Ex Parte Mohanty et al

Board of Patent Appeals and Interferences

Dec 11, 2009

11346952 (B.P.A.I. Dec. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DILLIP K. MOHANTY and AJIT SHARMA
____________________

Appeal 2009-013403
Application 11/346,952
U.S. Patent Publication 2006/0155103
Technology Center 1700
____________________

Decided: December 11, 2009
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and RICHARD E. SCHAFER and RICHARD TORCZON, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

Appeal 2009-013403
Application 11/346,952

2
DECISION ON APPEAL
A. Statement of the case 1
The Board of Regents, Central Michigan University [hereinafter 2
Regents], the real party in interest, seeks review under 35 U.S.C. § 134(a) of 3
a final rejection (mailed 2 July 2008). 4
The application was filed on 3 February 2006. 5
Claim 2 is on appeal. 6
The following prior art has been cited: 7

Kim

15 Makromol. Chem.,
Suppl., 187-218
(Synthesis and
degradation of aromatic
polyamides containing
nitro groups)

1989
8
Kim is prior art under 35 U.S.C. § 102(b). 9
We have jurisdiction under 35 U.S.C. § 134(a). 10
B. Findings of fact 11
The following findings of fact are supported by a preponderance of 12
the evidence. 13
Additional findings as necessary may appear in the Discussion portion 14
of the opinion. 15
The invention 16
The invention is readily understood by reference to Claim 2, the only 17
claim on appeal. 18

Appeal 2009-013403
Application 11/346,952

3
Claim 2, which we reproduce from the Claim Appendix of the Appeal 1
Brief, reads [bracketed matter and some indentation added]: 2
A polymer corresponding to the formula: 3
R1( R2 N
R3
R4
R5 R6
N
R3
)n
4
5
[1] wherein R1 is selected from the group consisting of cyclic 6
and acyclic organic groups, 7
[2] wherein R2 is independently a cyclic or acyclic organic 8
group, 9
[3] wherein R3 is selected from the group consisting of NO2, 10
N2O2, O and H, 11
[4] wherein R4 is selected from the group consisting of a 12
sulfonate group, H, NO2 and NH2, 13
[5] wherein R5 is selected from the group consisting of NO2 14
and NH2, 15
[6] wherein R6 is NO2 or NH2 and 16
[7] where n is greater than about twenty. 17
The terms cyclic organic group and acyclic organic group are not 18
defined in the specification. 19

Appeal 2009-013403
Application 11/346,952

4
Kim 1
Kim describes the following polymer, identified as polymer 2c 2
(Kim, page 192): 3
4
where: 5
R1 is NO2 and 6
R2 is NO2. 7
The polymer is described as having an inherent viscosity of 0.19 8
d/gm. Kim, page 198, Table 2 under polymer 2c. 9
Examiner's rejection 10
The Examiner rejected Claim 2 as being anticipated under 35 U.S.C. 11
§ 102(b) by Kim. 12
The Examiner alternatively rejected Claim 2 under 35 U.S.C. § 103(a) 13
over Kim. 14
The Examiner found that Regents R1 group (which can be a cyclic 15
organic group) is described as a phenyl-carbonyl group by Kim. Final 16
Rejection, page 3. The phenyl-carbonyl group would be the 17

Appeal 2009-013403
Application 11/346,952

5
1
group to the right of the 2
3
group in the formula reproduced as "2" above. 4
The Examiner further found that Regents R2 group (which can be an 5
acyclic [meaning non-cyclic] organic group is described by Kim as a 6
carbonyl group. Final Rejection, page 3. The carbonyl group is the 7
8
group to the right of the 9
10
in formula "2" as reproduced above. 11

Appeal 2009-013403
Application 11/346,952

6
As noted above, Kim describes an inherent viscosity for polymer 2c of 1
0.19 d/gm. Inherent viscosity is used as an approximate indication of 2
molecular weight. Stevens, Polymer Chemistry, 58, 2d ed. Oxford 3
University Press, 1990, [ISBN 0-19-505759-7]. On appeal, Regents does 4
not maintain that the value of "n" in the formula in Claim 2 distinguishes the 5
Kim polymer from Regent's Claim 2 polymer. 6
C. Discussion 7
1. The polyamine versus polyamide argument 8
Regents maintains that its polymers are polyamines whereas Kim's 9
polymers are polyamides. Appeal Brief, pages 10-11. 10
According to Regents, "[t]he polyamines of the instant invention 11
cannot be converted to polyamides by Examiner's fiat." Appeal Brief, 12
page 11. 13
Claim 2 is not limited to polyamines. 14
It is true that the specification refers to "polymeric amines" in 15
describing polymers with a structure different from the polymer of Claim 2 16
(specification, page 6:9-18). 17
In referring to the polymers of Claim 2 on appeal, Regents refers only 18
to "polymer" without characterizing the polymer as a polyamine. 19
Specification, page 4:22-25. 20
We decline to read into Claim 2 a limitation that the polymer of 21
Claim 2 is a polyamine, particularly since the specification does not 22
characterize the polymer of Claim 2 as a polyamine, but characterizes other 23
polymer emobodiments of the invention as polymeric amines. 24

Appeal 2009-013403
Application 11/346,952

7
2. The traditional chemist argument 1
According to Regents, "[t]raditionally, chemists do not ascribe 2
organic compounds containing heteroatoms [, e.g., an oxygen in the ketone 3
group ―CO―] as 'acyclic'; and normally this [, i.e., "acyclic",] denotes 4
aliphatic chains." Appeal Brief, page 12. 5
The Examiner noted that Regent's specification does not define 6
"cyclic" or "acyclic". Examiner's Answer, page 5. 7
A close review of the specification will demonstrate that Regents is 8
hoisted by its own petard. Consider, for example, the polymer described in 9
Example 11. The polymer is represented by the following formula. 10
11
The group 12
13
to the left of the 14
15
group corresponds to Regent's R2 and the group 16

Appeal 2009-013403
Application 11/346,952

8
1
to the left of the 2
3
group corresponds to Regent's R1 group. 4
Immediately apparent is that the R2 group 5
6
7
contains the heteroatoms "S" and "O". 8
In the context of this case, "acyclic" and "cyclic" are not limited to 9
groups having only carbon and hydrogen atoms. 10
3. The made by different processes argument 11
Regents maintains that Claim 2 differs from Kim because different 12
processes are said to be used to make the Claim 2 polymer vis-à-vis the Kim 13
polymer. 14
Regents does not claim a process. 15
Moreover, Regents fails to explain why the evidence in this case 16
would show that use of the Regents process results in a polymer which 17
differs from a polymer made by the Kim process. 18

Appeal 2009-013403
Application 11/346,952

9
Other arguments 1
We have considered Regents' remaining arguments and find none that 2
warrant reversal of the Examiner’s § 103 rejection. Cf. Hartman v. 3
Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 4
D. Decision 5
Regents has not sustained its burden on appeal of showing that the 6
Examiner erred in rejecting the claims on appeal as being unpatentable under 7
35 U.S.C. § 102(b) or 35 U.S.C. § 103(b) over the prior art. 8
Upon consideration of the appeal, and for the reasons given herein, 9
it is 10
ORDERED that the decision of the Examiner rejecting Claim 2 11
under 35 U.S.C. § 102(b) as being anticipated by Kim is affirmed. 12
FURTHER ORDERED that the decision of the Examiner 13
rejecting Claim 2 under 35 U.S.C. § 103(a) over Kim is affirmed inasmuch 14
as anticipation is the epitome of obviousness. In re Pearson, 494 F.2d 1399, 15
1402 (CCPA 1974). 16
FURTHER ORDERED that no time period for taking any 17
subsequent action in connection with this appeal may be extended under 18
37 C.F.R. § 1.136(a)(1)(iv) (2008). 19

AFFIRMED

rvs

Appeal 2009-013403
Application 11/346,952

10
cc (via First Class mail)

MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640