Ex Parte Sodergard et al

Patent Trial and Appeal BoardNov 26, 2012

11936170 (P.T.A.B. Nov. 26, 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. 11/936,170 11/07/2007 Nils Dan Anders Sodergard 2144.000900/KDG (F/USP957 9336 23720 7590 11/26/2012 WILLIAMS, MORGAN & AMERSON 10333 RICHMOND, SUITE 1100 HOUSTON, TX 77042 EXAMINER MESH, GENNADIY ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 11/26/2012 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 NILS DAN ANDERS SODERGARD, ERIK MIKAEL STOLT, and SAARA INKINEN __________ Appeal 2011-011596 Application 11/936,170 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, RICHARD TORCZON, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011596 Application 11/936,170 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-14 and 17-19. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is said to be directed to polylactic acid polymers composed of lactic acid units, isosorbide and a polycarboxylic acid having three carboxylic acid groups (Spec. 1:5; 2:1-5, 13-16 ). Claims 1 and 18 are illustrative: 1. A polymer comprising units derived from: lactic acid; isosorbide; and a polycarboxylic acid having at least three carboxylic acid groups, the lactic acid units comprising at least 50 weight % of the polymer. 18. A composition according to Claim 17,[1] in which said polyester is a polylactide. Appellants appeal the following rejections: 1. Claims 1-14, 17, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Terado (US 5,914,381 issued June 22, 1999) in view of Kunihiro (JP 2006/096845 published Apr. 13, 2006). 2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Terado in view of Kunihiro and Dorgan (Hans J. Lehermeier & John R. Dorgan, Melt Rheology of Poly(lactic acid): Consequences of Blending Chain Architectures, 41 POLYMER ENGINEERING & SCI. 2172 (2001)). Appellants’ arguments focus on claims 1 and 18 (App. Br. 5-13). 1 17. A composition comprising a copolymer according to Claim 1 in admixture with at least one polyester. Appeal 2011-011596 Application 11/936,170 3 ISSUES 1. Did the Examiner reversibly err in concluding one of ordinary skill in the art would have substituted Kunihiro’s isosorbide for a diol in Terado’s lactic acid degradable polymer composition in order to improve heat resistance of the polymer and thus arrive at the composition required by claim 1? We decide this issue in the negative. 2. Did the Examiner reversibly err in finding that Appellants’ evidence of unexpected results is not probative of nonobviousness? We decide this issue in the negative. 3. Did the Examiner reversibly err in concluding that Dorgan’s teaching to blend linear polylactide with lactide polymer would have rendered obvious blending polylactide with the lactide polymer of Terado and Kunihiro as required by claim 18? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES Issue (1):Claim 1 Appellants argue that there is no reason to combine (or reasonable expectation of success in combining) Kunihiro’s isosorbide with Terado because Kunihiro’s polymer is linear whereas Terado’s polymer is branched (App. Br. 5-7). Appellants contend that a branched polymer already has good heat resistance and there is no reason for adding isosorbide to improve a property that already is suitable. Id. Appellants contend that in combining the teachings of Kunihiro and Terado the Examiner is improperly equating Appeal 2011-011596 Application 11/936,170 4 Kunihiro’s “heat resistance” with regard to polymer degradation temperature with the Specification’s “heat resistance” in the context of the glass transition temperature (Tg) (Reply Br. 3-5). The Examiner finds that Terado teaches a lactic acid polymer derived from lactic acid, a polycarboxylic acid having at least three carboxylic acid groups and a diol (Ans. 4). The Examiner finds that Terado does not teach isosorbide. Id. The Examiner finds that Kunihiro teaches isosorbide in a lactic acid containing polymer for improving heat resistance of the polymer (id. at 5). The Examiner concludes that it would have been obvious to substitute Kunihiro’s isosorbide for Terado’s diol in order to improve the heat resistance of the resulting lactic acid polymer. (Id.). The Examiner further finds that Appellants have not provided any evidence to substantiate the argument that Terado’s branched polymer’s heat resistance would not benefit from using Kunihiro’s isosorbide (id. at 7). The Examiner further finds that no evidence was proffered by Appellants that shows the heat resistance of a lactic acid derived branched polymer made using isosorbide as compared to lactic acid polymer made using another diol (e.g., ethylene glycol) such as taught by Terado (id.). The preponderance of the evidence favors the Examiner’s obviousness conclusion. The Examiner provides a reasonable basis from the teachings of Kunihiro and Terado that one of ordinary skill in the art would have substituted Kunihiro’s isosorbide for a diol in Terado’s composition in order to arrive at and improve the heat resistance of the polymer as taught by Kunihiro. As properly stated by the Examiner, no evidence has been provided by Appellants showing any difference in heat resistance between branched and linear lactic acid polymers. Appellants’ argument that Appeal 2011-011596 Application 11/936,170 5 Kunihiro’s heat resistance (i.e., degradation temperature) versus Appellants’ meaning of heat resistance (i.e, Tg), is not persuasive because Kunihiro’s teachings would still have suggested the modification albeit for a different reason. Once Kunihiro’s isosorbide is substituted for a diol in Terado’s composition, it is reasonable to determine that the improvement in the glass transition temperature would have flowed naturally from following the teachings of the prior art. Regarding Appellants’ reasonable expectation of success argument, we note that Terado teaches using diols as part of the lactic acid polymer composition. Isosorbide is a diol as depicted on page 3 of the Kunihiro translation. Accordingly, Appellants have not explained why the Examiner’s proposed substitution of one diol for another diol would not have been reasonably expected to be a success. On this record, we find that the Examiner has established a prima facie case of obviousness. Issue (2): Unexpected Results Appellants contend that the data in Tables 1 and 2 of the Specification evince unexpected results (App. Br. 7-11; Reply Br. 3, 7-9). Appellants contend that the evidence in the Specification compares pure lactic acid polymer, lactic acid polymer with isosorbide alone, lactic acid with the tri- functional polycarboxylic acid alone and lactic acid with polycarboxylic acid and isosorbide (App. Br. 7-11). According to Appellants, the evidence shows that the combination of the a polycarboxylic acid having 3 carboxylic acid groups, isosorbide and lactic acid units produces a much greater increase in Tg with increasing degree of polymerization than the pure form Appeal 2011-011596 Application 11/936,170 6 or the combination of the pure form with either isosorbide or a polycarboxylic acid alone. Id. The Examiner finds that the evidence is not commensurate in scope with the claimed invention because the data includes specific ranges of the polycarboxylic acid and isosorbide while claim 1 is not limited to any particular range of these compounds (Ans. 8). Furthermore, the evidence provided in Table 1 of the Specification is limited to 1,2,3,4- butanetetracarboxylic acid (BTCA). However, the claims are not limited to this particular polycarboxylic acid such that the evidence is not commensurate in scope with the claim for this additional reason. The Examiner properly finds that claim 1 is broader than Appellants’ proffered evidence. Moreover, missing from Appellants’ analysis is any comparison of their claimed invention with the closest prior art (i.e., Terado). Appellants allege that Terado exemplifies that the glass transition temperature (Tg) of compositions containing other diols, no diols, or no polycarboxylic acid have about the same Tg as each other so that there would have been no suggestion to use isosorbide in the composition (Reply Br. 11-12). But, such analysis does not address whether the increase in Tg achieved using isosorbide would have been unexpected. Appellants have not proffered any evidence that compares Terado’s composition using one of Terado’s diols with Appellants’ composition that uses isosorbide. Without a comparison with the closest prior art, we cannot discern whether the resulting Tg obtained by Appellants using isosorbide would have been unexpected. Indeed, as noted by Appellants, Terado’s examples all disclose similar Tg for the resulting polymer (i.e., 54.7 to 58.0°C). We Appeal 2011-011596 Application 11/936,170 7 note that Appellants’ evidence in Table 1 of the Specification where the examples include isosorbide discloses a maximum Tg range from 47.08 to 63.67°C. Accordingly, it appears that the Tg values of Terado fall within the range disclosed by Appellants. In other words, Appellants’ evidence does not appear to show an unexpected improvement in Tg by using isosorbide relative to other diols in combination with a polycarboxylic acid having three carboxylic acid groups. For these reasons, we find that Appellants’ evidence is not probative of nonobviousness. We affirm the Examiner’s § 103 rejection of claims 1- 14, 17, and 19 over Terado in view of Kunihiro. Issue (3): Rejection (2) Claim 18 Appellants argue that Dorgan deals solely with polylactides and its teachings would not be relevant to any other polymer having non-lactide units (App. Br. 12). Appellants contend that Dorgan only discloses star- shaped polylactides which are different than the branched polylactides of the present claims and thus the teachings are not applicable to the present claims (id.). Appellants contend that control of rheological properties are merely one of several factors and do not provide one of ordinary skill in the art a reason to apply Dorgan’s teachings with Terado and Kunihiro (id.). Contrary to Appellants’ arguments, it would appear that Dorgan is not limited to star-shaped lactide molecules. The page 2172, bottom four lines on the left hand column through the top four lines of the right-hand column in Dorgan and the abstract do not limit the disclosure to star-shaped lactide polymers only. Rather the abstract discloses blends of branched and linear polylactides. The star-shaped polylactide disclosure in Dorgan regards prior Appeal 2011-011596 Application 11/936,170 8 work done by others, not Dorgan’s disclosure. Appellants’ other arguments are without persuasive merit as rheology may be viable reason for modifying Terado and Terado teaches lactide as suitable precursor for the polymer so that the lactide polymer teachings in Dorgan would be applicable to Terado too. We further note that contrary to Appellants’ argument that claim 18 requires branched not star-shaped polylactides, the language of claim 18 is not limited to any particular type of polylactide. On this record, we affirm the Examiner’s § 103 rejection of claim 18 over Terado in view of Kunihiro and Dorgan. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED bar