Ex parte KANLUEN et al.

Board of Patent Appeals and Interferences

Jul 22, 1998

07563887 (B.P.A.I. Jul. 22, 1998)

Application for patent filed August 6, 1990. According1
to applicants, this application is a continuation of
Application No. 07/330,651, filed March 30, 1989, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RATANA KANLUEN and BRIGITTE H. LIGHT
________________
Appeal No. 95-1909
Application No. 07/563,8871
________________
ON BRIEF
________________
Before WINTERS, OWENS and WEIMAR, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 1, 4 through 7 and 14. Claims 19 through 21,
which are the only other claims remaining in the application,
Appeal No. 95-1909
Application No. 07/563,887
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stand withdrawn from further consideration by the examiner as
directed to an non-elected invention.
REPRESENTATIVE CLAIM
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. A deinking agent comprising a polyfunctional polymer
of the formula:
R W4
* *
)()CH )) C))))(CH ))) C))))
* * * * a b
R R Y Z1 2
*
(A)n
*
(B)m
*
R3
wherein:
O
5
R = H, C -C alkyl, or -C-O ;1 2 8 -
O
5
R = C -C alkylene, or -C-O ;2 2 12 -
R = H, or branched or straight chain C -C alkyl or3 1 22
alkylphenol;
R = H or C -C alkyl;4 1 4
A = )()CH )CH )O) );2 2
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Application No. 07/563,887
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B = )())CH)CH )O) ) (wherein R is C -C alkyl or phenyl);2 5 1 4
*
R5
W, Y = H or C -C alkyl; and1 4
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Application No. 07/563,887
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O O R6
5 5 *
Z is )C)O M ,-SO M , )C)NH)C)(CH ))SO M (wherein: M is ammonium- + - + - +3 3
or * 2 X
R6

alkali metal, R is C -C alkyl, and x is an integer of at least6 1 4
1);
or (wherein M is ammonium or alkali metal);

a and b are positive integers of at least 1;
the ratio of a/b is at least 1/100;
n = a positive integer of 10-100; and
m = a positive integer of 0-50.
THE REFERENCE
The reference relied on by the examiner is:
Baur et al. (Baur) 4,814,102 Mar. 21, 1989
THE ISSUE
The issue presented for review is whether the examiner
erred in rejecting claims 1, 4 through 7 and 14 under
35 U.S.C. § 102 as anticipated by or, in the alternative,
under 35 U.S.C. § 103 as unpatentable over Baur.
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant
Appeal No. 95-1909
Application No. 07/563,887
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specification, including all of the claims on appeal; (2)
applicants' main Brief and Reply Brief before the Board; (3)
the Examiner's Answer; and (4) the Baur patent cited and
relied on by the examiner. We have not considered the Kanluen
declaration, filed under the provisions of 37 CFR § 1.132 and
attached to the Reply Brief. As stated in the communication
mailed by the examiner January 12, 1995 (Paper No. 41), the
declaration was not considered by the examiner because it was
not timely filed.
On consideration of the record, including the above-
listed materials but not including the Kanluen declaration, we
reverse the examiner's prior art rejections.
DISCUSSION
Essentially, we agree with the reasons set forth in
applicants' main Brief, page 4, last paragraph, through page
14, penultimate paragraph.
The claimed copolymers require a chain having at least 10
ethylene oxide groups, represented by (A) in claim 1, on then
moiety having subscript a. Baur does not disclose or suggest
such a copolymer. On the contrary, in view of Baur's
disclosed process of esterifying carboxylate polymers or
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Application No. 07/563,887
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copolymers after they are formed, it does not reasonably
appear that the claimed and prior art products are identical
or substantially identical. It does not reasonably appear
that Baur prepares copolymers having at least 10 ethylene
oxide groups added, as a chain, to one carboxyl site. In our
judgment, therefore, Baur does not constitute sufficient
evidence supporting a conclusion of prima facie anticipation
or obviousness. The examiner's position to the contrary,
notwithstanding, Baur is insufficient to shift the burden of
persuasion to applicants, requiring them to prove by
laboratory testing that the claimed copolymers patentably
distinguish over the prior art copolymers.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH WEIMAR )
Administrative Patent Judge )
Appeal No. 95-1909
Application No. 07/563,887
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Appeal No. 95-1909
Application No. 07/563,887
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Mr. Russell R. Stolle
Huntsman Corp.
P.O. Box 15730
Austin, TX 78761