Ex Parte Al-Ghamdi et al

Patent Trial and Appeal Board

Feb 28, 2018

14343729 (P.T.A.B. Feb. 28, 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.
14/343,729 03/07/2014 Ghurmallah Al-Ghamdi 10POLY0010-US-PCT 1380
102091 7590 03/02/2018
Cantor Colburn LLP - SABIC Americas
20 Church Street
Hartford, CT 06103
EXAMINER
WALES, CHRISTINA H
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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 GHURMALLAH AL-GHAMDI,
MARTINUS ADRIANUS GERTRUDUS JANSEN, and
LAURENTIUS NICOLAAS IDA HUBERTUS NELISSEN
Appeal 2017-006090
Application 14/343,7291
Technology Center 1700
Before LINDA M. GAUDETTE, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—12 and 16—22. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is SAUDI BASIC
INDUSTRIES CORPORATION. Appeal Br. 2.
Appeal 2017-006090
Application 14/343,729
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a process for preparing
water expandable polymer beads (“WEPS”). Spec. 12. The Specification
explains that use of modifier-free nanoclay allows for “a very stable
suspension polymerization system which results in polymer beads having a
good expandability.” Id. 19. Claim 1, reproduced below with emphasis
added to certain key recitations, is illustrative of the claimed subject matter:
1. A process for the emulsifier-free preparation of water
expandable polymer beads, which process comprises:
a) providing an emulsifier-free starting composition
comprising styrene and a polyphenylene ether resin, wherein the
weight ratio of styrene and the polyphenylene ether resin in the
starting composition is between 99:1 to 70:30,
b) prepolymerizing the starting composition to obtain a
prepolymer composition,
c) adding an aqueous dispersion of a modifier-free
nanoclay to the prepolymer composition to obtain an inverse
emulsion, wherein the amount of the nanoclay is 0.1-5 wt%
based upon a total weight of the monomers and the polymers in
the starting composition,
d) suspending the inverse emulsion obtained by step c) in
an aqueous medium to yield an aqueous suspension of suspended
droplets, and
e) polymerizing the monomers in the droplets of the
suspension obtained by step d) to obtain the water expandable
polymer beads, wherein the polymerizing is at a temperature of
90 to 130°C.
2 In this opinion, we refer to the Final Office Action dated May 12, 2016
(“Final Act.”), the Appeal Brief filed September 8, 2016 (“Appeal Br.”), the
Examiner’s Answer dated January 4, 2017 (“Ans.”), and the Reply Brief
filed March 17, 2017 (“Reply Br.”).
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Application 14/343,729
Appeal Br. 12 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Crevecoeur et al. US 6,242,540 B1 June 5, 2001
(hereinafter “Crevecoeur”)
Jiong Shen et al., Synthesis and foaming of water expandable polystyrene-
clay nanocomposites, Polymer 47, 6303-6310 (2006) (“Shen”)
Rafieh-Sadat Norouzian Amiri et al., Water Expandable Polystyrene -
Organoclay Nanocomposites: Role of Clay and Its Dispersion State, J. of
Macromolecular Sci., Part B: Phys., 48:955-966 (2009) (“Amiri”)
Emile A. Snijders et al., Water expandable polystyrene (WEPS): Part 4.
Synthesis of the water expandable blend of polystyrene and poly(2,6-
dimethyl-1, 4-penylene ether), e-Polymers 78, 1 (2006) (“Snijders”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 3, 6—12, 16, and 18—21 under 35 U.S.C.
§ 103(a) as unpatentable over Crevecoeur in view of Shen. Ans. 2; Final
Act 2, 7.
Rejection 2. Claims 2, 17, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Crevecoeur in view of Shen and further in view of
Snijders. Final Act 9.
Rejection 3. Claims 4, 5, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Crevecoeur in view of Shen and further in view of Amiri.
Id.
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Application 14/343,729
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellants’ arguments, we are
not persuaded that Appellants identity reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection 1. We first address claim 1. The Examiner finds that
Crevecoeur teaches recited steps (a), (b), (d), and (e) of claim 1. Ans. 2
(citing Crevecoeur). The Examiner finds that Crevecoeur is silent as to
adding nanoclay as recited in step (c) of claim 1. Id. at 3. The Examiner
finds that Shen teaches adding nanoclay and determines that it would have
been obvious to one of ordinary skill in the art “to add the water-dispersed
nanoclay of Shen to the WEPS [water expandable polystyrene] particles of
Crevecoeur in order to trap more water in the beads during synthesis and
reduce water loss during storage.” Id. at 3.
Appellants do not persuasively dispute the Examiner’s stated rationale
for combining the teachings of Crevecoeur and Shen. Appellants instead
argue that claim 1 is not obvious because a person of ordinary skill in the art
who desired to add the clay component of Shen to the process of Crevecoeur
would have also added the sodium bis(2-ethyl-hexyl)sulfosuccinate (“AOT”)
emulsifier taught by Shen. Appeal Br. 7—8. Appellants emphasize {id. at 8),
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Application 14/343,729
for example, Shen’s statement that “[t]he selection of emulsifier for water-
in-oil (w/o) inverse emulsion is of essential importance to achieve a stable
reaction system and uniform water dispersion.” Shen 6304. For two
reasons, Appellants’ argument does not identify harmful Examiner error.
First, the preponderance of the evidence supports the Examiner’s
finding that Crevecoeur’s process does not include an emulsifier in steps (a)
or (b). Ans. 3, 10-11.3 Crevecoeur suggests that its pre-polymerization
need not include an emulsifier. Crevecoeur 1:63—2:7. Rather, Crevecoeur
only teaches that it is “advantageous” (but not necessary) to include a
polyphenylene ether in the prepolymerization step. Id. at 4:17—34; see also
id. at 4:35—51 (suggesting that Crevecoeur’s polymerization step also need
not include an emulsifier but rather that certain “conventional stabilizing
agents” can improve the polymerization). Appellants present no persuasive
evidence disputing the Examiner’s finding in this regard, and Appellants
present no technical reasoning as to why a person of skill would have
believed adding nanoclay to the Crevecoeur process would necessarily
require modifying Crevecoeur to also include an emulsifier. Rather,
Appellants cite to statements in Shen that only speak to whether or not an
emulsifier is desirable in Shen’s process and not whether a person of
ordinary skill would have viewed an emulsifier as required in Crevecoeur’s
process once nanoclay is added.
Second, claim 1 recites a process which “comprises” steps (a) through
(e). Appeal Br. 12 (Claims App.). Because the word “comprises” leaves the
3 We note that the Examiner cites a new Crevecoeur article in the Answer
(Ans. 10), and Appellants object to use of this new reference (Reply Br. 6).
We do not consider this additional reference in rendering this Decision.
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Application 14/343,729
claim open ended, other unrecited steps may be included in the claim. Thus,
while the recited “starting composition” must be “emulsifier-free,” the same
is not true of, for example, the inverse emulsion recited in step (c). Claim 1
permits an emulsifier to be added, for example, between steps (b) and (c).
This is important because the Examiner’s rejection is based on adding
Shen’s nanoclay to Crevecoeur’s prepolymer composition. Ans. 3. As
explained above, Crevecoeur suggests that its prepolymer composition need
not include an emulsifier. Thus, even if a person of skill in the art were to
read Shen as teaching that emulsifier is necessary once clay is added (i.e.,
after the prepolymerization step according to the combination of teachings
asserted by the Examiner), the addition would have been made after pre­
polymerization and therefore the resultant process would not be outside the
scope of claim 1.
Appellants also argue that Crevecoeur and Shen do not suggest the
weight ratio, amount of nanoclay, and polymerization temperatures recited
by claim 1. Appeal Br. 8. The Examiner, however, makes findings
supporting that Crevecoeur suggests each of these recitations (Ans. 3—4),
and Appellants present no argument rebutting the Examiner’s findings.
With respect to claims 3, 9—12, 16, and 18—20, Appellants summarize
recitations of the claims and state that the recitations are not taught or
suggested by the cited references. Appeal Br. 9—10. This kind of bare bones
approach is not sufficient to constitute a substantive argument for separate
patentability of claims otherwise argued as a group. See 37 C.F.R. §
41.37(c)(iv) (2013) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that
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Application 14/343,729
merely asserting that applied prior art does not teach a recited limitation is
not substantive argument for separate patentability). Moreover, the
Examiner addresses the recitations of each of claims 3, 9-12, 16, and 18—20,
and Appellants present no argument rebutting the Examiner’s findings and
conclusions. Ans. 3—8 (explaining why cited references teach or suggest
each recited element of these claims).
With respect to claim 16, Appellants argue that Crevecoeur does not
teach or suggest the recited prepolymerization time or recited polymerization
time and temperature. Appeal Br. 8. The Examiner, however, explains how
each of these recitations is taught or suggested (Ans. 4, 6), and Appellants
do not present any argument refuting the Examiner’s findings or reasoning.
We thus sustain the Examiner’s rejection of claims 1, 3, 6—12, 16, and
18—21. See 37 C.F.R. § 41.37(c)(iv) (“When multiple claims subject to the
same ground of rejection are argued as a group ... by appellant, the Board
may select a single claim from the group . . . and may decide the appeal
with respect to the group of claims as to the ground of rejection ... on the
basis of the selected claim alone.”).
Rejection 2. The Examiner rejects claims 2, 17, and 22 as
unpatentable as obvious over Crevecoeur in view of Shen and further in
view of Snijders. Final Act 9. To the extent Appellants raise the same
arguments addressed above (Appeal Br. 9), those arguments are
unpersuasive for the reasons explained above.
Appellants also argue that the Examiner’s use of Snijder’s material is
“impermissible hindsight reconstruction.” Appeal Br. 9. The Examiner,
however, provides findings and reasons why it would have been obvious to a
person having ordinary skill in the art to combine the teachings of Snijders
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Application 14/343,729
with the other cited references. Ans. 9, 11. Appellants do not persuasively
refute the Examiner’s factual findings regarding Snijders or the Examiner’s
reasoning.
We thus sustain the Examiner’s rejection of claims 2, 17, and 22.
Rejection 3. Appellants argue against this rejection by incorporating
arguments Appellants raised with respect to other claims. Appeal Br. 10.
For the reasons explained above, those arguments are not persuasive, and we
thus sustain this rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 1—12 and 16—22.
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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