Ex Parte Schorm et al

Patent Trial and Appeal Board

Mar 19, 2013

12279444 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/279,444 08/14/2008 INV001Andrea Schorm WAS0966PUSA 1255
22045 7590 03/20/2013
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
NGUYEN, VU ANH
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
03/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WACKER CHEMIE AG
Inventors Andrea Schorm, Hans-Peter Weitzel,
Stefan Killat and Hermann Lutz
____________________

Appeal 2012-001788
Application 12/279,444
Technology Center 1700
____________________

Before FRED E. McKELVEY, CHARLES F. WARREN and MARK NAGUMO,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001788
Application 12/279,444

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Statement of the case
Wacker Chemie AG (“applicant”), the real party in interest (Brief, page 1), 1
seeks review under 35 U.S.C. § 134(a) of a final rejection dated 1 November 2010. 2
The application was filed in the USPTO on 14 August 2008. 3
The application on appeal (1) was filed on 28 February 2007 as International 4
Application PCT/EP07/51209 which entered the national stage as to the United 5
States. 35 U.S.C. § 371. 6
The application on appeal claims priority of German patent application 7
10 2006 007 282.0, filed 16 February 2006. 8
The application has been published as U.S. Patent Application Publication 9
2009/0030168 A1. 10
In support of an anticipation rejection, the Examiner relies on the following 11
evidence. 12
Pakusch et al.
“Pakusch”
U.S. Patent, 5,874,524 23 Feb. 1999

Pakusch is prior art under 35 U.S.C. § 102(b). 13
We have jurisdiction under 35 U.S.C. § 134(a). 14
Claims on appeal 15
Claims 11-12, 14-17, and 19-20 are on appeal. Brief, page 2; Answer, 16
page 3 17

Appeal 2012-001788
Application 12/279,444

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Claim 11, which we reproduce from page 1 of the Claim Appendix of the 1
Brief, reads [matter in brackets and indentation added (see 37 CFR § 1.75(i)); 2
principal limitations in issue in italics]:1 3
A process for the preparation of cationically stabilized and 4
water-redispersible polymer powder compositions, comprising 5
[1] polymerizing one or more ethylenically unsaturated 6
monomers by free-radical polymerization in an aqueous medium in 7
the presence of a protective colloid and/or emulsifier selected from 8
the group consisting of non-ionic protective colloids, non-ionic 9
emulsifier, and mixtures thereof, to form an aqueous polymer 10
dispersion, and 11
[2] then drying the aqueous polymer dispersion thereby 12
obtained after addition of a cationic protective colloid selected from 13
the group consisting of homo- or copolymers of one or more cationic 14
monomers from the group consisting of 15
[2.1] diallyldimethylammonium chloride (DADMAC), 16
[2.2] diallyldiethylammonium chloride (DADEAC), 17
[2.3] (3-methacryloxy)propyl-trimethylammonium chloride 18
(MPTAC), 19
[2.4] (3-methacryloxy)ethyltrimethylammonium chloride 20
(METAC), 21

1 Claim 19 as reproduced in the Claims Appendix depends from Claim 18 which
is listed as cancelled. Claim 20 as reproduced in the Claims Appendix depends
indirectly from cancelled Claim 18.

Appeal 2012-001788
Application 12/279,444

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[2.5] (3-methacrylamido)propyltrimethylammonium chloride 1
(MAPTAC), 2
[2.6] 2-dimethylaminoethyl methacrylate (DMAEMA) and 3
[2.7] 3-dimethylaminopropylmethacrylamide (DMAPMA) 4
as a drying aid, 5
in an amount of from 0.1 to 20% by weight based on the weight 6
of polymeric constituents of the aqueous polymer dispersion. 7
The rejection 8
The claims on appeal stand rejected under § 102 as anticipated by Pakusch. 9
Answer, page 4. 10
Analysis 11
The appeal turns on a claim construction, an issue of law. 12
The Examiner found that Pakusch describes the use of a combination 13
of (1) an ionic emulsifier and (2) a non-ionic emulsifier. See, e.g., Answer 14
page 7:1-2. The Examiner recognized that Claim 1 calls for a colloid or an 15
emulsifier “selected from the group consisting of non-ionic protective colloids, 16
non-ionic emulsifiers, and mixtures thereof.” However, because Claim 1 calls for 17
an overall process “comprising” various steps, the Examiner held that Claim 1 does 18
not exclude the presence of a step including use of an ionic emulsifier. Answer, 19
page 7. 20
Applicant on the other hand maintains that its “claims limit the protective 21
colloid and/or emulsifier . . . to non-ionic species.” Brief, page 12 (2nd and 3rd 22
line from the bottom). 23

Appeal 2012-001788
Application 12/279,444

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While it is true that steps other than those explicitly recited in Claim 1 are 1
not excluded by the transitional term “comprising”, it is also true that the 2
protective colloid and/or emulsifier is limited to non-ionic protective colloids and 3
non-ionic emulsifiers and mixtures of the two. Why? Because the protective 4
colloids and/or emulsifiers are defined by a Markush group using the language 5
“selected from the group consisting of . . .”. The Markush group closes the group 6
to those items listed. The Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 7
1372 (Fed. Cir. 2005); Abbott Labs. v Baxter Pharm. Prods., Inc., 334 F.3d 1274, 8
1280-81 (Fed. Cir. 2003). The fact that the overall process is defined by the 9
transitional term “comprising” does not broaden the type of emulsifiers which are 10
recited in the Markush Group. See (1) Mannesmann Demag Corp. v. Engineered 11
Metal Products Co., Inc., 793 F.2d 1279 (Fed. Cir. 1986) (cited by applicant at 12
Brief, page 11) and (2) Berenter v. Quigg, 737 F. Supp. 5 (D. D.C. 1988) (a § 145 13
civil action in which the Commissioner was a party, applying Mannesmann). The 14
rationale of the Examiner in this case is based on the very argument advanced by 15
the Commissioner, and rejected by the district court, in Berenter. Like the district 16
court in Berenter, we agree with applicant that its reading of Claim 1 is consistent 17
with Mennesmann. Claim 1 excludes the use of emulsifiers other than non-ionic 18
emulsifiers. 19
Since the Pakusch process includes anionic emulsifiers in its Feed 1 20
[col. 15:10 (sodium containing ethoxylated tallow fatty alcohol)], Pakusch cannot 21
constitute an anticipation of Claim 1 (which is limited to non-ionic emulsifiers). 22
Decision 23
Upon consideration of the appeal, and for the reasons given herein, it is 24

Appeal 2012-001788
Application 12/279,444

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ORDERED that the decision of the Examiner rejecting the claims on 1
appeal under § 102 as anticipated by Pakusch is reversed. 2
FURTHER ORDERED that no time period for taking any 3
subsequent action in connection with this appeal may be extended under 37 C.F.R. 4
§ 1.136(a)(1)(iv). 5
REVERSED 6
cam 7