Ex parte MOHR et al.

Board of Patent Appeals and Interferences

Feb 29, 2000

08089436 (B.P.A.I. Feb. 29, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JUERGEN MOHR, KNUT OPPENLAENDER,
WALTER DENZINGER, HEINRICH HARTMANN, RICHARD BAUR,
CHARALAMPOS GOUSETIS and ALEXANDER KUD
________________
Appeal No. 1995-4997
Application No. 08/089,436
________________
HEARD: February 7, 2000
________________
Before KIMLIN, GARRIS and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 5,
6, 8-10 and 12-20, all the claims remaining in the present
application. Claim 5 is reproduced below:
Appeal No. 1995-4997
Application No. 08/089,436
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5. In a water-carrying system subject to the formation
of scale, the improvement comprising the water in said water-
carrying system comprises from 0.1-100 ppm of a phosphono-
methylated polyvinylamine which contains as characteristic
structural elements, units of the formula
wherein R is hydrogen, C -C -alkyl or1 1 6
and X is hydrogen an alkali metal, ammonium or one equivalent
of an alkaline earth metal;
wherein said polymer has a K value of from 10 to 100.
The examiner relies upon the following references as
evidence of obviousness:
Hwa 856,193 Nov. 17, 1970
(Canadian patent)
Justice et al. (Justice) 4,830,837 May 16, 1989
Appellants' claimed invention is directed to a method of
inhibiting scale deposition in a water-carrying system by
Appeal No. 1995-4997
Application No. 08/089,436
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employing a water-carrying system comprising a phosphono-
methylated polyvinylamine having recurring units of the
recited formula (I). According to appellants, they "have
discovered that such a water-soluble phosphonomethylated amine
exhibits unexpectedly high Ca ion compatibility, and+2
accordingly is more effective, than the corresponding
monomeric chelating agent, at inhibiting scale formation in a
water-carrying system in need thereof" (page 2 of principal
brief, emphasis in original). Appealed claims 5,
6, 8-10 and 12-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hwa in combination with Justice.
Upon careful consideration of the opposing arguments
presented on appeal, it is our judgment that the prior art
applied by the examiner fails to establish a prima facie case
of obviousness for the claimed subject matter. Accordingly,
we will not sustain the examiner's rejection.
While we certainly appreciate and recognize the thorough
effort expended by the examiner in articulating his position
in the Examiner's Answer and Supplemental Examiner's Answer,
we simply find no teaching or suggestion in the applied
references, taken singularly or in combination, of utilizing
Appeal No. 1995-4997
Application No. 08/089,436
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the presently claimed phosphonomethylated polyvinyl amines in
a method of inhibiting scale deposition. It is not of little
significance that appellants' specification, at page 2,
describes the claimed polyvinylamines as new compounds, and
neither of the applied references discloses the claimed
compounds. Even assuming, for the sake of argument, that it
would have been obvious for one of ordinary skill in the art
to substitute the phosphonic acid group-containing ion
exchange resins of Justice for the amino polymethyl-phosphonic
acids of Hwa, this would not result in the claimed invention.
Justice expressly teaches that "[t]he ion exchange resin
matrix or backbone represented by R may include, for example,
copolymers of styrene with divinylbenzene, copolymers of a
methacrylate or acrylate with divinylbenzene, phenol-formalin
resins, etc." (column 3, lines 55-59). Justice does not teach
the claimed polyvinyl backbone, and the examiner has not
established on this record that a polyvinyl backbone would
have been obvious to one of ordinary skill in the art in view
of the polymer backbones disclosed by Justice. While the
examiner concludes that "[i]t would have been obvious to bond
an aminomethylphosphonic acid functional group(s) to a polymer
Appeal No. 1995-4997
Application No. 08/089,436
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backbone because Justice teaches the embodiment" (page 6 of
Examiner's Answer), there is no teaching in either Hwa or
Justice that the relevant functional groups can be bonded to
any polymer backbone, in general, let alone the specific one
claimed by appellants. In addition, the examiner has not
adequately refuted appellants' argument that Hwa's disclosure
of a synergistic combination of amino polymethyl-phosphonic
acids and specific carboxylic acids would have militated
against substituting the polymers of the claimed invention for
the compounds disclosed by Hwa.
Since it is our judgment that the examiner has not
established a prima facie case of obviousness for the claimed
subject matter, we find it unnecessary to address the
probative value of appellants' specification and declaration
evidence of nonobviousness.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
Appeal No. 1995-4997
Application No. 08/089,436
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)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 1995-4997
Application No. 08/089,436
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