d) producing moldings by cooling the belt to a temperature in the range from 100°C below to 20°C below the melting point of the mixture droplets. 12. The process according to claim 7, wherein the molding consists essentially of a polyamide having a weight-average molar mass (Mw) of from 200 to 45,000 g/mol. Appellants present arguments specifically directed to claims 7 and 12 only (App. Br. 3-11). Therefore, the remaining claims on appeal will stand or fall with their parent independent claim 7. We will sustain the Examiner's rejections for the reasons given in the Answer and below. In rejecting claim 7, the Examiner finds that Hoo gen discloses a process for producing moldings comprising mixing a caprolactam, a catalyst, and an activator, albeit not one of the claimed activators including lactams N-substituted by electrophilic moieties. The Examiner additionally finds 3 Appeal2017-010667 Application 13/588,446 that Hoo gen discloses cooling divided forms of the mixture on a belt, albeit not cooling the belt to a temperature within the claimed range. The Examiner concludes that it would have been obvious to replace Hoogen's activator with a lactam N-substituted by an electrophilic moiety such as the N-acetylcaprolactam taught by Butler and Faulhammer or the N,N'- hexamethylenebis (carbamoyl-caprolactam) taught by Buckley. The Examiner further concludes that it would have been obvious to practice Hoogen's step of cooling the caprolactam mixture on a belt by cooling the belt to a temperature above 15°C as taught by Land but below the 68°C melting point of caprolactam thereby achieving a cooling temperature within the claimed range. Ans. 2-8, 13-18. Appellants argue that replacing Hoogen's activator/regulator as proposed by the Examiner would change the principle of operation wherein the activator/regulator allows Hoogen's catalyst solution to be stably stored at 160°C for 24 hours and polymerized ( e.g., at 230°C) slowly enough for lactam to impregnate glass fibers if present. App. Br. 5-6. According to Appellants, the N-acetylcaprolactam activator of Butler and Faulhammer would cause rapid polymerization at temperatures near 160°C thereby "reflect[ing] a substantial change in the principle of operation of Hoogen's system." Id. at 6. Appellants similarly argue that Hoogen's principle of operation would be changed by the N,N'-hexamethylenebis(carbamoyl- caprolactam) activator of Buckley because "polymerization takes place very rapidly at 170°C with Buckley's activator." Id. at 10. We agree with the Examiner that Hoogen's disclosure of 160°C as a stability temperature relates to Hoogen's lactam 12 embodiment (Hoogen 4 Appeal2017-010667 Application 13/588,446 col. 2, 11. 35-37), that Hoogen more generically discloses stability temperatures between the lactam melting temperature and 15 °C above the melting temperature (id. at col. 5, 11. 40-42), and that the resulting stability temperature range for Hoogen's caprolactam (i.e., lactam 6) embodiment having a melting temperature of 68°C is between 68°C and 83°C. Ans. 24-- 26. Therefore, contrary to Appellants' argument, the activators of Butler/Faulhammer and Buckley would not change Hoogen's principle of operation with respect to the caprolactam embodiment because the above argued polymerization temperatures of these activators are substantially higher than caprolactam's stable storage temperature range of 68-83°C. Id. Appellants reply to the Examiner's point by arguing that "a person of ordinary skill in the art would not prepare lactam solutions of minimum stability when trying to optimize said solutions to have an increased stability for longer periods of storage." Reply Br. 5. However, Appellants do not support this argument with any reason why the artisan would consider caprolactam's stable storage temperature range of 68-83 °C to be unacceptable. On the other hand, the Examiner expressly determines that an artisan would recognize this storage temperature range to advantageously lower energy costs (i.e., relative to a 160°C storage temperature). Ans. 25. Significantly, Appellants do not address, and therefore do not show error in, the Examiner's determination. See generally Reply Br. Appellants also contend Hoogen's disclosure regarding a prior art catalytic system in the first paragraph of column 2 would have made it 5 Appeal2017-010667 Application 13/588,446 obvious to one with ordinary skill in the art that lactam polymerization would occur at 70°C thereby teaching the artisan to avoid activators such as lactams N-substituted with an electrophilic moiety as recited in claim 7 and disclosed by Butler, Faulhammer, and Buckley. Reply Br. 4. This contention is unpersuasive. Appellants' assertion that the prior art catalytic system would cause polymerization at 70°C is not supported by evidence and is inconsistent with Hoogen's explicit disclosure that the prior art system "results in the polymerization of lactam 12 from 175°C" (Hoogen col. 2, 11. 8-9). In the record before us, Appellants fail to provide convincing evidence or scientific reasoning in support of the proposition that Hoo gen would have taught an artisan to avoid the respective activators of Butler/Faulhammer and Buckley. In their Reply Brief, Appellants argue that "[ t ]he activator disclosed in Buckley increases the reactivity to such a degree that polymerization may be effected at any temperature above the melting point of the monomeric lactam (see page 2, lines 56 to 61 of Buckley) ... [and that] the person skilled in the art must assume that polymerization already occurs slightly above the melting point of the lactam." Reply Br. 8. However, this argument and the Buckley citation were not raised in the Appeal Brief and Appellants have not shown good cause for their belated presentation in the Reply Brief. For these reasons, we will not consider this new argument and new Buckley citation for purposes of the present appeal. See 3 7 C.F .R. § 4I.41(b)(1)(2). 6 Appeal2017-010667 Application 13/588,446 Concerning the temperature range in cooling step d) of claim 7, Appellants contend that, "in view of at least the lack of disclosure of specific temperatures and failure to disclose cooling a material similar to that of claim 7, Land provides no motivation to conduct step d) as part of the process of claim 7 ." App. Br. 8. Appellants' contention lacks persuasive merit primarily because Land is not relied upon or necessary for teaching the specific materials and temperatures required by claim 7. Rather, the rejections rely upon the other applied references for such teachings. Moreover, we emphasize that Appellants do not discuss, and therefore do not show reversible error in, the Examiner's previously mentioned rationale for concluding that cooling temperatures within the claim 7 range would have been obvious. See generally App. Br. and Reply Br. In rejecting dependent claim 12, the Examiner determines that the modified process of Hoo gen necessarily would produce caprolactam in combination with polyamide having a molar mass within the claimed range and that such a combination is not excluded by the "consists essentially of' language of claim 12. Ans. 10-11, 21-22. Appellants argue that their Specification includes "statements as to the purpose of the instantly claimed invention, namely the production of moldings with only low molecular weight [polyamide] polymers." App. Br. 11 ( emphasis added). 7 Appeal2017-010667 Application 13/588,446 Appellants' argument is unpersuasive because it is not accompanied by citation to any Specification disclosure containing such statements. Furthermore, the Specification 2:5-11 disclosure cited by Appellants in summarizing the subject matter of claim 12 (see App. Br. 3) teaches "[ m ]oldings which consist essentially of a monomer melt and of a polymer melt polymerized only as far as a low weight-average molar mass (Mw)." Spec. 2:5---6 (emphasis added). This disclosure reinforces the Examiner's determination that the "consists essentially of' language of claim 12 encompasses caprolactam monomer in combination with polyamide polymer and undermines Appellants' argument to the contrary. For the reasons stated above and given by the Examiner, we sustain each of the § 103 rejections before us in this appeal. The decision of the Examiner 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)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation