11164181 (P.T.A.B. Nov. 30, 2012)

Ex Parte Shi et al

Patent Trial and Appeal BoardNov 30, 2012

11164181 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/164,181 11/14/2005 Yu Shi 25040-1502 5180 29052 7590 11/30/2012 SUTHERLAND ASBILL & BRENNAN LLP 999 PEACHTREE STREET, N.E. ATLANTA, GA 30309 EXAMINER AUGHENBAUGH, WALTER ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 11/30/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YU SHI, ROBERT J. SCHIAVONE, CHANTEL WALTERS, ROBERT KRIEGEL, and XIAOYAN HUANG ____________ Appeal 2011-010072 Application 11/164,181 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. SMITH, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-010072 Application 11/164,181 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-7, 9, and 12-18, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6.1 Appellants’ invention relates to containers made using a particular polyester composition that have both improved gas barrier properties and a desirable intrinsic viscosity (IV). (Spec. 5). Claim 1 is illustrative: 1. A container comprising a polyester composition comprising: a polyester comprising a poly(ethylene terephthalate) based copolymer (PET copolymer) made using at least one first polycondensation catalyst selected from the group consisting of metals in groups 3, 4, 13, and 14 of the Periodic Table and comprising a catalyst residue remaining in the polyester from formation of the polyester, the catalyst residue comprising at least a portion of the at least one first polycondensation catalyst; and a reactive organic gas barrier enhancing additive, wherein the reactive organic gas barrier enhancing additive is a compound having the chemical formula R1OOC-AR-COOR2, wherein AR is selected from the group consisting of phenylene and naphthalene, and R1 and R2 are selected from the group consisting of C1 to C10 alkyl groups, a phenyl group, and a naphthyl group; wherein the polyester composition has an IV of 0.65 dL/g to 1.0 dL/g. 1 An Oral Hearing was held on November 28, 2012. Appeal 2011-010072 Application 11/164,181 3 Appellants request review of the following rejections (App. Br. 4) from the Examiner’s final office action: 1. The rejection of claims 1-7, 9, 12-14, 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over the combination of Miles (European Patent No. 0395237 A1 published Oct. 31, 1990) and Yatsu (U.S. Patent No. 4,874,647 issued Oct. 17, 1989) as further evidenced by Matsui (Japanese Patent Publication No. 2000-212302 published Aug. 2, 2000). 2. The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over the combination of Miles, Yatsu, Jen (U.S. Patent No. 6,489,434 B2 issued Dec. 3, 2002) as further evidenced by Matsui. 3. The rejection of claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Miles, Yatsu and Durand (U.S. Patent No. 6,573,304 B1 issued June 3, 2003) as further evidenced by Matsui. OPINION2 After thorough review of the respective positions provided by Appellants and the Examiner, we REVERSE for the reasons presented by the Appellants and add the following. We agree with Appellants that the claimed invention is not obvious over the combination of Miles, Yatsu, and Matsui. (App. Br. 6). Specifically Appellants argue: Miles, Yatsu, and Matsui would not have had a reason to develop Appellants’ claimed containers because the combination does not teach what the Examiner suggests. Although several of the elements of the present claims may have been independently known in the prior art, the Examiner has offered no evidence tending to suggest that one of ordinary skill in the art would be inclined to use polyesters made with 2 We limit our discussion to independent claim 1. Appeal 2011-010072 Application 11/164,181 4 polycondensation catalysts selected from the metals of groups 3, 4, 13, and/or 14 when incorporating a reactive organic gas barrier enhancing additive into the polyester, thereby avoiding undesirable reactions between the polyester and the additive. (Id.). Miles teaches polyester blends for bottles that have an additive that reduces oxygen permeability. The Examiner recognized that Miles does not teach that a polycondensation catalyst is utilized to form the polyester, that the polyester composition comprises a catalyst residue as recited, and that the polyester composition has an intrinsic viscosity of 0.65 dL/g to 1.0 dL/g as required by the claimed invention. (Ans. 4). To remedy this difference, the Examiner turns to Yatsu. Yatsu discloses a container formed from a polyester that is blended with a polycarbonate. Yatsu describes a wide variety of suitable polycondensation catalysts are suitable for forming a polyester that is blended with a polycarbonate (paragraph bridging cols. 4- 5). Yatsu teaches that the preferred catalysts are germanium compounds, “because the resulting polyalkylene terephthalate and a polyester composition thereof with a polycarbonate exhibit improved color hue and transparency.” (col. 5, lines 12-16). The Examiner has not directed us to evidence that transparency characteristics were a concern for the polyester composition of Miles. Consequently, the Examiner has not provided an adequate explanation as to why a person of ordinary skill in the art would have selected only Yatsu’s preferred catalyst (i.e., germanium) for forming the polyester composition of Miles. Yatsu only discloses the intrinsic viscosity for the described polyester blends. (Cols. 5-6). Yatsu does not teach polyester blends that have an additive that reduces oxygen permeability such as disclosed in Miles. The Examiner has not adequately Appeal 2011-010072 Application 11/164,181 5 explained why a person of ordinary skill in the art also would have reasonably expected that mixing reactive organic gas barrier enhancing additives with a polyester in the presence of a polycondensation catalyst would have been capable of providing polyester blends with the claimed intrinsic viscosity. The Examiner has not identified evidence that describes the effect that reactive organic gas barrier enhancing additives would have had on the composition. On the present record, the Examiner has failed to meet the initial burden of establishing a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).3 ORDER The rejections of claims 1-7, 9, and 12-18 under 35 U.S.C. § 103(a) are reversed. REVERSED bar 3 Since the Examiner has failed to establish a proper case of obviousness, we will not address the sufficiency of the secondary considerations.