Ex parte Emmons et al.

Board of Patent Appeals and Interferences

Jul 27, 1999

07801992 (B.P.A.I. Jul. 27, 1999)

Application for patent filed December 3, 1991.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WILLIAM D. EMMONS, MARTIN VOGEL,
EDWARD C. KOSTANSEK, JACK C. THIBEAULT and PETER R. SPERRY
________________
Appeal No. 94-0822
Application No. 07/801,9921
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and OWENS, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
10, 12-25 and 27-61, all the claims remaining in the present
application. Claim 1 is illustrative:
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1. A process for preparing an aqueous dispersion of
composite particles, the composite particles each comprising a
plurality of polymeric latex particles adsorbed onto a
titanium dioxide particle, the process comprising:
a) suspending polymeric latex particles in an aqueous
medium, the polymeric latex particles having been polymerized
in the absence of titanium dioxide particles;
b) suspending titanium dioxide particles in the aqueous
medium, the sign of the surface charge of the polymeric latex
particles being the same as the sign of the surface charge of
the titanium dioxide particles, the surface potential of one
of either of the polymeric latex particles or the titanium
dioxide particles in the aqueous medium being greater in
absolute value than the surface potential of the other of the
polymeric latex particles and the titanium dioxide particles;
and
c) mixing the aqueous medium containing the titanium
dioxide particles and the polymeric latex particles in the
absence of conditions providing gross heterocoagulation, the
polymeric latex particles adsorbing onto the titanium dioxide
particles in a controlled manner to provide the composite
particles.
In the rejection of the appealed claims, the examiner
relies upon the following references:
Pons et al. (Pons) 4,110,285 Aug. 29, 1978
Martin 4,771,086 Sep. 13, 1988
Visca et al. (Visca) 4,798,854 Jan. 17, 1989
Appellants' claimed invention is directed to a method for
preparing an aqueous dispersion of composite particles. The
composite particles comprise a plurality of polymeric latex
particles adsorbed on a single titanium dioxide particle. The
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Application No. 07/801,992
The Examiner's Answer, at page 6, improperly states2
that claims 20-30 stand rejected under § 102/§ 103 over
Martin. However, the Examiner's Supplemental Answer, at page
2, repeats the issue stated at page 2 of the Answer that
claims 29 and 30 are rejected over Martin.
The Examiner's Answer, at page 7, improperly states the3
rejection over Pons as including claims 1-10, 12-25 and 26-27.
The Examiner's Answer, at page 8, continues the4
misstatement of the claims rejected.
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aqueous dispersion finds utility in compositions, such as
paints.
Appealed claim 38 stands rejected under 35 U.S.C. § 112,
fourth paragraph. Claims 29 and 30 stand rejected under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C.
§ 103 over Martin. In addition, claims 1-10, 12-25 and 27-562
stand rejected under 35 U.S.C. § 102 or, in the alternative,
under 35 U.S.C. § 103 over Pons. Also, claims 1-10, 12-25,3
27-37 and 57-61 stand rejected under 35 U.S.C. § 102(b) or, in
the alternative, under 35 U.S.C. § 103 over Visca.4
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's prior
art rejections. However, we will sustain the examiner's
rejection of claim 38 under § 112, fourth paragraph.
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Regarding the examiner's rejection of claim 38 under
35 U.S.C. § 112, fourth paragraph, it is the examiner's
position that claim 38 improperly depends upon more than one
claim. Appellants, at page 5 of their Reply Brief, apparently
acknowledge the propriety of the examiner's rejection and are
prepared to amend claim 38 accordingly. Accordingly, we will
sustain the examiner's rejection.
We now turn to the examiner's prior art rejections of the
appealed claims. The examiner acknowledges that none of the
applied references discloses the preparation of the presently
claimed composite particles comprising a plurality of
polymeric latex particles adsorbed onto a titanium dioxide
particle. However, the basis of the examiner's rejection is
that each of the references discloses the preparation of an
aqueous dispersion of polymeric latex particles and pigment
particles that inherently contain the structure of appellants'
composite particles.
It is well settled that a determination of inherency
cannot be established by probabilities or possibilities. In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
In order to establish inherency, it is incumbent upon the
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examiner to establish the inevitability of the inherency which
he propounds by advancing the appropriate objective evidence
or persuasive scientific reasoning. In re Wilding, 535 F.2d
631, 635-36,
190 USPQ 59, 63-64 (CCPA 1976). When the prior art is silent
regarding a property or characteristic of a claimed product,
the examiner must demonstrate that the claimed product
reasonably appears to be essentially the same as the product
disclosed in the prior art. In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In the present
case, we are not satisfied that the examiner has demonstrated
a sufficiently close correspondence between the processes of
the prior art and appellants' process of preparing an aqueous
dispersion such that it is reasonable to conclude that the
dispersions of the prior art must, of necessity, or
inherently, comprise composite particles of the claimed
structure. Rather, we concur with appellants that the
examiner's conclusion is based upon the type of speculation
that cannot form the basis of a rejection under 35 U.S.C. §§
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102 or 103. In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA
1967).
In particular, Martin, rather than teach the preparation
of composite particles comprising a plurality of polymeric
latex particles adsorbed onto a titanium dioxide particle,
expressly discloses the polymeric encapsulation of a sheath
having a substantially uniform thickness onto pigment
particles. The examiner's characterization of Martin's
disclosure of a thin film coating as nothing more than "an
ideal concept" (page 12 of Answer) and Martin's disclosure of
an encapsulated filler as "a bit enthusiastic" (page 13 of
Answer) is without factual support on this record. Also, the
examiner's explanation at page 12 of the Answer how Martin's
in situ polymerization does not fall outside the scope of the
present claims, which require the polymerization of latex
particles "in the absence of the titanium dioxide particles,"
is simply an unartful attempt to interpret Martin in a way not
intended by the patentee, nor in a manner that would be
interpreted by one of ordinary skill in the art.
As for Pons, not only does the reference fail to disclose
composite particles, in general, let alone the specifically
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claimed structure of the composite particles, the reference
fails to teach any of the process parameters disclosed by
appellants which are necessary to obtain the claimed composite
particles.
Visca, the remaining reference applied by the examiner,
likewise fails to disclose a process that is essentially like
the one claimed. Indeed, Visca discloses that preformed
dispersions of inorganic filler and polymer must be separately
prepared before mixing them together. Manifestly, this is
unlike the claim requirement of suspending titanium dioxide
particles in an aqueous suspension of polymeric latex
particles. Also, although it may be possible to select from
within the broad disclosure of Visca titanium dioxide
particles and polymeric latex particles having a difference in
zeta potential of at least about 30 mv, Visca provides no
guidance to do so. A finding of inherency cannot be based
upon an applicant's disclosure of specific process parameters
that are only broadly encompassed by a prior art disclosure.
The examiner states the following at page 20 of the
Answer: "[w]hile Visca only discloses a matrix wherein the
particles of polymer and pigment are uniformly dispersed, it
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is at best speculative to assert that in fact the polymer
coats pigment, rather than vice-versa." Manifestly, this
statement by the examiner undermines his conclusion of
inherency. As noted above, it is the examiner's burden to
establish the inherency which he propounds.
We also do not understand the examiner's statement that
"[t]he ZP of a component in a mixture is not claimed, and is
not at issue in this case" (page 20 of Answer). We note that
claim 4 specifically recites:
[T]he zeta potential of the polymeric latex
particles in the aqueous medium being greater in
absolute value than the zeta potential of the
titanium dioxide particles in the aqueous medium,
the absolute value of the difference in the zeta
potential of the titanium dioxide particles and the
zeta potential of the polymeric latex particles
being at least about 30 mv. [Emphasis added].
While the claim does not define the specific zeta potentials
of the titanium dioxide particles and the polymeric latex
particles, the issue emphasized by appellants in their Brief
is the difference in the absolute values of the two particles.
The examiner states the following at page 22 of the
Answer:
The Examiner agrees that Visca does not disclose a
process for adding inorganic pigment particles to a
dispersion of a polymer. Accordingly, Visca does
not render the claims of Group A obvious.
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However, appellants' Brief, at page 6, defines Group A as
consisting of claims 1-10, 12-37 and 38-42, whereas the
examiner's § 102/§ 103 rejection over Visca includes claims 1-
10, 12-25 and 27-37 (see page 2 of Answer). Consequently, it
would seem that the examiner has withdrawn the rejection of at
least some of the appealed claims over Visca.
In conclusion, based on the foregoing, the examiner's
rejection of claim 38 under 35 U.S.C. § 112, fourth paragraph,
is affirmed. The examiner's rejections of the appealed claims
under 35 U.S.C. §§ 102 and 103 are reversed. Accordingly,
the examiner's decision rejecting the appealed claims is
affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
clm
Appeal No. 94-0822
Application No. 07/801,992
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Marc S. Adler
Rohm and Haas Co.
Independence Mall West
Philadelphia, PA 19105