Ex Parte Dietrich et alDownload PDFBoard of Patent Appeals and InterferencesJun 12, 201210551108 (B.P.A.I. Jun. 12, 2012) Copy Citation 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 Appeal 2011-002262 Application 10/551,108 2 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, Appeal 2011-002262 Application 10/551,108 3 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. Appeal 2011-002262 Application 10/551,108 4 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”). Appeal 2011-002262 Application 10/551,108 5 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). Appeal 2011-002262 Application 10/551,108 6 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. Appeal 2011-002262 Application 10/551,108 7 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 Appeal 2011-002262 Application 10/551,108 8 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, Appeal 2011-002262 Application 10/551,108 9 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. Appeal 2011-002262 Application 10/551,108 10 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. Appeal 2011-002262 Application 10/551,108 11 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 Appeal 2011-002262 Application 10/551,108 12 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 Appeal 2011-002262 Application 10/551,108 13 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. Copy with citationCopy as parenthetical citation