Ex Parte Kuppert et alDownload PDFPatent Trial and Appeal BoardJul 12, 201613058372 (P.T.A.B. Jul. 12, 2016) Copy Citation 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."). 2 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 3 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. 4 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. 5 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. 6 Appeal 2015-001738 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, 7 Appeal 2015-001738 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 8 Copy with citationCopy as parenthetical citation