Ex Parte Mosseveld et al

Patent Trial and Appeal Board

Oct 18, 2012

10551109 (P.T.A.B. Oct. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/551,109 06/29/2006 Henk Mosseveld WAS0726PUSA 4337
22045 7590 10/18/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
10/18/2012 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 HENK MOSSEVELD,
KONRAD ALFONS WIERER, and KLAUS KOHLHAMMER
____________

Appeal 2011-004717
Application 10/551,109
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-004717
Application 10/551,109

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 20-39.2 We have jurisdiction under 35 U.S.C. § 6(b).
“The invention relates to the use of polymers for starch modification, the
polymers being used in the form of their polymer powders or as an aqueous
polymer dispersion.” (Specification 1:3-6.) More specifically, it is a goal of the
invention to provide a thermoplastically modified starch composition which is
usable for moldings having a high strength when in the wet state (id. at 2:11-15),
e.g., rottable and nonrottable moldings such as flowerpots and packaging materials
(id. at 10:7-8). Claim 20 is representative of the invention and is reproduced below
from the Claims Appendix to the Supplemental Appeal Brief, filed Sep. 23, 2010:
20. A starch molding composition comprising optionally
modified starch combined with redispersible powder of at least one
polymer stabilized with protective colloid(s) and/or emulsifier(s), said
polymer comprising one or more comonomer units selected from the
group consisting of vinyl esters of straight-chain and branched
alkylcarboxylic acids having 1 to 18 carbon atoms, acrylates and
methacrylates of branched and straight-chain alcohols having 1 to 15
carbon atoms, dienes, vinylaromatics and vinyl halides, and further
comprising from 0.1to 20.0% by weight, based on the total weight of
the polymer, of at least one functional comonomer selected from the
group consisting of carboxyl-, hydroxyl-, epoxy- and NH- functional
ethylenically unsaturated comonomers, hydroxyalkyl methacrylates
wherein the alkyl moiety of the hydroxyalkyl group is a C1- to C8-
alkyl radical, and optionally, olefin comonomer(s), wherein the
redispersible powder of the at least one polymer is of an amount of
from 5 to 60% by weight based on the total weight of the starch.

1 Final Office Action mailed Apr. 30, 2010 (“Final”)
2 Appeal Brief filed Sep. 10, 2010 (“App. Br.”)
Appeal 2011-004717
Application 10/551,109

3
Appellants request review of the following grounds of rejection under
35 U.S.C. §103(a) (App. Br. 4):
1. claims 20-27, 29-31, 34-37, and 39 as unpatentable over Ritter
(US 5,439,953, issued Aug. 8. 1995) in view of Wendel (US 5,358,998, issued Oct.
25, 1994) (Ans. 3-5);
2. claim 32 as unpatentable over Ritter in view of Wendel, as applied to
claim 31, further in view of Miyamoto (JP 2002-020601, published Jan. 23, 2002)
(Ans. 5);
3. claim 28 as unpatentable over Ritter in view of Wendel, as applied to
claim 27, further in view of Famili (US 5,362,778, issued Nov. 8, 1994) (Ans. 6);
and
4. claims 33 and 38 as unpatentable over Ritter in view of Wendel, as
applied to claim 31, further in view of Hashemzadeh (US 2002/0135086 A1,
published Sep. 26, 2002) (Ans. 6-7).
We sustain the above rejections based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Answer. (Ans.3
3-10.)
As found by the Examiner, both Ritter and Wendel are directed to
compositions comprising starch and aqueous polymeric dispersions (id. at 10)
which can be used to produce molded articles (id. at 4). The Examiner relies on
Ritter for a teaching of the invention as claimed in the independent claims with the
exception of the“functional monomer, amount of protective colloid and polymer in
the form of redispersible powder.” (Id.) The Examiner relies on “Wendel . . . [for]
its teachings that polymer dispersions comprising functionalized monomers

3 Examiner’s Answer mailed Nov. 18, 2010
Appeal 2011-004717
Application 10/551,109

4
provide increased internal strength, [and] are redispersible (i.e. can be dispersed in
water at a later stage).” (Id. at 10.)
The Examiner determined that,
in light of the teachings in Wendel [], it would have been obvious to
one skilled in art at the time invention was made to use small amounts
of from 0.5 to 10% by weight of N-methylol methacrylamide in the
preparation of the polymer, of Ritter [], stabilized by protective
colloid, in amounts of up to 5% by weight, for realizing increased
internal strength and to convert the thus obtained aqueous polymer
dispersion to redispersible polymer powder in a manner known to one
skilled in art for ease of handling, storage and transportation.
(Id. at 4-5.)
Appellants’ sole contention with respect to the rejection of independent
claim4 20 is that the Examiner reversibly erred in finding one of ordinary skill in
the art would have been motivated to modify Ritter to use a redispersible powder
based on the teachings of Wendel. (See generally, App. Br. 7-11; Reply Br.5 2-3.)
Appellants argue Ritter’s process requires water and, therefore, one of
ordinary skill in the art would not have replaced Ritter’s aqueous polymeric
dispersion with a redispersible polymer powder. (See App. Br. 7-9.) Appellants’
argument is based on an interpretation of claim 20 as precluding the presence of
water in the composition. (See Reply Br. 2 (arguing “the cited art fails to teach the
claimed composition containing redispersible powder that is without water”).) As
pointed out by the Examiner, the claims, as drafted, do not require a dry

4 We acknowledge Appellants have presented separate arguments in support of
patentability of independent claim 39 (App. Br. 11-12) and dependent claim 28 (id.
at 12-13). Those arguments, as well as any arguments not explicitly discussed
herein, have been fully addressed by the Examiner and are found unpersuasive for
the reasons expressed in the Answer.
5 Reply Brief filed Jan. 13, 2011.
Appeal 2011-004717
Application 10/551,109

5
composition. (Ans. 8.)6 Thus, the claim limitations are still met by a composition
containing a starch, a redispersible polymer powder, and water. Appellants have
not explained why the Examiner erred in finding one of ordinary skill in the art
would have recognized that Ritter’s aqueous polymeric dispersion could be
replaced with a redispersible polymer powder, given the fact that water is already
present in Ritter’s composition (Ans. 8 (citing Ritter example 1 which “comprises
starch containing 20% of water, and an aqueous dispersion of poly(vinyl
acetate)”)), or would have been aware that additional water could be added to the
composition. (Cf. App. Br. 8 (“Ritter's process does not involve a composition
which contains both starch and redispersible polymer powder (inherently dry) as
recited in the claims. In this regard, whether these [sic] dry redispersible polymer
powder of Wendel may be mixed with water is irrelevant.”).)
Appellants’ efforts to establish lack of motivation to combine based on
differences in the Ritter and Wendel compositions (e.g., differences in the polymer
to starch weight ratios) are also unavailing as they fail to address the facts and
reasons relied on by the Examiner in support of the obviousness determination. In
particular, Appellants have not shown error in the Examiner’s finding that one of
ordinary skill in the art would have had the requisite knowledge and skills to
formulate Ritter’s polymer as a redispersible powder as evidenced by Wendel,
rather than an aqueous dispersion, and would have been motivated to do so to gain
the advantage of ease of handling, storage and transportation (see Ans. 4-5 supra).

6 In this regard, we further note the Specification fails to indicate any unexpected
results or criticality in the use of a redispersible polymer powder versus an aqueous
dispersion thereof. (See Spec. 8:34-39 (“The polymers, in the form of their
aqueous dispersions or their polymer powders, in particular their powders
redispersible in water, are used in an amount of from 5 to 60% by weight,
preferably from 5 to 25% by weight, in each case polymer weight based on the
proportion of starch.”); original claim 1.)
Appeal 2011-004717
Application 10/551,109

6
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a
design need or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp. If this leads to
anticipated success, it is likely the product not of innovation but of ordinary skill
and common sense. In that instance the fact that a combination was obvious to try
might show that it was obvious under § 103.”).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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