11296796 (B.P.A.I. Sep. 21, 2010)

Ex Parte Procter et al

Board of Patent Appeals and InterferencesSep 21, 2010

11296796 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/296,796 12/07/2005 Ian Procter US 197093-1 (1302-97) 4242 52774 7590 09/22/2010 MOMENTIVE PERFORMANCE MATERIALS INC. c/o Dilworth & Barrese, LLP 1000 Woodbury Road Suite 405 Woodbury, NY 11797 EXAMINER HRUSKOCI, PETER A ART UNIT PAPER NUMBER 1797 MAIL DATE DELIVERY MODE 09/22/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte IAN PROCTER, SABINE ISABELLE AZOUANI, and ROLF HAUBRICHS ____________________ Appeal 2009-013399 Application 11/296,796 Technology Center 1700 ____________________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 I. STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-52 under 35 U.S.C. § 103(a) as being obvious 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013399 Application 11/296,796 2 over Darian (US 5,286,386) in view of Thiele (US 4,183,820). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention relates to a process of separating a mixture containing different phases (aqueous, solid, and optionally an oil phase) (Spec. ¶ [0001], Claim 1). According to the Specification, aqueous and/or oil based mixtures in various commercial industries must be separated so individual components can be reused before disposal of the separated mixture components (Spec. ¶ [0002]). Appellants’ process facilitates separation by combining a specific type of silicone surfactant with the mixture (Spec. ¶ [0005]). The Examiner finds that Darian describes a separation process employing surfactants, but does not disclose using a silicone surfactant as required by the claims (Ans. 3). The Examiner, however, finds that Theile describes silicone surfactants for use in similar separations, and concludes that it would have been obvious to one of ordinary skill in the art to use the silicone surfactant of Theile to aid in separating the mixture of Darian (Ans. 3). Appellants contend that the Examiner’s rejection fails to provide a suggestion or motivation to combine the teachings of the references with a reasonable expectation of success, nor shows that the combination of references teach or suggest all of the claim limitations (Br. 7-13). Appellants do not argue any claim apart from the others. We, therefore, select claim 1 as representative for deciding the issue on appeal. Because Appellants do not dispute that Theile describes a silicone surfactant of the Appeal 2009-013399 Application 11/296,796 3 structure required by the claims (Br. 7-13), the structural requirement of the claims is not particularly relevant to the issue on appeal, and we omit the generic formula recited in claim 1. The relevant portions of claim 1 are reproduced below: 1. A process for separating a mixture comprising: combining at least one silicone surfactant (a), where silicone of silicone surfactant (a) has the general structure of: [generic formula of the silicone surfactant] and, a mixture (b) comprising an aqueous phase, a solid filler phase and optionally an oil phase that is substantially insoluble in said aqueous phase; and providing for separation of any one or more of said aqueous phase, said solid filler phase, and if present, said oil phase from mixture (b) to provide a separated mixture (b). II. DISPOSITIVE ISSUE Does the evidence support the Examiner’s conclusion that it would have been obvious to the ordinary artisan to select the silicone surfactant of Theile to aid in the separation process of Darian such that the result is a process within the scope of claim 1? For the reasons articulated by the Examiner in the Answer, we answer this question in the affirmative. We add the following primarily for emphasis. III. DISCUSSION Darian is directed to a solvent extraction process for the treatment of oily substrates, which can include water, an oily material, and solids, and dispersions and/or emulsions thereof (Darian, col. 1, ll. 16-21). Darian treats Appeal 2009-013399 Application 11/296,796 4 the oily substrates (such as petroleum and drilling sludges) (Darian, col. 8, ll. 18-22) by adding a hydrophobic or sparingly water soluble solvent (col. 9, ll. 28-32) and a comminuting surfactant (col. 10, ll. 29-32). The solvent/surfactant combination treats the oily substrate to produce phases including a comminuted mixture of dispersed, flowable, and discrete solids, water, and solvent and allows the separation of oily materials from the solids (Darian, col. 10, ll. 48-52). The surfactant may also serve to facilitate breaking of emulsions (col. 10, l. to col. 11, l. 5). Darian explains that the choice of surfactant varies widely depending upon the composition of the oily substrate to be treated, and other variables such the solvent employed, the selection is easily accomplished and only routine experimentation is necessary (col. 11, ll. 9-15; col. 11, ll. 59-65; col. 13-23). Theile is directed to the use of particular compound mixtures for breaking petroleum emulsions (Theile, col. 1, ll. 9-10). Theile also indicates that, conventionally, the ordinary artisan had to select a specific demulsifier (surfactant) from a wide array of demulsifiers based upon the specific composition of the oil (col. 1, ll. 16-25). Theile indicates that silicone surfactants were known in the art for breaking petroleum emulsions, but they are expensive (col. 1, ll. 44-50). Theile suggests that mixtures of the silicone surfactant with silicon-free demulsifiers can be used to treat a wider array of petroleum emulsions with particular advantages (col. 1, l. 60 to col. 2, l. 9). Given that Darian requires a surfactant in combination with solvent to render components of the oily substrate, which can include petroleum emulsions, separable, and Theile describes that the claimed silicone surfactants were known for breaking oily petroleum emulsions, it follows Appeal 2009-013399 Application 11/296,796 5 that one of ordinary skill in the art would have found it obvious to select the known silicone surfactant of Theile for use in the process of Darian to accomplish its known emulsion breaking function. When a claim is to a combination that ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int'l Co. v. Teleflex Inc, 550 U.S. 398, 417 (2007), quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976). Appellants have not provided any objective evidence of unexpected results on this record. We further agree with the Examiner that Appellants’ claim 1 neither excludes the solvent disclosed in Darian, nor the companion surfactants discussed in Theile, nor any other components suggested for inclusion by the references. IV. CONCLUSION On the record before us, we sustain the rejection maintained by the Examiner. V. DECISION The decision of the Examiner is affirmed. VI. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cam Appeal 2009-013399 Application 11/296,796 6 MOMENTIVE PERFORMANCE MATERIALS INC. C/O DILWORTH & BARRESE, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY NY 11797