Ex Parte Ganapathiappan

Board of Patent Appeals and Interferences

Jul 31, 2007

10698607 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte SIVAPACKIA GANAPATHIAPPAN
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Appeal 2007-0105
Application 10/698,607
Technology Center 1700
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Decided: July 31, 2007
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Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 6 through 10 and 24 in the Office Action
mailed September 9, 2005. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2005).
We affirm-in-part the decision of the Primary Examiner.
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Application 10/698,607
Claims 6 and 24 illustrate Appellant’s invention of a method of
preparing amphipathic polymer particles, and are representative of the
claims on appeal:
6. A method of preparing amphipathic polymer particles comprising
the steps of:
admixing an aqueous carrier, an unsaturated monomer containing a
hydrophobic moiety, an unsaturated monomer containing a convertible
moiety in hydrophobic form, and a surfactant to form an emulsion;
initiating a polymerization by adding a catalyst to the emulsion,
continuing polymerization at a temperature and for a period of time
sufficient to form amphipathic polymer particles,
wherein the amphipathic polymer particles have a size range of
50-500 mm.
24. The method of claim 6, further comprising the step of converting
the convertible moiety to a hydrophilic form after the amphipathic polymer
particles are formed.
The Examiner relies on the evidence in these references:
Winnik US 4,795,794 Jan. 3, 1989
Idogawa US 5,942,560 Aug. 24, 1999
Appellant requests review of the following grounds of rejection all
advanced on appeal (Br. 8):
claims 6, 9, and 10 under 35 U.S.C. § 102(b) as unpatentable over Idogawa
(Answer 3-4);
claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Idogawa as
applied to claims 6, 9, and 10 in view of Winnik (id. 4-5); and
claim 24 under 35 U.S.C. § 103(a) as unpatentable over Idogawa as applied
to claims 6, 9, and 10 (id. 5-6)
Appellant argues the claims in the first and the second grounds of
rejection as a group with the arguments with respect to both grounds
focusing on the limitations of independent claim 6 (Br. 14-21). Thus, we
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decide this appeal based on appealed claims 6, 7 and 24 as representative of
the grounds of rejection. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
With respect to independent claim 6 as well as claim 7, the Examiner
contends Idogawa’s method includes the step of admixing, among other things,
“a carboxyl group-containing vinyl monomer, which falls within the scope of
the instant unsaturated monomer containing a convertible moiety in
hydrophobic form, in light of the interpretation of appellant’s preferred
‘convertible moiety-containing monomer’ embodiment disclosed in the
specification (col. 3, line 59 to col. 4, line 6; col. 6, lines 26-40)” (Answer
3 and 6). The Examiner contends this monomer is 2-methacryloyloxyethyl
succinate, trade name “Acryl Ester SA,” which is exemplified in Idogawa in
the context of emulsion polymerization (id.). With respect to dependent
claim 24, the Examiner acknowledges Idogawa “is silent regarding the
recited step of converting the convertible moiety to a hydrophilic form,” but
finds the reference “discloses the inclusion of pH controller within the scope
of the appellant’s converting agents defined in the specification (i.e. organic
and inorganic bases) in the resultant ink composition (col. 8, lines 35-42)”
(id. 5). The Examiner contends Idogawa’s “teaching embraces appellant’s
method of converting the convertible moiety to a hydrophilic form as
interpreted in light of appellant’s disclosure” (id. 5 and 7).
With respect to claim 6, Appellant contends Idogawa uses the
hydrophilic form of the convertible moiety containing vinyl monomer
2-methylacryloyloxyethyl succinate because the reference discloses “a
hydrophilic monomer alone . . . ‘cannot be emulsion-polymerized in many
cases, and the vinyl monomer mixed with a hydrophobic vinyl monomer is
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Application 10/698,607
preferably emulsion-polymerized”” (Br. 13-14 and 16, citing Idogawa col. 4,
ll. 7-11 and 23-27; Reply Br. 2-3). Appellant contends “there is no teaching
or suggestion of converting this ‘hydrophilic’ component to hydrophobic
form” (Br. 14 and 15; Reply Br. 4). With respect to Winnik, Appellant
contends that this reference and Idogawa “do not teach or suggest using a
convertible moiety in hydrophobic form as required by claim 6” (id. 18 and
20, original emphasis omitted; Reply Br. 4-5). With respect to claim 24,
Appellant contends Idogawa “fails to teach or suggest the conversion
required in claim 24” because the reference “clearly does not contemplate a
conversion step because after the emulsion polymerization process is
complete, it would already be ‘amphipathic” and “there is no suggestion of
using the pH controllers . . . as a step after formation of dispersed particles”
(Br. 21-22, original emphasis omitted, and Reply Br. 5-6).
The issues in this appeal are whether the Examiner has established a
prima facie case of anticipation of claim 1 over Idogawa and whether the
Examiner has established a case of prima facie obviousness over Idogawa
alone with respect to claim 24 and as combined with Winnik with respect to
claim 7.
The plain language of independent claim 6 specifies a method of
preparing amphipathic polymer particles comprising at least the step, among
other things, of forming an emulsion by admixing any aqueous carrier, any
unsaturated monomer containing any hydrophobic moiety, any unsaturated
monomer containing any convertible moiety in hydrophobic form, and a
surfactant. Dependent claim 7 further limits the method of claim 6 by
specifying the method includes a filtration step. The plain language of
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dependent claim 24 limits the method of claim 6 by comprising at least the
step of converting the formed convertible moiety of the amphipathic
polymer particles to a hydrophilic form. With respect to the claim limitation
“an unsaturated monomer containing a convertible moiety in hydrophobic
form,” Appellant discloses that
[a]s defined herein, the term “convertible monomer” refers to
monomers with long side chain acid groups. The convertible
monomers are water insoluble in the monomer form. After
polymerization, the acid group on the side chain of the
convertible monomers can be converted to anionic salt by
adjusting the pH of the solution to a basic range (pH > 7), i.e.,
the hydrophobic monomer incorporated into the polymer as a
hydrophobic moiety, but is converted to a hydrophilic moiety
under basic pH.
Specification 4:13-18; see also 6:15-25. Appellant exemplifies the
“unsaturated monomer containing a convertible moiety in hydrophobic
form” with, among other things, “mono-methacryloyloxyethyl succinate”
(id. 5:13). The transitional term “comprising” opens the claims to include
methods that have additional steps and materials. In re Baxter, 656 F.2d
679, 686, 210 USPQ 795, 802 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”).
There is no dispute that Idogawa discloses to one skilled and one of
ordinary skill in the art a method of preparing a fine particle water base
dispersion liquid for a water base ink by emulsion polymerizing a mixture
containing, among other things, a vinyl monomer having an acid functional
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Application 10/698,607
group, wherein the vinyl monomer is “a vinyl monomer having a water
solubility of 10% by weight or less, and can be, among other things,
2-methylacryloyloxyethyl succinate, trade name “Acryl Ester SA” having a
water solubility of 1.86% by weight (Idogawa, e.g., col. 2, ll. 7-49, col. 3,
l. 41, to col. 4, l. 27, and col. 6, ll. 26-40). In Idogawa’s Example 1, the
mixture contains 2-methylacryloyloxyethyl succinate. The process of
forming the amphipathic polymer particles can include the use of pH
controllers such as, among other things, hydroxides of alkaline metals, but
such use is not illustrated in Idogawa’s examples (id. col. 8, ll. 38-42).
We find Winnik would have disclosed an analogous dispersion
polymerization process which does not include using a vinyl monomers
having an acid functional group with limited water solubility as used by
Idogawa, but can include the step of separating the product from the reaction
mixture by filtration (see Answer 4-5 and Winnik, e.g., col. 3, l. 45, to col. 5,
l. 4).
Appellant illustrates the emulsion polymerization process in
Specification Example 1 wherein mono-methacryloyloxyethyl succinate is
admixed with the other ingredients (Specification 12:21-29). After the
polymerization reaction has cooled, “potassium hydroxide was added to
bring the pH of the reaction mixture to pH > 7” (id. 12:29-31).
We agree with the Examiner that Idogawa’s 2-methylacryloyloxyethyl
succinate satisfies the claim requirement for “an unsaturated monomer
containing a convertible moiety in hydrophobic form” as this term is defined
to include this monomer in Appellant’s Specification, and indeed, is further
exemplified therein, including in Specification Example 1, as
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“mono-methacryloyloxyethyl succinate.” We are not persuaded otherwise by
the fact that Appellant describes this monomer as “hydrophobic” while
Idogawa describes using the free acid form of the compound because Idogawa
further discloses that this monomer has limited solubility. Indeed, this
monomer is used in the free acid form in the process illustrated in Idogawa’s
Example 1 just as it is in Appellant’s Example 1. Thus, we find as a matter of
fact that Idogawa’s Example 1 satisfies all of the limitations of claim 6. To
the extent that Appellant contends a different product results from the claimed
method encompassed by claim 6, we note the guidance of a predecessor court
to our reviewing court in In re Sussman, wherein the claimed and prior art
method steps were the same: “[I]f appellant obtains a new product through
reaction of the elements mentioned, it must be due to some step in the process
not included in the claim.” 141 F.2d 267, 269-70, 60 USPQ 538, 541 (CCPA
1944).
Thus, the Examiner has established that prima facie Idogawa satisfies
all of the elements of claim 6 in a manner sufficient to have placed a person
of ordinary skill in the art in possession thereof, see In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and accordingly, we
affirm the ground of rejection of claims 6, 9, and 10 as a matter of fact under
35 U.S.C. § 102(b).
Furthermore, Appellant does not dispute the Examiner’s conclusion
that prima facie one of ordinary skill in the art would have modified
Idogawa’s method to include recovery of the product by filtration from the
reaction mixture as taught by Winnik, which step is specified in
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representative claim 7. Accordingly, we affirm the ground of rejection of
claims 7 and 8 as a matter of law under 35 U.S.C. § 103(a).
With respect to claim 24, we agree with Appellant that the Examiner
has not established that prima facie the process described by Idogawa
includes the step of adding a pH controller to the reaction mixture
subsequent to the formation of the amphipathic polymer particles as required
by this claim.
Accordingly, on this record, we reverse the ground of rejection of
claim 24 under 35 U.S.C. § 103(a) over the teachings of Idogawa.
The Primary Examiner’s decision is affirmed-in-part.
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)(iv) (2006).
AFFIRMED-IN-PART

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