Ex parte Lucas et al.

Board of Patent Appeals and Interferences

Apr 27, 1998

07913126 (B.P.A.I. Apr. 27, 1998)

Application for patent filed July 13, 1992. According1
to appellants, this application is a continuation of
Application
No. 07/473,134, filed January 30, 1990, now abandoned; which
is a continuation of Application No. 07/044,165, filed April
30, 1987; 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journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HOWARD R. LUCAS, ROBERT G. LEES,
HERBERT BURKHARD and DAVID A. LEY
________________
Appeal No. 95-1146
Application No. 07/913,1261
________________
ON BRIEF
________________
Before KIMLIN, WEIFFENBACH and PAK, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-1146
Application No. 07/913,126
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This is an appeal from the final rejection of claims 2,
16 and 18. Claim 17, the other claim remaining in the present
application, has been withdrawn from consideration as being
directed to a non-elected species. Claim 16 is illustrative:
16. A curable latex composition comprising an emulsion
in an aqueous medium of:
(i) (a) a polymer containing poly (C -C1 6
alkylacrylamido-glycolate) functionality and
(b) a polymer or compound containing poly (active
hydrogen) functionality or
(ii) a copolymer containing poly (C -C alkylacrylamido-1 6
glycolate) functionality and poly (active hydrogen)
functionality, said polymers (i) or (ii) comprising
from about 1 to about 40 weight percent of said C -1
C alkylacrylamidoglycolate functional units, with6
the proviso that said active hydrogen functionality
is not provided by an amine.
In the rejection of the appealed claims, the examiner
relies upon the following references:
Cady et al. (Cady) 4,454,301 June 12, 1984
Schirmann et al. (Schirmann) 4,778,869 Oct. 18, 1988
Schirmann et al. (EPO '000) 0 020 000 Dec. 10, 1980
(European patent application)
Appellants' claimed invention is directed to a curable,
aqueous emulsion of a copolymer containing poly (C -C1 6
alkylacrylamidoglycolate) functionality and poly (active
hydrogen) functionality. The appealed claims contain the
Appeal No. 95-1146
Application No. 07/913,126
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proviso that the active hydrogen functionality is not provided
by an amine. According to page 2 of the specification, amine
crosslinked coatings tend to be susceptible to yellowing or
acid spotting. In addition, amines are costly and toxic.
Appealed claims 2, 16 and 18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Cady alone, or in
combination with EPO '000. In addition, the appealed claims
stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 1-3 and 6-8 of U.S. Patent No. 4,778,869.
Upon careful consideration of the opposing arguments
presented on appeal, we find that the prior art applied by the
examiner fails to establish a prima facie case of obviousness
for the claimed subject matter. Accordingly, we will not
sustain the examiner's § 103 rejections. Also, we will not
sustain the examiner's rejection under the judicially created
doctrine of obviousness-type double patenting.
We consider first the rejection of the appealed claims
under § 103 over Cady alone or in combination with EPO '000.
In essence, considering Cady alone, we do not agree with the
examiner that the alkylacrylamidoglycolate alkyl ether and
Appeal No. 95-1146
Application No. 07/913,126
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acrylamidoglycoamide alkyl ether of Cady are chemical homologs
of appellants' C -C alkylacrylamidoglycolate. In the1 6
examiner's view, the only distinction between the polymers of
Cady and the claimed polymers is that where appellants'
polymers have a hydrogen substituent the polymers of Cady have
an alkyl group of 1-6 carbon atoms, which include a methyl
substituent. According to the examiner, the methyl
substituent is the next higher homolog of appellants' hydrogen
substituent. However, as explained by appellants, the
difference between a methyl and hydrogen substituent at the
relevant position is the difference between an ether and
hydroxyl functional group which, manifestly, is significantly
different. Accordingly, we agree with appellants that Cady,
alone, provides no teaching or suggestion of the claimed
polymers having the recited hydroxyl substituent.
Concerning the rejection over Cady in view of EPO '000,
we agree with the examiner that the European patent would have
suggested modifying the polymer of Cady to have a hydroxy
substituent rather than an ether substituent. However, as
pointed out by appellants, the European reference discloses
that the polymerization must take place in the presence of an
Appeal No. 95-1146
Application No. 07/913,126
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amine curing agent. EXAMPLE 14 of the European reference
discloses that no curing was effected in the absence of an
amine. Accordingly, the collective teachings of Cady and the
European patent would have suggested that when the ether
substituent of Cady is replaced with a hydroxyl substituent,
an amine curing agent must be employed. Since the appealed
claims define a copolymer with hydroxyl, not ether,
functionality having no amine functionality, we agree with
appellants that the collective teachings of Cady and the
European patent would not have rendered obvious the claimed
copolymer.
Although we agree with appellants that the applied prior
art does not establish a prima facie case of obviousness for
the claimed subject matter, we do not subscribe to several of
appellants' arguments. For one, inasmuch as appellants'
specification attaches no particular criticality to the use of
water or inorganic solvent as the solvent medium (see
specification, page 5, lines 14-17), we find that it would
have been obvious for one of ordinary skill in the art to
utilize an aqueous medium in the polymeric coating
compositions of the applied references. Also, we find little
Appeal No. 95-1146
Application No. 07/913,126
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merit in appellants' argument that Cady "indicates that the
polymers of Cady did not fully cure unless a baked temperature
of at least 150EC was employed" (page 9 of Brief). Cady
discloses "[t]he composition of the present invention is
readily cured as a coating by exposure to a temperature of
about 100EC or higher for adequate time periods, usually at
least about 20 minutes" (column 3, lines 27-30). This
disclosure fairly corresponds to appellants' specification
disclosure that "[t]he new and improved low or room
temperature curable compositions of the present invention cure
to form hardened acid resistant materials at room temperature
generally in a period of seven days or less, or at low
temperatures with heating up to temperatures of 150EC in less
than about 30 minutes" (specification, page 10, lines 9-14).
Also, we find general correspondence between the results of
the 200+ MEK rub test disclosed by Cady and the present
specification.
We also do not find merit in appellants' argument that Cady
does not "disclose that the active hydrogen functionality is not
provided by an amine" (page 12 of Brief). Cady expressly
Appeal No. 95-1146
Application No. 07/913,126
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teaches that curing may be accelerated, optionally, by the
inclusion of
p-toluene-sulfonic acid. Most of Cady's examples utilize
p-toluene-sulfonic acid, not an amine, and Cady discloses a
variety of ways of obtaining hydroxy functionality other than
the inclusion of an amine (column 2, lines 41 et seq.).
We also do not find that TABLE 4 of appellants'
specification is evidence of nonobviousness, since the data is
not germane to the claimed subject matter. The compositions set
forth in TABLE 4 are solvent-borne compositions, whereas the
claimed composition is in an aqueous medium.
We will not sustain the obviousness-type double patenting
rejection over U.S. Patent No. 4,778,869 because the claims of
the patent are directed to a copolymer containing ether
functionality, not the claimed hydroxy functionality. Also, the
patented claims are directed to a polymer containing active
hydrogen functionality provided by an amine, which is excluded
by the appealed claims.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
Appeal No. 95-1146
Application No. 07/913,126
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EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 95-1146
Application No. 07/913,126
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William H. Calnan
American Cyanamid Co.
1937 West Main St.
P.O. Box 60
Stamford, CT 06904-0060