Ex parte Konrad et al.

Board of Patent Appeals and Interferences

Aug 13, 1998

08047159 (B.P.A.I. Aug. 13, 1998)

Application for patent filed April 13, 1993. According1
to appellants, this application is a continuation of Application
No. 07/716,732, filed June 17, 1991, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GERD KONRAD and HEINRICH HARTMANN
________________
Appeal No. 95-2269
Application No. 08/047,1591
________________
ON BRIEF
________________
Before WINTERS, OWENS and WEIMAR, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting
claim 22, which is the only claim remaining in the application.
The appealed claim reads as follows:
22. A water-thickening copolymer, consisting essentially of:
(a) from 85 to 99% by weight of acrylamide copolymerized
with
Appeal No. 95-2269
Application No. 08/047,159
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(b) from 1 to 15% by weight of at least one monomer selected
from the group consisting of N-dodecylmaleamic acid and N-C /C -8 18
alkylmaleamic acid;
said copolymer having a viscosity of greater than 443
mPa.s at a shear rate of 1.0s at 0.5% by weight in 10% by-1
weight NaC1 solution.
The reference relied on by the examiner is:
Fong et al. (Fong) 4,801,388 Jan. 31, 1989
The issue presented for review is whether the examiner erred
in rejecting claim 22 under 35 U.S.C. § 103 as unpatentable over
Fong.
DISCUSSION
On consideration of the record, we reverse the examiner's
rejection under 35 U.S.C. § 103.
Claim 22, component (b), requires from 1 to 15% by weight of
"at least one monomer selected from the group consisting of N-
dodecylmaleamic acid and N-C /C -alkylmaleamic acid." N-8 18
dodecylmaleamic acid contains a dodecyl group attached to the
nitrogen atom of maleamic acid. The dodecyl group is derived
from dodecane, which is a saturated hydrocarbon containing 12
carbon atoms. Respecting N-C /C -alkylmaleamic acid, this8 18
derivative contains a C -C -alkyl mixture attached to the8 18
nitrogen atom of maleamic acid (specification, page 10, lines 28
through 34). In our judgment, the Fong reference is insufficient
to support a conclusion of obviousness of claims drawn to either
Appeal No. 95-2269
Application No. 08/047,159
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embodiment. In setting forth the rejection, the examiner relies
on Fong's disclosure of a copolymer having N-substituted maleamic
acid units wherein the substituent group may be, inter alia,
linear or branched alkyl having from 1 to 10 carbon atoms (Fong,
column 3, lines 12 through 28). The examiner does not establish
that Fong would have led a person having ordinary skill in the
art to the claimed copolymer, prepared from at least one monomer
selected from the group consisting of N-dodecylmaleamic acid and
N-C /C -alkylmaleamic acid. Simply stated, the Fong reference is8 18
insufficient to support a conclusion of obviousness of claim 22
in view of component (b) recited therein. Fong's disclosure does
not reach N-dodecylmaleamic acid or N-C /C -alkylmaleamic acid8 18
recited in claim 22.
Furthermore, claim 22 defines a water-thickening copolymer
consisting essentially of (a) from 85 to 99% by weight of
acrylamide copolymerized with (b) from 1 to 15% by weight of at
least one monomer selected from the group consisting of N-
dodecylmaleamic acid and N-C /C -alkylmaleamic acid; said8 18
copolymer having a specified viscosity set forth in the last
clause of the claim. The examiner has not established that Fong
would have led a person having ordinary skill in the art to a
copolymer having those specified portions by weight of
components, namely, acrylamide (85 to 99% by weight)
Appeal No. 95-2269
Application No. 08/047,159
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copolymerized with 1 to 15% by weight of at least one monomer
selected from the group consisting of N-dodecylmaleamic acid and
N-C /C -alkylmaleamic acid. For this reason too, we do not8 18
sustain the rejection under 35 U.S.C. § 103.
Where, as here, the examiner has not adduced sufficient
evidence to establish a prima facie case of obviousness of the
appealed claim, we find it unnecessary to discuss the Konrad
declaration, executed November 22, 1993. That declaration was
filed under the provisions of 37 CFR § 1.132 in an effort to
rebut any such prima facie case.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
BASF Corp.
Patent Dept.
3000 Continental Dr., North
Mount Olive, NJ 07828-1234
Appeal No. 95-2269
Application No. 08/047,159
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Appeal No. 95-2269
Application No. 08/047,159
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