Ex Parte Khabashesku et alDownload PDFPatent Trial and Appeal BoardApr 18, 201312346729 (P.T.A.B. Apr. 18, 2013) 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. 12/346,729 12/30/2008 Olga Khabashesku COS-1178 9936 25264 7590 04/18/2013 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 EXAMINER FINK, BRIEANN R ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 04/18/2013 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte OLGA KHABASHESKU and SCOTT COOPER ________________ Appeal 2011-012821 Application 12/346,7291 Technology Center 1700 ________________ Before CHARLES F. WARREN, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is listed as Fina Technology Inc. (Appeal Brief, filed 21 March 2011 (“Br.”), 3.) Appeal 2011-012821 Application 12/346,729 2 A. Introduction2 Olga Khabashesku and Scott Cooper (“Khabashesku”) timely appeal under 35 U.S.C. § 134(a) from the final rejection3 of claims 1-4, 7-94, 11, 13, 14 and 24, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We affirm. The subject matter on appeal relates to branched ionomers that are said to provide properties such as improved hardness, high melt strength and crosslinking density. (Spec. 7-8 [0027].) According to the 729 Specification, “[a]n ionomer is a polymer that contains noninonic repeating units and a small portion of ionic repeating units.” (Id. at 6 [0024].) The Specification explains that ionomers are polymers that have covalent bonds between elements of the polymer chins and ionic bonds between separate chains of the polymer. (Id. at 6 [0023].) The ionic bonds between separate chains are said to be reversible crosslinks that can be broken upon heating, providing viscoelastic behavior and elastomeric properties that are expressed as less brittleness and more resistance to 2 Application 12/346,729, Branched Ionomers with Metal Methacrylates as Comonomers, filed 30 December 2008. The specification is referred to as the “729 Specification,” and is cited as “Spec.” 3 Office action mailed 14 October 2010. 4 Khabashesku requested amendment of the application by cancellation of claim 9. (Second After-Final Amendment Filed on or After the Filing of an Appeal Brief (21 March 2011).) The Examiner, however, does not appear to have responded to this request. (Examiner’s Answer, 11 May 2011 (“Ans.”), 2 § (4), indicating “no comment” on the statement of the status of amendments filed after the final rejection.) We trust clarification will be forthcoming. Appeal 2011-012821 Application 12/346,729 3 abrasions. (Id. at 7 [0025].) Crosslinking monomers such as [the Group 4] Ti-, Zr-, and Hf-tetramethacrylates are said to be especially useful because two additional methacrylic acid groups can coordinate with the tetravalent metal ions, as shown in Fig. 1, which is reproduced below: {Figure 1 shows a coordination complex of Ti(IV) and methacrylic acid} The additional coordination sites are said to result in a highly branched ionomer product, with altered physical properties. (Id. at 4 [0009].) Representative Claim 1 reads: A branched ionomer comprising the product of co- polymerizing a first monomer comprising an unsaturated alkyl moiety with a second monomer comprising an unsaturated moiety and an ionic moiety, wherein the ionic moiety comprises an anionic group and a cationic group, wherein the cationic Appeal 2011-012821 Application 12/346,729 4 group comprises a polyvalent metal having a coordination number greater than its oxidation number; wherein the second monomer comprises a metal methacrylate; and wherein the metal methacrylate comprises at least a 0.5 molar equivalent of methacrylic acid. (Claims App., Br. 13; indentation, paragraphing, and emphasis added.) The Examiner maintains the following ground of rejection:5 Claims 1-4, 7-9, 11, 13, 14 and 24 stand rejected under 35 U.S.C. § 103(a) in view of Campbell.6 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Initially, we find that Khabashesku has not presented substantively distinct arguments for the separate patentability of any claim other than claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). All claims therefore stand or fall with claim 1. Khabashesku argues that the Examiner erred in finding that Campbell teaches or discloses a branched ionomer comprising a metal methacrylate comprising at least a 0.5 molar equivalent of methacrylic acid. (Br. 8.) More particularly, Khabashesku urges that the Examiner erred in finding that Campbell suggests providing styrene and methacrylic acid in a ratio of 1:1, 5 Examiner’s Answer mailed 11 May 2011 (“Ans.”). 6 J. David Campbell and Fouad Teymour, Process for Producing Hyperbranched Polymers, U.S. Patent Application Publication 2004/0048987 A1 (2004). Appeal 2011-012821 Application 12/346,729 5 as up to 85-90 wt% of the monomers, with Zr(IV) methacrylate [Zr(MA)4] making up to 15 wt% as the remaining monomer, thereby providing a 0.5 to 23 molar equivalent of methacrylic acid. (Br., para. bridging 8-9.) Campbell, in Khabeshesku’s view, teaches a very broad range of possible embodiments in paragraphs [0013], [0019], and claims 1, 6, and 7, namely “styrene and one of 9 compounds, including methacrylic acid . . . [which] may be present in varying amounts.” (Id. at 10, ll. 13-16.) Khabashesku urges that “the selection of styrene and methacrylic acid “at an assumed ratio of 1:1 in order to read on the claimed invention demonstrates hindsight on the part of the Examiner.” The proper obviousness analysis, in Khabashesku’ s view, is not in terms of overlapping ranges, but whether a species of the claimed invention would have been obvious in view of the genus disclosed in Campbell. (Id. at 9-10.) We begin by analyzing the requirements of the claim language. The first monomer comprises “an unsaturated alkyl moiety.” Although the expressly suggested first monomers are various substituted styrenes (Spec. 3 [0005]), we shall not read limitations from preferred embodiments in the Specification into the claims. Based on the disclosure, we conclude that an “unsaturated alkyl moiety” includes H2C=C<, where the substituents of the two open valences on the vinyl carbon are largely irrelevant, provided that the carbon-carbon double bond can participate in addition polymerization reactions. The second monomer is a metal methacrylate in which the cationic group comprises a polyvalent metal having a coordination number greater than its oxidation number. As can be seen by reference to Figure 1, Appeal 2011-012821 Application 12/346,729 6 reproduced supra, the coordination number of Zr(MA)4, is six, reflecting the octahedral coordination of ligands about the central metal ion, which has a formal oxidation number of four.7 The second monomer must satisfy the further requirement that it comprise “at least a 0.5 molar equivalent of methacrylic acid.” Although this limitation is at first glance somewhat odd, as the four methacrylate ligands of Zr(methacrylate)4 would seem to provide four molar “equivalents” of methacrylic acid, it appears from Figure 1 and from the description in the Specification that the term “equivalents” refers to the relative molar ratio of methacrylic acid coordinated to the metal methacrylate. See Spec. 11 [0036], describing the addition of 4.64 mmol of methacrylic acid to a solution of 2.32 mmol Zr(MA)4 in styrene. The methacrylic acids are said to form, spontaneously, charge-transfer complexes with the Zr (methacrylate) as shown by the development of a slight yellowish color (Spec. 11 [0036]) that can be quantified spectroscopically, as shown in Figure 2 (not reproduced here). While the Examiner’s focus on 1:1 mixtures of styrene and methacrylic acid was error, we are not persuaded that the error was harmful to the degree that reversal is warranted. What the Examiner’s and Khabashesku’s arguments overlook is that it is the second monomer itself that must comprise at least a 0.5 molar equivalent of methacrylic acid: no excess of methacrylic acid monomer is required by the claim. On the 7 Campbell names Zr(MA)4 as one of four tetraethylenically unsaturated monomers suitable for the Campbell crosslinked polymers. (Campbell 3 [0022].) Appeal 2011-012821 Application 12/346,729 7 present record, the monomer Zr(MA)4 may further comprise up to two “equivalents” of methacrylic acid, i.e., up to two methacrylic acid molecules may be coordinate with the square-planar Zr(MA)4 moiety. Coordination of more methacrylic acid molecules is effective barred by the limited space around the zirconium ion. Campbell claim 6 depends serially from claims 1-5. Although claim 5 recites that the crosslinking monomer is divinylbenzene (Campbell 8), Khabashesku does not dispute that it would have been obvious to replace divinylbenzene with Zr(MA)4, identified by Campbell as one of four tetraethylenically unsaturated crosslinking monomers (Id. at 3 [0022]), that Campbell teaches are especially useful at low crosslinker concentrations (less than 3% by weight of the monomer mixture) (Id. at 2 [0013].) Claim 6 requires that the monoethylenically unsaturated monomer is “styrene or a mixture of styrene and another monoethylenically unsaturated monomer.” Claim 7 recites that the other monoethylenically unsaturated monomer is selected from α-methyl styrene, methacrylic acid, methyl methacrylate, butyl methacrylate, hydroxyethyl methacrylate, hydroxypropyl methacrylate, and the corresponding acrylic monomers.8 Viewed from the vantage of an ordinary polymer chemist, three general classes of comonomers are represented in this list: α-methyl styrene, (meth)acrylic acid, and (meth)acrylic esters. Moreover, the ordinary polymer chemist would have recognized that the use of (meth)acrylic acid as 8 Methacrylic acid has the chemical formula H2C=C(CH3)COOH, while replacement of the methyl group, CH3, with hydrogen, H, yields acrylic acid, which has the formula H2C=C(H)COOH. Appeal 2011-012821 Application 12/346,729 8 a comonomer with styrene, with the Zr(MA)4 crosslinking monomer, would have resulted in ionomers belonging to a well-known class. The amount of picking and choosing among monomers is thus significantly less, and the “direction” for that picking provided by the general knowledge of the ordinary polymer chemist is significantly more, than implied by Khabashesku’s arguments against the prima facie case of obviousness. As for the relative amount of methacrylic acid, the routineer would have recognized that ionomers contain a small portion of ionic repeating units. Thus, the small portion of ionic repeating units, together with the small (less than 3% by weight of the monomer mixture) proportion of the crosslinking monomer (Campbell 2 [0013]), would have been obvious embodiments of Campbell’s invention. Among those obvious embodiments would be embodiments that meet the present requirement of at least 0.5 molar equivalent methacrylic acid compared to the crosslinking monomer. Khabashesku does not present any arguments based on unexpected results or other “secondary” indicia of nonobviousness. We conclude that harmful error in the Examiner’s rejection has not been demonstrated. C. Order We affirm the rejection of claims 1-4, 7-9, 11, 13, 14 and 24 under 35 U.S.C. § 103(a) in view of Campbell. 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 Appeal 2011-012821 Application 12/346,729 9 tc Copy with citationCopy as parenthetical citation