Application of Rinehart

• Decision Date: 11 March 1976
• Docket Number: Patent Appeal No. 75-608.
• Citation: In re Application of Rinehart, 189 USPQ 143, 531 F.2d 1048 (Cust. Ct. 1976)
• Parties: Application of Verne R. RINEHART.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

531 F.2d 1048

Application of Verne R. RINEHART.

Patent Appeal No. 75-608.

United States Court of Customs and Patent Appeals.

March 11, 1976.

Paul H. Heller, New York City, attorney of record, for appellant.Hugh A. Chapin, Kenyon & Kenyon Reilly Carr & Chapin, New York City, Ford W. Brunner, James M. Wallace, Jr., Akron, Ohio, Malvin R. Mandelbaum, New York City, of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents.Jack E. Armore, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

MARKEY, Chief Judge.

This is an appeal from the decision of the Patent and Trademark Office Board of Appeals(board) affirming the examiner's final rejection of claims 1 through 9, which are all the claims in appellant's (Rinehart's) application serial No. 130,743, filed April 2, 1971¹ entitled "Process for Preparing Resin."We reverse.

The Invention

Commercial scale quantities of polymeric ethylene terephthalate (PET) are produced in either a batch or continuous process by heating a dicarboxylic acid with glycol in the presence of a preformed low molecular weight polyester solvent² under superatmospheric pressure and utilizing a low ratio of glycol to acid.The product may be conventionally condensation polymerized in the presence of a catalyst.

The claims have been treated together by Rinehart and the solicitor and will be so treated here.Claims 1 and 4 are illustrative:

1.The method for the commercial scale production of polyesters which comprises adding commercial scale quantities of ethylene glycol and a free aromatic dicarboxylic acid in the molar ratio of glycol to acid of from 1.7:1 to 1.05:1 to a solvent consisting of a preformed low molecular weight linear condensation polyester of a glycol and a dicarboxylic acid, said polyester having an average degree of polymerization of from 1.4 to 10, heating and reacting the mixture at a temperature above the melting temperature of the low molecular weight linear polyester at a pressure of from about 20 to about 1000 pounds per square inch gauge pressure until a linear condensation polyester resin of said glycol and acid having an average degree of polymerization of from 1.4 to 10 is formed.

4.The method for the commercial scale production of polyesters which comprises continuously adding commercial scale quantities of ethylene glycol and terephthalic acid in the ratio of from 1.7:1 to 1.05:1 of ethylene glycol to terephthalic acid to a solvent consisting of low molecular weight ethylene glycol-terephthalate polyester having an average degree of polymerization of from 1.4 to 10 while heating and reacting the mixture at a temperature above the melting temperature of the low molecular weight ethylene glycol-terephthalate polyester at a pressure range of from about 20 to about 1000 pounds per square inch gauge pressure, continuously venting the water vapor formed in the reaction at such a rate that the pressure in the system is maintained constant within said pressure range and continuously withdrawing an amount of low molecular weight ethylene glycol-terephthalate polyester about equal to the amount of ethylene glycol and terephthalic acid added.

Board

The board affirmed the rejection of claims 1 through 9 under 35 U.S.C. § 103 as obvious on Pengilly³ and Munro et al. (Munro)⁴"considered together."⁵Both Pengilly and Munro form PET by heating, in either a batch or continuous process, a dicarboxylic acid with glycol, utilizing low ratios of glycol to acid (for example, 1.05:1.0 to 1.3:1.0 for Pengilly), and then polymerizing the low molecular weight ester formed therefrom in the presence of a catalyst.The processes differ in that the initial step of the Pengilly process is conducted at atmospheric pressure utilizing a preformed polyester solvent, whereas Munro operates at a higher pressure absent the solvent.

The appealed claims differ substantively from those of the parent application only in reciting "commercial scale production" utilizing "commercial scale quantities."Because the claims in the parent application had been rejected under 35 U.S.C. § 103 on the same prior art and logic, the board merely adopted the previous board opinion, which held that the references established a case of "prima facie obviousness."The earlier board, agreeing with the examiner that Pengilly and Munro considered together rendered the claimed subject matter prima facie obvious because each suggested consonant advantages, stated:

For example, Pengilly suggests that by using a polyester solvent shorter heating times and less glycol is required, and Munro et al suggests that by using higher pressures a shorter reaction time is required.One of ordinary skill in the polymer art would therefore expect that if higher pressures were used in other art processes (i. e., Pengilly) shorter reaction times would be necessary.⁶

The board considered the rebuttal evidence, a single affidavit by the inventor, Rinehart, to be insufficient.The primary apparent purpose of that evidence was to show the commercial inoperability of Pengilly and Munro, taken individually, compared to Rinehart's commercially used method.Rinehart's extensive affidavit included, however, substantial analysis of the entire field of polyester production and of what, in his view, Pengilly and Munro would actually teach those skilled in the art.The experimental pilot plant evidence is summarized below for a low charge molar ratio of glycol to acid (1.1:1.0):

                                       Esterification Reaction
                                              1           2          3             4
                                            Munro      Rinehart   Pengilly       Munro
                  Pressure (psig)                 40         40  0 (Atmos.)            40
                  Temperature (°C.)         250-261     248-252     *           260-262
                  Reactant Batch
                  Size (pounds)                122.1      122.1       122.1         268.6
                  Solvent/Batch       No Solvent    1.2/1.0     1.2/1.0  No Solvent
                  Average Time                   330       150          657           483
                   (Min.)
                

                                 Properties of High Polymer
                % Ether                       2.99       1.68        1.51          3.08
                Melting Point                244.9      252.2       252.8         244.1
                Gardner Rd                    27.1       24.9        27.0          25.4
                Gardner b +                   14.0        8.3        13.6          17.8
                

Rinehart alleged commercial success, based on the 1970 conversion by Goodyear Tire and Rubber Company(the assignee of Rinehart) from the ester interchange method, used since 1959, to Rinehart's direct esterification method.

The affidavit states:

Both the Pengilly, and Munro and Maclean, procedures based on my experience and as evidenced from their patents are operable on a small scale.However, neither of their patents points to any recognition of the problems which arise from scaling up to a commercial process.It is implicit in their patents that the described procedures are satisfactory for commercial operation; but I have found that their techniques are not satisfactory on a commercial scale at about equimolar proportions.The advantages claimed by Munro and Maclean for their process are a short reaction time, improved color, higher softening point and a minimum ether content.However, I have found that as the Munro and Maclean process is scaled up beyond laboratory equipment the reaction becomes inconveniently long, the color deteriorates, the melting point is lowered and the ether content increases.The process of Pengilly was similarly operable on a small scale and not suitable for scale-up to a commercial process.

The board concluded that the affidavit evidence did not rebut its finding of prima facie obviousness because, in its view, the prior art clearly suggested higher pressure, together with an expected attendant advantage of increased reaction rate, as a solution to the commercial difficulties allegedly encountered by Rinehart.Moreover, the recitation to which the affidavit is directed, "commercial scale production" utilizing "commercial scale quantities," was viewed as "inherently" obvious.The board did not consider the utilization of the claimed method by Rinehart's assignee to be evidence of commercial success sufficient to establish unobviousness.

Issue

Whether, in the light of all the evidence, the claimed method would have been obvious at the time the invention was made.

OPINION

Pengilly and Munro individually teach methods for the production of PET which differ, in different respects, from that claimed by Rinehart.A determination under 35 U.S.C. § 103, however, requires consideration of the entirety of the disclosure made by the two references to those skilled in the art.

A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art.Once such a case is established, it is incumbent upon appellant to go forward with objective evidence of unobviousness.In re Fielder,471 F.2d 640(CCPA1973).

Prima Facie Obviousness

On the appeal involving Rinehart's parent application, the board was limited to the sterile evaluation of the claims and the prior art necessitated by availability of only the application and the cited references.Based on that evaluation, that board stated:

We agree with the examiner that, in view of Munro et al., it would be obvious to operate the process of Pengilly at superatmospheric pressure.Looking at it from another point of view, it would be obvious in view of Pengilly to employ preformed ester as a solvent in the reaction of Munro et al.

On the appeal of the present application, the board stated:

With regard to the rejection under Section 103, we find ourselves in substantial agreement with the position of the examiner as set forth in his answer.The claims on appeal are in

...