Ex parte Hall et al.

Board of Patent Appeals and Interferences

Sep 22, 1998

08137332 (B.P.A.I. Sep. 22, 1998)

Application for patent filed October 18, 1993. 1
According to applicants, the application is a continuation-in-
part of Application 07/995,118, filed December 22, 1992.
1
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES E. HALL AND
DAVID M. ROGGEMAN
_____________
Appeal No. 95-4036
Application 08/137,3321
______________
ON BRIEF
_______________
Before SOFOCLEOUS, METZ, and HANLON, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
Appeal No. 95-4036
Application No. 08/137,332
2
final rejection of claims 1-20, all of the claims in the
application. The subject matter on appeal relates to a
continuous, non-aqueous dispersion polymerization process for
producing a copolymer comprising a vinyl aromatic monomer and
a conjugated diene monomer. Claim 1 is representative of the
subject matter on appeal and reads as follows:
1. A continuous process to produce a copolymer by a non-
aqueous dispersion polymerization process comprising the steps
of:
(a) continuously adding to a first polymerization reactor
via feed streams: a first monomer charge containing 75 to 100
percent by weight of a first conjugated diene monomer and 0 to
25 percent by weight of a first vinyl aromatic monomer, an
organolithium polymerization initiator and a dispersing medium
and polymerizing the monomer charge to form a first block of a
dispersing agent soluble in the dispersing medium;
(b) continuously adding to a second polymerization
reactor via feed streams containing the dispersing medium; the
first block of the dispersing agent prepared in step (a), a
second monomer charge containing 35 to 70 percent by weight of
a second vinyl aromatic monomer and 30 to 65 percent by weight
of a second conjugated diene monomer, and a catalytically
effective amount of the organolithium polymerization initiator
and polymerizing the second monomer charge to simultaneously
form:
(i) a second block of the dispersing agent, the
second block being insoluble in the dispersing medium and
linking with the first block to form the dispersing agent, and
(ii) a product copolymer comprising 35 to 70 percent
by weight of the second vinyl aromatic monomer and 30 to 65
percent by weight of the second conjugated diene monomer,
Appeal No. 95-4036
Application No. 08/137,332
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wherein the dispersing agent disperses the product copolymer
in the dispersing medium; and
(c) continuously recovering the dispersed product
copolymer and the dispersing agent from the second
polymerization reactor.
The prior art relied upon by the examiner is:
Markle et al. (Markle) 4,098,980 Jul. 4, 1978
Gunesin et al. (Gunesin) 4,829,135 May 9, 1989
The sole issue in this appeal is whether claims 1-20 were
properly rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Markle and Gunesin.
The claimed invention
The claims relate to a continuous, non-aqueous dispersion
polymerization process for producing a copolymer. The process
of claim 1 comprises the following steps:
(a) continuously adding to a first polymerization
reactor: (1) a first monomer charge containing a first
conjugated diene monomer and a first vinyl aromatic monomer,
(2) an organolithium polymerization initiator and (3) a
dispersing medium, and polymerizing the monomer charge to form
a first block of a dispersing agent soluble in the dispersing
medium;
(b) continuously adding to a second polymerization
Appeal No. 95-4036
Application No. 08/137,332
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reactor containing the dispersing medium: (1) the first block
of the dispersing agent prepared in step (a), (2) a second
monomer charge containing a second vinyl aromatic monomer and
a second conjugated diene monomer, and (3) an organolithium
polymerization initiator, and polymerizing the second monomer
charge to form:
(i) a second block of the dispersing agent, the
second block being insoluble in the dispersing medium and
linking with the first block to form the dispersing agent, and
(ii) a product copolymer comprising the second
vinyl aromatic monomer and the second conjugated diene
monomer; and
(c) continuously recovering the product copolymer and
the dispersing agent from the second polymerization reactor.
Claim 12 recites a process for preparing a styrene-butadiene
copolymer which comprises essentially the same steps as claim
1.
Discussion
Claims 1-20 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Markle and Gunesin. We
reverse this rejection.
Appeal No. 95-4036
Application No. 08/137,332
5
Markle discloses a process for the non-aqueous dispersion
polymerization of a conjugated diolefin monomer, such as
butadiene (Abstract). In the process disclosed in Markle, a
block copolymer dispersing agent is prepared in a separate
process and thereafter added to the polymerization mixture
(see Examples 1-33; col. 29, lines 30-48). Gunesin discloses
a multi-stage process for homopolymerizing anionically
polymerizable vinyl aromatic monomers, such as styrene (col.
1, lines 59-62). The polymeric dispersing agent used in the
process disclosed in Gunesin is “advantageously a block
copolymer” (col. 2, lines 19-26). However, Gunesin fails to
disclose whether the dispersing agent is prepared in a process
separate from the disclosed homopolymerization process or is
prepared in situ.
According to the examiner (Answer, p.3):
The only difference seen between these two patents
and the instantly claimed process is that the Markle
patent teaches the polymerization of the conjugated
diolefin and Gunesin teaches the polymerization of
styrene. The instantly claimed process is directed
to the preparation of a copolymer which contains 35
to 70% of styrene and 30 to 65% of the conjugated
diene monomer. The Examiner maintains however that
given the fact that both of the cited references
teach dispersion polymerization in the presence of
the block copolymer dispersion stabilizer, then it
Appeal No. 95-4036
Application No. 08/137,332
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would be prima facie obvious to utilize the styrene
monomers of Gunesin in combination with the
butadiene monomers of Markle and copolymerize them
together as instantly claimed.
We disagree. Neither Gunesin nor Markle disclose or suggest a
continuous dispersion polymerization process for producing the
copolymers of appellants’ claimed invention (Brief, p.7).
Without the benefit of appellants’ disclosure there would have
been no motivation to combine the teachings of Gunesin and
Markle. See In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566,
1568 (Fed. Cir. 1990) citing Carella v. Starlight Archery and
Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed. Cir.
1986) (“[o]bviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention,
absent some teaching, suggestion or incentive supporting the
combination”); In re Gorman, 933 F.2d 982, 987, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991) (in a determination under 35
U.S.C. § 103 it is impermissible to simply engage in a
hindsight reconstruction of the claimed invention, using the
applicant’s structure as a template and selecting elements
from references to fill the gaps; the references themselves
must provide some teaching whereby the applicant’s combination
Appeal No. 95-4036
Application No. 08/137,332
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would have been obvious).
Moreover, Markle fails to disclose or suggest producing
the dispersing agent in situ. Although Gunesin is silent as
to the process for producing the dispersing agent, appellants
characterize the dispersing agent in Gunesin as “pre-made”
(Brief, p.5). The examiner does not dispute this
characterization (Answer, pp.3-4):
Appellants’ primary point of contention with the
rejection is that the instantly claimed method is
intended to formulate the dispersing agent in situ
and appellants point out that the prior art teaches
a preformed dispersing agent. This is not
persuasive . . . . There remains no showing or
allegation of unexpected results with respect to
formulating the dispersion stabilizer in situ as
opposed to adding it in a preformed manner.
The examiner has improperly shifted the burden to appellants.
The examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We agree with
appellants that the examiner has failed to satisfy that
burden.
REVERSED
Appeal No. 95-4036
Application No. 08/137,332
8
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANDREW H. METZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
svt
Appeal No. 95-4036
Application No. 08/137,332
9
D. A. THOMAS
Deputy General Counsel
Bridgestone/Firestone, Inc.
1200 Firestone Parkway
Akron, OH 44317