Ex Parte Musa et al

Patent Trial and Appeal Board

Aug 18, 2017

13129007 (P.T.A.B. Aug. 18, 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.
13/129,007 07/29/2011 Osama M. Musa 3190USPCT 5164
67749 7590
Ashland LLC
WILLIAM J. DAVIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
EXAMINER
MILLER, DAVID L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
08/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ntietcheu @ ashland.com
wdavis@ashland.com
schen@ashland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMA M. MUSA, CUIYUE LEI and
KOLAZI S. NARAYANAN
Appeal 2017-001793
Application 13/129,0071
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1-3, 7, 8, 10-12, 16, 17, 20-28, and
30.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is ISP Investments Inc.
(Appeal Brief 2).
Appeal 2017-001793
Application 13/129,007
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A copolymer comprising (A) N-vinyl formamide, and
(B) N-vinyl-c-caprolactam, and (C) ethylene glycol as a
reaction solvent which is incorporated into the polymer as a
solvent adduct during polymerization, wherein the measurable
cloud point temperature of a 1 % solution of the copolymer in
water is from 40°C to the boiling point of the 1 % solution of
the copolymer in water at ambient atmospheric pressure.
The Examiner maintains the following rejections:
(a) claims 1, 11, 12, 16, 17, 20-27, and 30 under 35 U.S.C. § 102(b)
as anticipated by Bakeev et al. (US 6,242,518 Bl, issued June 5, 2001)
(“Bakeev”);
(b) claims 3, 10, and 28 under 35 U.S.C. § 103(a) as unpatentable
over Bakeev; and
(c) claims 2, 7, and 8 as unpatentable over Bakeev in view of Sloan
Jr. et al. (US 5,639,925, issued June 17, 1997) (“Sloan”).
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims 1-3, 7, 8, 10-12, 16, 17, 20-28, and 30 are unpatentable over the
applied prior art. We sustain the Examiner’s rejections essentially for the
reasons set out by the Examiner in the Answer.
We add the following primarily for emphasis.
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Application 13/129,007
The §102 rejection based on Bakeev
Claims 1, 11, 12, 16, 17, 20-27, and 30 are rejected as anticipated by
Bakeev. Appellants argue claims 1, 11, 12, 16, 17, 20, 21, 26, 27, and 30 as
a group and claims 22-25 as a group (Appeal Br. 3-8). We select claims 1
and 22 as representative claims for these groups.
Claims 1. 11. 12. 16. 17. 20.21.26. 27. and 30
Appellants’ principal argument in the Appeal Brief regarding claim 1
is that Bakeev discloses the use of water and a glycol ether having an alkoxy
group having at least three carbon atoms as a polymerization solvent, which
is a different compound than ethylene glycol (Appeal Br. 3-4; Reply Br. 2-
5). Appellants contend Bakeev discloses ethylene glycol as a carrier solvent
but it is not present during polymerization and, thus, is not incorporated as
an adduct during polymerization, as recited in claim 1 {id. at 4-5). In view
of this, Appellants argue Bakeev does not disclose a copolymer comprising,
among other things, “ethylene glycol as a reaction solvent which is
incorporated into the polymer as a solvent adduct during polymerization,” as
recited in claim 1 {id. at 3-7).
Appellants’ arguments are unpersuasive. The Examiner interprets “a
solvent adduct” as “the attachment of the solvent (ethylene glycol) to the
polymer by means of bonding such as covalent, ionic or physical bonding,
such as charge interactions between the solvent and the polymer” (Ans. 2).
Appellants dispute this interpretation in the Reply Brief.2 However, the
Examiner’s interpretation was presented at page 2 of the Final Office Action
mailed May 18, 2015. Appellants have not shown good cause why this
argument could not have been presented in the Appeal Brief. Therefore, we
2 Reply Br. 3—4.
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Application 13/129,007
will not consider this argument that was newly raised in the Reply Brief. 37
C.F.R. § 41.41(b)(2).
Moreover, Appellants’ Specification does not exclude charge
interactions as the mechanism for incorporation of the “solvent adducts” into
the copolymer. For instance, paragraph 36 of Appellants’ Specification
states (emphases added):
The polymerization between A-vinyl formamide and vinyl amide
moiety/acrylamide moiety is performed in a reaction solvent
having either a hydroxyl group or a thiol group, or blends
comprising such solvents. These polymerization reaction
solvents are employed because they are capable of being
incorporated into the polymer as a solvent adduct during
polymerization. Without being bound to specific theory, it is
believed that such reaction solvents promote a greater extension
of polymer molecules in solution, improve the solubility of the
polymer in aqueous solution, promote solubilization, and/or
enhance polymer compatibility at high injection temperature
(i.e., not phase-separate). For example, when the solvent
comprises a lactam, such as A-hydroxymethyl-2-caprolactam or
A-hydroxyethyl-2-pyrrolidone, then the solvent adduct may
assist in enhancing the polymer's properties, such as
solubilization, or more specifically, gas hydrate inhibition.
This passage contains speculation or theory. Therefore, it fails to
establish, factually, the precise mechanism by which the polymerization
solvent is “incorporated into the polymer as a solvent adduct during
polymerization” (i.e., by what mode of bonding or interaction) or what
structure would result.
Paragraph 37 of the Specification states “[ajgain, not to be bounded
by theory, it is also believed that the solvent adduct may impart surfactant­
like properties to cause an extended polymer conformation in solution,
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Application 13/129,007
which presumably exposes more of the polymer molecule to interact with
the hydrate crystal lattice.” This disclosure comports with the above
description in paragraph 36 that the solvent adducts “promote a greater
extension of polymer molecules in solution, improve the solubility of the
polymer in aqueous solution, promote solubilization, and/or enhance
polymer compatibility at high injection temperature.” Thus, paragraphs 36
and 37 of the Specification indicate that the solvent adducts can function like
surfactants, which can interact with other molecules via charge interactions.3
In view of this guidance as to the nature of the solvent adducts in
Appellants’ Specification,4 the Examiner’s claim interpretation is
reasonable.
With regard to the disclosure of Bakeev, the Examiner finds it
discloses the copolymer of claim 1, citing the carrier solvent of Bakeev as
the reaction solvent recited in claim 1 (Ans. 3). Specifically, the Examiner
finds the carrier solvent of Bakeev, which is ethylene glycol, forms an
adduct with the copolymer because there would be a charge interaction
between the solvent and the polymer {id.). In other words, the Examiner
3 See Wiley Online Library entries for Surfactant Science and Technology,
Third Edition, chapter 2, pages 31 and 37, at
http://onlinelibrary.wiley.com/doi/10.1002/047174607X.ch2/pdf
and for chapter 10, pages 333-335, at
http://onlinelibrary.wiley.com/doi/10.1002/047174607X.chl0/pdf (last
visited August 17, 2017).
4 Appellants cite paragraph 66 of their Specification, asserting it
demonstrates that as much as 15% of the copolymer is ethylene glycol
(Reply Br. 4). However, paragraph 66 is silent with regard to a reaction
solvent and solvent adducts. Paragraph 66 merely discloses the residual
monomer content of an exemplary copolymer without stating whether the
copolymer includes a solvent, such as ethylene glycol, and whether the
solvent is bonded to or incorporated into its structure in some manner.
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Application 13/129,007
finds the ethylene glycol carrier solvent of Bakeev would be incorporated
into the polymer as a solvent adduct under the Examiner’s broadest
reasonable interpretation of “ethylene glycol as a reaction solvent which is
incorporated into the polymer as a solvent adduct during polymerization.”
Moreover, the Examiner finds claim 1 recites a product-by-process
limitation and to the extent Bakeev does not disclose the same process
recited in claim 1 (e.g., the ethylene glycol of Bakeev is used as a carrier
solvent, not a polymerization or reaction solvent), the copolymer of Bakeev,
after exposure to the carrier solvent, would reasonably appear to have the
same structure as the copolymer of claim 1 {id.).
A preponderance of evidence supports the Examiner’s findings.
Bakeev discloses a copolymer formed from vinyl caprolactam and N-vinyl
formamide and the use of ethylene glycol as a carrier solvent for the
copolymer (Bakeev 2:14-31, 2:60-64). Appellants have not demonstrated
(e.g., by providing experimental tests results) that the copolymer of Bakeev
and its ethylene glycol carrier solvent, under the Examiner’s interpretation,
would have a different structure than the copolymer of claim 1. It has been
well established that, when a product recited in product-by-process format
reasonably appears to be the same as or obvious from a product of the prior
art, the burden is on applicant to show that the prior art product is in fact
different from the claimed product, even though the products may be made
by different processes. In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985).
Claims 11, 12, 16, 17, 20, 21, 26, 27, and 30 depend from claim 1 and
have not been argued separately from claim 1 (Appeal Br. 7-8).
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For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 102 rejection of claims 1, 11, 12, 16,
17, 20, 21, 26, 27, and 30 over Bakeev.
Claims 22-25
Claim 22 depends from claim 9, which depends from claim 1, and
further recites “wherein the measureable cloud point temperature is from
66°C to the boiling point of the 1% solution of the copolymer in water at
ambient atmospheric pressure.” Claims 23 and 24 depend from claim 22
and claim 25 depends from claim 1. These claims also recite a cloud point
temperature for the copolymer of claim 1.
The Examiner finds that although Bakeev is silent with regard to
cloud point temperature, the copolymer of Bakeev would have the cloud
point temperatures of claims 22-25 because it would reasonably appear the
copolymer has the same chemical structure (Ans. 5).
Appellants assert the copolymer of Bakeev would not possess the
claimed cloud point temperatures recited in claim 22-25 because the
copolymer of Bakeev would have a different structure (Appeal Br. 8).
However, as discussed above, Appellants have not demonstrated that the
copolymer of Bakeev would not have the same structure as the copolymer of
claim 1 under the Examiner’s interpretation of the language of claim 1.
Therefore, Appellants’ arguments do not direct us to a reversible error in the
Examiner’s rejection.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the § 102 rejection of claims 22-25 over Bakeev.
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The §103 rejection of claims 3, 10, and 28 over Bakeev
Claims 3, 10, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bakeev.
The Examiner finds that although Bakeev does not disclose the
amounts of N-vinyl formamide and n-vinylcaprolactam present in its
copolymer, these monomers are respectively hydrophilic and hydrophobic so
it would have been obvious to determine the optimal content of these
monomers via routine experimentation to provide a copolymer with tailored
hydrophobic properties (Ans. 8, 15-16).
Appellants assert the claimed copolymer co-optimizes gas hydrate
inhibition and resistance to phase separation at higher temperatures, which
are two properties having an inverse relationship with one another, and
Bakeev does not disclose or suggest such an optimization (Appeal Br. 9-10;
Reply Br. 5-6).
Appellants’ arguments are unpersuasive. First, claims 3, 10, and 28
do not recite gas hydrate inhibition or a resistance to phase separation at
higher temperatures but instead recite broad ranges for each of the
monomers and polymer molecular weights.5 Indeed, claim 3 reads on
virtually any amount for each monomer. Second, the Examiner provides a
rationale for modifying the monomer unit content of Bakeev’s copolymer
5 Claim 3 recites the two monomer unit contents are about 1-99 wt% of the
copolymer. Claim 10 recites an average molecular weight of about 500 amu
to about 5,000,000 amu for the copolymer. Claim 28 recites that the N-vinyl
formamide monomer units are no more than 50 wt% of the copolymer.
These ranges encompass a wide range of copolymers having different blends
of the monomer units and copolymers varying in average molecular weight.
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Application 13/129,007
(i.e., via the discovery of the optimal or workable ranges of monomer unit
content through routine experimentation to provide a desirable degree of
hydrophobicity) and finds this would result in the copolymers of claims 3,
10, and 28.
Moreover, Appellants’ argument that their claimed invention
addresses a different problem than what was contemplated by the prior art
does not identify a reversible error in the Examiner’s rejection. “As long as
some motivation or suggestion to combine the references is provided by the
prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor” {In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992)). In addition, the discovery of a property
for a composition disclosed in the prior art does not by itself defeat a prima
facie case of obviousness {In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)
(en banc)).
For these reasons and those set forth in the Examiner’s Answer, we
sustain the § 103 rejection of claims 3,10, and 28 over Bakeev.
The §103 rejection of claims 2, 7, 8 over Bakeev and Sloan
Claims 2, 7, and 8 are rejected as unpatentable over Bakeev in view of
Sloan.
Appellants merely reiterate the arguments set forth for the § 102 and
§103 rejections discussed above and contend Sloan does not remedy the
deficiencies of Bakeev. Appeal Br. 11-12. For the reasons set forth above,
there are no deficiencies in the § 102 and § 103 rejections that require curing
by Sloan.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the § 103 rejection of claims 2, 7, and 8 over Bakeev and Sloan.
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DECISION
The Examiner’s rejections of claims 1-3, 7, 8, 10-12, 16, 17, 20-28,
and 30 are affirmed.
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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