Ex Parte Lu et al

Patent Trial and Appeal Board

Oct 10, 2017

12975885 (P.T.A.B. Oct. 10, 2017)

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.
12/975,885 12/22/2010 Ning Lu 1302-703 (5072021) 6379
28249 7590 10/10/2017
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
NIELSEN, THOR B
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
10/10/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NING LU, SIGFREDO GONZALEZ,
EMIE M. SILVESTRE, and GENG WANG
____________

Appeal 2016-008724
Application 12/975,8851
Technology Center 1600
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1–13 and 20–25
(App. Br. 8).2 Examiner entered rejections under 35 U.S.C. § 103(a) and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Appellants identify the real party in interest as “Momentive Performance
Materials Inc.” (App. Br. 3).
2 Claims 14–19 stand withdrawn from consideration (App. Br. 8).
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Application 12/975,885

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STATEMENT OF THE CASE
Appellants’ disclosure “relates to network copolymer compositions,
processes for their preparation, and products comprising the same” (Spec.
¶ 2). Claim 1 is representative and reproduced below:
1. A personal care product composition comprising a
crosslinked network polymer provided by the reaction of
(i) at least one anionic polymerizable ethylenically
unsaturated monomer (I) selected from the group consisting of
[CH2=C(R3)C(O)OXa(C2H4O)b(C3H6O)c(C4H8O)d]pP(O)(OY)q(OZ)r
where
R3 = H or alkyl of 1 to about 6 carbon atoms;
X= alkyl, ary1, or alkaryl diradical connecting group of 0
to about 9 carbon atoms; a is 0 to about 100;
b is 0 to about 100;
c is 0 to about 100;
d is 0 to about 100;
q is 0 to about 2;
r is 0 to about 2;
p is 1 to about 3 subject to the limitation that p+q+r = 3;
and
Y and Z is H, or metal ion;
wherein at least one of b, c, and d is at least 1;
and
CH2=C(R3)C(O)OXa’(C2H4O)b’(C3H6O)c’(C4H8O)d-(SO3-Y)
where
R3 = H or alkyl of from l to about 6 carbon atoms;
X= alkyl, aryl, or alkaryl diradical connecting group of 0
to about 9 carbon atoms;
a’ is 0 to about 100;
b’ is 0 to about 100;
c’ is 0 to about 100;
d’ is 0 to about 100:
Y is H, or meta1 ion;
wherein at least one of b’, c’, and d’ is at least 1; and
(ii) one or more additional monomers (II) selected from
the group consisting of acrylic acid/acrylate, rnethacrylic
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acid/methacrylate, acrylamides, vinyl acetate and styrene,
which are copolymerizable with (I); and
(iii) a cross-linking agent (III), containing at least one
ethylenically unsaturated group and capable of copolymerizing
with (I) and (II), wherein the network polymer is
simultaneously polymerizied and cross-linked; and
wherein the personal care product composition has an oil
and/or water swellability of 5 to 500 times its original volume.
(App. Br. 13–14.)

The claims stand rejected as follows:
Claims 1–4, 7–13, 20, 21, and 23–25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Munro3 and Yoon.4, 5
Claims 1–13 and 20–25 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–6 of Lu ’444.6
Claims 1–13 and 20–25 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1–24 of Lu ’337.7

Obviousness-type Double Patenting:
Appellants do not contest either of the obviousness-type double
patenting rejections, but instead “request that the rejection[s] be held in
abeyance until claims [on this record] are allowed” (see App. Br. 11.) We

3 Munro et al., US 2005/0196432 A1, published Sept. 8, 2005.
4 Yoon et al., US 2006/0141392 A1, published June 29, 2006.
5 Examiner withdrew the rejection of claims 6 and 22 from this rejection (see
Ans. 2).
6 Lu et al., US 8,809,444 B2, issued Aug. 19, 2014.
7 Lu et al., US 8,669,337 B2, issued Mar. 11, 2014.
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therefore summarily affirm these rejections. See MANUAL OF PATENT
EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by
the examiner is not addressed in the appellant’s brief, appellant has waived
any challenge to that ground of rejection and the Board may summarily
sustain it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”); id. (“[T]he Board may summarily sustain any grounds
of rejections not argued.”).

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Munro “relates to a process for coating a perforated substrate with a
gel and to coated perforated substrates obtainable by the process” (Munro
¶ 1; see generally Final Act.8 6).
FF 2. Munro discloses that “[g]el coated perforated substrates are known
for use in a variety of consumer care applications, for example as wound
dressings” (Munro ¶ 2; see also id. ¶ 15 (“coated perforated substrate[s] . . .
[are] useful in . . . cosmetic applications, e.g., for the attachment of wigs or
toupees, or for therapeutic applications, e.g. as wound dressings, transdermal
drug delivery, therapeutic patches or as electrodes (e.g. biomedical skin
electrodes)”); see Final Act. 6).
FF 3. Munro discloses:

8 Examiner’s July 15, 2015 Office Action.
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[A] process for coating a perforated substrate with a gel without
substantial occlusion of the perforations, which process
comprises:
(i) forming (e.g. by extrusion) a layer of a liquid pregel
mixture, comprising one or more monomers, on a web coated
with a coating having a surface energy less than the surface
energy of the liquid pregel mixture:
(ii) contacting the perforated substrate with the liquid
pregel mixture layer; and
(iii) curing the liquid pregel mixture.
(Munro ¶¶ 5–8.)
FF 4. Munro discloses that “the gel formed by the liquid pregel mixture
. . . is any gel conventionally used to coat substrates, for example, to act as
an adhesive. Preferably the gel formed by the pregel is a tacky gel such as a
hydrogel or a xerogel” (Munro ¶ 22; see generally Final Act. 7).
FF 5. Munro discloses that “the pregel mixture [typically] used to form a
hydrogel is an aqueous solution of one or more ionic monomers, optionally
in association with a cross-linking agent” (Munro ¶ 22; Final Act. 7).
FF 6. Munro discloses “preferred embodiments [wherein] the one or more
ionic monomers will be acrylate based monomers selected for their ability to
polymerise rapidly in water” (Munro ¶ 23; see also id. ¶ 24 (“[p]referably
the one or more ionic monomers are 2-acrylamido-2-methlpropane
sulphonic acid or an analogue thereof or one of its salts, e.g. . . . a
polymerisable sulphonate or a salt e.g. . . . a sodium, potassium or lithium
salt, of acrylic acid (3-sulphopropyl)ester or an analogue thereof”); id. ¶¶ 25
and 41; see Final Act. 6–7).
FF 7. Munro discloses that “[c]onventional crosslinking agents are
preferably used to provide the necessary mechanical stability and to control
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the adhesive properties of the hydrogel,” wherein “[t]ypical crosslinkers
include tripropylene glycol diacrylate . . . [and] methylene bis acrylamide”
(Munro ¶ 26; Final Act. 6–7).
FF 8. Examiner finds that Munro fails to disclose a polymer comprising a
second copolymerizable monomer and relies on Yoon to make up for this
deficiency in Munro (Final Act. 8).
FF 9. Yoon “relates to a photosensitive resin composition, a preparing
method, and a dry film resin comprising the same, more specifically for
pattering the barrier ribs of [a] [p]lasma display panel (PDP)” (Yoon ¶ 3; see
Final Act. 7).
FF 10. Yoon discloses that “a plasma display panel (PDP) is a flat display
device using a plasma phenomenon, which is also called a gas-discharge
phenomenon . . . to display an image in the plasma display panel” (Yoon
¶ 5).
FF 11. Examiner finds that Yoon exemplifies the preparation of an alkali-
soluble acrylate resin, which comprises a “methacrylic acid (i.e. monomer
‘ii’ of [Appellants’] invention) and other acrylate monomers, a phosphate
ester-containing polyethylene glycol or propylene glycol methacrylate
monomer . . . (i.e. monomer (i) of [Appellants’] invention), and solvent”
(Final Act. 7; see Yoon ¶ 55).
FF 12. Yoon discloses that “[t]he phosphate ester-containing monomer
improves adhesiveness of polymer and controls the acid value in small usage
amount[s],” wherein “[t]he preferred example is at least one selected from
the group consisting of[, inter alia,] pentaethyleneglycol phosphate
monomethacrylate[ and] pentapropyleneglycol phosphate
monomethacrylate” (Yoon ¶ 28; Final Act. 7).
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FF 13. Examiner finds that Yoon’s Example 5 exemplifies a “network
polymer (i.e., Yoon’s resin 1 and resin 2) are simultaneously polymerized
(to each other) and cross-linked (with the indicated cross-linkers)” (Ans. 3,
citing Yoon ¶ 56).
ANALYSIS
Based on the combination of Munro and Yoon, Examiner concludes
that, at the time Appellants’ invention was made, it would have been prima
facie obvious “to combine the teachings of Munro and Yoon in order to
ensure adhesiveness and performance of the polymer gel, which Munro
discloses as important for the performance of hydrogels as pressure sensitive
adhesives” (Final Act. 8, citing Munro ¶ 30; see FF 1–12).
Appellants recognize that “Yoon discloses that phosphate-ester-
containing monomers can provide adhesiveness to a polymer” (App. Br. 9).
Appellants contend, however, that there is no reason to combine Yoon’s
disclosure with Munro, because “Munro already provides the adhesiveness
property . . . [by] disclosing that the adhesiveness is controlled by the
crosslinking agents disclosed [in Munro]” (id., citing Munro ¶ 26; see FF 7).
“Therefore, [Appellants contend,] substituting the ionic monomers used by
Munro with the ionic monomers used by Yoon would provide no additional
benefit and therefore would not provide any motivation for such
combination” (id.). We are not persuaded.
As Examiner explains, a person of ordinary skill in this art would
have found it prima facie obvious
to substitute one anionic acrylate monomer (i.e., Yoon’s
phosphate ester-containing monomer) for another anionic
acrylate monomer (Munro’s sulfate ester-containing monomer)
because the monomers have similar structures and should have
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similar properties. Therefore, the ordinary artisan would
reasonably have expected that the cross-linked network
polymer resulting from polymerization of the phosphate ester-
containing monomer would have similar properties, or
improved adhesiveness, compared to the sulfate ester-
containing monomer.
(Ans. 3; see FF 6 and 11–12.) We find no error in Examiner’s reasoning.
See In re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious”). Further, Appellants failed to explain why a person of
ordinary skill in this art would not have realized that a cross-linking agent
and a monomer, such as Yoon’s more adhesive monomer, could have been
used in combination to control the adhesiveness of a final product (See
generally Ans. 2–3 (“The person of ordinary skill in the art would have
found it obvious to use Yoon’s ingredients to balance the desired properties
of the composition because Yoon discloses that the phosphate ester-
containing monomer improves adhesiveness of the polymer [0028]”
(alteration original)); see FF 12; see also FF 7).
We are not persuaded by Appellants’ contention that “Munro does not
discuss the sequence of polymerization and cross-linking and Yoon uses a
two-step sequential process of polymerization followed by cross-linking”
(App. Br. 10, citing Yoon ¶¶ 11–13). Notwithstanding Appellants’
contention to the contrary, Examiner finds that Yoon’s Example 5
exemplifies two resins “(i.e., Yoon’s resin 1 and resin 2) [that] are
simultaneously polymerized (to each other) and cross-linked (with the
indicated cross-linkers)” (FF 13). Further, as Examiner explains, the
combination of Munro and Yoon suggests a product comprising the same
ingredients as required by Appellants’ claim 1 and Appellants have “not
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shown that the sequence of the reactions results in a product having different
properties” (Ans. 3). See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)
(“Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden
is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product”).
Appellants contend that “Munro and Yoon are references unrelated to
the presently claimed invention, namely, personal care product
compositions” and “[o]ne skilled in the art would not have any motivation to
combine Munro and Yoon, none of which is directed to personal care
product compositions” (App. Br. 10). We are not persuaded. As Examiner
explains, Examiner did not find, and Appellants do not identify, a disclosure
in Appellants’ Specification that defines the term “personal care products”
(see Ans. 4). Thus, we agree with Examiner’s conclusion that Munro’s
disclosure of products for “cosmetic applications . . . would reasonably
encompass use as a personal care product” within the scope of Appellants’
claim 1 (id.; FF 2). Further, Appellants’ disclosure, Munro, and Yoon all
relate to the use of polymer products with adhesive properties. Thus,
although Yoon may use its polymer product for a different application than
is contemplated by either of Munro or Appellants, Yoon is reasonably
pertinent to the particular problem with which the inventor is involved;
specifically, a polymer product with adhesive properties. See In re Clay,
966 F.2d 656, 658-9 (Fed. Cir. 1992).
Appellants’ claim 1 is not limited to a product that has “improve[d]
sensory feeling through the use of [a] water phase” (see App. Br. 13).
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Therefore, we are not persuaded by Appellants’ contentions that “the
purpose of the present invention is to improve sensory feeling through the
use of water phase” and “Appellants do not want to improve adhesion to the
skin surface” (Reply Br. 3). See Hill-Rom Services, Inc. v. Stryker Corp.,
755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in view of the
specification, of which they are a part, we do not read limitations from the
embodiments in the specification into the claims”).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(“any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal”).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Munro and Yoon is
affirmed. Claims 2–4, 7–13, 20, 21, and 23–25 are not separately argued
and fall with claim 1.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED