Ex parte Mahar

Board of Patent Appeals and Interferences

Jun 16, 1998

07956529 (B.P.A.I. Jun. 16, 1998)

Application for patent filed October 5, 1992. 1
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journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT C. MAHAR
____________
Appeal No. 94-2973
Application No. 07/956,5291
____________
ON BRIEF
____________
Before DOWNEY, HANLON and OWENS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-5 and 7-22, all of the claims pending in
the application. Claims 1 and 22 are representative of the
subject matter on appeal and read as follows:
Appeal No. 94-2973
Application No. 07/956,529
2
1. A method of preparing a stable aqueous slurry of
magnesium hydroxide comprising:
(a) forming an aqueous mixture of
(i) from about 30 to about 70 percent by weight
magnesium hydroxide;
(ii) from about 0.2 to about 20 percent by weight based
on the weight of magnesium hydroxide of one or more polymeric
anionic dispersants and salts thereof; and
(iii) from about 0.2 to about 20 percent by weight based
on the weight of magnesium hydroxide of one or more water-soluble
alkali metal salts selected from the group consisting of alkali
metal hydroxides, alkali metal halides, alkali metal carbonates,
alkali metal sulfates, alkali metal nitrates, alkali metal
silicates and alkali metal salts of C -C polycarboxylic acids;2 10
and
(b) agitating the mixture to suspend the magnesium
hydroxide.
22. A method of preparing a stable aqueous slurry of
magnesium hydroxide comprising:
(a) forming an aqueous mixture of
(i) from about 30 to about 70 percent by weight
magnesium hydroxide;
(ii) from about 0.2 to about 20 percent by weight based
on the weight of magnesium hydroxide of one or more polymeric
anionic dispersants and salts thereof wherein the dispersant is
selected from the group consisting of polymers formed from one or
more monomers selected from the group consisting of acrylic acid,
methacrylic acid, crotonic acid, maleic acid, maleic anhydride,
itaconic acid, mesaconic acid, fumaric acid, citraconic acid,
vinylacetic acid, acryloxypropionic acid, vinylsulfonic acid,
styrenesulfonic acid, 2-acrylamido-2-methylpropanesulfonic acid,
allylsulfonic acid, allylphosphonic acid, vinylphosphonic acid,
vinylsulfonic acid and salts thereof; and from 0 to about 50
percent by weight of one or more monomers selected from the group
consisting of methylacrylate, ethylacrylate, butyl acrylate,
Appeal No. 94-2973
Application No. 07/956,529
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methyl methylacrylate, butyl methylacrylate, isobutyl
methacrylate, acrylamide, methacrylamide, N-tertiarybutyl-
acrylamide, N-methylacrylamide,N,N-dimethylacrylamide,
dimethylaminoethyl acrylate, dimethylaminoethyl methacrylate,
N-vinylpyrrolidone, N-vinylformamide, phosphoethyl methacrylate,
allyl alcohol, methallyl alcohol, acrylonitrile, vinyl acetate,
and styrene; and
(iii) from about 0.2 to about 20 percent by weight based
on the weight of magnesium hydroxide of one or more water-soluble
alkali metal salts; and
(b) agitating the mixture to suspend the magnesium
hydroxide.
The references relied upon by the examiner are:
Hirsch et al. (Hirsch) 4,450,013 May 22, 1984
Kriz et al. (Kriz) 4,588,649 May 13, 1986
Shioji et al. (Shioji) 4,818,783 Apr. 4, 1989
The following rejections are at issue in this appeal:
(1) Claims 1-5, 7-15 and 19-22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103 as obvious over Shioji.
(2) Claims 16 and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Shioji and Hirsch.
(2) Claims 17 and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Shioji, Hirsch and
Kriz.
Appeal No. 94-2973
Application No. 07/956,529
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Grouping of claims
According to appellant, the claims are grouped as follows
(Brief, p. 5):
(1) Claims 1-5, 7-15 and 19-21 stand or fall together;
(2) Claim 22 stands separately;
(3) Claims 16 and 20 stand or fall together; and
(4) Claims 17 and 18 stand or fall together.
Claim 1
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Shioji. We reverse this rejection.
Claim 1 recites a method of preparing an aqueous slurry of
magnesium hydroxide comprising forming an aqueous mixture of
specific amounts of (i) magnesium hydroxide, (ii) one or more
polymeric anionic dispersants and salts thereof, and (iii) one or
more specific water-soluble alkali metal salts. The mixture is
agitated to suspend the magnesium hydroxide.
Shioji discloses a method for producing an aqueous
dispersion of inorganic pigment, such as magnesium hydroxide, by
combining as a dispersant (I) at least one member selected from
the group consisting of (a) a carboxyl group-containing water-
soluble polymer and (b) a water-soluble condensed phosphate and
Appeal No. 94-2973
Application No. 07/956,529
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(II) a water-soluble anionic modified polyvinyl alcohol (col. 3,
lines 3-18 and lines 34-46). There is no dispute that the
polymeric dispersants and phosphate dispersants disclosed in
Shioji may be used alone or in combination with each other (Reply
Brief, p. 3). Shioji further discloses that typical examples of
the water-soluble condensed phosphate (b) include “sodium,
potassium, lithium, and other alkali metal salts” (col. 6, lines
6-8).
We agree with appellant that claim 1 “requires the
combination of one or more polymeric anionic dispersants and one
or more selected alkali metal salts which do not include
phosphate salts” (Brief, p. 6; emphasis in original). According
to the examiner (Answer, p. 10):
The disclosure of Shioji at col. 7, line 62 to col. 8,
line 5 clearly shows inorganic metal salts that fall
within the scope of the presently claimed inorganic
metal salts or alkali metal salts.
We agree with appellant that Shioji does not disclose water-
soluble alkali metals salts falling within the scope of claim 1.
As correctly pointed out by appellant (Reply Brief, p. 4):
“The disclosure of Shioji at col. 7, line 62 to col. 8,
line 5" does not disclose any alkali metal salts. As
stated above, Shioji discloses only “hydroxides,
carbonates, halides, and phosphates of calcium,
magnesium[,] aluminum and other similar polyvalent
metals” (col. 7, line 68-col. 8, line 2, emphasis
Appeal No. 94-2973
Application No. 07/956,529
6
added). Appellant’s claims clearly state that the
salts of component (iii) are alkali metal salts.
ALKALI METALS ARE, BY DEFINITION, NOT POLYVALENT.
[Emphasis in original.]
The examiner further asserts that “[e]ven if the salts shown
at col. 8 of Shioji are in fact not alkali metal salts, the fact
is that Shioji has disclosed monovalent alkali metal salts at
col. 5" (Answer, p. 11). Shioji discloses that (col. 5,
lines 30-41):
The acid type monomers [used for obtaining the
carboxyl group-containing water-soluble polymer (a)]
. . . can be used as acid form monomers or as salt form
monomers obtained by neutralizing the acid form
monomers with an alkali substance. When an acid form
monomer is to be used, at least 30 mol % of the
carboxyl group in the produced carboxyl group-
containing water-soluble polymer (a) is desired to be
neutralized with an alkali substance before the polymer
is put to use, in due consideration of the effect of
dispersion to be obtained [emphasis added].

Claim 1 recites a method of preparing a magnesium hydroxide
slurry comprising “forming an aqueous mixture of” magnesium
hydroxide, polymeric anionic dispersants and alkali metal salts.
Shioji discloses that an alkali substance neutralizes the
carboxyl group in the produced carboxyl group-containing water-
soluble polymer (a) “before the polymer is put to use.”
Therefore, the alkali metal salts disclosed in Shioji are not in
mixture with the carboxyl group-containing polymers but rather
are chemically combined with them to form a polymer salt (compare
Appeal No. 94-2973
Application No. 07/956,529
7
(a)(ii) of claim 1 (“polymeric anionic dispersants and salts
thereof”). Thus, Shioji fails to disclose a method of preparing
a magnesium hydroxide slurry comprising “forming an aqueous
mixture of” magnesium hydroxide, polymeric anionic dispersants
and alkali metal salts.
Rejection of claim 22
Claim 22 is rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Shioji. We affirm this rejection.
Claim 22 relates to a method of preparing an aqueous slurry
of magnesium hydroxide comprising forming an aqueous mixture of
specific amounts of (i) magnesium hydroxide, (ii) one or more
polymeric anionic dispersants and salts thereof, and (iii) “one
or more water-soluble alkali metal salts.” In contrast to claim
1, claim 22 does not exclude phosphate salts. Therefore, the
water-soluble condensed phosphates (b) disclosed in Shioji are
“water-soluble alkali metal salts” within the scope of claim 22.
See col. 6, lines 6-8 (typical examples of the water-soluble
condensed phosphate (b) include sodium, potassium, lithium, and
other alkali metal salts). The fact that the method of claim 22
“requires the use of the combination of one or more alkali metal
salts and one or more polymeric anionic dispersants which do not
Appeal No. 94-2973
Application No. 07/956,529
8
include polyvinyl alcohols” is of no moment (Brief, p. 6;
emphasis in original). In re Baxter, 656 F.2d 679, 686, 210 USPQ
795, 802 (CCPA 1981) (“the term ‘comprises’ permits the inclusion
of other steps, elements, or materials”).
Appellant further argues that (Brief, p. 8):
Shioji does not teach or suggest a method of preparing
a stable slurry of magnesium hydroxide using a
combination of 0.2 to about 20 percent by weight based
on the weight of magnesium hydroxide of one or more of
the polymeric anionic dispersants recited in
Applicant’s Claim 22 together with 0.2 to about 20
percent by weight based on the weight of magnesium
hydroxide of one or more water-soluble alkali metal
salts.
Shioji discloses that the combination of both (a) the
carboxyl group-containing water-soluble polymer and (b) the
water-soluble condensed phosphate are present in an amount of
from 0.1 to 2 parts by weight, based on 100 parts by weight of
the inorganic pigment (col. 7, lines 18-26). The amounts
disclosed in Shioji fall within the range recited in claim 22.
See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990)(where the difference between the claimed
invention and the prior art is a range the applicant must show
that the particular range is critical, generally by showing that
the claimed range achieves unexpected results relative to the
prior art range).
Appeal No. 94-2973
Application No. 07/956,529
9
Claims 2-5 and 7-21
Since claims 2-5 and 7-21 are dependent on claim 1, and the
rejection of claim 1 has been reversed, the rejections of claims
2-5 and 7-21 are also reversed. See 37 CFR § 1.75(c)(“Claims in
dependent form shall be construed to include the limitations of
the claim incorporated by reference into the dependent claim.”)
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 94-2973
Application No. 07/956,529
10
David T. Banchik
Rohm and Haas Company
Patent Department
100 Independence Mall West
Philadelphia, PA 19106-2399
ALH/jrg
APPEAL NO. 94-2973 - JUDGE HANLON
APPLICATION NO. 07/956,529
APJ HANLON
APJ DOWNEY
APJ OWENS
DECISION: ED
Typed By: Jenine Gillis
DRAFT TYPED: 26 Apr 99
FINAL TYPED:
JENINE GILLIS

Appeal No. 94-2973
Serial No. 07/956,529
Judge HANLON
Judge DOWNEY

Judge OWENS
Received: 09 Jun 98
Typed: 10 Jun 98
DECISION: AFFIRMED-IN PART
Send References: Yes No
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
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Mailed:
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Updated Monthly Report: ____