11013177 (B.P.A.I. Sep. 16, 2009)

Ex Parte Musch et al

Board of Patent Appeals and InterferencesSep 16, 2009

11013177 (B.P.A.I. Sep. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RUDIGER MUSCH, JAN MAZANEK, HERMANN PERREY, and KNUT PANSKUS ____________ Appeal 2009-002558 Application 11/013,177 Technology Center 1700 ____________ Decided: September 16, 2009 ____________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-002558 Application 11/013,177 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-19. (Appeal Brief filed February 8, 2008, hereinafter “App. Br.,” 2). We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants describe polychloroprene dispersions containing particles of urea derivatives for use as adhesives. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. Polychloroprene dispersions containing particles of urea derivatives having a particle size in the range of 10 to 400 nm. THE REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rasp US 5,401,798 Mar. 28, 1995 The Examiner rejected claims 1-10 under 35 U.S.C. § 102(b) as being anticipated by Rasp. The Examiner found that Rasp discloses aqueous polyurethane/urea dispersions comprising particle sizes ranging from 20 to 1000 nm. (Examiner’s Answer entered May 12, 2008, hereinafter “Ans.,” 3). The Examiner found that Rasp’s aqueous polyurethane/urea dispersions can be considered polychloroprene dispersions because Rasp discloses polyurethane/urea copolymer comprising chlorobutadiene. (Ans. 3-4). Appellants contend that Rasp does not disclose polychloroprene dispersions, but that Rasp discloses an extensive list of “organic additives” Appeal 2009-002558 Application 11/013,177 3 which may include dispersions of chlorobutadiene. (App. Br. 3). Appellants argue that Rasp contains no examples of polychloroprene and urea particles, and that one must select from an extensive list of alternatives. (Id.). Appellants also contend that neither the broad particle size range of 20 to 1000 nm, nor the preferred range of 20 to 500 nm in Rasp discloses the presently claimed range of 10 to 400 nm. (App. Br. 4). ISSUE Have Appellants shown that the Examiner reversibly erred in finding that Rasp anticipates polychloroprene dispersions with particles of urea derivatives having a particle in the range of 10 to 400 nm within the meaning of 35 U.S.C. § 102(b)? FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Rasp discloses polyurethane-ureas as organic additives to gypsum materials “in the form of an aqueous dispersion.” (Col. 3, ll. 45- 57). 2. Rasp discloses that the organic additives include other polymers in addition to the polyurethane-ureas such as “aqueous dispersions of any monomers which are copolymerisable with one another.” (Col. 4, l. 58 – col. 5, l. 4). 3. Rasp discloses chlorobutadiene as a diolefin monomer. (Col. 6, ll. 52-54). Appeal 2009-002558 Application 11/013,177 4 4. Rasp discloses that the average particle diameters of the dispersions are “between 20 and 1000 nm, preferably between 50 and 500 nm.” (Col. 7, l. 67 – col. 8, l. 2). PRINCIPLES OF LAW For a rejection under 35 U.S.C. 102 to be proper, the prior art “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis in original). ANALYSIS We are persuaded by Appellants’ argument that Rasp fails to disclose polychloroprene dispersions containing particles of urea derivatives with the particle sizes recited in the claims. In order to arrive at Appellants’ recited dispersions, one of ordinary skill in the art would have to choose to add a dispersion of “other polymer” to the optional polyurethane-urea dispersions, and also choose chlorobutadiene as a monomer from an extensive list of monomers to form such “other polymer” dispersions, when Rasp is silent as to such a combination. In addition, one of ordinary skill in the art would have to select the portion of Rasp’s disclosed particle diameter range that overlaps Appellants’ recited range of 10 to 400 nm. Thus, the Examiner’s rejection involves not only selecting particular components of polyurethane-urea and chlorobutadiene, but also particle sizes that fall within Appellants’ recited Appeal 2009-002558 Application 11/013,177 5 range from among Rasp’s various disclosures. Accordingly, the Examiner’s rejection involves picking and choosing to the extent that a rejection under 35 U.S.C. § 102 is not proper. Therefore, we cannot sustain the Examiner’s rejection. CONCLUSION Appellants have demonstrated that the Examiner reversibly erred in finding that Rasp discloses polychloroprene dispersions with particles of urea derivatives having a particle in the range of 10 to 400 nm. ORDER We reverse the Examiner’s decision rejecting claims 1-10 under 35 U.S.C. § 102(b) as being anticipated by Rasp. REVERSED kmm BAYER MATERIAL SCIENCE LLC 100 BAYER ROAD PITTSBURGH, PA 15205