Ex Parte Besnard et al

Patent Trial and Appeal Board

May 4, 2017

12737141 (P.T.A.B. May. 4, 2017)

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
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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.
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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.
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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
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