Ex Parte Desseroir et al

Patent Trial and Appeal Board

Apr 23, 2018

13262543 (P.T.A.B. Apr. 23, 2018)

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.
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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.
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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
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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
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