Ex Parte Bloembergen et al

Patent Trial and Appeal Board

Mar 22, 2018

12630526 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/630,526 12/03/2009
42534 7590 03/26/2018
BORDEN LADNER GERVAIS LLP
1300-100 QUEEN ST
OTTA WA, ON KIP 1J9
CANADA
FIRST NAMED INVENTOR
Steven Bloembergen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PAT 92214-2 9908
EXAMINER
STEWART, KIMBERLY ANN
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
ipinfo@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN BLOEMBERGEN, DO I. LEE,
IAN J. MCLENNAN, ROBERT H. WILDI, and
EDWARDVANEGDOM 1
Appeal 2016-002111
Application 12/630,526
Technology Center 1700
Before TERRY J. OWENS, A VEL YN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-19 and 43-57. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as EcoSynthetix Inc., the
assignee of the above-captioned application. Appeal Br. 4.
2 In our Decision we refer to the Specification filed December 3, 2009
("Spec."), the Final Office Action appealed from dated July 7, 2014 ("Final
Act."), the Appeal Brief filed June 4, 2015 (Appeal Br.), the Examiner's
Answer dated October 26, 2015 ("Ans.") and the Reply Brief filed
December 8, 2015 ("Reply Br.").
Appeal 2016-002111
Application 12/630,526
STATEMENT OF THE CASE
The subject matter on appeal relates to a process for producing
biopolymer nanoparticle biolatex compositions "that have been produced by
co-extrusion with at least one additive to yield new biolatex conjugates
compositions that exhibit enhanced performance for use on coated paper and
paperboard, and other applications." Spec. i-f 3. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A process for producing a latex, the process comprising:
(a) feeding biopolymer feedstock, at least one plasticizer
and at least one additive to a feed zone of an extruder having a
screw configuration such that the biopolymer feedstock, the at
least one plasticizer and the at least one additive are processed
under shear forces in the extruder;
(b) after step (a), adding a crosslinking agent to the
processed biopolymer feedstock, the at least one plasticizer and
the at least one additive in the extruder thereby producing latex
forming particles, the latex forming particles comprising
crosslinked biopolymer molecules conjugated with the at least
one additive; and,
( c) dispersing the latex forming particles in water to form
the latex.
Appeal Br. 44 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1, 10-12, 14, 15, 54, and 55 stand rejected under
35 U.S.C. § 102(b) as anticipated by Giezen. 3 Final
Act. 3.
3 Giezen et al., US 6,677,386 Bl, issued January 13, 2004 ("Giezen").
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B. Claims 2, 3, 5, 17, 43-51, 56, and 57 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Giezen in view of
Trochlil. 4 Id. at 7.
C. Claims 4--8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Giezen in view of Trochlil, and further
in view of Emmons. 5 Id. at 18.
D. Claims 9, 13, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Giezen. Id. at 20.
E. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Giezen and alternatively in view of
Wildi. 6 Id. at 22.
F. Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Giezen in view of Trochlil and
alternatively in view of Emmons. Id. at 23.
G. Claims 52 and 53 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Giezen in view of Golley. 7 Id. at 25.
H. Claims 1, 10-12, 14, 15, 54, and 55 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Giezen in view of
Trochlil. Ans. 28.
Appellants request our reversal of Rejections A-H. See generally
Appeal Br. Appellants present distinct arguments for claims 1, 54, and 55
(Rejection A), claims 2, 3, 43, and 51 (Rejection B), claim 45 (Rejection F),
claim 52 (Rejection G), and claims 1 and 55 (Rejection H). Id. Appellants
do not separately argue the remaining claims or Rejections C-E. We
4 Trochlil et al., US 6,966,972 B2, issued November 22, 2005 ("Trochlil").
5 Emmons et al., US 6,080,802, issued June 27, 2000 ("Emmons").
6 Wildi et al., US 2011/0042841 Al, published February 24, 2011 ("Wildi").
7 Golley et al., US 2003/0094120 Al, published May 22, 2003 ("Golley").
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therefore limit our discussion to claims identified and particularly argued by
Appellants; thus, claims 4--19, 44, 46-50, 53, 54 (Rejection H), and 56-57
stand or fall with the claims from which they depend. 37 C.F.R.
§ 41.37(c)(l).
OPINION
Rejection A-Anticipation (claims 1, 10-12, 14, 15, 54, and 55)
The Examiner rejects claim 1, among others, as anticipated by Giezen.
Final Act. 3.
Claim 1:
The Examiner finds that Giezen teaches all aspects of claim 1. Final
Act. 3--4. The Examiner explains that as claimed,
the biopolymer feedstock, at least one plasticizer and at least one
additive may be added at the same time or separately, may be in
one mixture, or may be added at the same time from three
separate sources ... [and] that "conjugated" reads on reacted
with in some way (including weak attractive force interaction)
including reacting/interacting to some extent with the lubricant,
for example.
Id. at 4.
Appellants contend that the Examiner has failed to show that Giezen
teaches the claimed latex forming particles that include "crosslinked
biopolymer molecules conjugated with the at least one additive," or
alternatively, fails to even consider the identified limitation when comparing
the claims to Giezen. Appeal Br. 26. Appellants explain that the claims
require that the additive remains in the resulting particles, i.e., are not
consumed by a reaction or dissolved. Id. at 27-28. According to
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Appellants, because Giezen does not teach that the additives remain in the
resulting particles and because it is possible the additives are consumed in
the extruder, the Examiner has not shown that Giezen anticipates claim 1.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). Further, the principle of "inherency" requires that any
information not expressly disclosed within a prior art reference would
nonetheless be known to be present in the subject matter of the reference,
when viewed by persons experienced in the field of the invention. However,
"anticipation by inherent disclosure is appropriate only when the reference
discloses prior art that must necessarily include the unstated limitation [or
the reference] cannot inherently anticipate the claims." Transclean Corp. v.
Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal
citation omitted); Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001)
("consistent with the law of inherent anticipation, an inherent property must
necessarily be present in the invention described by the count, and it must be
so recognized by persons of ordinary skill in the art"). It is not sufficient if a
material element or limitation is "merely probably or possibly present" in the
prior art. Trintec Indus., Inc. v. Top-US.A. Corp., 295 F.3d 1292, 1295
(Fed. Cir. 2002); see W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1554 (Fed. Cir. 1983) (anticipation "cannot be predicated on mere
conjecture respecting the characteristics of products that might result from
the practice of processes disclosed in references"). "To establish inherency,
the extrinsic evidence 'must make clear that the missing descriptive matter is
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necessarily present in the thing described in the reference."' In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted).
We agree with Appellants that the Examiner fails to show that
biopolymer molecules form a conjugate with the additive. We also agree
that the Examiner's definition of "conjugated"-to include "reacted with in
some way (including weak attractive force interaction), including reacting/
interacting to some extent" (Final Act. 4; Ans. 35-36}-is too broad. The
Specification makes clear that "conjugated" requires the formation of a
complex of two molecules through the formation of physical or chemical
bonds. Spec. i-fi-145, 47, 51, 52. For example, the Specification explains:
The novel compositions are prepared by co-extruding a
biopolymer feedstock, at least one additive and at least one
plasticizer under shear forces to yield a biopolymer-additive
complex, and adding a crosslinking agent to the biopolymer-
additive complex to produce the biolatex conjugate compositions
of the present invention. [Spec. i145 (emphasis added)].
By "biolatex conjugate," we mean the biopolymer-additive
complex reacted with at least one crosslinking agent under shear
forces. The biolatex conjugate therefore comprises biopolymer
nanoparticles bonded to the at least one additive via physical or
chemical bond between the at least one additive and the
biopolymer nanoparticles. [Id. i1 51; see also id. i1 4 7].
this continuous thermoplastic biopolymer melt phase then forms
the biolatex conjugates consisting of aggregates of biopolymer
nanoparticles and the additive(s) (the "biopolymer-additive
complex"). [Id. i152 (emphasis added)].
While a conjugate results from the formation of chemical or physical bonds,
not all reactions result in a conjugate.
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And, though Giezen may teach "an additive," there is no teaching in
Giezen that the additives will result in the claimed conjugated biopolymer-
additive complex. Furthermore, the additives in Giezen (i.e., a lubricant,
acid, or enzyme) are very different from the additives identified in the
Specification that are known to form conjugates. Compare Giezen, col. 1, 11.
53---62 with Spec. i-f 54. Therefore, at best, there exists a possibility the
biopolymer and additives of Giezen will form a conjugate. But, probabilities
and possibilities are insufficient to establish inherent anticipation.
Robertson, 169 F.3d at 745. On this record, we cannot sustain the
Examiner's rejection of claim 1 as well as claims 10-12, 14, 15, and 54 (by
virtue of dependence from claim 1) as anticipated by Giezen.
Claim 55:
Independent claim 55 is similar to claim 1 except that in claim 55,
"the biopolymer portion is physically or chemically bonded to, or at least
partially encapsulates or surrounds, the additive portion." Compare Appeal
Br. 48 (Claims App'x), with id. at 44. The Examiner finds, as with claim 1,
that Giezen teaches all elements of claim 55. Final Act. 5-6.
Appellants urge that "the Examiner's proposition that Giezen's
process could produce a lubricant molecule surrounded by an adhesive
portion is not the inherent result of Giezen's process and so not part of the
disclosure of Giezen." Appeal Br. 31 (emphasis added).
We agree with Appellants that the Examiner failed to show that the
Giezen process would produce a biopolymer-additive complex where the
biopolymer portion is physically or chemically bonded or partially
encapsulates the additive portion. The Examiner's bare statements, without
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more, are insufficient to show that bonding or encapsulation is the necessary
result of the process of Giezen. Therefore, on this record, we cannot sustain
the Examiner's rejection of claim 55 as anticipated by Giezen.
Rejection H-Obviousness (claims 1, 10-12, 14, 15, 54, and 55)
The Examiner newly rejects claims, 1, 10-12, 14, 15, 54, and 55 as
unpatentable under 35 U.S.C. § 103(a) over Giezen in view of Trochlil.
Ans. 28. Appellants argue claims 1 and 55 together and do not separately
argue any of claims 10-12, 14, 15, and 54. We therefore focus our
discussion of Rejection H on independent claim 1
Claim 1:
In addition to the findings with respect to Rejection A, the Examiner
determines (alternatively) that "it is not clear that the particular disclosed
examples of additives [of Giezen] ... would necessarily conjugate with the
claimed and disclosed crosslinked biopolymer polymers." Ans. 29. But, the
Examiner finds that Trochlil teaches additives such as titanium dioxide and
calcined kaolin clay, which according to Appellants' Specification are
"capable of forming a conjugate with crosslinked biopolymer molecules in
the claimed process." Id. at 29--30. The Examiner reasons that a person of
skill in the art would have reason to include "such as titanium dioxide, clay,
etc. in order to produce the desired coating properties including for paper
and/ or paper coating, such as reduced cracking and providing a surface that
can accept/receive printing." Id. at 30. And, because the Examiner finds
that Giezen discloses the claimed process steps and materials, it is expected
that the additives would conjugate with the biopolymers as claimed. Id.
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Appellants present several arguments including that (1) replacing the
lubricant of Giezen with the pigment of Trochlil would not have been
obvious because they have different properties and purposes (see also
Appeal Br. 32-33 (Rejection B, claim 2), (2) one skilled in the art would not
consider adding the Ti02 of Trochlil to the extruder and therefore the
combination would not result in a conjugated product (see also id. at 35
(Rejection B, claim 3), and (3) "the large amounts of pigment taught by
Trochlil is inconsistent with the minor amounts of the additives taught by
Giezen" (see also id. at 36-37 (Rejection B, claim 43); Reply Br. 6-8. For
the reasons discussed below, these arguments are unpersuasive of reversible
error.
Appellants' first argument, i.e., that because the lubricant of Giezen
is chemically different and relied upon for a different purpose than the
pigment of Trochlil the skilled artisan would have no reason to substitute
one for the other, lacks merit because it does not address the rejection
presented by the Examiner. As the Examiner explains, the rejection does not
propose to substitute the pigment of Trochlil for the lubricant of Giezen but
rather to simply add a pigment for the reasons taught by Trochlil. Ans. 38.
We similarly reject Appellants' argument that one skilled in the art
would not have added the Ti02 of Trochlil to the extruder of Giezen. As the
Examiner explains, "logically" the pigment would be added in the same
manner as the additives of Giezen, i.e., during the extrusion process
(Ans. 38) as doing so would ensure complete mixing of materials without
the need for an additional mixing step.
Lastly, Appellants' argument that the large amount of pigment used in
Trochlil is inconsistent with the "minor amounts" of additive in Giezen and
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therefore would not be reasonably combined by the skilled artisan, is not
persuasive of error. To begin, and as noted above, the Examiner does not
propose to substitute the additive of Giezen for the additive of Trochlil.
Ans. 38. Further, the Examiner explains that "Trochlil's additives amounts
appear to be in the same general range as the claimed amounts of additives
... with a wide variety of %s being acceptable for the additives depending
on the desired end properties of the coating." Ans. 38 (citation omitted).
And, Appellants acknowledge (Reply Br. 7) Trochlil teaches that Ti02 "is
preferably included in an amount of at least about 2 wt. % based on the
weight of the pigment component" which is similar to the wt. % taught by
the instant Specification. Compare Trochlil, col. 3, 11. 19--21, with Spec. i-f
63.
We therefore sustain the rejection of claims 1, 10-12, 14, 15, 54, and
55 as obvious.
Rejection B- Obviousness (claims 2, 3, 5, 17, 43-51, 56, and 57)
The Examiner rejects claims 2, 3, 5, 17, 43-51, 56, and 57 as obvious
over Giezen in view of Trochlil. Final Act. 7.
Claim 2:
Claim 2, depending from independent claim 1, additionally requires
the at least one additive is selected from the group consisting of
a dye, a pigment, titanium dioxide, aluminum oxide, aluminum
trihydrate, sodium aluminum phosphate, aluminum phosphate,
sodium aluminum magnesium silicate, fly ash, zeolite, sodium
aluminum silicate, talc, clay, delaminated clay, calcined kaolin
clay, montmorillonite clay, nanoclay, silica particles, zinc oxide,
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calcium carbonate, an optical brightening agent, a biocide, a
stabilizer, and combinations thereof.
Appeal Br. 44 (Claims App'x). The Examiner finds that Trochlil teaches a
paper product coating that includes pigment components such as kaolin clay
and titanium dioxide. Final Act. 8.
In addition to the arguments advanced (and rejected) above with
respect to Rejection H, Appellants argue that the benefits of the pigments of
Trochlil are achieved through simple addition where the unexpected results
of the instant claims are attributable to conjugating the additives with the
biopolymer. Appeal Br. 35; Reply Br. 7.
Appellants' arguments fail to identify error in the Examiner's
rejection. The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of the
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing unexpected
results rests on he who asserts them"); In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997).
Here, Appellants fail to show that the results achieved are in fact
unexpected and Appellants' evidence is not commensurate in scope with the
claims. Appellants, in Figures 4---6, compare the gloss, brightness, and
whiteness of three inventive samples and two comparison samples---one of
which contains no performance enhancing additive (trial 1) and one where
the Ti02 is physically mixed as an aqueous emulsion with the biopolymer
particles (trial 2). See Spec. i-fi-f 141--43, Figs. 4---6, and Table C. The
inventive samples containing extruded Ti02 (trials 3-5), exhibited improved
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brightness and whiteness. Id. The skilled artisan would expect that a well-
mixed formulation having a greater uniformity achieved through an
extrusion process would possess improved results. Appellants' evidence
falls short of showing that the level of mixing and uniformity achieved in
trial 2 is comparable to the extruded formulation of trials 3-5. Furthermore,
Appellants' evidence describing results relating to Ti02 alone is not
commensurate in scope with the breadth of the claims.
Claim 3:
Dependent claim 3 additionally recites that "the at least one additive
comprises titanium dioxide." Appeal Br. 44 (Claims App'x). The Examiner
finds that Trochlil teaches pigment components such as titanium dioxide.
Final Act. 8. Appellants, similar to the arguments presented above, argue
that: (1) the claimed coextrusion including Ti02 yields unexpected results in
terms of brightness and whiteness performance as compared to the prior art
(Appeal Br. 34); (2) Trochlil fails to teach a coextruded conjugation of Ti02
and the biopolymer but rather teaches a simple mixture (id. at 35); and
(3) that there would be no reason for a person skilled in the art to substitute
the lubricant of Giezen for the pigment of Trochlil because their properties
and functions are different. Id. For the reasons discussed above, these
arguments are unpersuasive of reversible error.
Claim 43:
Claim 43 depends from claim 1 and additionally requires that the
"step (b) comprises at least partially encapsulating or at least partially
surrounding at least one particle of the at least one additive with a plurality
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of crosslinked biopolymer molecules." Appeal Br. 46 (Claims App'x). The
Examiner finds that because
the claimed materials are being processed using the claimed
process steps, such materials and process so disclosed would
result in step (b) comprising at least partially encapsulating or at
least partially surrounding at least one particle[ s] of the at least
one (Ti02 particle) additive with a plurality of the crosslinked
biopolymer molecules.
Final Act. 11.
Appellants contend that the Examiner assumes that the amount of
Ti02 would be sufficient such that the biopolymer would encapsulate the
Ti02. Appeal Br. 37. Appellants argue that the teachings of Trochlil
suggest a large quantity of pigment be added to the compound of Giezen and
that "such a combination would not inherently result in the at least partial
encapsulation or surrounding claimed." Id.
Appellants' arguments do not persuade us of reversible error.
"Where, as here, the claimed and prior art products ... are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d
1252, 1255 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). The Examiner finds that the combination of Giezen and Trochlil
suggest the same method and use the same materials as the process of the
instant claims. The Examiner has provided evidence and analysis sufficient
to shift the burden to Appellants. Appellants' contention that the pigment
quantity of Trochlil would not necessarily result in partial encapsulation as
claimed does not overcome the requisite burden. Especially where, as
explained above (supra p. 10), Trochlil expressly teaches using about
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2 wt. % Ti02 similar to the wt.% taught by the instant Specification.
Compare Trochlil, col. 3, 11. 19--21, with Spec. i-f 63.
Claim 51:
Claim 51 depends from independent claim 1 and further requires that
the "at least one additive has a light scattering property that is maintained
after the at least one additive is conjugated with the crosslinked biopolymer
molecules." Appeal Br. 47 (Claims App'x). The Examiner finds that
Trochlil teaches the adhesives in the latex may include pigments, such as
titanium dioxide, which is known to "impart opacity, whiteness and light
scattering properties." Final Act. 16-17.
Appellants argue that the Examiner relies upon improper hindsight
reconstruction in rejecting claim 51. Appeal Br. 38. According to
Appellants, "[ t ]he Examiner has no basis for using the hypothesis that the
light scattering property 'would be maintained,"' as that teaching is
demonstrated only by the instant Specification. Id.
We find no evidence that the Examiner relies on impermissible
hindsight reasoning as the Examiner's reasons for combining the teachings
of Giezen and Trochlil are supported by the prior art disclosures themselves.
See, e.g., Sensonics, Inc. v. Aerosonic Corp., 81F.3d1566, 1570 (Fed. Cir.
1996) ("The invention must be viewed not after the blueprint has been
drawn by the inventor, but as it would have been perceived in the state of the
art that existed at the time the invention was made." (citing Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985))). Here, as the
Examiner finds, Giezen discloses the process as claimed except that Giezen
does not teach including an additive that will conjugate with the biopolymer
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molecules. Ans. 29. But, the Examiner finds that Trochlil teaches including
a Ti02 pigment known to conjugate with biopolymers. Id. at 29--30.
Furthermore, Ti02 is known to possess light scattering properties. Emmons,
col. 1, 11. 65---66 ("The light scattering characteristics of titanium dioxide
particles are well known"); see also Spec. i-f 16 ("Titanium dioxide (Ti02) is
widely used as a brightening and opacifying additive because the Ti02
particles scatter light to provide an ultra-white appearance with enhanced
opacity."). Therefore, the Examiner has reason to believe that the light
scattering property would be maintained in the conjugated latex forming
particles where substantially the same process and materials are used. Best,
562 F.2d at 1255.
We thus sustain the Examiner's rejection of claims 2, 3, 5, 1 7, 4 3-51,
56, and 57 as obvious.
Rejection F- Obviousness (claims 45 and 46)
The Examiner rejects claims 45 and 46 as unpatentable under
35 U.S.C. § 103(a) over Giezen in view ofTrochlil (as applied above) and
alternatively in view of Emmons. Final Act. 23.
Claim 45:
Claim 45, depending from claim 1, additionally requires that "step (b)
comprises physically or chemically bonding at least one particle of the at
least one additive with a plurality of the crosslinked biopolymer molecules."
Appeal Br. 47 (Claims App'x). The Examiner alternatively finds that "it is
not clear that Trochlil's disclosed Ti02 ... would necessarily physically or
chemically bond with the plurality of the crosslinked biopolymer
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molecules." Final Act. 24. But the Examiner finds that Emmons teaches a
liquid dispersion of titanium dioxide where the polymeric latex absorbs to
the surface of the titanium dioxide and enhances interaction with other
particles "in order to sterically stabilize the particles against uncontrolled
aggregation and so they will disperse well in a coating composition." Id. at
24--25.
Appellants state that Emmons teaches dispersing titanium dioxide by
"stirring Ti02 in[ to] the final product, [which] is quite distinguished from
the mechanical treatment under shear force in an extruder as taught by
Giezen." Appeal Br. 41. Appellants reason that, in light of the different
treatment processes, one skilled in the art would have no reason to combine
Giezen and Emmons to arrive at the claimed invention. Id.
Appellants do not persuade us of reversible error. As an initial matter,
Appellants' arguments regarding the combination of Giezen, Trochlil, and
Emmons are of little consequence. The Examiner aptly rejects claims 45
and 46 (Rejection F) as an alternative rejection to Rejection B (also
including claims 45 and 46). Final Act. 23; Ans. 39. We affirmed rejection
B above. See supra pp. 10-15. Noticeably, Appellants did not dispute the
Examiner's findings and conclusions with respect to claims 45 and 46 and
have therefore failed to identify any reversible error regarding the
combination of Giezen and Trochlil alone. Furthermore, the Examiner relies
upon Emmons to "teach that Ti02 may be in the form a dispersion, and why,
where such Ti02 could be added to Giezen's process to improve a paper
coating as set forth by Trochlil, and Emmons then teaches why one would
use Ti02 specifically in a dispersion form." Ans. 39; see also Final Act. 24--
25. Appellants' argument that Emmons teaches a different treatment process
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than Giezen is an attack on Emmons individually (not as part of the
combination) and fails to address the rejection as presented by the Examiner.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (Rather, "[t]he test [for
obviousness] is what the combined teachings of the references would have
suggested to those [having] ordinary skill in the art."). We therefore sustain
the Examiner's rejection of claims 45 and 46 as obvious.
Rejection G- Obviousness (claims 52 and 53)
The Examiner rejects claims 52 and 53 as unpatentable under
35 U.S.C. § 103(a) over Giezen in view of Golley. Final Act. 42.
Claim 52:
Claim 52, depending from independent claim 1, additionally recites
that "the at least one additive has an optical brightening property that is
maintained after the at least one additive is conjugated with the crosslinked
biopolymer molecules, wherein the optical brightening property comprises
absorbing ultraviolet and violet light and re-emitting blue light." Appeal
Br. 47 (Claims App'x). The Examiner finds that Golley teaches using
additives, "including optical brightening agents and fluorescent whitening
agents ... [and] the disclosed agents have a light absorbing and re-emitting
property such as absorbing light in the ultraviolet and violet region and re-
emitting light in the blue region." Final Act. 26.
Appellants argue that the Examiner relies upon improper hindsight
reconstruction in rejecting claim 52. Appeal Br. 42. Appellants explain that
"[ o ]ther than the examples in the present application, there is no information
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in the record indicating that the optical brightening property of an additive is
maintained after co-extrusion with a biopolymer." Id. And, "[t]he cited
references do not suggest, or provide a basis to expect, that the produced
latex forming particles would [have] the light absorbing and re-emitting
propert[ies]" as claimed. Id.
Similar to our discussion above for claim 51 (supra pp. 14--15), we
find no suggestion that the Examiner relies on impermissible hindsight in
rejecting claim 52. The use of additives having optical brightening
properties, including the absorbing UV-light and remitting of blue light is
known. Golley i-f 88; see also Spec. i-f 13 (discussing the prior art). The
Examiner has reason to believe that the addition of the optical brightening
agents of Golley would result in optical brightening properties being
maintained in the conjugated latex forming particles because substantially
the same process and materials are used. Best, 562 F.2d at 1255.
We therefore sustain the rejection of claims 52 and 53 as obvious.
CONCLUSION
Appellants identified a reversible error in the Examiner's rejection of
claims 1, 10-12, 14, 15, 54, and 55 under 35 U.S.C. § 102(b) as anticipated
by Giezen.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 2, 3, 5, 17, 43-51, 56, and 57 under 35 U.S.C. § 103(a) as
unpatentable over Giezen in view of Trochlil.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 4--8 under 35 U.S.C. § 103(a) as unpatentable over
Giezen in view of Trochlil, and further in view of Emmons.
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Appeal 2016-002111
Application 12/630,526
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 9, 13, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Giezen.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Giezen and alternatively in view of Wildi.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 45 and 46 under 35 U.S.C. § 103(a) as unpatentable over
Giezen in view of Trochlil and alternatively in view of Emmons.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 52 and 53 under 35 U.S.C. § 103(a) as unpatentable over
Giezen in view of Golley.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 1, 10-12, 14, 15, 54, and 55 under 35 U.S.C. § 103(a) as
unpatentable over Giezen in view of Trochlil.
DECISION
For the above reasons, the Examiner's rejection of claims 1-19 and
4 3-5 7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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