Ex Parte Södergard et al

Patent Trial and Appeal BoardAug 19, 2013

12067987 (P.T.A.B. Aug. 19, 2013)

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. 12/067,987 07/15/2008 Nils Dan Anders SÃ¶dergard 2144.001200/KDG 6407 23720 7590 08/20/2013 WILLIAMS, MORGAN & AMERSON 10333 RICHMOND, SUITE 1100 HOUSTON, TX 77042 EXAMINER MESH, GENNADIY ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 08/20/2013 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 and ERIK MIKAEL STOLT ____________ Appeal 2012-006218 Application 12/067,987 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and CATHERINE Q. TIMM, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006218 Application 12/067,987 2 Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 3-9 and 11-19. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM-IN-PART. Appellants claim a process for preparing polyhydroxycarboxylic acid which comprises subjecting the reactants to polymerization in the presence of a catalyst and an aromatic diol having a particular structure (independent claim 3). A copy of sole independent claim 3, taken from the Claims Appendix of the Appeal Brief, is set forth below. 3. Process for preparing polyhydroxycarboxylic acid, said process comprising the step of subjecting hydroxycarboxylic acid and/or cyclic (di)ester of a hydroxycarboxylic acid to polymerization in the presence of a catalyst and an aromatic diol, characterized in that the aromatic diol has the following structure: Appeal 2012-006218 Application 12/067,987 3 , wherein n is an integer chosen from 0 or 1, and m is an integer chosen from 1 or 2. The Examiner rejects claim 11 under the 1st paragraph of 35 U.S.C. Â§ 112 as failing to comply with the written description requirement. Under 35 U.S.C. Â§ 103(a), the Examiner rejects: claims 3-9, 11-14, and 17-19 as unpatentable over Gruber (US 5,539,081, Jul. 23, 1996) in combination with Iwane (US 5,220,079, Jun. 15, 1993); claim 15 as unpatentable over Gruber, Iwane, and Hitomi (JP 08- 231688 A, Sep. 10, 1996); and claim 16 as unpatentable over Gruber, Iwane, and Enomoto (US 5,310,865, May 10, 1994). The Â§ 112, 1st paragraph, Rejection The Examiner considers claim 11 to violate the written description requirement for the following reasons: Specification does not provide support for limitation of Claim 11 as "further comprises (i) one or more NO2 substituents, (ii) one or more -OCH3 substituents, or (iii) both one or more NO2 substituents and one or more -OCH3 substituents[.]"[] Specification does provide support (see page 8) for one NO2 substituent or one - OCH3 substituent, but not to more than one NO2 or -OCH3 substituent in one chemical compound as claimed by Claim 11. Appeal 2012-006218 Application 12/067,987 4 (Ans. 5; see also Final Office Action 2-3) (emphases in original). Appellants contest this rejection with the argument below: Appellants' disclosure at, e.g., p. 8 of the specification, teaches particular aromatic diols comprising -NO2 moieties or -OCH3 moieties. At page 7, line 12, the specification clearly states that the aromatic diols shown on page 8 are exemplary. The person of ordinary skill in the art would understand the disclosed aromatic diols comprising -NO2 moieties and aromatic diols comprising -OCH3 moieties implicitly or inherently disclose aromatic diols comprising both -NO2 moieties and -OCH3 moieties. The statement at p. 7, line 12 makes clear that the depicted aromatic diols are exemplary. The person of ordinary skill in the art would readily understand the exemplary aromatic diols to point to aromatic diols comprising both -NO2 moieties and -OCH3 moieties. (App. Br. 6; see also Reply Br. 4) (emphases in original). Appellants' argument does not specifically address, and therefore does not reveal error in, the Examiner's above determination that the written description requirement is violated by the claim 11 embodiment wherein the aromatic diol comprises a plurality of -NO2 substituents or a plurality of -OCH3 substituents. The Â§ 112, 1st paragraph, rejection is sustainable for this reason alone. Furthermore, Appellants' argument does not persuade us that the Specification provides written description support for the claim 11 Appeal 2012-006218 Application 12/067,987 5 embodiment wherein the aromatic diol comprises both -NO2 moieties and -OCH3 moieties. The test for written description sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Appellants contend that the aromatic diol examples shown on page 8 of the Specification "implicitly or inherently disclose[] aromatic diols comprising both -NO2 moieties and -OCH3 moieties" (App. Br. 6). However, these aromatic diol examples include only two such moiety- containing diols, namely, one diol containing only a single -NO2 moiety and another diol containing only a single -OCH3 moiety. Appellants do not explain why these two diol examples would reasonably convey to those skilled in the art that Appellants had possession of the claim 11 embodiment wherein the aromatic diol comprises both of these moieties. The absence of such an explanation is fatal to Appellants' position, particularly because claim 11 is generic to moiety-containing diols of which the Specification discloses only the two above noted species. A sufficient description of a genus requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can Appeal 2012-006218 Application 12/067,987 6 visualize or recognize the members of the genus. Ariad, 598 F.3d at 1350. Appellants do not explain why their Specification satisfies either of these requirements for a sufficient description of a genus. For the above reasons, we sustain the Â§ 112, 1st paragraph, rejection of claim 11.1 The Â§ 103 Rejections The rejection based on Gruber and Iwane In rejecting independent claim 3, the Examiner finds that Gruber discloses a process of the type claimed except Gruber teaches using stabilizing agents including antioxidants, for example, hindered or other phenolic compounds generally rather than an aromatic diol of the type claimed such as 2-hydroxyphenethyl alcohol (Ans. 6). The Examiner additionally finds that Iwane teaches substituted phenols including 2- hydroxyphenethyl alcohol are useful as antioxidants (id.). Based on these findings, the Examiner concludes that it would have been prima facie 1 Appellants request that, if the Examiner's Â§ 112, 1st paragraph, rejection is affirmed, "the Board explicitly state that the above unentered amendment of claim 11 would overcome the rejection of claim 11 under 35 U.S.C. Â§ 112, first paragraph" (App. Br. 9). We decline to make such a statement. Appeal 2012-006218 Application 12/067,987 7 obvious to use the 2-hydroxyphenethyl alcohol of Iwane as the phenolic antioxidant of Gruber's process (id.). Appellants contest this rejection by arguing that Iwane is non- analogous art (App. Br. 11-14). Two criteria are relevant in determining whether prior art is analogous: "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). Furthermore, "[t]he Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 . . . (2007), directs us to construe the scope of analogous art broadly." Wyers, 616 F.3d at 1238. In applying these criteria, we construe the scope of analogous art broadly and determine that Iwane is reasonably pertinent to the particular problem with which Appellants are involved. As indicated above, the Examiner finds (Ans. 6) that Iwane discloses phenolic compounds which are useful as antioxidants (col. 8, ll. 48-53) and that Gruber discloses using phenolic compounds as antioxidant stabilizing agents in polymerization processes the type claimed by Appellants (col. 6, ll. 46-58). Appellants are involved with improving such polymerization processes by using certain Appeal 2012-006218 Application 12/067,987 8 aromatic diols, for example, to aid formation of multimodal molar mass distribution (Spec. 5:25-29). Iwane is reasonably pertinent to the problem of improving such polymerization processes because the phenolic compounds thereof are taught to be useful as antioxidants, and phenolic antioxidants are taught by Gruber to improve these polymerization processes. Appellants argue that Iwane fails to satisfy the second criteria for analogous art because tens of thousands of publications disclose antioxidants (App. Br. 13) and because Iwane's phenolic compounds are disclosed as having a number of uses in addition to the antioxidant utility (id. at para. bridging 13-14). However, these arguments do not appear to be germane to the issue of whether Iwane is reasonably pertinent to the particular problem with which Appellants are involved. For this reason, Appellants' arguments do not persuade us that Iwane is from a non-analogous art. Appellants also argue that a person of ordinary skill in the art would have lacked the motivation to combine Gruber and Iwane (id. at 14). We cannot agree. One with ordinary skill in this art would have combined these references in the manner proposed by the Examiner in order to provide Gruber's process with Iwane's phenolic antioxidant in accordance with the teaching in Gruber of using a phenolic antioxidant in the process. According to Appellants, "Gruber directs the person of ordinary skill in the art toward hindered phenolic compounds as antioxidants, and teaches away from the use of aromatic diols of claim 3" (id. at 15). We perceive no Appeal 2012-006218 Application 12/067,987 9 convincing merit in Appellants' position. While hindered phenolic compounds are disclosed, Gruber also discloses "other phenolic compounds" (col. 6, l. 50) as antioxidants. We do not understand and Appellants do not explain why such disclosure teaches away from aromatic diols of the type encompassed by claim 3 and of the type disclosed by Iwane. Finally, Appellants contest the claim 3 rejection by arguing that "[n]othing in Gruber would guide the person of ordinary skill in the art to select Iwane from among the over roughly 41,000 U.S. patents and uncounted other publications that could have provided information regarding antioxidants" (App. Br. para. bridging 15-16). Contrary to the premise of this argument, the obviousness issue before us is not whether a person of ordinary skill in the art would have preferentially selected Iwane from among all other references which disclose antioxidants. Rather, the issue is what the combined teachings of Gruber and Iwane would have suggested to the person of ordinary skill. For the reasons discussed above, these teachings would have suggested the combination proposed by the Examiner. The only other argument presented by Appellants in contesting the rejection based on Gruber and Iwane relates to dependent claims 4-7. In particular, Appellants argue that the applied references contain no teaching or suggestion of a bimodal or multimodal molar mass distribution as required by these claims (id. at 17-18). We agree. Appeal 2012-006218 Application 12/067,987 10 The Examiner finds that the claimed bimodal or multimodal molar mass distribution is satisfied by Gruber's disclosure of producing a plurality of polylactide polymer chains having a number average molecular weight from about 10,000 to about 300,000 (Ans. 7, 12-13). The deficiency of this finding is that the Examiner has failed to explain why such disclosure somehow teaches the claimed bimodal or multimodal distribution. For all we know based on the record before us, Gruber's polyhydroxycarboxylic acid has a monomodal, rather than a bimodal or multimodal, distribution. For the above stated reasons, we sustain the rejection based on Gruber and Iwane as to claims 3, 8, 9, 11-14, and 17-19 but do not sustain the rejection as to claims 4-7. The rejection based on Gruber, Iwane, and Hitomi In rejecting claim 15, the Examiner concludes that "it would have been obvious to one of ordinary skill in the art to modify [the] process disclosed by Gruber combined with Iwane by partially replacing step of melt polycondensation with step of solid state polycondensation per teaching of Hitomi" (Ans. 8). Appellants argue that the applied references contain no teaching or suggestion of the additional claim 15 requirement for pre-melt- polycondensation (App. Br. 18, Reply Br. 9). Appeal 2012-006218 Application 12/067,987 11 This argument is persuasive. The Examiner fails to address the additional claim 15 requirement in the rejection (Ans. 8) and in the response to Appellants' argument (id. at 13). As a consequence, we do not sustain the rejection of claim 15 based on Gruber, Iwane, and Hitomi. The rejection based on Gruber, Iwane, and Enomoto The Examiner finds that Gruber and Iwane are silent regarding removal of water from hydroxycarboxylic acid before polymerization as required by claim 16 (id. at 8). In addition, the Examiner finds that Enomoto teaches that direct polycondensation of hydrocarboxylic acid will generate water which reduces the molecular weight of the polycondensate and which must be removed in order to obtain high molecular weight polyhydroxycarboxylic acid (id.). The Examiner then concludes that it would have been obvious "to remove water from raw materials, including hydrocarboxylic acid before polymerization in process disclosed by Gruber combined with Iwane because presence of water in reaction system causes reduction of molecular weight of polyhydrocarboxylic acid as taught by Enomoto" (id. at 9). Appellants state that Enomoto is silent regarding removal of free water from a reaction mixture prior to polycondensation (App. Br. 19) and argue that "[c]ombining Enomoto's teaching with the process of Gruber Appeal 2012-006218 Application 12/067,987 12 would also fail to teach or suggest removal of free water prior to polycondensation, as is recited by claim 16" (id.). We understand that Enomoto does not disclose removing free water from hydrocarboxylic acid prior to polycondensation, and the Examiner does not contend otherwise. Rather, the Examiner's above obviousness conclusion is based on Enomoto's teaching that water reduces the molecular weight of polyhydrocarboxylic acid. The deficiency of Appellants' argument is that it fails to address, and thereby fails to show error in, the rationale expressed by the Examiner as support for the conclusion of obviousness. We sustain, therefore, the rejection of claim 16 as unpatentable over Gruber, Iwane, and Enomoto. Conclusion In summary, we have sustained each of the Examiner's above rejections except for the Â§ 103 rejections of claims 4-7 and 15. The decision of the Examiner 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. Â§ 1.136(a)(1)(iv). AFFIRMED-IN-PART Appeal 2012-006218 Application 12/067,987 13 tj