Ex parte NEFF et al.

Board of Patent Appeals and Interferences

Jul 27, 1998

08028916 (B.P.A.I. Jul. 27, 1998)

Application for patent filed March 8, 1993. According1
to applicants, this application is a continuation of
Application No. 07/285,933, filed December 19, 1988, 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journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROGER E. NEFF, JOSEPH J. PELLON
and RODERICK G. RYLES
________________
Appeal No. 95-3682
Application No. 08/028,9161
________________
ON BRIEF
________________
Before WINTERS, OWENS and WEIMAR, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-3682
Application No. 08/028,916
In the Final Rejection mailed May 6, 1994 (Paper No.2
9), the examiner also rejected claims 1 through 10, 46 and 48
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This appeal was taken from the examiner's decision
rejecting claims 1 through 10, 46 and 48 through 57. Claim
58, which is the only other claim remaining in the
application, stands withdrawn from further consideration by
the examiner as directed to a non-elected invention.
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. An unsheared, water-soluble, branched, cationic,
poly-meric flocculant having a molecular weight of over one
million, a solution viscosity of at least about 1.8 mPa.s
measured in a Brookfield viscometer with a UL adapter at 25EC
on a 0.1 percent, by weight, polymer solution in 1M NaCl at 60
rpm, a solubility quotient of greater than about 30 percent
and a branching agent content of from about 4 to about 80
molar parts per million based on initial monomer content, said
flocculant being efficient when added as a true solution to
dispersions of suspended solids for the purpose of releasing
water therefrom.
The reference relied on by the examiner is:
Flesher et al. (Flesher) 4,720,346 Jan. 19, 1988
The issue presented for review is whether the examiner
erred in rejecting claims 1 through 10, 46 and 48 through 57
under 35 U.S.C. § 102 as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over
Flesher.2
Appeal No. 95-3682
Application No. 08/028,916
through 57 under 35 U.S.C. § 102 as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over
Japanese Patent 238,780. Apparently, that rejection has been
withdrawn because it is not repeated or referred to in the
Examiner's Answer.
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DISCUSSION
On consideration of the record, we reverse the examiner's
prior art rejection of claims 1 through 10 and 46. Respecting
claims 48 through 57, which improperly depend from canceled
claims, we remand this application so that the examiner may
take further, appropriate action.
Independent claim 1 requires that applicants' polymeric
flocculant have
a solubility quotient of greater than about
30 percent and a branching agent content of from
about 4 to about 80 molar parts per million based on
initial monomer content, said flocculant being
efficient when added as a true solution to
dispersions of suspended solids for the purpose of
releasing water therefrom.
In our judgment, Flesher constitutes insufficient evidence to
support a finding of anticipation or a conclusion of
obviousness of claims containing those limitations.
First, applicants make clear that adding a chain-transfer
agent, in optimum concentration, is essential to the practice
of their invention. According to applicants, adding an
Appeal No. 95-3682
Application No. 08/028,916
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optimum concentration of chain-transfer agent during
polymerization is necessary "to control the structure and
solubility of the polymer" (specification, page 10, lines 1
and 2). The optimum concentration of chain-transfer agent can
be determined by measuring the solubility quotient
(specification, page 10, lines 24 through 26). As stated by
applicants,
Use of a chain-transfer agent in concentrations such
that the solubility quotient is less than 30 percent
provides products that are not soluble. Only when
optimum concentrations are used, effectuating a
solubility quotient greater than 30 percent, do the
polymers exhibit the required solubility character-
istics. Thus, the soluble polymers of this
invention all possess a minimum solubility quotient
of over 30 percent, preferably over 40 percent and
even more preferably over 50 percent. Many exhibit
a solubility quotient of greater than 90 percent.
[Specification, page 11, lines 4 through 14].
On this record, the examiner has not established that Flesher
discloses or suggests a polymeric flocculant having "a
solubility quotient of greater than about 30 percent." The
examiner has not established that Flesher suggests using an
optimum concentration of chain-transfer agent during
polymerization, or using any other methodology, to achieve a
solubility quotient of greater than about 30 percent. Simply
stated, the examiner has not established that the prior art
Appeal No. 95-3682
Application No. 08/028,916
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teachings would have led a person having ordinary skill from
"here to there," i.e., from the polymeric flocculants of
Flesher to the claimed polymeric flocculants having "a
solubility quotient of greater than about 30 percent and a
branching agent content of from about 4 to about 80 molar
parts per million based on initial monomer content."
Second, as correctly argued by applicants, Flesher's
polymer does not function as a flocculant unless the polymeric
material is in the form of small particles rather than a true
solution. This is the antithesis of the invention disclosed
and claimed by applicants where the polymeric flocculant is
"efficient when added as a true solution to dispersions of
suspended solids for the purpose of releasing water
therefrom." In other words, the claimed polymeric flocculants
function in a state (true solution) where those of Flesher do
not and cannot. See particularly the Flesher patent, column
3, line 58 through column 4, line 4. Again, in our judgment,
Flesher constitutes insufficient evidence to support a finding
of anticipation or a conclusion of obviousness of claims
requiring that the polymeric flocculant be "efficient when
Appeal No. 95-3682
Application No. 08/028,916
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added as a true solution to dispersions of suspended solids
for the purpose of releasing water therefrom."
The prior art rejections of claims 1 through 10 and 46
are reversed.
We next invite attention to claims 48 through 57.
Inspection reveals that each of these claims depends from a
canceled claim. Manifestly, this is improper and it is
unclear what the claims cover. Where, as here, it is unclear
what subject matter the claims cover, we will not pass on the
merits of the examiner's prior art rejections. The question
of improper dependency has apparently been overlooked by both
applicants and the examiner. Accordingly, we remand this
application to the examiner to address this question and to
take appropriate action.
In conclusion, the rejection of claims 1 through 10 and
46 under 35 U.S.C. § 102 as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over
Flesher is reversed. Respecting claims 48 through 57, which
improperly depend from canceled claims, we remand this
application to the examiner to take appropriate action.
Appeal No. 95-3682
Application No. 08/028,916
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This application, by virtue of its "special" status,
requires an immediate action. Manual of Patent Examining
Procedure § 708.01(d) (6th ed., Jan. 1995). It is important
that the Board be informed promptly of any action affecting
the appeal in this case.
REVERSED AND REMANDED
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. 95-3682
Application No. 08/028,916
-8-
Frank M. Van Riet
American Cyanamid Co.
1937 West Main St.
P.O. Box 60
Stamford, CT 06904-0060