Bansal, Amitabh et al.

Patent Trials and Appeals Board

Jan 21, 2021

2019005479 (P.T.A.B. Jan. 21, 2021)

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.
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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
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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
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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,
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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.
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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
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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
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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

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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