Ex Parte Hintzer et alDownload PDFPatent Trial and Appeal BoardAug 31, 201612907097 (P.T.A.B. Aug. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/907,097 10/19/2010 32692 7590 09/02/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Klaus Hintzer 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. CONFIRMATION NO. 61687US010 1381 EXAMINER BUIE-HATCHER, NICOLE M ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 09/02/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KLAUS HINTZER, MICHAEL JURGENS, HARALD KASPAR, HERBERT KONIGSMANN, ANDREAS R. MAURER, WERNER SCHWERTFEGER, and TILMAN C. ZIPPLIES Appeal2015-000220 Application 12/907,097 Technology Center 1700 Before PETERF. KRATZ, MICHAEL P. COLAIANNI, and JEFFREY R. SNAY, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-000220 Application 12/907,097 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, and 8-12. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants' invention is directed to fluorinated surfactants that are suitable for use in the aqueous emulsion polymerization of fluorinated monomers to produce fluoropolymers (Spec. 1: 13-15). Claim 1 is illustrative: 1. A fluorinated surfactant having the general formula: [Rf-(O)cCHF-(CF2)n-COO-]i xi+ (I) wherein t is 1 and n is 0 or 1, xi+ represents a cation having a valence i and i is 1, 2 or 3; and wherein ift is 1, Rf is selected from perfluorinated groups of the formula Rf1-[0Ri]p- [ORf3]q- wherein Rf1 is a perfluorinated aliphatic group of 1 to 6 carbon atoms, Ri and Rf3 each independently represents a linear perfluorinated alkylene of 1, 2, 3 or 4 carbon atoms and p and q each independently represent a value of 0 to 4 and wherein the sum of p and q is at least 1. Appellants appeal the following rejection: Claims 1, and 8-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Morita et al. (US 2006/0281946 Al published Dec. 14, 2006 (hereinafter "Morita")). Appellants argue claims 1 and 8-12 as a group (App. Br. 3-5). We select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(iv)(2013). FINDINGS OF FACT & ANALYSIS 2 Appeal2015-000220 Application 12/907,097 Appellants argue that iviorita's fiuorocarboxylic acid derivative disclosed in i-f 38, "CF30CF(CF3)CF20CFHCF2COONa and CF30CF(CF3)CF20CFHCF2COONH4," and relied upon by the Examiner, fails to teach a linear aliphatic group as required by claim 1 (App. Br. 3-4). Rather, the bolded aliphatic groups in Morita's chemical formulas, are branched aliphatic groups according to Appellants. Id. Appellants contend that the Examiner has not shown any synthetic process that would allow one of ordinary skill in the art to "derive" the claimed linear compounds from the branched compounds of Morita (App. Br. 4). Appellants further contend that the Examiner has not established that Morita's fluoroalkylcarboxylic acid derivative modified to have a linear group in place of the branched group would have been expected to have similar properties as the fluoroalkylcarboxylic acid derivative with a branched group (App. Br. 4). Appellants' arguments are not persuasive because the Examiner cites to Morita's fluoroalkylcarboxylic acid derivative with a branched group as merely showing that Morita shows a surfactant having a structure similar to that required by the claims with the exception of the branched group (Final Act. 3-4). The Examiner finds that Morita teaches that the Rf1 group maybe straight (linear) or branched (Final Act. 4). The Examiner concludes that it would have been obvious to produce a fluorinated surfactant using a linear structure because Morita teaches that fluoroalkylcarboxylic acid derivatives that are branched or linear have good properties for use a surfactants (Final Act. 4). In other words, the Examiner finds that Morita teaches that the fluoroalkylcarboxylic acid derivative maybe linear or branched and function as a surfactant in producing fluoropolymers. Indeed, Morita teaches that the 3 Appeal2015-000220 Application 12/907,097 ,..... 11 1 1 1• • 1 1 • ,• • 1 1 1 1 1 1• T"'ti. 1 nuoroa1Ky1carooxync ac10 aenvanves mcmae orancnea or nnear K( group and these derivatives function well as surfactants in emulsion polymerization to form fluoropolymers (See e.g., Morita i-fi-19, 85). Accordingly, the Examiner's findings that branched and linear groups would have been expected to have the same beneficial functionality for use as surfactants is based upon Morita's teachings. The Examiner finds that Morita discloses how to make the linear or branched versions of the fluoroalkylcarboxylic acid derivative in i-fi-1 41-46 (Ans. 5). Appellants do not file a Reply Brief to contest this finding. Appellants argue that Table 2 on page 24 of the Specification shows that inventive compounds 2 and 3 demonstrate surprisingly improved toxicological profile over the industry standard fluorinated surfactant, ammonium perfluorooctanoate (APFO) (App. Br. 4). Appellants contend that Table 2 shows a much higher elimination rate and significantly less biopersistance than APFO. Id. Appellants' evidence of unexpected results is not persuasive. The comparison made in Table 2 is between inventive compounds 2 and 3 and APFO. As found by the Examiner, such a comparison does not compare the claimed invention with the closest prior art (i.e., Morita) where fluoroalkylcarboxylic acid derivatives are used. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979) ("A Rule 132 affidavit, to be effective, must compare the claimed subject matter with the closest prior art."). We further note that claim 1 includes a formula having a range of different aliphatic groups having different numbers of carbons (i.e., 1 to 6), different n, p, q and different linear perfluorinated alkylene with 1 to 4 carbon atoms. Appellants' showing of two embodiments falling within the 4 Appeal2015-000220 Application 12/907,097 claimed formula (i.e., compound 2 and 3) is not commensurate in scope with the claimed subject matter. While Appellants contend that they are not required to exemplify any particular number of embodiments falling within the scope of the claim (App. Br. 5), Appellants have not provided an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner as compounds 2 and 3 in Table 2. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). On this record and for the above reasons, we affirm the Examiner's § 103 rejection of claims 1 and 8-12 over Morita. DECISION The Examiner's decision 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(a)(l ). ORDER AFFIRMED 5 Copy with citationCopy as parenthetical citation