2019002826 (P.T.A.B. Dec. 2, 2020)

Detering, Jürgen et al.

Patent Trials and Appeals BoardDec 2, 2020

2019002826 (P.T.A.B. Dec. 2, 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. 13/299,688 11/18/2011 Jürgen Detering 074014-0451-286586 6639 123223 7590 12/02/2020 Faegre Drinker Biddle & Reath LLP (WM) Attn: Intellectual Property Group One Logan Square, Suite 2000 Philadelphia, PA 19103-6996 EXAMINER KUMAR, PREETI ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 12/02/2020 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JÜRGEN DETERING, BOLETTE URTEL, HEIKE WEBER, ROLAND ETTL, TORBEN GÄDT, EWALD HEINTZ, THORSTEN BASTIGKEIT, THOMAS EITING, and DOROTA SENDOR-MÜLLER __________ Appeal 2019-002826 Application 13/299,688 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and MICHAEL G. McMANUS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 16–21, 24–26, 37–41, 43, 45–49. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as BASF SE. Appeal Brief dated August 16, 2018 (“Br.”), at 2. Appeal 2019-002826 Application 13/299,688 2 The Appellant’s invention is directed to copolymers comprising carboxylic acid groups, sulfo groups, and polyalkylene oxide groups that are useful as scale- inhibiting additives in washing and cleaning products and a detergent formulation comprising the copolymers. See Spec. 1, ll. 1–2. Representative claim 26 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 26. A detergent formulation for machine dishwashing, comprising, as components: a) 1 to 20% by weight of at least one copolymer which comprises, in copolymerized form, a1) 30 to 90% by weight of at least one monoethylenically unsaturated C3-C8-carboxylic acid or of an anhydride or salt thereof wherein the monomer a1) is selected from the group consisting of acrylic acid, methacrylic acid and salts thereof, a2) 3 to 60% by weight of at least one monomer comprising sulfo groups is allylsulfonic acid or 2-acrylamido-2- methylpropanesulfonic acid, a3) 3 to 60% by weight of at least one nonionic monomer of the formula I H2C=C(R1)(CH2)xO[R2-O]o-R3 (I) in which R1 is hydrogen or methyl, R2 are identical or different, linear or branched C2-C6-alkylene radicals which may be arranged in blocks and/or randomly, and R3 is hydrogen or a straight-chain or branched C1-C4-alkyl radical, x is 0, 1 or 2 and o is a number from 10.7 to 50, a4) 0 to 30% by weight of one or more further ethylenically unsaturated monomers which are polymerizable with a1), a2) and a3, where the sum of a1), a2), a3) and a4) does not exceed 100% by weight, b) 0 to 20% by weight of polycarboxylates other than component a), c) 0 to 50% by weight of complexing agents, Appeal 2019-002826 Application 13/299,688 3 d) 0 to 70% by weight of phosphates, e) 0 to 60% by weight of further builders and cobuilders, f) 0.1 to 20% by weight of nonionic surfactants, g) 0 to 30% by weight of bleaches and optionally bleach activators and bleach catalysts, h) 0 to 8% by weight of enzymes, i) 0 to 50% by weight of one or more further additives wherein the sum of components a) to i) does not exceed 100% by weight. Br. 23–24. The Examiner maintains the following grounds of rejection on appeal: (1) claims 16, 26, 37, and 39 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement;2 (2) claims 16–21, 24–26, 37–41, 43, 45–47 and 49 under 35 U.S.C. § 103(a) as unpatentable over Hamers et al.;3,4 (3) claim 48 under 35 U.S.C. § 103(a) as unpatentable over Hamers in view of Dupont et al.;5 and 2 The Examiner rejects claim 36 under 35 U.S.C. § 112, first paragraph, based on the written description requirement. See Final Office Action dated April 5, 2018 (“Final Act.”), at 5. Claim 36, however, was cancelled in an Amendment dated March 28, 2017. The Examiner also discusses claim 26 in the body of the rejection but omits claim 26 from the statement of the rejection. See Final Act. 5. Therefore, the statement of the rejection has been corrected to include claim 26 and omit claim 36. See Br. 7, n.1 (noting that claim 26 was not included in the statement of the rejection and claim 36 has been cancelled). 3 US 2004/0025262 A1, published February 12, 2004 (“Hamers”). 4 The Examiner rejects claim 36 under 35 U.S.C. § 103(a) as unpatentable over Hamers. See Final Act. 6. However, as indicated above in footnote 2, claim 36 was cancelled in an Amendment dated March 28, 2017. Therefore, the statement of the rejection has been corrected to omit claim 36. 5 WO 2010/024468 A1, published March 4, 2010 (“Dupont”). Appeal 2019-002826 Application 13/299,688 4 (4) claims 16–21, 24–26, 37–40, 43, 45, and 46 under 35 U.S.C. § 103(a) as unpatentable over Cha et al.6,7 B. DISCUSSION 1. Rejection (1) Claim 26 recites that “o is a number from 10.7 to 50” in formula (I). Br. 24. The Examiner finds that the end point of 10.7 in the claimed range is not supported by the original disclosure of the instant Application. Non-Final Act. 4;8 Ans. 3.9 The Examiner finds written description support for the range of 3–50. Non-Final Act. 4; Ans. 3; see also Spec. 6, ll. 12–13 (disclosing that “o is from 3 to 50”). The Examiner, however, finds that “the claimed end point of 10.7 is new matter.” Non- Final Act. 4; see also Ans. 3. There is no dispute on this record that the original disclosure of the instant Application does not provide literal support for the monomer of formula (I) in claim 26, wherein “o is a number from 10.7 to 50.” The Appellant, nonetheless, argues that Example 6 in the Appellant’s Specification provides written description support for the end point 10.7 in the claimed range. Br. 8. Example 6 discloses a monomer having the following formula: CH2=CHCH2O-(EO7.7PO3.0)-H wherein “EO” is said to be ethylene oxide, “PO” is said to be 1,2-propylene oxide, and EO and PO, collectively, are said to correspond to [R2-O] in formula (I). Spec. 6 EP 0 184 894, published June 18, 1986 (“Cha”). 7 The Examiner also rejects claim 36 under 35 U.S.C. § 103(a) as unpatentable over Cha. See Final Act. 9. However, as indicated above in footnote 2, claim 36 was cancelled in an Amendment dated March 28, 2017. Therefore, the statement of the rejection has been corrected to omit claim 36. 8 Non-Final Office Action dated June 7, 2017 (“Non-Final Act.”). 9 Examiner’s Answer dated December 19, 2018 (“Ans.”). Appeal 2019-002826 Application 13/299,688 5 20, l. 18; Ans. 9. The Appellant argues that “EO is 7.7% and PO is 3.0%=10.7.” Br. 8. Relying on In re Wertheim, 541 F.2d 257 (CCPA 1976), the Appellant argues that the end point 10.7 “is clearly supported” and “is not new matter.” Br. 8. In response, the Examiner finds that “(linear) addition of the subscripts of different functional groups is not mathematically sound nor is it proper stoichiometric chemistry. It is noted that a non-integer subscript such as 7.7 for the number of repeat units represents a statistical average and it is not sound mathematics to add statistical averages.” Ans. 9. The Appellant does not direct us to any error in the Examiner’s findings. Moreover, the Examiner finds that the Appellant “has unjustifiably extrapolated the subscript values for the species EO (ethylene oxide) and PO (1,2- propylene oxide) [in Example 6] to the [claimed] genus R2O wherein R2 spans C2- C6 alkylene radicals and thus encompasses other species (in addition to EO and PO).”10 Ans. 9. In Wertheim, 541 F.2d at 261–62, relied on by the Appellant, the issue was whether the original disclosure provided written description support for a solids content “between 35% and 60%.” Relying on the description of a broader range of “25–60%” solids content and specific embodiments of 36% and 50%, the Court answered the question in the affirmative. Id. at 265. 10 The Examiner also finds that in Example 6, “x” is 1 (referring to (CH2)x in claim 26), but claim 26 recites that “x” also may be 0 or 2. Non-Final Act. 4. Moreover, claim 26 recites that R1 is “hydrogen or methyl” and R3 is “hydrogen or a straight- chain or branched C1-C4-alkyl radical.” Br. 24. In Example 6, R1 and R3 are both hydrogen. Spec. 20, l. 18. Appeal 2019-002826 Application 13/299,688 6 In this case, the issue is whether the original disclosure provides written description support for the newly claimed lower limit of [R2-O]o, wherein “o is a number from 10.7 to 50,” in the generic formula H2C=C(R1)(CH2)xO[R2-O]o-R3. The difference between the facts in Wertheim and the facts in this case is addressed in Wertheim as follows. We see an important practical distinction between broad generic chemical compound inventions, for example, as in In re Ruschig, [379 F.2d 990 (CCPA 1967)], in which each compound within the genus is a separate embodiment of the invention, and inventions like that at bar [i.e., in Wertheim], in which the range of solids content is but one of several process parameters. Wertheim, 541 F.2d at 264. In this case, the Appellant’s amendment narrowing the range of “o” to “a number from 10.7 to 50” effectively carves out a subgenus of monomers, represented by formula (I) in claim 26, from the genus originally described in the Appellant’s Specification11 with no guidance from the original disclosure other than the single monomer disclosed in Example 6. In other words, there are no blaze marks in the Appellant’s original disclosure directing one of ordinary skill in the art to the now claimed subgenus of monomers recited in claim 26. See Ruschig, 379 F.2d at 995 (“We are looking for blaze marks which single out particular trees. We see none.”). Based on the foregoing, a preponderance of the evidence of record supports the Examiner’s finding that the Appellant’s original disclosure does not provide written description support for the limitation “o is a number from 10.7 to 50” in claim 26. Therefore, the rejection of claim 26 and dependent claims 16, 37, and 39 11 See Spec. 3, l. 36–4, l. 4 (describing formula (I)); see also Spec. 26, ll. 8–15 (reciting, in original claim 1, that “o is a natural number from 3 to 50). Appeal 2019-002826 Application 13/299,688 7 under 35 U.S.C. § 112, first paragraph, based on the written description requirement, is sustained.12 2. Rejections (2) and (3) The Examiner finds Hamers discloses a detergent formulation comprising from 0.05 to 20% of a reactive modified copolymer. Final Act. 6. The Examiner finds the copolymer comprises “a nonionic monomer meeting the claimed a3) and also an ethylenically unsaturated monomer (f) meeting the claimed a3.” Final Act. 6. For support, the Examiner directs our attention to paragraphs 52, 53, 60, 61, and 168–172 of Hamers. Final Act. 6. The Examiner finds “[t]he nonionic monomers described in these portions of [Hamers] are the same nonionic monomers described in applicant’s specification [0043–0050].”13,14 Final Act. 6. 12 In the event of further prosecution, the Examiner should consider rejecting claim 46 under 35 U.S.C. § 112, first paragraph, based on the written description requirement. Independent claim 46 further narrows the range of “o” in formula (I) to “a number from 16 to 50.” Br. 26. The Appellant argues that the monomer disclosed in Example 5 provides written description support for the newly claimed lower limit of “o” in claim 46. Br. 8–9; see also Spec. 19, l. 40 (disclosing a monomer of the formula CH2=CHCH2O-(EO16)-H). However, for the reasons discussed above with respect to claim 26, it appears that the lower limit of “o” in claim 46 also lacks written description support. 13 We understand that the Examiner is referring to paragraphs 43–50 of the Appellant’s published Application, US 2012/0129749 A1 (“Application 749”). 14 The Examiner also finds that paragraphs 26 and 61 of Hamers guide “one of ordinary skill to the modification by its teaching that the OH groups of the underlying alcohols may be wholly or partly etherified or esterified.” Final Act. 6 (emphasis added). It is unclear on this record what modification the Examiner is referring to in the obviousness rejection on appeal. The only modification that can be deduced from the Examiner’s rejection is that the amount of nonionic monomer in Hamers is optimized. See Final Act. 6 (discussing optimizing the amount of nonionic monomer in Hamers). The Examiner also finds that paragraph 56 of Hamers teaches monomers that encompass “the claim 14 (a3)” and paragraph 29 of Appeal 2019-002826 Application 13/299,688 8 The Appellant argues that Hamers does not teach formula (I) recited in claim 26 as is required by the appellant’s claimed invention, let alone in which R1 is hydrogen or methyl, R2 are identical or different, linear or branched C2-C6-alkylene radicals, which may be arranged in blocks and/or randomly, and R3 is hydrogen or a straight-chain or branched C1-C4-alkyl radical, x is 0, 1 or 2 and o is a number from 10.7 to 50. Br. 15. On this record, the Examiner does not direct us to any monomer disclosed in Hamers that falls within the scope of formula (I) in claim 26. Paragraphs 52 and 53 of Hamers disclose amounts of monomers, but neither paragraph describes any specific monomers. Paragraphs 168–172 of Hamers disclose nonionic surfactants that are added to the detergent formulation in addition to Hamers’ reactive modified polymers. See Hamers ¶¶ 145–147, 153–155 (disclosing that the laundry detergent formulations contain a reactive modified polymer and at least one nonionic and/or anionic surfactant). Paragraphs 60 and 61 of Hamers do disclose specific monomers. The Examiner, however, has failed to identify which monomers disclosed in those paragraphs are within the scope of formula (I) in claim 26.15 See Br. 16 (arguing that monomer a3) in formula (I), recited in claim 26, does not include the polyunsaturated monomers or crosslinkers described in paragraph 61 of Hamers). Hamers teaches alkylene radicals “encompassed by claim 14 (a3).” Final Act. 6–7. Claim 14, however, was cancelled in an Amendment dated March 28, 2017. 15 At best, monomers disclosed in paragraph 60 of Hamers appear to correspond to the preferred monomers of formulas (IIa) and (IIb) disclosed in paragraph 41 of Application 749, not formula (I) recited in claims 26 and 46. See Application 749, at ¶ 43. Appeal 2019-002826 Application 13/299,688 9 Thus, on this record, Examiner’s general finding that the nonionic monomers disclosed in paragraphs 52, 53, 60, 61, and 168–172 “are the same nonionic monomers described in applicant’s specification [0043–0050],”16 is not sufficient to satisfy the Examiner’s initial burden of presenting a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (the Examiner bears the initial burden of presenting a prima facie case of unpatentability). The Examiner’s reliance on Dupont in the obviousness rejection of claim 48 does not cure the deficiencies in the rejection of claim 26 identified above. See Final Act. 8–9. Therefore, the obviousness rejections of claims 16–21, 24–26, 37– 41, 43, 45–49 based on Hamers, either alone or in combination with Dupont, are not sustained.17 3. Rejection (4) a. Claims 16, 17, 20, 21, 24–26, 37–39, 43, and 45 The Examiner finds Cha discloses a corrosion inhibiting polymer. Final Act. 9. Claim 26 recites “[a] detergent formulation for machine dishwashing.” Br. 23. The Examiner explains that “a dishwasher detergent formulation” has not been given patentable weight because the phrase is in the preamble of the claim and merely recites an intended use for the formulation. Final Act. 3. The Appellant “agrees that the preamble ‘for machine dishwashing’ may not be given patentable weight” but argues that “the term ‘detergent formulation’ 16 Final Act. 6. 17 The Examiner does not separately address independent claim 46 in the obviousness rejection based on Hamers. Claims 46 and 26 recite the same copolymer with the exception that the lower limit of “o” in claim 46 is 16, not 10.7, as recited in claim 26. See Br. 24, 26. Appeal 2019-002826 Application 13/299,688 10 should be given patentable weight.” Br. 10. The Appellant, however, does not explain why the term “detergent formulation” (i.e., a formulation for a detergent) is not merely a statement of intended use, as the Examiner concludes. Moreover, the Appellant does not direct us to a definition of “detergent formulation” in the Specification. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (during examination, “the PTO must give claims their broadest reasonable construction consistent with the specification”). Thus, on this record, it is reasonable to interpret the term “detergent formulation” in the preamble of the claims on appeal as a formulation that is intended to perform a cleaning function. Similar to the Appellant’s “detergent formulation,” which includes copolymer a), Cha discloses “a method of inhibiting corrosion and the formation and deposition of scale and iron oxide in aqueous systems that comprises adding to the system at least 0.1 ppm of a water-soluble polymer.” Cha 2, ll. 25–28; see also Spec. 1, ll. 1–2 (disclosing that the Appellant’s copolymers are scale-inhibiting additives). Thus, it is reasonable to find that Cha’s water-soluble polymer is capable of performing a cleaning function. The Examiner finds that Cha’s water-soluble polymer comprises, inter alia, “5 to 40% by weight of an unsaturated polyalkylene oxide compound which encompasses claimed a3.” Final Act. 10. More specifically, the Examiner finds the compound is a monomer within the scope of formula (I) in claim 26, wherein “x” is 1 and “n” is 10. Final Act. 10; Cha 5, l. 14; see also Br. 10 (stating that “Cha’s ‘n’ corresponds to the appellant’s claimed ‘o’”). Although Cha does not disclose that “n” is 10.7, as recited in claim 26, the Examiner concludes that Cha suggests claimed formula (I), wherein “n” is 10.7. Final Act. 11. Appeal 2019-002826 Application 13/299,688 11 The Appellant argues that Cha teaches away from a value of “n” greater than 10 and teaches that “n” is preferably 7. Br. 10. The Appellant’s argument is not persuasive of reversible error. Cha discloses that “n is 5 to 10.” Cha 5, l. 14; see also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosures of the prior art, including unpreferred embodiments, must be considered”). The mere fact that Cha does not expressly disclose a value higher than 10 for “n” does not, without more, “teach away” from the claimed value of 10.7. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention”). Moreover, in response to the Appellant’s argument, the Examiner finds that one of ordinary skill in the art would have expected Cha’s monomer (i.e., CH2=CH-CH2-(OCH2CH2)nOCH3),18 wherein “n” is 10, and the Appellant’s claimed monomer (i.e., formula (I) in claim 26), wherein “o” is 10.7, to have similar scale inhibiting properties. Ans. 11. In other words, the Examiner finds that the upper limit for “n” in Cha’s monomer (i.e., n=10) and the lower limit for “o” in the Appellant’s claimed formula (I) (i.e., o=10.7) are “close enough” that one of ordinary skill in the art would have expected Cha’s polymer and the copolymer recited in claim 26 to have the same or substantially the same scale inhibiting properties.19 See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) 18 Cha 5, l. 14. 19 The copolymer recited in claim 26 comprises monomers a1), a2), a3), and a4). Br. 23–24. There is no dispute on appeal that the polymers disclosed in Cha comprise monomers that fall within the scope of the Appellant’s claimed monomers a1), a2), and a4). Appeal 2019-002826 Application 13/299,688 12 (citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)). The Appellant does not direct us to any evidence to the contrary. Therefore, the obviousness rejection of claims 16, 17, 20, 21, 24–26, 37–39, 43, and 45 based on Cha is sustained. b. Claim 18 Claim 18 depends from claim 26 and recites “wherein x in formula (I) is 2.” Br. 23. The Appellant argues that “x” is 1 in Cha and “there would [have been] no reason for a person of ordinary skill in the art to modify Cha so that x is 2.” Br. 11. In response, the Examiner finds that Cha’s monomer,20 wherein “x” is 1, and monomer a3) recited in claim 18, wherein “x” is 2, would have been expected to have similar scale inhibiting properties because alkyl chains are generally very stable, nonreactive functional groups. Ans. 11; see also Peterson, 315 F.3d at 1329 (citing Titanium Metals, 778 F.2d at 783). The Appellant does not direct us to any error in the Examiner’s finding. Therefore, the obviousness rejection of claim 18 based on Cha is sustained. c. Claim 19 Claim 19 depends from claim 18 and recites that “R1 in formula (I) is methyl.” Br. 23. The Appellant argues that R1 is H in Cha and there would have been no reason for one of ordinary skill in the art to modify R1 in Cha as recited in claim 19. Br. 12. The Examiner bears the initial burden of presenting a prima facie case of unpatentability. Oetiker, 977 F.2d at 1445. In the obviousness rejection on appeal, 20 Cha 5, l. 14. Appeal 2019-002826 Application 13/299,688 13 the Examiner does not separately address claim 19. That is, the Examiner does not find that R1 in Cha’s monomer21 is methyl or explain why one of ordinary skill in the art would have modified R1 to be methyl. Therefore, the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness. For that reason, the obviousness rejection of claim 19 based on Cha is not sustained. d. Claim 40 Claim 40 depends from claim 26 and recites “wherein 1 to 30% by weight of bleaches and optionally bleach activators and bleach catalysts are present in the formulation.” Br. 25; see also Br. 24 (reciting, in claim 26, that the detergent formulation comprises, inter alia, a) a copolymer and g) “0 to 30% by weight of bleaches and optionally bleach activators and bleach catalysts”). The Examiner finds that Cha teaches “a minimum dosage of 0.1 to 25 ppm of free-radical initiators encompassing bleaches, namely peroxides; and bleach catalysts namely sodium persulfate and sodium metabisulfite.”22 Final Act. 4 (citing Cha 4, ll. 20–35). The Appellant argues that the bleach or bleach activators referred to by the Examiner are used in combination with Cha’s monomers to prepare the polymer in the disclosed polymerization process. Br. 13. “Once the polymer is prepared,” the Appellant argues that “the free radical initiator is not present is [sic, in] any substantial quantity let alone in an amount of at least 1%.” Br. 13. In contrast to Cha, the Appellant argues that the formulation recited in claim 40 “requires a 21 Cha 5, l. 14. 22 Cha discloses that the polymers of the invention, not the free-radical initiators, “are used in a minimum dosage of 0.1 ppm, preferably 0.1 to 100 ppm, particularly 0.1 to 25 ppm.” Cha 4, ll. 34–35. Appeal 2019-002826 Application 13/299,688 14 copolymer (component a) and a separate bleach or bleaching activator [component g)].” Br. 14 (original emphasis omitted). The Appellant’s argument is persuasive of reversible error. Cha discloses that “[t]he polymers may be prepared by mixing the monomers preferably in the presence of a free-radical initiator.” Cha 4, ll. 21–22 (emphasis added). The Examiner has not shown that any amount, let alone the claimed amount, of the free-radical initiator is present in the mixture after the polymers are prepared. The obviousness rejection of claim 40 based on Cha is not sustained. e. Claim 46 Independent claim 46 recites, inter alia, a copolymer comprising monomers a1)–a4), wherein monomer a3) is at least one nonionic monomer of formula (I). Br. 25–26. Formula (I) recited in claim 46 is the same as formula (I) recited in claim 26, with the exception that “o is a number from 16 to 50.”23 Br. 26. The Appellant argues that “Cha teaches away from ‘o’ going above 10, let alone at least 16 and teaches preferably that ‘o’ is only 7.” Br. 14. The Appellant’s argument is not persuasive of reversible error. As discussed above, Cha discloses that “n is 5 to 10.” Cha 5, l. 14; see also Lamberti, 545 F.2d at 750 (“all disclosures of the prior art, including unpreferred embodiments, must be considered”). The mere fact that Cha does not expressly disclose a value higher than 10 for “n” does not, without more, “teach away” from the claimed value of 16. See Syntex, 407 F.3d at 1380 (“a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention”). 23 Claim 26 recites that “o is a number from 10.7 to 50.” Br. 24. Appeal 2019-002826 Application 13/299,688 15 Moreover, in response to the Appellant’s argument, the Examiner finds that one of ordinary skill in the art would have expected Cha’s monomer (i.e., CH2=CH-CH2-(OCH2CH2)nOCH3),24 wherein “n” is 10, and the Appellant’s claimed monomer (i.e., formula (I) in claim 46), wherein “o” is 16, to have similar scale inhibiting properties. Ans. 12–13. In other words, the Examiner finds that the upper limit for “n” in Cha’s monomer (i.e., n=10) and the lower limit for “o” in the Appellant’s claimed formula (I) (i.e., o=16) are “close enough” that one of ordinary skill in the art would have expected Cha’s polymer and the copolymer recited in claim 46 to have the same or substantially the same scale inhibiting properties.25 See Peterson, 315 F.3d at 1329 (citing Titanium Metals, 778 F.2d at 783). The Appellant does not direct us to any evidence to the contrary. Therefore, the obviousness rejection of claim 46 based on Cha is sustained. C. CONCLUSION The Examiner’s decision is affirmed-in-part. 24 Cha 5, l. 14. 25 The copolymer recited in claim 46 comprises monomers a1), a2), a3), and a4). Br. 25–26. There is no dispute on appeal that the polymers disclosed in Cha comprise monomers that fall within the scope of the Appellant’s claimed monomers a1), a2), and a4). Appeal 2019-002826 Application 13/299,688 16 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 26, 37, 39 112, first paragraph Written description 16, 26, 37, 3926 16–21, 24– 26, 37–41, 43, 45–47, 49 103(a) Hamers 16–21, 24– 26, 37–41, 43, 45–47, 49 48 103(a) Hamers, Dupont 48 16–21, 24– 26, 37–40, 43, 45, 46 103(a) Cha 16–18, 20, 21, 24–26, 37–39, 43, 45, 46 19, 40 Overall Outcome 16–18, 20, 21, 24–26, 37–39, 43, 45, 46 19, 40, 41, 47–49 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED-IN-PART 26 In the event of further prosecution, the Examiner should consider rejecting claims 17–21, 24, 25, 38, 40, 41, 43, 45, and 47–49, under 35 U.S.C. § 112, first paragraph, based on their dependency on claim 26. Moreover, as discussed above in footnote 12, the Examiner should consider rejecting claim 46 under 35 U.S.C. § 112, first paragraph, for the same reasons we sustained the rejection of claim 26 under 35 U.S.C. § 112, first paragraph.