Ex Parte Kuppert et al

Patent Trial and Appeal Board

Jul 12, 2016

13058372 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/058,372 02/10/2011
20999 7590 07114/2016
FROMMER LAWRENCE & HAUG
745 FIFTH A VENUE- IOTH FL.
NEW YORK, NY 10151
FIRST NAMED INVENTOR
Dirk Kuppert
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
512425-2214 1799
EXAMINER
SASTRI, SATYA B
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
07/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
prosecutiondocketing@flhlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK KUPPERT, THOMAS VEIT, PHILIPPE
FA VRESSE, BEATRIX ANDREA VOM BRUCH,
WOLFGANG MUELLER, and MARIO LOEBBUS
Appeal 2015-001738
Application 13/058,372
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-7, and 17. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal 2015-001738
Application 13/058,372
STATEMENT OF THE CASE
Appellants 1 describe the present invention as related to block
copolymers suitable for use as dispersants, especially in paints and
varnishes. Appeal Br.2 5. Claim 1, reproduced below with emphasis added,
is the only independent claim on appeal and is illustrative of the claimed
subject matter:
1. A block copolymer of the formula E-[AB]-T;
where:
E is an initiator fragment of a polymerization initiator which is
capable of initiating an atom transfer radical
polymerization;
A and B are different polymer blocks; and
Tis a polymer chain termination group;
wherein the polymer block A is built from monomers of the formula
Al:
wherein the polymer block Bis formed by a copolymer of:
monomers of the formula B 1:
1 According to the Appellants, the real party in interest is Evonik Degussa
GmbH. Appeal Br. 1.
2 In this decision, we refer to the Final Office Action mailed March 26, 2014
("Final Act."), the Appeal Brief filed August 14, 2014 ("Appeal Br."), the
Examiner's Answer mailed September 22, 2014 ("Ans."), and the Reply
Brief filed November 21, 2014 ("Reply Br.").
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Appeal 2015-001738
Application 13/058,372
where Dis a group of the general formula (Cl):
-(C2H40)i(C3H60)j(C4HsO)k(C12H240)1(CsHsO)m-
where i, j, k, 1, and m are mutually independent
integers from 0-100;
with the proviso that the sum of i + j + k + 1 + m 2: 1;
and
with the proviso that, if more than one of the indices i,
j, k, 1, and m is > 0, the general formula ( C 1)
represents a random oligomer, a block oligomer, or
a gradiant oligomer; and
monomers of the formula B2:
wherein:
R 1 independently at each occurrence is H or alkyl;
G = oxygen or NR 2;
where R2 independently at each occurrence is Hor alkyl
having 1 to 8 C atoms;
R3 is aryl or arylalkyl radical;
R4 is alkyl;
R6 and R7 independently of one another are alkyl radicals;
x = 0 to 1 O; and
y is 1 to 10; and
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Appeal 2015-001738
Application 13/058,372
wherein the polymer chain termination group is a sulfur-containing
radical -SQ;
where Q is a monovalent organic radical.
Appeal Br. 16-1 7 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Spinelli
Auschra et al.
(hereinafter "Auschra")
Balk et al. 3
(hereinafter "Balk")
Irvine et al.
(hereinafter "Irvine")
us 5,772,741
US 7, 199, 177 B2
June 30, 1998
Apr. 3, 2007
WO 2008/017523 Al Feb. 14, 2008
WO 00/34345 June 15, 2000
REJECTIONS
On appeal, the Examiner maintains rejection of claims 1, 3-7, and 1 7
under 35 U.S.C. § 103 as unpatentable over Spinelli in view of Auschra and
further in view of Irvine or Balk. Ans. 2.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, No. 2009-00601394, USPQ2d 1072, 1075
(BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require
3 According to the Examiner, the English-language equivalent of Balk is
U.S. Patent Pub. No. US 2009/0275707 (published Nov. 5, 2009). See Final
Act. 2.
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Appeal 2015-001738
Application 13/058,372
an applicant to identify the alleged error in the examiner's rejections")).
Appellants do not separately argue claims 3-7 and 17. We therefore limit
our discussion to claim 1. Claims 3-7 and 17 stand or fall with that claim.
37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner rejects all claims as obvious over Spinelli in view of
Auschra and further in view of Irvine or Balk. We sustain the rejection
based on the findings of fact, conclusions of law, and rebuttals to arguments
well-expressed by the Examiner in the Final Action, the December 9, 2013
Action incorporated by reference into the Final Action, and the Answer. We
provide additional comments below for emphasis.
Appellants argue that claim 1 is directed to an E-AB-T polymer
where terminal group Tis bound to B (with B being BlB2) and that the
primary prior art reference, Spinelli, is directed to an E-BA-T polymer
where terminal group T is instead bound to A. Appeal Br. 10-11. The
Examiner, however, explains that the Spinelli reference discloses preferred
block polymers and recognizes the importance of the constituent block
chemistry. Ans. 8 (citing Spinelli 4:35-49). That is, Spinelli does not place
any particular limitation on the particular block to which the initiator or
terminal end is attached but rather on the compositional makeup of the block
constituents themselves. While Spinelli's Preparation 3 (6:43-63) is a
preferred, non-limiting example that describes E-BA-T rather than E-AB-
T, we agree with the Examiner's finding that a person of skill in the art
would recognize that the properties of the constituent blocks would control
overall properties of the block copolymer. Ans. 8. We thus agree with the
Examiner's obviousness conclusion.
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Appeal 2015-001738
Application 13/058,372
The rationale ofln re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990)
(en bane) further supports the Examiner's position. Our reviewing court
explained the connection between structural similarity and prima facie
obviousness by stating:
This court ... reaffirms that structural similarity between claimed and
prior art subject matter, proved by combining references or otherwise,
where the prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and that the
burden (and opportunity) then falls on an applicant to rebut that prima
facie case. Such rebuttal or argument can consist of a comparison of
test data showing that the claimed compositions possess unexpectedly
improved properties or properties that the prior art does not have, that
the prior art is so deficient that there is no motivation to make what
might otherwise appear to be obvious changes, or any other argument
or presentation of evidence that is pertinent.
Id. at 692-693 (citations omitted). The In re Dillon claims at issue were
obvious under this rationale because "[t]he art provided the motivation to
make the compositions in the expectation that they would have similar
properties." Id. at 693. See also In re Mayne, 104 F.3d 1339, 1343 (Fed.
Cir. 1997) ("A comparison of Phe-Pro-Ile and Leu-Pro-Leu in the prior art
with the claimed Phe-Pro-Leu suggests structural similarity. Structural
relationships often provide the requisite motivation to modify known
compounds to obtain new compounds."). Likewise, E-BA-T and E-AB-T
are very similar structurally. Thus, a person of skill in the art, especially in
view of Spinelli in its entirety, would be inclined to make the E-AB-T
composition. See also Ans. 8 ("one skilled in the art would recognize the
properties of the constituent blocks as controlling the overall properties of
the block copolymer"); Appeal Br. 4-6.
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Application 13/058,372
Appellants fail to persuasively rebut the prima facie case of
obviousness presented by the Examiner. Appellants argue that data
presented in the Specification demonstrates unexpected results (Appeal Br.
14-15), but the Examiner is correct that the data only compares a claimed
formulation to commercial prior art dispersants and no comparison is made
to Spinelli (Final Act. 6). The data, therefore, does not suffice as evidence
of nonobviousness. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991) ("[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art."). Moreover, we note that Appellants lack evidence that
the proferred results were unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F .3d
1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must be unexpected
to be considered as evidence of non-obviousness." (emphasis in original)).
Appellants also argue that the Examiner's proposed modification
would not have a reasonable expectation of success. Appeal Br. 12-14. The
expected similar properties between E-AB-T and E-BA-T, however,
suggest a likelihood of success. Ans. 8-9. Moreover, the Appellants
provide no persuasive argument as to why the Examiner's proposed
modification of the E and T groups based on Auschra in view of Irvine or
Balk would fail or why the Examiner's explanation for combining these
references is insufficient. Final Act. 2 (incorporating December 9, 2013,
office action by reference); Dec. 9, 2013, Act. 4-5 (explaining reasons to
modify E and T groups based on Auschra in view of Irvine or Balk).
Appellants further argue that Spinelli teaches against modification by
teaching that polymer preparations suitable for emulsifiers may not be
suitable as dispersants. Appeal Br. 13; Reply Br. 10. Claim 1, however,
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Application 13/058,372
does not recite any particular use for its block polymer. It is also not clear
why limited situations for using Spinelli's block polymer would impact the
expectation of success in modifying the block polymer.
Because Appellants fail to identify reversible error in the Examiner's
reasoning, we sustain the Examiner's rejection of claims 1, 3-7, and 1 7.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
3-7, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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