Ex Parte Balhoff et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201512375549 (P.T.A.B. Feb. 19, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN F. BALHOFF, and CHARLES H. KOLICH __________ Appeal 2013-003584 Application 12/375,549 Technology Center 1700 ____________ Before MARK NAGUMO, MICHAEL P. COLAIANNI, and JEFFREY W. ABRAHAM, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 8-151. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 We do not have jurisdiction over Appellants’ argument that the Examiner’s restriction of claims 1-7 as not relating to a single general inventive concept is not proper (App. Br. 7-8). Appellants’ recourse in such restriction matters is by way of petition to the Technology Center Director. The propriety of a restriction requirement is a petitionable, not an appealable, matter. See Manual of Patent Examining Procedure 9th Ed., § 1201 (March 2014). Appeal 2013-0003584 Application 12/375,549 2 We REVERSE. Appellants’ invention is directed to a method of terminating the bromination of styrenic polymer in a bromination reaction mixture by using enough water to deactivate the catalyst but not enough to form a separate aqueous phase in the reactor (Spec. ¶¶ 3, 4). Claim 8 is illustrative: A process comprising (A) brominating styrenic polymer in an organic solvent in the presence of a Lewis acid bromination catalyst to form a reaction mixture having an organic liquid phase containing dissolved brominated styrenic polymer, and (B) treating said reaction mixture with an aqueous medium in an amount at least sufficient to deactivate the bromination catalyst but insufficient to form a separate continuous liquid phase in the resultant treated reaction mixture. Appellants appeal the following rejections: 1. Claims 8-15 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Kolich et al. (US 2002/0061983 A1, published May 23, 2002, hereinafter “Kolich”). 2. Claims 8-15 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Ao et al. (US 5,916,978, issued June 29, 1999, hereinafter “Ao”)2. 2 Although the rejection over Ao is not presented in the Final Office Action, we note that the Ao rejection was included in the Non-final Office Action dated June 8, 2011. Appellants respond to the Ao rejection in the Brief (App. Br. 11). The Examiner responds to Appellants’ arguments regarding the Ao rejection in the Final Office Action and includes the Ao rejection in the Answer. On the present record, we find that the Examiner’s omission of the Ao rejection in the Final Office Action to be harmless error. Appeal 2013-0003584 Application 12/375,549 3 Appellants’ arguments focus solely on independent claim 8 (App. Br. 9- 17). Therefore, dependent claims 9-15 will stand or fall with our analysis regarding the rejection of claim 8. FINDINGS OF FACT AND ANALYSES The Examiner finds that Kolich and Ao teach, inter alia, adding a 10 wt.% solution of sodium gluconate to a styrenic bromination reaction mixture to deactivate the catalyst, which would not form a separate aqueous phase (Ans. 2, 3, 4). The Examiner finds that since the bromochloromethane (BCM) solvent is water soluble, the addition of the 10 wt.% aqueous solution of sodium gluconate would be sufficient enough to deactivate the catalyst but insufficient to create separate liquid phases based on the solubility of BCM and the amounts used of each reagent (Ans. 4). The Examiner further finds that the prior art discloses additional steps after catalyst deactivation that require adding aqueous solutions which form a separate aqueous phase (Ans. 4-5). The Examiner finds that the art does not disclose that separate phases are formed after catalyst deactivation (Id.). Appellants argue that neither Kolich nor Ao teach or suggest “treating said reaction mixture with an aqueous medium in an amount sufficient to deactivate the bromination catalyst but insufficient to form a separate continuous liquid phase in the resultant treated reaction mixture” as required by claim 8 (App. Br. 9, 11). Appellants argue that Kolich and Ao each disclose that an organic phase and aqueous phase form and thus do not teach the disputed claim limitation (App. Br. 10, 12, 13-14). Appellants contend that the Examiner’s finding that Kolich’s or Ao’s 10 wt.% sodium gluconate solution is not sufficient to form an aqueous phase but is sufficient to Appeal 2013-0003584 Application 12/375,549 4 deactivate the catalyst is unsupported and incorrect in light of the prior art disclosures (App. Br. 14-16). The Examiner has the initial burden of establishing a prima facie case of unpatentability. In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014) citing Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007). In relying upon inherency, the Examiner must provide a basis-in-fact or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. In re King, 801 F.2d 1324 (Fed. Cir. 1986). In the present appeal, the Examiner’s unsupported finding that no separate aqueous phase would form by the addition of a 10 wt.% sodium gluconate solution because the bromochloromethane (BCM) is water soluble is without credible support. The Examiner seems to be relying on the inherent properties of the chemicals involved and the amounts of these chemicals disclosed by Kolich and Ao, but the Examiner provides no evidence regarding the solubility parameters of sodium gluconate or BCM. The Examiner’s conclusory statement regarding the solubility of the BCM and sodium gluconate solution is not sufficient to establish that Kolich or Ao anticipate the claimed subject matter which includes the disputed treating step with an amount of an aqueous solution that is sufficient to deactivate the catalyst but which amount is insufficient to form a separate phase. On this record, we reverse the Examiner’s § 102 rejections over Kolich and Ao. DECISION The Examiner’s decision is reversed. Appeal 2013-0003584 Application 12/375,549 5 ORDER REVERSED mat Copy with citationCopy as parenthetical citation