Bansal, Amitabh et al.Download PDFPatent Trials and Appeals BoardJan 21, 20212019005479 (P.T.A.B. Jan. 21, 2021) Copy Citation 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. 14/643,859 03/10/2015 Amitabh Bansal 220608-US-CNT 8059 23413 7590 01/21/2021 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER IMANI, ELIZABETH MARY COLE ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 01/21/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AMITABH BANSAL, THOMAS LINK GUGGENHEIM, ERIK C. HAGBERG, GANESH KAILASAM, ROY RAY ODLE, PRAMEELA SUSARLA, KARTHIK VENKATARAMAN, and XIAOLAN WEI Appeal 2019-005479 Application 14/643,859 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and JANE E. INGLESE, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–43. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Mar. 10, 2015 (“Spec.”), the Final Office Action dated June 8, 2018 (“Final Act.”), the Appeal Brief filed Dec. 10, 2018 (“Appeal Br.”), the Examiner’s Answer dated Mar. 20, 2019 (“Ans.”), and the Declaration Under 37 C.F.R. § 1.131, filed May 18, 2016 (“Decl.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies SABIC GLOBAL TECHNOLOGIES B.V. as the real party in interest. Appeal Br. 2. Appeal 2019-005479 Application 14/643,859 2 STATEMENT OF THE CASE The invention relates to crystallizable polyetherimides, which are a class of polymers especially useful in fiber manufacturing. Spec. ¶¶ 1, 2. According to the Specification, two widely used polyetherimides contain units derived from the reaction of an aromatic ether dianhydride, bisphenol A dianhydride (BPADA), with an aromatic diamine, meta- or para- phenylenediamine (mPD and pPD). Id. ¶ 2. The Specification states a need in the art exists for melt-processible polyetherimides that form crystalline domains when oriented because melt processability minimizes the need for solvent-based fiber formation operations. Id. ¶ 3. Claim 1, reproduced below, is illustrative. 1. A composition comprising a crystallizable polyetherimide derived from: (a) a dianhydride component, comprising 98.5 mole% or more of 4,4'- bisphenol A dianhydride; and (b) a diamine component comprising a diamine; wherein the crystallizable polyetherimide has a Tm from 250°C to 400°C and the difference between the Tm and Tg of the composition is equal to or more than 50°C. Appeal Br. 8 (Claims Appendix) (disputed elements italicized). ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the Appeal 2019-005479 Application 14/643,859 3 argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections. The Examiner’s rejections rely on the following prior art references: Name Reference Date Li US 4,408,087 Oct. 4, 1983 Klopfer US 4,565,858 Jan. 21, 1986 Ohkoshi US 6,497,952 B1 Dec. 24, 2002 Gallucci US 2008/0119610 A1 May 22, 2008 Handbook Wellington Sears Handbook of Industrial Textiles 1995 The Examiner maintains the following rejections: Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–30, 38–43 103(a) Gallucci, Li 30–34, 36, 37 103(a) Gallucci, Li, Handbook 35 103(a) Gallucci, Li, Handbook, Ohkoshi 1–6, 10–14, 38–41 103(a) Klopfer, Li Rejection over Gallucci and Li Appellant argues claims 1–30 and 38–43 together over the combination of Gallucci and Li. Appeal Br. 4–5. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 2–30 and 38–43 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appellant contends the Examiner erred in rejecting claim 1 because (1) the Declaration filed by the inventors removed Gallucci as a reference and (2) the claim requires a particular isomeric purity, namely 98.5 mole % or more of 4,4'-bisphenol A dianhydride, rather than the purity of the Appeal 2019-005479 Application 14/643,859 4 bisphenol A which Li teaches. Appeal Br. 4–5. Appellant contends isomeric purity is not dependent on the purity of bisphenol A, but, rather, on the purity of nitrophthalimide, which is reacted with a bisphenol A di-alkali metal salt to form a bisphenol A bisimide, which is then converted to bisphenol A dianhydride. Id. at 4 (citing generally to page 14 of the Specification). Appellant contends the 4,4' isomer designation relates to the location of the two anhydride groups, thus highly pure bisphenol A, as suggested by Li, would not necessarily lead to a dianhydride with the claimed isomeric purity because nitrophthalimide is employed in the synthesis of bisphenol A dianhydride from bisphenol A starting material. Id. (citing Spec. ¶ 29). Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claim 1 as obvious over the teachings of Gallucci in combination with Li. As an initial matter, the Examiner points out that the Declaration does not establish that the inventors had possession of the claimed dianhydride component comprising 98.5 mole % or more of 4,4'- bisphenol A dianhydride at the time when the subject invention was asserted to have been conceived in the Declaration. Ans. 8. The invention disclosure filed with the Declaration supports the Examiner’s finding because it explicitly identifies the invention’s feature as having 100% purity of the 4,4' isomer as follows: A desirable composition identified by the inventors is a polymer of BPADA with mPD or pPD, with a specific limitation on the purity of the BPADA monomer. As an example, it has been found that BPADA with 100% 4-4' isomer polymerized with pPD is effective at producing semicrystalline fibers in a standard fiber formation process. For comparison, Appeal 2019-005479 Application 14/643,859 5 the standard commercial BPADA obtained from GE Plastics can contain up to 5% 3-4' and 3-3' isomer impurities. Other diamines may also satisfy the crystallizability requirement - however, our current data is on the pure 4- 4'BPADA-pPD system. Decl. Attachment 4.3 On the same page of the attachment, “recent work on developing or demonstrating this idea” is described as follows: We have shown that a polymer made from pure 4-4'BPADA (with no 3-4' or 3-3' isomers) and pPD is capable of achieving high tensile strength in fiber form, combined with exceptional dimensional stability. Id. (emphasis omitted). A reply to the Examiner’s Answer was not filed in this Appeal. Based on the cited record in this Appeal which identifies only 100% pure 4,4' BPADA, we agree with the Examiner that the Declaration does not provide support commensurate in scope with claim 1. Having determined that it is appropriate to consider the Examiner’s rejection based on Gallucci as a prior art reference, we turn to the Examiner’s combination of Gallucci and Li. Appellant argues that Gallucci and Li are both silent with regard to bisphenol A dianhydride purity and that Li merely teaches the purity of bisphenol A, which is a precursor to bisphenol A dianhydride. Appeal Br. 4. Appellant also asserts the typical purity of commercially available bisphenol A dianhydride is 97 wt %. Id. It is not disputed that Gallucci teaches the isomer 4-4'- bisphenol A anhydride. The Examiner finds that commercially available 4,4'- bisphenol 3 The attachment to the Declaration is neither labeled nor paginated. Citations herein designate the first page as page 1 and the remainder sequentially follow. Appeal 2019-005479 Application 14/643,859 6 A dianhydride, however, includes 100% pure, 99% pure, and 98% pure. Ans. 10 (citing Spec. Table 1). The record supports the Examiner’s finding regarding the purity of commercially available 4,4'- bisphenol A dianhydride. Based on Li’s teaching that the reactants to form a product should be as pure as possible to produce the best product, the Examiner’s determination that it would have been obvious for a person having ordinary skill in the art to employ 100% pure 4,4'- bisphenol A dianhydride for Gallucci’s reaction has a rational underpinning. Id.; Li 2:29–32 (“it is highly important that the monomeric bisphenol-A used to make such resins be as pure as possible in order to avoid adverse effects on the properties of the polymers thus obtained.”). Li’s teaching that bisphenol A should be as pure as possible in order to prevent adverse effects on the materials produced from reactions with bisphenol A is pertinent to Gallucci’s disclosure as it relates to compounds formed from bisphenol A. In a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). Appellant does not challenge the Examiner’s finding regarding commercially available 4,4'- bisphenol A dianhydride including 100% purity. No reply brief was filed by Appellant. Nor does Appellant identify error in the Examiner’s finding that Li suggests to a skilled artisan selecting the highest purity of a reactant involving bisphenol A. The preponderance of the evidence in this appeal record therefore supports the Examiner’s conclusion that the claimed subject matter would have been obvious in view of Gallucci’s polyetherimide composition derived from 4,4'- bisphenol A dianhydride as modified by Li’s teaching to use the Appeal 2019-005479 Application 14/643,859 7 highest purity reactants in reaction with bisphenol A. Accordingly, we affirm the Examiner’s rejection of claim 1, as well as claims 2–30 and 38– 43, under 35 U.S.C. § 103(a) for the above reasons and those provided by the Examiner. Remaining Rejections over Gallucci and Li Appellant contends Handbook and Ohkoshi, cited in the rejections of claims 30–37, do not cure the deficiencies of Gallucci and Li as argued in connection with claim 1. Appeal Br. 5–6. Because we find Appellant’s arguments unpersuasive of error in the Examiner’s rejection of claim 1 for the reasons discussed above, we likewise affirm the Examiner’s remaining rejections over the combination of Gallucci and Li for the same reasons. Rejection over Klopfer and Li Appellant argues claims 1–6, 10–14, and 38–41 together over the combination of Klopfer and Li. Appeal Br. 6. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 2–6, 10–14, and 38–41 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant contends that Klopfer discloses bisphenol A dianhydride generally and not the particular isomer of bisphenol A dianhydride claimed. Appeal Br. 6. Appellant asserts that Li solely teaches the general purity of bisphenol A and is silent regarding the isomeric purity of bisphenol A derivatives. Id. As discussed above in connection with the rejection over Gallucci and Li, Appellant does not challenge the Examiner’s finding regarding commercially available 4,4'- bisphenol A dianhydride including 100% purity. No reply brief was filed by Appellant. Nor does Appellant identify Appeal 2019-005479 Application 14/643,859 8 error in the Examiner’s finding that Li suggests to a skilled artisan selecting the highest purity of a reactant involving bisphenol A. The preponderance of the evidence in this appeal record therefore supports the Examiner’s conclusion that the claimed subject matter would have been obvious in view of Klopfer’s polyetherimide composition derived from bisphenol A dianhydride as modified by Li’s teaching to use the highest purity reactants in reaction with bisphenol A to select a commercially available 100% pure 4,4'- bisphenol A dianhydride. Accordingly, we affirm the Examiner’s rejection of claim 1, as well as claims 2–6, 10–14, and 38–41, under 35 U.S.C. § 103(a) for the above reasons and those provided by the Examiner. CONCLUSION For these reasons and those the Examiner provides, we uphold the Examiner’s rejections of claims 1–43 under 35 U.S.C. § 103(a) as obvious over the cited prior art references. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–30, 38–43 103(a) Gallucci, Li 1–30, 38–43 30–34, 36, 37 103(a) Gallucci, Li, Handbook 30–34, 36, 37 35 103(a) Gallucci, Li, Handbook, Ohkoshi 35 1–6, 10–14, 38–41 103(a) Klopfer, Li 1–6, 10–14, 38–41 Overall Outcome 1–43 Appeal 2019-005479 Application 14/643,859 9 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation