Ex Parte Huang et al

Board of Patent Appeals and Interferences

Dec 24, 2002

08720851 (B.P.A.I. Dec. 24, 2002)

The opinion in support of the decision being entered today was not written for publication and is not
binding precedent of the Board.

Paper No. 35

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SUN-YI HUANG, LOUIS ROSATI,
and JOSEPH J. KOZAKIEWICZ
__________

Appeal No. 2001-0061
Application No. 08/720,851
__________

ON BRIEF
__________

Before GARRIS, TIMM, and MOORE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal from the final rejection of claims 1-22, which are
all of the claims in the application.
The subject matter on appeal relates to an aqueous dispersion composition
comprising (a) a first cationic water-soluble or water-swellable polymer, (b) a second
water-soluble polymer different from the first, (c) a kosmotropic salt and (d) a chaotropic
salt, wherein the amounts of (b), (c) and (d) are such that a homogeneous composition
Appeal No. 2001-0061 Page 2
Application No. 08/720,851

is obtained in the absence of (b). Further details of this appealed subject matter are set
forth in representative independent claim 1, which reads as follows:
1. A composition comprising an aqueous dispersion comprised of:
(a) a first cationic water-soluble or water-swellable polymer; and
(b) at least one second water-soluble polymer different from said first polymer;
and
(c) a kosmotropic salt; and
(d) a chaotropic salt,
wherein the amounts of said (b), (c) and (d) are such that a homogeneous
composition is obtained in the absence of said (b), and wherein the amounts of
said (c) and (d) are effective to reduce the bulk viscosity of said aqueous
dispersion.

The reference relied upon by the examiner as evidence of obviousness is:
Ramesh et al. (Ramesh) 5,597,858 Jan. 28, 1997
(filed Mar. 22, 1995)
The references relied upon by the appellants as evidence of non-obviousness
are:
Takeda et al. (Takeda ‘590) 5,006,590 Apr. 9, 1991
Takeda et al. (Takeda ‘655) 4,929,655 May 29, 1990

All of the appealed claims stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ramesh.
We refer to the Brief and Reply Brief and to the Answer for a complete exposition
of the opposing viewpoints expressed by the appellants and by the examiner
concerning the above noted rejection.

Appeal No. 2001-0061 Page 3
Application No. 08/720,851

OPINION
This rejection cannot be sustained.
The pivotal issue on this appeal relates to the claim limitation “wherein the
amounts of said (b), (c) and (d) are such that a homogeneous composition is obtained
in the absence of said (b)” which is recited in each of the independent claims before us.
According to the examiner, “[t]his limitation is presumed to be inherently possessed by
the Examples [i.e. Examples 13 and 15 of Ramesh] or rendered prima facie obvious by
these examples given that the amounts of the salts to be incorporated disclosed in the
specification at pages 18 and 19 overlap those percentages as shown in the prior art.”
(Answer, page 4). We cannot agree.
The examiner’s above quoted position relating to inherency is not without some
rational basis. Nevertheless, we share the appellants’ fundamental viewpoint that the
examiner’s unpatentability position is unconvincing. In particular, we believe (1) that the
multivalent anionic salt of Ramesh performs the intended function of insolubilizing or
depositing patentees’ cationic polymer in his aqueous solution of the polyvalent anionic
salt and (2) that such a function is antithetical to the unpatentability position of the
examiner.
This belief is supported by substantial evidence in the record of this appeal
including the Ramesh patent itself, the Takada ‘655 patent as well as various examples
in the appellants’ specification. However, the evidence which most clearly supports this
belief constitutes the disclosure which appears on lines 42-43 in column 6 of Ramesh
wherein patentee teaches that his “multivalent anionic salt [is] used to deposit the
polymer in the present invention.” This disclosure, particularly when considered in
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Application No. 08/720,851

conjunction with the disclosure of Takada ‘655 (which is incorporated by reference into
the specification of Ramesh; see lines 30-32 in column 1 of Ramesh), reflects that
Ramesh deliberately intends his multivalent anionic salt to insolubilize or deposit his
polymer, thereby forming a heterogeneous composition. Viewed from this perspective,
the disclosure of Ramesh is antithetical to obtaining a homogeneous composition in the
absence of patentee’s polymer dispersant (which the examiner equates to the here
claimed second water-soluble polymer (b)).
Thus, when considered as a whole, the evidence before us clearly weighs in
favor of a determination that the dispersion composition of Ramesh is not capable of,
and indeed was not intended by patentee to be capable of, forming a homogeneous
composition in the absence of his water-soluble dispersant (i.e., the here claimed
polymer “(b)” according to the examiner). It follows that the “homogeneous
composition” feature claimed by the appellants would not be inherently possessed by,
and would not have been rendered obvious by, the dispersions disclosed in Examples
13 and 15 of Ramesh as urged by the examiner. We cannot sustain, therefore, the
examiner’s § 103 rejection of appealed claims 1-22 as being unpatentable over
Ramesh.
Appeal No. 2001-0061 Page 5
Application No. 08/720,851

The decision of the examiner is reversed.

REVERSED

)
Bradley R. Garris )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Catherine Timm )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
James T. Moore )
Administrative Patent Judge )
ELD
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Application No. 08/720,851

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