Ex Parte Schade et al

Board of Patent Appeals and Interferences

Sep 30, 2002

08578706 (B.P.A.I. Sep. 30, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHRISTIAN SCHADE,
HORST WESTENFELDER,
KARIN SPERLING-VIETMEIER,
AXEL SANNER,
and
HANS-ULRICH WEKEL
_____________
Appeal No. 2000-1156
Application No. 08/578,706
______________
ON BRIEF
_______________
Before PAK, WALTZ, and PAWLIKOWSKI, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 7 through 11 which are
all of the claims pending in the above-identified application.
The subject matter on appeal is directed to a process for
stabilizing an oil-in-water emulsion. According to the
declaration of record (Paper No. 17), to carry out the process,
Appeal No. 2000-1156
Application No. 08/578,706
2
it is critical to employ a cross-linked copolymer obtained by
precipitation polymerization of specific monomer mixtures,
including specific cross-linkers, in the presence of a saturated
nonionic surface-active compound. Further details of the
appealed subject matter are provided in representative claim 7
which reads as follows:
7. A process for stabilizing an oil-in-water emulsion
which process comprises adding to the emulsion from 0.01 to
5% by weight of the emulsion of a crosslinked copolymer
obtained by precipitation polymerization of a monomer
mixture comprising:
(a) monoethylenically unsaturated C3-C8-carboxylic acids,
their anhydrides or mixtures of the carboxylic acids
and anhydrides,
(b) compounds with at least 2 non-conjugated ethylenic
double bonds in the molecule as crosslinkers and,
optionally,
(c) other monoethylenically unsaturated monomers which are
copolymerizable with monomers (a) and (b), in the
presence of free-radical polymerization initiators and
from 0.1 to 20% by weight, based on the total weight of
the monomers of a saturated, nonionic surface-active
compound.
The prior art references relied upon by the examiner are:
Sehm 4,419,502 Dec. 6, 1983
Denzinger et al. (Denzinger) 4,525,581 Jun. 25, 1985
Arraudeau et al. (Arraudeau) 4,871,536 Oct. 3, 1989
Appeal No. 2000-1156
Application No. 08/578,706
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Claims 7 through 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings of Arraudeau,
Denzinger and Sehm.
We have carefully reviewed the specification, claims and
applied prior art, including all of the arguments and evidence
advanced by both the examiner and the appellants in support of
their respective positions. This review leads us to conclude
that the examiner’s Section 103 rejection is not well founded.
Accordingly, we reverse the examiner’s Section 103 rejection for
the reasons set forth by the appellants in their Brief and below.
Under 35 U.S.C. § 103, “the examiner bears the initial
burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In other words, the examiner must provide a sufficient
factual basis to support his Section 103 rejection. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000
(1968).
Here, consistent with the appellants’ assertion, the
examiner has not supplied a sufficient factual basis to establish
that one of ordinary skill in the art would have been led to
Appeal No. 2000-1156
Application No. 08/578,706
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employ the claimed cross-linked copolymer for stabilizing an oil-
in-water emulsion. Specifically, the examiner has not identified
any suggestion or motivation in Arraudeau, which would have led
one of ordinary skill in the art to utilize a cross-linked
copolymer produced by precipitation polymerization of
monoethylenically unsaturated C3-C6 carboxylic acids, their
anhydrides or mixtures thereof and cross-linking compounds having
at least two non-conjugated ethylenic double bonds in forming a
stabilized oil-in-water emulsion. See, e.g., In re Baird,
16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). Nor has
the examiner’s reliance on Denzinger and Sehm remedied the above
deficiencies. Denzinger, for example, teaches using its cross-
linked copolymer obtained from precipitation polymerization as a
thickener for neutral and alkaline aqueous systems, rather than
for oil-in-water emulsion systems. Similarly, Sehm does not
indicate that its cross-linked copolymer obtained from
precipitation polymerization is useful for an oil-in-water
emulsion.
Appeal No. 2000-1156
Application No. 08/578,706
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Under these circumstances, we are constrained to agree with
the appellants that the examiner has not carried his burden of
establishing a prima facie case of obviousness. Accordingly, the
decision of the examiner is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CKP:hh
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