Ex Parte Grady

Board of Patent Appeals and Interferences

Jan 27, 2009

10617270 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL CHARLES GRADY
____________

Appeal 2008-6266
Application 10/617,270
Technology Center 1700
____________

Decided: January 27, 2009
____________

Before CHUNG K. PAK, PETER F. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-46. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2008-6266
Application 10/617,270

Appellant’s claimed invention is directed to polymer production
process and products made therewith. Claims 1 and 30 are both illustrative
and reproduced here, as follows:
1. A process for producing a polymer comprising:

conveying hybrid reactor mixtures comprising one or more hybrid
reactor monomers and one or more hybrid reactor initiators to one or more
hybrid reactors maintained at effective hybrid polymerization temperatures
and sub-reflux polymerization gage pressures to cause polymerization of a
portion of said hybrid reactor monomers into said polymer, and

conveying hybrid reactor contents to one or more batch reactors
maintained at effective batch polymerization temperatures and reflux
polymerization pressures to cause polymerization of a remaining portion of
said hybrid reactor monomers into said polymer.

30. A polymer made by the process of claim 1 or 29.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Prentice 5,171,768 Dec. 15, 1992
Berge 5,362,826 Nov. 08, 1994

The Examiner maintains the following rejections:
Claims 1-3, 5-12, 16-22, 24-33, and 36-46 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Prentice. Claims 1-46 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Berge in view of
Prentice.
At the outset, we note that Appellant argues several process
conditions as distinctions in traversing the Examiner’s anticipatory rejection
of claims 1-3, 5-12, 16-22, 24-33, and 36-46 together as a group in the
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Appeal Brief (App. Br. 4-12; Reply Br. 2-3).1 Similarly, Appellant opposes
the Examiner’s obviousness rejection of claims 1-46 by asserting several
common arguments as to all of the so rejected claims based on alleged
process differences (App. Br. 12-16; Reply Br. 3-4). However, how the
process-based arguments may serve to patentably distinguish product-by-
process claims 30 and 31 from the anticipatorily applied disclosure of
Prentice and/or show error in the Examiner’s obviousness rejection of the
product claims over the collective teachings of Berge and Prentice presents
somewhat different questions from how these arguments may fair in
overcoming the Examiner’s rejections as to the process claims.
For example, all of the rejected method claims require at least two
polymerization steps (see representative claim 1 and the other independent
process claims 32, 33, and 46). Each of these rejected claims, as represented
by claim 1, require a polymerization process including a polymerization step
taking place in a reactor under sub-reflux pressure conditions followed by
further polymerization in at least one other reactor under reflux pressure
conditions. The “sub-reflux” polymerization occurs in one or more reactors
called “hybrid” reactor(s) and the other “reflux” polymerization occurs in
one or more batch reactors (see representative claim 1). Of course, the
product-by-process claims 30 and 31 are measured by the required product.
This distinction is more fully developed below.
Accordingly, we group and treat rejected product claims 30 and 31
separate from the remaining rejected claims that are subject to each of the

1 Our references to the Appeal Brief and to the Reply Brief are to the Briefs
filed subsequent to the Panel Remand dated August 28, 2007. Similarly, our
references to the Examiner’s Answer herein are to the Answer dated
December 28, 2007.
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Examiner’s rejections. We select claim 30 as being a representative claim
on which we shall decide this Appeal as to the separately considered and
regrouped product claims subject to each stated rejection.
We select claim 1, which claim is common to both of the Examiner’s
rejections, as a representative independent claim on which we shall primarily
focus in deciding this appeal as to the method claims that are subject to each
stated rejection.
We affirm both stated rejections as to product claims 30 and 31.
However, we reverse both rejections as to the involved method claims. Our
reasoning follows.
ISSUES
1. Has Appellant shown that the Examiner reversibly erred in finding
that Prentice inherently describes a polymerization process including a “sub-
reflux condition” in a first polymerization reactor stage and a “reflux
condition” in a second polymerization reactor stage corresponding to the
polymerization process required by method claims 1-3, 5-12, 16-22, 24-29,
32, 33, and 36-46; and in finding that Prentice anticipates, prima facie, these
claims?
2. Has Appellant shown that the Examiner reversibly erred in
combining Prentice with Berge to allegedly show that the combined
teachings thereof would have rendered a multi-stage polymerization process
required by the rejected method claims 1-29 and 32-46 prima facie obvious?
3. Has Appellant established reversible error in the Examiner’s
anticipation and/or obviousness rejections of product claims 30 and 31 by
presenting arguments with respect to alleged polymerization process
differences without focusing on and substantiating how any process
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difference(s) that may be actually recited in the preparation of the product, in
product-by-process claims 30 and/or 31, would necessarily result in a
patentable difference of the claimed product over products prepared
according to the applied prior art?
SUMMARY DISPOSITION
We answer issue questions 1 and 2 in the affirmative and issue
question 3 in the negative. Thus, we reverse the Examiner’s rejections as to
the process claims subject to each rejection and we affirm both of the
Examiner’s rejections as to the product claims.
PRINCIPLES OF LAW
During examination, claims terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007). In this regard
and in proceedings before the Patent and Trademark Office (PTO), claims in
an application are not only given their “broadest reasonable interpretation
consistent with the specification” but also the claim language is “read in
light of the specification as it would be interpreted by one of ordinary skill in
the art”. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
A reference is anticipatory within the meaning of § 102 if it discloses
each and every claim limitation either expressly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
As stated in In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (internal citations
omitted), “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”
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Of course, the burden of establishing a prima facie case of anticipation
or obviousness resides with the PTO. See In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984).
However, in assessing the patentability of a product-by-process claim,
the product made is the focus of our inquiry. In this regard, the patentability
of a product is a separate consideration from that of the process by which it
is made. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); In re Brown,
459 F.2d 531, 535 (CCPA 1972). It is well settled that when prior art
discloses a product which reasonably appears to be either identical with or
only slightly different than a product claimed in a product-by-process claim,
the burden is on the Applicant to establish with objective evidence that the
products are not, in fact, substantially the same. In re Brown, 459 F.2d at
535.
“[A]nalysis [of whether the subject matter of a claim is obvious] need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007). The analysis supporting
obviousness, however, should be made explicit and should “identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements” in the manner claimed. Id.
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact, as necessary, may appear in other
portions of this opinion.
The Specification provides that:
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"Sub-reflux conditions" mean reactor conditions, such as
pressure and temperature at which no boiling of solvents
or monomers present in the polymerization medium
occurs.
"Reflux conditions" mean reactor conditions, such as
pressure and temperature at which boiling of solvents or
monomers present [in the] polymerization medium
occurs.
Spec. 6.

Prentice discloses a free radical emulsion polymerization
method for producing carboxylated latex products (Abstract). The
method includes a pre-polymerization step involving a non-carboxylic
co-monomer and unsaturated carboxylic acid monomer in the absence
of any conjugated diene to a conversion of 3-12% forming partially
polymerized latex (col. 1, ll. 35-54). A conjugated diene is co-
polymerized with the pre-polymer (id.) Prentice discloses that using
such selective addition of conjugated diene monomer reduces non-
desirable 4-phenylcyclohexene (4-PCH) formation associated with
prior art multi-reaction zone polymerization of carboxylated latex
(col. 1, ll. 7-31 and 55-62). Prentice describes using two or more
reaction zones, including batch or stirred tank reactors, in a batch,
semi-continuous, or continuous process (col. 5, l. 11- col. 6, l. 41).
Prentice discloses the use of initiators typically employed in free
radical polymerization (col. 4, l. 62- col. 5, l. 10).
Prentice discloses preferable constant reaction pressures of 130-210
psig and reaction temperatures of 65-85 degrees Centigrade for a first
reaction zone and 75- 95 degrees Centigrade for the second, third, and fourth
reaction zones (col. 5, ll. 22-29). Prentice discloses lower reaction
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temperatures of 60-75 degrees Centigrade are usable with longer reaction
times (col. 5, ll. 36-38).
Prentice discloses that the product latex formed from their process has
unique film forming properties (Abstract; col. 9, ll. 19-40).
Berge discloses a method of preparation of compositions including
macro-monomers of limited molecular weight, including olefinic
polymerizable end groups (Abstract; col. 2, ll. 42-55). Berge notes that the
macromonomer products produced by their process can be used to form graft
copolymers, microgels, non-aqueous dispersed polymers, branched
polymers, block polymers, ladder polymers, and star polymers (col. 4, ll. 11-
15). Thus, the resulting product can be used in coatings and other
applications (col. 4, ll. 14-32 and col. 7, ll. 42-61).
Berge discloses that the macromonomer production process can be
carried out using known polymerization initiators and in the presence of a
polymerization medium and in a batch, semi-batch, continuous, or feed
process (col. 10, ll. 41 - col. 11, l. 44). Berge teaches the possibility of
producing terminally functional macromonomers using oligomeric chain
transfer agent in the reaction mixture (col. 11, ll. 62-68). Berge provides
that monomer reflux can be avoided during a batch process for producing
the macromonomer (col. 10, l. 67 - col. 11, l. 2).

ANALYSIS
REJECTED PROCESS CLAIMS
Anticipation Rejection
In the anticipation rejection of method claims 1-3, 5-12, 16-22, 24-29,
32, 33, and 36-46 over Prentice, the Examiner recognizes that Prentice does
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not explicitly describe “sub-reflux” (non-boiling) and “reflux” (boiling)
pressure reaction conditions for separate polymerization reactors used in the
described polymerization process thereof, as required by all of Appellant’s
rejected process claims. This is evidenced by the Examiner’s inherency
position regarding the representative claim 1 requirement for a process using
a “sub-reflux” pressure reaction condition in a first polymerization reactor
(hybrid reactor) and a “reflux” pressure reaction condition in another
polymerization reactor (batch reactor) as set forth in the Answer (Ans. 8).
However, as argued by Appellant (App. Br. 6, 7, and 10-12) , the
Examiner has not reasonably established by a preponderance of the evidence
that Prentice inherently describes “sub-reflux” (non-boiling) and “reflux”
(boiling) pressure reaction conditions for separate polymerization reactors
used in the disclosed polymerization process. While the Examiner asserts
that Prentice “discloses the same at least two steps polymerization, the same
polymerization conditions, the same reactor, and high rate monomer
conversion”, the Examiner seemingly bases this position on the notion that
“[t]he term ‘sub-reflux condition’ and ‘reflux’ condition could be the same
condition being as an atmospheric pressure, if compare process conditions in
the present claim 22 and claim 11” (Ans. 8).2
The Examiner’s inherency position is untenable. Appellant’s
Specification defines the terms “sub-reflux condition” and reflux condition”
as being non-boiling and boiling conditions, respectively (Spec. 6). In this
regard, the claim term “sub-reflux” would have reasonably conveyed to one
of ordinary skill in the art that representative claim 1 calls for a pressure

2 Also, the Examiner further attempts to explain this point on page 12 of the
Examiner’s Answer.
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chosen such that no boiling of monomers or solvents present would occur in
the hybrid reactor(s) operated with a sub-reflux pressure; that is, a pressure
correlated with the other involved reactor conditions such that boiling is
prevented. Also, the claim term “reflux” associated with the pressure
reaction parameter of the batch polymerization reactor(s) of representative
claim 1 would have reasonably conveyed to one of ordinary skill in the art
that the pressure chosen was such that some boiling of monomers or solvents
present would occur in the reactor(s) operated with reflux pressure; that is, a
pressure correlated with the other reactor conditions such that boiling takes
place.
Here, the Examiner has not presented a reasoned basis to establish that
Prentice necessarily employs a selected pressure coupled with the other
reaction conditions that permits no boiling to occur in a first pre-
polymerization reaction zone and a pressure coupled with other reaction
conditions that provides for boiling in a subsequent reaction polymerization
zone, as required by representative claim 1 and all of the other rejected
process claims.
The Examiner’s suggested comparison of Appellants’ dependent
claim 11 wherein a sub-reflux polymerization gauge pressure range is given
for hybrid reactors that includes, as one endpoint, a zero gauge pressure with
an atmospheric pressure for batch reactors set forth in dependent claim 22 is
again noted. However, this suggested comparison does not explain how
Prentice inherently describes a first reaction stage operated with selected
conditions, including a selected “sub-reflux” pressure (not a range), that
results in a non-boiling polymerization and a second reaction stage operated
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with conditions, including a selected “reflux” pressure, which selected
condition requires a boiling polymerization condition.
On this record, the Examiner has not established that Prentice
describes (explicitly and/or inherently) all of the process limitations required
by representative rejected claim 1 and the other appealed process claims.

Obviousness Rejection of Process Claims
As for the Examiner’s obviousness rejection of process claims 1-29
and 32-46, we note that the Examiner relies on Prentice to supplement the
teachings of Berge to establish the obviousness of employing a second stage
polymerization under reflux conditions. The Examiner maintains that:
It would have been obvious to one of ordinary skill in the
art to modify the process of producing macromonomer
composition in Berge invention by a continuous polymerization
of said macromonomer with addition monomer(s) in the second
polymerization stage as disclosed by Prentice because any
additional functional monomer is expected by Berge, column
11, lines 65-68, and, thereby, obtain the claimed requirement.

Ans. 10-11

However, as explained by Appellant (App. Br. 12-17), Prentice is
directed to the production of carboxylated latexes with a specified pre-
polymerization step and staged selected addition of conjugated diene in a
multistage process to diminish 4-PCH formation, while Berge is directed to
macromonomer production using an oligomeric chain transfer agent.
Although Berge does indicate that the macromonomers produced therein can
be used for forming blocked, branched, star, non-aqueous dispersion, and/or
ladder polymers (col. 12, ll. 40-43), the Examiner has not adequately
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explained how these subsequent uses of the macromonomers described by
Berge coupled with the teachings of Prentice, respecting a multistage latex
production process with staged conjugated diene addition subsequent to a
limited pre-polymerization, would have led one of ordinary skill in the art to
employ select portions of these disparate teachings of Prentice together with
Berge in a manner that would have resulted in the claimed process.
After all, the Examiner has the initial burden of establishing a prima
facie case of obviousness. See In re Piasecki, 745 F.2d at 1472.

Claims 30 and 31
Anticipation Rejection
Regarding representative product claim 30, the Examiner has found
that Prentice discloses a polymer product that can include water as a medium
and “has unique film forming characteristics and polymer morphology”
including “good tensile value and elongation performance” (Ans. 7;
Prentice, Abstract, col. 1, ll. 30-31, 67; col. 9, Table III). Appellant does not
dispute these findings of the Examiner. In this regard, we note that
representative claim 30 is a product-by-process claim that refers to the
process of claim 1 for the methods of preparation thereof. This method of
preparation does not specify any particular monomers or initiator ingredient
employed. Nor does the method of preparation otherwise limit the
components that may be found in the product polymer produced.
Given the above, we determine that that Examiner has tendered a
prima facie case of anticipation for the representative product-by-process
claim 30 that has not been fairly refuted by Appellants with evidence that
establishes that a patentably distinct product is necessarily formed by the
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manner in which the product of representative claim 30 is prepared. In this
regard, it is appropriate that the burden of coming forward with evidence to
establish a product distinction for the claimed product based on the manner
of preparation thereof rests with Appellant. See In re Brown, 459 F.2d at
535. Here, Appellant has not discharged this burden.
It follows that we shall sustain the Examiner’s anticipation rejection
of product claims 30 and 31.
Obviousness Rejection
We shall likewise sustain the Examiner’s obviousness rejection of the
product-by-process claims over the combined teachings of Prentice and
Berge for the reasons stated above. In this regard, anticipation is the
epitome of obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA
1974).
In addition, we note that Berge discloses that their product polymers
(macromonomers) can be used in forming coatings (col. 4, ll. 14-32 and col.
7, ll. 42-61). Appellant has not specifically articulated how their product
(representative claim 30) patentably differs from the polymer products of
Berge by coming forward with a substantiated argument and evidence to
show that the process of making the product of representative claim 30
would necessarily result in a patentably distinct product over that taught or
suggested by Berge with or without Prentice.
On this record, we shall sustain the Examiner’s obviousness rejection
of claims 30 and 31.
CONCLUSION
Appellant has shown that: (1) the Examiner reversibly erred in finding
that Prentice inherently describes a polymerization process including a “sub-
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reflux condition” in a first polymerization reactor stage and a “reflux
condition” in a second polymerization reactor stage corresponding to the
polymerization process required by Appellant’s anticipatorily rejected
method claims 1-3, 5-12, 16-22, 24-29, 32, 33, and 36-46; (2) the Examiner
reversibly erred in combining the disparate process of Prentice with Berge
without specifically identifying why one of ordinary skill in the art would
have been led to combine select teachings from Prentice with Berge in a way
so as to render a multi-stage polymerization process required by the rejected
method claims 1-29 and 32-46 prima facie obvious.
Appellant has not established reversible error in the Examiner’s
anticipation and/or obviousness rejections of product-by-process claims 30
and 31 by arguing alleged polymerization process differences without
specifying and substantiating how the process differences recited in
product-by-process claims 30 and/or 31 would necessarily result in a
patentable product difference for the product covered by these claims over
the products of the applied prior art.

ORDER
The decision of the Examiner to reject claims 1-3, 5-12, 16-22, 24-29,
32, 33, and 36-46 under 35 U.S.C. § 102(b) as being anticipated by Prentice,
and to reject claims 1-29, and 32-46 under 35 U.S.C. § 103(a) as being
unpatentable over Berge in view of Prentice is reversed. The decision of the
Examiner to reject claims 30 and 31 under 35 U.S.C. § 102(b) as being
anticipated by Prentice, and to reject claims 30 and 31 under 35 U.S.C. §
103(a) as being unpatentable over Berge in view of Prentice is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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