PBI Performance Products, Inc.

Patent Trials and Appeals BoardNov 17, 2020

2020000415 (P.T.A.B. Nov. 17, 2020)

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. 15/427,381 02/08/2017 Brian C. Benicewicz 2006.144A 7474 29494 7590 11/17/2020 HAMMER & ASSOCIATES, P.C. 112 S. TRYON, SUITE 809 CHARLOTTE, NC 28284-2100 EXAMINER PENG, KUO LIANG ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 11/17/2020 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): kbyrd@hammerpatent.com mail@hammerpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN C. BENICEWICZ, ALEXANDER LANIER GULLEDGE, WARREN P. STECKLE, JR., GREGORY S. COPELAND, and BOBBY G. DAWKINS Appeal 2020-000415 Application 15/427,381 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s January 10, 2019 decision to finally reject claims 1–7, 11, 12 and 14–16. An oral hearing was held telephonically on October 29, 2020.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as PBI Performance Products, Inc. (Appeal Br. 3). 2 A written transcript of the Oral hearing will be entered into the record when the transcript is made available. Appeal 2020-000415 Application 15/427,381 2 CLAIMED SUBJECT MATTER The claims are directed to method of making polybenzimidazole (PBI) (Abstract). The claimed method includes reacting an organic compound having at least 2 amino groups with an organic aldehyde adduct, where the reactants comprises at least 8% by weight of the solution (id.). Claim 1, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 1. A method of making a polybenzimidazole comprising the steps of: reacting, in a solution, an organic compound having at least 4 amino groups with an organic dialdehyde bisulfite, the reactants comprise at least 8% by weight of the solution. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date D’Alelio US 3,763,107 October 2, 1973 Cook “Synthesis of Polybenzimidazoles Containing Arylene Sulfone and Ether Linkages,” Master's Thesis, Oregon State University February 16, 1993 REJECTION Claims 1–7, 11, 12, and 14–16 are rejected under 35 U.S.C. § 103 as unpatentable over D’Alelio, optionally in view of Cook. Appeal 2020-000415 Application 15/427,381 3 DISCUSSION Appellant does not argue any claim separately (see, Appeal Br. 7–9). Accordingly, we select claim 1 as representative and focus our discussion on the rejection of claim 1. The remaining claims will stand or fall with claim 1. The Examiner finds that D’Alelio discloses each step of the claimed invention, except that it does not explicitly teach the claimed reactant concentration (Final Act. 3, citing D’Alelio 2:2–71, 8:5–30, Examples 3(a) and 3(b)). The Examiner further finds that D’Alelio’s Example’s 3(a) and 3(b) show that increasing reactant concentration increases reaction yield (Final Act. 3). Therefore, the Examiner determines that it would have been obvious to increase the reactant concentration to at least 8% in order to enhance the yield (id.). Alternatively, the Examiner determines that a person of skill in the art would have understood that reaction rate generally increases with reactant concentration (i.e. reactant concentration is a result effective variable), so a person of skill in the art would have selected a reactant concentration to achieve a desired polymerization rate (Final Act. 3–4). Appellant argues that a person of ordinary skill in the art would have understood D’Alelio’s Examples 3(a) and 3(b) as inoperable and, therefore, D’Alelio cannot teach or suggest the claimed invention (Appeal Br. 7–8, citing Benicewicz Decl.). In particular, Appellant cites the following sentence in D’Alelio as evidencing the inoperability of Examples 3(a) and 3(b): “The polymers of Example 3 are unsuitable for the preparation of films, fibers or adhesives, and for similar uses” (D’Alelio 22:47–48). This argument is unpersuasive of reversible error. Claim 1 is not limited to polymers suitable for a particular use. Instead, claim 1 simply recites a method of making a polybenzimidazole, without specifying any particular Appeal 2020-000415 Application 15/427,381 4 use for the resulting polymer. While Appellant relies on D’Alelio’s statement that the polymers of Example 3 were unsuitable for particular uses, the Examples specifically state that that polymers were produced (D’Alelio 22:37–39, 22:45–46). Thus, the evidence of record does not support Appellant’s argument that the examples were inoperable. Appellant also argues that a person of skill in the art would not have sought to increase the yield of the D’Alelio reaction, but instead would have been interested in increasing the intrinsic viscosity of the resulting polymer, and that the data from D’Alelio would not have suggested an improvement in the intrinsic viscosity would result from an increase in reactant concentration (Reply Br. 3–4). This argument is not persuasive of reversible error, because (a) claim 1 does not recite any specific intrinsic viscosity, and (b) Appellant has not demonstrated error in the Examiner’s finding that a person of skill in the art would have been motivated to increase reactant concentrations in order to increase reaction yield, even if that was different from the inventor’s motivation in this instance. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). Based on the arguments and evidence, including the Rule 132 Declaration of Brian Benicewicz (“Benicewicz Decl.”), presented by Appellant in the Appeal Brief, the Reply Brief, and during the oral hearing, we determine that the preponderance of the evidence of record supports the Examiner’s position, and we sustain the rejection. . Appeal 2020-000415 Application 15/427,381 5 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 11, 12, 14–16 103 D’Alelio, Cook 1–7, 11, 12, 14–16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED