Ex Parte Brady et al

Board of Patent Appeals and Interferences

Mar 24, 2010

11784852 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN M. BRADY,
WILLIAM D. ROHRBACH,
and WEI ZHANG
____________

Appeal 2009-010672
Application 11/784,852
Technology Center 1700
____________

Decided: March 24, 2010
____________

Before MICHAEL P. COLAIANNI, KAREN M. HASTINGS, and,
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of
claims 1, 3-7 and 10-14. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.

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Application 11/784,852

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BACKGROUND
Claim 11 is illustrative of Appellants’ invention:
11. An aqueous composition comprising:

(A) an aqueous dispersion of a copolymer, in polymerized form, of:
(i) 95-98% by weight of one or more monoethylenically
unsaturated monomer; and

(ii) 2-5% by weight of a beta-dicarbonyl monomer or
cyanocarbonyl monomer; and

(B) a photoinitiator present in the range of 0.1-1% by weight, based
upon the total weight of copolymer,

wherein the said composition is formed by a single stage emulsion
polymerization process whereby at least 75% of the said beta-dicarbonyl
monomer or cyanocarbonyl monomer (ii) is added by staged feed of the said
monomer during the second half, by weight, of the feed of monomers (i),
and

wherein the copolymer has a weight average molecular weight in the
range of from 10,000 to 200,000.

The Examiner maintains, and Appellants seek review of, the
following rejections:
Claim 11 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bors1.

1 U.S. Patent 5,296,530, issued March 22, 1994.
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Application 11/784,852

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The § 112 Rejection
Principles of Law
35 U.S.C. § 112, ¶ 2 “puts the burden of precise claim drafting
squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). During patent prosecution an applicant has the opportunity to amend
the claims in order to overcome indefiniteness rejections. Exxon Research
and Eng’g Co. v. U.S., 265 F.3d 1371, 1380 (Fed. Cir. 2001) (citing In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
To the extent there is any doubt about indefiniteness, the time to
resolve those doubts is while the application is pending. In re Zletz, 893
F.2d at 322 (an essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous; only in this way can
uncertainties of claim scope by removed, as much as possible, during the
administrative process). Therefore, when an examiner advances a
reasonable basis to believe that those of ordinary skill in the art would not be
able to determine the scope of the claim, the burden shifts to the applicant to
show otherwise.
Analysis with Factual Findings
The Examiner explains that the use of the term “single-stage emulsion
polymerization process” as recited in claim 11 is inconsistent with the
process steps that follow, since these steps require the addition of the
monomers in more than one stage (Ans. 3, 5).
Appellants content that the addition of the beta-dicarbonyl monomer
occurs “within a single stage polymerization forming a single emulsion
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Application 11/784,852

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polymer” (Br. 6). They also offer an amendment to remove the word
“staged” in the phrase “is added by staged feed” of claim 11 (id.)2.
The Examiner aptly points out, that both the Specification and claims
describe that the addition of the dicarbonyl monomer (AAEM) occurs in the
second half of the feed of the monomers, and is absent at least during the
initial stages of polymerization (Ans. 5, 6). The Examiner further points out
that the removal of the word “staged” does not change the fact that the
AAEM is added only in the second half of the polymerization process (Ans.
7).
The Examiner also finds that Appellants have in previous remarks
(filed 9/16/2008) described the invention so as to distinguish a single stage
from a multi-stage emulsion polymerization process by virtue of the
monomer emulsion respectively containing all of the monomers versus part
of the monomers (Ans. 6).3
Appellants have not offered any persuasive reasoning or evidence that
one of ordinary skill in the art would have understood that a “single-stage
emulsion polymerization process” as recited in claim 11 would have
included adding one of the monomers only during the second half of the feed
of monomers (see generally Br. 6).

2 This amendment to claim 11 was offered after the final rejection and not
entered, and Appellants also request entry and consideration of dependent
claim 12 which was also not entered (Br. 5). However, the Examiner’s
refusal to enter an amendment is reviewable by petition, and thus is not
within the jurisdiction of the Board. 37 C.F.R. § 1.127 (2009); see also
MPEP §§ 1201, 1002, 8th ed., rev. July 2008.
3 Appellants have not provided any response to this finding, as no Reply
Brief was filed.
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In light of these circumstances, the resulting inconsistency of the use
of the phrase “single-stage emulsion polymerization process” with steps that
set forth a process that even Appellants have previously agreed is not a
single-stage emulsion process, renders the scope of claim 11 unclear, since a
person of ordinary skill in the art practicing a polymerization process would
not understand the metes and bounds of the claim. Accordingly, we sustain
the Examiner’s rejection of claim 11 under 35 U.S.C. § 112, second
paragraph.
The § 103 Rejection
Issue
Has the Examiner erred in his determination that optimizing the
amount of beta-dicarbonyl monomer in Bors to “2-5% by weight” and
optimizing the claimed molecular weight of the resulting copolymer of Bors
to within the range of “from 10,000 to 200,000” as recited in independent
claim 1 would have been prima facie obvious? If not, has the Examiner
erred in concluding that the weight of the evidence, taking into account
Appellants' evidence of unexpected results, weighs in favor of obviousness?
We decide both of these questions in the negative.

PRINCIPLE OF LAW
The discovery of an optimum value of a variable in a known process
or product is usually a matter of obviousness for one of ordinary skill in the
art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368-69 (Fed. Cir. 2007).
This is the kind of situation that requires an Appellant to show secondary
considerations such as unexpected results or criticality to overcome the
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prima facie case. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see
also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
A reference "teaches away" when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellants' invention; the degree of teaching away will of course depend on
the particular facts. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
See also Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state that it
“should not” or “cannot” be used in combination with other features in the
prior art.).
FACTUAL FINDINGS
We refer to the Examiner’s detailed factual findings stated in the
Answer (Ans. 3-5) and Final Office Action (3-5), as well as the Examiner’s
detailed findings of fact in response to the Appeal Brief as set out on pages
6-12 of the Answer in the “Response to Argument” section.
In summary and for emphasis only, Bors teaches a composition as
recited in claim 11, except that Bors fails to specifically teach the range of
2-5% by weight of its beta-dicarbonyl monomer (i.e., the preferred monomer
of AAEM, which is the same monomer Appellants describe in their
inventive examples), and fails to teach that the resulting copolymer has a
weight average molecular weight in the range of from 10,000 to 200,0004.
As the Examiner points out, Bors teaches a preferred range of 0.5 to
20% by weight AAEM and uses 5% AAEM in some of its examples (Bors,

4 Appellants do not dispute the Examiner’s finding that the amount of the
photoinitiator is a known result-effective variable and thus the use of the
claimed amount in the process of Bors would have been within the artisan’s
skill (Ans. 5; generally Br.).
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col. 5, ll. 43-46, col. 8, Examples 2, 3). Bors teaches a molecular weight of
the resulting polymer of 1000 to over 1 million (Bors, col. 5, ll. 47-51). The
Examiner relies upon Bors teaching that sequential polymerization in the
core may be advantageous and results in a lightly crosslinked core with the
pendant acetoacetate concentrated in the shell to exemplify the obviousness
of adding the AAEM monomer during the second half of the feed of
monomers (col. 7, ll. 5-14), such that the process may be similar to that
presented in product-by-process form in claim 11 (Ans. 4).5
No Reply Brief has been filed.

ANALYSIS
The Examiner’s findings reasonably establishes that the prior art
would have suggested the obviousness of the claimed amount of AAEM
monomer (as well as its sequential addition to provide a concentrated shell)
and the molecular weight of the resulting copolymer.
Appellants’ contentions that Bors teaches away from use of 2-5%
AAEM are unavailing in light of the examples in Bors that use as little as
5% AAEM (Br. 8, 9, 11-13; Ans. 8). Appellants’ rely on the description in
Bors which states as an example, a molecular weight of 10,000 would
typically contain 30% or more of the AAEM (Br. 12). However, it is well
established that the prior art as a whole must be considered. Bors’ use of 5%
AAEM in its examples, coupled with its description that the amount of this

5 Appellants’ also do not specifically dispute the Examiner’s finding that the
claimed polymer formation via a “single stage emulsion” process is a
product-by-process limitation, that the patentability of a product does not
depend on its method of production, and that the product as claimed is
obvious over the product of Bors (Ans. 5; generally Br.).

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monomer “will vary from case to case depending on the desired degree of
cure necessary in the particular end use application” (col. 5, ll. 40-43)
supports the Examiner’s obviousness determination of the claimed ranges.
In re Gurley, 27 F.3d at 553; see also Para-Ordnance Mfg., Inc., 73 F.3d at
1090.
We disagree with the other arguments raised by Appellants for
essentially the reasons stated by the Examiner in the Answer.
Accordingly, Appellants have not persuasively argued that the facts
and reasons relied on by the Examiner are insufficient to establish a prima
facie case of obviousness as to claim 1.
Where the Examiner establishes a reasonable basis to conclude that
the claimed invention would have been obvious, as here, (that is, based on
optimizing the amount of AAEM monomer, and the molecular weight of the
resulting copolymer) the burden shifts to the Appellants to rebut the prima
facie case by providing evidence of unexpected results or a showing that the
prior art teaches away from the claimed invention in any material respect.
See In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
Accordingly, we now focus on Appellants’ contentions that they have
shown “unexpected beneficial results” when AAEM monomer is used in the
low levels claimed (Br. 9; see also Br. 10-13). Because Appellants have
submitted evidence of unexpected results, we reevaluate the facts on which
the prima facie case of obviousness was reached along with the secondary
indicia of nonobviousness. See e.g., In re Eli Lilly & Co., 902 F.2d 943, 945
(Fed. Cir. 1990).

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Secondary Considerations
Appellants have proffered the Declaration of Dr. Wei Zhang,
submitted April 14, 2008, to show the criticality of the claimed molecular
weight in achieving superior adhesion properties (e.g., see Br. 9).
Appellants have not identified any error in the Examiner's
determination that the proffered evidence of unexpected results is
insufficient.6 The Examiner finds that the Declaration evidence is not
commensurate in scope with claim 11, which does not require the enamine
form of the recited dicarbonyl (acetatoacetate) monomer (Ans. 6). The
Examiner also finds that the lowest molecular weight polymer (Polymer D)
that Appellants’ regard as having demonstrated commercially acceptable
adhesion results has a molecular weight of 80,000, which is far from the
claimed lower limit of 10,000 (Ans. 10). The Examiner points out that it
would appear likely that a polymer with the lower claimed molecular weight
of 10,000 would have an unacceptable wet knife adhesion similar in
behavior to the unacceptable Polymer F with its molecular weight of 8000
(id.). Appellants have not contested these findings of the Examiner.7
Under these circumstances, Appellants have not persuaded us of any
error in the Examiner’s conclusion that the weight of the evidence with
respect to the rejection based on Bors, taking into account Appellantsۥ
evidence of secondary considerations, weighs in favor of obviousness.

6 The burden rests with Appellants to establish that the results are
unexpected, based on comparisons with the closest prior art, and
commensurate in scope with the claimed subject matter. See, e.g.,
In re Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990).
7 No Reply Brief was filed. Appellants have not addressed some of the
deficiencies (as noted by the Examiner in the Answer) of Appellants’
proffered evidence.
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Accordingly, Appellants have not identified any error in the
Examiner’s factual findings and obviousness analysis of claim 11 on appeal.

CONCLUSION
We affirm both the Examiner’s § 112, second paragraph rejection and
the Examiner’s § 103(a) rejection of claim 11 on appeal.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

cam

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