Ex Parte Mc Kee et al

Board of Patent Appeals and Interferences

Apr 16, 2009

10516135 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GRAHAM EDMUND MC KEE,
GERRIT LUINSTRA, JOACHIM OUEISSER,
and MARKUS SCHMID
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Appeal 2009-1282
Application 10/516,135
Technology Center 1700
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Decided:1 April 16, 2009
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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,
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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
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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
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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
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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.
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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
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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
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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

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