Ex Parte Vicari et al

Patent Trial and Appeal Board

Aug 31, 2016

12998026 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121998,026 03/10/2011 Richard Vicari
40256 7590 08/31/2016
FERRELLS, PLLC
P. 0. BOX 312
CLIFTON, VA 20124-1706
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
S-002 US 5533
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1767
MAILDATE DELIVERY MODE
08/31/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD VICARI, FLORIN BARSAN, and
KIEN VAN PHUNG1
Appeal2014-006150
Application 12/998,026
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants timely request rehearing2 under 3 7 C.F .R. § 41.41 of our
Decision, entered June 23, 2016 ("Op."), affirming the rejection of
claims 34--38 for obviousness over a patent issued to Pinschmidt. 3
Appellants appear to urge that we did not appropriately weigh the
Rule 132 Declarations and Technical Report of Richard Vicari,4 especially
1 The real party in interest is listed as Sekisui Specialty Chemicals America,
LLC. (Appeal Brief, filed November 22, 2013("App. Br."), 2.)
2 Request for Rehearing, filed August 23, 2016 ("Request").
3 Pinschmidt, Jr. et al, US Patent 5,300,566 issued on April 5, 1994
("Pinschmidt").
Appeal2014-006150
Application 12/998,026
the May 28, 2013 Rule 132 Declaration of Richard Vicari, in resolving the
issue of obviousness. 5 (Request 1-8.) Appellants then urge that the May 28,
2013 Declaration of Richard Vicari shows that the Pinschmidt copolymer
does not possess the compositional homogeneity recited in claim 34 because
the representative Erkol copolymer comparable to the Pinschmidt copolymer
exhibits a compositional drift, thus indicating that the Pinschmidt copolymer
also exhibits a compositional drift. (Id.) In support of this position,
Appellants also refer to certain paragraphs of the May 28, 2013 Declaration
of Richard Vicari. (Id. at 4--7.)
We are not persuaded that we misapprehended or overlooked any of
the points raised by Appellants in the Request. As we found, and as
Appellants do not dispute,
Pinschmidt teaches that the PV Ac/PNVF copolymers produced
by a free-radical continuous process are "substantially random
homogeneous copolymers." ... Pinschmidt [also] teaches
complete hydrolysis of the PV Ac/PNVF copolymers as
indicated by NMR analysis.
(Compare Op. 10 with Request 1-8; see also Op 8-9 (emphasis
added).) We also found, and Appellants does not dispute, that:
[T]he polymerization process [for producing such
homogeneous copolymer] in Example 1 of Pinschmidt uses
4 Richard Vicari, the declarant, is one of the inventors listed in the instant
patent application and has an interest in the outcome of this case.
5 Appellants do not question our finding that the April 13, 2011 and August
20, 2013 Rule 132 Declarations of Richard Vicari and the Technical Report
of Richard Vicari were not timely filed in the instant application. (Compare
Op. 3 with Request 1-8.) Nor do Appellants argue that we erred in not
considering such Declarations and Report pursuant to 37 C.F.R. §
41.33(d)(l) and (d)(2). (Compare Op. 3 with Request 1-8.)
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Appeal2014-006150
Application 12/998,026
two reactors - reactors land 11, where both reactors are initially
charged with both monomers NVF and V Ac, an initiator, and
the catalyst tartaric acid. App. Br. 5; Vicari Declaration III, p.
8, "Schematic 2: Pinschmidt." In the Pinschmidt example 1
method, continuous feeds of both monomers, the initiator, and
the catalyst are added to reactor I and a continuous feed of
V Ac, not NVF, is added to reactor II. Pinschmidt, Example 1,
col. 7, 11. 37-39, col. 7, 1. 64, to col. 8, 1. 15, col. 8, 11. 30-45.
Pinschmidt teaches that
[ w ]hen the reactor temperatures approached 60°C,
the feeds were begun. The flow rates from reactor
I to reactor II and from reactor II to the paste
collecting port were adjusted to maintain
reactor I and reactor II levels. Free monomer
(vinyl acetate and N-vinyl formamide) in reactors I
and II was monitored periodically by a titration
method ... The amount of catalyst added into
reactor I was varied to adjust percent vinyl acetate
at steady state.
Id. at Example 1, col. 7, 11. 3 8--48 (emphasis added).
Pinschmidt teaches "continuously withdrawing from the
reaction vessel reaction mixture containing the PVAc/PNVF"
copolymer. Id. at col. 3, 11. 4--5. In addition, in the Pinschmidt
example 1, after forming the PV Ac/PNVF copolymer, V Ac is
removed from the copolymer to achieve a V Ac "level below
0.1%."Id. at col. 7, 11. 57~51.
(Compare Op. 6 with Request 1-8.)
Against these teachings of Pinschmidt, we carefully and meaningfully
considered the Vicari Declarations, including the May 28, 2013 Declaration
of Richard Vicari, contrary to Appellants' arguments in the Request. (See,
e.g., Op 6-11.) As pointed out by Appellants, we found that:
[T]he process for forming the Erkol copolymer described in the
Vicari Declaration III [i.e., the May 28, 2013 Declaration of
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Appeal2014-006150
Application 12/998,026
Richard Vicari,] is not the same as [or comparable to] the
process taught by Pinschmidt because in the Erkol process:
(1) only one reactor is used in forming the copolymer;
(2) no continuous feeds of initiator and catalyst are added
along with the continuous feeds of both monomers;
(3) no adjustment of flow rates are performed to maintain
the reactor level;
(4) no adjustment of catalyst is provided to adjust vinyl
acetate at steady state; and
( 5) no continuous feeds of the monomer V Ac and the
polymerization product formed in a first reactor are added to a
second reactor to complete polymerization of the copolymer.
Moreover, Pinschmidt teaches that NVF has "a higher
reactivity than vinyl acetate in the polymerization and [its]
frequently lower levels of incorporation minimize the amounts
of these monomers present in the final product." Pinschmidt,
col. 5, 11. 7-12. As the Examiner found, Pinschmidt teaches
that the PVAc/PNVF copolymer comprises 1-50 mole% of
PNVF. Ans. 3. In Example 1 of Pinschmidt, the synthesized
copolymers comprise 6 or 12 mole% of PNVF. Pinschmidt,
Example 1, col. 7, 1. 64, col. 8, 11. 1, 31. The Vicari
Declaration III [(i.e., the May 28, 2013 Declaration of Richard
Vicari)], paragraph 4, does not describe the PNVF molar
amount of the Erkol L12i copolymer.
(Compare Op. 6- 7 with Request 2-3.)
Based on these findings and other findings in our Decision, we
determined that:
[O]n this record, Appellants have not demonstrated that the
Erkol copolymer referred to in both the Specification and the
Vicari Declarations represents closer prior art than the
Pinschmidt copolymer or comparable to the Pinschmidt
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Appeal2014-006150
Application 12/998,026
copolymer. Stated differently, Appellants have not shown that
the PV Ac/PNVF copolymers made by the process taught by
Pinschmidt exhibit a "compositional drift," as shown by the
copolymer Erkol L12i in the Specification Figure 1.
(Op. 11.) Because the Vicari Declarations do not address the above
significant differences between the Pinschmidt and Erkol processes and
copolymers to show that the Pinschmidt and Erkol copolymers are
comparable, we also referred to In re Grunwell, 609 F .2d 486, 491 (CCP A
1979) which states that "[i]f, as affiants stated, 'no reasonable interpretation'
can equate the two [compounds], affiants should have submitted factual
substantiation of that contention. The affidavits, however, fail to offer the
bases upon which their conclusions are built." We also weighed the Vicari
Declarations against the disclosures of Pinschmidt, citing Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to
prior publication than to subsequent conclusory statement by experts, the
Board acted well within [its] discretion.") (Id.) Finally, we again weighed
all of the evidence, including the Vicari Declarations, relied upon by
Appellants and the Examiner anew and determined that "the evidence of
nonobviousness relied upon by Appellants is not sufficient to outweigh the
evidence of obviousness relied upon by the Examiner within the meaning of
35 U.S.C. § 103(a)." (Op. 17.) Nothing in our Decision referred to by
Appellants indicates that we did not appropriately weigh the Vicari
Declarations in resolving obviousness under 35 U.S.C. § 103(a).
Accordingly, we are not persuaded of harmful error in the findings of
fact or conclusions of law set out in our Decision. Thus, while we have
considered the Request, we deny the relief sought.
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Application 12/998,026
ORDER
It is ORDERED that the Request for Rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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