Ex Parte Dietrich et al

Board of Patent Appeals and Interferences

Jun 12, 2012

10551108 (B.P.A.I. Jun. 12, 2012)

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.
10/551,108 07/11/2006 Ulf Dietrich WAS0737PUSA 4368
22045 7590 06/13/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
LEE, DORIS L
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
06/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ULF DIETRICH and ANKE REINSCHMIDT
________________

Appeal 2011-002262
Application 10/551,108
Technology Center 1700
________________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board filed by OWENS, Administrative Patent Judge.
Opinion dissenting filed by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 16-20, 22-29 and 31-35, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a dispersant, composition containing the
dispersant, and a spray drying process which uses the dispersant. Claims 16
and 24 are illustrative:
16. A dispersant comprising at least one copolymer prepared by
polymerizing a polymerizable mixture consisting essentially of:

a) 5 to 70 wt. % of one or more monomers selected from the group
consisting of ethylenically unsaturated monocarboxylic acids, ethylenically
unsaturated carboxamides, ethylenically unsaturated C4-8 dicarboxylic acids
and anhydrides thereof, and (meth)acrylate monoesters of C2-8 dialcohols;

b) 1 to 40 wt. % of one or more monomers selected from the group
consisting of ethylenically unsaturated compounds with sulfonate or sulfate
functional groups,

c) 10 to 80 wt. % of one or more monomers selected from the group
consisting of ethylenically unsaturated compounds of homopolyoxyethylene
glycols with 1 to 300 oxyethylene units and terminal groups selected from
the group consisting of OH-groups and ether groups -OR' and mixtures
thereof, wherein R' is an alkyl, aryl, alkaryl or aralkyl residue with 1 to 40 C
atoms,

d) 5 to 80 wt. % of one or more monomers selected from the group
consisting of ethylenically unsaturated compounds of polyoxyalkylene
glycols consisting of 1 to 300 C3-4 oxyalkylene units and terminal groups
selected from the group consisting of OH-groups and ether groups -OR' and
mixtures thereof, wherein R' is an alkyl, aryl, alkaryl or aralkyl residue with
1 to 40 C atoms, and,

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e) optionally, 0.5 to 10 weight percent of one or more hydrophobic
comonomers selected from the group consisting of (meth)acrylate esters of
C-1-15 alcohols and vinylaromatics, said copolymer having pendant
polyoxyalkylene moieties derived from monomers c) and d)

the weight percentages based on the total weight of the copolymer, and
totaling 100 wt. %.

24. In a process for the spray drying of aqueous polymer dispersions of
homo- or copolymers of one or more monomers selected from the group
consisting of vinyl esters of unbranched or branched alkylcarboxylic acids
with 1 to 18 C atoms, acrylate esters and methacrylate esters of branched
and unbranched alcohols with 1 to 15 C atoms, dienes, olefins,
vinylaromatics and vinyl halides, in which a dispersant is employed, the
improvement comprising selecting as at least one dispersant, a dispersant of
claim 16.

The References
Debus US 4,137,088 Jan. 30, 1979
Haerzschel US 6,166,113 Dec. 26, 2000
Hirata EP 0 792 850 A1 Sep. 3, 1997
Okazaki (abstract) JP 09-249442 A Sep. 22, 1997
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 16-20, 22, 23, 25, 27, 29, 31 and 32 over Hirata, claims 24 and 26
over Hirata in view of Haerzschel, claim 28 over Hirata in view of Debus,
and claims 33-35 over Hirata in view of Okazaki.
OPINION
We affirm the rejections over Hirata and over Hirata in view of
Debus, and reverse the rejections over Hirata in view of Haerzschel and over
Hirata in view of Okazaki.

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Rejection over Hirata
The Appellants argue that Hirata’s copolymer (p. 2, l. 28 – p. 3, l. 19;
p. 7, ll. 35-47) relied upon by the Examiner (Ans. 3-4) provides too many
possibilities to have rendered the Appellants’ copolymer prima facie obvious
to one of ordinary skill in the art (Br. 7-16; Reply Br. 1-2 and 4).
The fact that Hirata’s disclosure encompasses many copolymers
would not have made any of them less obvious, particularly where, as here,
the copolymer recited in the Appellants’ claims is used for the identical
purpose taught by Hirata, i.e., to improve the fluidity of cement mixtures
(Spec. 1:7-10; Hirata, p. 2, ll. 3-5 and 11-12). See Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839,
841 (CCPA 1964).
The Appellants argue that Hirata does not provide guidance regarding
how to prepare a dispersant which mimics casein (Br. 11 and 14-16)
The Appellants improperly are arguing a limitation which is not in the
claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Although the
Appellants state that the rheological properties of casein are advantageous
(Spec. 3:26-30), the claims are not limited to a composition having those
properties.
The Appellants argue that Hirata discloses copolymers which do not
have the properties required by the Appellants’ claim 23 (Reply Br. 2).
Hirata’s copolymers which correspond compositionally to those of the
Appellants having the properties required by claim 23 also have those
properties. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing”).
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The Appellants argue that their compositions have surprising and
unexpected properties (Br. 13-14; Reply Br. 2).
That argument is not well taken because the Appellants have not
provided a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims, and explained
how the results show differences in properties would have been unexpected
by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324
(CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Thus, we are not persuaded of reversible error in the rejection over
Hirata.
Rejection over Hirata in view of Debus
The Appellants argue that Hirata is combinable with Debus but not
with Haerzschel (Br. 20).
That argument is irrelevant to the rejection because the rejection does
not involve Haerzschel. Hence, we are not convinced of reversible error in
the rejection over Hirata in view of Debus.
Rejection over Hirata in view of Haerzschel
The Examiner argues that it would have been obvious to one of
ordinary skill in the art to combine Hirata’s dispersant with Haerzschel’s
protective colloid “to receive the expected benefit of obtaining a highly
flexible building compositions [sic] with have [sic] good strength and a
significantly higher extensibility (col. 2, lines 20-25)” (Ans. 6).
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The benefits relied upon by the Examiner are benefits provided by
Haerzschel’s protective colloid-stabilized copolymers (col. 2, ll. 18-26). The
Examiner has not established that Hirata’s copolymer which, Hirata
discloses, improves the fluidity of cement mixtures (p. 2, ll. 3-5 and 11-12),
would provide those benefits.
Thus, the Examiner has not established a prima facie case of
obviousness over Hirata in view of Haerzschel.
Rejection over Hirata in view of Okazaki
The Examiner acknowledges that Hirata “fails to teach the addition of
a redispersible polymer powder such as an ethylene/vinyl acetate
copolymer” (Ans. 7) and argues that “Okazaki teaches the addition of an
ethylene-vinyl acetate copolymer to a Portland cement composition
(Abstract).” Id.
The Examiner has not established that Okazaki discloses or would
have fairly suggested, to one of ordinary skill in the art, a redispersible
polymer powder. Hence, the Examiner has not established a prima facie of
obviousness over Hirata in view of Okazaki.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 16-20, 22, 23, 25, 27,
29, 31 and 32 over Hirata and claim 28 over Hirata in view of Debus are
affirmed. The rejections under 35 U.S.C. § 103 of claims 24 and 26 over
Hirata in view of Haerzschel and claims 33-35 over Hirata in view of
Okazaki are reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

tc

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NAGUMO, Administrative Patent Judge, dissenting-in-part.
I respectfully dissent from the affirmance of the rejections based on
Hirata.
Our reviewing court has rejected the proposition that, “regardless of
how broad, a disclosure of a chemical genus renders obvious any species
that happens to fall within it.” In re Jones, 958 F.2d 347, 350 (Fed.
Cir. 1992). In Lemin, cited by the majority, the court explained that :
The position of the Patent Office is, essentially, that Lemin
has done no more than pluck a subgenus out of a generic
disclosure by Jones, and has used that subgenus in precisely
the manner taught by Jones.
Generally speaking, there is nothing unobvious in
choosing ‘some’ among ‘many’ indiscriminately. Here,
however, the choice is based on a discovery by Lemin that
some compounds, falling within a prior art genus, have a
special significance.
332 F.2d 839, 841 (citation omitted). Moreover, unlike the
“multitude [1200] of effective combinations” disclosed by the reference
patent in Merck, 874 F.2d at 807, the number of combinations in this case is
truly astronomical.
The majority dismisses Appellants’ argument that the number of
possibilities within the broad disclosure of Hirata is too large to render the
claimed copolymer obvious because “the copolymer recited in the
Appellants’ claims is used for the identical purpose taught by Hirata, i.e., to
improve the fluidity of cement mixtures.” (Maj. Op. 4.)
This argument is disingenuous. Although claim 16 is not limited by a
field of use or by recited properties, as far as cement systems are concerned,
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Appellants describe their goal as providing plasticizers that are long lasting,
compatible with both emulsifier and protective colloid stabilized systems,
and that exhibit the advantageous rheological properties of casein. (Spec. 3,
ll. 26-30.) According to Hirata, the aim was to improve upon the
degradation of flowability by aging under harsh use conditions of freshly
prepared concrete delivered to worksites in the summer. (Hirata 2, ll. 3-5
and ll. 19-26.) While there is some overlap because both Appellants and
Hirata are concerned with cement additives that affect cement flow, there is
little indication that the problems and the general solutions sought can be
called “identical.”
Moreover, the Examiner and the majority appear to ignore Appellants’
question, “[w]hich of Hirata’s four compositions i) to iv) would one choose
as a starting point?” (Br. 11, last para.) Such an analysis is part and parcel
of the investigation of “the differences between the subject matter sought to
be patented and the prior art” required under § 103. The importance of this
inquiry has been emphasized in recent discussions of chemical obviousness.
See, e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd., 492 F.3d 1350,
1356-57 (Fed. Cir. 2007) (failure to come forward with evidence that a lead
compound would have been selected for modification to obtain improved
properties negatived the conclusion of obviousness). In addition to the
absence of a reasonable starting point, as discussed in some detail in the
addendum, infra, the thrust of the disclosure of Hirata is in a direction that
would not have tended to lead a person having ordinary skill in the art
towards the invention claimed by Appellants.
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The scope of the claims, which do not recite any properties or use of
the copolymer other than that it be a component of a “dispersant” does
weigh on the side of the Examiner. Nor does there appear to be any real
dispute that the genus described by Hirata encompasses at least some of the
subject matter on appeal.
In my judgment, however, the degree of overlap, especially based on
the evidence advanced by the Examiner, is so slight, that even a small
showing of a “special significance” by Appellants should suffice to disrupt
the conclusion of obviousness. Appellants have made such a showing in the
comparison of the properties of polymers within the scope of the claim with
comparative powders V2 and MELFLUX®1641. Appellants represent that
both of these materials are representative of dispersants disclosed by Hirata.
(Br. 13-14, referring to results presented in the 108 Specification (see
Spec. 16-19 and Figs. 1-3).) Neither the Examiner nor the majority points to
any reason to doubt the accuracy or credibility of these showings. Neither
the Examiner nor the majority provides an explanation of why the proofs
offered are not “side by side,” or why further comparisons are needed.
Moreover, the “unexpected” character of the results is shown by the
difference in rheological properties shown in Figure 3 (inventive) compared
to those shown in Figure 1 (prior art). On the present record, prior art
synthetic polymeric additives of the type taught by Hirata have distinct
rheological properties from the examples of the claimed invention and from
casein.
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Whether this disruption is denominated a disproof of a very weak
prima facie case of obviousness or a rebuttal based on unexpected results is
of little moment. Therefore I dissent from the rejections based on Hirata.
Addendum: Chemical “Details”
Lest the concerned reader think that this argument is based solely on
abstractions, I offer this addendum, which focuses on the oxyalkylene
monomers that are at the center of the dispute over obviousness.
Although the appealed claims are broad, monomers c) and d) are, in
the recited oxyalkylene groups, relatively narrow compared to the
corresponding monomers a) and b) disclosed by Hirata.
More particularly, monomers c) consist of ethylenically unsaturated
homopolyoxyethylene glycols, where the number of oxy-ethylene groups
ranges from 1 to 300. Monomers d) consist of ethylenically unsaturated
polyoxyalkylene [C3-4] glycols, where the number of oxy-propylene or
oxy-butylene groups ranges from 1 to 300.
In contrast, Hirata monomers a) and b) are polyalkylene glycol
(meth)acrylate monomers having the formulas:
CH2=C(R1)-COO(R2O)mR3 (a)
CH2=C(R4)-COO(R5O)nR6 (b)
where R2O and R5O are oxyalkylene groups of 2-4 carbon atoms, m = 1-97,
and n = 4-100, provided that n ≠ m and n - m ≥ 3. Corresponding groups R1
and R4 and corresponding groups R3 and R6 have the same range of possible
groups, respectively. Put more concretely, monomers (a) and (b) can both
be polyethyleneglycol (meth)acrylates that differ only in the number of
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ethylene glycol units, e.g., m = 1 and n = 4. The only embodiments
exemplified by Hirata are polyethylene glycol (meth)acrylates in which
m = 4 and n = 23. (Hirata Examples, e.g., Table 1 at 11 and Table 5 at 18.)
As Appellants argue (Ans. 10), Hirata is concerned with additives that
comprise both short and long chain lengths (Hirata 6, l. 54 to 7, l. 30,
discussing short chain polyalkylene (meth)acrylate monomers (a) at 6, l. 57
to 7, l. 16, and long chain polyalkylene (meth)acrylate monomers (b) at 7,
ll. 17-25).
As Appellants point out (Br. 6, 2d full para.), and as the Examiner
does not contest, polyethyleneglycols are known to be water soluble and
hydrophilic, whereas higher polyalkyleneglycols are known to be water
insoluble and hydrophobic. Moreover, prior art high performance cement
plasticizers based on polymerized ethylenically unsaturated polyalkylene
glycols were known. (Spec., para. bridging 2-3.) Appellants have shown,
and the Examiner does not dispute, that examples of the claimed dispersants
yield cement compositions having rheological properties that are distinct
from cement compositions containing conventional plasticizers.
(Spec. 10-11 and Figures 1 and 3.)
The Examiner has not identified in Hirata any “blazemark” or reason
to distinguish the ethylene-glycol monomers from the propylene-glycol or
butylene-glycol monomers. Nor has the Examiner identified in Hirata a
reason to select those two classes of monomers for combination, as distinct
from the multitude of other possible combinations of polyalkylene glycol
monomers within the scope of copolymers encompassed by Hirata. Nor has
the Examiner directed our attention to any recognition in Hirata that the
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combination of monomers having C2-oxide groups with monomers having
C3- or C4-oxide groups would provide a class of additives yielding distinct
rheological or other properties.
Under these conditions, the mere disclosure of an encompassing
generic composition does not suffice to establish a prima facie case of
obviousness of the claimed subgenus. Because the Examiner’s conclusion
of obviousness rests on hindsight, rather than on the teachings of the prior
art, I would reverse the rejections of record.