Ex Parte Drohmann et al

Patent Trial and Appeal Board

Sep 19, 2016

10509641 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/509,641 0912912004
123223 7590 09/21/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Christian Drohmann
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.
074008-01011-US
(286128)
CONFIRMATION NO.
4300
EXAMINER
POPOVICS, ROBERT J
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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 CHRISTIAN DROHMANN, TOBIAS PETSCH,
THOMAS KEBLER, FRANK MULLER,
ELISA HAMM DE BANTLEON, and KLEMENS MATHAUER
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Application 10/509,641
Technology Center 1700
Before PETER F. KRATZ, HUBERT C. LORIN, and
JEFFREY T. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 29 and 31--41. Claims 29 and 31--41 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings of Butterworth
(US 3,958,023, iss. May 18, 1976) and/or Van Den Eynde (US 6, 117,459,
iss. Sept. 12, 2000) and/or BASF's "60th Anniversary of Povidone" (BASF,
60th Anniversary of Povidone, 2 BASF ExAcT 4 (1999) (hereinafter "60th
Anniversary")) and/or Wedlock (US 5,665,369, iss. Sept. 9, 1997) and/or
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Application 10/509,641
AAPA (Applicants' Admitted Prior Art). We have jurisdiction under
35 U.S.C. § 6.
Appellants' invention relates generally to filter aids comprising
thermoplastic polymers as and stabilizers for filtration and/or stabilization of
aqueous liquids. (Spec. 1, 11. 5-7). Claim 29 is illustrative of the subject
matter on appeal:
29. A filter aid for filtering and stabilizing an aqueous liquid,
the filter aid comprising a comminuted form of a compounded
polymer obtained by reactive compounding
a) 20-95% by weight of a thermoplastic polymer selected from
the group consisting of polyolefins and polyamides; and
b) 80-5% by weight of at least one further substance selected
from the group consisting of silicates, carbonates, oxides,
diatomaceous earth, crosslinked polyvinylpolypyrrolidone and
mixtures thereof
wherein the reactive compounding is selected from the group
consisting of rolling, kneading, casting, sintering, pressing,
compounding, calendaring, extrusion or combination thereof
Claims Appendix to App. Br. (italics added identifying elements
added since the prior appeal).
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OPINION1'2
The present application was the subject of a prior appeal, 2012-
0002803 wherein we sustain the appealed rejection. The present decision
incorporates the discussion presented in our prior decision.
In this appeal, the subject matter of independent claim 29 has been
amended from the prior appeal replacing "compounding" with "reactive
compounding" and by describing reactive compounding. Thus, the first
issue presented for review is:
What is the meaning of the amended term "reactive compounding" as
used in independent claim 29?
According to the Specification "reaction is a process in which at least
two substances are reacted with one another physically and/or chemically."
(Spec. 7, 11. 6-8). The Specification further discloses reactive compounding
is achieved by "rolling, kneading, casting, sintering, pressing, compounding,
calandering, extrusion or combination of these methods." (Id. at 11. 13-15).
Claim 29, which specifically states "wherein the reactive compounding is
selected from the group consisting of rolling, kneading, casting, sintering,
pressing, compounding, calandering, extrusion or combination thereof," is
consistent with the disclosure from the Specification.
1 The issues arising in this appeal, specifically the discussion of "reactive
compounding," are similar to the issues presented in the appeal of
Application 10/398, 179, Appeal 2014-006990.
2 We refer to the Final Office Action for a complete statement of the
Examiner's rejection. (Final Act. 2---6).
3 Decision mailed July 1, 2013.
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Thus, the present record indicates that reactive compounding is
physically and/or chemically reacting of components that can be achieved
by, inter alia, compounding.
The second issue on appeal is whether it would have been obvious to
a person of ordinary skill in the art to form a comminuted filter aid from a
reactive compounded thermoplastic polymer and a stabilizer as required by
the subject matter of independent claim 29?
In our prior decision we determined that it would have been obvious
to a person of ordinary skill in the art to form a comminuted filter aid from a
compounded thermoplastic polymer and a stabilizer. After consideration of
Appellants' arguments, amendments and evidence in this appeal, the
Examiner's position in the Final Office Action and Answer, we AFFIRM the
obviousness determination. 4
According to the Specification, "[f]ilter aids and stabilizers have
previously been used separately or together." (Spec. 2, 11. 27-28). The
Specification also discloses that highly crosslinked
polyvinylpolypyrrolidones (PVPP) as stabilizers and filter aids are known to
persons of ordinary skill in the art. (Id. at 11. 33-36, citing EP 351 363). The
process of forming solid formulations from polymers and fillers is known to
persons of ordinary skill the art. According to the Specification,
"[c]ompounding is generally mixing a polymer with at least one additive."
(Id. at 6, 11. 9-10).
4 We limit our discussion to independent claim 29. Appellants have not
argued the dependent claims separately. Accordingly, claims not argued
separately will stand or fall together with independent claim 29.
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Application 10/509,641
The Examiner found that Butterworth discloses a process for treating
liquids comprising PVPP and conventional filter aids. (Final Act. 2).
Butterworth discloses increasing the chill haze stability of aqueous liquids
derived from fruits and vegetables, by using one or more haze control agents
and filtering aids in a precoat or after precoat layer in the filter media.
(Butterworth, col. 2, 11. 54--59). The Examiner found that and "Van Den
Eynde, like Butterworth, teaches that ... filtration and stabilization steps be
carried out simultaneously." (Final Act. 4, emphasis omitted).
The Examiner concluded the claimed invention would have been
obvious in view of the teachings of either Wedlock or BASF' s "60th
Anniversary of Povidone." According to the Examiner:
In view of BASF's "60th Anniversary of Povidone," it
would have been obvious to one skilled in the art to melt
extrude (i.e., compound/mix) known filtration aids, such as the
polyolefins, polypropylene or polyethylene taught by Van Den
Eynde, for example, \vi th PVPP, to practice the invention of
Butterworth and/or Van Den Eynde, in order to obtain the
benefits Butterworth extols.
(Id. at 5, emphasis omitted).
Wedlock teaches the melt extrusion of PVP with active
ingredients followed by subsequent milling. In view of the
teachings of Wedlock, it would have been obvious to one
skilled in the art to melt extrude (i.e., compound/mix) known
filtration aids (as taught by AAP A for example) or active
ingredients, such as the polyolefins, polypropylene or
polyethylene taught by Van Den Eynde, for example, with
PVPP, to practice the invention of Butterworth and/ or Van Den
Eynde, in order to obtain the benefits [of] Butterworth.
(Id. at 6, emphasis omitted).
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Appellants argue there is no suggestion of the desirability of
compounding the different components together and comminuting the
compounded product. (App. Br. 8-9). Appellants also argue:
The rejection is in error since both 60th Anniversary and
Wedlock disclose the compounding of soluble PVP - not
insoluble PVPP - with other substances. The combined
teachings of the cited prior art fail to suggest the reactive
compounding of PVPP with any other substance.
(App. Br. 9).
Appellants further argue it is incorrect to equate compounding of PVP
(polyvinylpyrrolidone) with compounding of PVPP because the properties
of PVP and PVPP are totally different. (Id. at 10). In support of their
arguments Appellants rely on the declaration of Beatus Schehl5 and portions
of the Kollidon brochure. 6 (Id.).
As set forth above, a person of ordinary skill in the art would have
recognized that filtration and stabilization can be practiced together and that
there would be reason to do so. Appellants do not dispute the finding that
Butterworth and Van Den Eynde teach that filtration and stabilization can be
practiced together and that there would be reason to do so. (Id. at 7).
Inasmuch as it is well settled that it is a matter of obviousness for one of
ordinary skill in the art to combine two or more materials when each is
taught by the prior art to be used together, we agree with the Examiner's
determination that the claimed invention would have been obvious. See KSR
5 Submitted August 6, 2013. A copy is enclosed in the Evidence Appendix
to the Appeal Brief.
6 Volker Buhler, Kollidon®, Polyvinylpyrrollidonefor the pharmaceutical
industry, BASF, 4th ed. (1999).
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Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). A person of ordinary
skill in the art desiring filtration and stabilization to occur at the same time
would have reasonably expected that a solid formulation comprising a
known filter aid and a known stabilizer would achieve this goal. "For
obviousness under§ 103, all that is required is a reasonable expectation of
success." In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988).
Appellants argue Wedlock only discloses compounding agents with
PVP and does not suggest compounding PVPP with other substances
because the Kollidon brochure is evidence a person of ordinary skill in the
art "would be aware the polymer class PVPP is simply not a form of PVP."
(App. Br. 11 n. 4).
Appellants' arguments lack persuasive merit. The Kollidon brochure
is a document that describes the BASF Kollidon® family of
polyvinylpyrrolidone. This document describes various classes of PVP and
inclusive therein is a description of PVPP (which is cross-linked PVP). It is
further noted the Kollidon brochure discloses there is no recognizable
difference of the infrared spectra of PVP and PVPP. (Kollidon 131 ).
Infrared spectra is used to identify and study chemicals. Thus, a person of
ordinary skill in the art, in light of the infrared spectra, would have expected
that PVP and PVPP share similar chemical structure. Furthermore, 60th
Anniversary discloses PVP and PVPP shares the capability of stabilizing
suspensions. (Pg. 4, left most column). 60th Anniversary also discloses
PVPP can be complex with other biopolymers. (Id.). Thus, a person of
ordinary skill in the art would have reasonably expected that PVPP was
suitable for complexing with other polymers. A person of ordinary skill in
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the art would have been capable of creating a solid formulation utilizing
known compounding and comminuting techniques. See In re Sovish, 7 69
F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Wedlock is exemplary of these known processes. We observe that
representative appealed claim 29 does not specify any particular particle size
for the comminuted form of filter aid.
It is further noted that Appellants have presented extensive arguments
regarding the compounding and comminuting of polystyrene with PVPP.
(App. Br. 6-17). In support of these arguments for patentability, Appellants
rely on the declaration ofDr. Beatus Schehl (signed February 20, 2012) and
the declarations of Marianna Pierobon (signed October 18, 2006 and
December 7, 2006). The arguments and evidence are not persuasive of
reversible error in the appealed rejection because the present record
expressly excludes polystyrene. The subject matter of claim 29 indicates
that a thermoplastic polymer is "selected from the group consisting of
polyolefins and polyamides." The Specification expressly states "the
thermoplastic polymer must not be polystyrene." (Spec. 3, 11. 26-27). Thus,
the subject matter on appeal excludes the use of polystyrene as the
thermoplastic polymer. Consequently, Appellants' arguments and evidence
regarding the compounding and comminuting of polystyrene with PVPP are
not persuasive of reversible error.
For the reasons stated above we affirm the prior art rejection of claims
29 and 31--41 under 35 U.S.C. § 103(a).
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ORDER
The rejection of claims 29 and 31--41 under 35 U.S.C. § 103(a) 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.
AFFIRMED
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