Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardJan 22, 201814652808 (P.T.A.B. Jan. 22, 2018) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/652,808 06/17/2015 Yuanqin LIU 74156-US-PCT 3606 21898 7590 01/24/2018 ROHM AND HAAS COMPANY c/o The Dow Chemical Company P.O. Box 1967 2040 Dow Center Midland, MI 48641 EXAMINER MILLER, DAVID L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 01/24/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUANQIN LIU and COLLIN H. MARTIN Appeal 2017-004312 Application 14/652,808 Technology Center 1700 Before MICHAEL P. COLAIANNI, BRIAN D. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appeal 2017-004312 Application 14/652,808 Claim 1 is illustrative of the subject matter on appeal and is reproduced below (formatting added): 1. A method of producing monomer droplets dispersed in an aqueous medium, wherein said method comprises (a) providing an apparatus comprising a metallic membrane having a plurality of through holes; wherein a monomer phase is in contact with a first side of said membrane; wherein an aqueous medium is in contact with a second side of said membrane; wherein said monomer phase is insoluble in said aqueous medium; wherein said aqueous medium comprises 0.2% or more of one or more surfactants by weight based on the weight of the aqueous medium; and (b) conveying said monomer phase through said through holes into said aqueous medium under conditions sufficient to form a plurality of monomer droplets; wherein a shear force is applied at a point of egression of the monomer phase into the aqueous medium; wherein the direction of shear is perpendicular to the direction of egression of the monomer phase. 2 Appeal 2017-004312 Application 14/652,808 Appellant1 requests review of the following rejections from the Examiner’s Final Action (App. Br. 9): I. Claims 1-7 rejected under 35 U.S.C. § 103(a) as unpatentable over Fukuda (US 2012/0175798 Al, published July 12, 2012) and Hatate (JP 06107709 A, published April 6, 1994, and relying on an English machine translation dated October 29, 2015). II. Claims 1-7 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatate and Wildeson (US 2008/0200605 Al, published August 21, 2008). For both rejections, Appellant presents argument addressing only independent claim 1. See generally App. Br. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal for both rejections. Claims 2-7 stand or fall with claim 1. OPINION After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner’s rejections for the reasons presented by the Examiner. We add the following for emphasis. 1 Rohm and Haas Company is the Applicant. Rohm and Haas Company is also identified as the real party in interest. App. Br. 4. 3 Appeal 2017-004312 Application 14/652,808 Rejection I The Examiner finds Fukuda discloses a method of producing monomer droplets dispersed in an aqueous medium that differs from the claimed invention in that Fukuda does not disclose the type and amount of surfactant used in the aqueous medium. Final Act. 3—4. The Examiner finds Hatate, also directed to a method of producing polymer particles, discloses the use of an anionic surfactant in an amount of from 0.1 to 0.5 wt% of the aqueous phase, which overlaps the claimed range for the added surfactant, to make uniform polymer particles. Final Act. 4-5; Hatate 15, 16. The Examiner determined it would have been obvious to one skilled in the art to use the surfactant in Fukuda in the amount disclosed by Hatate to make uniform polymer particles. Final Act. 5. Appellant does not dispute the Examiner’s findings with respect to the prior art. See generally App. Br. Instead, Appellant argues that Hatate does not teach or suggest 0.2% lower value of the claimed range for the surfactant amount as a critical minimum value. App. Br. 10. That is, Appellant asserts the claimed range of 0.2% or more surfactant is unexpected because the cited prior art gives no guidance for the amount of surfactant and because Appellant discovered that the range of 0.2% or more is critical to produce small sized particles. Id. Appellant relies on the Declaration under 37 C.F.R. § 1.132 by co-inventor Dr. Collin Martin (Declaration).2 The burden of showing unexpected results rests on Appellant. Appellant may meet the burden by establishing that the difference between 2 The Declaration was submitted on April 8, 2016 and entered into the record by the Examiner on April 18, 2016. 4 Appeal 2017-004312 Application 14/652,808 the claimed invention and the closest prior art is an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We have considered the evidence proffered by Appellant, but agree with the Examiner’s determination that the data are insufficient to persuasively weigh in favor of non-obviousness in light of the prior art. Ans. 8-12. Moreover, we find no mention in the Specification that the claimed surfactant range of 0.2% or more by weight based on the weight of the aqueous medium yields any unexpected results with respect to the particle sizes of the monomer droplets and Appellant directs us to no portion of the Specification in support of this. Instead, the Specification merely describes this claimed range for surfactant amounts as a preferred range. Spec. ^ 36. Further, while the data in the Declaration is limited to percentages of surfactant tested in the amounts of 0%, 0.1%, 0.5% and 1% (Decl. 10- 12), there are no experiments testing the asserted critical minimum value of 0.2% surfactant. Thus, Appellant and Declarant do not adequately show or explain how the Declaration presents an adequate showing of unexpected results for the claimed surfactant range of 0.2% or more by weight based on 5 Appeal 2017-004312 Application 14/652,808 the weight of the aqueous medium with respect to the particle sizes of the monomer droplets. Accordingly, we affirm the Examiner’s rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Fukuda and Hatate for the reasons presented by the Examiner and given above. Rejection II We refer to the Examiner’s Final Action for a complete statement of the rejection. Final Act. 5-7. Briefly, the Examiner find Hatate discloses a method of producing monomer droplets dispersed in an aqueous medium that differs from the claimed invention in that Hatate does not disclose the use of a metallic membrane to form the monomer droplets. Id. at 5-6. The Examiner relies on Wildeson to teach the use of metallic membranes as known to form polymeric particles. Id. at 5-6. Appellant first relies on the same line of arguments presented when discussing Rejection I. App. Br. 11. We remain unpersuaded by these argument for the reasons presented in our discussion above. Appellant also argues that Hatate and Wildeson are non-analogous art because they are directed to different technological challenges. Id. at 12. According to Appellant, Hatate is directed to a process where the material being forced through a membrane is a uniform solution of organic non polymeric molecules while Wildeson is directed to a process where a crude emulsion of particles is formed in water that is then passed through a membrane to produce a subsequent emulsion that has smaller particle size than the first emulsion. Id. at 13. 6 Appeal 2017-004312 Application 14/652,808 We are unpersuaded by these arguments for the reasons presented by the Examiner. Ans. 15-17. Appellant does not contest that the metallic membrane of Wildeson is used to form polymer particles. See generally App. Br. While Appellant argues that the references are directed to a process of making particles of different materials, Appellant has not provided an adequate technical explanation of why one skilled in the art would not have found the metallic membrane of Wildeson suitable for the process of Hatate. Given that both Hatate and Wildeson disclose using similar (glass) membranes, Appellant has not adequately explained why one skilled in the art would not have had a reasonable expectation that the use of Wildeson’s metallic membrane would not have resulted in monomer droplets as claimed. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.â€). Accordingly, we affirm the Examiner’s rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over Hatate and Wildeson for the reasons presented by the Examiner and given above. ORDER The Examiner’s prior art rejections of claims 1-7 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation