Ex Parte Drohmann et al

Patent Trial and Appeal Board

Jun 30, 2013

10509641 (P.T.A.B. Jun. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/509,641 09/29/2004 Christian Drohmann 12810-01011-US 4300
23416 7590 07/01/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
POPOVICS, ROBERT J
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
07/01/2013 PAPER
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.
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
____________

Appeal 2012-000280
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

Appeal 2012-000280
Application 10/509,641

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 29 and 31-40. Claims 29 and 31-40 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings of Butterworth
(US 3,958,023) and/or Van Den Eynde (US 6,117,459) and/or BASF's “60th
Anniversary of Povidone” (BASF, 60th Anniversary of Providone, 2 BASF
EXACT 4 (1999)) and/or Wedlock (US 5,665,369) and/or AAPA
(Applicants’ Admitted Prior Art).1 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). 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 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, polyvinylpolypyrollidone and mixtures
thereof.

1 The rejection of claims 29 and 31-40 as indefinite under 35 U.S.C. § 112,
second paragraph has been withdrawn. (Ans. 4).
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Application 10/509,641

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OPINION2
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the obviousness determination.
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejections. (Ans. 4-8).
The dispositive 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
compounded thermoplastic polymer and a stabilizer as required by the
subject matter of independent claim 29?
According to the Specification, “[f]ilter aids and stabilizers have
previously been used separately or together.” (Spec. 2). 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. 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).
The Examiner found that Butterworth discloses a process for
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. (Ans. 4; Col. 2, ll. 54-59).
The Examiner found that and “Van Den Eynde, like Butterworth, teaches

2 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

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that . . . filtration and stabilization steps be carried out simultaneously.”
(Ans 6).
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, with PVPP, to practice the invention of
Butterworth and/or Van Den Eynde, in order to obtain the
benefits [of] Butterworth.
(Id. at 7).

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 AAPA 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 8).

Appellants argue there is no suggestion of the desirability of - or the
need for -compounding the different components together and comminuting
the compounded product. (App. Br. 11). Appellants also argue:
The suggestion to use the materials simultaneously (e.g. in a
single step) is satisfied by the use of mixtures, as the primary
references actually teach. What is missing from the rejection is
an identification of any predictable benefit which the skilled
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Application 10/509,641

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person would have expected by using a
compounded/comminuted product instead of a mixture of a
particulate stabilizer and a particulate filter aid.
(App. Br. 13).
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
Buttenrworth and Van Den Eynde teach that filtration and stabilization can
be practiced together and that there would be reason to do so.” (Id. at 11).
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’l 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).
A person of ordinary skill in the art would have been capable of
creating a solid formulation utilizing know compounding and comminuting
techniques. See In re Sovish, 769 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 1does not specify
any particular particle size for the comminuted form of filter aid.
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Appellants have not directed us to evidence that establishes that a
filter aid for filtering and stabilizing an aqueous liquid formed by
commuting a compounded polymer and filter aid produces unexpected
results. The declarations referenced in Appellants’ Brief do not discuss the
effects of the filter aid formulation on the filtering and stabilization of an
aqueous liquid.

For the reasons stated above we affirm the prior art rejection of claims
29 and 31-40 under 35 U.S.C. § 103(a).

ORDER

The rejection of claims 29 and 31-40 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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