11108352 (B.P.A.I. Feb. 24, 2012)

Ex Parte Chen et al

Board of Patent Appeals and InterferencesFeb 24, 2012

11108352 (B.P.A.I. Feb. 24, 2012)

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. 11/108,352 04/18/2005 Shih-Ruey T. Chen WSP-040250 6977 36787 7590 02/24/2012 BLYNN L. SHIDELER THE BLK LAW GROUP 3500 BROKKTREE ROAD SUITE 200 WEXFORD, PA 15090 EXAMINER BARHAM, BETHANY P ART UNIT PAPER NUMBER 1615 MAIL DATE DELIVERY MODE 02/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte SHIH-RUEY T. CHEN and KEVIN W. FREDERICK __________ Appeal 2011-007750 Application 11/108,352 Technology Center 1600 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and STEPHEN WALSH, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a polymer complex. The Examiner has rejected the claims as obvious and indefinite. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses polymer-surfactant compositions for personal care applications (Spec. 1, ¶ 0002). The Specification discloses that “a complex containing a polymer and a surfactant [is] formed by Appeal 2011-007750 Application 11/108,352 2 polymerizing a monomer mixture containing (A) acid functional monomers, [and] (B) one or more cationic monomers…. The acid functional monomers (A) are at least partially neutralized with one or[ ] more amines.” (Id. at 6, ¶ 0032.) The Specification discloses that the amine is added to the “carboxylic acid functional monomers to form a solution of the acid-amine salt and the remainder of the carboxylic acid monomer. The acid-amine mixture is then added to a mixture containing the remainder of the monomers, which are then polymerized.” (Id. at 9, ¶ 0042.) The Specification discloses that “many polymer-cationic surfactant combinations that were not previously obtainable in a uniform desirable form can now be prepared in the form of a uniform stable complex” (id. at 9, ¶ 0044). Claims 1-11, 13-15 and 26 are on appeal. Claim 1, the only independent claim, reads as follows: 1. A complex consisting of a polymer and a surfactant and optional other ingredients formed by polymerizing a monomer mixture consisting of: (A) acid functional monomers at least partially neutralized with one or more amines selected from the group consisting of oleamidopropyl dimethylamine, cocamidopropyl dimethylamine, stearamidopropyl dimethylamine, behenamidopropyl dimethylamine, soyamidopropyl dimethylamine, and mixtures thereof; (B) one or more cationic monomers; and optionally (C) one or more other monomers; and optionally (D) a branching quantity of one or more monomers that have two or more sites of reactive unsaturation; wherein the other ingredients are selected from the group consisting of water, electrolytes, silicone gums, silicone resins, coated mica, ethylene glycol distearate; opacifiers, preservatives, pH adjusting aids, coloring agents, dyes, perfumes, sequestering agents, and combinations thereof; wherein the complex is a uniform stable complex in water. Appeal 2011-007750 Application 11/108,352 3 All of the claims on appeal stand rejected under 35 U.S.C. § 112, second paragraph, and under 35 U.S.C. § 103(a) in view of either Chen, 1 Chan, 2 and Hohenstein, 3 or Chen, Sramek, 4 and Frechet. 5 I. The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 112, second paragraph, on the basis that it is not clear what components would be excluded from the complex of claim 1 by the recitation of a “complex consisting of a polymer and a surfactant and optional other ingredients” (Answer 3). In the Examiner‟s view, it is not clear what claim 1 excludes because the claim recites several optional ingredients “which could read on any number of things” (id. at 3-4). The Examiner also concludes that the claims are ambiguous because “the phrase „optional‟ appears 3 times and in each case it is not appropriately defined” (id. at 11). Appellants argue that the list of optional ingredients recited in claim 1 “is closed ended and each element is readily discernable to those skilled in the art” (Appeal Br. 12). We agree with Appellants that the Examiner has not adequately shown that the claims are indefinite. “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). Reciting optional limitations does not, without 1 Chen et al., US 2003/0064044 A1, published Apr. 3, 2003. 2 Chan et al., US 7,074,244 B2, issued July 11. 2006. 3 Hohenstein et al., US 6,566,313 B1, issued May 20, 2003. 4 Sramek, US 4,874,604, issued Oct. 17, 1989. 5 Frechet et al., US 6,663,855 B2, issued Dec. 16, 2003. Appeal 2011-007750 Application 11/108,352 4 more, render claims indefinite. See Ex parte Cordova, 10 USPQ2d 1949, 1950 (BPAI 1987) (“[T]he use of the alternative expression “optionally” in the rejected claims does not obfuscate the subject matter appellants regard as their invention”). Here, the Examiner has not asserted that one of skill in the art would not understand what is meant by the particular claim terms such as “electrolytes” or “silicone resins”. Thus, it reasonably appears that one of skill in the art would understand that claim 1 encompasses a polymer/surfactant complex that consists of a polymer and surfactant, or one that also contains one or more of the optional, specified ingredients. The rejection of claims 1-11, 13-15 and 26 under 35 U.S.C. § 112, second paragraph, is reversed. II. The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103(a) as being obvious either in view of Chen, Chan, and Hohenstein, or in view of Chen, Sramek, and Frechet. Since the same issue is dispositive for both of these rejections, we will consider them together. The Examiner finds that Chen discloses “a composition for treating keratin comprising a water-soluble polymer complex, one or more monomers, including cationic monomers, additional monomer and surfactant components chosen from cationic surfactants” (Answer 5), and that the polymer may contain acid functionalized monomers (id.). The Examiner finds that Chan and Hohenstein disclose that “various dimethylamines such as soyamidopropyl, stearamidopropyl and/or oleamidopropyl are known cationic surfactants for use in a keratin treating Appeal 2011-007750 Application 11/108,352 5 compositions” (id. at 7). The Examiner concludes that it would have been obvious to “to substitute a known cationic surfactant used in a keratin composition such as soyamidopropyl dimethylamine” as taught by Chan or Hohenstein, for the cationic surfactants in Chen‟s composition (id. at 7-8). Similarly, the Examiner finds that Sramek and Frechet “teach that various dimethylamines such as … stearamidopropyl, cocoamidopropyl are known for use in neutralizing acid groups of polymers in order to promote solubility and dispersability [sic]” (id. at 8). The Examiner concludes that it would have been obvious to combine Chen‟s complex with the dimethylamines of Sramek and Frechet because one of ordinary skill in the art would have expected to resulting product to have improved water solubility and dispersibility (id. at 9-10). Appellants argue that Chen “discloses a water-soluble interjacent complex that includes a first water-soluble polymer and one or more water- soluble monomers polymerized to form a second water-soluble polymer in the presence of the first water-soluble polymer. The invention of [Chen] results in a complex of two polymers.” (Appeal Br. 13.) Appellants argue that Chen “requires a host polymer to be present in the monomer mixture” (id.), whereas in claim 1, “the „consisting of‟ transition phrase in the claims precludes the inclusion of a host polymer” (id.). Appellants argue that the “claims limit the polymer to a polymer formed by polymerizing a monomer mixture containing … (A) acid functional monomers at least partially neutralized with … amines; (B) one or more cationic monomers; and optionally (C) … other monomers; and optionally (D) a branching quantity Appeal 2011-007750 Application 11/108,352 6 of one or more monomers that have two or more sites of reactive unsaturation” (Appeal Br. 11). The Examiner responds that the “host polymer of [Chen] is not and cannot be excluded by Appellants[‟] product claims drawn to a polymer- surfactant-other optional ingredients complex, as the product of the instant claims require a polymer to be present” (Answer 13). The Examiner also argues that the process limitations of claim 1 do not distinguish the claimed complex from the complex suggested by the cited references because the two complexes appear to be the same (id., citing In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985)). We agree with Appellants that the Examiner has not adequately explained how the cited references would have made obvious the claimed complex. Claim 1 is limited to a complex that consists of (i) a polymer formed by polymerizing acid functional monomers (neutralized with one or more specified amines), cationic monomers, and optionally other monomers and (ii) other optional ingredients that are selected from a specified list. The “consisting of” transition of claim 1 excludes any ingredients that are not specified as required or optional. See AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (“[C]losed transition phrases such as „consisting of‟ are understood to exclude any … ingredients not specified in the claim.”). Since the Examiner has not adequately explained how the host polymer of Chen would correspond to polymer (i) defined by claim 1, or any of the specified optional ingredients, the Examiner has not adequately explained how adding the dimethylamines of Chan, Hohenstein, Sramek, or Appeal 2011-007750 Application 11/108,352 7 Frechet to the polymerization process of Chen would have resulted in the complex of claim 1. Thus, we reverse the rejection of independent claim 1 and dependent claims 2-11, 13-15 and 26 under 35 U.S.C. § 103(a). SUMMARY We reverse the rejection of claims 1-11, 13-15, and 26 under 35 U.S.C. § 112, second paragraph. We also reverse the rejection of claims 1- 11, 13-15, and 26 under 35 U.S.C. § 103(a). REVERSED alw