Ex Parte Sakurai et al

Patent Trial and Appeal BoardApr 15, 2016

13692391 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/692,391 12/03/2012 32692 7590 04/19/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Aizoh Sakurai 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. 63468US010 1805 EXAMINER VO, HAI ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AIZOH SAKURAI, KANA AKAINAGA, NAOYUKI TORIUMI, JAMES S. MROZINSKI, and MATTHEW J. SCHMID Appeal2014-008962 Application 13/692,391 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal 1 under 35 U.S.C. Â§ 134 from the Examiner's decision2 finally rejecting claims 1-16. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to a microporous article comprising a semicrystalline polylactic acid material, a nucleating agent, and optionally a 1 Appellants identify the real party in interest as 3M Company and its affiliate 3M Innovative Properties Company. Appeal Brief filed April 17, 2014 ("App. Br."), 2. 2 Final Office Action mailed October 18, 2013 ("Final Act."). Appeal2014-008962 Application 13/692,391 nonpolymeric aliphatic ester diluent. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A microporous article comprising a semicrystalline polylactic acid material, a nucleating agent and optionally a nonpolymeric aliphatic ester diluent, the microporous article having a network of interconnected micropores therebetween, the microporous article characterized by a multiplicity of spaced, spherulitic semicrystalline polylactic acid material domains, adjacent semicrystalline polylactic acid material domains being connected to each other by a plurality of fibrils comprising poly lactic acid material. App. Br. 21 (Claims Appendix) (emphasis added). REJECTIONS Appellants request review of the following rejections: 1. Claims 1, 2, 6-9, and 11under35 U.S.C. Â§ 103(a) as unpatentable over Mrozinski et al. ("Mrozinski") (U.S. Patent No. 4,726,989, issued Febnrnr; 23, 1988) in view ofCooper-\Vhite et al. ("Cooper-White") (WO 2007/115367, published October 18, 2007)3; 2. Claims 4, 10, and 12-16 under 35 U.S.C. Â§ 103(a) as unpatentable over Mrozinski in view of Cooper-White, and further in view of 3 In the final decision and on appeal, the Examiner cites to the disclosure of US 2009/0286894 Al to Cooper-White (published November 19, 2009 (filed October 6, 2008)), which the Examiner explains is "equivalent" to WO 2007/115367. See Non-Final Office Action mailed May 17, 2013 (Non-Final Act.), 3--4. Appellants do not dispute whether these documents are equivalents. Therefore, we also cite to US 2009/0286894 Al in this opm10n. Appeal2014-008962 Application 13/692,391 Schmid et al. ("Schmid") (US 2008/0142023, published June 19, 2008 (filed December 11, 2006)); 3. Claims 3 and 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Mrozinski in view of Cooper-White, and further in view of Smith et al. ("Smith") (US 2005/0058821, published March 17, 2005); 4. Claims 5 and 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Mrozinski in view of Cooper-White, and further in view of Nagoya et al. ("Nagoya") (US 2004/0023017, published February 5, 2004); 5. Claims 1-3, 6, and 8-11 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Smith in view of Cooper-White; 6. Claims 4 and 12-16 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Smith in view of Cooper-White; and 7. Claim 5 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Smith in view of Cooper-White, and further in view of Nagoya. App. Br. 3--4. Appellants have not presented substantive arguments for patentability of any of the dependent claims. Therefore, we focus our discussion on independent claim 1; claims 2-16 stand or fall with claim 1. The Examiner construes the phrase "polylactic acid material domains" in claim 1 as "not preclud[ing] the inclusion of [other materials such as] polypropylene [(or polyvinylidene fluoride (PVDF)] and [poly(lactic-co- glycolic acid) (PLGA)]." Examiner's Answer mailed June 18, 2014 ("Ans."), 12, 13. The Examiner finds Mrozinski (rejections 1--4) or Smith (rejections 5-7) teaches every limitation of claim 1 except "a semicrystalline polylactic acid material." See Final Act. 3, 8. The Examiner relies on Appeal2014-008962 Application 13/692,391 Cooper-White for this limitation. Id. at 3--4, 8. The Examiner finds that Cooper-White teaches a porous polymer structure comprising a blend of polylactic acid (PLA) and poly(lactic-co-glycolic acid) (PLGA) (Cooper- White i-fi-151, 60). See id. at 3--4, 8. The Examiner further finds that Cooper- White' s porous polymer structure can be produced using a thermally induced phase separation (TIPS) technique (Cooper-White i170), which is the same technique used for preparing Mrozinski' s (Mrozinski 7: 18-25) and Smith's (Smith i-f 15) microporous articles, to provide a porous polymer structure comprising polymeric particles made of a "blend [of PLA and PLGA] ... with continuous voids or pores that afford an interconnected pore network (paragraphs 70, 79, and 85)." Ans. 9. The Examiner determines that it would have been obvious to one having ordinary skill in the art at the time the invention was made to incorporate a blend of PLA and PLGA, as taught in Cooper-White, in either Mrozinski' s or Smith's microporous article "to provide a biodegradable microporous film having reduced environmental impact while maintaining the high tensile strength." Final Act. 4, 8. Appellants do not dispute the Examiner's determination that a person of ordinary skill in the art would have been prompted to incorporate Cooper- White's blend of PLA and PLGA in either Mrozinski's or Smith's microporous article. Rather, Appellants argue that the Examiner's rejection is flawed because "claim 1 does not recite a multiplicity of spaced, spherulitic semi crystalline domains comprising poly lactic acid material (that could potentially comprise a blend of different kinds of polymers)." Reply Brief filed August 6, 2014 ("Reply Br."), 2. Thus, Appellants contend that incorporating Cooper-White's blend of PLA and PLGA in Mrozinski's or Appeal2014-008962 Application 13/692,391 Smith's microporous article would "not result in the microporous article of claim 1 containing polylactic acid material domains." Id. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Amer. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Claim 1 places no limitation on the term "polylactic acid material." Nor have Appellants directed us to any limiting definition in the Specification for the term "polylactic acid material"---e.g., defining the scope of the term "polylactic acid material" as a material consisting of poly lactic acid, thereby excluding other polymers such as PLGA. Thus, we find no reversible error in the Examiner's claim construction, or in the Examiner's finding that the combined teachings of Cooper-White and Mrozinski or Smith would result in a microporous article meeting all the limitations of claim 1. Appellants argue that paragraph 6 of Cooper-White, which teaches that "combinations of immiscible polymer materials can result in inferior properties as compared to the properties provided by the polymers individually," would have led one of ordinary skill in the art away from incorporating a blend of PLA and PLGA in the polymer of the microporous articles of Mrozinski or Smith. App. Br. 19. This argument is not persuasive because, as the Examiner points out (Ans. 11 ), paragraph 6 of Cooper-White does not teach away from using immisible polymer blends, but rather describes inferior properties associated with prior art polymer blends which Cooper-White's method was designed to overcome. Appeal2014-008962 Application 13/692,391 For the above reasons, we uphold each of the Examiner's obviousness rejections. DECISION For the above reasons, we affirm the rejections of claims 1-16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED