Ex Parte Drohmann et alDownload PDFPatent Trial and Appeal BoardSep 19, 201610398179 (P.T.A.B. Sep. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/398,179 0410212003 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. 074008-01009-us (286127) CONFIRMATION NO. 6371 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, HELMUT WITTELER, AXEL SANNER, JURGEN ZIEHL, ELISA HAMM DE BANTLEON, TOBIAS PETSCH, KLEMENS MATHAUER, and BARABARA LEBTIG Appeal2014-006990 Application 10/398,179 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 22-38. Claims 22-38 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 BAS F's "60th Anniversary of Povidone" (BASF, 60th Anniversary of Povidone, 2 BASF ExAcT 4 (1999) (hereinafter "601h Anniversary")) and/or Wedlock (US 5,665,369, iss. Sept. 9, 1997) and/or Appeal2014-006990 Application 10/398,179 AAP A (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. 4-6). Claim 22 is illustrative of the subject matter on appeal: 22. 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 of a) 20-95% by weight of polystyrene; and b) 80-5% by weight of polyvinylpolypyrrolidone 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. OPINION1, 2 After consideration of Appellants' arguments and evidence and the Examiner's position in the Final Office Action and Answer we AFFIRM the obviousness determination. 1 The issues arising in this appeal, specifically the discussion of "reactive compounding," are similar to the issues presented in the appeal of Application 10/509,641, Appeal 2015-005142. 2 We refer to the Final Office Action, mailed October 1, 2013, for a complete statement of the Examiner's rejection. (Final Act. 2-13). 2 Appeal2014-006990 Application 10/398,179 We begin our analysis by determining the meaning of "reactive compounding" as required by the subject matter of independent claim 22. According to the Specification "reaction ... is a process in which at least two substances are reacted physically and/or chemically with one another." (Spec. 7, 11. 8-10, emphasis added). 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. 15-16). Claim 22, 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. 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 next 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 polystyrene and a polyvinylpolypyrrolidone as required by the subject matter of independent claim 22?3 According to the Specification, "[f]ilter aids and stabilizers have previously been used separately or together." (Spec. 2, 11. 26-27). The Specification discloses that highly crosslinked polyvinylpolypyrrolidones 3 We limit our discussion to independent claim 22. Appellants have not argued the independent claims 33, 35 and 36 and dependent claims 23-32, 34, 37 and 38 separately. Accordingly, claims not argued separately will stand or fall together with independent claim 22. 3 Appeal2014-006990 Application 10/398,179 (PVPP) as stabilizers and filter aids are known to persons of ordinary skill in the art. (Id. at 11. 32-33, citing EP 351 363). The Specification also discloses polystyrene is a known filtering aid. (Id. at 11. 37-38, citing US 4,344,846). 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. 11-12). 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 Van Den Eynde discloses a process for treating liquids comprising PVPP and polystyrene. (Final Act. 9). The Examiner found that "Van Den Eynde, like Butterworth, teaches that ... filtration and stabilization steps be carried out simultaneously." (Id., 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 "601h 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, with PVPP, to practice the invention of Butterworth and/or Van Den Eynde, in order to obtain the benefits Butterworth extols. (Id. at 12, emphasis omitted). 4 Appeal2014-006990 Application 10/398,179 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 13, emphasis omitted). Appellants argue there is no suggestion of the desirability of compounding the different components together and comminuting the compounded product. (App. Br. 6-8). Appellants also argue: The rejection is in error since both 601h 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. f A -- D- '7\ v-~1-'1-'· Ill. I)· 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 8). In support of their arguments Appellants rely on the declaration of Beatus Schehl4 and portions of the Kollidon brochure. 5 (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 4 Submitted August 6, 2013. A copy is enclosed in the Evidence Appendix to the Appeal Brief. 5 Volker Buhler, Kollidon®, Polyvinylpyrrollidone for the pharmaceutical industry, BASF, 4th ed. (1999). 5 Appeal2014-006990 Application 10/398,179 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 4-5). 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 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 that the polymer class PVPP is simply not a form of PVP." (App. Br. 9 n. 3). 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 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 11 and 131 ). Infrared spectra is used to identify and study chemicals. Thus, a person of 6 Appeal2014-006990 Application 10/398,179 ordinary skill in the art, in light of the infrared spectra, would have expected PVP and PVPP share similar chemical structure. Furthermore, 601h Anniversary discloses PVP and PVPP share the capability of stabilizing suspensions. (Pg. 4, left most column). 601h Anniversary also discloses PVPP can be complexed 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 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 22 does not specify any particular particle size for the comminuted form of filter aid. It 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 of Dr. Beatus Schehl (signed February 20, 2012) and the declarations of Dr. Marianna Pierobon (signed October 18, 2006 and December 7, 2006). (App. Br. 11). We have considered the Declaration of Dr. Schehl, but do not find it persuasive of establishing patentability of the appealed subject matter. Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal 7 Appeal2014-006990 Application 10/398,179 conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962). Some weight may be given to a persuasively supported statement of one skilled in the art on what was not obvious to him (see In re Lindell, 3 85 F .2d 453, 456 (CCPA 1967) andin re Weber, 341F.2d143 (CCPA 1965)). Here, Dr. Schehl has provided his opinion as to what a person of ordinary skill in the art would have understood based upon consideration of the present Specification, claims 22-38, the prior art cited in the present record and the declaration of Dr. Pierobon, filed December 11, 2006. (Declaration iii! 2, 5, 6 and 12). Dr. Schehl, at paragraph 19 of his declaration, states, based upon controlling the relative amounts of PS and PVPP, "[i]n my opinion, such uniform treatment could not be readily achieved using a combination of filter granules and stabilization granules." However, the claimed invention encompasses mixtures comprising wide-ranging amounts of PS and PVPP. Dr. Schehl has not provided an explanation of why he believed the result obtained in the experiments provided by Dr. Pierobon were unexpected. Moreover, as established on the present record, the claimed reactive compounding includes physical mixing of the reagents. We have considered the Declarations of Dr. Pierobon. The evidence presented is not commensurate in scope with the claimed invention. Specifically, sample D, which is representative of the claimed invention, is limited to a ca. 2: 1 weight ratio of PS and PVPP in the form of a compound having mean particle size of D (v, 0.5) = 45 µm. (Declaration iJ 3). Claim 22 encompasses 20-95% by weight of PS and 80-5% by weight of PVPP and does not disclose a mean particle size. A showing of unexpected results 8 Appeal2014-006990 Application 10/398,179 must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Dr. Pierobon has not provided an explanation why this limited showing is representative of the entire scope of the claimed invention. For the reasons stated above we affirm the prior art rejection of claims 22-38 under 35 U.S.C. § 103(a). ORDER The rejection of claims 22-38 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 9 Copy with citationCopy as parenthetical citation