Ex Parte Nojiri et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10411095 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NAOKI NOJIRI, TAKUYA IMAKI, HIDEAKI KUBO,
and HIDETAKE NAKAMURA
____________

Appeal 2009-005982
Application 10/411,095
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 5, 7, and 15 through 18, all of the claims
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pending in the above-identified application.1 We have jurisdiction under 35
U.S.C. § 6. 2
STATEMENT OF THE CASE
The subject matter on appeal is directed to a process for preparing
composite particles and the composite particles (See, e.g., claims 15 and 17).
Appellants aver at page 1, lines 8-14, of the Specification that:
The present invention relates to a process for preparing
composite particles. More specifically, the present invention
relates to a process for preparing composite particles having
controlled properties such as water repellency, oil repellency,
optical properties, ultraviolet shielding ability, texture, safety,
activity, color tone, stability of dispersion and weatherproof,
which can be suitably used for paints, ink-jet ink and
cosmetics, and the composite particles obtained.

Details of the appealed subject matter are recited in representative claims 15,
16, 17, and 183 reproduced from the Claims Appendix to the Revised Appeal
Brief (“App. Br.”) as shown below:

1 See page 4 of the Revised Appeal Brief filed September 12, 2008 (“App.
Br.”) and page 2 of the Reply Brief filed December 29, 2008 (“Reply Br.”).
2 We note Appellants’ arguments that the grounds of rejection set forth in the
Answer contain new rejections. However, the Examiner’s refusal to
denominate his or her rejections as including new grounds of rejection
should have been raised by way of a timely petition pursuant to 37 C.F.R. §
1.181.
3 For purposes of this appeal, we limit our discussion to claims 15, 16, 17,
and 18. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to
the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).

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15. A process for preparing composite particles comprising particles and
a polymer in a vessel, comprising the steps of:
(a) contacting the particles with the polymer in supercritical carbon
dioxide in the vessel at 308 to 373 K and 7.2 to 50 MPa, wherein said polymer
dissolves in supercritical carbon dioxide; and
(b) reducing the internal pressure of the vessel, by exhausting carbon
dioxide from the vessel to obtain said composite particles within the vessel
wherein the internal temperature of the vessel is not less than the critical
temperature of carbon dioxide when the internal pressure is reduced after the
particles are contacted with the polymer in the presence of supercritical carbon
dioxide in the vessel,
whereby liquefaction of carbon dioxide is prevented during reduction of
the internal pressure of the vessel,
wherein the polymer is at least one compound selected from the group
consisting of a (meth)acrylate polymer having a fluoroalkyl group, a
(meth)acrylate polymer having a perfluoroalkyl group, a (meth)acrylate having
a fluoroalkyl group-long chain alkyl(meth)acrylate copolymer, and a
(meth)acrylate having a perfluoroalkyl group-tong chain alkyl(meth)acrylate
copolymer and silicone polymers;

wherein the silicone polymer comprises an organopolysiloxane
molecular chain and a poly(N-acylalkyleneimine) molecular chain having a
repeating unit represented by the formula (III):

wherein R3 is hydrogen atom, an alkyl group having 1 to 22 carbon atoms, a
cycloalkyl group having 3 to 8 carbon atoms, an aralkyl group having 7 to 10
carbon atoms or an aryl group having 6 to 10 carbon atoms; and n is 2 or 3, in
which the poly(N-acylalkyleneimine) molecular chain is bonded to at least one
of the end and the side chain of the organopolysiloxane molecular chain via a
group represented by the formula (I):

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wherein each of R1 and R2 is independently hydrogen atom, an alkyl group
having 1 to 18 carbon atoms or an aryl group having 6 to 10 carbon atoms; X-
is a counter ion of a quaternary ammonium salt; or a group represented by the
formula (II):

wherein Rl, R2 and X- are the same as defined above,
and the weight ratio of the poly(N-acylalkyleneimine) molecular
chain/the organopolysiloxane molecular chain is 1/50 to 50/1.
16. The process according to claim 15, wherein the particles are
introduced into the vessel, the particles are stirred or pulverized by applying a
shearing stress to the particles, and wherein particles A, at least one of particles
B having an average particle diameter of 1/5 or less times as large as the
average particle diameter of the particles A, and the polymer are contacted with
each other in the presence of supercritical carbon dioxide in the vessel, and the
supercritical carbon dioxide is removed from the resulting mixture to deposit
the particles B and the polymer on the surface of the particles A.
17. Composite particles obtained by the process of any one of claims 5,
7, 15 and 16.
18. A process for preparing composite particles comprising particles
and an organic compound in a vessel, comprising the steps of:
(a) dissolving an organic compound in supercritical carbon dioxide in
the vessel;
(b) contacting particles with the organic compound in the supercritical
carbon dioxide in the vessel at 308 to 373 K and 7.2 to 50 MPa,
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(c) reducing the internal pressure of the vessel by exhausting carbon
dioxide from the vessel, wherein the internal temperature of the vessel is not
less than the critical temperature of carbon dioxide of 304.2K when the internal
pressure is reduced, wherein liquefaction of carbon dioxide is prevented during
reduction of the internal pressure of the vessel; and
(d) obtaining said composite particles within the vessel;
wherein said particle is at least one selected from the group consisting of
titanium oxide, silica, mica, talc, kaolin, sericite, zinc oxide, magnesium oxide,
zirconium oxide, calcium carbonate, magnesium carbonate, magnesium
silicate, silicic anhydride, barium sulfate, iron red oxide, yellow iron oxide,
black iron oxide, carbon black, manganese violet, titanium-coated mica, glass
beads, zeolite, composites thereof and admixtures thereof; and
wherein the organic compound is a polymer and is at least one
compound selected from the group consisting of fluorine-containing polymers
and silicone polymers,
wherein the fluorine-containing polymers is at least one
compound selected from the group consisting of a (meth)acrylate
polymer having a fluoroalkyl group, a (meth)acrylate polymer having a
perfluoroalkyl group, a (meth)acrylate having a fluoroalkyl group-long
chain aikyl(meth)acrylate copolymer, and a (meth)aerylate having a
perfluoroalkyl group-long chain alkyl(meth)acrylate copolymer;
wherein said silicone polymer comprises an organopolysiloxane
molecular chain and a poly(N-acylalkyleneimine) molecular chain
having a repeating unit represented by the formula (Ill):

wherein R3 is hydrogen atom, an alkyl group having 1 to 22 carbon
atoms, a cycloalkyl group having 3 to 8 carbon atoms, an aralkyl group having
7 to 10 carbon atoms or an aryl group having 6 to 10 carbon atoms; and n is 2
or 3, in which the poly(N-acylalkyleneimine) molecular chain is bonded to at
least one of the end and the side chain of the organopolysiloxane molecular
chain via a group represented by the formula (I):

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wherein each of R1 and R2 is independently hydrogen atom, an alkyl
group having 1 to 18 carbon atoms or an aryl group having 6 to 10 carbon
atoms; X- is a counter ion of a quaternary ammonium salt; or a group
represented by the formula (II):

wherein R1, R2 and X- are the same as defined above.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 4 of the Answer
dated October 29, 2008 (“Ans.”):
Kohno US 4,965,159 Oct. 23, 1990
Jackson ` US 5,403,621 Apr. 4, 1995
Yasuda JP 09301826 A Nov. 25, 1997
Benoit US 6,087,003 Jul. 11, 2000

The Examiner set forth the following grounds of rejection at pages 4
through 11 of the Answer:
1) Claim 16 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
2) Claims 5, 7, 15, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Benoit and either Yasuda or
Kohno; and
3) Claim 16 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Benoit, Yasuda, and Jackson.
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RELEVANT FACTS, ISSUES, PRINCIPLES OF LAW, ANALYSES,
AND CONCLUSIONS
I. 35 U.S.C. § 112, FIRST PARAGRAPH
Appellants do not dispute the Examiner’s finding that the limitation
“wherein the particles are introduced into the vessel, the particles are stirred
or pulverized by applying a shearing stress to the particles” recited in claim
16 does not have written descriptive support in the application disclosure as
originally filed. (Compare Ans. 4 with App. Br. and Reply Br. in their
entirety.) Accordingly, we summarily affirm the Examiner’s decision
rejecting claim 16 under 35 U.S.C. § 112, first paragraph.
II. 35 U.S.C. § 103(a)
Appellants do not dispute the Examiner’s finding that Benoit teaches
dissolving an organic polymer in supercritical carbon dioxide in an
autoclave typically at a temperature of 304 to 353K and a pressure of 7 to 25
Mpa, contacting particles, including kaolin particles, with the dissolved
polymer in supercritical carbon dioxide, reducing the internal pressure or
temperature of the autoclave prior to recovering the polymer coated particles
useful for, inter alia, cosmetic and imaging compositions. (Compare Ans. 3-
4 and 9 with App. Br. 10-39 and Reply Br. 1-20.) Nor do Appellants dispute
the Examiner’s determination that it would have been obvious to form the
claimed solid particles coated with the silicon polymer comprising
organopolysiloxane chain and poly(N-acylalkyleneimine) chain taught by
Yasuda for the cosmetic purpose or the claimed carrier particles coated with
fluoroalkyl (meth)acrylate polymer taught by Kohno for the imaging
purpose using their solid particles and polymers as the solid particles and
polymers in the coating process of Benoit or that it would have been obvious
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to use a mixture of an organic compound with a filler in supercritical carbon
dioxide for coating inorganic fine particles, as taught by Jackson, in the
coating process of Benoit. (Compare Ans. 8-10 with e.g., App. Br. 10-39.)
Rather, Appellants contend that Benoit as a whole does not suggest
preventing liquefaction of carbon dioxide during reduction of the internal
pressure of the autoclave (App. Br. 10-39 and Reply Br. 7-10.) In support of
this contention, Appellants refer to the examples of Benoit which involve
reducing the internal temperature of the autoclave to form a mixture of
liquid and gaseous carbon dioxide, prior to depressurizing to obtain coated
particles (App. Br. 18-23 and Reply Br. 8-11 and 17.)
Thus, the first critical question is: Has the Examiner erred in finding
that Benoit would have suggested reducing the internal pressure of the
autoclave without liquefaction of carbon dioxide? On this record, we
answer this question in the negative.
As correctly found by the Examiner at pages 7 and 8 of the Answer,
Benoit teaches that its coating process can be carried out by reducing either
the temperature or pressure of the autoclave prior to depressurizing the
autoclave to obtain coated particles. Consistent with such disclosure, Benoit
also exemplifies coating processes involving the reduction of the
temperature of the autoclave, which causes liquefaction of at least portion of
carbon dioxide as indicated by Appellants. However, nowhere do Benoit’s
exemplified embodiments negate its expressly disclosed alternative
embodiment of reducing the pressure of the autoclave without reducing the
temperature (while maintaining the supercritical temperature of carbon
dioxide), which according to Appellants, would prevent liquefaction of
carbon dioxide. In fact, Benoit explains (col. 10, ll. 30-65) that:
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Once a finite concentration of coating material(s) has
been established in the SCF phase of the autoclave, temperature
and/or pressure inside the autoclave are altered in a controlled
manner so that solubility of the coating material(s) present in
the initial SCF is gradually reduced, continuous agitation being
maintained throughout this process. As a rule, such alteration
involves reducing either the temperature or pressure in a
controlled manner. Regardless of how this is accomplished, as
solubility of the coating material(s) in the suspending phase of
the autoclave decreases, affinity of said material(s) for the
surface of the substrate being coated increases and they
increasing become adsorbed there…. Said coating can be
deposited so that it follows the geometric shape of the substrate
being coated to thereby form what is commonly termed a
conformational coating…. Of course, by the time that
deposition of the desired coating materials(s) on the intended
substrate is complete, the operating parameters of the system
may be so changed that the suspending fluid is no longer a SCF,
but has been transformed into a liquefied state which is in
equilibrium with its gaseous state. Phase diagrams that
illustrate specific conditions under which these different phases
exist have been established for a variety of SCF systems.
Once deposition of the desired coating material(s) is
complete, the system is depressurized and the coated particle(s)
or article(s) are isolated by removing them from the autoclave.
[(Emphasis added.)]

It follows that Benoit as a whole would have suggested reducing the
pressure of the autoclave, while maintaining the supercritical temperature of
carbon dioxide and without causing any liquefaction of carbon dioxide, to
complete the deposition of the polymer coating. See also Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
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considered.”); In re Fracalossi, 691 F.2d 792, 794 n.1 (CCPA 1982) (A
prior art reference’s disclosure is not limited to its examples.).
Appellants contend that the prior art references do not teach a
combination of the fluorine-containing polymers and silicon polymers
recited in claim 15 (App. Br. 26-27).
Thus, the second critical question is: Does claim 15, as broadly and
reasonably interpreted in light of the Specification, require a combination of
the fluorine-containing polymers and silicon polymers in its process for
preparing composite particles comprising particles and a polymer? On this
record, we answer this question in the negative for the reason well
articulated by the Examiner at pages 15 and 16 of the Answer. Appellants’
contrary interpretation is not consistent with the plain meaning of the
phrases in question in claim 15.
Appellants contend that the prior art references are not enabling and
are not available as prior art against the claimed invention. (See, e.g., App.
Br. 18-19 and 23, and Reply Br. 11-15 and 17.) In support of this
contention, Appellants proffer a second declaration executed by Naoki
Nojiri, one of the inventors of the above-identified application, on May 28,
2007 to show that the prior art references are not enabling in terms of
reducing the pressure of a vessel without reducing the supercritical
temperature of carbon dioxide to avoid carbon dioxide liquefaction. (See
e.g., App. Br. 23.)
Thus, the third critical question is: Have Appellants demonstrated
that Benoit’s disclosure regarding the reduction of the pressure of an
autoclave without reducing the supercritical temperature and causing
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liquefaction of carbon dioxide is not enabling? On this record, we answer
this question in the negative.
As correctly found by the Examiner and as indicated supra, Benoit
plainly teaches that its coating process can be alternatively carried out by
reducing the pressure without reducing the supercritical temperature of
carbon dioxide in the autoclave and without causing liquefaction of carbon
dioxide until the coating is complete. Appellants have not proffered any
evidence to contradict such plain teaching in Benoit or to show that one of
ordinary skill in the art would not be able to carry out such coating process
without undue experimentation. Indeed, the second declaration relied upon
refers to the examples of Benoit, but does not provide any evidence to show
that one of ordinary skill in the art would not be able to carry out Benoit’s
alternative coating process without undue experimentation or that one of
ordinary skill in the art would have interpreted such plain teaching of Benoit
differently. Neither Appellants’ arguments in the Brief nor the averments in
the second declaration are sufficient to prove, by clear and convincing
evidence, much less by the preponderance of evidence, that Benoit’s
disclosure is non-enabling. It is well established that the presumption of
validity of a United States patent under 35 U.S.C. § 282 applies even in the
context of patent prosecution. In re Spence, 261 F.2d 244, 246 (CCPA
1958); see also Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313,
1355 (Fed. Cir. 2003; footnote omitted).
On this record, Appellants simply have not carried their burden of
demonstrating that Benoit’s disclosure drawn to the reduction of the pressure
of an autoclave without reducing the supercritical temperature of carbon
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dioxide and without causing liquefaction of carbon dioxide in the same is
not enabling. Compare also In re Sasse, 629 F.2d 675, 681 (CCPA 1980).
Appellants contend that the first declaration executed by Naoki Nojiri,
one of the inventors in the above-identified application on October 27, 2005
shows that the claimed subject matter imparts unexpected results (App. Br.
20).
Thus, the fourth critical question is: Have Appellants demonstrated
that the subject matter defined by claims 15, 17, and 18 imparts unexpected
results, thereby rebutting any prima facie case of obviousness established by
the Examiner? On this record, we answer this question in the negative.
It is well settled that the burden of demonstrating unexpected results is
on the party asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). However, Appellants do not explain why the showing in the first
declaration is reasonably commensurate in scope with the degree of
protection sought by the claims on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 19 83); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). In
particular, Appellants have not shown that the one example drawn to talc
powder coated with a particular amount of poly(N-propanoylethleneimine)-
grafted dimethylsiloxane/γ-aminopropylmethylsiloxane copolymer having
at least 2 mm sized aggregated particles produced under specific conditions
set forth in the first declaration is predictive of or applicable to the other
materially different particles coated with either fluorine-containing polymers
or a mixture of fluorine containing polymers and silicon polymers produced
under different conditions covered by the claims on appeal. See, e.g., In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) which states in relevant part:
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The Board also correctly reasoned that the showing of
unexpected results is not commensurate in scope with the
degree of protection sought by the claimed subject matter
because the elemental composition of CMSX®-486 is at or near
the midpoint of the claimed range. While Harris's evidence may
show a slight improvement over some alloys, the record does
not show that the improved performance would result if the
weight-percentages were varied within the claimed ranges.
Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range.

Accordingly, for the reasons set forth in the Answer and above, we
affirm the Examiner’s decision rejecting claims 5, 7, and 15 through 18
under § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).
AFFIRMED

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