Ex Parte Aleksandrovic-Bondzic et al

Patent Trial and Appeal Board

Sep 27, 2017

13700406 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
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.
13/700,406 04/19/2013 Vesna Aleksandrovic-Bondzic 3321-P50029 6746
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
09/29/2017 EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VESNA ALEKSANDROVIC-BONDZIC,
SASCHA MERTENS, and STEPHAN FOERSTER1
Appeal 2016-008334
Application 13/700,406
Technology Center 1700
Before: N. WHITNEY WILSON, AVELYN M. ROSS, and
MERRELL C. CASHION, JR. Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 14—16, 18—26, 28—32, and 34—36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Beiersdorf AG. Appeal Br.
3.
2 In our Decision we refer to the Specification (“Spec.”), filed November 27,
2012, the Final Office Action (“Final Act.”) dated July 16, 2015, the Appeal
Brief (Appeal Br.) filed March 8, 2016, the Examiner’s Answer (“Ans.”)
dated July 15, 2016, and the Reply Brief (“Reply Br.”) filed September 8,
2016.
Appeal 2016-008334
Application 13/700,406
STATEMENT OF CASE
The subject matter on appeal relates to “a thickening polymer with
special properties.” Spec. 1. Claim 14, reproduced below, is illustrative of
the claimed subject matter:
14. A polymer which is obtained by free-radical emulsion
polymerization of monomers comprising
(A) at least one acidic vinyl monomer or salt thereof,
(B) at least one nonionic vinyl monomer,
(C) at least one monomer comprising an unsaturated end
group and a polyoxyalkylene portion,
(D) at least one crosslinking monomer, and
(E) optionally, a protective colloid,
the polymerization being controlled such that at least at times a
gel effect arises, achieved by monomer addition (dosing time)
taking place over not more than 40 minutes.
Appeal Br. 22 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:3
A. Claims 14—16, 20—26, 28—32, and 34—36 stand rejected
under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over
Tamareselvy.4 Final Act. 3.
B. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamareselvy. Id. at 5.
3 The Examiner withdraws the rejection of claim 24 under 35 U.S.C. § 112,
14 as being of improper dependent. Final Act. 7; Ans. 6.
4 Tamareselvy et al., US 2003/0202953 Al, published October 30, 2003
(“Tamareselvy”).
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Application 13/700,406
C. Claims 14, 16, 18—26, 28—32, 34, and 35 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Barabas5 in
view of Tamareselvy. Id.
Appellants request our reversal of Rejections A-C. See generally
Appeal Br. Appellants argue claims 14, 16, 29, and 34 (Rejection A) and
claim 14 (Rejection C). Id. Appellants do not present any arguments for
remaining claims 18—26, 28, 30-32, 34, and 35 separate from what is argued
for independent claim 14. Id. Therefore, we address the claims 14, 16, 29,
and 34 (Rejections A and C) to resolve the issues on appeal.
OPINION
Rejection A — Obviousness (claims 14—16, 20—26, 28—32, and 34—36)
The Examiner rejects claims 14—16, 20—26, 28—32, and 34—36 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Tamareselvy. Final Act. 3.
Claim 14:
The Examiner finds Tamareselvy discloses hair setting compositions
which read on the claimed compositions. Final Act. 3. The Examiner
acknowledges that Tamareselvy does not teach a monomer addition time as
claimed but explains that the claims are written in product-by-process format
and “determination of patentability is based on the product itself’ not its
method of production. Id. at 4. Therefore, the Examiner determines
Tamareselvy anticipates claim 14 (among others). Id. Alternatively, the
5 Barabas et al., US 4,110,291, issued August 29, 1978 (“Barabas”).
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Application 13/700,406
Examiner reasons that “such differences would have been obvious to one of
ordinary skill in the art as a routine modification of the process of preparing
the product in the absence of a showing of unexpected results.” Id.
Appellants first argue that the dosing times of Tamareselvy exceeds
those claimed and are carried out over a period of one to four hours which is
150% to six times the dosing time as claimed in claim 14. Appeal Br. 8.
Appellants argue that “even a slightly longer dosing time than 40 minutes
can make a big difference in terms of the properties of a composition
containing a relatively small amount of the resultant polymer.” Id. at 9.
Additionally, Appellants explain that Table 5 of the Specification “provides
clear evidence that the product-by-process elements recited in the instant
claims do indeed influence the structure and properties.” Id. Thus,
according to Appellants, Tamareselvy teaches away from the instant
invention. Id.
Appellants’ arguments are not persuasive of reversible error by the
Examiner. It is well settled that “[t]he patentability of a product does not
depend on its method of production. If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (citations
omitted). Moreover, “[wjhere a product-by-process claim is rejected over a
prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product.” In reMarosi, 710 F.2d 799, 803 (Fed. Cir. 1983)
(affirming rejections under Sections 102 or 103); Thorpe, 111 F.2d at 698
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Application 13/700,406
(when a prima facie case is established, the burden shifts to Appellant to
show that the prior art products do not necessarily possess the characteristics
of the claimed product). Nonetheless, “if the process by which a product is
made imparts structural and functional differences distinguishing the
claimed product from the prior art, then those differences are relevant as
evidence of no anticipation although they are not explicitly part of the
claim.” Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed.
Cir. 2012) (internal quotations omitted).
Here, Appellants rely upon the tan 8 values, shown in Table 5, to
show that the inventive polymers, having a lower tan 8 value, are different
from polymers having longer dosing times like those of Tamareselvy.
Appeal Br. 9; Reply Br. 2. However, Appellants’ evidence falls short of
establishing functional differences are due to the product-by-process
limitations. As the Examiner aptly explains, example polymers 31, 32 and
35 illustrate that “dosing time is not critical and does not impart structural
differences to the polymer made from substantially similar monomers at a
higher dosing time in comparison to dosing time of not more than 40
minutes.” Ans. 7. In particular, these examples demonstrate that example
polymer 32 with a dosing time of 30 minutes has a tan 8 value that exceeds
that of example polymer 35 at a dosing time of 60 minutes. Compare Spec.
18 (Table 4) with 19 (Table 5). Furthermore, the polymer data appearing in
Table 4, with monomer addition metered over 30 minutes, yields a wide
range of tan 8 values, ranging from 0.14 to 8.14. Id. at 18 (Table 14).
Therefore, it is clear that the monomer mixture used to prepare the polymers
significantly influences the properties and morphology of the resulting
polymer and is not necessarily dictated by the dosing time as Appellants
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suggest. Thorpe, 111 F.2d at 698. Thus, because the monomers and the
amounts used in Tamareselvy are substantially similar to those claimed, the
morphology of Tamareselvy’s polymer is expected to be substantially
similar and exhibit similar tan 8 values as in the present invention;
Appellants have not shown otherwise.
Claims 16 and 29:
Claims 16 and 29 additionally require that “the monomer addition
takes place over not more than 30 minutes.” Appeal Br. 22 and 24 (Claims
App’x). Similar to claim 14, Appellants urge that Tamareselvy discloses a
dosing time that exceeds that claimed and “[i]n view of the significant
impact of the dosing time on the properties of the resultant polymer” the
polymer of Tamareselvy is not the same. Id. at 11.
For the same reasons discussed above for claim 14, we affirm the
Examiner’s rejection of claims 16 and 29.
Claim 34:
Claim 34 additionally requires that polymer “preparation has a tan 8
of from 0.05 to 0.6.” Appeal Br. 25 (Claims App’x). The Examiner finds
that because the composition of Tamareselvy discloses “a thickened
composition comprising polymer and monomers in presently claimed
amounts, the thickened preparation once produced would inherently have the
presently claimed tan 8 of from 0.05 to 0.6.” Final Act. 4.
Appellants argue that the Examiner has failed to establish that the
composition of Tamareselvy has a tan 8 value within the claimed range.
Appeal Br. 12. Specifically, Appellants contend that “there is no reason to
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assume that the polymers of TAMARESELVY are the same as or similar to
the polymers of the [instant] invention . . . due to the fact that the polymers
of TAMARESELVY are made by adding the monomer mixture over a
significantly longer period of time . . . that recited in instant claim 14.” Id.
Appellants do not convince us of reversible error by the Examiner.
As discussed above (see supra, pp. 5—6), the polymer of Tamareselvy is
prepared from substantially similar monomers and in amounts falling within
the range of the present claims and, therefore, would reasonably be expected
to have the presently claimed tan 8 value. Also discussed above, Appellants
failed to establish that the shorter dosing times are necessarily responsible
for the lower tan 8 as claimed. Thorpe, 111 F.2d at 698. Rather, Table 4
suggests that the tan 8 value is dependent on the monomer mixture used in
preparing the polymers. Spec. 17—18 (Table 4). Therefore, Appellants’
contention (Appeal Br. 12; Reply Br. 4) that there is no reason to believe the
polymers of Tamareselvy are similar to the polymers of the invention
because of the longer monomer addition time is without merit.
Rejection C— Obviousness (claims 14—16, 18—26, 28—32, 34, and 35)
The Examiner rejects claims 14—16, 18—26, 28—32, 34, and 35 under
35 U.S.C. § 103(a) as obvious over Barabas in view of Tamareselvy. Final
Act. 5. The Examiner finds that Barabas teaches copolymer emulsions,
useful as thickening agents, which read on the claim compositions. Id. The
Examiner acknowledges that Barabas is “silent with respect to monomer
‘C’; and properties of thickened preparation” but finds that Tamareselvy
teaches a semi-hydrophobic monomer having a preferred formula of
CH2=CH-0(CH2)4-0-(C3H60)4-(C2H405)-H. Id. at 6-7. The Examiner
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Application 13/700,406
reasons that it would have been obvious to a person of skill in the art at the
time of invention to add the semi-hydrophobic monomer of Tamareselvy to
the thickening polymer of Barabas in order to “moderate the associative
properties of [the] polymers containing them, thus producing aqueous gels
with highly desirable texture and rheological properties.” Id.
Appellants argue that Barabas does not disclose any dosing of
monomers at all but rather adds all ingredients to the reactor at the same
time. Appeal Br. 14. Appellants explain that “the length of the dosing time
has a significant effect on the properties of the polymer produced” as
illustrated by Table 5 of the Specification. Id. at 14—15. Thus, because
Barabas mixes all monomers at once, the resulting polymer would be very
different than the polymer of claim 14. Id.
We agree with Appellants that Barabas fails to teach a dosing of the
monomers over a period of no more than 40 minutes. The Examiner’s
explanation (Ans. 9) that “[the] present claims recite ‘monomer addition
taking place over not more than 40 minutes’ which includes ‘zero’ minutes”
fails to consider the term dosing time as understood by the Specification. By
way of example, the Specification explains that “the monomer addition
(dosing time) takes place over the course of 40 minutes, particularly
preferably over the course of 30 minutes, overcomes the defects of the prior
art.” Spec. 3 (emphasis added). As a result, the Examiner’s determination
that a dosing time can be zero minutes is not reasonable as the Specification
describes dosing time as taking place over the proscribed time period.
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Therefore, on this record, we cannot sustain the Examiner’s rejection
of claims 14—16, 18—26, 28—32, 34, and 35 under 35 U.S.C. § 103(a) as
obvious over Barabas in view of Tamareselvy.6
CONCLUSION
Appellants have failed to identify a reversible error in the Examiner’s
rejection of claims 14—16, 20-26, 28—32, and 34—36 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Tamareselvy.
Appellants have failed to identify a reversible error in the Examiner’s
rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Tamareselvy.
Appellants have identified a reversible error in the Examiner’s
rejection of claims 14, 16, 18—26, 28—32, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Barabas in view of Tamareselvy.
DECISION
For the above reasons, the Examiner’s rejection of claims 14—16, 18,
20—26, 28—32, and 34—36 is affirmed and the Examiner’s rejection of claim
19 is reversed.
6 We note however, that Tamareselvy teaches the gradual addition of the
monomer mixture over a period of time. Tamareselvy 1169. And, as
discussed with respect to Rejection A above, a dosing time over a period of
40 minutes was not shown to necessarily result in a polymer having different
properties than a polymer prepared using dosing times greater than 40
minutes. See supra, pp. 5—6.
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Application 13/700,406
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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