Ex Parte Weber et al

Patent Trial and Appeal Board

Feb 21, 2018

13504576 (P.T.A.B. Feb. 21, 2018)

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.
13/504,576 04/27/2012 Martin Weber 074055-0019-US (287638) 4694
123223 7590 02/23/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN WEBER, PETER ITTEMANN, AXEL GOTTSCHALK,
BERND NIEDERMAIER, BIRGIT REINHARD, and
DIRK MECKELNBURG
Appeal 2017-005727
Application 13/504,576
Technology Center 1700
Before ROMULO H. DELMENDO, AVELYN M. ROSS, and
JANE E. INGLESE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 10, 11,
and 13—28.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as “Styrolution Group
Gmbh” (Appeal Brief filed September 12, 2016, hereinafter “Br.,” 1).
2 Br. 4—17; Final Office Action entered May 13, 2016, hereinafter “Final
Act.,” 2—10; Examiner’s Answer entered October 20, 2016, hereinafter
“Ans.,” 2-14.
Appeal 2017-005727
Application 13/504,576
I. BACKGROUND
The subject matter on appeal relates to a process for preparing
anhydride-containing vinylaromatic-vinyl cyanide copolymers with
“reduced soil particle content”3 (Specification filed April 27, 2012,
hereinafter “Spec.,” 1,11. 2—3). Representative claim 10 is reproduced from
the Appeal Brief (Claims Appendix A), with key limitations emphasized, as
follows:
10. A process for preparing copolymers A) with a
reduced soil particle content, the copolymers A) comprising[:]
66.3 to 83.3% by weight of structural units which derive
from one or more vinylaromatic monomers component Al),
15 to 32% by weight of structural units which derive from
one or more vinyl cyanides component A2),
1.7 to 3.6% by weight of structural units which derive
from one or more dicarboxylic anhydrides component A3), and
0 to 10% by weight of structural units which derive from
further copolymerizable monomers component A4),
where the percentages by weight are each based on the
total weight of the structural units which derive from components
Al), A2), A3) and A4), and together do not exceed 100% by
weight, wherein the process comprises
preparing the copolymers A) by solution polymerization
of components Al), A2), A3), and A4) in the presence of an
organic solvent under continuous steady-state conditions for at
least 24 hours calculated from the time of attainment of the
steady-state condition,
wherein the mathematical product of the percentages by
weight of the structural units which derive from component A2)
and the percentages by weight of the structural units which
derive from component A3) in the copolymer A) is in the range
from 40%2 by weight to 65%2 by weight, and
wherein the copolymer A) has 2 mm2 to 21 mm2 of soil
particles/m2 after an operating time of 24 hours, which is
3 It appears that the term “soil” refers to “inclusions other than the
copolymer matrix” (Spec. 8,11. 16—19).
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Application 13/504,576
calculated from the time of attainment of the steady-state
condition, and measured by a PS 25C pellet scanner, wherein the
size and number of the inclusions other than the copolymer
matrix are detected in 2160 g of pellets.
II. REJECTION ON APPEAL
The Examiner maintains a rejection under pre-AIA 35 U.S.C. § 103(a)
of claims 10, 11, and 13—28 as unpatentable over Weber et al. (WO
2008/101888 Al, published August 28, 2008),4 Weber et al. (US
2008/0300333 Al, published December 4, 2008; hereinafter “Weber”),
NieSsner et al. (US 2001/0007890 Al, published July 12, 2001; hereinafter
“NieSsner”), Liebig et al. (US 4,167,543, issued September 11, 1979;
hereinafter “Liebig”), and Kolvoort et al. (US 2,496,222, issued January 31,
1950; hereinafter “Kolvoort”). See, e.g., Ans. 2—14; Final Act. 2—10; Non-
Final Action entered February 4, 2016, hereinafter “02-04-16 Non-Final
Act.,” 2—3; 06-5-14 Non-Final Act. 3^4.
III. DISCUSSION
Unless separately argued pursuant to 37 C.F.R. § 41.37(c)(l)(iv), all
claims stand or fall together with representative claim 10.
The Examiner finds that BASF describes a process for preparing a
styrene-acrylonitrile-maleic anhydride polymer having monomeric contents
for Al)—A3) and a “mathematical product” relationship for A2) and A3) that
4 The Examiner and the Appellants refer to this reference as “BASF” and
rely on Weber et al. (US 8,119,723 B2, issued February 21, 2012) as an
English language equivalent (Non-Final Action entered June 5, 2014,
hereinafter “06-05-14 Non-Final Act.,” 3; Br. 4). To avoid confusion, we
also refer to this reference as “BASF” but cite to the US document.
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Application 13/504,576
fall squarely within claim 10’s scope (Ans. 3; Final Act. 4; 06-05-14 Non-
Final Act. 3). The Examiner finds further that BASF discloses using
solution polymerization to prepare the polymer (Ans. 3). The Examiner
acknowledges that BASF’s process differs from that recited in claim 10 in
that the claimed process is conducted in a continuous, steady state mode,
whereas BASF exemplifies a batch process (id.). Relying on Liebig and
Weber, however, the Examiner concludes that a person of ordinary skill in
the art would have been prompted to perform BASF’s process in a
continuous, steady state solution polymerization mode as is commonly
practiced in the art (02-04-16 Non-Final Act. 2—3). With respect to the “soil
particles” content limitation recited in claim 10, the Examiner finds that
BASF’s process is consistent with the processes described in the Appellants’
Specification as suitable for achieving the reduced “soil particles” content,
and, therefore, the prior art polymer would reasonably appear to have “soil
particles” content within the range recited in the claim (Ans. 5—6; Final Act.
5-6).
The Appellants disagree with the Examiner’s obviousness conclusion
based on a number of different arguments (Br. 5—17). These arguments,
however, are ineffective to identify a reversible error for the reasons
discussed below. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Appellants concede that “BASF does describe a species of
styrene-acrylonitrile-maleic anhydride terpolymer (74/23.8/2.2 % by weight,
respectively), which does comply with the recited mathematical product of
the percentage of component A2) and component A3)” (Br. 8 (referring to
BASF, col. 19,11. 4—16)). The Appellants also admit, as they should, that
BASF teaches “terpolymers are preferably prepared via solution
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Application 13/504,576
polymerization” (Br. 9 (quoting BASF, col. 13,11. 42 44)). Although BASF
does not explicitly state that the terpolymer was prepared by polymerizing
the monomers in a continuous, steady-state mode, such a polymerization
mode was well known as a preferred technique to ensure “that the
concentration of all of the reactants and the constitution of the copolymers
. . . formed remain practically constant over the reaction time” (Weber || 1,
22); see also Liebig, col. 2,11. 26—35), which discloses—in the context of
bulk polymerization—that continuous, stationary (i.e., steady-state)
conditions are achieved after about 0.5—24 hours. Given these teachings in
the prior art references, we agree with the Examiner that a person of
ordinary skill in the art would have conducted BASF’s solution
polymerization in a continuous, steady-state mode in order to ensure that the
monomer concentrations and terpolymer composition remain relatively
constant during reaction, as suggested by Weber and Liebig. Additionally, a
person of ordinary skill in the art would have determined—through nothing
more than routine experimentation and using Liebig’s disclosure as a general
guide—the times required to achieve steady-state in a solution
polymerization process.
The Appellants argue that three claim elements are critical, but the
Examiner improperly “dissect[ed] the process claim into its separate and
distinct essential elements” (Br. 5—6). According to the Appellants, none of
the secondary references “teach, suggest or show any interest in the recited
properties of copolymer A) and the technical benefits that result from [the
Appellants’] process” (id. at 7). The Appellants’ arguments are misplaced.
As the Examiner finds (Ans. 3), performing the polymerization in a
continuous, steady-state solution polymerization mode does not appear to be
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critical to achieving the specified “soil particles” content. Specifically, the
current Specification discloses that although solution polymerization is
preferred, bulk polymerization may also be used (Spec. 4,11. 33—55).
Similarly, the Specification states that although continuous, steady-state
conditions are preferred, the polymerization can be performed in a batchwise
or semi-batchwise fashion {id. at 5,11. 6—15). Indeed, as the Examiner points
out (Ans. 3), the original claims recite that “bulk or solution
polymerization”—without regard to whether steady-state conditions are
achieved—results in a product with “reduced soil particle content” (original
claim 1). Therefore, contrary to the Appellants’ position (Br. 8—9), it would
reasonably appear that BASF’s terpolymer would possess a “soil particles”
content within the range recited in current claim 10. The Appellants do not
direct us to persuasive evidence to the contrary. See, e.g., In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (“[W]e think that it was reasonable for the
PTO to infer that the polymerization by both Smith and Spada of identical
monomers, employing the same or similar polymerization techniques, would
produce polymers having the identical composition.”); In re Thorpe, 111
F.2d 695, 697—98 (Fed. Cir. 1985) (“The examiner compared the product of
the prior art, and the product of Thorpe’s process as described by Thorpe, in
accord with standard examination practice . . . .”).
The Appellants rely on the comparative experimental data reported in
their Specification (Table 1) as demonstrating that solution polymerization
“does make a difference” and is “essential” (Br. 9). We agree with the
Examiner (Ans. 8; Final Act. 9—10) that the proffered evidence is
insufficient. The Appellants do not direct us to any comparative examples
comparing solution polymerization against bulk polymerization, much less
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Application 13/504,576
continuous, steady-state solution polymerization versus other types of
polymerization modes. Table 1 appears to show that when the
“[mathematical product of percentages by weight of components A2) and
A3)” is outside the range recited in claim 10, certain properties including
“[s]oil particle content” are outside the range specified in the claim. But, as
the Examiner finds (Final Act. 9—10) and the Appellants concede (Br. 8),
BASF teaches a terpolymer that meets the “mathematical product” limitation
recited in claim 10. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
For these reasons, we uphold the Examiner’s rejection of claim 10.
With respect to claims 20 and 21, the Appellants argue that these
claims further define the “mathematical product” to narrower ranges (Br.
15). The Examiner calculates, however, the “mathematical product” for
BASF’s disclosed terpolymer to be 52.36 wt.%2 (06-05-14 Non-Final Act.
3), which falls squarely within the ranges recited in these claims.
With respect to claims 22 and 28, the Appellants contend that these
claims recite further limitations on the “mathematical product” (43.9—57.6
wt.%2), steady-state operation time (144 hours), and soil particle content (5—
12 mm2 of soil particles/m2) (Br. 16). Again, however, the Appellants do
not direct us to any evidence that BASF’s polymer does not possess the
specified soil particles content.
Finally, with respect to claims 23 and 24, the Appellants argue that
these claims further define a range of 72.5—81.2 wt.% for component Al).
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BASF, however, discloses 74 wt.%, which falls squarely within the range
specified in these claims.
For these reasons and those well-stated by the Examiner, we sustain
the rejection of all claims on appeal.
IV. SUMMARY
The Examiner’s final decision to reject claims 10, 11, and 13—28 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).
AFFIRMED
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