Ex parte Hurlock et al.

Board of Patent Appeals and Interferences

Jun 9, 1999

08163778 (B.P.A.I. Jun. 9, 1999)

Application for patent filed December 9, 1993. 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journal and (2) is not binding precedent of the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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. HURLOCK
and MANIAN RAMESH
____________
Appeal No. 96-1952
Application No. 08/163,7781
____________
ON BRIEF
____________
Before SOFOCLEOUS, WALTZ, and SPIEGEL, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 5 as amended
after the final rejection (see the Advisory Action dated June
7, 1995, Paper No. 8, and the amendment dated May 22, 1995,
Appeal No. 96-1952
Application No. 08/163,778
The examiner has relied upon the abstract of each of the2
Suzuki ("Nitto") and Masano ("Mitsubishi") references (see the
Answer, page 4, second paragraph). This merits panel relies
upon and cites from the English translation of the full Suzuki
and Masano references. A copy of these translations have been
inserted into the file record. The examiner is encouraged to
rely upon an English translation of the full reference when
readily available.
2
Paper No. 7). Claims 1 through 5 are the only claims
remaining in this application.
According to appellants, the invention is directed to a
dispersant system which comprises (1) a copolymer of
diallyldimethylammonium chloride (DADMAC) and certain classes
of hydrophobic monomers and (2) a water soluble cationic
copolymer composed of 20 mole% or more of monomer units
represented by formula (II)(Brief, page 2). Claim 1 is
illustrative of the subject matter on appeal and is attached
as an Appendix to this decision.
The examiner has relied upon the following references as
evidence of obviousness:
Farrar et al. (Farrar) 4,835,206 May 30, 1989
Takeda et al. (Takeda) 4,929,655 May 29, 1990
Suzuki et al. (Suzuki) DE 2749295 May 18, 1978
(Published German Patent Application)2
Masano et al. (Masano) 57-90035 June 4, 1982
Appeal No. 96-1952
Application No. 08/163,778
It should be noted that claim 5 depends upon claim 1 but3
there is no antecedent basis in claim 1 for the word
"hydrophobic" as recited in line 2 of claim 5. It is also
noted that "C6 to C20" in line 2 of claim 3 should be "C to6
C ". Upon return of this application to the examiner, these20
errors should be corrected.
The monomer units represented by formula (II) are4
acrylates, (meth)acrylates, acrylamides, and (meth)acrylamides
with a quaternized aminoalkyl moiety. The quaternary groups
attached to the amino nitrogen are all C or less. See the2
specification, pages 12-13.
3
(Published Japanese Patent Application)
Claims 1 through 5 stand rejected under 35 U.S.C. § 103
as unpatentable over Farrar in view of Takeda, Suzuki or
Masano (Answer, page 3). We reverse this rejection for3
reasons which follow.
OPINION
Independent claim 1 on appeal recites a dispersant system
requiring a first dispersant polymer which is a copolymer of
DADMAC and a group of monomers including
dialkylaminoalkylacrylates having C to C quaternaries. The6 20
second dispersant polymer required by claim 1 on appeal is a
copolymer composed of at least 20 mole% of cationic monomer
units of formula (II).4
Appeal No. 96-1952
Application No. 08/163,778
4
The examiner finds that Farrar discloses a blend of
polymers where the “first polymer is the reaction product of
‘one or more’ dialkylaminoalkyl (meth)acrylate or
(meth)acrylamide monomers or the quaternized ammonium forms of
those monomers, with diallyldialkyl ammonium chloride (DADMAC)
monomers.” The examiner further finds that the second polymer
of Farrar is a reaction product of the same monomers, but in
different proportions (see the Answer, page 3, citing Farrar,
column 2, ll. 3-28, column 4, line 38 to column 5, line 10,
and Example 2 bridging columns 8 and 9).
The examiner has not cited any support for the factual
finding that Farrar discloses, as either the first or second
material, a reaction product of “one or more”
dialkylaminoalkyl (meth)acrylate (such as DMAEMA,
dimethylaminoethyl methacrylate, see Farrar, column 8, ll. 40-
41) or (meth)acrylamide monomers with DADMAC monomers. Farrar
discloses DADMAC as one material and DMAEMA as the other
(second) material but there is no disclosure cited to teach or
suggest the specific three monomers required as a minimum by
claim 1 on appeal (see Example 2 of Farrar).
Appeal No. 96-1952
Application No. 08/163,778
5
The “one or more” teaching of Farrar relied upon by the
examiner refers to the method of polymerization:
The first material therefore is preferably an
addition polymer, generally made by vinyl or allyl
addition polymerisation of one or more water soluble
ethylenically unsaturated monomers.
(Column 4, ll. 40- 43).
The “ethylenically unsaturated monomers” disclosed by Farrar
in this context are not specified. However, immediately after
this disclosure Farrar does teach that DADMAC alone is
preferably the polymer made by allyl addition (column 4, ll.
44-49). Similarly, Farrar teaches that when DADMAC copolymers
are used as the second material, useful co-monomers are
acrylamide, polyamides, polyamines, and polyethylene imine
(column 5, line 67 - column 6, line 6). The examiner has not
shown that the specific monomers recited in appealed claim 1
as useful in DADMAC copolymers or as the second dispersant
polymer were disclosed or suggested by Farrar. The secondary
references to Takeda, Suzuki and Masano, cited by the examiner
to show the use of benzyl quaternary groups in flocculating
agents similar to those disclosed by Farrar (Answer, page 4),
do not remedy the deficiency of the primary reference to
Farrar. “Where the
Appeal No. 96-1952
Application No. 08/163,778
6
legal conclusion of obviousness is not supported by facts it
cannot stand.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). Accordingly, the rejection of claims 1
through 5 under § 103 as unpatentable over Farrar in view of
Takeda, Suzuki or Masano is reversed.
The decision of the examiner is reversed.
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Appeal No. 96-1952
Application No. 08/163,778
7
Administrative Patent Judge )
lp
APPENDIX

Claim 1. A dispersant system used in forming polymer
dispersions which comprises:
a. a first dispersant polymer which is a copolymer of
diallyldimethylammonium chloride and a monomer selected from
the group consisting of: dialkylaminoalkylacrylates having C6
to C quaternaries, dialkylaminoalkylmethacrylates having C20 6
to C quaternaries, dialkylaminoalkylacrylamides having C to20 6
C quaternaries; dialkylaminoalkyl(meth)acrylamides having C20 6
to C quaternaries; and alkyl esters of acrylic acid; and,20
b. a second dispersant polymer which is a water
soluble cationic copolymer composed of at least 20 mole
Appeal No. 96-1952
Application No. 08/163,778
8
percent of cationic monomer units represented by the formula
below:

where R is either hydrogen or CH ; R and R are each an alkyl4 3 5 6
group having 1 to 2 carbon atoms; R is a hydrogen atom or an7
alkyl group having 1 to 2 carbon atoms; A is either an oxygen2
atom or NH; B is2
either an alkylene
group having 2
to 4 carbon
atoms or a
hydroxypr opylene
group and X is an2-
anionic counterio
n.
ROBERT A. MILLER
PATENT & LICENSING DEPARTMENT
NALCO CHEMICAL COMPANY
ONE NALCO CENTER
Appeal No. 96-1952
Application No. 08/163,778
9
NAPERVILLE, IL 60563-1198
Leticia
Appeal No. 96-1952
Application No. 08/163,778
APJ WALTZ
APJ SOFOCLEOUS
APJ SPIEGEL
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: November 17, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT