Ex Parte YANG et al

Patent Trials and Appeals Board

Mar 25, 2019

14441233 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/441,233 05/07/2015
123223 7590 03/27/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
XinYANG
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.
074008-1646-US-526274 4957
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN YANG, JORG AUFFERMANN, CARSTEN SINKEL,
JEROME LOHMANN, ROBERT LOOS, GABRIEL SKUPIN,
ANDREAS KUNKEL, and LARS BORGER
Appeal2018-005758
Application 14/441,233
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREYR. SNAY, and
BRIAND. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of May 7, 2015
(Spec.), Non-Final Action of August 11, 2016 (Non-Final), Final Office
Action of November 7, 2016 (Final), Appeal Brief of March 13, 2017
(Appeal Br.), Examiner's Answer of March 15, 2018 (Ans.), and Reply
Brief of May 14, 2018 (Reply Br.).
Appeal2018-005758
Application 14/441,233
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1, 2, and 14--28. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a biodegradable polyester mixture (see,
e.g., claims 1 and 25), a plastic bag or inliner for a biowaste bin prepared
from the mixture (see, e.g., claim 23), and an agriproduct made from the
mixture (see, e.g., claim 24).
The mixture contains two polyester components (i) and (ii). Polyester
(i) makes up 71 to 91 wt% of the mixture and polyester (ii) makes up 9 to 29
wt% of the mixture, each percentage being based on the total weight of the
two polyesters. Polyester (i) is constructed with a longer Ccr-C18 aliphatic
dicarboxylic acid or its derivative and polyester (ii) is constructed with a
shorter C4---C6 aliphatic dicarboxylic acid or its derivative. Claim 1, with the
limitations of most interest highlighted, is illustrative:
1. A biodegradable polyester mixture comprising:
i) 71 to 91 wt%, based on the total weight of components i and
ii, of a polyester I constructed from:
a-1) 40 to 70 mol%, based on components a and b, of an
aliphatic CcrC1s dicarboxylic acid or of a CcrC1s
dicarboxylic acid derivative;
b-1) 30 to 60 mol%, based on components a and b, of
terephthalic acid or of a terephthalic acid derivative;
2 Appellant is the applicant under 37 C.F.R. § 1.46, BASF SE, which is also
identified as the real party in interest. Appeal Br. 1.
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Application 14/441,233
c-1) 98 to 100 mol%, based on components a and b, of a
C3---C6 diol;
d-1) 0 to 2 wt%, based on the total weight of components
a to e, of an at least trihydric alcohol;
e-1) 0 to 2 wt%, based on the total weight of components
a to e, of a chain extender, and
ii) 9 to 29 wt%, based on the total weight of components i and
ii, of a polyester II constructed from:
a-2) 40 to 70 mol%, based on components a and b, of an
aliphatic C,rC6 dicarboxylic acid or of a C,rC6
dicarboxylic add derivative;
b-2) 30 to 60 mol%, based on components a and b, of
terephthalic acid or of a terephthalic acid derivative;
c-2) 98 to 100 mol%), based on components a and b, of a C3-
C6 diol;
d-2) 0 to 2 wt%, based on the total weight of components a
and b, of an at least trihydric alcohol;
e-2) 0 to 2 wt%, based on the total weight of components a to
e, of a chain extender.
Appeal Br., claims appendix.
The Examiner maintains rejections under 35 U.S.C. § 103(a). Final
2---6; Ans. 3-7. 3 Specifically, the Examiner rejects claims 1, 2, 14--16, 20,
3 Appellant requests that the rejection of claims 23 and 24 under 35 U.S.C. §
101 and the rejection of claims 1, 2, and 14--24 on the ground of non-
statutory double patenting be withdrawn or reversed. Appeal Br. 11.
However, those rejections, although present in the Non-Final Office Action
(Non-Final 2, 8-9), were not maintained in the Final Office Action and the
Examiner does not discuss them in the Answer. Because the Examiner did
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Application 14/441,233
and 22-25 under 35 U.S.C. § I03(a) as obvious over Dietrich4, adding
Bastioli 5 to reject claim 17, and rejects claims 1, 2, 14, 15, and 18-28 under
35 U.S.C. § I03(a) as obvious over Bastioli. Final 2---6; Ans. 3-7.
OPINION
Appellant does not argue any claim apart from the others. Appeal Br.
4--11. We select claim 1 as representative for deciding the issue on appeal.
Appellant does not contest the Examiner's prima facie case of
obviousness over the teachings of Dietrich and/or Bastioli. Appeal Br. 4.
Instead, Appellant contends the Specification's working and comparative
examples show that the polyester mixtures of the claims exhibit unexpected
results over those of Bastioli, which Appellant designates, without dispute
by the Examiner, the closest prior art. Appeal Br. 4--5; Ans. 7-9.
As presented by Appellant, the issue before us is "whether the
experimental data of biodegradability for the working and comparative
examples is sufficient to demonstrate unexpected results, and whether the
claimed mixtures are commensurate in scope with those results." Appeal Br.
7.
Although we agree with Appellant that the data shown in Tables 1-2
of the Specification provides evidence of unexpected results for some
mixtures of poly(butylene sebacate-co-terephthalate) (PBSeT) and
not maintain the rejections in the Final Office Action, we do not review
them.
4 US 2011/0187029 Al, pub. Aug. 4, 2011.
5 WO 2011/054892 Al, pub. May 12, 2011.
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Application 14/441,233
poly(butylene adipate-co-terephthalate) (PBAT), the evidence is not
commensurate in scope with claim 1. 6
Table 1 presents data for mixtures of PBSeT and PBAT. The only
inventive example contains 90 wt% PBSeT and 10 wt% PBAT. Table 1.
We agree with Appellant that the data supports the showing of unexpected
results for this one example because this 90: 10 mixture of PBSeT and PBAT
has a degradation after 120 days that is 7.7% higher than what one would
predict (corrected Table 1, Reply Br. 2) and, contrary to the determination of
the Examiner, Bastioli does not provide evidence sufficient to show that this
improvement would have been expected. Compare Appeal Br. 7-8, and
Reply Br. 1-2, with Ans. 7-8. This is because mixing PBAT into PBSeT in
a 90:10 PBSeT/PBAT ratio would have been expected to decrease
degradation rather than increase it. Comparative example V2 indicates that
PBAT (ii-I) only degrades 1.7% after 118 days while PBSeT has a greater
degradation of 42.4% as shown by comparative example VI. Thus, one
would have expected that adding PBAT to PBSeT would decrease
6 Although Appellant relies on the data in Table 3 to support a showing of
unexpected tongue tear strength, we agree with the Examiner that the data in
Table 3 is not truly comparative because the showing relies on comparative
example Vl-b, which contains a different polyester (i) than the other
examples, i.e., it contains polyester i-2 instead of i-1. Polyester i-2 contains
a different concentration ofhexamethene diioscyanate (HDI) and a different
MVR than polyester i-1. Spec. 18-19. The Specification indicates that
MVR affects tongue tear strength, the property said to be unexpected. Spec.
5:26-34. Appellant does not address the Examiner's concern. Reply Br. 1-
6. Thus, the data in Table 3 is insufficient to support a determination of
unexpected tongue tear strength.
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Application 14/441,233
degradation, but instead the degradation of the 90: 10 mixture (46.1 %) is
higher than that of 100 wt% PBSeT (42.4%).
Table 2 also shows some evidence of a synergistic degradation for a
composition containing a 73.4:26.6 mixture of PBSeT/PBAT as it shows
that a composition including the mixture has a degradation after 180 days of
58.30%, which is much greater than a comparative composition that contains
only polyester (i-1), which has a 45.50% degradation. However, Table 2 is
less helpful than Table 1 because Table 2 compares the mixture to only a
polyester (i) composition and does not include a comparative example
containing only polyester (ii). It is not clear how the other additives,
( calcium carbonate, talc, polylactic acid, and Joncryl ADR 4368) might
affect the degradation of a polyester (ii) composition. Thus, the data is not
as strong for the 73.4:26.6 mixture as for the 90: 10 mixture.
Contrary to the Examiner's determination (Ans. 7-8), Bastioli's
discussion ofbiodegradation does not show an understanding that synergy
will occur at the particular concentrations of Appellant's claim 1. Bastioli's
Table 3 and comparison example 1 merely show an understanding that
Bastioli's comparative example 1, which contains PBAT, will not degrade to
the levels required for home or industrial composting whereas Bastioli's
Table 3 shows that 50:50 and 59:41 PBSeT/PBAT mixtures have a relative
biodegradability after 150 days according to the EN 13432 standard and a
home compostability according to UNI 11355:2010 of greater than 90%.
Bastioli Table 3. Bastioli does not detail how changing the concentration
ratio affects degradation and provides no data for mixtures with
concentrations in the range of the claim. Thus, Bastioli does not provide -
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Application 14/441,233
evidence to show that Appellant's result would have been expected by the
ordinary artisan.
Appellant's data shows degradation increasing to a level above that of
polyester (i) alone starting at about the 50:50 mixture blend (+1.2%) and
increasing to +2.5% at 70:30 and to +7.7% at 90:10. Reply Br. 2. This
provides evidence that at least for a 90:10 PBSeT/PBAT mixture, the result
is unexpectedly synergistic. 7
However, the showing is not commensurate in scope with what is
claimed. The problem is that the data of Tables 1 and 2 is limited to
mixtures containing PBSeT and PBAT. Claim 1 is much broader: it
encompasses a range of polyester (i) and (ii) concentrations and
compositions. The concentrations can be anywhere from 71 to 91 wt%
polyester (i) and 9 to 29 wt% polyester (ii). Moreover, the genus of
compositions is broad. For instance, the aliphatic dicarboxylic acids are not
limited to sebacic and adipic acids, but encompass any combination of Cc;--
C18 aliphatic dicarboxylic acid or its derivative with any C4---C6 aliphatic
dicarboxylic acid or its derivative. The burden is on Appellant to show
7 Appellant recites a range of 71 to 90% for polyester (i) and 9 to 29% for
polyester (ii) in claim 1, but the basis for selecting these ranges as having the
required unexpected synergy is less than clear. In Table 1, only the 90: 10
data point is within the claimed range. At a point just outside the range at
70:30, the difference between the expected and measured degradation is
+2.5% (Reply Br. 2). It is not clear whether the degradation percentage
jumps at 71 :29 or if the percentage slowly rises with 71 :29 representing the
point at which an ordinary artisan would have thought the value obtained
was different enough to be unexpected. Such is not explained. Thus, we
limit our determination that unexpected results are shown to the showing for
the 90:10 mixture of PBSeT and PBAT.
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Application 14/441,233
unexpected results. "Establishing that one ( or a small number of) species
gives unexpected results is inadequate proof, for 'it is the view of this court
that objective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support."' In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792
(CCPA 1971)).
We are cognizant that claim 25 is narrower in scope. Although claim
25 limits the aliphatic dicarboxylic acids of polyesters (i) and (ii) to sebacic
acid or its derivatives and adipic acid or its derivatives, respectively, the
claim still encompasses a range of compositions. For instance, the diol
components can be any C3---C6 diol. Appellant has not established that the
genus of compositions encompassed by claim 25 would exhibit the same
behavior as the PBSeT/PBAT mixture for which data is provided. See
Greenfield, at 1189 ( concluding that evidence of secondary considerations
was not commensurate with the scope of the claims where that evidence
related to a single compound and there was no adequate basis to conclude
that other compounds included within the scope of the claims would exhibit
the same behavior); In re Cescon, 474 F.2d 1331, 1334 (CCPA 1973)
( concluding that, although not every compound within the scope of the
claims was tested, the evidence of secondary considerations was sufficient
where evidence showed a correlation and there was no factual basis to
expect the compounds to behave differently in different environments).
Because the showing of unexpected is not commensurate in scope
with the claims, the showing is inadequate to overcome the prima facie case
of obviousness.
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In summary:
1, 2, 14--16, § 103(a)
20,22-25
17 § 103(a)
1, 2, 14, 15, § 103(a)
18-28
Outcome
CONCLUSION
Dietrich
Dietrich, Bastioli
Bastioli
DECISION
The Examiner's decision is affirmed.
1, 2, 14--16,
20,22-25
17
1, 2, 14, 15,
18-28
1, 2, 14--28
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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