Ex Parte Stumbe et al

Patent Trial and Appeal Board

Oct 16, 2014

12297654 (P.T.A.B. Oct. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEAN-FRANCOIS STUMBE, BERND BRUCHMANN,
HOLGER TURK, and RAINER HAAG
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Appeal 2013-003978
Application 12/297,654
Technology Center 1700
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Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections of claims 1–4 and 7–20 under 35 U.S.C. § 102(b) as anticipated
by, or alternatively under 35 U.S.C. § 103(a) as unpatentable over, Haggman
et al. (WO 2004/037928 A1, published May 6, 2004) and of claims 1, 2, 4–
6, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Figuly (US
Appeal 2013-003978
Application 12/297,654

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5,136,014, patented Aug. 4, 1992). We have jurisdiction under 35 U.S.C.
§ 6.1

We AFFIRM.

Appellants claim a process for solubilizing a hydrophobic active
substance in an aqueous medium which comprises combining with the
hydrophobic active substance an assistant comprising a hyperbranched
polyester (claim 1). Appellants also claim a hyperbranched polymer (claim
9) and a process for the preparation thereof (claim 16).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
Claim 1: A process for solubilizing at least one hydrophobic active
substance in an aqueous medium, the process comprising combining with
the at least one hydrophobic active substance, an assistant comprising
(1) a hyperbranched polyester (a) obtained
(a1) by a process comprising polycondensing at least one dicarboxylic
acid or one or more derivatives thereof with one or more at least
trifunctional alcohols, or
(a2) by a process comprising polycondensing at least one tricarboxylic
acid or higher polycarboxylic acid or one or more derivatives thereof with
one or more diols, or
(a3) by a process comprising polycondensing at least one dicarboxylic
acid or at least one derivative thereof with a mixture of at least one diol and
at least one at least trifunctional alcohol, or
(a4) by a process comprising polycondensing at least one diol with a
mixture of at least one dicarboxylic acid or at least one derivative thereof

1 An oral hearing for this appeal was held on October 9, 2014.
Appeal 2013-003978
Application 12/297,654

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and at least one tricarboxylic or tetracarboxylic acid or at least one
derivative thereof, or
(2) at least one hyperbranched polymer (c) obtained by a process
comprising
(b) reacting the hyperbranched polyester (a) with at least one
isocyanate or chlorocarbonic ester wherein the isocyanate carries at least one
polyalkylene oxide unit attached via a carbonate group, urea group, or
urethane group, and wherein the chlorocarbonic ester carries at least one
polyalkylene oxide unit attached via a carbonate group, urea group, or
urethane group.

Appellants do not present arguments specifically directed to the
individual claims under rejection (see App. Br. 4–10). Therefore, we select
claim 1 to represent the rejected claims, and the remaining claims will stand
or fall with representative claim 1.

We sustain the above rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer with the following comments being
added for emphasis.

The pivotal issue in this appeal is whether the Examiner has erred in
determining that each of Haggman and Figuly teaches, or at least would
have suggested, a hyperbranched polyester which is indistinguishable from
the hyperbranched polyester of claim 1 (Final Action 4–17).2

2 Appellants do not contest the Examiner's determination that the
hyperbranched polymer recited in section (2) of claim 1 is optional (see, e.g.,
Ans. 30, cf. Reply Br. 1–3). Therefore, we need not address Appellants'
arguments regarding this hyperbranched polymer.
Appeal 2013-003978
Application 12/297,654

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Appellants argue that "the specification establishes that the claimed
hyperbranched polyesters are distinguishable in structure from the dendritic
polymers of Haggman" (App. Br. 5 quoting Spec. 12:34–37). Appellants
present the same argument with respect to Figuly and further argue that "said
AB2-strategy polyesters [of Figuly] are also distinguishable from those
claimed in the Specification in same paragraph pg. 12, lines 37-42" (id. at 9).

Appellants' arguments fail to reveal error in the Examiner's above
determinations. "During examination, 'claims . . . are to be given their
broadest reasonable interpretation consistent with the specification, and . . .
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.'" In re Am. Acad. of Sci. Tech.
Ctr, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). The reference by Appellants to the Specification
disclosure at page 12, lines 34–42, falls short of confirming that the
Examiner's interpretation of claim 1 (i.e., as encompassing the
hyperbranched polyesters of Haggman and Figuly) is not reasonable and
consistent with their Specification.

For example, Appellants argue that their page 12 disclosure
establishes the claimed hyperbranched polyesters are molecularly and
structurally nonuniform and therefore distinguishable from the hyperbranced
polyesters of Haggman and Figuly (App. Br. 5–6, 9–10). In response, the
Examiner explicitly finds that these prior art polyesters also are molecularly
and structurally nonuniform (Ans. 18, 33–34). Appellants do not challenge
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Application 12/297,654

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this finding with any reasonable specificity (see Reply Br. 1–3). Based on
the record of this appeal, the claim 1 polyesters are indistinguishable from
those of Haggman and Figuly.

The decision of the Examiner is affirmed.

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

cdc