Ex Parte Ridley et al

Patent Trial and Appeal Board

Jun 30, 2016

11547214 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111547,214 0912912006
324 7590
BASF Corporation
Patent Department
500 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591
07/05/2016
FIRST NAMED INVENTOR
Eleanor Bernice Ridley
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.
C000023042 3557
EXAMINER
KASSA, JESSICA M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
andrea.dececchis@basf.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELEANOR BERNICE RIDLEY, MICHAEL GREEN, and
DAVID NORMINGTON
Appeal2014-007894
Application 11/547,214
Technology Center 1600
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. 1 The Examiner has rejected
the claims for obviousness and obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is: BASF SE, Carl-Bosch-Strasse 38, 6700
Ludwigshafen, Rheinland-Pfalz D-67056 Germany
Appeal2014-007894
Application 11/547,214
STATEMENT OF CASE
The present invention relates to liquid dispersion polymer
compositions for use in personal care and pharmaceutical formulations.
Spec. 1.
The following claim is representative.
13. A process for the preparation of a liquid dispersion
microparticulate polymer composition comprising
a) from 35% to 65% by weight of an acrylic acid
homopolymer with a neutralization level of from about 30 % to
about 45 %,
b) from 20% to 50% by weight of a non-aqueous carrier,
and
c) from 5% to 25% by weight of an oil-in-water
surfactant or a surfactant mixture, each based on the total
weight of the composition
wherein the 30 to 45% neutralized acrylic acid
homopolymer is prepared by reverse phase emulsion
polymerization of acrylic acid monomers in a hydrophobic
liquid phase,
\~1herein base is added to the monomer phase and
polymerization is initiated by addition of a source of free
radicals to the hydrophobic liquid phase and the hydrophobic
liquid phase comprises at least in part a non-aqueous
hydrophobic carrier fluid and conversion of the hydrophobic
carrier into an oil in water emulsion by stirring the acrylic acid
polymer a), the non-aqueous carrier b) and the surfactant or
surfactant mixture c) into an aqueous system.
App. Br. 13 (Claims Appendix).
Cited References
Ito et al. 5,548,047
Green et al. 6,365,656B1
(hereinafter "Green '656")
2
Aug. 20, 1996
Apr. 2, 2002
Appeal2014-007894
Application 11/547,214
Green et al. 6,833,406 Bl Dec. 21, 2004
(hereinafter "Green '406")
Noveon, Inc., Neutralizing Carbopol® and Pemulen® Polymers in Aqueous
and Hydroalcoholic Systems TDS-237 THE SPECIALTY CHEMICALS
INNOVATOR 1-3 (2002) ("Noveon").
Lubrizol Advanced Materials, Inc., Molecular Weight of Carbo pol® and
Pemulen® Polymers TDS-222, 1-3 (2007) ("Lubrizol").
Grounds of Rejection
3-13.
1. Claims 13, 14, 16, 18, 21and25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Green '656 in view ofNoveon
and Ito as evidenced by Lubrizol.
2. Claims 13, 14, 16, 18, 21and25 are rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 10-31 of Green '406 in view of N oveon
and Ito.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F .2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board "determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
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Appeal2014-007894
Application 11/547,214
claims their broadest reasonable construction 'in light of the specification as
it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Rejection 1 - Obviousness
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner's argument set forth in the Final Rejection and Answer.
We select claims 13 and 25 as representative of this rejection as
Appellants have not separately argued other claims.
Examiner's Position
The Examiner relies on Green '656 for each of the claimed elements
except the Examiner admits that Green '656 does not specify the
neutralization of the polymer. The Examiner also admits that Green '656
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Appeal2014-007894
Application 11/547,214
does not teach the addition of base to the monomer phase, as claimed. The
Examiner relies on Noveon to make up for the deficiency of Green, in that
Noveon teaches that that Carbopol polymers must be neutralized in order to
achieve maximum viscosity (Effect of pH on Viscosity). Ans. 4. Ito is
relied on by the Examiner to teach
Anc -'\
a process for producing a highly water absorptive
polymer. A water-soluble ethylenically unsaturated monomer
comprising as the main component acrylic acid and/or an alkali
metal or ammonium salt thereof, and optionally containing a
crosslinking agent to a water-in-oil type of reverse-phase
polymerization in the presence of water, a water-soluble radical
polymerization initiator, a dispersant and a hydrophobic
hydrocarbon solvent to form a slurry of water-containing
particles of a highly water absorptive polymer in the solvent,
adding a polymerizable monomer to the slurry, and
polymerizing the polymerizable monomer to obtain
agglomerates of the particles of the highly water absorptive
polymer (abstract).
.L -'... .. LLIJe ..../ •
The Examiner concludes that
It would have been obvious to one of ordinary skill in the
art at the time of the invention to neutralize the polymer used in
preparing the composition disclosed by Green et al. and thus
produce the instantly claimed invention because Noveon
teaches that Carbopol polymers must be neutralized to achieve
maximum viscosity. The pKa of Carbopol and Pemulen
polymers (i.e. polyacrylic acid polymers) have a pKa of 6 ±0.5
as evidence by Lubrizol TDS-222. Using the Henderson-
([A~]))
Hasselbalch equation (pH= pKa +log [NA] and a pKa for
polyacrylic acid of 6, the examiner calculates that 45%
neutralization corresponds to a pH of 5.9 and 30%
neutralization corresponds to a pH of 5.5715. Clearly these pHs
fall within the pH range of 5.0-9.0 taught by Noveon as suitable
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Appeal2014-007894
Application 11/547,214
for achieving high viscosities. Moreover, Noveon clearly
teaches that the pH should be determined by the desired
attributes for a given application (Effect of pH on Viscosity).
Therefore, optimizing the pH (and, consequently, optimizing
both the percent neutralization and the viscosity of the
composition) is prima facie obvious and within the purview of
one of ordinary skill in the art. A person of ordinary skill in the
art would have been motivated to optimize the pH and
neutralize the polymer so as to optimize the thickening of the
polymer for a given application.
It would have been obvious to a person of ordinary skill
in the art at the time the present invention was made to add a
base to the monomer phase and thus produce the instantly
claimed invention since Ito et al. teach a preferable acrylic
monomer is a partially neutralized salt of acrylic acid. One
would have been motivated to partially neutralize the acrylic
acid monomers since Ito et al. teach when an acrylic monomer
with a degree of neutralization of less than 20 mol % is used,
the finally obtainable polymer has poor water absorption
properties and the gelled polymer swollen with water has a low
strength. Moreover, Noveon already teaches the neutralization
of acrylic acid polymers to achieve optimum viscosity. A
person of ordinary skill in the art would have had a reasonable
expectation of success since Green et al. already teaches that a
mixture of acrylic acid monomers and salts thereof may be used
(column 5, lines 18- 25). Partial neutralization of acrylic acid
monomers would result in a mixture of acrylic acid monomers
and salts thereof. Moreover, the same neutralized polymer is
obtained regardless of whether the carboxyl groups are
neutralized before or after polymerization. Whether the
monomers are neutralized prior to polymerization or the
polymer is neutralized after polymerization is, therefore, simply
a difference in the order of the steps in the process.
Ans. 7-8.
Appellants' Position
Appellants contend that
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Appeal2014-007894
Application 11/547,214
Ito et al. is directed to a process for producing a highly water
absorptive polymer in the form of agglomerated particles
having a large particle size. The object of Ito et al is to provide
a process for producing agglomerated particles which are very
large in size and excellent in cohesion. This contrasts with the
present process which is directed to a liquid dispersion
microparticulate polymers. Note the comparative example 1
wherein the particles are at least 100 microns. The examples 1
through 8 and the comparative example of Ito et al. produce
particles which cannot even remotely be considered
microparticulates (all> 200 micron).
The question the art skilled would ask in reviewing Ito et
al. is: "Would the process of Ito et al. actually be capable of
producing a microparticulate since all conditions including the
addition of base to the monomer phase produce particles which
are hundreds of times larger than the microparticulates sought
by Green." Why would one skilled in the art assume that one
could adapt the conditions used in Ito et al. to the process of
Green and not adversely impact the microparticulate sized
particles required in Green?
Br. 8. Appellants further argue that,
Br. 9.
that the present claims are directed to neutralized acrylic
acid polymer of neutralization levels ranging from 30 to 45%
(or pH levels between 5.9 and 5.57 by the Henderson-
Hasselbach equation). This claimed neutralization level is far
lower than the teachings ofNoveon. Accordingly, the presently
claimed neutralization levels are not obvious based on the
teachings ofNoveon.
We are not persuaded by Appellants' arguments. Green '656 is two
of the present inventors' own work. In response to Appellants' arguments
regarding the acrylic acid neutralization disclosed in Noveon, the Examiner
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Appeal2014-007894
Application 11/547,214
indicated that "the same general trend for the effect of pH/neutralization is
seen in both example 2 of the instant specification and the acrylate polymers
ofNoveon." Ans. 10. The Examiner further argues that, "[r]egardless, the
teachings ofNoveon still make clear that acrylic acid polymers have high
viscosities when neutralized within a pH range of 5-9." Ans. 10. We agree.
Green '656 teaches that, "[a]crylic acid is the most preferred anionic
monomer [for use in liquid dispersion polymer compositions]. Preferably the
carboxylic acid groups are at least 50%, advantageously 65-85% in the form
of an alkali metal salt or ammonium salt, especially the sodium salt." Col. 5,
11. 21-25. Thus, Green '656 itself teaches neutralization of carboxylic acid
groups of acrylic acid monomer in the form of a sodium salt. See also, Ans.
1 1.
Appellants argue that the claimed neutralization level is far lower than
that ofNoveon. Br. 9. Again we are not convinced by Appellants'
argument. We agree with the Examiner that, "the same general trend for the
effect of pH/neutralization is seen in both example 2 of the instant
specification and the polymers ofNoveon." Appellants provided no
conclusive evidence indicating a difference or lack of overlap in
neutralization in view of N oveon.
We further agree with the Examiner that
Since Green clearly teach that acrylic acid and alkali
metal salts thereof may be used, one of ordinary skill in the art
would reasonably conclude that the simple addition of a base to
the monomer phase would not adversely affect the particle size
of the resulting microparticulate polymers.
Ans. 12. Green '656 teaches a process of preparing microparticles having
the claimed size, using similar reagents. Col. 1, 11. 33---60. While Appellants
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Application 11/547,214
argue that Ito discloses the preparation of larger particles, Appellants have
provided no rebuttal evidence showing that the combination of a base
(suggested by Green '656 and disclosed in Ito) would unduly influence the
size of the liquid dispersion, microparticulate, polymer composition of
Green '656.
We affirm the obviousness rejection 1 for the reasons of record.
Rejection 2 - Obviousness-type Double Patenting
Appellants argue that their arguments submitted for the obviousness
rejection are also applicable to the obviousness-type double patenting
rejection. Br. 11. Appellants also argue that, "[ w ]hile there is suggestion in
Green '406 and Ito to crosslink, the teachings ofNoveon do not mention
crosslinking and it's potential effect on the thickening properties of
CARBOPOLS and pH dependency." Br. 11.
With respect to Appellants' arguments concerning claim 25, we adopt
the Examiner's argument on page 12 of the Answer as our own.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
and obviousness-type double patenting rejection, which are affirmed for the
reasons of record. All pending, rejected, claims fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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