Ex Parte 7919159 et al

Patent Trial and Appeal Board

Dec 19, 2016

90013456 (P.T.A.B. Dec. 19, 2016)

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.
90/013,456 02/20/2015 7919159 MG.R.006.US.1 2793
26158 7590 12/19/2016
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
INVISTA NORTH AMERICA, S.A.R.L
Patent Owner and Appellant
Appeal 2016-006370
Reexamination Control 90/013,456
U.S. Patent 7,919,159 B2
Technology Center 3900
Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
Patent Owner appeals from the Patent Examiner’s final rejection of
claims 1—27 in the above-identified ex parte reexamination of U.S. Patent
No. 7,919,159 B2. The Board’s jurisdiction for this appeal is under 35
U.S.C. §§ 6(b) and 134(b). We affirm.
I. STATEMENT OF CASE
This appeal involves U.S. Patent No. 7,919,159 B2 (“the ’159 patent)
which issued Apr. 5, 2011. The Real Party in Interest is INVISTA North
America S.a.r.l. Appeal Br. 1. A Request for Ex Parte Reexamination
Appeal 2016-006370
Reexamination Control 90/013,456
U.S. Patent 7,919,159 B2
(“Request”) under 35 U.S.C. §§ 301—307 and 37 C.F.R. § 1.510 was filed
Feb. 20, 2015 by M & G USA Corporation (“Requester”). Reexamination
was ordered. Ex Parte Reexamination Communication mailed Mar. 11,
2015. A Final Rejection in the reexamination was mailed Oct. 16, 2015
(“Final Rej.”). Patent Owner appeals from the Final Rejection.
There was a merged ex parte reexamination of a related patent, U.S.
Pat. No. 7,943,216 B2 (Reexamination Control Nos. 90/013,218 and
90/013,342) (“the ’216 patent). Patent Owner appealed the Examiner’s final
decision rejecting all the claims. On appeal to the Patent Trial and Appeal
Board, the Examiner was affirmed. Ex parte Invista North America, S.a.r.l.,
Appeal No. 2016-001727 (mailed May 16, 2016). The PTAB decision was
appealed to the Federal Circuit; the appeal was dismissed Oct. 21, 2016
(Order in Appeal 16-2346).
There is also a related district court litigation involving the patents.
Appeal. Br. 1—2.
REJECTIONS
Claims 1—27 are pending and stand finally rejected by the Examiner
as follows (from Examiner’s Answer (“Ans.”) 6):
1. Claims 1—27 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Yamamoto et al. (JP 2-135259 A, published May 24, 1990)
(“Yamamoto”) and Yuo et al. (U.S. Pat. No. 5,623,047, issued Apr. 22,
1997) (“Yuo”).
2. Claims 1—27 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Yamamoto and Kim et al. (U.S. Pat. No. 5,314,987, issued May 24,
1994) (“Kim”).
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3. Claims 1—27 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Yamamoto and Kulkami et al. (DE 101 26 942 Al, published Dec.
20, 2001) (“Kulkami”).
Patent Owner did not argue the rejections or claims separately.
Appeal Br. 12. Thus, all the claims stand or fall with claim 1. Yuo,
Kulkami, and Kim are cited by the Examiner for the same teaching, namely,
the addition of the colorant cobalt to Yamamoto’s composition to make a
bottle container.
In addition to the cited prior art, the following six declarations have
been provided during the Reexamination:
Declaration of Douglas David Callander, Ph.D. (Feb. 18, 2015) on
behalf of Requester (“Callander Deck”)
Declaration of S. Richard Turner, Ph.D. (Aug. 29, 2015) on behalf of
Patent Owner (“Turner Deck”).
Declaration of Frank W. Embs (Aug. 27, 2015) on behalf of Patent
Owner (“Embs Deck”)
Declaration of Geoffrey Scantlebury, Ph.D. (Dec. 17, 2009) on behalf
of Patent Owner (“Scantlebury Deck”)
Declaration of Uwe Bayer, Ph.D. (Nov. 11, 2012) on behalf of Patent
Owner (“Bayer 2012 Deck”).
Declaration of Uwe Bayer, Ph.D. (Nov. 6, 2013) on behalf of Patent
Owner (“Bayer 2013 Deck”).
We find that the declarants are qualified to testily on the matters
discussed in their declarations.
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Claim 1 is representative and reads as follows:
1. A composition for containers comprising: polyester,
partially aromatic polyamide, ionic compatibilizer, a cobalt salt;
wherein said ionic compatibilizer is a copolyester containing a
metal sulfonate salt.
SUBSTANTIAL NEW QUESTION OF PATENTABILITY1
During the prosecution of the application that led to the ’ 159 patent
(Application 10/569,614), the Examiner had rejected claims 27, 29, and 20
as anticipated, or obvious, over Cochran (U.S. Pat. No. 5,955,527) or Share
(U.S. Pat. No. 6,933,055); claims 1—8, 14—21, and 27—30 as obvious over
Kyo (U.S. Pat. No. 4,187,358) in view of Cochran or Share; claims 1—30 as
obvious over Yamamoto (JP 135259) in view of Cochran or Share. Non-
Final Rejection 3^4 (mailed Oct. 9, 2008).
With respect to the rejection based on Kyo, the Examiner found it
would have been obvious to add cobalt to Kyo’s composition as an oxygen
scavenging material as taught by Cochran and Share. Id. at 4. The
Examiner made the same determination for Yamamoto, stating that “it
would have been obvious to one having ordinary skill in the art to have
further added a cobalt salt for its expected additive effect as an
oxygen scavenger to the polyester-polyamide compositions of JP ‘259 with
1 Patent Owner appears to have complied with the requirements in order to
preserve the SNQ issue for appeal in that the issue was raised in at least
Patent Owner’s comments filed August 31, 2015 pages 5 6, and the issue
was raised in Patent Owner’s Appeal Brief, 7 9. See 75 Fed. Reg. 36,357
(June 25, 2010.)
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the reasonable expectation of obtaining further improvements in gas barrier
properties.” Id. at 5.
Subsequently, in response to Applicant’s arguments and amendments,
the Examiner maintained the rejection of claims 1—8, 10, 11, 13—21, 23, 24,
26, 27, and 29-32 as obvious over Yamamoto in view of Cochran or Share
for the same reason that it would have been obvious to have used cobalt as
an oxygen scavenger in Yamamoto’s composition. Non-Final Rejection 3^4
(mailed Jan. 27, 2010). The Examiner maintained the rejection in a Final
Office Action (July 15, 2010). After evidence was provided by Applicants
that the claimed invention showed synergy and unexpected results with
respect to decreasing yellowness as compared to the same composition in the
absence of cobalt (Response to Final Office Action Pursuant to 37 CFR
1.114, dated Dec. 10, 2010), the Examiner mailed a notice of allowance
(Dec. 30, 2010).
In the Reexamination proceeding, Requester proposed new
obviousness rejections based on Yamamoto, which had been previously
cited, in combination with Yuo, Kim, and Kulkami. Each of the three latter
publications were cited for teaching cobalt as a coloring agent. Request 6—7.
The Request stated:
[Cjobalt salts such as cobalt octoate and cobalt acetate would be
used by one of ordinary skill when adding the transparent
colorant suggested by Yamamoto to conceal the yellowing,
which, as admitted by Patent Owner, was known at the time of
the invention to be caused by blending polyester and
polyamide.
Id. at 8.
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Requester provided a declaration by Dr. Callander identifying
purported errors in the experiments described in the ’159 patent said to show
synergy. Id. at 11. Additional experiments performed in other proceedings,
and by Requester, were reported in Dr. Callander’s declaration. Id. at 11—
12.
The Examiner adopted the rejections of Yamamoto in view of Yuo,
Kim, and Kulkami, determining that claims 1—27 were obvious under
35 U.S.C. § 103 based on the cited publications. Order Granting Ex Parte
Reexamination of the ’159 patent (mailed Mar. 11, 2015).
The Examiner acknowledged that Yamamoto was “old art” and had
been cited in the prosecution that led to the ’159 patent, but found that
“neither the Patent Owner nor the Examiner [in the initial examination]
pointed to or discussed YAMAMOTO’S teaching that additives, such as
transparent colorants, can be combined with the composition (see p. 426, 1st
col., |2 of the English translation of YAMAMOTO accompanying the
Request).” Order Granting Ex Parte Reexamination 7 (footnote omitted).
The Examiner also noted that Yuo was of record in the prosecution of the
’159 patent, but found that “neither the Examiner nor Patent Owner pointed
to the teaching at col. 3, lines 45-56 of YUO that the catalyst composition
not only increases the reaction rate in the production of PET, but also
the PET produced shows a slightly bluish color, he., low b-value or negative
b-value.” Id.
Patent Owner contends that there is no substantial new question of
patentability (“SNQ”) because “the question of whether it would have been
obvious to modify Yamamoto’s compositions to include a cobalt salt was
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still thoroughly considered by the Examiner during the prosecution of the
application.” Appeal Br. 8.
By delegation of authority from the Director via the Chief
Administrative Judge pursuant to the procedure set forth in Clarification on
the Procedure for Seeking Review of a Finding of a Substantial New
Question of Patentability in Ex Parte Reexamination Proceedings, 75 Fed.
Reg. 36,357—36,358 (Dep’t of Commerce, June 25, 2010), we have
jurisdiction to decide this SNQ issue. See “DELEGATION OF
AUTHORITY IN EX PARTE REEXAMINATION PROCEEDING
APPEAL” mailed concurrently with this Decision.
Discussion
We do not agree with Patent Owner that an SNQ does not exist
merely because the PTO had already considered the “question” of whether it
would have been obvious to add a cobalt salt to Yamamoto’s composition.
Appeal Br. 8.
Under 35 U.S.C. § 302, “[a]ny person at any time may file a request
for reexamination by the Office of any claim of a patent on the basis of any
prior art cited under the provisions of section 301.” The Director determines
“whether a substantial new question of patentability affecting any claim of
the patent concerned is raised by the request, with or without consideration
of other patents or printed publications.” 35 U.S.C. § 303(a). “The
existence of a substantial new question of patentability is not precluded by
the fact that a patent or printed publication was previously cited by or to the
Office or considered by the Office.” Id. “The ‘substantial new question of
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patentability’ requirement prevents potential harassment of patentees by
‘act[ing] to bar reconsideration of any argument already decided by the
[PTO], whether during the original examination or an earlier
reexamination.’” In re Swanson, 540 F.3d 1368, 1375 (Fed. Cir. 2008)
(quoting from H.R. Rep. No. 96—1307(I)( 1980)).
Thus, the issue in determining an SNQ is whether an “argument” had
already been decided by the PTO. In this case, the PTO had not considered
the question of whether it would have been obvious to add cobalt to
Yamamoto’s composition based on 1) Yamamoto’s suggestion to add
colorants and 2) the knowledge that cobalt was a known colorant. The PTO
also had not considered whether it would have been obvious to add cobalt
because it is a component of the PET catalyst as described by Yuo, a
colorant as described in Kim, and a colorant and catalyst as in Kulkami.
Because none of these questions were decided by the PTO in the original
examination that led to the ’216 patent, the Examiner in this proceeding
properly found an SNQ and ordered reexamination. Although Yamamoto
was previously cited in a rejection during the original examination, and Yuo
had been considered by the Examiner in the initial examination, the
publications are “being presented/viewed in a new light, or in a different
way, as compared with its use in the earlier examination(s), in view of [this]
material new argument. . . presented in the request.” MPEP § 2242 (March
2014).
Therefore, we deny Patent Owner’s request to overturn the
Examiner’s determination that a substantial new question of patentability
was presented by Yamamoto in view of Yuo, Kim, and Kulkami.
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CALLANDER DECLARATION
The Callander Declaration was provided in the Request for
Reexamination to provide evidence that the prior art rejections proposed in
the Request rendered unpatentable the claimed subject matter of the ’159
patent and to provide evidence that the synergy data in the ’159 patent are
flawed because of undisclosed components in the trial runs upon which the
synergy was based.
Patent Owner contends that the Callander Declaration should not be
considered because it is not a patent or printed publication upon which a
reexamination may be based. Appeal Br. 9. Patent Owner also contends
that the experiments described by Dr. Callander “does not ‘explain the
contents or pertinent dates of prior art patents or printed publications in more
detail’ as permitted by the MPEP [2258].” Id. at 10. Patent Owner states
that it is being denied due process because it did not have the opportunity to
cross-examine Dr. Callander. Id.
The SNQ is based on the Yamamoto, Yuo, Kulkami, and Kim
publications. The Callander declaration provides a detailed explanation of
the prior art and therefore is a permissible declaration under MPEP § 2258
(“In reexaminations ordered under 35 U.S.C. § 304, any rejection must be
based upon the prior art patents or printed publications as explained by the
affidavits or declarations or other written evidence.”). See, e.g., Callander
Decl. 11 11-17, 20, 23, 27-29, 31, 34.
Dr. Callander also provided evidence that Patent Owner’s data in the
’ 159 patent did not disclose that sodium acetate had been used in certain
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runs upon which synergy was found. Id. 38, 45—52. Dr. Callander
describes additional experiments, in which sodium acetate was included in
all the trial runs or omitted from all of them. Id. ]Hf 54—58. These
experiments did not show synergy. Id.
Dr. Callander’s data does not serve as one of the “prior art
[references] consisting of patents or printed publications,” as set forth in
35 U.S.C. § 301. Rather, it is rebuttal evidence to Patent Owner’s evidence
of nonobviousness or evidence that explains the applied prior art references.
We have not been directed to any language in the statute, or binding legal
precedent, which would prohibit consideration of a declaration by a
Requester rebutting evidence of non-obviousness or explaining the applied
prior art references. Indeed, under binding Supreme Court precedent—e.g.,
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 406-407 (2007), an obviousness
analysis requires the consideration of not only the scope and content of the
prior art references but also other factors including the level of ordinary skill
in the art and secondary considerations, which necessarily require an
evaluation as to how a person skilled in the relevant art would have viewed
the proffered results in the ’ 159 Patent in light of the prior art teachings. An
obviousness analysis in a reexamination context must address those same
factors, and Dr. Callander’s Declaration merely sheds light on some of those
factors that must be considered in answering the ultimate question of
patentability.
We are also not persuaded by Patent Owner’s argument that they have
been denied due process because it did not have the opportunity to cross-
examine Dr. Callander. Appeal Br. 10—11. PTO procedure permits
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affidavits and declarations in reexamination proceedings. MPEP § 2258.
Thus, notwithstanding Patent Owner’s objection to Dr. Callander’s
declaration based on its ability to cross-examine him, the PTO permits
declarations to be considered in an ex parte reexamination proceedings.
Here, Patent Owner was not precluded from submitting its own
declaration(s) or evidence to refute or impeach the credibility of Dr.
Callander’s testimony. Indeed, Patent Owner addressed Dr. Callander’s
declaration with their own. Thus, Patent Owner had the opportunity to
demonstrate the lack of probative value of Dr. Callander’s declaration.
Appeal Br. 11—12. As explained in detail below, we considered such
evidence but did not find it persuasively undermined the facts and
conclusions set forth in the Callander declaration.
Therefore, we do not find Patent Owner’s argument against Dr.
Callander’s Declaration persuasive. The declaration was properly
considered by the Examiner and is a part of the record before us.
REJECTIONS OVER YAMAMOTO
Claim 1 is directed to “composition for containers,” comprising 1) a
polyester; 2) a partially aromatic polyamide; 3) an ionic compatibilizer
which is a copolyester containing a metal sulfonate salt; and 4) a cobalt salt.
The ’ 159 patent teaches that a polyester resin can be copolymerized
with the metal sulfonate salt (“ionic compatibilizer”) to form a copolymer.
’159 patent, col. 5,11. 49-52. A preferred polyester is disclosed in the ’159
patent as polyethylene terephthalate (PET) {id. at col. 3,1. 65 to col. 4,1. 1;
col. 8,11. 15—16), a preferred polyamide is MXD6 (poly(m-xylylene
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adipamide) (id. at col. 4,11. 57—58; col. 1,11. 26—29; col. 9, Example 1), and
a preferred metal sulfonate salt is 5-sulfoisophthalic acid (SIPA) (id. at col.
8,11. 38-40). While Patent Owner repeatedly argues the nonobviousness of
a composition comprising PET, MXD6, and SIP A, none of the claims are
reasonably commensurate in scope with this specific combination.
Rejections
The Examiner found that Yamamoto describes a container
composition comprising PET (component 1), MXD6 (component 2), and
SIPA (component 3), but not with a cobalt salt (component 4). Final Rej. 3—
5. However, the Examiner found that cobalt was a known component in
polyester resins used in the manufacture of bottles.
Specifically, the Examiner found that Yuo describes an improved
catalyst composition for the preparation of PET which can be used to make
bottles. Id. at 5. The Examiner found that the catalyst includes an antimony
component, a cobalt component, e.g., cobalt acetate, and an alkali metal
acetate. Id. The Examiner found that Yuo’s catalyst composition not only
increases the reaction rate in the production of PET, but it also improves the
color of the produced product. Id. The Examiner determined it would have
been obvious to one of ordinary skill in the art to have utilized Yuo’s
catalyst in Yamamoto’s composition and article to increase the
polymerization reaction rate and improve the composition’s color. Id. at 5—
6.
The Examiner also found that Kulkami teaches “that the yellow color
of polyester resin has resulted in the wide-spread use of cobalt compounds
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as blue coloring agents in the production process. Blue coloring agents
counteract the yellow color resulting in a neutral bottle color.” Final Rej. 7.
In addition, the Examiner found that Kulkami teaches that cobalt can be
used as an esterification catalyst to shorten the reaction time. Id. The
Examiner found that Kulkami discloses that “[w]hen used to produce
bottles, the polyethylene terephthalate product produced yields a clear bottle
having no haze and having minimal or diminished color (yellow or blue) due
to the use of the premixed cobalt formulation [0011].” Id. Based on these
teachings, the Examiner concluded it would have been obvious to one of
ordinary skill in the art to have included cobalt in Yamamoto’s composition
for the advantages described in Kulkami. Id. at 8.
The Examiner cited Kim for teaching “blends of germanium and
antimony catalyst based PET with nylon, e.g., MXD6 nylon, and a metal
complex, especially a cobalt complex, preferably cobalt octoate in an
amount of 50-300 ppm, surprisingly exhibit neutralization of the green or
yellow color (column 2, lines 15-27).” Id. at 6. The Examiner determined it
would have been obvious to one of ordinary skill in the art at the time of the
invention “to form a composition and article as taught by Yamamoto
comprising PET and a cobalt complex, e.g., cobalt octoate, as taught by Kim
because Kim teaches that addition of a cobalt complex to a PET nylon blend
provides blends with improved color.” Id.
Patent Owner contends that it would not have been obvious to one of
ordinary skill in the art to have included cobalt in Yamamoto’s container
composition. Patent Owner argues that there would have been no
motivation to have used cobalt in Yamamoto because Yamamoto did not
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disclose a concern with the color of its composition (Appeal Br. 13—14),
cobalt would have been expected to be detrimental to the barrier properties,
including gas permeability, of the container (id. at 14), and no reasonable
expectation of success because cobalt, inter alia, would have been expected
to have a negative effect on the container color (id. at 16). Patent Owner
also provides evidence that a composition comprising PET, SIP A, MXD6,
and cobalt had a synergistic effect in reducing the yellowness of the
preforms and bottles made from them. Id. at 5.
Discussion
Reason to combine
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 416, the Supreme Court
wrote that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” To make this determination, the Court explained
it will be necessary ... to look to interrelated teachings of
multiple patents . . . and the background knowledge possessed
by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.
Id. at 418.
In this case, the Examiner found that Yamamoto teaches that its
composition can further comprise “transparent colorants.” Yamamoto, p.
426, col. 1,11. 11—12; Final Rej. 5. The evidence of record establishes that
cobalts salts are known colorants.
Yuo teaches a catalyst comprising a cobalt that improves the
polymerization reaction in the making of poly(ethylene terephthalate) such
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as Yamamoto’s PET copolyester, and also the color of the resulting product.
Yuo, Abstract.
Kulkami also teaches that cobalt improves the color of beverage
bottles:
The problem of a yellow color appearing in the polyester end
product is frequently encountered in the production of bottles.
The yellow color in polyester articles can be attributed to
products of undesirable side reactions of the esterification and
polycondensation reactions, which cause such yellowness. The
yellow color of the polyester resin has resulted in the wide­
spread use of cobalt compounds as blue coloring agents in the
production process. Blue coloring agents counteract the yellow
color, resulting in a neutral bottle color. Cobalt acetate is the
most common substance, and in general sufficiently conceals
the yellow coloration of the resin or of the bottle .... The use
of cobalt as a blue coloring agent is described in detail in the
specification US 5,623,047 [Yuo].
Kulkami 13.
Kim teaches:
It has been even further surprisingly found that: the gradual
addition of a sufficient quantity of a metal complex, especially
a cobalt complex, preferably cobalt oetoate, to blends of MXD6
and PET from a catalyst system based on germanium and
antimony. or PEI' with virtually no residual cobalt andcJ ' J
manganese, i.e., to a/g - PET blends, causes the yellowish color
of the blend to be neutralized.
Kim, col. 4,11. 21—29.
In sum, the preferred blends of MXD6 nylon,
antimony/germanium based or virtually no residual manganese
and cobalt PET (such PET shall hereinafter be called “a/g —
PET”) and cobalt oetoate (100-150 ppm) exhibit the following
novel and nonobvious properties (which thereby render the
blends novel and nonobvious): (i) neutralization of green or
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yello w color, he., improved clarity and neutralized color; and
(ii) shortened incubation (aging) period.
Id. at col. 4,11. 44—52.
Based on these teachings, the Examiner had adequate evidence to
conclude that it would have been obvious to one of ordinary skill in the art to
have included a cobalt colorant in Yamamoto’s composition.
Turner declaration regarding colorants
Patent Owner provided a declaration by Dr. Turner which Patent
Owner asserts establishes “that ‘transparent colorants’ would be understood
by the person skilled in the art to refer to dyes and toners, and not cobalt, so
the person skilled in the art would not understand Yamamoto as providing
any suggestion to include cobalt as a coloring agent. Turner Deck (Exhibit
B), 1148-50.” Appeal Br. 14.
We have reviewed the paragraphs in the Turner declaration referenced
by Patent Owner. In paragraph 48, Dr. Turner states a person of ordinary
skill in the art “would understand that the ‘transparent colorants’ refers to
dyes and toners; therefore, Yamamoto teaches the use of dyes or toners,
rather than cobalt, to adjust the color of the composition.” Turner Deck
148. Dr. Turner did not provide an adequate explanation as to why cobalt is
not a “transparent colorant” as that term is utilized by Yamamoto. In
paragraph 49, Dr. Turner further states that cobalt is not a “transparent
colorant,” but gives no factual basis for this statement. Requester’s
Declarant Dr. Callander, on the other hand, provided evidence in his
declaration (by referring to documentary evidence) that cobalt acetate is a
transparent colorant which is a preferred additive in the polyester bottle
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industry. Callander Decl. H 35—36. The weight of the evidence thus
supports the Examiner’s conclusion that Yamamoto’s suggestion to add
“transparent colorants” to its composition would have reasonably suggested
the addition of cobalt for its coloring property.
Patent Owner argues that Yamamoto has no concern with the color of its
composition
Patent Owner contends that Yamamoto provides no discussion
regarding the color characteristics of the PET used in its examples, and no
suggestion it is unacceptable in any way. Appeal Br. 14.
Despite this assertion, Dr. Turner acknowledges that PET “is made
through a polymerization process that results in the composition having a
mild yellow color.” Turner Decl. 133. Dr. Callander’s testimony is
consistent with Dr. Turner’s. Callander Decl. 118. Dr. Callander referred
to background discussion in the ’159 patent, Dr. Turner’s own testimony,
and a prior art publication by Stoll, each which support his conclusion that
“[o]ne of ordinary skill knows that blends of PET and MXD6, such as those
disclosed in Yamamoto, suffer from an inherent yellowing problem due to
the use of the partially aromatic polyamide.” Callander 118. Dr. Callander
further cited Kim (H 27, 29, 32) and Kulkami (134) to support his opinion.
In addition to the yellowing associated with PET polymerization, both
Drs. Turner and Callander testify that a yellow color results from the
combination of PET and a polyamide. Dr. Turner stated that “it was well-
known in the art, at least since 1993, that the combination of PET and a
polyamide in a melt often separately results in a yellow color from the
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condensation between amino end groups and acetaldehyde, a by-product of
PET polymerization.” Turner Decl. 134. Dr. Turner stated the
“PET/MXD6 blend creates a separate and more intense yellow color as
compared to the milder yellow tone yielded in a typical PET polymerization
process.” Id. 1 35. Dr. Callander concurred with Dr. Turner that the use of
partially aromatic polyamides would be a second source of yellowing.
Callander Decl. 118. Dr. Callander referred to the Background section of
the ’159 patent for this teaching. Id., citing ’159 patent, col. 1,11. 35—37
(“However, the use of partially aromatic polyamides as the low gas
permeable polymer gives an increase in the yellowness of the resultant
container.”)
Although both Drs. Turner and Callander testified that a PET
composition made with MDX6 would exhibit yellowing, Yamamoto does
not describe its polymer as yellow, but rather characterizes it as transparent.
Yamamoto, p. 427, col. 2, (“transparency of the hollow molded article of the
present invention was markedly increased”). However, as mentioned above,
Dr. Callander stated the ordinary skilled artisan would have known that
Yamamoto’s compositions would inherently have been yellow. Callander
Decl. 118.
Dr. Turner stated that Yamamoto does describe its polymer as yellow
(Turner Decl. 43, 44), but did not explain why Yamamoto’s composition
would not be yellow in view of his testimony that both PET polymerization
and PET’s combination with a polyamide would result in a yellow color.
We do not see Yamamoto’s silence on the yellow color necessarily
inconsistent because Dr. Turner stated that, when MXD6 is added to PET,
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the resulting container is “often . . . very hazy, or even opaque.” Id. 130.
Thus, in this context, Yamamoto’s teaching that the “transparency of the
hollow molded article of the present invention was markedly increased”
(Yamamoto, p. 427, col. 2) would reasonably be understood to address the
haze observed in a polymer of PET and MXD6, and not to necessarily
exclude the composition from having a yellow tint or color.
Nonetheless, because Yamamoto expressly teaches the addition of
colorants, and cobalt is a colorant, even if Yamamoto’s composition is not
yellow, there would have still have been reason to add cobalt to the PET
composition for its blue coloring properties.
Patent Owner argues that cobalt would not reduce the yellow color
associated with polyamide reaction but would rather produce an
undesirable color
Dr. Turner stated that “none of the references cited in the Office
Action teach that cobalt can reduce the distinct and more intense yellowing
that results from adding MXD6, or another polyamide, to the composition.”
Turner Deck 147. Dr. Turner also argues that “Kim specifically notes that,
with commercial PET resins, the addition of cobalt actually causes the color
to be even more pronounced or to darken. (See 3:35-39.).” Id.
Dr. Turner’s argument does not persuade us that a skilled worker
would not have utilized cobalt in Yamamoto’s composition. Kim provides
express evidence that cobalt was in fact utilized with PET and MXD6 blend,
the same blend which is covered by the claims. Kim’s disclosure as a whole
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does not teach that cobalt necessarily had a negative impact on color. Kim
teaches:
The present invention provides blends of germanium and
antimony catalyst based PET and/or PBT (or PET and/or PBT
containing virtually no residual cobalt and manganese), nylon,
e.g., MXD6 nylon, and, a metal complex, especially a cobalt
complex, preferably cobalt octoate. Such blends surprisingly
exhibit neutralization of the green or yellow color and/or
shortening of the incubation or aging period.
Kim, col. 2,11. 15—22 (emphasis added). While Kim mentions that dark
greenish color can result when a certain PET resin is utilized with a catalyst
that comprises cobalt, Kim further teaches that the blue color associated with
the later addition of a cobalt complex, such as cobalt octoate, “begins to
dominate the color of the blend” neutralizing the yellow or green color.
Kim, col. 3,1. 26 to col. 4,1. 51. Thus, in contrast to Dr. Turner’s statements
and the arguments on page 20 of the Appeal Brief, Kim teaches that the
green or yellow color is neutralized in the composition comprising PET,
MXD6, and cobalt — the same components which are recited in claim 1 of
the ’159 patent. See also 2016-001727 Decision 16—18 with a more detailed
discussion of Kim, addressing arguments not made in this reexamination
proceeding. See also Callander Deck Tflf 23—26, discussing why Kim’s PET
is not fairly representative of all polyester and PET resins.
Patent Owner further argues that the yellow color observed in
Yamamoto is observed because of “a chemical reaction between components
of the blend, i.e., a condensation reaction between amino end groups of the
polyamide and acetaldehyde (a byproduct of PET polymerization). Turner
Deck, H 34-37.” Appeal Br. 18. On the other hand, Patent Owner contends
that, in Yuo, the yellow color arise from PET production and “specifically,
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from impurities in the monomers and degradation reactions in the high-
temperature melt phase polycondensation process. Turner Decl., ]f33; Yuo at
col. 4, lines 25-21.” Id. Consequently, Patent Owner argues it would not be
expected that Yuo’s catalyst comprising cobalt would improve Yamamoto’s
composition comprising PET and MXD6, where any yellowing would be a
result of the reaction between PET and the polyamide. Id. at 18—19. Patent
Owner makes this argument for Kulkami. Id. at 22—23.
We recognize that the two chemical reactions may be different.
However, Patent Owner, other than identifying these differences, has not
provided an adequate scientific or factual basis as to why cobalt would
improve yellowing in one reaction and not the other. To the contrary, as
already discussed, the Kim patent describes the use of cobalt to improve the
color of a composition comprising PET and the polyamide MXD6. Turner
147; Kim, col. 3,1. 26 to col. 4,1. 51. Thus, despite Patent Owner’s
contention Yuo only addresses the milder yellow that arises from PET
production (Appeal Br. 18), Kim teaches that a cobalt complex can remedy
the yellow associated with the reaction PET and MDX6. The preponderance
of the evidence of record therefore does not support Patent Owner’s
arguments that the addition of cobalt to a blend of PET and MXD6 would be
expected to be detrimental to the composition color and unexpected to
improve its color.
Patent Owner argues that cobalt would have been expected to be
detrimental to the gas permeability of the PET container
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Patent Owner contends that cobalt would have been expected to be
detrimental to the barrier properties and increase the gas permeability of the
container. Appeal Br. 14, 16. To support this argument, Patent Owner
relied on testimony by Dr. Scantlebury. Dr. Scantlebury stated in his
declaration:
Permeation of a gas through a polyester bottle depends on the
degree of crystallinity and the orientation of the amorphous
regions. A gas cannot permeate through the crystalline regions
and will favor the amorphous regions with the least orientation.
The addition of compounds, such as cobalt salts, disrupt the
structure to accommodate the compound, leading to a slightly
less ordered and less crystalline bottle. The addition of cobalt
salt compounds will therefore increase the permeation of the
gas.
Scantlebury Decl. 1 8. Dr. Scantlebury further cited experiments in the ’159
patent that he testified showed that the “larger cobalt compound has the
higher permeability because of the disruption in the crystalline structure of
the polyester. Id. 19.
Dr. Scantlebury’s testimony is inconsistent with his own reported
work. Dr. Callander testified about the work described in Scantlebury ’267.2
Scantlebury ’267 was published on August 7, 2003 which is before the
priority date of the ’159 patent. Dr. Callander stated that Scantlebury ’267
“provides examples of 0.59 L polyester bottles containing 5% by weight
MXD6 6007 with 0.05 wt-% (500 ppm) cobalt octoate. These bottles
achieved an oxygen permeation rate of 0.003 cc.cm.nr2.atm"'.day"1.’’
Callander Decl. 141. After disclosing the corresponding oxygen permeation
2 Scantlebury et al., WO 03/064267 A2, published Aug. 7, 2003
(“Scantlebury ’267”).
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rate in the ’159 patent, Dr. Callander stated that the “increased oxygen
scavenging observed in Liu ’159 is the expected result of following the
teachings of Yamamoto in view of Kim, Kulkami or Yuo, and Liu ’ 159’s
compositions achieve no improvement in oxygen permeation over the prior
art.” Id.
Scantlebury ’267 discloses that MXD6 is an oxygen scavenging
compound. Scantlebury ’267, p. 9. Scantlebury ’267, consistent with Yuo’s
teaching of a catalyst comprising cobalt, discloses that “a transition metal
catalyst, typically a cobalt salt, is used in these active oxygen scavenging
systems.” Id. As indicated by Dr. Callander (at H 41, 42), Table 6 of
Scantlebury ’267 shows that addition of cobalt octoate to a PET/MXD6
blend decreased oxygen permeation from 0.083 (Sample 13) to 0.003
(Sample 14). Id. atp. 17. However, Scantlebury ’267 also reports that “the
combination of A1 powder and MXD6 containing cobalt had a synergistic
effect on the CO2 permeation of the bottles.” Id. Consequently, the skilled
worker would understand that cobalt decreases oxygen permeation, and
would have learned how to minimize cobalt’s detrimental effects of CO2
permeation under certain conditions. In sum, Dr. Scantlebury’s statement
that cobalt would “increase the permeation of the gas” (Scantlebury Deck 1
8) is not supported by a preponderance of the evidence and is inconsistent
with the data in his own patent document.
SECONDARY CONSIDERATIONS
Patent Owner contends that even if a prima facie case of obviousness
were to be made over Yamamoto in view of Yuo, Kim or Kulkami, several
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objective indicia support a finding that the claims of the ’159 patent would
not have been obvious.
Again, factual considerations that underlie the obviousness inquiry
include the scope and content of the prior art, the differences between the
prior art and the claimed invention, the level of ordinary skill in the art, and
any relevant secondary considerations. Graham v. John Deere Co., 383 U.S.
1, 17—18 (1966). Relevant secondary considerations include commercial
success, long-felt but unsolved needs, failure of others, praise, and
unexpected results. KSR, 550 U.S. at 406; Institut Pasteur & Universite
Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1344 (Fed. Cir. 2013); In
re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Secondary considerations are
“not just a cumulative or confirmatory part of the obviousness calculus but
constitute [] independent evidence of nonobviousness . . . [and] enable [] the
court to avert the trap of hindsight.” Leo Pharm. Prods., Ltd. v. Rea, 726
F.3d 1346, 1358 (Fed. Cir. 2013) (internal quotation marks and citations
omitted). “This objective evidence must be ‘considered as part of all the
evidence, not just when the decisionmaker remains in doubt after reviewing
the art.’” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (internal citations omitted).
Long felt but unsolved need
Patent Owner contends that the claimed subject matter in ’ 159 patent
“fulfilled a long-felt need that was present as of August 2003 for a cost-
effective, monolayer PET container possessing active and passive barrier
properties and improved color and clarity characteristics.” Appeal Br. 24.
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Dr. Turner stated that, prior to August 2003, “none of the single layer active
barrier products on the market provided a suitable combination of cost,
clarity, color, and gas barrier properties to meet the requirements of the
packaging industry.” Turner Deck 1 53. Dr. Turner stated that the long-felt
need was satisfied by the inventions claimed in the ’159 patent of a
monolayer PET container. Id. | 52.
The claims are not limited to monolayer containers made of PET.
Independent claim 1 is directed to a composition comprising, inter alia, a
polyester and partially aromatic polyamide. Independent claim 13 is an
article, which is preform or container, comprising the same composition as
claim 1. Claim 13 does not require the article to be a monolayer nor to be
made of PET. The claims therefore are not restricted to the composition or
monolayer structure said by Dr. Turner to have fulfilled the long-felt need.
Thus, even if a long-felt need was met by monolayer containers comprising
PET, the claims are broader and include embodiments which have not met
this need. Consequently, the asserted solution to the problem is not
“commensurate in scope with the degree of protection sought by the claimed
subject matter” (In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) because
it includes embodiments for which a long-felt need has not been established.
Indeed, we have not been directed to a claim which is limited to PET or a
container made of a monolayer of PET.
Patent Owner has also not provided adequate evidence that the
claimed invention solved a long-felt need. Leaversuch discloses that one of
the problems for making barrier PET bottles is the price of the material.
Three years ago, hopes for barrier PET beer bottles were high,
but success has proved more difficult than anticipated. In fact,
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less than 0.1% of the 250 billion beer containers used
worldwide in 2002 were in PET. Economics, not performance,
were PET’s biggest deficit.
Leaversuch, INVISTA09153514.
Leaversuch states that “sources concede that few practical ‘monolayer
solutions’ are as yet on the horizon, mainly because suitable materials are
high priced.” Id. at fNVISTA09153516. Leaversuch describes barrier
coating technologies which “use monolayer PET bottles, which helps their
economics.” Id. at INVISTA09153518.
Thus, Leaversuch indicates that the deficiency in the prior art is the
lack of a low-cost material that can be used as a monolayer for a PET
container. Patent Owner did not provide sufficient evidence that the claimed
composition solved the “economic” issue. Specifically, Patent Owner did
not provide evidence that its product is a low-cost material that solved the
problem of the “high priced” materials discussed by Leaversuch.
In addition to this, Leaversuch provides evidence of an alternative—a
barrier coated monolayer—which Leaversuch stated helped the economic
issue. Id. at INVISTA09153518. It is not clear from this record whether the
alternative barrier material solved the problem posed by Patent Owner,
indicating that there was no unsolved need because alternatives existed.
Commercial Success
Commercial success is another indicia of non-obviousness. Patent
Owner argues that the “inventions claimed in the ’159 patent fulfilled this
long felt need with a commercially successful embodiment, marketed as
PolyShield® resin.” Appeal Br. 25. As evidence of this, Patent Owner
provided a declaration by Frank W. Embs, Director of New Business
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Development at Auriga Polymers, Inc., and responsible for the marketing
and sale of PolyShield. Embs Deck 11. Mr. Embs explained:
Poly Shield® resin is a PET-based, monolayer oxygen ingress
and carbonation barrier resin. When blended with MXD6
nylon, PolyShield® resin provides an excellent oxygen ingress
barrier, and an excellent carbonation barrier.
Id. 13.
Mr. Embs testified about the sale of PolyShield in the beer marker in
the European market:
INVISTA in 2007 sold 7000 metric tons of PolyShield® resin
for the beer markets in Western Europe, the Ukraine, Russia,
and Romania, calculated to be about a 20% market share for the
enhanced barrier beer market in this region. Two years later, in
2009, INVISTA sold 18,000 metric tons of PolyShield® resin
for the beer markets in these same countries. Based on my
calculations, this equates to roughly a 34% market share for the
enhanced barrier beer market, indicating a significant growth in
market share for this product after just two years.
Id. 13.3
Mr. Embs also described the U.S market, but did not provide sales
data. Id. 14.
Evidence of commercial success, or other secondary
considerations, is only significant if there is a nexus between
the claimed invention and the commercial success. As we
explained in J.T. Eaton & Co. v. Atlantic Paste & Glue Co.,
106 F.3d 1563 (Fed. Cir. 1997), “[w]hen a patentee can
demonstrate commercial success, usually shown by significant
sales in a relevant market, and that the successful product is the
invention disclosed and claimed in the patent, it is presumed
that the commercial success is due to the patented invention.”
Id. at 1571; see also Brown & Williamson, 229 F.3d at 1130
3 There are two paragraphs labeled “3.” This is the second paragraph
labeled as paragraph “3.”
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(stating the presumption that commercial success is due to the
patented invention applies “if the marketed product embodies
the claimed features, and is coextensive with them.”). Thus, if
the commercial success is due to an unclaimed feature of the
device, the commercial success is irrelevant. So too if the
feature that creates the commercial success was known in the
prior art, the success is not pertinent.
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1311—1312 (Fed.
Cir. 2006).
There are several issues to consider. First, we note that the product
sold by Patent Owner is not the invention claimed in the ’ 159 patent. The
claimed composition requires a partially aromatic polyamide, but a
polyamide is not present in the product, PolyShield, relied upon for
commercial success. Embs Decl. 13. Thus, we must consider whether the
sales of a product not embodied by the claim, but used to produce a
composition within the scope of the claim, is suitable to establish
commercial success of the claimed invention.
Next, we must consider whether the reported sales of PolyShield is
due to the patented invention rather than a feature which is readily available
in the prior art. Ormco Corp., 463 F.3d at 1311—1312. “[I]f the feature that
creates the commercial success was known in the prior art, the success is not
pertinent.”); J.T. Eaton, 106 F.3d at 1571 (“[T]he asserted commercial
success of the product must be due to the merits of the claimed invention
beyond what was readily available in the prior art.”)
Claim 1 is directed to composition comprising 1) a polyester, 2) a
partially aromatic polyamide, 3) a metal sulfonate salt (“ionic
compatibilizer”), and 4) a cobalt salt. Claim 13 comprises the same
composition. Patent Owner argues that PolyShield is “a commercially
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successful embodiment” (Appeal Br. 25), but did not direct us to evidence
that all four components are present in PolyShield. To the contrary, Patent
Owner acknowledges that PolyShield lacks the partially aromatic polyamide
(Embs Deck 13).
Nonetheless, we shall not discount the sales simply because the
commercial success is not based on the sale of a product embodied by the
claim, but rather is based on the use of another product to make a
composition embodied by the claim. In other words, because the success is
based on Polyshield’s use said by Patent Owner to make a product embodied
by the claim, it should not be counted against Patent Owner that it is the
container manufacturer that makes the product, rather than Patent Owner.
Next, it must be determined whether the sales of PolyShield are due to
the merits of the claimed invention. J.T. Eaton, 106 F.3d at 1571. We focus
on MXD6 because that is one of the components missing from PolyShield.
Embs Deck H 2, 3.
MXD6 was well-known in the prior art to be an advantageous
component of PET containers. Specifically, MXD6 is described in
Leaversuch as a commercially available barrier resin used in PET bottle.
Leaversuch, INVISTA09153516—17. Kim teaches that “blends of
polyethylene terephthalate (PET) and nylon (e.g., MXD6 nylon) with and
without cobalt provide oxygen barrier properties superior to most known
barrier materials (almost zero permeation).” Kim, col. 1,11. 15—19.
Yamamoto describes the advantages of a composition comprising PET, a
metal sulfonate salt, and the polyamide MXD6. Yamamoto’s PET container
said to have excellent barrier properties contains MXD6 and the metal
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sulfonate salt. Yamamoto, pgs. 423, 427. In other words, MXD6 is
described in three publications of record as being advantageous when used
in PET containers. For this reason, it cannot be discerned whether the sales
of PolyShield are due to 1) the benefits of MXD6 or 2) the benefits of the
combination of all four components recited in claims 1 and 13.
In fact, the evidence supports a nexus between the sales and the
benefits of MXD6. In Exhibit 72, provided by Patent Owner in the ex parte
reexamination of the ’216 patent, a description of PolyShield and its gas
barrier properties when used to make containers are mentioned — consistent
with the known properties of MXD6 to improve PET’s gas barrier properties
(see above discussion of Leaversuch, Kim, Yamamoto). Exhibit 72, p. 7 (in
the Ex parte Reexamination of the ’216 patent). Exhibit 72 also discloses
that the product has “outstanding clarity for tinted bottles.” Exhibit 72, p. 7
(emphasis omitted). Yamamoto characterizes its product as “excellent in
terms of transparency.” Yamamoto, p. 428.
Consequently, it cannot be concluded from the evidence before us that
the sales are due to the merits of the invention.
Moreover, Patent Owner has not established what else is added to the
container composition by the bottle manufacturer who combines PolyShield
and MXD6. Consequently, there may be other unclaimed ingredients
present in the blend which are responsible for the alleged commercial
success.
Unexpected results
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Patent Owner contends that the specific components recited in the
claims exhibit a surprising and unexpected synergistic decrease in
yellowness that is more than the additive effects of each component’s
individual effect on color. Appeal Br. 27.
A showing of “unexpected results” can be used to demonstrate the
non-obviousness of a claimed invention. Soni, 54 F.3d at 750 (“One way for
a patent applicant to rebut a prima facie case of obviousness is to make a
showing of ‘unexpected results,’ i.e., to show that the claimed invention
exhibits some superior property or advantage that a person of ordinary skill
in the relevant art would have found surprising or unexpected.”). These
results must be “surprising or unexpected” to one of ordinary skill in the art
when comparted to closest prior art. Soni, 54 F.3d at 750. Unexpected
results must also be “commensurate in scope with the degree of protection
sought by the claimed subject matter.” Harris, 409 F.3d at 1344.
According to Patent Owner, the combination of the recited cobalt salt
component and the recited metal sulfonate salt component (Run No. 8) led to
a decrease in yellowness that exceeds the effect of cobalt salt alone plus the
effect of metal sulfonate salt alone (Run No. 4, 6) when used in a
composition comprising a polyester (PET) and polyamide (MXD6). Appeal
Br. 27—28; ’159 patent, col. 8,11. 15—16. Patent Owner provided a summary
of this data as described in the ’159 patent. The summary is reproduced
below:
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Table I: Adapted from Table 3 of the ‘159 patent
N&Ac
NaAe
Yellowness is measured in the b* scale. A positive number indicates
a yellow color and a negative number indicates a blue color. Id. at 27.
According to Dr. Turner, measurements were made on a preform because it
is the most accurate measure of b* because the preform does not have the
same influence of stretch blow molding on the color and haze as the bottle
sidewalls. Turner Decl. 1 59.
Table 1 shows that when cobalt alone was added to the blend of
polyester and MXD6, the preform b* value was 4.2 (Run 4), an
improvement of—15.1 over the control (Run 2). When SIPA alone was
employed (Run 6), an improvement of—1.8 over the control (Run 2) was
observed. Cobalt and SIPA together would be expected to show an
improvement of—16.9 if additive. However, when the actual experiment
was conducted (Run 8), the value was—25.9, a difference of—9.0.
In the Request for Reexamination, the Requester provided the
declaration by Dr. Callander in which he discussed evidence, submitted in
the European Patent Office Proceeding of the counterpart European
application, that Runs 6 and 8 containing SIPA had sodium acetate
Rim Net.
(front ‘159
Patent >
Polyester MXD6 Cwba.lt SIPA PreformIV
Ah* (as
compared
with Ren 2
Expected
(Additive)
Alfe
2 X X 19.3
4 X X X 4,2 -15.1
6 X X X 17,5 -l.S
£ X X X X -6.6
C
h -16.9
Difference Between Expected Additive
Effect and Actual Effect
-9.0
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(“NaAc”) present, while the control and cobalt runs, alone, did not.
Callander Decl. ^fl[ 45—52. Patent Owner has not challenged these facts. Dr.
Turner discussed the example in his declaration of Aug. 29, 2015, but did
not address Dr. Callander’s points. The presence of sodium acetate in these
runs were not disclosed in the ’159 patent. Dr. Callander testified in his
declaration that the “use of sodium acetate in the working examples
[comprising SIP A], but not the controls is significant because sodium acetate
is known to interact with cobalt salts to achieve a more intense blue color as
discussed in my point 62.” Callander Decl. 145. Dr. Callander thus
attributed the enhanced blue color observed in the SIPA and cobalt run to
result from the addition of sodium acetate. Id. 1 61.
Because sodium acetate was included in some runs, but not others, Dr.
Callander testified that the experiments in the ’159 patent provided as
evidence of unexpected synergy failed to follow a proper experimental
design for demonstrating synergy. Id. 1 52. Specifically, Dr. Callander
stated that an additional independent variable, namely sodium acetate, was
present in Runs 6 and 8. Id. (see Table F.)
Dr. Callander explained that the flaw could be addressed by
conducting all runs in the presence of sodium acetate or all runs in the
absence of sodium acetate. Id. 1 53. When these experiments were
performed, Dr. Callander reported that no synergy was found. Id. ^fl[ 54, 57
(sodium acetate), ^fl[ 55, 58 (no sodium acetate.) Dr. Callander also
described results of a third set of experiments submitted during the European
Opposition Proceedings which showed no synergy in the absence of sodium
acetate. Id. 1 59. Patent Owner repeated the experiments, but once again
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utilized sodium acetate in the SIPA only runs. Id. 1 60. Based on a
comparison of all the data, Dr. Callander once again concluded that the
increase blue shift in color observed in Patent Owner’s experiments “is
caused by the use of sodium acetate.” Id. Dr. Callander also provided
scientific evidence of the mechanism as to how sodium acetate enhances
cobalt’s blue.4 Id. 1 62.
Patent Owner challenged the accuracy and reliability of Dr.
Callander’s experiments. Appeal Br. 26. Dr. Turner, in his declaration filed
in the ’216 patent, argued that the data for the sodium acetate experiment
(Callander Decl. 1 52) was flawed because the values reported in it were
different than the values in the same experiments in the ’216 patent. Turner
Decl. in ’216 patent | 80. However, Dr. Turner did not explain why such a
difference made the experiments unreliable when all the run’s in Dr.
Callander’s experiments were conducted under the same conditions with
same materials, and thus internally consistent.
Table A
During the prosecution of the application that led to the ’159 patent,
Applicants attempted to establish nonobviousness by establishing that the
data in Table 7 of the patent exhibited a synergistic effect. The Examiner
found the data unpersuasive because there was no comparison to a trial run
4 “[T]he addition of sodium acetate to cobalt salts caused the cobalt to
recoordinate from a pale red or purple octahedral complex to an intense blue
tetrahedral complex, thus explaining why Liu ’ 159’s working examples with
sodium acetate are more blue than the controls without sodium acetate.”
Callander Decl. 1 62.
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without cobalt. Remarks 7 (filed on Dec. 15, 2010 in the prosecution of the
application which led to the ’159 patent). In response, Applicants presented
additional data summarized in Table A which was said to demonstrate
synergy and unexpected results. Id. at 8. The Examiner subsequently
mailed a Notice of Allowance (Dec. 30, 2010), although no written
comments were provided to explain the reason for allowing the claims.
Patent Owner contends that the results in Table A establish synergism.
Appeal Br. 30-31.
The data in Table A, and as explained by Patent Owner in the Appeal
Brief, does not persuade us that unexpected results have been established for
the full scope of the claim. First, Patent Owner admitted in the Appeal Brief
that the “inventor, Dr. Liu, testified at trial that he used 500 ppm sodium
acetate as a buffer in all runs containing SIP A resin.” Id. at 31. The runs in
Table A purporting to show synergy contained SIP A. Id. Consequently, Dr.
Callander’s statements about the flaw in the experimental design and the
expected result that sodium acetate would produce the enhanced blue color
are equally applicable here. Second, the experiments reported in Table 7 of
the ’159 patent utilized resins A and S2, which appear to be PET resins.
’159 patent, col. 8,11. 15—55; col. 10,11. 35—56. These values correspond to
the data summarized in Table A. None of the claims at issue in this appeal
are limited to PET. Patent Owner has not explained nor argued how the
results with PET would have been reasonably extended to other
embodiments that fall within the scope of the claim, particularly other
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polyesters and partially aromatic polyamides. Unexpected results must be
commensurate with the scope of the claim.5 Harris, 409 F.3d at 1344.
Bayer declarations
Patent Owner contends that the use of sodium acetate as a buffer in
the compositions containing SIP A was not the reason for the synergy seen in
the ’159 patent examples. Appeal Br. 32. To support this position, Patent
Owner cited the 2012 Declaration of Dr. Uwe Bayer as showing that the
presence of sodium acetate has did not have a significant effect on the color
of the PET/MXD6 blend. Id.
This argument is not persuasive. As admitted by Patent Owner, Dr.
Bayer’s studies did not include a cobalt salt. Id. Dr. Callander explained
that the blue color is produced by an interaction between the sodium acetate
5 (“Even assuming that the results were unexpected, Harris needed to show
results covering the scope of the claimed range. Alternatively Harris needed
to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“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.’”) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)); (Finding the claim scope broad, and the
“probative value of appellants’ evidence . . . quite narrow,” the court in In re
Clemens, 622 F.2d 1029, 1036 (CCPA 1980) concluded this “is not a case in
which the probative value of a narrow range of data can be reasonably
extended to prove the unobviousness of a broader claimed range.” Cf. In re
Kollman, 595 F.2d 48, 56 (CCPA 1979) (where it was held that the
nonobviousness of a broader claimed range was proven by a narrower range
of data, when one having ordinary skill in the art could “ascertain a trend in
the exemplified data which would allow him to reasonably extend the
probative value thereof.”).
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and cobalt salt. Callander Decl. 1 62 (see Fig. 2). Dr. Callander’s statement
about the role of sodium acetate in producing the observed intensified blue
color was in the context of a composition containing cobalt. Consequently,
Dr. Bayer’s experiments, in which cobalt was absent, have no relevance to
Dr. Callander’s discussion of the reason why sodium acetate would enhance
the blue color observed in PET/MDX6 compositions.
A second declaration by Dr. Bayer was provided by Patent Owner.
Bayer Declaration dated Nov. 6, 2013 (“Bayer 2013 Decl.”). In this
declaration, Dr. Bayer describes experiments involving compositions having
PET, SIP A, MXD6, and cobalt. Bayer 2013 Decl. Tflf 5, 7. The experiments
were performed in the presence and absence of sodium acetate to determine
its effect on b*. Id. ^5. In addition, Dr. Bayer controlled for the amounts of
diethylene glycol — adding it to the compositions with sodium acetate so that
its concentration was the same as with compositions without sodium
acetate.6 M || 5, 6.
Dr. Bayer calculated the b* values for two different cobalt salts in the
presence and absence of sodium acetate. Id. at p. 4. The data showed
synergy was observed in the presence and absence of sodium acetate, with
more synergy observed in the presence of sodium acetate consistent with Dr.
Callander’s explanation of how sodium acetate interacts with cobalt to form
a bluer color.
Dr. Bayer’s data showing synergy in the presence of cobalt is not
consistent with Dr. Callander’s results which showed no synergy when
6 DEG is a by-product formed during the synthesis of ethylene glycol based
polyesters. Callander Decl. 170. Sodium acetate inhibits its formation. Id.
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cobalt was added to PET, SIP A, and MXD6, with or without the addition of
sodium acetate. In our opinion, this apparent conflict indicates the
importance of the various parameters under which the experimental trials
were conducted in whether synergy is observed. For example, it appears
that the cobalt salt utilized in the experiments differed, i.e., the ’159 patent
discloses cobalt octoate (at col. 8,1. 59), while Dr. Bayer used cobalt
methane sulfonate and cobalt stearate. Dr. Bayer utilized a commercial PET
resin (Bayer 2013 Decl. 17), while the inventors prepared their own (’159
patent, col. 8,11. 15—55).
The claims, however, are not limited to or reasonably commensurate
in scope with a specific polyester or cobalt salt. The claims are also
unrestricted as the metal sulfonate salt and the partially aromatic polyamide.
Thus, while Dr. Bayer may have established synergy under one set of
conditions utilizing a very specific PET resin, partially aromatic polyamide
(MXD6), metal sulfonate salt (SIPA), and a cobalt salt (cobalt methane and
cobalt stearate), Dr. Bayer did not demonstrate that such result would be
indicative of other embodiments within the scope of the claim using
different polyesters, polyamides, metal sulfonates, and cobalt salts.
Unexpected results must be commensurate in scope with the claim and all its
limitations.
Sodium acetate
Based on the undisclosed presence of sodium acetate in trial runs
reported in the ’159 patent, Dr. Callander attempted to cast doubt on Patent
Owner’s assertions that the claimed invention showed synergy. We have
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considered these arguments, as discussed above, and found them largely
persuasive. Patent Owner contends that Dr. Callander’s analysis is flawed.
To further support this position, Patent Owner relied on arguments made in
Dr. Turner’s declaration filed in the ’216 patent reexamination (“Turner ’216
Decl.”). Appeal Br. 34.
First, Dr. Turner addressed experiments performed by Yuo. Turner
’216 Decl. 78—79. Dr. Turner’s point appears to be that, even if sodium
acetate could affect yellowness of the preform, “such an effect would not be
sufficient to negate the synergy demonstrated in the ’216 patent.” Id. 178.
Dr. Turner argues that the differences in color caused by the addition of
sodium acetate in Yuo were within the range of experimental error. Id.
We have considered this argument, but do not find it persuasive. Dr.
Callander’s position, which is supported by evidence, is that the sodium
acetate enhances the cobalt’s contribution to the desired blue color of the
preform. Dr. Turner’s statement about sodium acetate “negating]” synergy
is not consistent with Dr. Callander’s fact-based argument that the sodium
acetate would make it appear that synergy was observed because of its
ability to promote cobalt’s blue color. Callander Decl. 1 62. Dr. Turner’s
statements about the minimal effects of sodium acetate, presumably
referring to its effect in the presence of cobalt (Turner ’216 Decl. 178), even
if true, does not undermine the veracity of Dr. Callander’s own experiments
and, as discussed already, indicates that the experimental parameters
influence whether synergy is observed or not. As a result, we are even more
convinced that whatever showing of unexpected results was established by
the inventors (Appeal Br. 34), it is not coextensive with the full scope of the
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claim because the rejected claim is directed to a genus of polyesters,
polyamides, sulfonate salts, and cobalt salts, but the evidence in the ’159
patent is only for a specific polyester resin, a specific polyamide, and
specific sulfonate salt, namely PET, MXD6, and SIP A.
Dr. Turner also disagrees with Dr. Callander’s opinion, based on
publications by Proll and Cotton & Wilkinson (Callander Decl. 1 62), that
sodium acetate and cobalt would impact color.
To begin, we note that Dr. Callander cited specific data in the cited
publications and statements for his opinion that “one of ordinary skill, knew,
at least as early as” Proll’s publication and Cotton & Wilkinson’s
publication that “the addition of sodium acetate to cobalt salts caused the
cobalt to recoordinate from a pale red or purple octahedral complex to an
intense blue tetrahedral complex, thus explaining why Liu T59's working
examples with sodium acetate are more blue than the controls without
sodium acetate.” Id. 1 62.
Dr. Turner attempts to undermine this opinion by arguing that the
publication experiments were performed at room temperature, while the
experiments performed in the ’216 patent (same as the ’159 patent
disclosure) were done at higher temperatures. Turner ’216 Decl. 1 89. Dr.
Turner states that “[i]n my experience, the effect sodium acetate would have
on color, if any, would not be expected to be the same in copolyester
compositions subjected to elevated temperatures as (where the sodium
acetate is quickly vaporized) observed in solution at room temperature.” Id.
However, Dr. Turner did not substantiate that all the sodium acetate would
be vaporized and absent in the compositions of the ’159 patent. We simply
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find Dr. Callander’s testimony on this point more credible than Dr. Turner’s
because Dr. Callander supports his opinion with verifiable facts from the
cited Proll and Cotton & Wilkinson’s publication, while Dr. Turner’s
opinion appears to be speculative (e.g., in paragraph 90, Dr. Turner states
that MXD6 would affect the interaction between cobalt and acetate, but does
not provide a factual or scientific basis for this assertion (see Appeal Br.
35)).
NaSIPA
Patent Owner contends that Dr. Callander’s experiments are erroneous
because “runs wherein the studied compositions contained SIP A, without
including a buffer, have high and uncontrolled diethylene glycol (DEG)
levels.” Appeal Br. 35. Patent Owner argues that having uncontrolled levels
of DEG would result in an unacceptable bottle in terms of its dimensional
stability. Id. at 36. This argument has little merit. Dr. Callander’s
experiments were designed to determine to determine whether synergy in
color was observed in compositions comprising PET, MTDX6, SIP A, and
cobalt. Dr. Callander had found that it was undisclosed that sodium acetate
was present in some samples, but not others. For this reason, Dr. Callander
had concluded that more than one variable was being changed in the
experiments, and thus it could not be determined the relative contribution of
cobalt to the color of the preforms. To control for this, Dr. Callander
reported experiments in the presence and absence of sodium acetate, while
leaving other variables unchanged. Dr. Callander was not attempting to
create recreate or produce bottles, but rather to control the conditions of an
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experiment it could be determined whether the addition of cobalt had a
synergistic effect on a composition with all of the claimed components.
In this same section, Patent Owner reproduces data from Dr.
Callander’s declaration, stating — with emphasis — that “sodium acetate is not
significantly increasing the blueness.” Appeal Br. 37. Not only is this
statement without support, but it appears to be completely at odds with Dr.
Callander’s data. For example, the VI condition in the table shows 0.6 b*
for sodium acetate and 1.8 b* without sodium acetate. Given this three-fold
difference, it was incumbent upon Patent Owner to explain why such a large
difference was not “significantly increasing the blueness.” Id.
CONCLUSION
We have considered the evidence before us as a whole and conclude
that it does not establish the non-obviousness of claim 1 in view of
Yamamoto and Yuo or Kim or Kulkami. Claims 2—27 were not argued
separately and therefore fall with claim 1.
TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
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PATENT OWNER:
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
P.O. Box 7037
Atlanta, GA 30357-0037
THIRD PARTY REQUESTER:
Edwin A. Sisson
Attorney at Law, LLC
1332 Sharon Copley Rd.
P.O. Box 603
Sharon Center, OH 44274-0603
43
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
INVISTA NORTH AMERICA, S.A.R.L
Patent Owner and Appellant
Appeal 2016-006370
Reexamination Control 90/013,456
U.S. Patent 7,919,159 B2
Technology Center 3900
DELEGATION OF AUTHORITY
IN EX PARTE REEXAMINATION PROCEEDING APPEAL
Pursuant to the “Delegation of Authority - Determination Relating to
Substantial New Question of Patentability in an Ex Parte Reexamination
Proceeding” dated February 6, 2013, the Chief Judge of the Patent Trial and
Appeal Board hereby delegates authority to the panel to review issues
related to the examiner’s determination that a reference raises a substantial
new question of patentability in this ex parte reexamination proceeding.
David P. Ruschke
Chief Administrative Patent Judge
Appeal 2016-006370
Reexamination Control 90/013,456
U.S. Patent 7,919,159 B2
PATENT OWNER:
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
P.O. Box 7037
Atlanta, GA 30357-0037
THIRD PARTY REQUESTER:
Edwin A. Sisson
Attorney at Law, LLC
1332 Sharon Copley Rd.
P.O. Box 603
Sharon Center, OH 44274-0603
2