Ex Parte Mougin

Board of Patent Appeals and Interferences

Feb 24, 2009

10930749 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NATHALIE MOUGIN
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Appeal 2008-6260
Application 10/930,749
Technology Center 1700
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Decided:1 February 24, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, 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 2008-6260
Application 10/930,749

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-17, 20, 21, 23, 24, 26-29, 31, 33, 35-44, 46, 49-59,
61, 64-88, 91, 99 and 117-123. Claims 2, 18, 19, 22, 25, 30, 32, 34, 45, 47,
48, 60, 62, 63, 89, 90, 92-98 and 100-116, which are all of the other pending
claims, stand withdrawn from consideration by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a linear block ethylenic copolymer, and
discloses that the copolymer is useful in cosmetic compositions
(Spec. ¶¶ 003-004). Claim 1 is illustrative:
1. A linear block ethylenic copolymer comprising:

- at least one block A derived from monomers comprising from
52 to 100% by weight of at least one ethylenic monomer
containing a lactam ring, corresponding to formula (I) below:

{Formula I is reproduced below:}2

2 The text in curly braces following the formula is provided to ensure
compliance with section 508 of the U.S. Rehabilitation Act for publication
of this Decision on the USPTO website pursuant to the Freedom of
Information Act. It is not part of the Decision.
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Application 10/930,749

{Formula I is depicted above.}
wherein:

• R is a group -(CH2)n-, in which at least one of the carbon
atoms is optionally replaced with a nitrogen atom or an
oxygen atom, in which n is an integer ranging from 3 to
12, and in which at least one of the carbon atoms is
optionally substituted with at least one C1 to C6 alkyl
group;

• R' is chosen from H and a methyl group;

• R1 and R2, which may be identical or different, are
chosen from linear, branched and cyclic alkylene, and
aralkylene groups having from 1 to 22 carbon atoms, in
which at least one of the carbon atoms is optionally
replaced with an oxygen or nitrogen atom;

• X is chosen from -OCO-, -NHCO-, -COO- and -O-; and

• o, p and q are chosen from, independently of each other,
0 and 1; wherein the at least one block A is present in an
amount ranging from 1 to 99% by weight of the
copolymer;

- and at least one block B derived from monomers not
comprising an ethylenic monomer containing a lactam ring of
formula (I), or comprising a minor proportion thereof, the at
least one block B having a glass transition temperature Tg
ranging from -55°C to +55ºC.

The References
Chu 3,739,042 Jun. 12, 1973
Jacquet 4,283,384 Aug. 11, 1981
Mougin 2002/0115780 A1 Aug. 22, 2002
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Application 10/930,749

The Rejections
The claims stand rejected as follows: claims 1, 3-9, 15-17, 20, 21, 23,
24, 26-29, 31, 33, 35-44, 46, 49-54, 57-59, 61, 64-70, 76-88, 91, 99 and 117-
123 under 35 U.S.C. § 102(b) over Chu; claims 1, 3-17, 20, 21, 23, 24, 26-
29, 31, 33, 35-44, 46, 49-59, 61, 64-88, 91, 99 and 117-123 under
35 U.S.C. § 103 over Jacquet; and claims 1, 3-17, 20, 21, 23, 24, 26-29, 31,
33, 35-44, 46, 49-59, 61, 64-88, 91, 99 and 117-123 under 35 U.S.C. § 103
over Mougin.
OPINION
We affirm the Examiner’s rejections.
The Appellant argues the claims in each rejection as a group (Br. 18-
28; Reply Br. 2-9). We therefore limit our discussion of each rejection to
one rejected claim, i.e., claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Rejection under 35 U.S.C. § 102(b) over Chu
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Chu discloses, expressly or inherently, a copolymer block
made from monomers including 52 wt% N-vinyl 2-pyrrolidone?
Finding of Fact
Chu discloses a copolymer block made from 1.0 ml of N-vinyl
2-pyrrolidone and 1.0 ml of 4-vinylpyridine (col. 17, ll. 26-43).
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).
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The Appellant calculates, based upon the densities of N-vinyl
2-pyrrolidone and 4-vinylpyridine, that Chu’s mixture of 1.0 ml of N-vinyl
2-pyrrolidone and 1.0 ml of 4-vinylpyridine contains, at most, 51.613 wt%
N-vinyl 2-pyrrolidone (Br. 20). The Appellant argues that 51.613 wt%
cannot be said to identically describe 52 wt% (Br. 20; Reply Br. 3-4).
During patent prosecution, claims are to be given their broadest
reasonable interpretation consistent with the specification, as the claim
language would have been read by one of ordinary skill in the art in view of
the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
The Appellant’s Specification does not limit “52” to “52.0”. Hence,
the broadest reasonable interpretation of “52”, in view of the Appellant’s
Specification, includes numbers which round up to 52, such as 51.5.
Therefore, the broadest reasonable interpretation of “52” in view of the
Appellants’ Specification includes Chu’s 51.613.
Conclusion of Fact
The Appellant has not shown reversible error in the Examiner’s
determination that Chu discloses, expressly or inherently, a copolymer block
made from monomers including 52 wt% N-vinyl 2-pyrrolidone.
Rejection under 35 U.S.C. § 103 over Jacquet
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Jacquet would have rendered prima facie obvious, to one
of ordinary skill in the art, a block copolymer comprising a polyvinyl
pyrrolidone block and a block made from methyl acrylate, ethyl acrylate or
t-butyl acrylate?
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Findings of Fact
Jacquet discloses a tri-sequenced polymer3 comprising what appears
to be polymethyl methacrylate attached at each of the two hydroxyl groups
of polyvinyl pyrrolidone (col. 3, ll. 24-30). Jacquet’s disclosed list of
representative esters that are useful as his unsaturated monomers, in addition
to methyl methacrylate, include methyl acrylate, ethyl acrylate and t-butyl
acrylate (col. 2, ll. 6-21).
The Appellant’s Specification discloses that the glass transition
temperature (Tg) of methyl methacrylate is outside the -55°C to 55°C range
required by the Appellant’s claim 1, and that methyl acrylate (Tg 10°C),
ethyl acrylate (Tg -24°C) and t-butyl acrylate (Tg 50°C) have glass
transition temperatures within that range (Spec. ¶¶ 0116-0117).
Analysis
The Appellant argues that the Examiner has not established that one
of ordinary skill in the art would have been motivated to use a block made
using 52 to 100 wt% of Jacquet’s vinyl pyrrolidone in combination with a
block formed from an unsaturated monomer having a Tg within the
Appellants’ required range (Br. 23-25; Reply Br. 5-7).
As set forth in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-
41 (2007), establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed”.

3 The Examiner finds that a sequenced polymer is a block copolymer
(Ans. 5). Because that finding is reasonable and is not challenged by the
Appellant, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3
(CCPA 1964).
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The apparent reason to use a polyvinyl pyrrolidone homopolymer
(100% vinyl pyrrolidone monomer) polymerized with methyl acrylate, ethyl
acrylate or t-butyl acrylate would have been to obtain a sequenced polymer
which, Jacquet would have indicated to one of ordinary skill in the art, is
useful for making a cosmetic composition (col. 1, ll. 9-10, 37-40, 45-49;
col. 2, ll. 6-20; col. 3, ll. 24-30). The fact that the polyvinyl pyrrolidone
could be polymerized with many disclosed unsaturated monomers other than
methyl acrylate, ethyl acrylate or t-butyl acrylate does not make the
combination of polyvinyl pyrrolidone with those unsaturated monomers any
less obvious. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed.
Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). Although Jacquet
may not have led one of ordinary skill in the art to select methyl acrylate,
ethyl acrylate or t-butyl acrylate to form a block having a Tg in the range
required by the Appellant’s claim 1, Jacquet would have led one of ordinary
skill in the art to select them as being suitable for forming the desired
copolymer. Thus, the selection of those unsaturated monomers would have
been prima facie obvious to one of ordinary skill in the art. The recitation of
a property, such as Tg, of the blocks formed from those unsaturated
monomers does not render the prima facie obvious copolymer unobvious.
The Appellants argue that “Jacquet nowhere teaches or suggests that
the combination of compounds having at least one OH function and
unsaturated monomers as disclosed therein would have the excellent
properties obtained by the presently claimed combination as disclosed in the
originally-filed specification in paragraphs [057]-[061]” (Reply Br. 6).
The relied-upon portion of the Appellant’s Specification does not
provide evidence, let alone the required side-by-side comparison of the
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claimed invention with the closest prior art which is commensurate in scope
with the claims, accompanied by an explanation of why the results would
have been unexpected by one of ordinary skill in the art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972).
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Jacquet would have rendered prima facie obvious, to one
of ordinary skill in the art, a block copolymer comprising a polyvinyl
pyrrolidone block and a block made from methyl acrylate, ethyl acrylate or
t-butyl acrylate.
Rejection under 35 U.S.C. § 103 over Mougin
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Mougin would have rendered prima facie obvious, to one
of ordinary skill in the art, a block copolymer comprising a block made from
N-vinylpyrrolidone or vinylcaprolactam and a block made from methyl
acrylate, ethyl acrylate or t-butyl acrylate?
Findings of Fact
Mougin discloses “the cosmetic use of block ethylenic copolymers of
elastic nature comprising at least one rigid block having a glass transition
temperature (Tg) of greater than or equal to 20°C. and at least one flexible
block having a glass transition temperature (Tg) which is less than 20°C”
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(abstract). The monomers from which the rigid block(s) can be made
include N-vinylpyrrolidone and vinylcaprolactam, and the monomers from
which the flexible block(s) can be made include methyl acrylate, ethyl
acrylate and tert-butyl acrylate (¶¶ 0073, 0084).
Analysis
The Appellant argues that Mougin discloses a broad genus of block
copolymers (Reply Br. 8).
Mougin discloses that the monomers from which the rigid block can
be made include N-vinylpyrrolidone and vinylcaprolactam, and that the
monomers from which the flexible block can be made include methyl
acrylate, ethyl acrylate and tert-butyl acrylate (¶¶ 0073, 0084). A block
made from N-vinylpyrrolidone or vinylcaprolactam meets the requirements
of the Appellant’s block A in claim 1, and a block made from methyl
acrylate, ethyl acrylate or tert-butyl acrylate meets the requirements of the
Appellant’s block B in claim 1. One of ordinary skill in the art, through no
more than ordinary creativity, would have selected blocks made from those
monomers to obtain the desired cosmetic composition (abstract). See KSR,
127 S. Ct. at 1741 (In making an obviousness determination one “can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ”).
The Appellant argues that there would have been no motivation to
select monomers that form the Appellant’s blocks A and B rather than
selecting other monomers disclosed by Mougin (Br. 26-28; Reply Br. 8-9).
The fact that many other monomers could be used would not have
rendered the use of the monomers disclosed by Mougin that form the
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Appellant’s blocks A and B any less obvious. See Merck, 874 F.2d at 807;
Lemin, 332 F.2d at 841.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Mougin would have rendered prima facie obvious, to one
of ordinary skill in the art, a block copolymer comprising a block made from
N-vinylpyrrolidone or vinylcaprolactam and a block made from methyl
acrylate, ethyl acrylate or t-butyl acrylate.
DECISION/ORDER
The rejections of claims 1, 3-9, 15-17, 20, 21, 23, 24, 26-29, 31, 33,
35-44, 46, 49-54, 57-59, 61, 64-70, 76-88, 91, 99 and 117-123 under
35 U.S.C. § 102(b) over Chu, claims 1, 3-17, 20, 21, 23, 24, 26-29, 31, 33,
35-44, 46, 49-59, 61, 64-88, 91, 99 and 117-123 under 35 U.S.C. § 103 over
Jacquet, and claims 1, 3-17, 20, 21, 23, 24, 26-29, 31, 33, 35-44, 46, 49-59,
61, 64-88, 91, 99 and 117-123 under 35 U.S.C. § 103 over Mougin are
affirmed.
It is ordered that the Examiner’s decision is affirmed.

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Appeal 2008-6260
Application 10/930,749

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

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