Ex parte Hunter et al.

Board of Patent Appeals and Interferences

Sep 20, 1999

08273688 (B.P.A.I. Sep. 20, 1999)

Application for patent filed July 12, 1994. According1
to appellants, this application is a continuation of
Application No. 07/993,800 filed December 21, 1992, now
abandoned.
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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WOOD E. HUNTER, KEVIN W. FREDERICK
and RANDY J. LOEFFLER
____________
Appeal No. 1997-1604
Application No. 08/273,6881
____________
ON BRIEF
____________
Before KIMLIN, GARRIS and WARREN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-1604
Application No. 08/273,688
2
This is a decision on an appeal from the final rejection
of claims 1 through 18 which are all of the claims remaining
in the application.
The subject matter on appeal relates to a method for
preparing a pourable, concentrated polymer/emulsifying
surfactant/hydrophobic liquid composition by removing some
portion of hydrophobic liquid from a starting composition in a
first centrifuge, thereby producing the aforementioned
pourable composition. The subject matter also relates to the
pourable composition itself. This subject matter is
adequately illustrated by independent method claims 1 and 17
and independent composition claims 12 and 18. A copy of these
claims taken from the appellants’ brief is appended to this
decision.
The following references are relied upon by the examiner
in the rejections before us:
Krijnen et al. (Krijnen) 4,803,264 Feb.
7, 1989
Mallya et al. (Mallya) 4,944,888 Jul. 31,
1990
Scanley 5,155,156 Oct. 13,
1992
Appeal No. 1997-1604
Application No. 08/273,688
3
Kirk-Othmer, Concise Encyclopedia of Chemical Technology, John
Wiley & Sons, New York (1985) p. 235.
Claims 15 and 16 stand rejected under the first paragraph
of 35 U.S.C. § 112 as being based upon a disclosure which
would not enable one with ordinary skill in the art to
practice the here claimed invention.
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Application No. 08/273,688
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Claims 1 through 5, 7 through 16 and 18 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by or
alternatively under 35 U.S.C. § 103 as being unpatentable over
Scanley.
Claims 1 through 18 stand rejected under 35 U.S.C. §
102(b) as being anticipated by or alternatively under 35
U.S.C. § 103 as being unpatentable over Mallya.
Claims 1 through 14 stand rejected under 35 U.S.C. § 103
as being unpatentable over Mallya in view of Kirk-Othmer.
Finally, claim 17 stands rejected under 35 U.S.C. § 103
as being unpatentable over Krijnen.
We refer to the Brief and to the Answer for an exposition
of the viewpoints expressed by the appellants and the examiner
concerning each of the above noted rejections.
OPINION
Our study of the arguments, evidence and issues advanced
on this appeal with respect to the rejections before us leads
to the conclusion that we can sustain only the Section 102 and
Section 103 rejections over Scanley of composition claims 12
through 14 and 18. Our reasons follow.
Appeal No. 1997-1604
Application No. 08/273,688
5
Concerning the Section 112, first paragraph, rejection,
the examiner’s nonenablement position relates to the claim 15
phrase “settling or compaction stabilizer” (and
correspondingly to the acronym “LMA/MAA” on page 36 of the
subject specification) as well as to the claim 16 phrase
“inverting surfactant.” As explained by the appellants in
their Brief, however, the aforequoted recitation criticized in
the rejection under review would not prevent one ordinarily
skilled in this art from practicing the here claimed invention
as the examiner seems to believe. Indeed, the criticized
terms are common in this art as reflected by, for example, the
Scanley and Mallya references applied by the examiner in the
rejections discussed below.
It follows that the examiner’s Section 112, first
paragraph, rejection of claims 15 and 16 cannot be sustained.
The Section 102 and Section 103 rejections over Scanley
of method claims 1 through 11 and 15 through 17 also cannot be
sustained. Each of these claims requires the step of removing
some portion of hydrophobic liquid from a starting composition
in a first centrifuge, thereby producing a pourable
concentrated polymer/emulsifying surfactant/hydrophobic liquid
Appeal No. 1997-1604
Application No. 08/273,688
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composition. While Scanley removes hydrophobic liquid from a
starting composition via physical separation steps such as
centrifugation and filtration, the resulting product is
essentially a cake of polymer particles (e.g., see lines 15-57
in column 8 and example I in column 10). Such a cake cannot
be regarded as the here claimed pourable concentrated
polymer/emulsifying surfactant/
hydrophobic liquid composition. As a consequence, the step of
Scanley’s method in which hydrophobic liquid is removed, for
example, via a centrifuge does not produce a pourable
concentrated composition as required by the method claims
under review.
The Section 102 and Section 103 rejections over Scanley
of composition claims 12 through 14 and 18 stand under
different footing. This is because, although these claims
contain process recitation, the determination of claim
patentability depends upon the composition itself. In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
With the foregoing in mind, we point out that Scanley’s
aforementioned cake of polymer particles is redispersed in a
Appeal No. 1997-1604
Application No. 08/273,688
That patentee’s composition possesses such2
characteristics as pourablity is also evinced by the
disclosure of applying fluid handling techniques to these
compositions at lines 46-49 in column 6.
7
second oil to produce a finished composition (e.g., again see
lines 55-57 in column 8). Moreover, patentee’s finished
composition would contain concentrations of water and polymer
solids which are within the corresponding ranges defined by
the appellants’ composition claims (e.g., see the paragraph
bridging columns 5 and 6 and lines 13-59 in column 6 of the
patent). The correspondence between Scanley’s finished
composition and the here claimed composition (e.g., with
respect to ingredients and concentrations) evinces that
Scanley’s composition also possesses the pourablity and
viscosity characteristics of the here claimed composition .2
Under these circumstances, it is fair to require that the
appellants prove Scanley’s composition does not actually
possess the aforementioned characteristics. The fairness of
so allocating the burden of proof lies in the inability of the
Patent and Trademark Office to manufacture and compare the
compositions under consideration. In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977).
Appeal No. 1997-1604
Application No. 08/273,688
The examiner’s apparent belief (see the first full3
paragraph on page 15 of the Answer) that Mallya discloses such
concentrations at column 6, lines 9-18, is clearly erroneous.
The percentages referred to in this disclosure relate to
adhesive coating not polymer solids.
8
On this record, the appellants have proffered no evidence
that Scanley’s finished compositions do not possess the
pourability and viscosity characteristics defined by their
composition claims. It is appropriate, therefore, to sustain
the Section 102 and Section 103 rejections over Scanley of
these composition claims 12 through 14 and 18.
On the other hand, the Section 102 and Section 103
rejections based upon Mallya as the primary reference cannot
be sustained. This is because the applied prior art contains
no teaching or suggestion of the polymer solids concentrations
required by appealed claims 1 through 16 and 18 . Further,3
Mallya contains no teaching or suggestion of the specific
method defined by appealed claim 17 including step b thereof.
For the above stated reasons, we cannot sustain the
examiner’s Section 102 or Section 103 rejections of claims 1
through 14 over Mallya alone or further in view of Kirk-Othmer
Appeal No. 1997-1604
Application No. 08/273,688
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nor the corresponding rejections of claims 15 through 18 over
Mallya alone.
Finally, the Section 103 rejection of claim 17 over
Krijnen also cannot be sustained. This reference, like
Mallya, contains no teaching or suggestion of the specific
method defined by appealed claim 17 including step b thereof.
The decision of the examiner is affirmed-in-part.
Appeal No. 1997-1604
Application No. 08/273,688
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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 )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
bae
Appeal No. 1997-1604
Application No. 08/273,688
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Appeal No. 1997-1604
Application No. 08/273,688
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APPENDIX
1. A method for preparing a pourable, concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
from a starting dehydrated polymer/emulsifying
surfactant/hydrophobic liquid composition, which method
consists essentially of removing some portion of hydrophobic
liquid from said starting dehydrated polymer/emulsifying
surfactant/hydrophobic liquid composition in a first
centrifuge, thereby producing a pourable concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
and a first centrifuge raffinate, wherein said polymer is a
water soluble polymer prepared from one or more ethylenically
unsaturated monomers and wherein said pourable concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
contains less than about 5%, by weight, water and greater than
about 60%, by weight, polymer solids.
12. A pourable concentrated polymer/emulsifying
surfactant/hydrophobic liquid composition prepared by a method
consisting essentially of removing some portion of hydrophobic
liquid from a starting dehydrated polymer/emulsifying
surfactant/hydrophobic liquid composition in a first
centrifuge, thereby producing said pourable concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
and a first centrifuge raffinate, where said polymer is a
water soluble polymer prepared from one or more ethylenically
unsaturated monomers and wherein said pourable concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
contains less than about 5%, by weight, water and greater than
about 60%, by weight, polymer solids.
17. A method for preparing a pourable, concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
from a starting dehydrated polymer/emulsifying
Appeal No. 1997-1604
Application No. 08/273,688
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surfactant/hydrophobic liquid composition, which method
comprises: a) removing some portion of hydrophobic liquid from
said starting dehydrated polymer/emulsifying
surfactant/hydrophobic liquid composition in a first
centrifuge, thereby producing a pourable concentrated
polymer/emulsifying surfactant/hydrophobic liquid composition
and a first centrifuge raffinate; and b) centrifuging said
first centrifuge raffinate in a second centrifuge to capture
additional polymer solids.
18. A viscous, pourable polymer emulsifying
surfactant/hydrophobic liquid composition having a viscosity
of about 300 cps to 25,000 cps and containing greater than
about 60% polymer solids and less than about 5% water prepared
by centrifuging a starting dehydrated polymer/emulsifying
surfactant/hydrophobic liquid composition, wherein said
polymer is a water soluble polymer prepared from one or more
ethlenically unsaturated monomers.
Appeal No. 1997-1604
Application No. 08/273,688
14
William C. Mitchell
Calgon Corporation
Patent Department
P.O. Box 1346
Pittsburgh, PA 15230