Ex Parte DiPietro et al

Patent Trial and Appeal Board

Sep 24, 2012

12051128 (P.T.A.B. Sep. 24, 2012)

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.
12/051,128 03/19/2008 Richard Anthony DiPietro ARC920060066US2 9975
63822 7590 09/24/2012
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/24/2012 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
________________

Ex parte RICHARD ANTHONY DIPIETRO,
URS T. DUERIG, JANE ELIZABETH FROMMER,
BERND WALTER GOTSMANN,
ERIK CHRISTOPHER HAGBERG,
JAMES LUPTON HEDRICK, ARMIN W. KNOLL,
TEDDIE PEREGRINO MAGBITANG,
ROBERT DENNIS MILLER, RUSSELL CLAYTON PRATT,
and CHARLES GORDON WADE
________________

Appeal 2011-004914
Application 12/051,128
Technology Center 1700
________________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004914
Application 12/051,128

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4-8, 25-28, and 31-34. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

BACKGROUND
Claim 1 is illustrative of the claimed subject matter:
1. A composition of matter, comprising:
a polyaryletherketone polymer comprising a first repeat
unit and a second repeat unit, said first repeat unit including an
aryl ketone monomer, said second repeat unit including a
monomer having a first phenylethynyl moiety, said polymer
having two terminal ends, each terminal end having a same
second phenylethynyl moiety.

Independent claims 25 and 31 are also illustrative of the claimed
subject matter (See Claims Appendix) and are directed to more specific
embodiments of a polyaryletherketone polymer.

The Examiner has maintained, and Appellants seek review of, the
following rejections under 35 U.S.C. § 103(a):
A. Claims 1, 4-8, and 25-281 as being unpatentable over the combined
prior art of Lau (U.S. 6,124,421 issued Sept. 26, 2000), and Jensen
(U.S. 5,268,444 issued Dec. 7, 1993);

1 Although the Examiner separately rejects the group of claims 25-28 from
claims 1 and 4-8, the rejection is substantially the same and based on the
same prior art of Lau and Jensen.
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Application 12/051,128

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B. Claims 1, 4-8, and 25-282 as being unpatentable over the combined
prior art of Lau and Connell (J. W. Connell et al., Oligomers and
Polymers Containing Phenylethynyl Groups, 40 J.
MACROMOLECULAR SCI.- REVS. MACROMOLECULAR CHEMISTRY &
PHYSICS 207 (2000));
C. Claims 31-34 as being unpatentable over the combined prior art of
Lau, Jensen, and Connell.

The rejections have been reorganized as above from the Answer and
Briefs in order to more efficiently address common issues.

MAIN ISSUES ON APPEAL
Has the Examiner reversibly erred in his determination that the
claimed subject matter in Rejection A is obvious because, as Appellants
allege, the proposed modification of Lau with the end capping polyarylene
ether ketone groups of Jensen “destroys the function of Lau and is an
improper combination of references”? (See, App. Br. 11, 12)?
We answer this question in the negative.
Has the Examiner reversibly erred in his determination that the
claimed subject matter in Rejection B is obvious because, as Appellants
allege, it is not the terminal phenylethynyl groups of Connell which results
in a higher crosslink density and glass transition temperature, but its pendant
phenylethnyl moities on its backbone (App. Br. 39, 50)?
We answer this question in the negative.

2 Although the Examiner separately rejects the group of claims 25-28 from
claims 1 and 4-8, the rejection is substantially the same and based on the
same prior art of Lau and Connell.
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Application 12/051,128

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Has the Examiner reversibly erred in his determination that the
claimed invention in Rejection C is obvious because the Examiner has not
met his burden in explaining why the resorcinol residue of Jensen would be
expected to be a functional equivalent to the diols used in Jensen (id. at 30;
Reply Br. 16-18), and the Examiner’s rejection does not adequately address
all of the required components of claim 31 (App. Br. 30-33; Reply Br. 19-
21)?
We answer this question in the positive.

ANALYSIS
We rely upon the Examiner’s findings of facts and determination of
obviousness for the subject matter of claims 1, 4-8 and 25-28 as
encompassed in the § 103 rejections as set out in the Final Office Action and
the Answer, including the Response to Argument section (Final Office
Action 2-5, 7-10; Ans. 3-5, 8-14).
Appellants’ main contention for Rejection A is that a prima facie case
of obviousness has not been made since the proposed combination would
destroy the function of Lau, which desires higher glass transition
temperatures than Jensen (App. Br. 12, 23), is unavailing. Appellants have
not provided any persuasive technical reasoning or evidence that the
terminal end groups of Jensen would lower the glass transition temperatures
of Lau. (Generally App. Br.; Reply Br.). As pointed out by the Examiner,
one of ordinary skill would expect end capping with phenylethylnyl terminal
groups would increase the glass transition temperature upon curing (e.g.,
Ans. 11, together with Jensen, col. 5, ll. 10-26). Furthermore, Lau attributes
the glass transition temperature to incorporation of certain divalent radicals
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Application 12/051,128

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in its polymer, thus implying that the addition of the end capping material,
i.e., the phenylethylnyl terminal groups taught by Jansen, would not
adversely affect the glass transition temperature of the polymer taught by
Lau (e.g., col. 18, ll. 58-65). Thus, on this record, Appellants have not
persuaded us of any reversible error in the Examiner’s reasonable
determination that it would have been prima facie obvious to endcap the
polyaryletherketone polymer of Lau with the known endcaps of the
polyaryletherketone polymers of Jensen in order to control the molecular
weight thereof (Ans. 11, 12).
Appellants’ main contention regarding Rejection B is that a prima
facie case of obviousness has not been made since it is not the terminal
phenylethynyl groups of Connell which results in a higher crosslink density
and glass transition temperature, but its pendant phenylethnyl moities on its
backbone (App. Br.39, 50), is unavailing. Appellants have not provided any
persuasive technical reasoning or evidence to refute the Examiner’s
reasonable determination that the aforementioned phenylethnyl terminal
groups also contribute to the higher crosslink density and glass transition
temperatures. (Generally App. Br.; Reply Br.). Furthermore, the use of a
known endcapping/terminal group for a polyaryletherketone polymer as
exemplified in Connell (or Jensen) for the polyaryletherketone polymer of
Lau appears to be no more than the predictable use of a known terminal
group for similar polymers.
It is well established that limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Appellants’ argument that dependent claim 4 implicitly
requires the selection of either alternative (ii) or (iv) which require R5 (Reply
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Br. 15; see also App. Br. 40) is unavailing, as it is contrary to the plain
wording of dependent claim 4 which permits selection of any of the four
listed alternatives (see also, Ans. 12, (G)). Likewise, independent claim 25
plainly permits selection of any of the four alternatives set out therein.
To the extent that Appellants have argued any of the dependent claims
separately in Rejections A and B, a preponderance of the evidence supports
the Examiner’s rejections. On this record, Appellants have also not
persuasively shown reversible error in the Examiner’s reasonable position
that one of ordinary skill would have viewed the molecular weight unit of
Lau to be the conventional unit of Daltons (id. at 12), nor have Appellants
shown reversible error in the Examiner’s reasonable interpretation that “a
molecular weight” as claimed in certain dependent claims would reasonably
encompass either a weight average molecular weight or a number average
molecular weight (id. at 13).
On the other hand, we agree that a preponderance of the evidence
supports Appellants’ position that the Examiner has not presented a prima
facie case of obviousness for the polymer specified in independent claim 31
for substantially the reasons explained by Appellants (App. Br. 26-34; Reply
Br. 16-19). Notably, the Examiner has not directed us to any evidence on
this record that teaches or suggests all of the claimed elements of the
polymer of claim 31, and specifically the R5 group as required therein (see,
e.g., App. Br. 32, 33; Reply Br. 20, 21; generally Ans.).
Appeal 2011-004914
Application 12/051,128

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ORDER

In summary, we affirm the Examiner’s § 103 rejections of claims 1, 4-
8, and 25-28 on appeal; however, we reverse the § 103 rejection of claims
31-34.
The Primary Examiner’s decision is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

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