Ex Parte Stubbe et al

Board of Patent Appeals and Interferences

Apr 1, 2010

10510993 (B.P.A.I. Apr. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WINFRIED STUBBE and ANDREAS POPPE
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Appeal 2009-006435
Application 10/510,993
Technology Center 1700
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Decided: April 1, 2010
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Before JEFFREY T. SIMTH, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-7 and 9-20 (Final Office Action (“Final”),
mailed Jul. 5, 2007, 1). (Appeal Brief (“App. Br.”), filed Mar. 3, 2008, 1.)
We have jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed May
1, 2008, 3-5), and Appellants request review of (App. Br. 4), the following
grounds of rejection:
1. claims 1, 3-7, and 91-20 under 35 U.S.C. § 102(e) as anticipated
by US 6,599,631, issued Jul. 29, 2003 (“Kambe”)2; and
2. claim 2 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over Kambe.
Claim 1, the sole independent claim, is reproduced below from the
Claims Appendix to the Appeal Brief:
1. An aqueous dispersion, comprising

(A) at least one swellable polymer and/or oligomer containing at least
one functional group that is at least one of an anionic functional group, a
potentially anionic functional group, and/or a nonionic hydrophilic
functional,

(B) surface-modified, cationically stabilized, inorganic nanoparticles
of at least one kind, wherein the nanoparticles are modified with at least one
compound of the general formula I:

[(S-)o-L-]mM(R)n(H)p (I)

in which the indices and variables have the following meanings:

S is a reactive functional group;

L is an at least divalent organic linking group;

1 We note that claim 9, as it appears in the Claims Appendix to the Appeal
Brief, depends from canceled claim 8.
2 The Examiner incorrectly identifies canceled claim 8 as subject to this
ground of rejection. (See Ans. 3.)
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H is a hydrolyzable monovalent group or a hydrolyzable atom;

M is a divalent to hexavalent main group or transition group metal;

R is a monovalent organic radical;

o is an integer from 1 to 5;

m+n+p is an integer from 2 to 6;

p is an integer from 1 to 6; and
m and n are zero or an integer from 1 to 5,

(C) at least one compound selected from the group consisting of
amphiphiles and organic compounds which are capable of forming chelate
ligands, and

(D) at least one crosslinking agent,

wherein the aqueous dispersion has a pH of from 2 to 7.

Appellants rely on the same arguments in traversing both grounds of
rejection. (Compare App Br. 5-9 with 10-12.) These arguments are directed
to limitations found in independent claim 1. We identify the following issue
as dispositive of the appeal: Did the Examiner err in finding that claim 1
reads on Kambe’s disclosure of an aqueous dispersion containing a polymer,
inorganic particles, and linker molecules?
We answer this question in the negative.
Appellants do not dispute that component (A) of claim 1 reads on
Kambe’s polymer. (See generally, App. Br., e.g. p. 5, 2nd para.)
The Examiner found that Kambe discloses linker molecules having a
functional group which meets the limitations of Appellants’ formula I
compound (claim 1, component (B)) and inorganic nanoparticles which are
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metal/metalloid oxide particles. (Ans. 4 and 6-7 (citing Kambe, col. 14, ll.
14-29).) Appellants do not dispute this finding. (See generally, Reply Brief
(“Rep. Br”), filed Jul. 1, 2008.)
The Examiner found that Kambe discloses forming an aqueous
dispersion under conditions in which the surface of the inorganic particles is
first modified by chemical bonding to one or more the linker molecules,
followed by the addition of a polymer to the aqueous dispersion. (Ans. 6
(citing Kambe, col. 6, ll. 28-30 (“[T]he inorganic particles are modified on
their surface by chemical bonding to one or more linker molecules.”)); see
also, Ans. 3 (citing Kambe, col. 6, ll. 29-47); Kambe, col. 6, ll. 32-34 (“The
linker molecules . . . functionalize the inorganic particles.”) and ll. 34-36
(indicating that the linker molecules may bond to the inorganic particles
prior to bonding to the polymers).)
The Examiner also found that components (C) and (D) of claim 1 read
on Kambe’s linker compounds because they function as crosslinking agents
and are capable of forming chelate ligands. (Ans. 3-4 (citing Kambe, col. 5,
ll. 31-40 (“The linker compounds have two or more functional groups. One
functional group of the linker is suitable for chemical bonding to the
inorganic particles. . . . Another functional group of the linker is suitable for
covalent bonding with the polymer.” “Chemical bonding is considered to
broadly cover bonding with some covalent character with or without polar
bonding and can have properties of ligand-metal bonding along with various
degrees of ionic bonding.”).)
Appellants characterize Kambe as disclosing “a reaction intermediate”
in the form of an aqueous dispersion containing linker molecules which can
first modify/react with the inorganic particles, followed by bonding to the
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polymer to form a solid composition. (App. Br. 7.) Appellants contend that
“any inorganic particle reacted with a linker molecule is simultaneously
being consumed by subsequent reaction with the polymer” and, therefore,
Kambe does not disclose a dispersion containing a polymer, surface-
modified nanoparticles and a separate crosslinking agent as required by
claim 1. (App. Br. 8.)
Appellants’ argument is not supported by Kambe’s disclosure.
Kambe discloses forming a dispersion containing both inorganic
particles which have been surface modified by a linker compound, and
additional crosslinking agent, i.e. linker compound which is not reacted with
the inorganic particles. (See col. 9, ll. 2-5 (“Depending on the conditions
during the combination of the linker to the inorganic particles, some
inorganic particles can be bonded to two or more linkers while other
inorganic particles may not be bonded to any linkers.”); col. 21, ll. 47-58
(explaining that some linkers are self-polymerizing and adjustment of
reaction conditions will control the amount of linkers which bond to the
particle surface and the amount which self-condense); cf. col. 8, ll. 2-3
(indicating that a linker may include more than two functional groups); col.
12, ll. 66-67 (indicating that polycondensation may form crosslinkers).)
Kambe teaches that bond formation between a polymer added to the
dispersion and the linker compound can be controlled by adjusting reaction
conditions and/or addition of a catalyst. (See col. 21, ll. 22-47 and 59-67.)
In other words, inorganic particles reacted with a linker molecule are not
necessarily “simultaneously [] consumed by subsequent reaction with the
polymer” as suggested by Appellants (App. Br. 8); rather, the polymer may
be present in the dispersion, separate from (i.e., not bonded to) the linking
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compound and surface-modified inorganic particles. Therefore, contrary to
Appellants’ contention, the Examiner had a reasonable basis for finding that
Kambe discloses a dispersion containing a polymer, surface-modified
nanoparticles, and a separate crosslinking agent (see Kambe, col. 14, ll. 30-
34 (distinguishing between the functional group bonded to the nanoparticle
and the functional groups of the linker compound: “The identity of the
linker functional group that bonds with the inorganic particle may also be
modified due to the character of the bonding with the inorganic particle. . . .
In any case, a resulting or product functional group is formed joining the
linker molecule and the inorganic particle.”)).
Appellants also contend the Examiner failed to properly construe the
claim 1 limitations pertaining to components (C) and (D) as requiring two
separate and distinct compounds. Appellants argue the Examiner has not
established a prima facie case of anticipation because the Examiner relies on
the same compound, Kambe’s linker compound, for a teaching of
components (C) and (D). (See e.g., App. Br. 9 and Rep. Br. 4-5.)
We have considered the claim language in light of the Specification,
but do not agree with the narrow interpretation of the claims advanced by
Appellants.
The Specification describes organic compounds able to form chelate
ligands (claim 1, component (C)) as containing at least two functional
groups which are able to coordinate with metal atoms or metal ions. (App.
Br. 2 (citing Spec. 14: 31–15:8).) “The [S]pecification defines a
crosslinking agent [(claim 1, component (D))] as a material containing
reactive functional groups which are able to undergo reactions with
themselves and/or with complementary reactive functional groups.” (App.
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Br. 3 (citing Spec. 15:16-16:31) (emphasis added).) “The separate
crosslinking agent contains functional groups that are reactive with
complementary groups on the polymer or oligomer, on the surface-modified
nanoparticles, in the amphiphile, or with themselves.” (App. Br. 6 (citing
Spec. 15:17-19) (emphasis added).) It is not apparent from the language of
the claims, or the Specification, why the same compound cannot meet both
of the aforementioned requirements.
Because we are in agreement with the Examiner’s claim interpretation
(see Ans. 4), we are not persuaded of error in the Examiner’s finding that
claim 1 components (C) and (D) read on Kambe’s linker compound. In
other words, Appellants have not explained why the Examiner erred in
finding that Kambe discloses a linker compound which is both an organic
compound containing at least two functional groups which are able to
coordinate with metal atoms or metal ions, and a material containing
reactive functional groups which are able to undergo reactions with
complementary groups in the polymer or surface-modified nanoparticles.
CONCLUSION
Appellants have not persuaded us of error in the Examiner’s finding
of anticipation. Therefore, the decision of the Examiner rejecting claims 1-7
and 9-20 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)(1).

AFFIRMED

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Application 10/510,993

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