Ex Parte Christel et al

Patent Trial and Appeal Board

Sep 25, 2014

11886818 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/886,818 09/21/2007 Andreas Christel 76775.23 8347
7590 09/26/2014
Francis C. Hand
Carella, Byrne, Bain, Gilfillan, Cecchi, Stewart
& Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
TISCHLER, FRANCES
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
09/26/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS CHRISTEL
and ALLAN BRENT CULBERT
____________

Appeal 2012-011291
Application 11/886,818
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 23, 24, 26–39, 411 and 42. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a method for manufacturing
polyester with improved melting properties and crystallization properties.
Spec. 1. Claim 23 is illustrative:
23. A method for manufacturing polyester with improved
melting properties and crystallization properties, comprising the
steps of:

1 Appellants indicate claim 41 depends from claim 23. (App. Br. 2).
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Application 11/886,818

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a. manufacturing a pre-polyester melt with an average
molecular weight (Mn) of 2000 to 14000 g/mol and a
transesterification catalyst from a diol component and a
dicarboxylic component having a total comomomer
content between 1 and 15 mol%,

b. solidifying and shaping said melt into pre-polyester
particles,

c. thermally treating said pre-polyester particles in a
continuous process at a temperature of under 230°C in a
solid phase in the presence of said transesterification
catalyst to effect a polycondensation reaction (E+T) to
produce a polyester within a time period of between 4
and 30 hours, wherein a molecular weight increase
(ΔMn) to a value of between 16'000 g/mol and 34'000
g/mol takes place, and wherein the DSC melting enthalpy
of the polyester lies below 75 J/g

characterized in that said pre-polyester particles exhibit a
carboxyl end group content (XCOOH) of between 0.25 and 0.6
before step c, and that an esterification reaction (E) makes up
between 0.5 and 1 of the polycondensation reaction (E+T)
during treatment in step c.

Appellants request review of the following rejections (App. Br. 3)
from the Examiner’s Final Action:2, 3
I. Claims 23, 24, 26 to 39, 41, and 42 stand rejected under 35
U.S.C. § 102(b) as anticipated by Stouffer or, in the alternative,

2 The complete statement of the rejections on appeal appears in the Office
Action mailed May, 3, 2011.
3 The Examiner has withdrawn the rejection of claims 23, 24, 26 to 39, 41,
and 42 under 35 U.S.C. § 103(a) over the combination of Rothe and
Stouffer. (Ans. 3).
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Application 11/886,818

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under 35 U.S.C. § 103(a) as obvious over Stouffer (US
5,830,982, Nov. 3, 1998).
II. Claims 35, 37, and 38 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Stouffer and Rothe
(US 4,064,112, Dec. 20, 1977).

OPINION
Rejection I4
The dispositive issue on appeal is: Did the Examiner err in
determining that the method for manufacturing polyester as recited in the
present claim 23 is anticipated and/or obvious over Stouffer?
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM. Our reasons follow.5
Appellants argue that the present invention provides a very specific
solid state polymerization (SSP) reaction where high molecular weight
polyester polymer is obtained from low molecular weight polyester using
esterification reaction (App. Br. 9). Appellants argue Stouffer’s invention is
related to thermal shock crystallization (TSC), and the only specific teaching
of a subsequent SSP is found in Stouffer Example 5. (Id. 9–10). Appellants
argue the carboxyl end group content in example 5 lies below the lower limit
of 0.25 of claim 23. (Id. at 10–11). Appellants argue the present claims are
not anticipated because the decisive feature of the present invention, the

4 Appellants have not argued claims 23, 24, 26–34, 36, 39, 41, and 42
separately in the Appeal Brief. We select claim 23 as representative of the
rejected claims and will limit our discussion to this claim.
5 Complete statements of the rejections appear in the Non-Final Action,
mailed May 3, 2011.
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dominance of the esterification reaction during the SSP step, cannot be
achieved by Stouffer Example 5 if large particles6 and the low content of
carboxyl end groups (0.249) are used. (Id. at 11).
Appellants’ arguments are not persuasive of error in the Examiner’s
rejection. Appellants’ arguments are principally directed to Stouffer
example 5 as not anticipating the claimed subject matter.7
A reference is not limited to its examples, but is available for all that it
discloses and suggests to one of ordinary skill in the art. See In re Widmer,
353 F.2d 752, 757 (CCPA 1965); Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989).
The Examiner has properly responded to Appellants’ arguments,
including identifying the portions of Stouffer which (in addition to example
5) describe and suggest the claimed subject matter. (Ans. 3–14). As stated
above, Appellants recognize that Stouffer is concerned with the preparation
of PET pre-polymer and subsequent solid-state polymerization. (See also
Stouffer col. 2, ll. 15–44). The Examiner properly determined that Stouffer
discloses the intrinsic viscosity and particle size for the PET required by the
claimed method for manufacturing polyester with improved melting
properties and crystallization properties. (Ans. 4). Consequently, the

6 Appellants argue the particle size is not exemplified in Example 5.
However, Appellants argue it is reasonable to assume in the exemplified
large particles of Examples 1 and 2 were also used in Example 5. (App. Br.
T4).
7 It is noted that Appellants first present arguments addressing the
obviousness rejection in their Reply Brief. Contrary to Appellants’
statement and the Reply Brief (p. 1), the Examiner has maintained the
anticipation and obviousness rejections throughout prosecution and has not
newly presented an obviousness rejection in the Answer. (See Non-Final
action mailed May 3, 2011).
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Examiner has identified in Stouffer the reaction conditions necessary to
create the dominance of the esterification reaction during the SSP step.
Accordingly, we affirm the rejection of claims 23, 24, 26–39, 41, and
42 under 35 U.S.C. § 102(b) as anticipated by Stouffer or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Stouffer for the reasons given
above and presented by the Examiner.
Rejection II
Regarding the rejection of claims 35, 37, and 38 under 35 U.S.C.
§ 103(a), we affirm these rejection advanced by the Examiner. Appellants
have presented arguments only to independent claim 23 (rejection discussed
above) and have not otherwise presented separate arguments on the merits
for the rejection of claims 35, 37, and 38. In this regard, Appellants do not
assert non-obviousness based on the limitations set forth claims 35, 37, and
38 by explaining how the applied prior art cited by the Examiner fails to
establish the obviousness of the separately rejected claims. Because we are
not persuaded by Appellants’ arguments as to independent claim 23, it
follows that these arguments are unpersuasive as to claims 35, 37, and 38.

ORDER
The rejection of claims 1–5 and 19 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Koski, Gehrsitz, and the Examiner’s
Official Notice is affirmed.
The rejection of claims 35, 37, and 38 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Koski and Gehrsitz is affirmed.

Appeal 2012-011291
Application 11/886,818

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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).

AFFIRMED

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