Ex Parte Besnard et alDownload PDFPatent Trial and Appeal BoardMay 4, 201712737141 (P.T.A.B. May. 4, 2017) Copy Citation 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. 12/737,141 02/16/2011 Oliver Besnard 4545-154 9559 7590 05/08/2017 Hultquist IP P.O. Box 14329 RESEARCH TRIANGLE PARK, NC 27709 EXAMINER HUHN, RICHARD A ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 05/08/2017 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): hip@hultquistip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVER BESNARD, ERIC PASQUINET, HERVE DELEUZE, MARC BIROT, and FABRICE AUDOUIN Appeal 2016-001659 Application 12/737,141 Technology Center 1700 Before TERRY J. OWENS, LINDA M. GAUDETTE, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ rejection of claims 9—18 and 25—29. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for preparing a polymerized high internal phase emulsion (polyHIPE) copolymer. Claim 9 is illustrative: 9. A method for preparing a polyHIPE copolymer material by high internal phase emulsion polymerization, which comprises the steps of: a) forming an emulsion between: (i) a first phase comprising a first monomer, a second monomer, a surfactant, a polymerization initiator, Appeal 2016-001659 Application 12/737,141 the first monomer being an TV-alkenyltri azole monomer of following general formula (I): wherein R1 and R2 each independently represent a hydrogen or halogen atom, -OH, -SH, -SO3H, -NO2, -NH2, -COOH, -CnF2n+i in which n is an integer ranging from ltol2,aCitoCi6 aliphatic hydrocarbon group optionally interrupted by one or more oxygen and/or sulphur atoms, or a cyclic C3 to Ci6 hydrocarbon group or heterocyclic with 3 to 16 members; and the second monomer being a cross-linking monomer; with a weight ratio of the second monomer to the first monomer ranging from 1/100 to 60/100; and (ii) a second phase comprising a solvent immiscible with the first and second monomers; b) polymerizing the emulsion obtained at a) until a solid material is obtained; and c) washing and drying the solid material obtained at b) and thereby obtaining the polyHIPE copolymer material. The References References relied upon by the Examiner US 2004/0087926 A1 May 6, 2004 GB 1,000,917 Aug. 11, 1965 Reference relied upon by the Appellants Fabrice Audouin et al., Preparation, Solid-State NMR, andPhysiochemical Characterization of Surprisingly Tough Open Cell PolyHIPEs Derived from 1-Vinyl-1,2,4-triazole Oil-in-Water Emulsions, 44 Macromolecules 4879—86 (May 27, 2011) (hereinafter Audouin). Ko Lonza 2 Appeal 2016-001659 Application 12/737,141 The Rejection Claims 9—18 and 25—29 stand rejected under 35 U.S.C. § 103 over Ko in view of Lonza. OPINION We affirm the rejection. The Appellants argue the claims as a group (Br. 4—10). We therefore limit our discussion to one claim, i.e., claim 9, which is the sole independent claim. Claims 10—18 and 25—29 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). Ko makes a rigid or flexible polyHIPE copolymer foam by polymerizing in-situ superabsorbent polymer (SAP) precursor monomers (| 33), where ‘“in-situ SAP precursor monomer’ refers to monomers which are used to produce a water-absorptive polymer and the polymerization of monomers may be initiated with the use of a redox initiator” (| 18). The in-situ SAP precursor monomers include heterocyclic vinyl compounds (| 41). After polymerization, the foam may be molded into any desired shape (1 8). Lonza discloses (p. 1,1. 78 —p. 2,1. 9): N-vinyl-1,2,4-triazole generally improves the dyeing properties of polymers (e.g. of polyacrylonitrile) when used as comonomer and raises the softening point. The elasticity and the solubility are also influenced. The addition of N-vinyl-1,2,4-triazole, improves for example, the capacity of swelling in water and the solubility in methanol of polyvinyl acetate. Both the homo- and copolymers are suitable for producing shaped structures, films, threads and coatings. 3 Appeal 2016-001659 Application 12/737,141 The Appellants assert that one of ordinary skill in the art would not have perceived Lonza’s N-vinyl-1,2,4-triazole as being properly substitutable for Ko’s in situ redox monomers and that Lonza does not disclose that the N-vinyl-1,2,4-triazole homo- and copolymer shaped structures include superabsorbent structures (Br. 7). “Obviousness does not require absolute predictability of success .... For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903—04 (Fed. Cir. 1988). Ko teaches that the superabsorbent polymer precursor monomers include heterocyclic vinyl compounds (141) and that the polymerized foam can be molded into any desired shape, and Lonza teaches that N-vinyl-1,2,4-triazole, which is a heterocyclic vinyl compound, is water swellable (p. 2,11. 2 4) and that N-vinyl-1,2,4-triazole homo- and copolymers are suitable for producing shaped structures (p. 2,11. 7—9). One of ordinary skill in the art, therefore, would have had a reasonable expectation of success in using Lonza’s N-vinyl-1,2,4-triazole as Ko’s heterocyclic vinyl compound. The Appellants assert that their Specification’s Example 5 and Audouin show that the polyHIPE copolymer produced by the Appellants’ claimed method has surprisingly and unexpectedly high mechanical strength (Br. 9-10). That assertion is not well taken because the Appellants have not set forth a side-by-side comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims and provided evidence that the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. 4 Appeal 2016-001659 Application 12/737,141 Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972). For the above reasons we are not persuaded of reversible error in the rejection. DECISION/ORDER The rejection of claims 9—18 and 25—29 under 35 U.S.C. § 103 over Ko in view of Lonza is affirmed. It is ordered that the Examiner’s decision 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 5 Copy with citationCopy as parenthetical citation