SUN CHEMICAL CORPORATION

Patent Trials and Appeals Board

May 26, 2020

15112535 - (D) (P.T.A.B. May. 26, 2020)

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.
15/112,535 07/19/2016 Ralph ARCURIO 66847-9423 C-971 US 9407
96610 7590 05/26/2020
Ostrolenk Faber LLP
845 THIRD AVENUE
8TH FLOOR
New York, NY 10022
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RALPH ARCURIO, ALEX CHUDOLIJ,
RAMASAMY KRISHNAN, MARK SCHNEIDER,
PAUL HUNT, and PAUL SMALES,
____________

Appeal 2019-004844
Application 15/112,535
Technology Center 1700
____________

Before LILAN REN, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–3, 5, 6, 8, 9, 11, 14–16,
18–21, 23, 25, 26, 29, 32, 33, 35, 36, and 38–40.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Sun Chemical Corporation as the real
party in interest. Appeal Brief filed December 17, 2018 (“Appeal Br.”) at 1.
2 Final Office Action entered August 6, 2018 (“Final Act.”) at 1.
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Application 15/112,535

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CLAIMED SUBJECT MATTER
Appellant claims a polyester resin. Independent claims 1 and 2
illustrate the subject matter on appeal, and read as follows:
1. A polyester resin according to General Formula I:

wherein:
R1 and R2 are each independently selected from the group
consisting of H, C1-C4alkyl, and -CH2OH
x is an integer 1 through 10;
y is an integer 2 through 20;
p is an integer 2 through 8;
z is two times p;
each CxHy and CpHz are each independently linear or
branched alkyl, optionally comprising an aromatic, or saturated
or unsaturated alicyclic ring;
a, b, and c are each independently an integer 1 through
100; provided that b < a+c;
the Mw is less than 10,000;
the Tg is less than 5°C;
the hydroxyl value is 225–300; and
wherein the polyester resin is produced by a reaction of dibasic
organic acids, one or more organic compounds with multiple
functional groups, and one or more polyols.

2. A polyester resin of the General Formula II:

wherein:
R1, R2, and R3 are each independently selected from the
group consisting of H, C1-C4alkyl, and -CH2OH
x is an integer 1 through 10;
y is an integer 2 through 20;
each CxHy is independently linear or branched alkyl,
optionally comprising an aromatic, or saturated or unsaturated
alicyclic ring;
a, b, and d are each independently an integer 1 through
100; provided that b > a+d;
the Mw is less than 10,000;
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the Tg is less than 5°C;
the hydroxyl value is 225–290;
the acid value is 75–100; and
wherein the polyester resin is produced by a reaction of dibasic
organic acids, one or more organic compounds with multiple
functional groups, and one or more polyols.

Appeal Br. 15–16 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered April 17, 2019 (“Ans.”):
I. Claims 1, 3, 5, 9, 11, 14–16, 21, 23, 25, 26, 29, 32, 33, 35, 36,
and 38–40 under 35 U.S.C. § 103 as unpatentable over Bruchmann et al. (US
2007/0213501 Al, published September 13, 2007); and
II. Claims 2, 6, 8, and 18–20 under 35 U.S.C. § 103 as
unpatentable over Bruchmann.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1–3, 5, 6, 8, 9, 11, 14–16, 18–21, 23, 25, 26, 29, 32, 33, 35, 36, and
38–40 under 35 U.S.C. § 103, for reasons set forth in the Appeal and Reply
Briefs, and below.
Rejection I: Claims 1, 3, 5, 9, 11, 14–16, 21, 23, 25, 26, 29, 32, 33, 35, 36,
and 38–40 Under 35 U.S.C. § 103 as Unpatentable over Bruchmann
We limit our discussion to claim 1, the sole independent claim subject
to this ground of rejection.
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Application 15/112,535

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The Examiner finds that Example 2 of Bruchmann discloses using 0.4
mol adipic acid, 0.17 mol pentaerythritol, and 0.16 mol 1,6-hexanediol to
synthesize a polyester having a Mw of 5220, a Tg of -16.9 °C, an acid
number of 136 mg KOH/g, and an OH number of 269 mg KOH/g. Final
Act. 3 (citing Bruchmann ¶ 225). The Examiner finds that Bruchmann
“discloses adipic acid and maleic acid as equivalent dicarboxylic acids,”
and, based on this disclosure, concludes that it would have been obvious to
one of ordinary skill in the art to use maleic acid rather than adipic acid as
the dicarboxylic acid when synthesizing a polyester according to
Bruchmann’s Example 2. Final Act. 3 (citing Bruchmann ¶ 43).
The Examiner’s rejection, however, does not address the structural
limitations of the polyester resin recited in claim 1. The Examiner,
therefore, does not establish that Bruchmann discloses or would have
suggested a polyester resin having a structure as recited in claim 1.
Claim 1 recites a polyester resin according to Formula I:

in which R1 and R2 are each H, C1-C4alkyl, or -CH2OH; x is an integer 1
through 10; y is an integer 2 through 20; p is an integer 2 through 8; z is two
times p; CxHy and CpHz are each linear or branched alkyl; and a, b, and c are
each an integer 1 through 100, where b < a+c. Although claim 1 also recites
that the polyester resin is produced by a reaction of dibasic organic acids,
one or more organic compounds with multiple functional groups, and one or
more polyols, claim 1 nonetheless requires the recited polyester resin to have
a structure as defined by Formula I.
The Examiner does not identify any disclosure in Bruchmann that
describes or would have suggested a polyester resin having a structure as
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recited in claim 1. Although the Examiner cites the starting materials used
to prepare the polyester of Bruchmann’s Example 2, the Examiner does not
provide any objective evidence establishing that a polyester prepared
according to Bruchmann’s Example 2 would actually meet the structural
requirements recited in claim 1. Nor does the Examiner provide any
objective evidence or an adequate technical explanation establishing that
using maleic acid rather than adipic acid to prepare a polyester according to
Bruchmann’s Example 2 would yield a polyester resin meeting the structural
requirements recited in claim 1. The synthesis scheme of Bruchmann’s
Example 2 differs significantly from the synthesis scheme set forth in
Appellant’s Specification for preparing a polyester resin of Formula I.
Compare Bruchmann ¶ 225, with Spec. ¶¶ 82–83. The Examiner does not
address the differences in the synthesis schemes and explain why, despite
those differences, the teachings of Bruchmann’s Example 2 would have led
one of ordinary skill in the art to a polyester resin having the structural
features recited in claim 1.
Consequently, on the record before us, the Examiner does not provide
a sufficient factual basis to establish that Bruchmann discloses or would
have suggested a polyester resin as recited in claim 1. We, accordingly, do
not sustain the Examiner’s rejection of claim 1, and claims 3, 5, 9, 11,
14–16, 21, 23, 25, 26, 29, 32, 33, 35, 36, and 38–40, which each depend
from claim 1, under 35 U.S.C. § 103.
Rejection II: Claims 2, 6, 8, and 18–20 Under 35 U.S.C. § 103 as
Unpatentable over Bruchmann
We limit our discussion to claim 2, the sole independent claim subject
to this ground of rejection.
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The Examiner finds that Bruchmann discloses polyesters synthesized
from dicarboxylic acids, such as maleic or fumaric acid; dihydric alcohols
containing carboxyl groups, such as dimethylolpropionic acid; and alcohols
having a functionality of at least three, such as trimethylolpropane. Final
Act. 5 (citing Bruchmann Abst.; ¶¶ 28–31, 43, 67, 68–70). The Examiner
finds that Bruchmann discloses that polyesters synthesized from these
materials have acid numbers and OH numbers of 2 to 500 mg KOH/g, glass
transition temperatures (Tg) of -40°C to 60°C, and molecular weights (Mw)
of 600. Final Act. 5 (citing Bruchmann ¶¶ 28, 127–129, 218, 219). Similar
to the rejection of claim 1 discussed above, the Examiner finds that Example
2 of Bruchmann discloses synthesizing a polyester having a Mw of 5220, a
Tg of -16.9 °C, an acid number of 136 mg KOH/g, and an OH number of
269 mg KOH/g. Ans. 12 (citing Bruchmann Table 1, Example 2).
In view of these disclosures in Bruchmann, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art to
synthesize a polyester from maleic acid, dimethylolpropionic acid, and
trimethylolpropane, and to prepare a polyester having an acid number of 75–
100, an OH number of 225–290 mg KOH/g, a glass transition temperature
(Tg) of less than 5°C, and a molecular weight (Mw) of less than 10,000.
Final Act. 6 (citing Bruchmann ¶¶ 28, 127, 218, 219; In re Wertheim, 541
F.2d 257 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990); In
re Boesch, 617 F.2d 272 (CCPA 1980); MPEP § 2144.05); Ans. 11–12.
The Examiner’s rejection of claim 2, however, does not address the
structural limitations of the polyester resin recited in claim 2. The
Examiner, therefore, does not establish that Bruchmann discloses or would
have suggested a polyester resin having a structure as recited in claim 2.
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Claim 2 recites a polyester resin according to Formula II:

in which R1, R2, and R3 are each H, C1-C4alkyl, or -CH2OH; x is an
integer 1 through 10; y is an integer 2 through 20; CxHy is linear or
branched alkyl; and a, b, and d are each independently an integer 1
through 100, where b > a+d.
The Examiner does not identify any disclosure in Bruchmann that
describes or would have suggested a polyester resin having a structure as
recited in claim 2. Although the Examiner cites select general disclosures in
Bruchmann of starting materials used to prepare polyesters according to
Bruchmann’s invention, and cites starting materials used to prepare the
polyester of Bruchmann’s Example 2, the Examiner does not provide any
objective evidence establishing that a polyester prepared according to the
relied-upon disclosures of Bruchmann actually would meet the structural
requirements recited in claim 2.
Nor does the Examiner provide any objective evidence or an adequate
technical explanation establishing that synthesizing a polyester using maleic
acid, dimethylolpropionic acid, and trimethylolpropane according to the
synthesis processes disclosed in Bruchman would yield a polyester resin
meeting the structural requirements recited in claim 2. Further, the synthesis
scheme of Bruchmann’s Example 2, cited by the Examiner, differs
significantly from the synthesis scheme set forth in Appellant’s Specification
for preparing a polyester resin of Formula II. Compare Bruchmann ¶ 225,
with Spec. ¶ 84. The Examiner does not address the differences in the
synthesis schemes and explain why, despite those differences, one of
ordinary skill in the art reasonably would have expected that following the
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relied-upon disclosure in Bruchmann, including Bruchmann’s Example 2,
would yield a polyester resin having the structural features recited in claim
2.
Moreover, as Appellant points out (Appeal Br. 9), Bruchmann
discloses that the acid number of the polyester of Bruchmann’s Example 2
(136) is outside the acid number range of 75 to 100 recited in claim 2.
Bruchmann ¶ 247. The Examiner does not identify any actual disclosure in
Bruchmann of a polyester having an acid number as recited in claim 2.
Rather, as Appellant points out (Appeal Br. 9), the Examiner cites to
Bruchmann’s disclosure that polyesters according to Bruchmann’s invention
“possess a sum of acid number and OH number . . . of up to 500 mg
KOH/g.” Final Act. 5 (citing Bruchmann ¶ 219). The relied-upon
disclosure of Bruchmann thus sets forth a sum of acid and OH numbers,
rather than an acid number alone, as recited in claim 2.
Consequently, on the record before us, the Examiner does not provide
a sufficient factual basis to establish that Bruchmann discloses or would
have suggested a polyester resin as recited in claim 2. We, accordingly, do
not sustain the Examiner’s rejection of claim 2, and claims 6, 8, and 18–20,
which each depend from claim 2, under 35 U.S.C. § 103.
CONCLUSION

Claims

35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 5, 9, 11,
14–16, 21, 23,
25, 26, 29, 32,
33, 35, 36,
38–40
103 Bruchmann 1, 3, 5, 9, 11,
14–16, 21, 23,
25, 26, 29, 32,
33, 35, 36,
38–40
2, 6, 8, 18–20 103 Bruchmann 2, 6, 8, 18–20
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Application 15/112,535

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Claims

35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
Overall
Outcome
1–3, 5, 6, 8, 9,
11, 14–16,
18–21, 23, 25,
26, 29, 32, 33,
35, 36, 38–40

REVERSED