Ex Parte Desseroir et alDownload PDFPatent Trial and Appeal BoardApr 23, 201813262543 (P.T.A.B. Apr. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/262,543 12/12/2011 Alexandre Desseroir 21888 7590 04/25/2018 THOMPSON COBURN LLP ONE US BANK PLAZA SUITE 3500 ST LOUIS, MO 63101 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. 51585-99405 9382 EXAMINER HEINCER, LIAM J ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 04/25/2018 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): IPDOCKET@THOMPSONCOBURN.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDRE DESSEROIR and PHILIPPE MAITRASSE Appeal2016-005350 Application 13/262,543 Technology Center 1700 Before LINDA M. GAUDETTE, MONTE T. SQUIRE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 CHRYSO is identified as the real party in interest. (Appeal Brief, filed October 30 2015 ("App. Br."), 2.) 2 Final Rejection mailed March 3 2015 ("Final Act."). In this decision, we also refer to the Examiner's Answer mailed February 22 2016 ("Ans."), and the Reply Brief filed April 22 2016 ("Reply Br."). Appeal2016-005350 Application 13/262,543 CLAIMED SUBJECT MATTER The claims are directed to a method for preparing polyalkoxylated polycarboxylate ( co )polymers useful in particular as superplasticizers. Spec. 1:4--5. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for preparing polyalkoxylated polycarboxylates wherein the following are caused to react in the presence of water and a catalyst at a temperature of between 120°C and 250°C: at least one polycarboxylic acid obtained by polymerization of at least one unsaturated carboxylic acid; and at least one polyether carrying a free hydroxyl group capable of reacting with a carboxylic function of the said polycarboxylic acid, the method being characterized in that the catalyst is an alkaline or alkaline-earth salt of a strong protic acid, the method being characterized in that the catalyst is an alkaline or alkaline-earth salt of a strong protic acid. App. Br. 21 (Claims Appendix) ( emphasis added). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Yang Shawl us 5,436,314 us 5,614,017 July 25, 1995 Mar. 25, 1997 3 U.S. Patent Application No. 13/262,543 ("Spec."), Method for Preparing a Superplasticizer. 2 Appeal2016-005350 Application 13/262,543 REJECTI0NS 4 Claims 1-12 have been rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Shawl in view of Yang. Final Act. 3. Claims 13-24 have been rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Shawl in view of Yang. Final Act. 5. OPINION Claims 1 and 13 5, 6 We affirm the rejections for the analyses and reasons presented by the Examiner and add the following for emphasis. The Examiner finds that Shawl describes a reaction of a polyether and carboxylic acid polymer using a strong protic acid in water over the recited temperature range to produce a superplasticizer. Final Act. 3 ( citing Shawl 2:8-13, 3:53-54, 4:40-50, 5:24--33, 5:40-43). The Examiner finds that Yang describes metal salts of a strong protic acid may be selected from lithium, potassium, magnesium, and zinc such as zinc triflate. Id. ( citing Yang 4:26-35). Because Yang is directed to a reaction between a polyether and a carboxylic acid "in the presence ... of a metal salt of a strong protic 4 A rejection of claims 15 and 19 under 35 U.S.C. 112, second paragraph has been withdrawn. Ans. 10. This rejection is not before us on appeal. 5 Consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), claims 2-12 stand or fall with claim 1, and claims 14--24 stand or fall with claim 13, as Appellants make no distinct arguments in support of patentability of any dependent claims. See, e.g., App. Br. 6-19; Reply Br. 2-9. 6 Appellants present arguments in support of claim 1 only. We have considered these arguments as they apply to limitations in claim 13. 3 Appeal2016-005350 Application 13/262,543 acid" (Yang 2:56-62) and Shawl is directed to producing a superplasticizer using polyether and carboxylic acid polymers (Shawl 1 :56-58), the Examiner concludes that a skilled artisan would have used the catalyst described in Yang in the process described in Shawl to arrive at claim 1. Final Act. 4. Appellants argue that a skilled artisan would not have combined the references contending that Shawl is "directed to obtaining the cleavage of the polymer" (App. Br. 7 (citing Shawl 4:22-23)) whereas the method recited enables a reaction without any cleavage of the polyether chain. App. Br. 7; Reply Br. 2-3. As the Examiner points out, claim 1 does not recite a reaction free of cleavage. Ans. 10. Appellants also do not explain why their argument is consistent with Shawl's teaching as a whole which states that "[i]t is preferred that the majority of the ether linkage in the starting polyester remain uncleaved." Shawl 4:36-37. Appellants next argue that "the principle of operation of the catalysts" of the recited method is patentably distinguishable from that of Shawl and present various examples in support. App. Br. 7-12; Reply Br. 4--8. From the outset, the various examples purport to "compare the mechanism of action of the catalysts" (App. Br. 16), but the discovery of a property inherent to a prior art process - if any, in this case - does not render that process patentable, even if the prior art did not appreciate the property. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir. 1987). Moreover, as the Examiner points out, these examples are not commensurate in scope with the claim at issue because they are outside the recited temperature range. Final Act. 8. Appellants do not dispute that the 4 Appeal2016-005350 Application 13/262,543 examples are indeed outside the recited temperature range stating that experiments "are not practical to be carried out at higher temperature ( and especially at the temperatures of the claimed range)." App. Br. 16. No reversible error, therefore, has been identified in the Examiner's analysis here. See In re Dill, 604 F.2d 1356, 1361 (CCPA 1979) ("The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains."). Appellants' arguments with regard to Yang mirror those with regard to Shawl - that is, the recited process is free of cleavage of the polyester and undergoes a different mechanism. Compare App. Br. 7-12, with App. Br. 12-16. For the reasons provided above, no reversible error has been identified in this aspect of the obviousness analysis. DECISION The Examiner's rejections of claims 1-24 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation