Ex Parte DETERING et al

Patent Trials and Appeals Board

May 3, 2019

15022007 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/022,007 03/15/2016
123223 7590 05/07/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Jurgen 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.
074008-1706-US-540439 4973
EXAMINER
MRUK,BRIANP
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN DETERING, GAZI TURKOGLU,
DIETRICH FEHRINGER, HEIKE WEBER,
and CLAUDIA ESPER
Appeal2018-006063
Application 15/022,007
Technology Center 1700
Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 12-27, 29, and 30. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 BASF SE is the Applicant/ Appellant and is also identified as the real party
in interest. Br. 2.
Appeal 2018-006063
Application 15/022,007
The subject matter on appeal is directed to a process for preparing
modified polyaspartic acids or salts thereof. Spec. 1:5, 3 :8-15. Claim 12
illustrates the subject matter on appeal and is reproduced below:
12. A process for preparing modified polyaspartic acid
or salts thereof, consisting essentially of the following steps:
(i) polycondensation of
(a) 50 to 98 mol% of aspartic acid,
(b) 1 to 49 mol% of at least one compound containing
carboxyl groups, and
( c) 1 to 30 mol % of a diamine or an amino alcohol,
at a temperature of 100 to 270°C for I minute to 50
hours, where (b) is not aspartic acid;
(ii) subsequent hydrolysis of the cocondensates with
addition of a base; and
(iii) optional acidification of the salt of polyaspartic acid
obtained in (ii) with mineral acids.
Appellant (see generally Appeal Brief) requests review of the
Examiner's rejection of claims 12-27, 29, and 30 under 35 U.S.C. § 102
(a)(l) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Kroner (US 5,747,635, issued May 5, 1998). Final Act. 2-3;
Ans. 2; 2 Br. 4.
2 For the purposes of this Opinion, we refer to the statement of rejection as
presented on pages 2-3 of the Answer. Appellant has not filed a Reply Brief
indicating any objection to the Examiner's restatement of the rejection.
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Application 15/022,007
Appellant presents arguments only for claim 12 and relies on these
arguments to address the rejections of the remaining claims. See generally
Br. Accordingly, we select claim 12 as representative of the subject matter
claimed and decide the appeal based on the arguments Appellant makes in
support of patentability of this claim.
OPINION
After review of the respective positions Appellant provides in the
Appeal Brief and the Examiner provides in the Final Action and Answer, we
AFFIRM the Examiner's prior art rejections of claims 12-27, 29, and 30
based on Kroner for the reasons the Examiner presents. We add the
following for emphasis.
We refer to the Examiner's Answer for a complete statement of the
rejection of claim 12. Ans. 2-3. Briefly, the Examiner finds that Kroner's
method of preparing modified polyaspartic acid results in a polyamide-
modified polyaspartic acid containing 80 mole percent of aspartic acid, 10
mole percent of adipic acid and 10 mole percent of hexamethylenediamine
that anticipates the subject matter of claim 12 or, in the alternative, would
have rendered the subject matter of claim 12 obvious. Ans. 2-3 (citing
Kroner col. 5, 11. 25-31 ).
With respect to the anticipation rejection, Appellant argues that the
use of the transitional phase "consisting essentially of" in independent claim
12 excludes making Kroner's polyamide-modified polyaspartic from the
claimed process. Br. 6. According to Appellant, the Specification lists 11
diamines and amino alcohols that do not comprise amides or polyamides.
Id. at 7 (citing Spec. 4:4--36). Further, Appellant argues that the structural
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Application 15/022,007
characteristics of a polyaspartic acid modified with a polyamide that Kroner
teaches are completely different from the structural characteristics of the
polymer resulting from the claimed process. Id. at 6, 11. In support of these
arguments, Appellant directs our attention to paragraph 7 of the Declaration
under 37 C.F.R. § 1.132 by co-inventor Dr. Jurgen Detering. 3 Id. at 6-7.
We are unpersuaded of error in the Examiner's determination of
anticipation for the reasons the Examiner presents. Ans. 4. We add the
following for emphasis.
The premise of Appellant's arguments is that the modified
polyaspartic acid resulting from the claimed method does not encompass
Kroner's polyamide-modified polyaspartic acid because both compositions
have different structural characteristics due to the presence of Kroner' s
polyamide component. Br. 6. However, we find no language in the claim
that excludes Kroner's polyamide-modified poly aspartic acid from the
scope of products resulting from the claimed process and Appellant directs
us to no portion of the Specification that excludes polyamide-modified poly
aspartic acid as a product from the scope of the invention.
Further, Appellant's argument that pages 2--4 of the Specification
support excluding polyamide-modified poly aspartic acid products from the
scope of claim 12 (id. at 7) is unavailing because Kroner's polyamide-
modified polyaspartic acid contains 10 mol % ofhexamethylenediamine
(Kroner col. 5, 11. 30-31), which is the same diamine used in Appellant's
exemplary inventive embodiments (Br. 7). In addition, Appellant's claim
broadly recites "a diamine," meaning that any diamine can be used in the
3 The declaration was submitted by Appellant on April 25, 2017 and the
Examiner entered it into the record in the Final Action dated July 11, 2017.
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Application 15/022,007
polycondensation process, including the one Kroner discloses as part of its
polycondensation process. Thus, given that Kroner's polycondensation
process uses 50-98 mol % aspartic acid, 1--49 mol % of at least one
compound containing carboxyl groups, and 1-30% of a diamine in making
the polyamide modified polyaspartic acid, we find that Appellant's
contentions and the Declarant's statements regarding the difference in
structure of the modified polyaspartic acid that would result from using
Kroner' s polycondesation process unpersuasive.
Even considering those arguments, however, we remain unpersuaded
of reversible error in the Examiner's rejection because Appellant does not
direct us to objective evidence that shows how the structure of the product
resulting from Kroner's process and that of the products resulting from the
claimed process compare with each other. In other words, Appellant has not
provided objective evidence that the product resulting from the claimed
process has any difference in structural characteristics from Kroner's
polyamide modified polyaspartic acid. Appellant's contentions and the
Declarant's statements, at most, are mere arguments and such arguments
cannot take the place of evidence. Cf In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); In re Payne, 606 F.2d 303,315 (CCPA 1979).
Therefore, on this record, Appellant has not explained adequately how
the claimed process distinguishes from Kroner's process. See Ans. 4.
Accordingly, we affirm the Examiner's rejection of claims 12-27, 29,
and 30 as anticipated by Kroner for the reasons the Examiner presents and
those we provide above.
We also uphold the alternative obviousness rejection for the reasons
the Examiner presents and those we provide because anticipation is the
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Application 15/022,007
epitome of obviousness. See, e.g., In re Fracalossi, 681 F .2d 792, 794
(CCPA 1982).
In upholding the alternative obviousness rejection, we have
considered Appellant's evidence of unexpected results. Br. 7-11. We do
not find this evidence persuasive because it is not clear that the showing
distinguishes the claimed invention from the closest prior art (Kroner). See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing is
based on a limited number of examples, and Appellant has not explained
adequately why these examples are reasonably commensurate with the broad
scope of compositions claimed so as to provide an adequate basis to support
a conclusion that other embodiments falling within the claim will behave in
the same manner. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
ORDER
The Examiner's prior art rejection of claims 12-27, 29, and 30 under
35 U.S.C. § 102(a)(l) over Kroner is affirmed.
The Examiner's prior art rejection of claims 12-27, 29, and 30 under
35 U.S.C. § 103 over Kroner is 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)(l )(iv).
AFFIRMED
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