Ex Parte Heitner et al

Board of Patent Appeals and Interferences

Jun 11, 1998

08169782 (B.P.A.I. Jun. 11, 1998)

1 Application for patent filed December 17, 1993.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HOWARD I. HEITNER and RODERICK G. RYLES
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Appeal No. 95-3647
Application No. 08/169,7821
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ON BRIEF
________________
Before KIMLIN, GARRIS and WEIFFENBACH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-9.
Claims 10-18, the other claims remaining in the present
application, stand withdrawn from consideration as being drawn to
non-elected inventions. Claim 1 is illustrative:
Appeal No. 95-3647
Application No. 08/169,782
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1. A stable, gel-free water-in-oil microdispersion
comprising 1) a continuous phase of a hydrocarbon oil and an
emulsifier which is effective so as to prevent the detrimental
agglomeration of polymer micelles and 2) a discontinuous phase
comprising micelles of an aqueous solution of an hydroxamated
vinyl polymer having a weight average molecular weight of over
about 1,000,000.
The examiner relies upon the following references as
evidence of obviousness:
Von Euler-Chelpin 3,753,939 Aug. 21, 1973
Anderson et al. (Anderson) Re. 28, 474 July 8, 1974
Candau et al. (Candau) 4,521,317 June 4, 1985
Fong et al. (Fong) 4,886,872 Dec. 12, 1989
Appellants' claimed invention is directed to a stable, gel-
free water-in-oil microdispersion comprising a continuous phase
and a discontinuous phase. The continuous phase comprises a
hydrocarbon oil and an emulsifier, whereas as the discontinuous
phase comprises micelles of an aqueous solution of an
hydroxamated vinyl polymer. The weight average molecular weight
of the polymer is over about 1,000,000.
Appellants submit at page 3 of the Brief that, with the
exception of claim 3, all the appealed claims stand or fall
together.
Appealed claims 1-9 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter appellants
Appeal No. 95-3647
Application No. 08/169,782
2 The examiner has withdrawn the rejection under 35 U.S.C.
§ 112, first paragraph (see page 2 of the Answer).
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regard as their invention.2 Claims 1, 2 and 4-9 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Fong in view
Anderson and Candau. In addition, claim 3 stands rejected under
35 U.S.C. § 103 as being unpatentable over the stated combination
of references in further view of Von Euler-Chelpin.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we will
not sustain the examiner's rejection under 35 U.S.C. § 112,
second paragraph. However, we fully concur with the examiner
that the claimed subject matter would have been obvious to one of
ordinary skill in the art within the meaning of § 103 in view of
the applied prior art. Accordingly, we will sustain the
examiner's § 103 rejections for essentially those reasons
expressed in the Answer, and we add the following primarily for
emphasis.
We consider first the examiner's rejection of claims 1-9
under 35 U.S.C. § 112, second paragraph. According to the
examiner, the language "stable, gel-free" of claim 1 is ambiguous
and confusing since page 4 of appellants' specification states
that the claimed microdispersion "may contain gelled polymer."
Appeal No. 95-3647
Application No. 08/169,782
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However, it is well settled that claim language must be
considered not in a vacuum but in light of the supporting
specification and teachings of the prior art as it would be
interpreted by one of ordinary skill in the art. In re Kroekel,
504 F.2d 1143, 1146, 183 USPQ 610, 612 (CCPA 1974); In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). In the
present case, we concur with appellants that the first paragraph
at page 4 of the specification adequately defines the language
"stable, gel-free" such that one of ordinary skill in the art
would understand that the language defines a microdispersion that
is free flowing and that may contain some gelled polymer, as long
as the microdispersion is still pourable. As recognized by the
examiner, an applicant may be his own lexicographer, and we do
not find the claim language so repugnant to the ordinary meaning
of its terms that appellants be precluded from its use.
We now turn to the rejection of claims 1, 2 and 4-9 under
§ 103 over Fong in view of Anderson and Candau. Appellants do
not dispute that Fong discloses a hydroxamated vinyl polymer in
the water phase in a water-in-oil emulsion (column 6, lines
9-19). Like appellants, Fong employs the water-in-oil emulsion
as a flocculating agent, and Fong teaches that the emulsion may
be prepared in accordance with the Anderson reissued patent.
Appeal No. 95-3647
Application No. 08/169,782
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Anderson discloses the preparation of water-in-oil emulsions
having acrylamide polymers in the water phase for use as
flocculating agents, and further discloses at column 4, lines 25
et seq., the inclusion of emulsifiers that are preferred by
appellants. In addition, Anderson teaches that it is desirable
that the microemulsions be stable and comprise a polymer of a
particle size within the range of 5 millimicrons up to about 5
microns (column 4, lines 24-32). Anderson also teaches that the
acrylamide polymers are of greatest usefulness when their
molecular weight is in excess of 1,000,000, as required by the
appealed claims (column 2, lines 28-32). Accordingly, when the
water-in-oil emulsions of Fong are prepared in accordance with
Anderson, we agree with the examiner that there is no apparent
distinction between the microemulsions of the prior art and
appellants' water-in-oil microdispersion. We also agree with the
examiner that although Fong and Anderson do not expressly
disclose microemulsions that are gel-free, based on the close
correspondence between appellants' and Anderson's method of
preparing the microemulsion, the burden is properly upon
appellants to prove with objective evidence that the prior art
microemulsions are not gel-free, at least to the extent that the
term "gel-free" is broadly defined by appellants' specification.
Appeal No. 95-3647
Application No. 08/169,782
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In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977).
Appellants contend at page 9 of the Brief that the "critical
feature of the herein claimed microdispersions is accomplished by
the use of an emulsifier which prevents the micelles of polymer
solution from detrimentally agglomerating." However, as
explained by the examiner, the purpose of the Anderson disclosure
is to prepare commercially stable emulsions, and Anderson
specifically discloses the use of emulsifiers that are preferred
by appellants. Inasmuch as appellants state at page 6 of their
Brief that the use of suitable emulsifiers "would be well within
the skill of one versed in the art to which this invention
relates," we concur with the examiner that only routine
experimentation would have been required by the skilled artisan
to select the emulsifiers of Anderson that result in a stable
microemulsion. We do not subscribe to appellants' argument that
Anderson "does not focus specifically on the use of an emulsifier
which prevents the detrimental agglomeration of polymer micelles
as required by the instant claims" (page 10 of Brief), since
Anderson expressly focuses upon the attainment of stable
microemulsions and, therefore, one of ordinary skill in the art
Appeal No. 95-3647
Application No. 08/169,782
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would have selected emulsifiers that achieve this end. We note
that the appealed claims fail to recite any particular class of
emulsifier. Regarding specification Examples 1, 34 and 35 cited
by appellants, we agree with the examiner that the examples are
not probative of nonobviousness inasmuch as they are not
representative of the applied prior art, i.e., Fong and/or
Anderson. In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260,
1263-64 (Fed. Cir. 1984).
As for separately argued claim 3, which requires the
presence of a stabilizer which stabilizes the polymer against
degradation due to the presence of hydroxylamine, we agree with
the examiner that Von Euler-Chelpin evidences the obviousness of
utilizing appellants' thiosulfates as stabilizers for acrylamide
polymers. While appellants contend that Von Euler-Chelpin does
not disclose the inclusion of a stabilizer against degradation
due to the presence of hydroxylamine, Von Euler-Chelpin discloses
the use of appellants' stabilizers to stabilize acrylamide
polymers against thermal and oxidative degradation. Accordingly,
we find that one of ordinary skill in the art would have been
motivated to employ stabilizers of Von Euler-Chelpin to stabilize
appellants' acrylamide polymers against thermal and oxidative
degradation. It is not required for a finding of obviousness
Appeal No. 95-3647
Application No. 08/169,782
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that the motivation of the skilled artisan be the same as an
applicant's motivation. In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996); In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990), cert.
denied, 500 U.S. 409 (1991).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
Appeal No. 95-3647
Application No. 08/169,782
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Frank M. Van Riet
American Cyanamid Co.
1937 West Main St. - P.O. Box 60
Stamford, CT 06904-0060