Ex Parte Freitag et al

Patent Trial and Appeal Board

Jan 31, 2017

12182590 (P.T.A.B. Jan. 31, 2017)

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.
12/182,590 07/30/2008 Dieter Freitag 133649.05501 4027
21269 7590 01/31/2017
PEPPER HAMILTON LLP
500 GRANT STREET
SUITE 5000
PITTSBURGH, PA 15219-2507
EXAMINER
KAHN, RACHEL
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
01/31/2017 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 DIETER FREITAG and PIN GO
Appeal 2015-007392
Application 12/182,590
Technology Center 1700
Before CHUNG K. PAK, JULIA HEANEY, and JEFFREY R. SNAY
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1—11 and 21 of Application
12/182,590.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellants identify the real party in interest as FRX Polymers, Inc. App.
Br. 3
2 Final Action dated May 13, 2014 (“Final Act.”) at 2. This decision also
refers to the Specification filed July 30, 2008 (“Spec.”), the Non-Final
Office Action dated Nov. 29, 2013 (“Non-Final Act.”), the Appeal Brief
dated Sept. 29, 2014 (“App. Br.”), the Examiner’s Answer dated Oct. 30,
2014 (“Ans.”), and the Reply Brief dated Dec. 24, 2014 (“Reply Br.”).
Appeal 2015-007392
Application 12/182,590
BACKGROUND
The subject matter on appeal relates to a method for producing
branched insoluble polyphosphonates. App. Br. 5. Claim 1, reproduced
below from the Claims Appendix of the Appeal Brief, is representative of
the claimed subject matter:
1. A method for producing branched insoluble polyphosphonates
comprising:
combining one or more phosphonic acid diaryl esters
and one or more bisphenol in a reaction vessel to form a
reaction mixture;
adding an alkali catalyst to the reaction mixture;
heating the reaction mixture for a first time under vacuum to
a temperature where phenol begins to distill from the vessel and
continuing heating until evolution of phenol has stopped; and
heating the reaction mixture for a second time to a
temperature where evolution of at least phenol has restarted and
has stopped and a resulting branched insoluble polyphosphonate
been generated that is partially or completely insoluble in
methylene chloride or tetrahydrofuran after 8 hours of
immersion;
wherein heating is carried out for a total of about 12 hours to
about 16 hours.
THE REJECTION
Claims 1—11 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schmidt.3
DISCUSSION
Schmidt discloses a process for production of thermoplastic, branched
aromatic polyphosphonates. Schmidt 5:4—6. The Examiner acknowledges
3 Schmidt et al., US 4,415,719 issued November 15, 1983 (“Schmidt”).
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Application 12/182,590
that Schmidt does not specifically describe claim 1 ’s recited steps of heating
for a total of about 12 to 16 hours, or heating until evolution of phenol has
stopped, then restarting and stopping again during a second heating period.
Non-Final Act. H 11, 17. The Examiner finds, however, that Schmidt
teaches the polymerization reaction can be continued until the desired
molecular weight ranging from 11,000 to more than 200,000 is reached
(Non-Final Act. 112, citing Schmidt 1:51—53, 1:59-2:9, 2:35—40, 7:30-34),
and thus that total polymerization time (i.e., heating time) is a result
effective variable. Non-Final Act. 113. As to the claimed steps of stopping,
restarting and restopping the evolution of phenol during heating of the
reaction mixture, the Examiner finds that Schmidt’s process as described in
Examples 1 and 2 is substantially similar to the process described in
Example 5 of the Specification (Non-Final Act. 118), and therefore that
“there is reasonable basis to conclude that, during the polymerization
reaction suggested by Schmidt, evolution of phenol begins and stops ... and
then restarts and restops ... in substantially the same manner” as recited in
claim 1. Id. 119.
Appellants argue that the Examiner’s rationale for extending
Schmidt’s heating time to at least 12 hours is not supported by evidence.
App. Br. 6. Specifically, Appellants argue that the Examiner has failed to
show that lengthening of polymerization time necessarily results in increased
molecular weight, because Schmidt does not equate molecular weight to
reaction time. Reply Br. 2. Rather, Appellants argue, a person of ordinary
skill in the art would understand Schmidt’s teaching that “the reaction is
continued ... until the required degree of condensation is reached” (Schmidt
7:30—34) as meaning that when evolution of phenol stops, one or more of the
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Application 12/182,590
reactants has been used up, the reaction has reached its conclusion, and no
further reaction would be expected to happen. App. Br. 10; Reply Br. 2—3.
Appellants’ argument is persuasive of reversible error. The Examiner
has the initial duty of supplying the requisite factual basis for obviousness
and may not “resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in [the] factual basis.” In re Warner,
379 F.2d 1011, 1016—17 (CCPA 1967). Here, the findings underlying the
determination of obviousness are based on unfounded assumptions because
the Examiner has not identified any disclosure in Schmidt which shows or
suggests that molecular weight increases as reaction time increases. The
only disclosure of Schmidt relied upon by the Examiner to show a direct
relationship between reaction time and molecular weight (Schmidt 7:30—34)
does not establish that relationship. As Appellants’ persuasively explain,
Schmidt provides no teaching of continuing the polymerization reaction
beyond the evolution of phenol (App. Br. 10); moreover, Schmidt teaches
that polyphosphonates having molecular weights in the range relied upon by
the Examiner (Non-Final Act. 112, citing Schmidt 2:35—40) are not made by
increasing reaction time, but rather by modifying the polymer structure (i.e.
incorporating additional monomeric units into the molecule). Reply Br. 3,
citing Schmidt 2:35—4:63.
Accordingly, we conclude that the Examiner reversibly erred and has
not established obviousness with respect to claim 1. We need not separately
address Appellants’ additional arguments for reversal of the rejection, or
appealed claims 2—11 and 21, which depend from claim 1.
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Application 12/182,590
SUMMARY
We reverse the rejection of claims 1—11 and 2las unpatentable under
35 U.S.C. § 103(a).
REVERSED
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