Ex Parte Wang et al

Patent Trial and Appeal Board

Jul 26, 2018

14163553 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/163,553 01/24/2014 Xiao Wang
44639 7590 07/30/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
TYI4-57013-US
(BA01187US)
9558
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/30/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAO WANG and ANIL K. SADAN A
Appeal2017-009572
Application 14/163,553
Technology Center 1700
Before JEFFREY B. ROBERTSON, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1---6, 10-12, and 18-20. 3 We have
jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 In this Decision, we refer to the Specification filed January 24, 2014, the
Final Office Action dated July 1, 2016 ("Final Act."), the Appeal Brief filed
February 22, 2017 ("Br."), and the Examiner's Answer dated April 11, 2017
("Ans.").
2 Appellants identify the real party in interest as Baker Hughes Incorporated.
Br. 2.
3 Although the Final Office Action dated July 1, 2016, lists claims 8 and 9 as
pending (Final Act. 1 ), claims 8 and 9 were canceled in an Amendment
After Final filed October 17, 2016. Claims 13, 14, 16, and 17 are withdrawn
from consideration by the Examiner. Final Act. 1.
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Application 14/163,553
The subject matter of the appealed claims relates to nanocomposite
microgels comprising a polymer and a water-swellable mineral clay.
Spec. ,r 1. Claim 1, reproduced below from the Claims Appendix with
emphasis on key disputed limitations, is illustrative of the claims on appeal.
1. Nanocomposite microgel particles, comprising a
three-dimensional network comprising:
a water-swellable nanoclay; and
an organic network polymer;
wherein the nanocomposite microgel particles comprise
primary nanocomposite microgel particles having a mean
diameter of 1 to 10 micrometers as measured by scanning
electron microscopy,
wherein the organic network polymer is the
polymerization product of a monomer composition comprising,
based on the total weight of the monomers:
20 to less than 100 wt.% of a water-soluble, polar,
nonionic ethylenically monounsaturated monomer, the water-
soluble, polar, nonionic ethylenically monounsaturated
monomer comprising an acrylamide, methacrylamide, N-(C1-
Cs alkyl)(meth)acrylamide, N,N-di(C1-Cs alkyl)acrylamide, or
a combination comprising at least one of the foregoing
monomers; and
greater than O to 80 wt.% of a water-soluble, polar,
anionic ethylenically monounsaturated monomer, the water-
soluble, polar, anionic ethylenically monounsaturated
monomer comprising 2-acrylamido-2-methylpropane sulfonic
acid or a salt thereof.
Br. 13 (Claims App.) (emphasis added).
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REJECTIONS 4
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1---6, 10-12, and 18-205 over Lorah et al.
(US 2002/0055580 Al, published May 9, 2002) ("Lorah") (Ans. 2); and
Rejection 2: Claims 1---6, 10-12, and 18-20 are rejected for non-
statutory obviousness type double patenting over claims 1, 4, 5 and 7-14 of
U.S. Patent No. 9,334,337 (Application No. 14/209,057). (Ans. 9, 17).
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After considering
each of Appellants' contentions, we are not persuaded that Appellants
4 Claim 9 was canceled in an Amendment filed October 17, 2017. Thus, the
rejection of claim 9 under 35 U.S.C. § 103 over Lorah in view of additional
prior art is moot. In addition, the Examiner withdrew the rejection of
claim 18 under 35 U.S.C. § 112(b) as indefinite. Ans. 2.
5 Claim 6 is omitted from the statement of rejection. Because claim 6 is
discussed in the body of the rejection (Final Act. 5), and Appellants
recognize that claim 6 should have been included in the rejection (Br. 3), we
consider the omission harmless error, and modify the statement of rejection
to include claim 6 for clarity. The Examiner also includes claim 8 in the
statement of rejection, however, as discussed above, claim 8 was canceled
by Appellants in an Amendment filed October 17, 2016. Thus, for clarity
we omit claim 8 from the statement of rejection.
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identify reversible error. Thus, we sustain the Examiner's rejections for the
reasons expressed in the Final Office Action, the Answer, and below.
Rejection 1
Appellants present separate arguments for the patentability of
claims 1, 12, 19, and 20. We discuss each of these claims in tum below.
Claim 1
The Examiner finds that Lorah teaches claim 1 's nanocomposite
microgel particles. Final Act. 3--4. Specifically, the Examiner finds that
Lorah teaches nanocomposite dispersions comprising an aqueous dispersion
of at least one clay, and a monomer mixture that includes from 25 weight
percent to 100 weight percent of an ethylenically unsaturated monomer,
preferably C1-C1s alkyl (meth)acrylate monomers, and at least 10 weight
percent of an acid containing monomer, for example 2-acrylamido-2-
methylpropone sulphonic acid. Final Act. 3 (citing Lorah Abstract, ,r,r 35-
38). The Examiner finds that Lorah teaches the diameter of the
nanocomposite is 1 micron. Final Act. 3 ( citing Lorah ,r 97).
Appellants contend that Lorah's paragraph 97 discloses the average
particle size of the core obtained by a single stage process or a process
involving several stages. Br. 4. According to Appellants, the average
particle size of a core is not equivalent to the diameter of a nanocomposite as
the Examiner finds. Id. Accordingly, Appellants argue that Lorah does not
teach or suggest nanocomposite microgel particles with a mean diameter of
1 to 10 micrometers as recited in claim 1. Id.
In the Answer the Examiner responds to Appellants' argument and
finds that Lorah's paragraph 75 teaches core shell nanocomposites having a
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particle diameter of greater than 1000 nanometers, which is 1 micron.
Ans. 10. Appellants did not file a Reply Brief, and thus do not identify error
in the Examiner's finding. Thus, we are not persuaded by Appellants'
argument of reversible error in the Examiner's rejection.
Appellants argue that there is no teaching in Lorah that would have
led one skilled in the art to the specific combination of a water-soluble,
polar, nonionic ethylenically monounsaturated monomer, and a water
soluble, polar, anionic ethylenically monosaturated monomer as defined in
instant claim 1, let alone in the amounts recited in claim 1. Br. 4.
Appellants' argument is not persuasive of reversible error. Lorah's
disclosures would have indicated to one of ordinary skill in the art to use a
monomer mixture comprising from 25 weight percent to 100 weight percent
of C1-C1s alkyl (meth)acrylate monomers, a preferable ethylenically
unsaturated monomer for its low cost and commercial availability, in
combination with at least 10% by weight of acid containing monomer, for
example 2-acrylamido-2-methylpropone sulphonic acid. See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that
a reference "discloses a multitude of effective combinations does not render
any particular formulation less obvious."). Thus, we discern no reversible
error in the Examiner's conclusion that claim 1 's polymer, which is the
polymerization product of a water-soluble, polar, nonionic ethylenically
monounsaturated monomer, and a water-soluble, polar, anionic ethylenically
monounsaturated monomer, would have been prima facie obvious to one of
ordinary skill in the art based on Lorah.
Finally, Appellants argue that the evidence presented in the
Declaration under 37 C.F.R. § 1.132 of Xiao Wang executed May 10, 2016
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("the Wang Declaration"), and the Declaration under 37 C.F.R. § 1.132 of
Anil Sadana executed September 13, 2016 ("the Sadana Declaration"),
demonstrate that the claimed subject matter would not have been obvious
because the particular combination of claimed elements results in
unexpectedly beneficial properties. Br. 5-8.
The burden rests with Appellants to establish that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
It is not enough for the Appellants to show that the results in the
compared examples differ. The difference must be shown to be an
unexpected difference. We have considered the Wang and Sadana
Declarations. Although the Wang and Sadana Declarations state that the
excellent compatibility of the inventive micro gel particles with brines
containing divalent calcium ions is "surprising" (Wang Deel. ,r 13;
Sadana Deel. ,r 14), on this record Appellants have not established with
objective evidence that the difference in the compatibility of the inventive
and the comparative examples with the divalent brines would not have been
expected by one skilled in the art at the time of the invention. See, e.g.,
Wang Deel. ,r 9 ("some Comparative Sample B particles precipitated in the
10 wt.% CaCb brine.").
The burden also rests with Appellants to establish that the supplied
evidentiary showing is commensurate in scope with the claimed subject
matter. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that
unexpected results "limited to sodium only" were not commensurate in
scope with claims to a catalyst having "an alkali metal"). As the Examiner
explains, the evidence presented in the Wang and Sadana Declarations is not
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reasonably commensurate in scope with the appealed claims. Ans. 13-14.
Claim 1 's nonionic ethylenically monounsaturated monomer is not limited to
acrylamide. Appellants have not established that the results obtained using
the single embodiment is representative of the results which would be
obtained for the other polymer networks covered by the claims.
In view of the foregoing, we sustain the rejection of claim 1 over
Lorah. Because Appellants do not present separate arguments for the
patentability of claims 2---6, 10, 11, and 20, which directly or indirectly
depend from claim 1, we also sustain the rejection of those claims over
Lorah.
Claim 12
Claim 12 is reproduced below from the Claims Appendix of the
Appeal Brief.
12. The nanocomposite microgel particles of claim 1,
further comprising crosslinks forming a bond between the
water-swellable nanoclay and the organic network polymer.
Br. 15 (Claims App.)
Appellants argue that the Examiner fails to establish that Lorah's
combination of nanoclay and polymer network would intrinsically crosslink
when they are combined together. Br. 9-10.
Appellants' argument is not persuasive of reversible error. As the
Examiner finds, Lorah teaches nanocomposites that include clay and a
polymer network comprised of at least one ethylenically unsaturated
monomer and an acid containing monomer. Final Act. 6 ( citing Lorah,
Abstract). Lorah teaches that suitable ethylenically unsaturated monomers
include nitrogen containing vinyl unsaturated monomers ( e.g., acrylonitrile,
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methacrylonitrile, and C1 -C18 alkyl (meth)acrylamides, and the like), and a
suitable acid containing monomer includes 2-acrylamido-2-methylpropane
sulfonic acid, which read on the monomers recited in claim 12. Lorah ,r,r 36,
3 8. Lorah further teaches that suitable clays include synthetic minerals or
synthetic phyllosilicates, such as LAPONITE®. Id. ,r 46. According to
Appellants' Specification, the nanoclay acts as a multifunctional cross-linker
of the monomer compositions. Spec. ,r 12. Appellants' Specification
discloses Laponite as an example of a nanoclay used in its nanocomposite.
Id. ,r 13. Thus, on this record, we determine that the Examiner has provided
an adequate factual basis upon which to shift the burden to the Appellants to
come forward with evidence to show Lorah's nanocomposite does not
include crosslinks forming a bond between the water-swellable nanoclay and
the organic network polymer, as recited in claim 12. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not."). Appellants,
however, do not provide such a showing. Thus, we sustain the rejection of
claim 12.
Claims 19 and 2 0
Claims 19 and 20 are reproduced below from the Claims Appendix of
the Appeal Brief.
19. The nanocomposite microgel particles of claim 5,
wherein the water-swellable nanoclay is a synthetic layered
hectorite magnesium lithium silicate, the water-soluble, polar,
nonionic ethylenically monounsaturated monomer is
acrylamide, and the water-soluble, polar, anionic ethylenically
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monounsaturated monomer is 2-acrylamido-2-methylpropane
sulfonic acid or a salt thereof.
20. The nanocomposite micro gel particles of claim 10,
wherein the water-swellable nanoclay is a synthetic layered
hectorite magnesium lithium silicate, the water-soluble, polar,
nonionic ethylenically monounsaturated monomer is
acrylamide, and the water-soluble, polar, anionic ethylenically
monounsaturated monomer is 2-acrylamido-2-methylpropane
sulfonic acid or a salt thereof.
Br. 16-17 (Claims App.).
Appellants argue that the Wang and Sadana Declarations demonstrate
the surprising results obtained with claim 18 and claim 19 's nanocomposites.
Br. 10. Appellants also argue that Lorah does not disclose a nanocomposite
that includes acrylamide as the nonionic ethylenically unsaturated monomer.
Id.
Appellants' arguments are not persuasive of reversible error. Lorah
teaches that its ethylenically unsaturated monomers include nitrogen-
containing vinyl unsaturated monomers, for example, C1-C18 alkyl
(meth)acrylamides) and the like. Lorah ,r 36. Based on this disclosure, we
determine that Lorah teaches or reasonably suggests acrylamide as a suitable
nitrogen-containing vinyl unsaturated monomer for use in Lorah's monomer
mixture.
Moreover, as discussed above with respect to claim 1, although the
Wang and Sadana Declaration state that the results are "surprising" (Wang
Deel. ,r 13; Sadana Deel. ,r 14), it does not establish with objective evidence
that the difference between the results obtained with the claimed invention
and those obtained with the comparative examples would not have been
expected by one skilled in the art at the time of the invention.
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In view of the foregoing, we sustain the rejection of claims 19 and 20
over Lorah.
Rejection 2
As the Examiner points out, Appellants does not present any
arguments regarding the double patenting rejection in their Appeal Brief.
Ans. 17. Thus, we summarily affirm the rejection. See Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed., Mar. 2014) ("If a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer.").
DECISION
For the above reasons, the rejections of claims 1---6, 10-12, and 18-20
under 35 U.S.C. § 103 over Lorah, and the rejection of claims 1---6, 10-12,
and 18-20 on the ground of non-statutory double patenting are 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).
AFFIRMED
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