Ex Parte Doolan et alDownload PDFPatent Trial and Appeal BoardMay 30, 201814376435 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/376,435 08/04/2014 30256 7590 SQUIRE PB (PAL Office) 275 Battery Street Suite 2600 San Francisco, CA 94111 06/01/2018 FIRST NAMED INVENTOR Joseph G. Doolan 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. 107345.00503 4962 EXAMINER SAL VITTI, MICHAEL A ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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): sfripdocket@squirepb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH G. DOOLAN and ADAM SAFIR Appeal2017-004092 Application 14/376,435 Technology Center 1700 Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's November 5, 2015 decision finally rejecting claims 1, 2, 5-12, 15-24, 26-34, and 36-38 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We affirm. 1 Appellant is the Applicant, Amyris, Inc., which, according to the Appeal Brief, is the real party in interest (Appeal Br. 1 ). Appeal2017-004092 Application 14/376,435 CLAIMED SUBJECT MATTER Appellant's disclosure is directed to famesene interpolymers derived from a famesene and at least a vinyl monomer; and the processes of making and using the famesene interpolymers (Abstract). Details of the claimed invention may be found in representative claims 1 and 7, which are reproduced below from the Claims Appendix: 1. An emulsion polymerization composition comprising: a) a polymerizable mixture comprising a famesene and at least one vinyl monomer; b) at least one emulsifier; c) at least one free radical initiator; and d) water, wherein the at least one vinyl monomer comprises methacrylic acid and a methacrylic ester. 7. The composition of claim 6, wherein the methacrylic acid is in an amount from 10 wt.% to about 40 wt.%, based on the total weight of the polymerizable mixture. REJECTIONS I. Claims 1, 2, 5, 7, 10-12, 15, 17, 20-24, 26, 28, 31-34, and 36-38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mo2 in view of Odian. 3 II. Claims 6, 9, 16, 19, 27, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mo in view of Odian. 2 Mo et al., US 2013/0251846 Al, published September 26, 2013. 3 George Odian, Principles of Polymerization, Chapter 4, pp. 350-371 (2004). 2 Appeal2017-004092 Application 14/376,435 III. Claims 8, 18, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mo in view of Odian, and further in view of Castle. 4 DISCUSSION Appellant argues claim 7 separately, but indicate that the rest of the appealed claims rise or fall with claim 1. Accordingly, our decision focuses on the rejection of claim 1 over Mo in view of Odian. We also address Appellant's separate arguments directed to claim 7. Claim 1 The Examiner finds that Mo teaches an emulsion polymerization and method thereof comprising polymerizing a mixture of famesene and at least one other vinyl monomer selected from a group of 13 monomers which includes both methacrylic esters and a methacrylic acid (Final Act. 2, citing Mo, i-fi-f 14, 25, and 26). The Examiner further finds that Mo is silent with respect to the specific use of both methacrylic acid and methacrylic esters, but identifies both as possible monomers in a list which explicitly permits combination of the listed monomers 5 (Final Act. 2). Therefore, the Examiner determines that it would have been obvious to use a combination of both methacrylic acid and methacrylic esters, citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). The Examiner also finds that Mo is silent concerning the presence of water, and emulsifier, and a water-soluble initiator in an emulsion polymerization (Final Act. 3). However, the Examiner further finds that a 4 Castle et al., US 2010/0233100 Al, published September 16, 2010. 5 Mo states that "when a polyfamesene interpolymer is made, at least one other comonomer is polymerized with the famesene" (Mo, i1 26, emphasis added). 3 Appeal2017-004092 Application 14/376,435 person of ordinary skill in the art would have understood that emulsion polymerization would require these elements (id.). The Examiner cites Odian to support this finding (id., citing Odian, pp. 351, 352, 363). The Examiner concludes as follows: At the time of the invention, it would have been obvious for a person having ordinary skill in the art to conduct the emulsion polymerization of Mo in water, with a water-soluble initiator and emulsifier (assuming these ingredients are not present [in Mo's process]), with the motivation of enabling facile thermal and viscosity control over the polymerization process and attaining a high molecular weight and reaction rates (Mo[,] top of page 351). Mo would have found this to be beneficial because he desires high molecular weights (Mo Abstract). (Final Act. 3--4). Appellant makes four arguments in support of reversal of the rejection of claim 1: (1) The Examiner has not established an adequate reason that a person of skill in the art would have selected methacrylic acid and a methacrylic ester as monomers for the polymerization with famesene; (2) a person of ordinary skill in the art would not have selected methacrylic acid as a monomer because methacrylic acid is toxic and hence would not be used to make a chewing gum base; (3) emulsion polymerization (which is one of the polymerization techniques taught by Mo) would not be selected to make a food grade polyfamesene because emulsion polymerization involves the use of surfactants and other products which are difficult to remove from the final product; and ( 4) emulsion polymerization would not be selected to make a polyfamesene because Mo teaches that a controlled polymerization process is important to create polymers with consistent properties from batch 4 Appeal2017-004092 Application 14/376,435 to batch, but Odian teaches that certain aspects of emulsion polymerization are not easy to control. Appellant's arguments are not persuasive of reversible error in the rejection. Argument (1). Appellant contends that because methacrylic acid and methacrylic esters are listed in a group of 13 possible monomers, the Examiner has not adequately established that a person of ordinary skill in the art would have selected those two monomers to copolymerize with famesene (Appeal Br. 5---6; Reply Br. 5---6). However, Mo explicitly states that famesene may be copolymerized with at least one other comonomer (Mo, i-f 26), which necessarily suggests that more than one additional comonomer could be used. In addition, as explained by the Examiner (Ans. 3--4), the list of possible comonomers is not particularly large (contains 13 possibilities), so that selecting the specific combination of methacrylic acid and methacrylic esters would have been obvious under the rational of In re Kerkhoven; see also Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose."); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[ d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives"); In re Kubin, 561F.3d1351, 1359 (Fed. Cir. 2009) ("Where a skilled artisan merely pursues 'known options' from a 5 Appeal2017-004092 Application 14/376,435 'finite number of identified, predictable solutions,' obviousness under § 103 arises." (Quoting KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). Appellant attempts to refute this reasoning by arguing that case law indicates that combinations of components listed in a Markush group are not obvious absent an explicit statement that combinations are permitted (Reply Br. 5---6). However, in this case, Mo is clear in indicating that multiple co- monomers may be used, even if a preferred embodiment might have only a single co-monomer (Mo, ,-r 26). Thus, we determine that a preponderance of the evidence supports the Examiner's conclusion that the use of methacrylic acid and methacrylic esters would have been obvious to a person of ordinary skill in the art in view of Mo's disclosure. Argument (2). Appellant argues that a person of skill in the art would not have used methacrylic acid as a comonomer because it is known to be toxic (Appeal Br. 6-7). This argument is unpersuasive for two reasons. First, as explained by the Examiner (Ans. 4--5), whether or not methacrylic acid is toxic is not germane, as the final product would not include methacrylic acid, but only polymeric units derived from methacrylic acid. In addition, Mo specifically teaches that (a) its composition can be made using methacrylic acid as a monomer (Mo, ,-r 26), and (b) its composition can be used as chewing gum base (Mo, ,-r 2). Thus, the preponderance of the evidence of record does not support Appellant's contention that a person of ordinary skill in the art would have been deterred from using methacrylic acid as a comonomer. Second, we note that claim 1 is not limited to a chewing gum composition (or any other type of food). Accordingly, Appellant's arguments based on the alleged toxicity of methacrylic acid are not persuasive. 6 Appeal2017-004092 Application 14/376,435 Argument (3). Appellant argues that emulsion polymerization is not suitable for making food grade polyfamesene because the surfactants and other polymerization adjuvants are difficult to remove and, therefore, a person of skill in the art would not have selected emulsion polymerization from Mo's disclosed techniques to make a food grade polyfamesene (Appeal Br. 7-8). However, Mo teaches that (a) its composition can be made using emulsion polymerization (Mo, i-f 25), and (b) its composition can be used as chewing gum base (Mo, i-f 2). Thus, Mo suggests that emulsion polymerization is suitable for making a food grade polyfamesene. Moreover, as also discussed above, claim 1 is not limited to food grade polyfamesene. 6 Argument (4). Appellant argues that a person of skill in the art would not have selected emulsion polymerization from the polymerization techniques disclosed by Mo because Mo explains that controlled polymerization is important, while Odian states that emulsion polymerization is difficult to control (Appeal Br. 8). This argument is not persuasive. First, as discussed above, Mo discloses that emulsion 6 The Examiner states that certain evidence cited by Appellant (Exhibits A- D of the Appeal Brief) was not considered "because none of these references were presented during prosecution." Ans. 2. Appellant does not challenge the Examiner's statement that the references were not submitted prior to appeal (see, Reply Br.). Accordingly, the Examiner properly declined to consider these references. We note that all of the references were supplied to support Appellant's arguments pertinent to the use of methacry lie acid in food grade polyfamesene and the use of emulsion polymerization to produce food grade polyfamesene (Appeal Br. 6-7). Moreover, the claims are not limited to polyfamesene used for chewing gum or other food products and Mo suggests that its polyfamesene can be prepared using emulsion polymerization and used in a chewing gum product. 7 Appeal2017-004092 Application 14/376,435 polymerization is a useful polymerization technique for its products. Second, the Examiner has provided a reasoned explanation of why a person of skill in the art would have selected emulsion polymerization (obtaining higher molecular weights). That there might be other reasons for not selecting emulsion polymerization does not require reversal of the rejection. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int 'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.") Claim 7 Claim 7 recites that "the methacrylic acid is in an amount from 10 wt.% to about 40 wt.%, based on the total weight of the polymerizable mixture." The Examiner finds that this limitation would have been obvious over Mo in view of Odian because Mo discloses the use of methacrylic acid in an amount from 25-95%, which overlaps the claimed range (Final Act. 4). The Examiner further finds that Mo teaches that the polyfamesene should have a glass transition temperature meeting certain requirements and that this would have motivated a person of skill in the art to optimize the amount of methacrylic acid in the polymer (id.). Appellant does not challenge the Examiner's finding that the amount of methacrylic acid in Mo's composition 8 Appeal2017-004092 Application 14/376,435 overlaps with the claimed amount. As noted by the Examiner, overlapping ranges are prima facie obvious. 7 CONCLUSION We AFFIRM the rejections of claims 1, 2, 5-7, 9-12, 15-17, 19-24, 26-28, 30-34 and 36-38 under 35 U.S.C. 103(a) as unpatentable over Mo in view of Odian. We AFFIRM the rejection of claims 8, 18, and 29 under 35 U.S.C. § 103(a) as unpatentable over Mo in view of Odian, and further in view of Castle. 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 7 The Examiner provides additional reasons why a person of skill in the art might have sought to optimize the amount of methacrylic acid in the polymer (Ans. 4). Appellant persuasively argues that these additional reasons are not supported by the disclosures in Mo (Appeal Br. 10). However, Appellant does not provide a reason why the overlapping ranges would not be sufficient to set forth a prima facie case of obviousness. 9 Copy with citationCopy as parenthetical citation