Ex Parte Rasmussen et alDownload PDFPatent Trial and Appeal BoardMay 23, 201613258018 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/258,018 09/21/2011 32692 7590 05/25/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Jerald K. Rasmussen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 65032US005 4220 EXAMINER SMITH, DUANE ART UNIT PAPER NUMBER 1776 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JERALD K. RASMUSSEN, CARY A. KIPKE, JAMES I. HEMBRE, and PETER D.WICKERT Appeal2014-007204 Application 13/258,018 Technology Center 1700 Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and CHRISTOPHER C. KENNEDY Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-4. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 Appellants identify that the real party in interest is "3M Company" and its affiliate "3M Innovative Properties Company" (Appeal Brief filed March 7, 2014 ("App. Br.") 2). Appeal2014-007204 Application 13/258,018 We AFFIRM. Claims 1-4 are finally rejected and appealed. Claim 1 is the sole independent claim on appeal and is illustrative of the subject matter on appeal (emphasis added): 1. A composition comprising a hydrophobic monomer having the structure: CH2=CR4C(O)NHC(R1R1)(C(R1R1))nC(O)XR3 wherein n is an integer of 0 or 1; R1 is independently selected from at least one of alkyls, aryls, and alkylaryls, wherein the alkyls, aryls, and alkylaryls have a total of 10 carbon atoms or less; R3 is a hydrophobic group selected from at least one of alkyls, aryls, alkylaryls and ethers, wherein the alkyls, aryls, alkylaryls and ethers have a total number of carbon atoms ranging from 4 to 30; R4 is Hor CH3; and Xis NH; wherein the hydrophobic monomer is derived from an amine or an alcohol (HXR3) that has a hydrophilicity index of 25 or less. (Claims Appendix, App. Br. 10-13.) The Appellants appeal the following rejections: I. Claims 1-4 as anticipated under 35 U.S.C. § 102(b), or in the alternative, as unpatentable under 35 U.S.C. § 103(a) over Lange (U.S. 5,274,167, issued December 28, 1993) (Final Rejection dated September 27, 2013 ("Final Rej.") 2); II. Claims 1-4 as unpatentable under 35 U.S.C. § 103(a) as obvious over Lange in view of Hellmann (U.S. 4,871,824, issued October 3, 1989 (Final Rej. 2-3). 2 Appeal2014-007204 Application 13/258,018 III. Claims 1-4 as unpatentable under 35 U.S.C. §103(a) as obvious over Lange in view of Hellmann and further in view of Bonomo (U.S. 5,094,960, issued March 10, 2012 (Final Rej. 3). IV. Claims 1-4 as also unpatentable under 35 U.S.C. §103(a) as obvious over Kinsinger (Langmuir (2008), 24 (23), 13231-13236). (Final Rej. 3-4). V. Claims 1-4 as also unpatentable under 35 U.S.C. § 103(a) as obvious over Kinsinger in view of Bonomo (Final Rej. 4 ). Appellants' arguments are primarily drawn to independent claim 1. App. Br. 4-8; Reply Brief entered June 13, 2014 ("Reply Br.") 2-8. Accordingly, we focus our discussion on claim 1. ANALYSIS We have reviewed each of Appellants' arguments for patentability. \Ve agree with 1A .. ppellants that Lange does not anticipate present claim 1 within the meaning of§ 102. However, upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable as obvious over prior art of record. We sustain the Examiner's § 103 rejections based upon Lange essentially for the reasons set out by the Examiner in the Answer. We add the following primarily for emphasis. The Examiner found that Lange discloses a compound used for chromatographic separation (which is the same use as in Appellants' invention) having a chemical formula as that recited for the hydrophobic 3 Appeal2014-007204 Application 13/258,018 monomer in present claim 1 except for one substituent in a particular carbon atom that is hydrogen instead of, for example, methyl (Final Rej. 2; Examiner's Answer dated April 18, 2014 ("Ans.") 2-3; Spec. i-fl-2.) The Examiner found that Lange suggests hydrogen and methyl as interchangeable substituents for the carbon atoms of its compound and concluded that Appellant's hydrophobic monomer is therefore obvious over Lange's compound (Ans. 2-3 and 8). Appellants contend that Lange requires hydrogen as the substituent on the particular carbon and does not suggest an alkyl group for the "group in question" (App. Br. 4-6; Reply Br. 2-5). We agree with the Examiner that the hydrophobic monomer in claim 1 is prima facie obvious over Lange's compound because they have substantially similar chemical structures (only differ in one substituent having a hydrogen instead of an alkyl group) and are used for the same purpose (separation in chromatography). See In re Payne, 606 F.2d 303, 313-14 (CCPA 1979) (When the prior at compound (a prior art ring structure having one or three carbon atoms between two sulfur atoms) and the claimed compound (the claimed ring structure having two carbon atoms between two sulfur atoms) are structurally similar and are used for the same purpose (pesticidal), the required motivation to make the claimed compound is present.) We believe that the Examiner has correctly applied the standard of 35 U.S.C. § 103 in finding the structural relationship between the claimed compound and Lange's compound to be so close that the former would be prima facie obvious over the latter. See also In re Wood, 582 F.2d 638, 641, (CCPA 1978) (Because of the close structural similarity between the claimed compounds at issue here and the compounds of Addor I, II, and III, 4 Appeal2014-007204 Application 13/258,018 Ghosh, and Nikles, and because those prior art compounds possess pesticidal activity, we conclude that the required motivation is present here.); In re Gyurik, 596 F.2d 1012, 1018 (CCPA 1979) (When the similarity in chemical structures and functions between the prior art and claimed compounds is sufficiently close, a prima facie case of obviousness is established.); In re Albrecht, 514 F.2d 1385, 1388 (CCPA 1975); In re Murch, 464 F.2d 1051, 1054 (CCPA 1972)). Appellants further contend that if an alkyl group was the substituent instead of hydrogen in Lange's compound, the resultant compound would not be optically active and thus inoperable for its intended use (App. Br. 6; Rep. Br. 5-6). Appellants also contend that Lange does not suggest the specific hydrophobic group substituents for Appellants' hydrophobic monomer recited in the present claims (App. Br. 5-6 and 7). We are not persuaded by these arguments. We agree with the T"""'1 • .i1 ' T 1• 1 '• 11 '• ' • • ' bXammer mac Lange msc10ses opucauy acuve monomers comammg 1wo methyl substituents and that Hellmann teaches similar structures (having two methyl substituents adjacent a nitrogen atom) that are structures suitable for chromatographic support (Ans. 8-10). Moreover Appellants have not provided any evidence demonstrating that alkylating Lange's compounds would result in compounds not suitable for its intended use. As to the alkyl lengths in Lange's hydrophobic radical substituents, we are in agreement with the Examiner that, in view of Bonomo' s teachings, it would have been obvious to one skilled in the art to modify the alkyl chain length of Lange's hydrocarbon radical substituent to arrive at a desired hydrophobicity (App. Br. 10-11). 5 Appeal2014-007204 Application 13/258,018 Consequently, after full consideration of Appellants' arguments (Appeal Br. 4-8; Reply Br. 2-8), we are unpersuaded of error in the Examiner's determination of obviousness. We do not reach Rejections IV and V of claims 1-4 under 35 U.S.C. § 103(a) as obvious over Kinsinger. Affirmance of the obviousness based rejections discussed previously renders it unnecessary to reach the remaining obviousness rejections, as all of the pending claims have been addressed and found unpatentable. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). In summary, we reverse the § 102(b) rejection of claims 1-4 over Lange; we affirm the§ 103(a) rejections of claims 1-4 based upon Lange for the reasons given above and presented by the Examiner; and we do not reach the§ 103(a) rejections based on Kinsinger. DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 6 Copy with citationCopy as parenthetical citation