Ex Parte Kezios et al

Patent Trial and Appeal Board

Oct 6, 2016

11407990 (P.T.A.B. Oct. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111407,990 04/21/2006 Peter S. Kezios
22850 7590 10/11/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
287052USO 8891
EXAMINER
BLACKWELL, GWENDOLYN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
10/11/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER S. KEZIOS, HELEN CODD, and
KEVIN RICHARD HARRISON
Appeal2014-008000
Application 11/407 ,990
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
BRAIN D. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-16, 34--36, 47, 49-51, 53-55, 57-59, and 61---68. We
have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The Appellants claim a process for making a shaped article. Claim 1
is illustrative:
1. A process for making a shaped article from a solid
polyester resin containing a polyester polymer, comprising:
forming the shaped article by melting and processing pellets
of the polyester polymer without changing the intrinsic
viscosity of the polyester polymer by more than 0.025 dL/g;
Appeal2014-008000
Application 11/407 ,990
wherein the polyester polymer before the melting has an
intrinsic viscosity of from 0.70 to 0.95, and
wherein the pellets of the polyester resin are: (i) made
without solid-state polymerization, (ii) made with high IV melt
polycondensation, and (iii) made by direct latent heat
crystallization in which an extruded stream of the molten
polyester polymer is quenched in a water bath containing water
having a temperature of 80°C or higher.
Fellinger
Otto
The References
US 2005/0062186 Al
US 2005/0161863 Al
Mar. 24, 2005
July 28, 2005
B. Wunderlich and M. Pyda, Thermodynamic Properties of Polymers,
12 Encyc. Polymer Sci. & Tech. 172 (2004) (hereinafter Wunderlich).
The Rejections
Claims 1-16, 34--36, 47, 49-51, 53-55, 57-59, and 61---68 stand
rejected as follows: under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention, and under
35 U.S.C. § 103 over Otto in view of Fellinger and Wunderlich.
OPINION
We reverse the rejection under 35 U.S.C. § 112, second paragraph as
to claims 1-16, 34, 36, 47, 49-51, 53-55, 57-59 and 61---68 and affirm it as
to claim 35, and reverse the rejection under 35 U.S.C. § 103.
Rejection under 35 U.S. C. § 112, second paragraph
"[T]he indefiniteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity.'"
Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
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Appeal2014-008000
Application 11/407 ,990
The Examiner argues that the independent claims (1, 34, and 35) are
unclear because "[t]he term 'high IV' is not defined by the claim, the
specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention" (Ans. 2).
The Appellants' independent claims state that the polymer which is
made by high IV melt polycondensation and is melted to form the shaped
article has an intrinsic viscosity of from 0.70 to 0.95. Thus, those claims
indicate that "high IV" means 0.70 to 0.95.
Accordingly, we reverse the rejection of claims 1-16, 34, 36, 47, 49-
51, 53-55, 57-59 and 61---68 under 35 U.S.C. § 112, second paragraph.
The Examiner argues that claim 3 5 is indefinite due to lack of
antecedent basis for "the pellets of polyester resin" (Ans. 3).
The Appellants do not challenge the rejection of claim 3 5 on that basis
but, rather, state that "[t]he amendment filed concurrently with the present
Appeal Brief is believed to obviate the rejection of Claim 35 under
35 U.S.C. § 112" (App. Br. 11).
That amendment has not been entered by the Examiner. Hence, we
affirm the rejection of claim 35 under 35 U.S.C. § 112, second paragraph. 1
1 If not for the lack of antecedent basis for "the pellets of polyester resin" in
claim 35 we would reverse the rejection of that claim under 35 U.S.C. § 112,
second paragraph for the reason given above regarding the rejection of
claims 1-16, 34, 36, 47, 49-51, 53-55, 57-59 and 61---68 under
35 U.S.C. § 112, second paragraph.
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Appeal2014-008000
Application 11/407 ,990
Rejection under 35U.S.C.§103
We need address only the independent claims (1, 34, and 35). Those
claims require polyester pellets made by direct latent heat crystallization and
without solid-state polymerization.
Otto makes shaped articles by passing a high intrinsic viscosity
aromatic polyester or copolyester melt without any solidification to a
molding unit (i-fi-f 28, 39). The melt has an intrinsic viscosity between 0.74
and 0.85 dl/g (i-f 34). In tests, granulate is crystallized in a fluid bed
crystallizer (i-f 77).
Fellinger discloses "a method for increasing the intrinsic viscosity of
polyester by means of solid state polymerization, wherein a polyester
plastics melt is granulated and after granulation is conveyed into a thermal
treatment container [i.e., solid state polymerization reactor] for thermal
treatment therein" (i-fi-f l, 39). Fellinger avoids the need for complex heating
means in the thermal treatment container by cutting extruded polyester
strands into granules in a granulating device containing coolant which cools
the granules to only slightly below their melting temperature such that the
granules have a crystallized outer shell and a viscous interior, and then
conveying the granules, while they still have considerable residual heat, to
the thermal treatment container (i-fi-f 12, 38, 39). "On account of the residual
heat still present in the granules, the energy supply required for the solid
state polymerization is considerably lower as compared to known SSP
reactors" (i-f 40).
The Examiner argues that Fellinger's solid state polymerization is not
conventional solid state polymerization because Fellinger relies upon
residual heat from the granules and that, therefore, comparison of the
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Appeal2014-008000
Application 11/407 ,990
Appellants' and Fellinger' s descriptions of their pellet production processes
indicates that "the process disclosed by Fellinger is the same as that claimed
and disclosed by appellant" (Ans. 11-12).
"' [D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.'" In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). The Examiner does not
establish that the broadest reasonable interpretation of the Appellants' claim
term "solid-state polymerization" consistent with the Specification excludes
Fellinger's solid state polymerization wherein residual heat in the granules
reduces the required energy consumption (i-fi-f 12, 40).
The Examiner asserts that "[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to have
utilized the underwater granulation process disclosed by Fellinger to produce
the granulated polyester of Otto in order to simplify the granulation process
by obviating the need for a thermally heated crystallizer" (Ans. 5), and states
that "in light of applicant's disclosure at page 20 of the specification that
direct latent heat crystallization is the result of pellets crystallizing via the
residual heat inside the granules, the examiner reasonably interprets the
method of Fellinger to instead comprise 'direct latent heat crystallization' as
recited in claims 1, 34 and 35" (Ans. 6).
The Examiner does not establish that Fellinger's residual
heat-containing granules conveyed to the solid state polymerization reactor
(i-fi-f 38--40) undergo latent heat crystallization such that one of ordinary skill
in the art would have considered use of such residual heat-containing
granules to be an alternative to Otto's crystallizer (i-f 77). See KSR Int'! Co.
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Appeal2014-008000
Application 11/407 ,990
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (establishing a prima facie case of
obviousness requires an apparent reason to modify the prior art as proposed
by the examiner).
Thus, the Examiner has not established a prima facie case of
obviousness of the Appellants' claimed process.
DECISION/ORDER
The rejection of claims 1-16, 34--36, 47, 49-51, 53-55, 57-59,
and 61---68 under 35 U.S.C. § 112, second paragraph, is reversed as to
claims 1-16, 34, 36, 47, 49-51, 53-55, 57-59 and 61---68 and affirmed as to
claim 35. The rejection of claims 1-16, 34--36, 47, 49-51, 53-55, 57-59,
and 61---68 under 35 U.S.C. § 103 over Otto in view of Fellinger and
Wunderlich is reversed.
It is ordered that the Examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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