Ex parte Hurlock et al.Download PDFBoard of Patent Appeals and InterferencesJun 9, 199908163778 (B.P.A.I. Jun. 9, 1999) Copy Citation 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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 Copy with citationCopy as parenthetical citation