Ex Parte Mattes et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10672323 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BENJAMIN R. MATTES, PHILLIP N. ADAMS,
DALI YANG, LORI A. BROWN, ANDREI G. FADEEV, and
IAN D. NORRIS
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Appeal 2009-003056
Application 10/672,323
Technology Center 1700
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Decided:1 June 25, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003056
Application 10/672,323

The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 7-23, 35, 36 and 38. Claims 1-6, 24-34, 37, and 39-61,
which are all of the other pending claims, stand withdrawn from
consideration by the Examiner. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for spinning polyaniline fiber.
Claim 7 is illustrative:
7. A method for spinning polyaniline fiber, comprising the steps
of:

(a) adding between 6 and 14 mass% of a mixture of 2-
acrylamido-2-methyl-1-propanesulfonic acid
(AMPSA) and polyaniline containing between 2 and
12 mass% of water to dichloroacetic acid (DCAA),
such that there are between 30 and 100 molecules of
AMPSA per 100 aniline repeat units of the
polyaniline, forming thereby a composition, wherein
during said step of addition the temperature of the
composition does not rise above about 35 °C;

(b) continuously extruding the composition through a
spinneret into a coagulant, thereby forming a
polyaniline fiber.

The Reference
Adams WO 99/24991 May 20, 1999

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Appeal 2009-003056
Application 10/672,323

The Rejection
Claims 7-23, 35, 36 and 38 stand rejected under 35 U.S.C. § 103 over
Adams.2
OPINION
We reverse the Examiner’s rejection.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that Adams would have rendered prima facie obvious, to one
of ordinary skill in the art, a method for spinning polyaniline fiber
comprising including 2-12 mass% water in a mixture of polyaniline and 2-
acrylamido-2-methyl-1-propanesulfonic acid (AMPSA) added to
dichloroacetic acid (DCAA), such that the temperature of the composition
during the addition does not rise above about 35°C?3
Findings of Fact
Adams discloses a polyaniline fiber wet-spinning process comprising
wet-spinning a mixture of polyaniline, an aliphatic sulfonic acid which most
preferably is AMPSA, and an acid solvent which most preferably is DCAA,
and removing the acid solvent with a competitive solvent which can be
water (abstract; p. 1, ll. 11-13; p. 2, ll. 25-27; p. 3, ll. 6-7, 22-23; p. 4, ll. 10-
24).

2 Rejections of claims 7-23, 35, 36 and 38 under 35 U.S.C. § 102(b) over
Adams and under 35 U.S.C. § 103 over Stephen J. Pomfret et al., “Inherently
Electrically Conductive Fibers Wet Spun from a Sulfonic Acid-Doped
Polyaniline Solution,” 10 Adv. Mater. 1351-53 (1998), are withdrawn in the
Examiner’s Answer (Ans. 3).
3 The Appellants disclose that the temperature is kept below about 35°C by
using a cooling bath and adding the solids sufficiently slowly (Spec. 11:18-
21).
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Appeal 2009-003056
Application 10/672,323

Analysis
The Appellants argue that Adams’ water is a competitive solvent for
precipitating the polymer, and that there is no teaching or implication in
Adams that water can be mixed with any of polyaniline, AMPSA or DCAA
(Br. 14; Reply Br. 2).
The Examiner argues that Adams “teaches that the
polyaniline/AMPSA/DCAA mixture may contain additional solvents or
diluents, including water” (Ans. 8).
Adams does not disclose that the solvents/diluents which can be used
in addition to the acid solvent include water (p. 4, ll. 2-9). Water is listed
only among the competitive solvents used to remove the acid solvent from
the mixture (p. 4, ll. 10-24).
Thus, the Examiner has not established that Adams discloses, or
would have rendered prima facie obvious, to one of ordinary skill in the art,
adding a water-containing polyaniline/AMPSA mixture to DCAA.
The Examiner argues that polyaniline generally is synthesized at
about -25°C, and that Adams’ disclosure in Example 3 that a pot containing
the mixture is brought to and held at 50 ± 5°C means that the pot
temperature was below 45°C, which includes temperatures below 35°C
down to the polyaniline synthesis temperature, and then was heated (Ans. 5).
The Appellants challenge the Examiner’s argument that the
polyaniline synthesis temperature is determinative of the temperature
reached when polyaniline powder with AMPSA is mixed with DCAA, and
the Appellants point out that Adams states in Example 1 (p. 5, ll. 29-30) that
“[t]he homogenisation/protonation is appreciable exothermic” (Reply Br. 3).
The Appellants argue that Adams’ disclosure in Example 3 that “[a]n
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Appeal 2009-003056
Application 10/672,323

electric heating tape was wrapped round the pot to enable it to be brought to
and held at a temperature of 50 ± 5°C” (p. 7, ll. 14-16) means that the
subsequent spinning process is conducted with the pot between 45°C and
55°C, but does not teach or imply that the mixture was below 35°C at any
time during the mixing or spinning process (Reply Br. 3).
The Examiner has not explained why, even if the synthesis
temperature of polyaniline is -25°C, one of ordinary skill in the art would
have considered Adams’ disclosure in Example 3 that polyaniline was
ground with AMPSA (p. 7, l. 3) to mean that the polyaniline was still at its
synthesis temperature. Thus, the Examiner has not provided support for the
Examiner’s argument that one of ordinary skill in the art would have
considered Adams’ disclosure that the pot was brought to 50 ± 5°C (p. 7,
ll. 14-16) to mean that the temperatures at which the pot could have been
before being brought to that temperature include temperatures below 35°C
down to the synthesis temperature of polyaniline (Ans. 5).
The Examiner argues that there is no apparent significant temperature
rise of Adams’ mixture because the pot was at a temperature below 45°C
before being brought to 50 ± 5°C (p. 7, ll. 14-16) and that, therefore, “even if
the homogenization/protonation is appreciably exothermic, the mixture must
still be heated in order to raise its temperature to at least 45°C” (Ans. 7-8).
The Examiner, however, has not provided evidence or technical
reasoning as to why, even if the temperature was below 45°C, it was at or
below about 35°C.
Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that Adams would have rendered prima facie obvious, to one
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Application 10/672,323

of ordinary skill in the art, a method for spinning polyaniline fiber
comprising including 2-12 mass% water in a mixture of polyaniline and 2-
acrylamido-2-methyl-1-propanesulfonic acid (AMPSA) added to
dichloroacetic acid (DCAA), such that the temperature of the composition
during the addition does not rise above about 35°C.
DECISION/ORDER
The rejection of claims 7-23, 35, 36 and 38 under 35 U.S.C. § 103
over Adams is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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