Ex Parte Fuller et al

Board of Patent Appeals and Interferences

Jun 4, 2010

10808679 (B.P.A.I. Jun. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TIMOTHY J. FULLER,
DAMODAR M. PAI, JOHN F. YANUS,
MARKUS R. SILVESTRI, KENNY-TUAN T. DINH, and
YUHUA TONG
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Appeal 2009-005820
Application 10/808,679
Technology Center 1700
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Decided: June 4, 2010
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Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/808,679

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A. Introduction1
Timothy J. Fuller, Damodar M. Pai, John F. Yanus, Markus R.
Silvestri, Kenny-Tuan T. Dinh, and Yuhua Tong (“Xerox”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection2 of claims 1, 5-16,
and 20-32, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to processes of preparing
poly(vinylbenzyl alcohol) by base-catalyzed hydrolysis of poly(vinylbenzyl
acetate) in pyridine. Prior art methods of preparing poly(vinylbenzyl
alcohol) are said to give low yields and to be expensive and difficult to scale
up.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A process for preparing poly(vinylbenzyl alcohol)
comprising:
preparing a reaction mixture comprising
poly(vinylbenzyl acetate),
a basic catalyst, and
pyridine; and
hydrolyzing the poly(vinylbenzyl acetate) in the presence
of the basic catalyst to form poly(vinylbenzyl alcohol).
(Claims App., Br. 8; paragraphing and indentation added.)

1 Application 10/808,679, Polymer Process, filed 25 March 2004. The
specification is referred to as the “679 Specification,” and is cited as “Spec.”
The real party in interest is listed as Xerox Corporation. (Appeal Brief, filed
26 July 2007 (“Br.”), 1.)
2 Office action mailed 23 February 2007 (“Final Rejection”; cited as “FR”).
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The Examiner has maintained the following grounds of rejection:3
A. Claims 1, 5-12, 16, 20-27, and 30-32 stand rejected
under 35 U.S.C. § 103(a) in view of the combined
teachings of Fuller4 and Deubzer.5
B. Claims 1, 5-14, 16, 20-22, and 28-32 stand rejected
under 35 U.S.C. § 103(a) in view of the combined
teachings of Fuller and Pinschmidt.6
C. Claims 1, 5-12, 16, 20-22, and 30-32 stand rejected
under 35 U.S.C. § 103(a) in view of the combined
teachings of Fuller and Sato.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner finds that Fuller teaches the hydrolysis of
poly(vinylbenzyl acetate) in the presence of a basic catalyst (borane-
tetrahydrofuran) (Ans. 7, last para.) and a solvent (THF) (id. at 8, 2d para.).
The Examiner also finds that Fuller does not teach or suggest the use of
pyridine as the solvent for the reaction. (Id. at 9, 4th para.)
The Examiner finds further that Deubzer discloses “conventional
basic catalysts in any hydrolysis reaction.” (Id. at 8, 1st para.) The

3 Examiner’s Answer mailed 28 September 2007. (“Ans.”).
4 Timothy J. Fuller et al., Photoreceptor with Poly(Vinylbenzyl Alcohol),
U.S. Patent 6,200,716 B1 (2001).
5 Bernward Deubzer and Jochen Dauth, U.S. Patent 6,251,313 B1 (2001).
6 Robert Krantz Pinschmidt, Jr. and Khalil Yacoub, U.S. Patent
6,391,992 B1 (2002).
7 Toshiaki Sato et al., U.S. Patent 5,710,211 (1998).
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Examiner concludes that it would have been obvious to use basic catalysts
taught by Deubzer in the process taught by Fuller. (Id., 3d para.)
The Examiner finds that Pinschmidt teaches that hydrolysis reactions
of vinylacetate polymers to vinylalcohol polymers are “conducted in the
presence of a solvent/catalyst,” including sodium hydroxide and methoxide.
(Ans. 9, 1st para.) The Examiner does not cite any portion of Pinschmidt in
the rejection stated in either the Final Rejection or the Answer. The
Examiner concludes it would have been obvious to use the catalysts/solvents
taught by Pinschmidt as the basic catalysts “to prepare the material of Fuller
. . . with reasonable expectation of preparing a material having decreased
coating defects.” (Id., 2d para.)
The Examiner finds that Sato discloses processes for producing vinyl
alcohol-type polymers, and that “suitable bases/solvents” for such processes
include pyridine. (Ans. 9, 5th para.) The Examiner does not cite any
portion of Sato in the rejection stated in either the Final Rejection or the
Answer. The Examiner concludes it would have been obvious to use the
“bases/solvents” taught by Sato “as the basic catalysts with reasonable
expectation of preparing a material having decreased coating defects.”
(Id., 6th para.)
The dispositive argument raised by Xerox is that the Examiner erred
in finding that Fuller teaches a basic catalyst, because borane-
tetrahydrofuran is an acidic catalyst. (Br. 3.) Borane—BH3—is a Lewis
acid. The stated basis of the Examiner’s argument for obviousness in each
rejection, that it would have been obvious to substitute one basic catalyst for
another, is thus based on a faulty premise. This suffices as grounds for
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reversal in as much as the Examiner has not explained why a person having
ordinary skill in the art would have looked to the other references, which
teach base-catalyzed hydrolysis of vinyl polymers having ester side-groups,
to modify the acid-driven transformation taught by Fuller.
There are further flaws in the rejections. Xerox argues that Deubzer
teaches basic hydrolysis reactions in which the solvents should not be water-
miscible. (Id. at 5, 2d full para., citing Deubzer, col. 3, ll. 55-65.) On the
other hand, Xerox argues, the solvents used by Fuller include water,
methanol, and THF, which are all water-miscible. (Br. 5.) Xerox concludes
that Deubzer teaches away from using basic catalysts in the process of
Fuller. (Id.) The Examiner has not explained why a person of ordinary skill
in the art would have looked to the teachings of Deubzer to modify the
process taught by Fuller when the reaction chemistries are so different.
Xerox argues that the Examiner erred in finding that Sato teaches
pyridine as a solvent because Sato actually teaches pyridine “as a catalyst
between two specific reactants.” (Br. 6, last para., emphasis not reproduced;
citing Sato, col. 4, ll. 57-62 (listing solvents, but not pyridine) and col. 5,
ll. 4-14, (listing pyridine as a reaction catalyst)). Neither reactant, Xerox
argues, is similar, in a way relevant to the rejection, to poly(vinylbenzyl
acetate). (Br. 6, last para.) Review of the cited portions of Sato indicates
that Xerox’s characterizations are accurate. Sato describes a reaction
between a vinyl ester polymer (A) having an epoxy group with a
compound (B) having a thiol or thio ester group. The Examiner has not
explained the relevance of such a reaction to the reaction taught by Fuller.
Moreover, the Examiner’s argument that it would have been obvious to use
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pyridine as a solvent for the reaction taught by Fuller fails for lack of
evidentiary support regarding pyridine as a solvent for any reaction.
The Examiner appears to have concluded that, because the general
transformation under basic catalysis of poly(vinyl esters) to poly(vinyl
alcohols) in solvents is known, as discussed by Pinschmidt at column 8,
lines 13-51, the claimed transformation of poly(vinylbenzyl acetate) to
poly(vinylbenzyl alcohol) by base-catalyzed hydrolysis in the solvent
pyridine would have been obvious. In this regard, Pinschmidt is perhaps the
closest evidence of record. The Examiner has not explained, however, why
a person having ordinary skill in the art would have modified the acid-driven
processes taught by Fuller in light of the general processes taught by
Pinschmidt. Nor has the Examiner explained why it would have been
obvious to use pyridine as the solvent in such a reaction.
Put more generally, the Examiner failed to establish obviousness
because the Examiner failed to identify clearly the processes taught by the
references, and the Examiner failed to identify clearly the differences
between those processes and the process covered by the claims. In the
absence of the requisite foundational analysis, the failure of the obviousness
inquiry is not unexpected.
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C. Order
We REVERSE the rejection of claims 1, 5-12, 16, 20-27, and 30-32
under 35 U.S.C. § 103(a) in view of the combined teachings of Fuller and
Deubzer.
We REVERSE the rejection of claims 1, 5-14, 16, 20-22, and 28-32
under 35 U.S.C. § 103(a) in view of the combined teachings of Fuller and
Pinschmidt.
We REVERSE the rejection of claims 1, 5-12, 16, 20-22, and 30-32
under 35 U.S.C. § 103(a) in view of the combined teachings of Fuller and
Sato.
REVERSED

tc

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