Ex Parte Bobsein et al

Patent Trial and Appeal Board

Sep 27, 2016

12932853 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/932,853 03/08/2011 Barrett Richard Bobsein
21898 7590 09/29/2016
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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.
69647 9032
EXAMINER
MILLER, DAVID L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRETT RICHARD BOBSEIN,
MARIANNE PATRICIA CREAMER, ERIC C. GREYSON,
JOSEPH MANNA, and THOMAS MADLE
Appeal2015-003259
Application 12/932,853
Technology Center 1700
Before JEFFREY T. SMITH, A VEL YN M. ROSS, and BRIAND. RANGE,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under the 35 U.S.C. § 134(a) from the May 7, 2014
final rejection of claims 1-3, 5, 9, and 10. We have jurisdiction under
35 U.S.C. § 6(b).
Appellants' invention relates to a method for preparing
hydrophobically modified acrylic rheology modifiers suitable for thickening
Appeal2015-003259
Application 12/932,853
aqueous formulations. (Spec. 1 ). Claim 1 is illustrative of the subject matter
on appeal and is reproduced below:
1. A method for preparing hydrophobically modified
rheology modifiers; said method comprising polymerizing a
monomer mixture comprising:
(i) 1to25 wt% H2C=C(R)C02(CH2CH20)n(CH(R')CH20)mR",
wherein R is H or CH3, R' is methyl; R" is Cs-C22 alkyl; n is an
average number from 18-25 and m is an average number from
0-3·
'
(ii) 25 to 55 wt% acrylic acid, methacrylic acid, or a
combination thereof; and
(iii) 40 to 60 wt% ethyl acrylate;
wherein at least 70% of polymerization occurs in the
presence of an oxidant, a reductant and a metal catalyst, at
temperatures from 40°C to 70°C, and substantially in the
absence of a peroxide, hydroperoxide or perester containing an
alkyl group having at least five carbon atoms.
App. Br. 10 (Claims Appendix).
The Examiner maintains, and Appellants appeal, the 35 U.S.C.
§ 103(a) rejections of claims 1-3, 5, 9, and 10 over Leyrer1 (WO
2009/019225A2, Feb. 12, 2009); and claims 2-3, 5, 9 and 10 over Leyrer in
view of Slone (US 6,646,086 B2, issued Nov. 11, 2003) and Shoaf (US
2006/0270769 Al, published Nov. 30, 2006). (Final Act. 3-7).
1 The Examiner utilizes US 2011/0230387 Al, published Sept. 22, 2011 as
an English language equivalent of WO 20091019225 (Final Act. 3).
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Application 12/932,853
OPINION2
We have reviewed each of Appellants' arguments for patentability.
We will sustain the Examiner's rejection for essentially those reasons
expressed in the Final Action and the Answer. We add the following:
Appellants rely on the evidence presented in the Specification as
discussed in the Declaration of Dr. Joseph Manna3 to establish the
patentability of the claimed invention. Appellants in the Brief do not explain
error in the Examiner's determination that the claimed method is obvious
over Leyrer. (App. Br. 7).
When evidence of secondary considerations is submitted, we evaluate
the rebuttal evidence along with the evidence upon which the conclusion of
prima facie obviousness was based, rather than evaluating it on its
knockdown ability. In re Rinehart, 531F.2d1048, 1052 (CCPA 1976).
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
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).
On this record, we agree with the Examiner that the evidence relied
upon is insufficient to establish non-obviousness for the scope of the
invention as sought by Appellants. (Ans. 6-10).
2 Appellants have not presented arguments specific to any claim. We limit
our discussion to independent claim 1. Appellants have not substantively
addressed the separate rejection of claims 2, 3, 5, 9 and 10. Consequently,
these claims will stand or fall with independent claim 1.
3 Signed January 8, 2014.
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Appeal2015-003259
Application 12/932,853
We have considered the Declaration of Dr. Manna. The evidence
relied upon from the Specification is not commensurate in scope with the
claimed invention. Specifically, the examples relied upon in the Declaration
are limited to very specific formulas as described in the table appearing in
the Declaration i-f 6 and page 15 of the Specification. Dr. Manna has not
adequately explained why these examples provide superior results and why
these limited examples support patentability over the entire scope of the
claimed invention which comprise varying monomers and wide-ranging
amounts as specified in claim 1. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re Klosak, 455 F .2d 1077, 1080 (CCP A 1972) ("the burden of
showing unexpected results rests on he who asserts them"); see also In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims."); In
re Greenfield, 571 F .2d 1185, 1189 (CCP A 1978) ("Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
'it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Dr.
Manna states "[[t]he differences between the amounts and identities of
substituent groups in the Examples and in claim 1 are relatively small."
(i-f 6). Dr. Manna's discussion does not take into account the wide variation
in content of these various monomer constituents encompassed by the
claimed invention.
Finally, we again emphasize that, although secondary considerations
of nonobviousness must be taken into account, they do not necessarily
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Appeal2015-003259
Application 12/932,853
control the obviousness conclusion. Pfizer, Inc. v. Apotex, 480 F.3d 1348,
1372 (Fed. Cir. 2007). Here, the record establishes a strong prima facie case
of obviousness where Leyrer expressly discloses redox polymerization is
also a preferred polymerization technique. (Leyrer i-f 55). However, Dr.
Manna's testimony is based on a comparison of Leyrer exemplified thermal
po 1 ymerizati on. (Declaration i-f 4).
Accordingly, we affirm the Examiner's obviousness rejection of
claims 1-3, 5, 9, and 10 for the reasons presented by the Examiner and given
above.
ORDER
The Examiner's obviousness rejections are 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)(l).
AFFIRMED
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