Ex Parte Krishnan

Board of Patent Appeals and Interferences

Sep 28, 2004

10100331 (B.P.A.I. Sep. 28, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VENKATARAM KRISHNAN
__________
Appeal No. 2004-2233
Application No. 10/100,331
___________
ON BRIEF
___________
Before WARREN, WALTZ, and DELMENDO, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 (2004)
from the examiner’s final rejection of claims 1, 3, 4, 7, 8, 10,
11, 14, and 25 through 34 (final Office action mailed Oct. 16,
2003) in the above-identified application. Claims 15 through 24,
the only other pending claims, stand withdrawn from further
consideration pursuant to 37 CFR § 1.142(b) (2003)(effective Dec.
22, 1959). (Examiner’s answer mailed Apr. 30, 2004, page 2.)
The subject matter on appeal relates to a cationically-
charged water-insoluble polymer latex. Further details of this
appealed subject matter are recited in representative claim 1
reproduced below:
Appeal No. 2004-2233
Application No. 10/100,331
2
1. A cationically-charged water-insoluble polymer
latex formed from components consisting essentially of:
an ethylenically unsaturated cationic monomer;
at least one additional noncationic ethylenically
unsaturated monomer selected from the group consisting
of vinyl aromatic monomers, olefins, aliphatic
conjugated diene monomers, non-aromatic unsaturated
mono- or dicarboxylic ester monomers, monomers based on
the half ester of an unsaturated dicarboxylic acid,
unsaturated mono- or dicarboxylic acid monomers,
nitrogen-containing monomers, vinyl ester monomers, and
monomers containing ethylene unsaturation;
a component which is incorporated into said
cationic polymer latex to provide steric stabilization
to said cationic polymer latex, said component selected
from the group consisting of (a)
CH2=C(R)COO(CH2CHR’O)nR”, where R=H, C1-C4 alkyl; and
R’=H, C1-C4 alkyl, and R”=H, C1-C4 alkyl, and n=1-30;
(b) CH2C(R)COO(CH2CH2O)n(CH2CHR’O)mR”, where R=H, C1-C4
alkyl, and R’=H, C1-C4 alkyl, and R”=H, C1-C4 alkyl, n
and m each may range from 1-15; and (c)
CH2=C(R)COO(CH2CHR’O)n(CH2CH2O)mR”, where R=H, C1-C4
alkyl, and R’=H, C1-C4 alkyl and R”=H, C1-C4 alkyl, n
and m=1-15, and (d) mixtures of (a) and (b); and
optionally up to 1.0 weight percent of a nonionic
surfactant;
wherein said latex is devoid of cationic and
anionic surfactants.
The examiner relies on the following prior art references as
evidence of unpatentability:
Masuda et al. (Masuda) 4,740,546 Apr. 26, 1988
Michels et al. (Michels) 5,247,008 Sep. 21, 1993
Claims 1, 3, 4, 7, 8, 10, 11, 14, and 25 through 34 on
appeal stand rejected under 35 U.S.C. § 102(b) as anticipated by
Appeal No. 2004-2233
Application No. 10/100,331
1 The final rejections under 35 U.S.C. § 102(b) of the
appealed claims over U.S. Patent Nos. 4,735,991 issued to Guioth
et al. on Apr. 5, 1988, 4,943,612 issued to Morita et al. on Jul.
24, 1990, and 5,312,863 issued to Van Rheenen et al. on May 17,
1994 have been withdrawn. (Answer at 3.)
2 The appellant submits that “the [appealed] claims stand
or fall together.” (Appeal brief filed Mar. 15, 2004, p. 2.) We
therefore select claim 1 as representative and confine our
discussion to this representative claim. See 37 CFR §
1.192(c)(7)(2003)(effective Apr. 21, 1995).
3
either Masuda or Michels. (Answer at 4-7.) 1
We reverse the rejection based on Masuda but affirm the
rejection based on Michels for the reasons well stated in the
answer.2
We consider first the rejection based on Masuda. Masuda
teaches an aqueous dispersion of a vinyl copolymer resin solution
in water, the vinyl copolymer resin solution being obtained by
polymerizing 1-15 parts by weight of a polyoxyethylene-containing
hydrophilic monomer in which the polyoxyethylene moiety has an
average molecular weight of 2,000 to 10,000, 85-99 parts by
weight of at least one specific polymerization vinyl monomer, and
0-5 parts by weight of á,â-unsaturated carboxylic acids, salts
thereof, or anhydrides thereof in an organic solvent. (Column 2,
lines 1-12.) According to Masuda, triethylammonium methacrylate
may be used as a comonomer. (Column 3, lines 35-42; Example 13.)
Masuda further teaches that the structure of the polyoxyethylene
Appeal No. 2004-2233
Application No. 10/100,331
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monomer may be as follows:
H-CR1=CR2COOR3-O-(CH2CH2O)n-R4
wherein each of R1 and R2 represents a hydrogen atom, an alkyl
group having 1-4 carbon atoms, or a phenyl group, R 3 represents
an alkylene group having 2 or 3 carbon atoms, R 4 represents a
hydrogen atom or an alkyl group having 1-4 carbon atoms, and n
represents the number of repeating oxyethylene units. (Column 2,
lines 22-38.)
The appellant argues that Masuda does not disclose the
polyoxyethylene-containing monomer recited in the appealed
claims. (Appeal brief at 5; reply brief filed Jun. 30, 2004,
pages 1-2.) We agree.
As we discussed above, Masuda teaches that the
polyoxyethylene moiety of the polyoxyethylene-containing monomer
has an average molecular weight of 2,000 to 10,000. By contrast,
“n” is at most 30 in the here recited polyoxyethylene monomer (a)
and each of “n” and “m” is at most 15 in the here recited
polyoxyethylene monomer (b) and (c).
Accordingly, with respect to Masuda, it cannot be said that
the examiner has adequately established a prima facie case of
anticipation under 35 U.S.C. § 102.
The rejection based on Michels stands on different footing.
Appeal No. 2004-2233
Application No. 10/100,331
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Michels describes an aqueous dispersion (i.e., a latex) obtained
by polymerizing 62 parts by weight of CH 2=CHCOOCH2CH2C8F17, 15
parts by weight of n-butyl acrylate, 20 parts by weight of
CH2=CCH3COO(CH2CH2O)8H, and 3 parts by weight of
dimethylaminoethyl methacrylate in 285 parts by weight of
acetone; mixing with a solution of 3.9 parts of acetic acid in
296 parts by weight of deionized water; and then removing the
acetone by distillation at 60ºC and 200-300 mbar. (Examples 1
and 2.) The fluorine-containing monomer described in Michels is
encompassed by either the “non-aromatic unsaturated mono- or
dicarboxylic ester monomers” or “monomers containing ethylene
unsaturation” recited in appealed claim 1. (Specification, page
3, line 17 to page 4, line 2.) Additionally, the n-butyl
acrylate and the dimethylaminoethyl methacrylate described in
Michels are identified in the present specification as suitable
noncationic ethylenically unsaturated monomer and cationic
quaternary amine monomer, respectively. (Id. at page 3, line 24
and page 4, lines 24-25.)
Thus, we share the examiner’s view that Michels describes
each and every limitation of the invention recited in appealed
claim 1. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997).
Appeal No. 2004-2233
Application No. 10/100,331
6
The appellant argues that Michels does not teach the
formation of the aqueous polymer dispersion by an emulsion
polymerization process. (Appeal brief at 6.) This argument is
utterly without merit. Nothing in the express language of the
claims or in the written description of the specification limits
the method by which the latex is formed. In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982)(“Many of appellant’s
arguments fail from the outset because, as the solicitor has
pointed out, they are not based on limitations appearing in the
claims.”).
Even if such limitation exists, which it does not, it is
well settled that the patentability of a product rests on the
actual product, not on the method by which it is produced, and
that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art,
the burden of proof is on the applicant to prove otherwise. In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985).
The appellant urges that “[t]here is no disclosure [in
Michels] that the organic solvents are completely removed.”
(Appeal brief at 6; reply brief at 2.) This argument is also
Appeal No. 2004-2233
Application No. 10/100,331
7
unavailing. As noted above, Michels teaches a distillation step
to remove the organic solvent. (Column 5, lines 24-25.) Also,
nothing in the written description of the present specification
indicates that residual organic solvents, if any are indeed
present in the prior art aqueous dispersion, are excluded by
appealed claim 1. Quite contrarily, the specification states
that various “other additives” and “other components” may be
present in the claimed latex. (Specification, page 6, line 30 to
page 7, line 5.)
To the extent that appealed claim 1 recites “consisting
essentially of,” the appellant has not adequately established
that the presence of residual organic solvents would materially
affect the basic and novel characteristics of the invention
recited in appealed claim 1. PPG Industries Inc. v. Guardian
Industries Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54
(Fed. Cir. 1998); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461,
463 (CCPA 1976).
The appellant further contends that “Michels proposes
fluorinated dispersions which are clearly different from the
cationic lattices of the invention.” (Appeal brief at 6.) This
position is also without any merit. The present specification
describes the use of fluorine-containing monomers.
Appeal No. 2004-2233
Application No. 10/100,331
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(Specification, page 4, lines 1-2.)
For these reasons, we hold that the appellant has not
adequately rebutted the examiner’s prima facie case of
anticipation. Accordingly, we uphold the examiner’s rejection on
this ground.
In summary, we reverse the examiner’s rejection under 35
U.S.C. § 102(b) of appealed claims 1, 3, 4, 7, 8, 10, 11, 14, and
25 through 34 as anticipated by Masuda. We affirm, however, the
examiner’s rejection under 35 U.S.C. § 102(b) of appealed claims
1, 3, 4, 7, 8, 10, 11, 14, and 25 through 34 as anticipated by
Michels.
The decision of the examiner to reject all of the appealed
claims is therefore affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Charles F. Warren )
Administrative Patent Judge )
)
Appeal No. 2004-2233
Application No. 10/100,331
9
)
)
) BOARD OF PATENT
Thomas A. Waltz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
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