Ex Parte Vanbesien et al

Patent Trial and Appeal Board

Aug 29, 2013

12367707 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/367,707 02/09/2009 Daryl Vanbesien A3540USDIV/XERZ200987US02 1491
62095 7590 08/30/2013
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
REDDICK, MARIE L
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
08/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DARYL VANBESIEN, KAREN A. MOFFAT,
EMILY L. MOORE, KIMBERLY D. NOSELLA,
DAVID J. SANDERS, CHRISTINE ANDERSON, and
CUONG VONG
____________

Appeal 2012-006269
Application 12/367,707
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006269
Application 12/367,707

2
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections of claims 1, 3-10, and 13-18 under 35 U.S.C. § 102(b) as
anticipated by Chen (US 6,455,219 B1, issued Sep. 24, 2002)) or under 35
U.S.C. § 103(a) as unpatentable over Chen. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.

Appellants claim a process for preparation of a latex comprising
preparing a latex seed comprising a first monomer composition and feeding
a second monomer composition to the latex seed under monomer-starved
polymerization conditions which comprise a feeding rate of the second
monomer composition equal to or less than 0.516% by weight per minute
(sole independent claim 1).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
1. A process for the preparation of a latex having a
weight average molecular weight of from 12 x 103 to 25 x 103,
which comprises:
(a) preparing a latex seed comprising a first monomer
composition, an initiator and an optional chain transfer agent by
emulsion polymerization; and
(b) feeding a second monomer composition to the latex
seed under monomer-starved polymerization conditions to form
the latex, wherein the monomer-starved polymerization
conditions comprise a feeding rate of the second monomer
composition into the latex seed equal to or less than 0.516% by
weight per minute.

Appeal 2012-006269
Application 12/367,707

3
The Examiner finds and Appellants agree that Examples 1 and 2 of
Chen yield a second monomer composition feeding rate of 0.55% by weight
per minute (Ans. 6; App. Br. 8). As correctly argued by Appellants, Chen's
0.55% by weight per minute does not anticipate the claim 1 feeding rate of
0.516% by weight per minute (id.). We perceive no merit in the Examiner's
opposing view (i.e., "the exemplified [0.55 wt.% per minute] feed rate of
Chen . . . and the feed rate per claim 1 touch") (Ans. 7).
Therefore, we do not sustain the Examiner's § 102 rejection of the
appealed claims as anticipated by Chen.
Concerning the § 103 rejection, the Examiner finds that Chen
discloses a process for preparing a latex having molecular weights which
include those defined by claim 1 comprising preparing a latex seed from a
first monomer composition and feeding a second monomer composition to
the latex seed under monomer-starved polymerization conditions to form the
latex (Ans. 4-5 citing Chen col. 7, ll. 28-67). The Examiner concludes that it
would have been obvious for one with ordinary skill in this art using only
routine experimentation to determine polymerization conditions appropriate
for Chen's process thereby obtaining molecular weights and feeding rates
within the claim 1 ranges (Ans. 6, 8).
Appellants acknowledge that "column 7, lines 28-47 of Chen discuss
changing the feed rate depending on the amount of material already in the
reactor" (App. Br. 10) but point out that Chen's feed rate is "not [based on]
the amount of monomer to be added" (id.). Further, Appellants state that
"Chen teaches feed rates of 90 minutes and 180 minutes, which are both
faster than the minimum claimed rate" (id. at sentence bridging 10-11).
Appeal 2012-006269
Application 12/367,707

4
Appellants then argue that "Chen does not teach slowing the feed rate to
obtain the claimed rates" (id. at 11).
Appellants' argument is not persuasive. In accordance with the
Examiner's above finding which Appellants have not contested, Chen's
above discussed column 7 disclosure of a latex preparation process includes
the express teaching that "[s]tarve fed conditions may be used if desired,
which occur when the monomer in the reaction is consumed by
polymerization at about the same rate as it is added" (col. 7, ll. 43-46; cf.,
Spec. paras. [0037]-[0038]). This teaching evinces that starve fed conditions
including second monomer feed rates are recognized in this art as result-
effective variables and concomitantly that determining optimum or workable
ranges for such variables would have been within the grasp of an artisan
using only routine experimentation. See In re Applied Materials, 692 F.3d
1289, 1295 (Fed. Cir. 2012) ("[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation" quoting In re Aller, 220 F.2d
454, 456 (CCPA 1955)).

For the above stated reasons, we sustain the § 103 rejection of the
appealed claims as unpatentable over Chen.
The decision of the Examiner is affirmed.

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
kmm