Ex Parte Detering et al

Patent Trial and Appeal Board

Apr 11, 2016

13302593 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/302,593 11/22/2011
123223 7590 04/13/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Jtirgen Detering
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.
074014-0453-286588 5066
EXAMINER
MRUK,BRIANP
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
04/13/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN DETERING, BOLETTE URTEL, HEIKE WEBER,
ROLAND ETTL, TORBEN GADT, EWALD HEINTZ,
THORSTEN BASTIGKEIT, THOMAS BITING, and
DOROTA SENDOR-MULLER1
Appeal 2014-006161
Application 13/302,593
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 12, 13, and 15-26. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is BASF SE, which
acquired the rights to the application on appeal from Henkel AG & Co.
KGAA. Br. 2.
Appeal2014-006161
Application 13/302,593
The subject matter on appeal relates to copolymers comprising
carboxylic acid groups, sulfo groups, and polyakylene oxide groups, which
are useful in machine dishwashing. Spec. 1 :5-8; Claim 12. Claim 12 is
reproduced below from page 9 (Appendix A) of the Appeal Brief:
12. A copolymer which comprises, in copolymerized form,
al) 30 to 90% by weight of at least one monoethylenically
unsaturated C3-Cs-carboxylic acid or of an anhydride or
water-soluble salt thereof,
a2) 3 to 60% by weight of at least one monomer comprising
sulfo groups, wherein the monomer comprising sulfo
groups is selected from 2-acrylamido-2-
methylpropanesulfonic acid, allysulfonic acid and the
water-soluble salts thereof,
a3) 3 to 60% by weight of at least one nonionic monomer of
the formula (I)
H2C=C(R1)COO-[R2-0] 0 -R3 (I)
in which R 1 is hydrogen or methyl, R2-0 moieties are
identical or different, are selected from ethylene oxide and
1,2-propylene oxide and may be arranged in blocks or
randomly, and R3 is hydrogen or a straight-chain or
branched C1-C4-alkyl radical and o is a natural number
from 3 to 50,
a4) 0 to 30% by weight of one or more further ethylenically
unsaturated monomers which are polymerizable with al),
a2) and a3),
where the sum of al), a2), a3) and a4) does not exceed 100% by
weight.
ANALYSIS
Claims 12, 13, and 15-26 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or alternatively under 35 U.S.C. § 103(a) as unpatentable
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Application 13/302,593
over, Tropsch (WO 2008/132131 Al, published Nov. 6, 20082). The
Appellants do not argue the claims separately, so the claims stand or fall
together. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). We select claim 12,
reproduced above, as representative of the rejected claims.
After review of the evidence in the appeal record and the opposing
positions of the Appellants and the Examiner, we determine that the
Appellants have not identified reversible error in the Examiner's rejection.
Accordingly, we affirm the rejection for reasons set forth by the Examiner in
the Answer. See generally Ans. 2-5. We add the following for emphasis
and completeness.
The primary issue before us is whether Tropsch describes or otherwise
renders obvious a copolymer possessing element "a3" recited by claim 12.
Concerning element a3, the Examiner relies on Tropsch's description of a
copolymer comprising:
2 to 35 mol % of at least one nonionic monomer of the formula
v
II2C==C(R13)C(==O)O-R14-[R15-0]0 -R15 (V)
in which R13 is hydrogen or methyl, R14 is a chemical bond or a
straight-chain or branched C1-C6-alkyl radical, each R 15
represents identical or different, straight-chain or branched C1-
C6-alkyl radicals, and o is a natural number from 3 to 50,
incorporated by random or block copolymerization.
Tropsch i-f 103.
The only difference that the Appellants identify between Tropsch
formula V and formula I of claim 12 (element a3) is that Tropsch's
"disclosure of R 15-0 ... does not specifically disclose" that R15-0 "is
2 The Appellants and the Examiner cite U.S. equivalent US 2010/0065090
A 1. We do the same in this decision.
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Appeal2014-006161
Application 13/302,593
selected from ethylene oxide and 1,2-propylene oxide." Br. 4. The
Appellants argue that Tropsch discloses a large number of species for the
genus R15-0, and that ethylene oxide and 1,2-propylene oxide are cyclic,
whereas Tropsch states that R15 is straight-chain or branched. Id. at 4--5.
We are not persuaded by those arguments. Tropsch expressly
discloses that "R15 represents ... C1--C6-alkyl radicals." Tropsch i-f 103. As
the Examiner explains, "when R15 [of Tropsch] is a C2_3 alkyl radical ... the
moiety [R 15-0] in formula V of Tropsch is ethylene oxide ... or propylene
oxide ... per the requirements of the instant invention." Ans. 3. The
Appellants do not persuasively refute that finding.
The number of species disclosed by Tropsch for R15 is not so large or
complex as to render claim 12 patentable over the disclosure of Tropsch.
The Appellants do not attempt to quantify the number of species that falls
within the genus of R15, but R15 permits a maximum of 6 carbon atoms,
which is not a particularly large number in the field of endeavor at issue
here. Moreover, the Examiner finds, and the Appellants do not persuasively
dispute, that both the C2 and C3 alkyl radicals result in an [R15-0] moiety
that meets the limitation of claim 12. Given the maximum of 6 carbons
atoms permitted by R15, a person of ordinary skill in the art would have been
able to immediately envisage the C2 and C3 moieties identified by the
Examiner. See In re Schaumann, 572 F.2d 312, 316-17 (CCPA 1978). At
the very least, a person of ordinary skill in the art would have found the
selection obvious in view of the genus disclosed by Tropsch. The
Appellants have not persuasively argued to the contrary.
While the Appellants argue that "[i]t is not apparent to one of ordinary
skill in the art that R15-0 is a disclosure of a cyclic moiety," App. Br. 5, the
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Application 13/302,593
Examiner finds that when R15 of the R15-0 moiety is a C2_3 alkyl radical, the
requirements of claim 12 are met, Ans. 3. The Appellants provide no basis
to reject that finding, nor do they contest the Examiner's finding that "the
cyclic versions of ethylene oxide and 1,2-propylene oxide ... become linear
upon the opening of the oxirane ring during polymerization." Ans. 3--4.
Thus, the Appellants have not identified a patentable distinction between the
copolymer, "in copolymerized form," of claim 12 and the copolymer of
Tropsch.
The Appellants next state that "one of ordinary skill in the art would
not have predicted from Tropsch that the particular copolymers
encompassed by the pending claims provide improved washing results," and
that "Tropsch provides no specific reason to choose AMPS as component
a2) of the monomer and no suggestion that AMPS provides for improved
washing results." Br. 5---6. Tropsch teaches (1) a "dishwasher detergent
with excellent rinsing power," Tropsch at Title; see also Abstract,
suggesting that its copolymer does indeed possess good washing results, and
(2) the use of AMPS as a "[p ]articularly preferred monomer[] containing
sulfonic groups." Tropsch i-f 95. Accordingly, the Appellants' arguments do
not persuade us of reversible error.
Finally, the Appellants state that "[t]he results obtained with the
inventive copolymers are significantly better ... as compared to
comparative examples .... " Br. 6. However, the Appellants cannot
overcome a rejection under § 102 by showing the results are better or even
unexpected. See In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). Even
if the copolymer of Tropsch were to fail to anticipate the claimed copolymer,
the Appellants' showing would fail. "Better" results are not necessarily
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Application 13/302,593
evidence of nonobviousness, and the Appellants have not argued that the
results would have been unexpected. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972) ("[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference."). Even assuming that the Appellants' results
are "better," the fact that a compound has a property somewhat superior in
comparison to another compound does not necessarily mean the result would
have been unexpected. The Appellants must establish that the property
would have been viewed as unexpected by one of ordinary skill in the art,
and they have not done so in this case. Pfizer, Inc. v. Apotex, Inc., 480 F .3d
1348, 13 71 (Fed. Cir. 2007) ("[A ]ny superior property must be unexpected
to be considered as evidence of non-obviousness." (emphasis in original)).
For those reasons, we affirm the Examiner's rejection of claim 12.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 12, 13, and 15-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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