Ex Parte Alzer et al

Board of Patent Appeals and Interferences

Sep 8, 2011

11341253 (B.P.A.I. Sep. 8, 2011)

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.
11/341,253 01/26/2006 Cornelia Alzer 512425-2119 2031
20999 7590 09/08/2011
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CORNELIA ALZER, PEDRO CAVALEIRO,
EBERHARD ESSELBORN, KATHRIN LEHMANN,
and SASCHA OESTREICH
__________

Appeal 2010-008045
Application 11/341,253
Technology Center 1700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-20, directed to a dispersing resin. The claims have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-008045
Application 11/341,253

2
STATEMENT OF THE CASE
“In the production of paints, varnishes, printing inks, and other
coating materials, dispersants facilitate the incorporation of solids, such as
fillers and pigments” (Spec. 2: 20-22), by reducing the mechanical shear
forces required for dispersing, by disrupting agglomerates, and by inhibiting
reagglomeration (id. at 2: 13-18). The present invention is directed to
“dispersing resins . . . and to their use for dispersing solids” (id. at 2: 6-7).
Claims 1-20 are pending and on appeal. Claim 1, reproduced in full
in Appellants’ Claims Appendix, is representative of the subject matter on
appeal. Claim 1, in relevant part, with emphases added, reads as follows:
1. A dispersing resin obtainable by full or partial reaction of
A) one or more amino-functional polymers with
B) one or more polyesters of the general formula (I)(Ia)
T-C(O)-[O-A-C(O)]x-OH (I)
T-O-[C(O)-A-O-]y-Z (Ia)
and
C) one or more polyethers of the general formula (II)/(IIa)
T-C(O)-B-Z (II)
T-O-B-Z (IIa) . . . .

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Thetford (US 2003/0181544 A1, published September 25, 2003) and
Esselborn (US 2002/0011183 A1, published January 31, 2002).
We reverse.
OBVIOUSNESS
All of the claims on appeal require a dispersing resin obtainable by
full or partial reaction of components A, B and C.
Appeal 2010-008045
Application 11/341,253

3
The Examiner and Appellants agree that Thetford discloses a
dispersant comprising a reaction product between components A and B-Ia
of claim 1, and that Esselborn discloses a dispersant corresponding to
component C-IIa of claim 1 (see Ans. 6-7; App. Br. 4-5). The Examiner
concludes that it would have been obvious to combine Thetford’s and
Esselborn’s dispersants to obtain a pigment-containing composition with
“good stability, redispersibility, very high color strength and brightness”
(Ans. 4).
Appellants concede that “there is an argument that it would have been
obvious to combine a dispersant product with another dispersant product to
form a composition with dispersant properties” (App. Br. 5). However,
Appellants contend that their invention is not a “simple composition wherein
the individual components [of Thetford and Esselborn] are mixed together”
(id. at 4). Rather, the invention “is a reactive product of three different
components (A), (B) and (C) which is not the same as the combination of
finished products represented by a combination of Thetford and Esselborn”
(id. at 7). Moreover, Appellants contend “there is no teaching or suggestion
from Esselborn or Thetford to use the polyethers of formula [C](IIa) as an
additional reactant in the process of making Thetford’s dispersant” (id. at
5).
The Examiner, however, “interprets a partial reaction of a three
component mixture as two of the three components reacting; i.e. a reaction
of: A) and B), A) and C), or B) and C)” (Ans. 6).
The issue raised by this appeal is whether the record supports the
Examiner’s interpretation of what is meant by a “partial reaction” between
components A, B, and C.
Appeal 2010-008045
Application 11/341,253

4
Findings of Fact
1. The specification does not explicitly define the term “partial
reaction.”
2. Example 1 of the Specification, under the heading “Dispersing
Resins of the Invention,” describes the preparation of a dispersing resin that
meets the limitations of claim 1 on appeal. Example 1 is as follows:
90 g of polyester 1 [i.e., component B] and 30 g of the amino-
functional polymer Lupasol® WF (25 000 g/mol) from BASF
AG [component A] were stirred, with introduction of N2, at
150°C for 6 hours. Subsequently at 50°C 13 g of polyether I
[component C] were added with stirring. The batch continued
to react at 50°C for 3 hours. This gave the dispersing resin 1, a
waxy product.
(Spec. 21: 4-13.)
In Examples 2-18, “Example 1 was repeated using the starting
materials listed in table 3” of the Specification (id. at 21: 17-18).
3. Under the heading “Comparative Examples,” the Specification
describes the preparation of comparative examples C1 and C2 as follows:
103 g of polyether I [component C] and 30 g of Lupasol WF
from BASF AG [component A] were stirred at 150°C for 6
hours, giving a waxy product referred to below as comparative
example C 1.

Comparative example C 2 is a mixture (50% by weight: 50% by
weight) of compound C 1 and the amino-functional polyester
Tego Dispers® 681 UV.
(Spec. 23: 3-7.)
Discussion
While the specification does not explicitly define the term “partial
reaction” (FF1), it does distinguish between dispersing resins “of the
Appeal 2010-008045
Application 11/341,253

5
invention” and “comparative” dispersing resins (FF2, FF3). The resins of
the invention were prepared by allowing components A and B to react for 6
hours, adding component C, and allowing the batch to react for an additional
3 hours (FF2; Examples 1-18). Comparative resin C1, on the other hand, is
the reaction product of just two components, A and C, while comparative
resin C2 reasonably appear to be a simple 50/50 “mixture” of comparative
resin C1 and an amino-functional polyester (FF3). That is, there is no
indication that comparative example C1 and the amino-functional polyester
were allowed to react with each other to form comparative resin C2.
Given the distinction between the inventive examples and the
comparative examples, we do not agree with the Examiner that a “a partial
reaction of a three component mixture” encompasses just “two of the three
components reacting,” as the term “partial reaction” is used in the claims.
That is, we agree with Appellants that the claims require “a reactive product
of three different components (A), (B) and (C)” (App. Br. 7), even if the
reaction does not go to completion, and this “is not the same as the
combination of finished products represented by [the Examiner’s proposed]
combination of Thetford and Esselborn” (id.).
SUMMARY
The rejection of the claims as unpatentable over Thetford and
Esselborn is reversed.
REVERSED

clj