Ex Parte Mc Kee et alDownload PDFBoard of Patent Appeals and InterferencesApr 16, 200910516135 (B.P.A.I. Apr. 16, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GRAHAM EDMUND MC KEE, GERRIT LUINSTRA, JOACHIM OUEISSER, and MARKUS SCHMID ________________ Appeal 2009-1282 Application 10/516,135 Technology Center 1700 ________________ Decided:1 April 16, 2009 ________________ Before TERRY J. OWENS, MARK NAGUMO, and JEFFREY B. ROBERTSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-1282 Application 10/516,135 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-16, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a process for preparing an aqueous polymer dispersion. Claim 1 is illustrative: 1. A process for preparing an aqueous polymer dispersion having a mean particle size (D50 weight average) of from 0.01 to 20 µm, which comprises: polymerizing an unsaturated monomer in the presence of a suitable catalyst in such a way that the polymers obtained are swollen with more than 2% by weight, based on the amount of polymer, of unreacted residual monomers and dispersing the polymers with a surface-active substance and water in a subsequent step, wherein the polymers obtained are not separated completely from the residual monomers. The References Brockway 2,977,349 Mar. 28, 1961 Smith 3,066,085 Nov. 27, 1962 Nyberg 3,360,599 Dec. 26, 1967 Saunders 3,642,676 Feb. 15, 1972 Alberts 3,901,954 Aug. 26, 1975 Oates 6,521,696 B2 Feb. 18, 2003 Cernohous 6,630,239 B2 Oct. 7, 2003 The Rejections The claims stand rejected as follows: claims 1-9 and 12-16 under 35 U.S.C. § 102(e) or, in the alternative, under 35 U.S.C. § 103 over Oates, 2 Appeal 2009-1282 Application 10/516,135 as evidenced by Smith, Alberts, Nyberg and Brockway; claims 10 and 11 under 35 U.S.C. § 103 over Oates in view of Nyberg and Cernohous; and claims 1-3, 5, 6, 9 and 14-16 under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over Saunders. OPINION We reverse the Examiner’s rejections. Rejections of claims 1-9 and 12-16 under 35 U.S.C. § 102(e) or 103 over Oates, as evidenced by Smith, Alberts, Nyberg and Brockway, and claims 10 and 11 under 35 U.S.C. § 103 over Oates in view of Nyberg and Cernohous We need to address only claim 1, which is the sole independent claim. Although Cernohous is applied to claims 10 and 11, the Examiner does not rely upon that reference for any disclosure that remedies the deficiency in Oates and Nyberg as applied to claim 1 (Ans. 7). Issue Have the Appellants shown reversible error in the Examiner’s determination that the applied references disclose, expressly or inherently, or would have rendered prima facie obvious, to one of ordinary skill in the art, a process for preparing an aqueous polymer dispersion comprising polymerizing an unsaturated monomer such that the polymers obtained are swollen with more than 2 wt% of unreacted residual monomers and have a mean particle size (D50 weight average) of 0.01 to 20 µm? Findings of Fact Oates discloses “water-borne pressure sensitive adhesive formulations comprising at least one homogeneous olefin polymer or at least one substantially random interpolymer of ethylene and a monovinylidene aromatic or hindered aliphatic monomer” (col. 1, ll. 10-14). The Examiner 3 Appeal 2009-1282 Application 10/516,135 relies upon Oates for disclosures that the polymer can be prepared by slurry polymerization and that the diluent can comprise, in at least major part, α-olefin monomer or monomers to be polymerized (col. 14, ll. 29-45) (Ans. 4). Smith discloses a process for preparing graft copolymers by subjecting a copolymer of vinyl chloride and vinylidene chloride to ionizing radiation while in contact with acrylonitrile monomer (col. 1, l. 68 – col. 2, l. 1). Smith discloses: “[i]f the vinyl chloride-vinylidene chloride copolymer is contacted with acrylonitrile vapour, the copolymer should be swollen by the monomer absorbed so that the amount of the acrylonitrile component constitutes from 15 to 50 percent of the weight of the final swollen material” (col. 2, ll. 6-11). The Examiner relies upon Smith’s Example 1 wherein soaking a vinyl chloride-vinylidene chloride copolymer in acrylonitrile monomer for 10 hours increases the weight of the copolymer 54% by swelling (col. 3, ll. 7-12) (Ans. 4-5). Alberts discloses a process for producing graft polymers comprising polyethylene as the graft substrate and one or more monoolefins as the graft monomer, optionally with further monomers (col. 1, ll. 3-7). The monoolefins, used in excess, can act as the solvent (col. 3, ll. 50-51). The Examiner relies upon Alberts’ disclosure that the monomers swell completely or partially into the substrate (col. 3, l. 66 – col. 4, l. 25) (Ans. 4). Nyberg discloses “a process for improving the tensile strength and other properties of films prepared from latices of block copolymers” (col. 1, ll. 11-13). The Examiner relies upon Nyberg’s disclosure that “[t]he latices from which the subject films are laid down may be prepared by emulsifying 4 Appeal 2009-1282 Application 10/516,135 block polymer cements with water and an emulsifying agent and thereafter removing the cement solvent” (col. 3, ll. 3-6) (Ans. 5). Brockway discloses a process for polymerizing conjugated polyolefin hydrocarbons wherein very small amounts of silicone oils or greases, silicate esters and various hydrolyzed silane derivatives modify the course of the polymerization reaction so as to increase the polymer’s molecular weight and/or reduce its gel content (col. 1, ll. 16-20, 58-68). The Examiner relies upon Brockway’s disclosure that “the product in most cases is a quite viscous cement-like solution of polymer” (col. 5, ll. 8-9) (Ans. 5). Analysis “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Appellants argue that the Examiner has not established that Oates’ polymer necessarily is swollen with more than 2 wt% of unreacted residual monomers, or that one of ordinary skill in the art would have had a 5 Appeal 2009-1282 Application 10/516,135 reason to modify Oates’ process to swell the polymer in that manner (Br. 4- 6; Reply Br. 1-2). The Examiner argues that “in view of substantially identical polymerization environments disclosed by applicants and by Oates et al, it is [the] examiner’s position to believe that the polymer formed, dissolved in monomer diluent disclosed by Oates et al would inherently possess the increase 2 wt% by swelling of unreacted monomers as claimed” (Ans. 5), and that “in view of the substantially identical process disclosed by Oates et al, and by applicants, it is [the] examiner’s position to believe that the aqueous polymer dispersion of prior art would inherently possess a mean particle size of from 0.01 to 20 µm, as claimed.” See id. The Examiner has not compared the polymerization environments of Oates and the Appellants and established that they are sufficiently similar to provide a reason to believe that Oates’ polymer is swollen with more than 2 wt% of unreacted residual monomers or has a mean particle size (D50 weight average) of 0.01 to 20 µm. The Examiner’s mere assertion to that effect is not adequate for establishing a prima facie case of anticipation. See Spada, 911 F.2d at 708. Nor does the Examiner’s mere assertion provide the articulated reasoning with rational underpinning required for a rejection under 35 U.S.C. § 103. See KSR, 127 S. Ct. at 1741. The Examiner’s reliance upon Smith and Alberts (Ans. 9-10) is not well taken because the Examiner has not shown that the polymerization processes in those references are sufficiently similar to that of Oates that it reasonably appears that the polymer swelling disclosed by Smith and Alberts is an inherent characteristic of Oates’ polymer. 6 Appeal 2009-1282 Application 10/516,135 The Examiner does not rely upon Nyberg and Brockway for any disclosure that remedies the deficiency in Oates, Smith and Alberts as to the Appellants’ polymer swelling limitation (Ans. 5). Conclusion of Law The Appellants have shown reversible error in the Examiner’s determination that the applied references disclose, expressly or inherently, or would have rendered prima facie obvious, to one of ordinary skill in the art, a process for preparing an aqueous polymer dispersion comprising polymerizing an unsaturated monomer such that the polymers obtained are swollen with more than 2 wt% of unreacted residual monomers and have a mean particle size (D50 weight average) of 0.01 to 20 µm. Rejection of claims 1-3, 5, 6, 9 and 14-16 under 35 U.S.C. § 102(b) or 103 over Saunders Issue Have the Appellants shown reversible error in the Examiner’s determination that Saunders discloses, expressly or inherently, or would have rendered prima facie obvious, to one of ordinary skill in the art, a process for preparing an aqueous polymer dispersion comprising polymerizing an unsaturated monomer such that the polymers obtained are swollen with more than 2 wt% of unreacted residual monomers and have a mean particle size (D50 weight average) of 0.01 to 20 µm? Findings of Fact Saunders discloses a process for producing latexes of olefin polymers having improved stability to creaming, sedimentation and coagulation, comprising emulsifying a solution of an olefin polymer in a water-insoluble polymer solvent and an aqueous medium with the aid of an emulsifier system having a hydrophile-lipophile balance (HLB) of 7, stripping the 7 Appeal 2009-1282 Application 10/516,135 solvent from the emulsion to form a latex of the polymer, and adjusting the HLB to 18 (col. 1, ll. 13-21). Analysis The Appellants argue that the Examiner has not provided evidence that Saunders’ polymer necessarily is swollen with more than 2 wt% of unreacted residual monomers or has a mean particle size (D50 weight average) of 0.01 to 20 µm, or that Saunders would have suggested producing an aqueous dispersion of such a polymer (Br. 13; Reply Br. 3). The Examiner argues that Saunders’ polymer inherently is swollen with more than 2 wt% of unreacted residual monomers and has a mean particle size (D50 weight average) of 0.01 to 20 µm because the process by which it is made is substantially identical to the Appellants’ process (Ans. 8- 9, 11-12). The Examiner’s argument is not well taken because the Examiner has not compared the polymerization processes of Saunders and the Appellants and shown that they are substantially identical. The Examiner’s mere discussion of Saunders in isolation and assertion that the polymerization process disclosed therein is substantially identical to Oates’ polymerization process does not provide the required showing that those polymerization processes appear to be substantially identical. See Spada, 911 F.2d at 708. Conclusion of Law The Appellants have shown reversible error in the Examiner’s determination that Saunders discloses, expressly or inherently, or would have rendered prima facie obvious, to one of ordinary skill in the art, a process for preparing an aqueous polymer dispersion comprising polymerizing an unsaturated monomer such that the polymers obtained are 8 Appeal 2009-1282 Application 10/516,135 swollen with more than 2 wt% of unreacted residual monomers and have a mean particle size (D50 weight average) of 0.01 to 20 µm. DECISION/ORDER The rejections of claims 1-9 and 12-16 under 35 U.S.C. § 102(e) or, in the alternative, under 35 U.S.C. § 103 over Oates, as evidenced by Smith, Alberts, Nyberg and Brockway, claims 10 and 11 under 35 U.S.C. § 103 over Oates in view of Nyberg and Cernohous, and claims 1-3, 5, 6, 9 and 14- 16 under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over Saunders are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED ssl OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C. 1940 DUKE STREET ALEXANDRIA, VA 22314 9 Copy with citationCopy as parenthetical citation