Ex Parte Lorah et al

Board of Patent Appeals and Interferences

Sep 10, 2004

09981350 (B.P.A.I. Sep. 10, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DENNIS PAUL LORAH and ROBERT VICTOR SLONE

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Appeal No. 2004-1900
Application No. 09/981,350
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ON BRIEF
_______________
Before PAK, JEFFREY T. SMITH, and PAWLIKOWSKI, Administrative
Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1 through 6 which are
all of the claims pending in the above-identified application.
Appeal No. 2004-1900
Application No. 09/981,350
1 See In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462,
1465 (Fed. Cir. 2002)(“If the brief fails to meet either
requirement [of 37 CFR § 1.192(c)(7)(2001)], the Board is free to
select a single claim from each group of claims subject to a
common ground of rejection as representative of all claims in
that group and to decide the appeal of that rejection based
solely on the selected representative claim”).
2
APPEALED SUBJECT MATTER
According to appellants (Brief, page 3):
As to the rejections applied against claims 1-6 under
35 USC [U.S.C. §] 103(a), it is appellants’ intention
for each ground of rejection that the rejected claims
stand of fall together.
Therefore, for purposes of this appeal, we select claim 3, the
broadest independent claim, from all of the claims on appeal and
determine the propriety of the examiner’s rejections based on
this claim alone consistent with 37 CFR § 1.192(c)(7)(2003).1
Claim 3 is reproduced below:
3. An aqueous composition suitable for use when dry as an
improved elastomeric coating, caulk, sealant, fabric
treatment, or pressure sensitive adhesive comprising a
predominantly acrylic aqueous emulsion polymer, said polymer
having a glass transition temperature (Tg) from -90 oC to
20 oC formed by the free radical polymerization of at least
one ethylenically unsaturated nonionic acrylic monomer and
0.75%, by weight based on the total weight of said polymer,
ethylenically unsaturated acid monomer in the presence of
0.01-1.0%, by weight based on the total weight of said
polymer, t-alkyl hydroperoxide, t-alkyl peroxide, or t-alkyl
perester wherein the t-alkyl group includes at least
5 Carbon atoms and, optionally, at least one other oxidant.
Appeal No. 2004-1900
Application No. 09/981,350
3
THE PRIOR ART
The examiner relies on the following prior art references:
Yang 5,824,734 Oct. 20, 1998
Yamauchi et al. (Yamauchi) 5,852,095 Dec. 22, 1998
Kirk et al. (Kirk) 6,335,404 B1 Jan. 1, 2002
Odian, Principles of Polymerization, p. 227 (2nd Ed., John Wiley
& Sons, 1981).
THE REJECTIONS
Claims 1 through 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Yang, Kirk and
Odian. Claims 1 through 6 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Yamauchi, Yang,
Kirk and Odian.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the evidence and the arguments
advanced by both the examiner and the appellants in support of
their respective positions. This review has led us to conclude
that the examiner’s Section 103 rejections are well founded.
Accordingly, we will sustain the examiner’s Section 103
rejections for the reasons set forth in the Answer and below.
The appellants do not dispute the examiner’s finding that
Yang or Yamauchi discloses an aqueous composition comprising a
predominantly acrylic aqueous emulsion polymer formed by the free
Appeal No. 2004-1900
Application No. 09/981,350
2 According to page 4 of the specification, the appellants
also acknowledge that the claimed glass transition temperature is
known to correspond to the monomers employed.
4
radical polymerization of the claimed amounts of the claimed
monomers. Compare the Answer in its entirety with the Brief and
the Reply Brief in their entirety. Nor do the appellants dispute
the examiner’s finding that the polymer formed in Yang or
Yamauchi has the claimed glass transition temperature.2 See the
Answer, page 5, with the Brief and the Reply Brief in their
entirety. The appellants only argue that one of ordinary skill
in the art would not have been led to employ the claimed amount
of the claimed free radical initiator in forming the emulsion
polymer disclosed in Yang and/or Yamauchi. See the Brief and the
Reply Brief in their entirety. According to claim 3, the free
radical polymerization is carried out in the presence of 0.01 to
1.0 weight percent of t-alkyl hydroperoxide, t-alkyl peroxide, or
t-alkyl perester (each alkyl representing at least five carbon
atoms) as the free radical initiator.
The dispositive question is, therefore, whether it would
have been obvious to employ the claimed amount of the claimed
Appeal No. 2004-1900
Application No. 09/981,350
5
free radical initiator in forming the emulsion polymer disclosed
in Yang and/or Yamauchi. On this record, we answer this question
in the affirmative.
We find that both Yang and Yamauchi teach employing the
claimed amount of peroxides or organic peroxides, inclusive of
those claimed, as free radical initiators. See Yang, column 6,
lines 18-40 and Yamauchi, column 12, lines 16-34. We find that
both Yang and Yamauchi also identify t-butyl hydroperoxide as one
of the peroxide or organic peroxide initiators (see Yang, column
6, line 31 and Yamauchi, column 12, line 25), with Yang actually
using the claimed amount of t-butyl hydroperoxide as one of the
initiators in its Examples 1, 3 and 5 (see Yang, columns 7, 8 and
9). Thus, we determine that one of ordinary skill in the art
would have been led to a structurally similar initiator, such as
an adjacent homolog of t-butyl hydroperoxide, encompassed by the
claims on appeal, with a reasonable expectation of successfully
forming the polymer taught or suggested by Yang or Yamauchi. As
held in In re Henze, 181 F.2d 196, 201, 85 USPQ 261, 265 (CCPA
1950) and as explained in In re Mills, 281 F.2d 218, 222-23, 126
USPQ 513, 516-17 (CCPA 1960):
[T]he nature of homologues and the close relationship
the physical and chemical properties of one member of a
series bears to adjacent member is such that a
Appeal No. 2004-1900
Application No. 09/981,350
3 Odian is cumulative with respect to the amount of
initiator used for the reasons indicated supra. Odian teaches
that the amount of initiator used is a result effective variable
as it is known to affect the resulting polymer.
6
presumption of unpatentability arises against a claim
directed to a composition of matter, the adjacent
homologues of which is old in the art. The burden is
on the applicant to rebut that presumption by a showing
that the claimed compound possesses unobvious or
unexpected beneficial properties not actually possessed
by the prior art homologue.
In any event, we find that the expressions “peroxides” and
“organic peroxides” used in Yang and Yamauchi, as explained by
Kirk at column 6, lines 55-65, include a limited number of
conventional peroxide initiators, including tertiary-amyl
hydroperoxide (t-amyl hydroperoxide) encompassed by the claims on
appeal. Thus, we agree with the examiner that one of ordinary
skill in the art would have been led to employ organic peroxide
initiators, such as t-amyl hydroperoxide, with a reasonable
expectation of successfully forming the polymer taught or
suggested by Yang or Yamauchi.3
Having determined that the examiner has established a prima
facie case of obviousness, we look to any objective evidence
relied upon by the appellants. However, the appellants do not
refer to, much less rely on, any objective evidence which shows
that the claimed initiators impart unobvious or unexpected
Appeal No. 2004-1900
Application No. 09/981,350
7
beneficial properties to the claimed composition relative to the
prior art composition produced by t-butyl hydroperoxide initiator
exemplified in Yang. See the Brief and the Reply Brief in their
entirety.
Thus, on this record, we determine that the evidence of
obviousness, on balance, outweighs the evidence of
nonobviousness. Hence, we concur with the examiner that the
claimed subject matter as a whole would have been obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103. Accordingly, we affirm the examiner’s decision rejecting
claims 1 through 6 under 35 U.S.C. § 103.
Appeal No. 2004-1900
Application No. 09/981,350
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CKP:hh
Appeal No. 2004-1900
Application No. 09/981,350
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DR. RONALD D. BAKULE
ROHM AND HAAS CO.
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106