Elevance Renewable Sciences, Inc.

Patent Trials and Appeals BoardAug 13, 2020

2019005722 (P.T.A.B. Aug. 13, 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. 14/832,738 08/21/2015 Kamlesh Mody ERS-139-1-US-1 1092 144757 7590 08/13/2020 Elevance Renewable Sciences, Inc. (Main) Kilpatrick Townsend & Stockton LLP 1100 Peachtree St. NE Suite 2800 Atlanta, GA 30309 EXAMINER PEPITONE, MICHAEL F ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 08/13/2020 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): elevance_docketing@cardinal-ip.com ipefiling@kilpatricktownsend.com patents@elevance.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KAMLESH MODY ____________ Appeal 2019-005722 Application 14/832,738 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, MERRELL C. CASHION, JR., and JANE E. INGLESE, Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 6, 10–12, 14–16, 19, 20, 23–25, and 27–30. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Elevance Renewable Sciences, Inc. Appeal Br. 3. Appeal 2019-005722 Application 14/832,738 2 The invention is generally directed to a powder coating composition comprising a polyester polyol. Spec. ¶ 2. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A powder coating composition comprising a polyester polyol, wherein the polyester polyol comprises one or more constitutional units according to formula (I): wherein X1 is -(CH2)16-; and wherein the polyester polyol is capped with carboxylic acid groups. Appellant (see generally Appeal Br.) requests review of the Examiner’s rejection of claims 1, 6, 10–12, 14–16, 19–20, 23–25 and 27–30 under 35 U.S.C. § 103 as unpatentable over Wu (US 2006/0009591 A1, published January 12, 2006). Appeal Br. 8; Final Act. 2. Appellant argues independent claim 1 and relies on these same arguments to address the rejection of all dependent claims. See generally Appeal Br. Accordingly, we select the independent claim 1 as representative of the subject matter claimed and decide the appeal as to the ground of rejection before us for review based on the arguments Appellant makes in support of patentability of claim 1. OPINION After review of the respective positions that Appellant provides in the Appeal Brief and the Examiner provides in the Final Action and the Answer, we AFFIRM the Examiner’s prior art rejection of claims 1, 6, 10–12, 14–16, Appeal 2019-005722 Application 14/832,738 3 19–20, 23–25 and 27–30 for the reasons the Examiner presents. We add the following for emphasis. Claim 1 Claim 1 is directed to a powder coating composition comprising a polyester polyol, wherein the polyester polyol comprises one or more constitutional units according to formula (I) capped with carboxylic acid groups. For the purposes of the prosecution of this application, both the Examiner and Appellant agree that the claimed formula (I) capped with carboxylic acid groups is a polyol having 1,18-octadecanedioic moieties. Final Act. 3; Appeal Br. 9–10. The Examiner finds that Wu discloses a powder coating composition comprising a polyester polyol, wherein the polyester polyol comprises 1,16- hexadecanedioic moieties. Final Act. 2–3; Ans. 5; Wu Abstr.; ¶ 42. The Examiner finds that 1,16-hexadecanedioic acid/moiety is a homolog of the claimed 1, 18-octadecanedioic acid/moiety and that polyols having either moiety would have similar chemical structures differing regularly by the successive addition of the same chemical group. Final Act. 3. The Examiner determines that the two compounds are of sufficiently close structural similarity that one skilled in the art would have had a reasonable expectation that such compounds possess similar properties. Final Act. 3; In re Wilder, 563 F.2d 457, 460 (CCPA 1977). Based on this determination, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention from the teachings of Wu. See generally Final Act. Appellant’s arguments focus on Wu’s Example A (Wu ¶¶ 84, 85), which relates to an embodiment of Wu’s invention addressing the use of Appeal 2019-005722 Application 14/832,738 4 dodecanedioic acid, a 12-carbon dicarboxylic acid. See generally Appeal Br. 9–10. The premise of this focus is Appellant’s assertion that, while Wu discloses a genus of linear dicarboxylate moieties having from 4 to 16 carbon atoms, including 1,16-hexadecanedioic acid, Wu does not exemplify polyester polyols containing 1,16-hexadecanedioate moieties. Appeal Br. 9– 10; Reply Br. 3; Wu ¶ 42. Appellant’s arguments do not identify reversible error in the Examiner’s determination of obviousness. It is well established that “the test [for obviousness] is what the [] teachings of the references [or reference] would have suggested to those of ordinary skill in the art.” Further, it is well settled that a reference may be relied upon for all that it discloses and not merely the preferred embodiments as suggested by Appellant. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered’” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is not limited to its examples). The disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Appellant’s arguments are not persuasive of reversible error because the arguments do not address the rejection the Examiner presents. Specifically, the arguments do not address the Examiner’s reliance on Wu’s disclosure of 1,16-hexadecanedioic acid to make polyols containing 1,16- hexadecanedioate moieties. While Appellant contends that Wu does not Appeal 2019-005722 Application 14/832,738 5 exemplify such a polyol, this argument does not address Wu’s express disclosure that 1,16-hexadecanedioic acid can be used to make it. Wu ¶ 42. Moreover, Wu provides specific examples of dicarboxylic acids useful for making desired polyols that range from 4 to 16 carbons, with 1,12- dodecanedioic acid as well as 1,16-hexadecanedioic acid among those listed. Id. Thus, Appellant does not explain adequately why one skilled in the art, using no more than ordinary creativity, would not have been capable of making a powder coating composition comprising a polyester polyol, wherein the polyester polyol comprises 1,16-hexadecanedioate moieties given the totality of Wu’s disclosure. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Appellant argues that using the claimed 1,18-octadecanedioate moieties in place of Wu’s 1,12-dodecanedioate moieties would result in a 50% increase in the length of the hydrophobic spacers between the ester groups in the resulting polyester and, thus, Wu's polyester would have 50% more hydrophilic ester groups than a comparable polyester according to the claimed invention. Appeal Br. 9–10. According to Appellant, this would be a substantial decrease in the number of hydrophilic moieties within the polyester that would undoubtedly have a substantial effect on its resulting properties. Id. at 10. These arguments also lack persuasive merit because they fail to address the rejection the Examiner presents. As we note above, the Examiner relies on Wu’s teaching or suggestion with respect to making Appeal 2019-005722 Application 14/832,738 6 polyols having 1,16-hexadecanedioic moieties. Moreover, Appellant does not contest the Examiner’s finding that the 1,18-octadecanedioate and 1,16- hexadecanedioic moieties are homologs. Final Act. 3; see generally Appeal Br. Further, Wu discloses specific homologs of 4 to 16 carbons useful in making polyols for powdered coating compositions. Wu ¶ 42. Thus, Wu suggests that these homologs would have a sufficiently close structural similarity that one skilled in the art would have had a reasonable expectation that such compounds possess similar properties useful in making powdered coating compositions, as the Examiner asserts. Final Act. 3; Wu ¶ 42. As such, Appellant has not explained adequately why these polyols and the claimed polyols having 1,18-octadecanedioate moieties lack sufficient structural similarity that one skilled in the art would not have reasonably expected them to possess similar properties. Nor does Appellant direct us to any objective evidence that the claimed compounds possess unexpectedly advantageous or superior properties. In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995). See also In re Wilder, 563 F.2d 457, 460 (CCPA 1977) (“one who claims a compound, per se, which is structurally similar to a prior art compound must rebut the presumed expectation that the structurally similar compounds have similar properties”). Accordingly, we affirm the Examiner’s prior art rejection of claims 1, 6, 10–12, 14–16, 19–20, 23–25 and 27–30 under 35 U.S.C. § 103 for the reasons the Examiner presents and the reasons we give above. Appeal 2019-005722 Application 14/832,738 7 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 10–12, 14–16, 19–20, 23–25, 27–30 103 Wu 1, 6, 10– 12, 14–16, 19–20, 23–25, 27–30 TIME PERIOD 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