Ex Parte 8067215 et al

Patent Trial and Appeal Board

Aug 1, 2016

95002219 (P.T.A.B. Aug. 1, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,219 09/13/2012 8067215 10007-115RX1 3938
96039 7590 08/01/2016
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
KUNZ, GARY L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/01/2016 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
____________

SNF HOLDING COMPANY
Requester and Respondent

v.

CIBA SPECIALITY CHEMICALS
WATER TREATMENTS LIMITED
Patent Owner and Appellant
____________

Appeal 2016-004385
Reexamination Control 95/002,219
Patent 8,067,215 B2
Technology Center 3900
____________

Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and RAE LYNN P.
GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject claims 1–46 as unpatentable under 35 U.S.C.
§§ 102(b) and 103(a) in the above-identified inter partes reexamination of
U.S. 8,067,215 B2. The Board’s jurisdiction for this appeal is under 35
U.S.C. §§ 6(b), 134, and 315.

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We affirm the Examiner’s decision that claims 1–46 are unpatentable.
However, because our reasoning and bases for the rejections differ from the
Examiner’s, we designate the affirmance as new grounds of rejection under
37 C.F.R. § 41.77(b).
The Third Party Requester appealed the Examiner’s decision not to
adopt proposed rejections under 35 U.S.C. § 103(a). Because we affirmed
the rejection of all the pending claims, we did not reach the Third Party
Requester’s appeal.

I. BACKGROUND
The patent in dispute in this appeal is U.S. Pat. No. 8,067,215 B2
(“the ’215 patent”) which issued November 29, 2011.
A request for inter partes reexamination of the ’215 patent under 35
U.S.C. §§ 311–318 and 37 C.F.R. §§ 1.902–1.997 was filed September 13,
2012 by a Third Party Requester. The Requester is SNF Holding Company
(“Requester”). Requester Respondent Br. 2. The real party in interest for
the ’215 patent is Ciba Specialty Chemicals Water Treatments Limited
(“Patent Owner”). Patent Owner (“PO”) Appeal Br. 3.
An oral hearing was held June 15, 2016 with both parties in
attendance. A transcript of the hearing will be entered into the record in due
course.
The claimed subject matter of the ’215 patent relates to processes for
preparing a polymer of ethylenically unsaturated monomers, where the
monomers are obtained from nitrile conversion in a biocatalyzed reaction or
fermentation process. The monomers are polymerized in the presence of
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fermentation broth or components of a fermentation broth. ’215 patent, col.
5, ll. 16–23. The polymer formed by the process has an intrinsic viscosity of
at least 3 dl/g measured using a suspended level viscometer in 1 M sodium
chloride at 25°C. An example of a monomer is acrylamide, produced from
the nitrile acrylonitrile, where polymerization of the monomer results in
polyacrylamide.
The biocatalyst is described in the ’215 patent as capable of
converting a substrate, such as a nitrile, into the desired monomer, such as
acrylamide. ’215 patent, col. 5, ll. 48–51; col. 6, ll. 4–13. “Generally [the
biocatalyst] would be a microorganism that is capable of generating
enzymes suitable for the conversion of interest.” Id. at col. 5, ll. 49–51. For
example, a microorganism producing a nitrile hydratase or a nitrilase can be
utilized to catalyze the conversion of acrylonitrile to acrylamide. Id. at col.
1, ll. 31–34; col. 3, ll. 21–27. The ’215 patent teaches that the use of a
biocatalyst to make the acrylamide monomer, and the subsequent production
of polyacrylamide from the acrylamide monomer made by the biocatalyzed
reaction, were known prior to the filing date of the ’215 patent. Id. at cols.
1–4.
The ’215 patent teaches that “small amounts of . . . impurities may
adversely affect the molecular structure of the polymer [made from a
monomer produced in a biocatalyzed reaction] and in such circumstances
would render the polymer product unsuitable for the intended application.”
Id. at col. 3, ll. 41–44. As a result, the ’215 patent states that it is “standard
practice to avoid the presence of contaminants in monomers to be
polymerised in order to prevent changes to the intended molecular structure
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and properties of the polymer.” Id. at col. 3, ll. 45–48. The patent states that
contaminants that should normally be avoided include the microorganism,
cellular materials from it, and components of the fermentation broth. Id. at
col. 3, l. 53 to col. 4, l. 25. The ’215 patent states that “[w]e have found that
it is possible to manufacture polymers having specifically designed features
and properties without the need for removing either the biocatalyst or the
fermentation broth.” Id. at col. 4, ll. 54–57.

II. REJECTIONS
Claims 1–46 are pending and stand rejected by the Examiner as
follows:
1. Claims 1–11, 15, 17, 38–41, and 46 under 35 U.S.C. § 102(b) (pre-
AIA) as anticipated by WO ’680.1 RAN 8.
2. Claims 1–11, 13–17, 38– 41, and 46 under 35 U.S.C. § 103(a)
(pre-AIA) as obvious in view of WO ’680. RAN 8, 19.
3. Claims 1–11 and 13–17 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of WO ’680, JP ’714,2 Munk3 and Kulicke.4 RAN 22.

1 Murao et al. (WO 03/080680 A1, publ. Oct. 2, 2003) (hereinafter “WO
’680”). All references to WO ’680 are to the English translation.
2 Seki (JP 10-316714 A; publ. Dec. 2, 1998) (hereinafter “JP ’714”). All
references to JP ’714 are to the English translation.
3 Peter Munk et al., Some Solution Properties of Polyacrylamide, 13
Macromolecules, 871–75 (July/Aug. 1980) (hereinafter “Munk”).
4 W. M. Kulicke et al. PREPARATION, CHARACTERIZATION, SOLUTION
PROPERTIES AND RHEOLOGICAL BEHAVIOUR OF POLYACRYLAMIDE, Prog.
Polym. Sci., 373–468 (1982) (hereinafter “Kulicke”).
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4. Claims 18–28, 33–35, 37, and 42–45 under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by WO ’680 as evidenced by Kulicke and JP ’714.
RAN 27.
5. Claims 12 and 18–37 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of WO ’680, JP ’714, and Kulicke. RAN 33.
III. CLAIM
Claim 1 is illustrative of the claimed subject matter and reads as
follows (underlining and brackets indicate the changes relative to the
original claims):
1. A process for preparing a polymer of an ethylenically
unsaturated monomer, in which the monomer is obtained from a
nitrile in a biocatalysed reaction or a fermentation process, and
wherein the monomer contains [cellular material and/or
components of] a fermentation broth from the biocatalysed
reaction or the fermentation process, forming the polymer by
polymerising the ethylenically unsaturated monomer or a
monomer mixture comprising the ethylenically unsaturated
monomer and [cellular material and/or components of a] the
fermentation broth in the presence of a redox and/or thermal
initiator and the formed polymer exhibits an intrinsic viscosity of
at least 3 dl/g measured using a suspended level viscometer in 1
M sodium chloride at 25°C.

IV. CLAIM INTERPRETATION
All the claims in this appeal comprise a polymerizing step in which
“ethylenically unsaturated monomer or a monomer mixture comprising the
ethylenically unsaturated monomer and . . . fermentation broth” is
polymerized. The ’215 patent teaches that the fermentation broth “may
include any of the typical ingredients used for culturing the microorganism
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and also may include products and by-products produced by the
microorganism.” ’215 patent, col. 6, ll. 44–47. The patent also teaches that
the fermentation broth may include “any other organic or inorganic
compounds that may be required to ensure successful growth of the specific
microorganism.” Id. at col. 6, ll. 59–61. Based on this disclosure, we
interpret “fermentation broth” to be a media which is suitable for culturing a
microorganism.

V. FINDINGS OF FACT
The following findings of fact (“FF”) are pertinent to the
determination of whether the claims are anticipated by, or obvious in view
of, the cited prior art.
A. WO ’680
FF1.
Acrylamide polymers have a wide variety of applications.
Examples include use as flocculants, agents for paper
manufacturing, soil conditioners, agents for recovering
petroleum, thickeners for drilling fluid, and polymer absorbers.
An acrylamide polymer is required to have properties such that
it has a very high molecular weight . . . in order to be put to use
in such applications.
WO ’680, 2:10–15.
FF2.
In general, the use of an aqueous solution with a high acrylamide
content results in the formation of polymers with higher
molecular weights and the generation of an aqueous solution of
highly viscous polyacrylamide.
Id. at 3:13–15.
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FF3.
Acrylamide is a highly toxic substance that is designated
as a deleterious substance. . . . Recently, it is preferable to
decrease the amount of acrylamide used for producing
polyacrylamide that is employed in a variety of industries
because of the public interest in environmental issues and energy
issues. Thus, the demand for the production of highly viscous
polyacrylamide from an aqueous solution with a low acrylamide
content is increasing. Specifically, an object of the present
invention is to provide an acrylamide solution that can provide
polyacrylamide with higher viscosity from an aqueous solution
with a low acrylamide content and polyacrylamide produced
from such acrylamide solution.
Id. at 3:12–22.
FF4.
[The inventors] have found that an aqueous solution of
acrylamide containing saccharides can provide an aqueous
solution of polyacrylamide with a higher viscosity than that of
polyacrylamide obtained from an aqueous solution with an
equivalent acrylamide content that contains no saccharide. This
has led to the completion of the present invention. They also
unexpectedly found that viscosity could be dramatically
enhanced with a saccharide content of as low as 100 mg/l or
lower . . . .
Id. at 3:24–29.
FF5.
(13) a process for producing an aqueous solution of acrylamide
containing saccharide, wherein acrylamide is produced with the
use of a biocatalyst that has nitrile hydratase activity and contains
saccharide.
Id. at 5:4–6.
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FF6.
The term “aqueous solution of acrylamide” used in the
present invention refers to an aqueous solution wherein
acrylamide accounts for 40% to 60% by mass, and preferably
50% by mass, of such solution. When a polymerization initiator
such as ammonium persulfate is added to the aqueous solution of
acrylamide, acrylamide is polymerized, and an aqueous solution
of polyacrylamide is then generated.
Id. at 5:9–13.
FF7.
Examples of a saccharide-containing solution prepared with the
use of an organism include a supernatant obtained via
centrifugation of a suspension of organisms such as cultured
microorganisms and a solution prepared from the
aforementioned supernatant via purification or other means.
Id. at 5:23–26.
FF8.
A biocatalyst that has the nitrile hydratase activity of the
present invention includes an organism that naturally or
artificially has nitrile hydratase activity . . . .
. . . .
An organism and a processed product thereof include
those that have been subjected to washing or treatment with an
agent according to need . . . .
The “biocatalyst” used in the present invention includes an
organism such as the aforementioned microorganism, a
suspension containing such organism, and a processed product
thereof.
Id. at 7:8–9, 19–24.
FF9.
Alternatively, the aqueous solution of acrylamide produced from
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acrylonitrile with the use of a biocatalyst, with or without
purification, may also be used, in which acrylamide content is
adjusted to 40% to 60% by weight.
Id. at 8:11–13.
FF10.
When the aforementioned aqueous solution of acrylamide
containing saccharide is produced from acrylonitrile with the use
of a biocatalyst, . . . the biocatalyst is added in such a manner that
the content thereof becomes 0.1 mg to 100 mg per liter of the
aqueous solution of acrylamide after the reaction, and
acrylonitrile is brought into contact with the biocatalyst to initiate
the reaction.
Id. at 8:14–19.
FF11.
The thus obtained aqueous solution of acrylamide can be
subjected to a process of purification depending on the
application thereof. Examples of a process for purification
thereof include filtration through a filter (JP Patent Publication
(Kokoku) No. 5-49273 B (1993)) and purification with the aid of
air bubbles (JP Patent Application No. 11-254151).
Id. at 9:4–8.
FF12.
The thus obtained aqueous solution of acrylamide can be
used as a starting material to obtain an aqueous solution of
polyacrylamide in the same manner as with the conventional
method for acrylamide polymerization. . . . Such aqueous
solution of polyacrylamide can be utilized in various
applications, such as in a flocculant, an agent for paper
manufacturing, a soil conditioner, an agent for recovering
petroleum, a thickener for drilling fluid, and a polymer absorber,
as an acrylamide polymer.
Id. at 9:9–18.
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FF13.
Example 1 of WO ’680 describes a supernatant comprising a
saccharide produced by Rhodococcus rhodochrous J1 strain. Id. at 10:10–
12:8. The Rhodococcus “was subjected to aerobic culture in a medium (pH
7.0) that was 2% glucose, 1% urea, 0.5% peptone, 0.3% yeast extract, and
0.05% cobalt chloride (‘%’ is by mass) at 30°C.” Id. at 10:18–20. The
Rhodococcus was cultured in the medium, filtered, and washed with
phosphate buffer to obtain a cell suspension. Id. at 10:13–24. The cell
suspension was centrifuged and the “obtained supernatant was used as a
saccharide-containing solution.” Id. at 10:25–27.
FF14.
Example 1 further teaches:
Four separate aqueous solutions of 50% acrylamide by
mass (1 liter each, Mitsubishi Rayon Co., Ltd.) were provided,
and 0.07 ml, 0.2 ml, 3 ml, and 4 ml of the prepared saccharide-
containing solutions were independently added to each thereof to
prepare aqueous solutions of acrylamide containing saccharides.
Id. at 11:17–20.
FF15.
Example 1 further teaches:
The prepared aqueous solution of acrylamide containing
saccharide was diluted with distilled water to bring the
acrylamide concentration to 15% by mass.
Id. at 11:24–25.
FF16. Example 1 further comprises adding ammonium persulfate and
sodium bisulfite to initiate polymerization of the acrylamide to form the
polyacrylamide. Id. at 11:27–29.
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FF17. Table 1 of WO ’680 shows that as the saccharide content
increased, the viscosity of the aqueous polymer solution increased. Id. at
12:15–17.
FF18. Example 2 of WO ’680 shows the production of acrylamide
from acrylonitrile with the use of a microbial enzyme. Id. at 12:19. A cell
suspension comprising saccharide was prepared as in Example 1. Id. at
12:21–23. The cell suspension was added to a flask containing an aqueous
solution of sodium acrylate, acrylonitrile was fed to the flask, and
acrylamide was produced until the concentration was 47%. Id. at 12:21 to
13:5. “An aqueous solution of polyacrylamide was prepared from the
resulting aqueous solution of acrylamide in the same manner as in Example
1.” Id. at 13:20–21.
B. JP ’714
FF19.
An object of the present invention is to provide a high molecular
weight acrylamide polymer capable of being dried at a high
temperature without insolubilization.
JP ’714, ¶ 57
FF20.
Method for producing an acrylamide polymer, characterized by
obtaining an acrylamide polymer by effecting aqueous solution
polymerization of an acrylamide produced by an enzyme process
either alone or together with another copolymerizable monomer
at a concentration range of 10 to 60 wt%, and then drying the
obtained acrylamide polymer at 95°C or higher.
Id. at 2:8–14.
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FF21.5
[0013] In the present invention, an acrylamide produced using an
enzyme method means an acrylamide produced by hydrating
acrylonitrile by means of the catalytic activity of a nitrile-
hydratase. Nitrile-hydratases are enzymes that convert nitrile
compounds into the corresponding amides, and are derived from
microorganisms . . . .
FF22.
[0014] The nitrile-hydratase can be used as a culture medium of
the above-mentioned micro-organisms, resting bacteria or
immobilized bacteria separated from a culture medium.
The culture medium is described on page 9, lines 15–25 of JP ’714. It
is used to culture the bacteria and, therefore, is a fermentation broth as that
term is used in the ’215 patent. See Claim Interpretation section supra.
FF23.
[0015] . . . the aqueous acrylamide solution following the
hydration reaction can be used without further modification, but
can also be used after increasing the acrylamide concentration by
means of a condensation procedure.
FF24.
[0016] In the present invention, acrylamide polymer means a
homopolymer of acrylamide or a copolymer of acrylamide and
one or more unsaturated monomers that are copolymerizable
with acrylamide.
FF25.
[0020] In the production method of the present invention, the
concentration of acrylamide in the aqueous solution during
polymerization (if a homopolymer of acrylamide is used) or the

5 The bracketed numbers refer to the numbered paragraphs of JP ’714.
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total concentration of acrylamide and monomers co-
polymerizable therewith in the aqueous solution during
polymerization (if an acrylamide copolymer is used) is generally
10 to 60 wt%, and more preferably 20 to 50 wt%. If this
concentration is less than 10 wt%, it is difficult to obtain an
acrylamide polymer having a high molecular weight . . . .
FF26. JP ’714 teaches that the polyacrylamide obtained by its
methods is “a high molecular weight polymer having a viscosity of 2,000
mPa·s or higher, or even 3,000 mPa·s or higher. A viscosity of 2,000 mPa·s
corresponds to an acrylamide polymer molecular weight of approximately
10,000,000.” Id. ¶ 24.
FF27.
A biocatalyst was obtained by isolating and washing the obtained
strain, and then immobilizing on polyacrylamide gel using a
normal method.
Id. at 9:15–17.
FF28.
An aqueous solution having an acrylamide concentration of 30%
was obtained by suspending the J-1 strain biocatalyst in ion
exchanged water and gradually adding and stirring acrylonitrile
having a pH of 7 at 5°C. Following completion of the reaction,
an aqueous acrylamide solution having a concentration of 50%
(sample 1) was obtained by separating the biocatalyst, carrying
out filtration using a 0.45 µm filter, and then concentrating under
reduced pressure.
Id. at 9:27–34.
FF29.
A mixture obtained by adding 2 parts of 98 wt% acrylic acid to
348 parts of the 50% aqueous acrylamide solution of Sample 1
was weighed into a 1 L beaker. 400 parts of ion exchanged water
were added to this mixture, the mixture was neutralized using
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caustic soda, ion exchanged water was added to give a total of
797 parts, the temperature of the liquid was adjusted to 10°C, and
the solution was transferred to a 1 L Dewar flask. This solution
was purged with nitrogen gas for 30 minutes, and polymerization
was started after adding 1.5 parts of a 10% aqueous solution of
2,2'-azobis (2-amidinopropane) dihydrochloride, 1 part of a 0.2%
aqueous solution of sodium hydrosulfite and 0.5 parts of a 0.2%
aqueous solution of t-butyl hydroperoxide as polymerization
initiators.
Id. at 10:32 to 11:10 (¶ 29).

C. Watanabe ’855
FF30.
Any microorganisms capable of hydrolyzing acrylonitrile
to yield acrylamide can be used in the invention irrespective of
the taxonomical classification. . . .
. . . .
In the preparation of immobilized cells using such
microorganisms, the microorganism may be used in any of the
forms of a cell-containing culture medium (cultured medium),
washed cell (resting cells) disrupted cells, and the like.
Watanabe ’855, col. 3, ll. 8–10, 22–26.

VI. DISCUSSION
Claim 1
The process recited in claim 1 requires polymerizing (1) “an
ethylenically unsaturated monomer, in which the monomer is obtained from
a nitrile in a biocatalysed reaction or a fermentation process” or a monomer
mixture comprising it in the presence of a redox and/or thermal initiator.
The monomer also contains (2) “fermentation broth from the biocatalysed
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reaction or the fermentation process.” The formed polymer (3) “exhibits an
intrinsic viscosity of at least 3 dl/g measured using a suspended level
viscometer in 1 M sodium chloride at 25°C.”
The production of (1) an ethylenically unsaturated monomer in a
reaction catalyzed by a biocatalyst was known prior to the filing date of the
’215 patent as established by both WO ’680 and JP ’714, as well as
admissions in the ’215 patent (see cols. 1–4). Both cited patent documents
describe a microorganism producing an enzyme with nitrile hydratase
activity (the “biocatalyst”) (FF5, FF8, FF20, FF21, FF27) used to catalyze
the conversion of acrylonitrile to acrylamide (FF10, FF18, FF28) – an
ethylenically unsaturated monomer within the scope of claim 1. The
acrylamide monomer is polymerized in both publications in the presence of
initiators to form a polymer (FF4, FF6, FF12, FF16, FF20, FF29). The main
issues in all the rejections are whether the cited publications describe (2)
polymerizing monomer and fermentation broth; and (3) a polymer with an
intrinsic viscosity of at least 3 dl/g. We address each of these issues below.

A. Presence of fermentation broth in the process of claim 1
1. WO ’680
In claim 1 and WO ’680, the biocatalyst is added to acrylonitrile to
prepare the acrylamide monomer utilized in the subsequent polymerizing
step to make the polyacrylamide polymer. (Claim 1 is not limited to
acrylamide.) Example 1 of WO ’680 describes the preparation of the
biocatalyst. The biocatalyst Rhodococcus rhodochrous J1 is cultured in
culture medium (the “fermentation broth”). FF13. Next, the Rhodococcus is
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filtered and washed with phosphate buffer. Id. Consequently, it appears that
the medium in which the Rhodococcus is cultured is washed away. There is
no evidence before us that there is culture media remaining after the wash
step of Example 1. Consequently, this example is insufficient to establish
the presence of fermentation broth in the biocatalyst produced in WO ’680.
WO’680 has broader disclosure describing the preparation of a
microorganism as a biocatalyst for the production of acrylamide monomer.
WO ’680 teaches preparation of a supernatant from cultured
microorganisms, but does not specifically state whether the supernatant is a
phosphate buffer as it appears to be in Example 1 or the culture media. FF7.
WO ’680 also states that “the aqueous solution of acrylamide
produced from acrylonitrile with the use of a biocatalyst, with or without
purification, may also be used, in which acrylamide content is adjusted to
40% to 60% by weight.” FF9. It is not sufficiently clear from this statement
whether “with or without purification” refers to purification of the
acrylamide or biocatalyst, or both. Subsequently, purification of the
acrylamide is described (FF11), suggesting that it is the acrylamide that may
or may not be purified.
The Examiner stated that an “acrylamide polymerization without
purification of the acrylamide from the fermentation broth would contain a
fermentation broth containing whole cells, fractured cells and components of
cells.” RAN 9. However, the Examiner did not provide factual support for
this statement. Example 1 of WO ’680 teaches that the acrylamide is
produced in an aqueous solution diluted with distilled water (FF14, FF15).
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WO ’680 does not describe the aqueous solution as a fermentation broth as
stated by the Examiner.
In sum, we conclude that the statement “with or without purification”
(FF9) is insufficient in the context of the entire disclosure of WO ’680 to
establish that WO ’680 describes or suggests the presence of fermentation
broth in the biocatalyst used to polymerize the acrylamide into the
polyacrylamide polymer.
Requester contends that the “fermentation broth” can constitute the
saccharide present in the supernatant obtained from the microorganisms.
Requester Respondent Br. 7. However, we have not adopted this narrow
definition of “fermentation broth” to mean saccharide, alone. The
fermentation broth must be suitable for culturing a microorganism.
Requester has not provided evidence that saccharide alone would be suitable
for this purpose. Consequently, Requester’s argument is unpersuasive.
Requester also refers to the presence of “fermentation broth” in
Example 2 of WO ’680. Id. Example 2 describes the use of a cell
suspension as in Example 1. FF18. The cell suspension was prepared after
washing with phosphate buffer. FF13. There is insufficient evidence that
the cell suspension still comprises the aerobic culture medium in which the
cells were originally grown after the washing step.
Example 2 also describes adding the cell suspension to an “aqueous
solution” of sodium acrylate and acrylonitrile. FF18. As already discussed,
we have not been pointed to evidence that the aqueous solution is a
fermentation broth as that term is defined in the ’215 patent.
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In sum, we have not been directed to adequate evidence that WO ’680
describes the presence of a fermentation broth in the monomer or monomer
mixture utilized in the polymerizing step.

2. JP ’714
JP ‘714 teaches that the “nitrile-hydratase can be used as a culture
medium of the above-mentioned micro-organisms [the “biocatalyst” used to
make the monomer], resting bacteria or immobilized bacteria separated from
a culture medium.” FF22. The hydratase is used to make the acrylamide
that is polymerized in subsequent steps. FF20, FF21. JP ’714 further
teaches that “the aqueous acrylamide solution following the hydration
reaction [enzyme reaction with the hydratase] can be used without further
modification.” FF23. The “aqueous acrylamide solution following the
hydration reaction” would contain the bacteria and culture medium. If used
“without further modification” (FF23), the subsequent polymerization
reaction to produce polyacrylamide would contain the culture medium,
namely “fermentation broth,” as required by claim 1. Thus, while there is an
example in JP ’714 which describes washing the microorganism
(“biocatalyst”) (FF27), there is additional express disclosure in JP ’714 of
using the microorganism with culture media, namely, “fermentation broth.”
Patent Owner did not adequately address this more general disclosure in JP
’714 in their Appeal Brief in which a culture medium could be present in the
acrylamide used to prepare the polyacrylamide. Consequently, we conclude
that JP ’714 meets the limitation of claim 1 of “forming the polymer by
polymerising the ethylenically unsaturated monomer or a monomer mixture
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comprising the ethylenically unsaturated monomer and the fermentation
broth.”

3. Watanabe ’855
Watanabe ’8556 like JP ’714 has disclosure of using the
microorganisms in “the form[] of a cell-containing culture medium (cultured
medium).” FF30. Consequently, for the same reasons as for JP ’714, we
conclude that Watanabe ’855 meets the limitation of claim 1 of “forming the
polymer by polymerising the ethylenically unsaturated monomer or a
monomer mixture comprising the ethylenically unsaturated monomer and
the fermentation broth.”

B. “intrinsic viscosity of at least 3 dl/g”
The ’215 patent discloses that the “process of the present invention is
particular[ly] suitable for preparing high molecular weight water-soluble or
water swellable polymers.” ’215 patent, col. 7, ll. 30–32. The patent
discloses that “[p]referably the polymers are high molecular weight
substantially water-soluble that exhibit an intrinsic viscosity (IV) of at least
3 dl/g (measured using a suspended level viscometer in 1M sodium chloride
at 25° C.).” Id. at col. 7, ll. 33–36. The ’215 patent does not attribute a
special property or result to polymers having an intrinsic viscosity of at least
3 dl/g.

6 Watanabe et al. (US 4,421,855, issued Dec. 20, 1983) (hereinafter
“Watanabe ’855”).
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1. WO ’680
The Examiner found that WO ’680 describes a formed
polyacrylamide polymer which inherently possessed “an intrinsic viscosity
of at least 3 dl/g measured using a suspended level viscometer in 1 M
sodium chloride at 25°C” as recited in claim 1. RAN 11.
The Examiner’s finding is not supported by a preponderance of the
evidence. The Examiner stated that “when 1 mg/L – 60 mg/L of saccharide
were added to the acrylamide solution, the viscosity ranged from 130,000
mPa-s to 220,000 mPa-s.” Id. However, as indicated by Patent Owner,
these values are for the dynamic viscosity which is different from intrinsic
viscosity. PO Appeal Br. 7. The Examiner did not establish that such values
would meet the intrinsic viscosity requirement of the claim, particularly
when WO ’680 teaches that the increased viscosity observed with its
polyacrylamide is a result of the saccharide content. FF4, FF17. Patent
Owner supported this argument with a Declaration by Bjorn Langlotz,
Ph.D., a laboratory manager at BASF Advanced Materials & Systems
Research. Langlotz Decl. ¶ 1. Dr. Langlotz testified:
WO ‘680 references only dynamic viscosity. Thus, when WO
‘680 mentions an increased viscosity at page 12, Table 1 based
on increasing saccharide content, it is referring to increasing the
dynamic viscosity of the solution. This increase in dynamic
viscosity of the solution described in WO ‘680 by increasing the
saccharide content would have no significant effect on the
intrinsic viscosity of the polyacrylamide polymer in the solution
at the concentrations provided in WO ‘630 (i.e., would be within
the range of experimental error). Thus, this increase in dynamic
viscosity does not relate to an increase in the intrinsic viscosity
of the polyacrylamide polymer. This increase in dynamic
viscosity by increasing saccharide content in WO ‘680 also does
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not mean that WO ‘680 is teaching an intrinsic viscosity that is
as high or higher than that of the prior art.
Langlotz Decl. ¶ 9. The Examiner rejected Dr. Langlotz’s argument about
the saccharide content not having a significant effect on the intrinsic
viscosity of the polymer, but did not provide adequate factual basis to
support his position. RAN 55. Further, the definition cited by Requester
defines intrinsic viscosity as reflecting “the capability of a polymer in
solution to enhance the viscosity of the solution.” Requester Respondent
Br., Exhibit 2. Thus, Requester’s definition of intrinsic viscosity is
consistent with Dr. Langlotz’s testimony.
The Examiner also found that based “upon the similarity between the
processes of JP ’714 and that of WO ’680, it is reasonable to conclude that
the polyacrylamide taught in WO ’680 has a similar intrinsic viscosity
(2,000 mPa-s) and molecular weight (about 10 million).” RAN 23.
The Examiner’s statement is not supported by a preponderance of the
evidence for several independent reasons.
First, WO ’680 utilized saccharides to increase the polyacrylamide’s
viscosity (FF4, FF17), while JP ’714 does not. Thus, the two patent
publications utilized different technologies to achieve a desired viscosity.
We have not been directed to evidence that the different technologies would
result in the same intrinsic viscosities.
Second, the polymerization initiators utilized in the two publications
are not the same. WO ’680 uses ammonium persulfate and sodium bisulfite
in its example (FF16); JP ’714 describes the use of 2,2' -azobis (2-
amidinopropane) dihydrochloride, sodium hydrosulfite, and t-butyl
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hydroperoxide (FF29). Kulicke teaches that the type of polymerization
initiator affects the molecular weight of the polymer:
FF31. “The polymerization with persulfate, AIBN, and other initiators
can lead to residual ions or radicals in the polymers. AIBN as initiator can be
used for bulk polymerization but low molecular weight polymers are
produced only.” Kulicke 378 (footnotes omitted).
FF32.
From the fact that under more drastical polymerization
conditions – namely high amounts of a persulfate-bisulfite
initiator at 70°C – branched PAAm [(polyacrylamide
homopolymers)] with only a few long chain branches are
produced, it is justified to conclude that linear PAAm will be
formed by the mild polymerization mentioned above, see section
2.3. Table 3 presents examples of polymerization conditions,
which have been used to prepare high molecular weight
polymers.
Id. at 379.
Consequently, because of the difference in initiator, it cannot be
presumed that the molecular weight of the polymer produced in JP ’714
would reasonably predict the molecular weight of the polymer produced by
the process described in WO ’680.
Third, the Examiner’s contention that WO ’680 produces “very high
molecular weight polyacrylamide” is not supported by the evidence we have
been directed to consider. RAN 56. WO ’680 does not describe the
molecular weight of the polyacrylamide formed by its polymerization
process. WO ’680 teaches that acrylamide is toxic and that “it is preferable
to decrease the amount of acrylamide used for producing polyacrylamide.”
FF3. To achieve this reduction in acrylamide content, WO ’680 teaches the
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addition of saccharide to the polymerization solution, while maintaining a
low acrylamide content. FF3–FF5. Although WO ’680 teaches that “the use
of an aqueous solution with a high acrylamide content results in the
formation of polymers with higher molecular weights” (FF2), we have no
discussion in WO ’680 as to what the effect on molecular weight is when a
lower acrylamide content is used as taught by WO ’680. Thus, the
Examiner’s finding that WO ’680 produces “very high molecular weight
polyacrylamide” is not necessarily consistent with the express teachings of
the invention of WO ’680, which uses a lower acrylamide content.
Requester contends that high molecular weight polyacrylamide is
necessary for it to serve as a flocculant, one of the uses described in WO
’680 for polyacrylamide (FF1, FF12), and therefore the polyacrylamide
produced in WO ’680 must have a high molecular weight. Requester
Respondent Br. 4. However, this argument ignores the fact that the object of
WO ’260 is to reduce the acrylamide content while maintaining the viscosity
by using a saccharide. FF4. WO ’260 is silent as to molecular weight.
Requester did not provide adequate evidence the molecular weight of the
polymer in WO ’680 must be high, and as high as the polymer in JP ’714.
In sum, we find that the Examiner erred in finding that WO ’680
necessarily discloses or suggests a polymer with the claimed intrinsic
viscosity.
2. JP ’714
JP ’714 describes a high molecular weight polymer made from a
“monomer [] obtained from a nitrile in a biocatalysed reaction or a
fermentation process” (FF21) which has “a viscosity of 2,000 mPa·s or
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higher, or even 3,000 mPa·s or higher.” FF26. JP ’214 teaches that a
“viscosity of 2,000 mPa·s corresponds to an acrylamide polymer molecular
weight of approximately 10,000,000.” Id. The following findings of fact
establish that the formed polymer in JP ’714 having a molecular weight of
approximately 10,000,000 “exhibits an intrinsic viscosity of at least 3 dl/g
measured using a suspended level viscometer in 1 M sodium chloride at
25°C” as recited in claim 1.
FF33. Figure 13 of Kulicke shows that as the molecular weight of the
polyacrylamide polymer increases, the intrinsic viscosity also increases. The
figure shows that “an intrinsic viscosity of 3 dl/g occurs at a molecular
weight of about 800,000 when measured in water at 25°C.” RAN 24;
Kulicke 406.
FF34. Munk teaches that there is “good agreement between our
dependence of the intrinsic viscosity on the molecular weight.” Munk 875
(“Conclusions”).
FF35. Table III of Munk shows that as the molecular weight of the
polyacrylamide polymer increases, the intrinsic viscosity of the polymer also
increases. Table III shows that at 1.0 M NaCl a polyacrylamide sample
having a molecular weight of 11,200,000 has an intrinsic viscosity of “1790”
or 17.9 dl/g. See RAN 23, 25; Munk 874.
Thus, Kulicke and Munk teach that molecular weight can be relied
upon as evidence of a polyacrylamide polymer’s intrinsic viscosity. Since
the molecular weight of JP ’714 is greater than 800,000, it is reasonable to
find that the polymer’s intrinsic viscosity is greater than 3 dl/g (FF33) and
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closer to Munk’s intrinsic viscosity of 17.9 dl/g for a polymer of molecular
weight of 11,200,000 (FF35).

3. Anticipation by WO ’680
The rejection of claim 1 as anticipated by WO ’680 (Ground 1 above)
is reversed because the preponderance of the evidence does not establish that
WO ’680 meets the requirements of claim 1 of the presence of a
fermentation broth in the monomer nor the viscosity requirement.
Dependent claims 2–11, 15, 17, and 38–41 are reversed for the same
reasons. (Claim 46 is addressed separately below.)
4. Obviousness based on WO ’680
The Examiner alternatively rejected independent claim 1, and
dependent claims 2–11, 15, 17, and 38–41 as obvious in view of WO ’680.
RAN 8. The Examiner stated that it would have been obvious to optimize
the viscosity of an aqueous polyacrylamide solution by employing a higher
concentration of acrylamide monomer and an increasing the amount of
saccharide. Id. at 12. However, the Examiner did not provide evidence that
intrinsic viscosity was recognized as a variable which the skilled worker
would have desired to optimize to a value of 3 dl/g or more as required by
the claim. The object of WO ’680 is described as “to provide an acrylamide
solution that can provide polyacrylamide with higher viscosity from an
aqueous solution with a low acrylamide content.” FF3. This is
accomplished utilizing a saccharide. FF4. Consequently, contrary to
statements made by the Requester (Requester Respondent Br. 14–15), the
skilled worker would not have used a higher content of acrylamide monomer
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which is contrary to the purpose of WO ’680 to reduce the acrylamide
monomer content by the use of a saccharide.
In addition to this, and independently, the Examiner did not provide a
reason as to why the skilled worker would have modified WO ’680 to
include fermentation broth as required by the claim.
For the foregoing reasons, the obviousness rejection based on WO
’680 alone of claims 1–11, 13–17, and 38– 41 is reversed (Ground 2 above).
(Claim 46 is addressed separately below.)
5. Obviousness based on WO ’680, JP ’714, Munk, and Kulicke
The Examiner rejected claims 1–11 and 13–17 as obvious in view of
WO ’680, JP ’714, Munk, and Kulicke. RAN 22. The Examiner stated that
WO ’680 “does not expressly disclose the intrinsic viscosity of the
polymerized acrylamide product synthesized by the process of claim 1,” but
found that the “secondary references – JP ’714, Munk, and Kulicke –
address this issue of intrinsic viscosity of the final polymerized acrylamide
product.” RAN 23. The Examiner argues that, based on JP ’714, Munk, and
Kulicke, “WO ’680 must have a molecular weight of about 0.8 - 11 million
daltons” and “must” have the required minimum intrinsic viscosity of at
least 3 dl/g. Id. at 25.
For the reasons already discussed, we conclude that the Examiner
erred finding that WO ’680’s polyacrylamide would necessarily possess the
intrinsic viscosity of the polymer of claim 1. The Examiner did not provide
a reason as to why the skilled worker would have desired this value.
Furthermore, we find that the basis of the obviousness rejection is not clear
because the Examiner did not provide a reason as to why claim 1 would
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have been obvious to one of ordinary skill in the art; rather, the Examiner
appeared to rely on the same arguments set forth for the anticipation
rejection. See RAN 22.
Despite the error in the rejection, we shall sustain the rejection of
claims 1–11 and 13–17 as obvious in view of WO ’680, JP ’714, Munk, and
Kulicke, but, as explained below, for different reasons from the Examiner.
Accordingly, we designate the rejection as a new ground of rejection under
37 C.F.R. § 41.77(b). We also further rely on Watanabe ’855 as evidence, in
addition to JP ’714, that it would have been obvious to have utilized
fermentation broth in the polymerization step.
As explained above, the evidence in the record establishes that JP
’714 describes a polymer having a molecular weight of approximately
10,000,000, which is understood to “exhibit[] an intrinsic viscosity of at
least 3 dl/g measured using a suspended level viscometer in 1 M sodium
chloride at 25°C” as evidenced by Munk and Kulicke (FF33–FF35) and as
recited in claim 1. JP ’714 describes production of high molecular weight
acrylamide polymer as an object of its invention. FF19. Thus, even to the
extent that JP ’714’s polymer does not possess the recited intrinsic value,
there would have been reason to make high molecular polymers which are
known to have high intrinsic viscosity as taught in Munk and Kulicke.
FF33–FF35. Munk and Kulicke provide explicit evidence acrylamide
polymers with such high molecular weight also have intrinsic viscosities
well above the claimed value of 3 dl/g. As discussed supra at page 19,
the’215 patent does not attribute a special property or result to polymers
having an intrinsic viscosity of at least 3 dl/g.
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With respect to the requirement of claim 1 that fermentation broth is
present during the polymerizing step, both JP ’714 and Watanabe ’855
describe fermentation broth in the microorganisms used to catalyze the
fermentation process. See discussion above; FF22, FF30.
The Examiner did not reject certain dependent claims under the
obviousness rejection, which had been found to have been anticipated by, or
obvious in view of, WO ’680, alone. These claims are claims 38–41. See
Rejections 1 and 2, supra (rejecting these claims as anticipated or obvious
based on WO ’680). The Examiner explained why these claims were
described by WO ’680. RAN 17–18. We therefore add these claims to this
obviousness rejection. As explained above, JP ’714 discloses an example
molecular weight such that the intrinsic viscosity value falls within the
ranges recited specifically in claims 39 and 40, as evidenced by Munk and
Kulicke. FF33–FF35.
In sum, we affirm the rejection of 1–11 and 13–17 as obvious in view
of WO ’680, JP ’714, Munk and Kulicke (Ground 3), but designate it as a
new ground of rejection under 37 C.F.R. § 41.77(b). Claims 38–41 are also
rejected on the same basis. Watanabe ’855 is added to the rejection as
additional evidence.

Claim 18
A. Anticipation rejection
Claim 18 is similar to the process of claim 1, but uses a monomer
mixture comprising a first ethylenically unsaturated monomer and a second
ethylenically unsaturated monomer. The Examiner made the finding that the
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disclosure in WO ’680 of acrylamide and polyacrylamide includes
copolymers as evidenced by JP ’714 and Kulicke. RAN 28.
The Examiner’s evidence is not persuasive. The claim requires first
and second ethylenically unsaturated monomers. The Examiner has not
established that the terms acrylamide and polyacrylamide recited in WO
’680 “necessarily” mean two different (i.e., first and second) ethylenically
unsaturated monomers. A “prior art reference may anticipate without
disclosing a feature of the claimed invention if that missing characteristic is
necessarily present, or inherent, in the single anticipating reference.”
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed. Cir.
2005). When inherency is a basis of anticipation, it “may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (internal citation and quotation marks
omitted).
The Examiner also stated that the terms denote a family of monomers,
which include cationic and ionic monomers. RAN 28–29. Anticipation can
be established when a small genus is disclosed and each member can be at
once envisaged. In re Petering, 301 F.2d 676, 681 (CCPA 1962). The
Examiner has not explained why a person of ordinary skill in the art would
have immediately envisaged utilizing the specifically recited ethylenically
unsaturated monomers recited in the claim. For example, the Examiner has
not identified the members of the monomer family to know the family’s size
and complexity.
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Accordingly, we cannot sustain the anticipation rejection of claim 18
and dependent claims 19–28, 33–35, 37, and 42–45 (Ground 4).

B. Obviousness rejection
The Examiner rejected claims 12 and 18–37 as obvious in view of
WO ’680, JP ’714, and Kulicke. The rejected claims are drawn to a
polymerization process utilizing a mixture of monomers. The Examiner
found that JP ’714 describes a process of polymerizing one or more
unsaturated monomers to form polyacrylamide. RAN 34–35; FF24, FF25.
The Examiner’s finding is supported by factual evidence. Id. Patent Owner
has not identified an error in the Examiner’s findings. See PO Appeal Br.
36. Accordingly, the rejection is affirmed (Ground 5). However, for the
same reason as for Ground 3, we designate the rejection as a new ground of
rejection under 37 C.F.R. § 41.77(b) and add Watanabe ’855 as additional
evidence.
Claims 42–45 are added to the rejection. Claims 42 further recites an
enzyme which is described by JP ’714. FF20, FF21, FF22. Claims 43 and
44 further recite intrinsic viscosities which are described in JP ’714 as
evidenced by Munk and Kulicke. See supra at pp. 24–25. Claim 45 recites
that the formed polymer is water-soluble which is a characteristic of
polyacrylamide described by both WO ’680 and JP ’714. See RAN 33;
FF25.

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Claim 46
A. Anticipation and obviousness rejections based on WO ’680 alone
Claim 46 is similar to claim 1, but rather than reciting the presence of
fermentation broth, it recites that monomer or monomer mixture comprises
“the components of the fermentation broth.” The saccharide, biocatalyst
microorganism, and/or biocatalyst nitrile hydratase are components of a
fermentation broth and are present in the polymerization flask of WO ’680
(RAN 18–19). Thus, WO ’680 meets the limitation of the claim. However,
the anticipation and obviousness rejections (Grounds 1 and 2) cannot be
sustained because the required intrinsic viscosity of claim 46 is not met by
WO ’680 as explained above.
B. Obviousness based on WO ’680 in combination with JP ’714,
Kulicke, and Munk
Claim 46 was not rejected as obvious based on WO ’680 in
combination with JP ’714, Kulicke, and Munk. We find this to be an error
since claim 46 is even broader than claim 1, which was rejected on this
basis, differing in the requirement that components of a fermentation broth
are present in the polymerizing step, rather than the fermentation broth itself.
Consequently, we set forth a new ground of rejection under 37 C.F.R §
41.77(b) of claim 46 as obvious in view of WO ’680, JP ’714, Munk,
Kulicke, and Watanabe ’855.

VII. ANTICIPATION BY JP ’714
We set forth a new ground of rejection 37 C.F.R § 41.77(b) of
independent claims 1, 18, and 46 under 35 U.S.C. § 102(b) (pre-AIA) as
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anticipated by JP ’714. We leave it to the Examiner to determine whether
any of the claims which depend from the independent claims are anticipated
by JP ’714.
JP ’714 describes the claimed process of polymerizing ethically
unsaturated monomers utilizing monomers made by a biocatalyst. FF21,
FF23, FF24, FF25, FF28, FF29. The biocatalyst used to make the monomer
can be used in the polymerization process as a “culture medium” (FF22,
FF23), and thus meets the limitation of the claims that requires the presence
of fermentation broth, or a component of it, in the step of polymerizing the
monomer to form a polymer. As discussed above, the polymers produced in
JP ’714 also meet the requirement of the claims of an intrinsic viscosity of at
least 3 dl/g, as evidenced by Munk and Kulicke. FF33–FF35.

VIII. SUMMARY
Grounds of Rejection 1, 2, and 4 are reversed.
Grounds of Rejection 3 and 5 are affirmed but are designated as new
grounds of rejection under 37 C.F.R. § 41.77(b). New evidence has been
added to each. The new grounds are as follows:
3. Claims 1–11, 13–17, and 38–41 under 35 U.S.C. § 103(a)
(pre-AIA) as obvious in view of WO ’680, JP ’714, Munk,
Kulicke, and Watanabe ’855.
5. Claims 12, 18–37, and 42–45 under 35 U.S.C. § 103(a) (pre-
AIA) as obvious in view of WO ’680, JP ’714, Munk, Kulicke,
and Watanabe ’855.
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6. Claim 46 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of WO ’680, JP ’714, Munk, Kulicke, and Watanabe
’855. This is a new ground of rejection under 37 C.F.R. § 41.77(b).
7. Claims 1, 18, and 46 are rejected under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by JP ’714. This is a new ground of rejection
under 37 C.F.R. § 41.77(b).

NEW GROUNDS OF REJECTION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)–(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record. . . .
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Any request to reopen prosecution before the examiner under
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board’s opinion reflecting its
decision to reject the claims and the patent owner’s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the owner and/or requester under
37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).

AFFIRMED; 37 C.F.R. § 41.77(b)

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Patent Owner:

BASF Corporation
Patent Department
500 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591

Third Party Requester:

DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
WASHINGTON, DC 20006-5403