Ex Parte Tysak et al

Board of Patent Appeals and Interferences

Mar 10, 2005

09886183 (B.P.A.I. Mar. 10, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 18

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte THEODORE TYSAK, MARK STEPHEN FRAZZA
and LEO JOSEPH PROCOPIO

____________

Appeal No. 2004-1872
Application No. 09/886,183

____________

ON BRIEF
____________

Before PAK, DELMENDO, and PAWLIKOWSKI, Administrative Patent
Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134 from the
examiner’s final rejection of claims 7-10 and 16-19.
Claims 7 and 9 are representative of the subject matter on
appeal, and are set forth below:

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7. An emulsion polymer comprising as polymerized
units from:
a) 75 to 99 weight% at least one nonionic monomer
based on the weight of said emulsion polymer;
b) 0.5 to 5 weight % at least one ionic monomer
based on the weight of said emulsion polymer;
c) 0 to 10 weight % at least one functional
monomer based on the weight of said emulsion polymer;
and
d) 0.5 to 10 weight % at least one photoinitiator
monomer based on the weight of said emulsion polymer;
wherein the sum of said nonionic monomer, said
ionic monomer, said functional monomer, and said
photoinitiator monomer equals 100%;
wherein said emulsion polymer has a weight
average molecular weight in the range of 30,000 to
300,000; and
wherein said emulsion polymer has a glass
transition temperature in the range of –10°C to 60°C
and an average particle diameter in the range of 60 nm
to 500 nm.

9. A coating formulation comprising
a) an emulsion polymer comprising as polymerized
units from:
i) 75 to 99.5 weight % at least one
nonionic monomer based on the weight of said
emulsion polymer;
ii) 0.5 to 5 weight % at least one ionic
monomer based on the weight of said emulsion
polymer;
iii) 0 to 10 weight % at least one
functional monomer based on the weight of said
emulsion polymer; and
iv) 0 to 10 weight % at least one
photoinitiator monomer based on the weight of
said emulsion polymer;
wherein the sum of said nonionic monomer,
said ionic monomer, said functional monomer,
and said photoinitiator monomer equals 100%;
wherein said emulsion polymer has a
weight average molecular weight in the range
of 30,000 to 300,000;
wherein said emulsion polymer has a glass
transition temperature in the range of –10°C
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to 60°C and an average particle diameter in
the range of 60 nm to 500 nm, and
b) 0.5 weight % to 10 weight % photoinitiator
molecule, based on the weight of said emulsion
polymer.

Claims 7-10 and 16-19 stand rejected by the examiner under
35 U.S.C. § 102(b) as being anticipated by Rehmer.
The examiner relies upon the following reference as
evidence of unpatentability:
Rehmer et al. (Rehmer) 5,162,415 Nov. 10, 1992

I. Preliminary Matters

Pursuant to our Order under 37 CFR § 1.196(d), mailed
August 27, 2004 for Appeal No. 2004-1872, appellants filed a
reply to this Order on November 29, 2004.
In the brief, filed on June 2, 2003, appellants’ position
was that Rehmer does not disclose any specific examples of a
polymer having a weight average of molecular weight in the range
of 30,000 to 300,000. Appellants stated that therefore, the
specific examples disclosed in Rehmer do not anticipate the
present invention, and as such, appellants state that Rehmer
does not anticipate their claims as asserted by the examiner.
Thereafter, we ordered appellants to measure the weight
average molecular weight of the examples of Rehmer. See page 1
of our Order.

II. Appellants’ Reply to Our Order
In response, appellants filed a reply to our Order,
submitting a declaration by Mark S. Frazza, under 37 CFR
§ 1.132. The declaration includes data for measurements of the
weight average molecular weight of the polymers of Examples 1
and 2 of Rehmer. The weight average molecular weight of the
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emulsion polymer prepared according to Example 1 of Rehmer was
found to be 17,746,493, and the weight average molecular weight
of the emulsion polymer prepared according to Example 2 of
Rehmer was found to be 416,902.
We note that Frazza’s experiments are not identical to
Rehmer’s Examples 1 and 2. For example, in Frazza’s example 1,
the aqueous emulsion was spiked with initiator instead of being
added continuously. Also, in Frazza’s Example 2, the relative
amounts for acrylamide, emulsifier I, and emulsifier II, are not
the same as Rehmer’s Example 2, and feature the use of ferrous
sulfate, which was not used in Rehmer’s Example 2. We presume
that these differences have no appreciable effect on molecular
weight.

III. The 35 U.S.C. § 102(b)
We have carefully reviewed the examiner’s position for the
anticipation rejection, set forth on pages 3-5 of the answer.
In particular, the examiner states that Rehmer teaches a polymer
having a weight average molecular weight range of from 50,000 to
2,000,000 and refers to column 9, lines 44-48 of Rehmer.
Answer, page 4. Appellants claim a weight average molecular
weight range of from 30,000 to 300,000.
We refer to the case of In re Arkley, 455 F.2d 586, 590,
172 USPQ 524, 526 (CCPA 1972). In this case, the court
indicated that for a proper anticipation rejection, the
reference must clearly and unequivocally disclose the claimed
invention without any need for picking, choosing, and combining
various disclosures not directly related to each other by the
teachings of the reference.
In the instant case, there is a need for picking and
choosing particular features disclosed in Rehmer, in order to
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arrive at appellants’ claimed polymer composition, including its
weight average molecular weight range of from 30,000 to 300,000.
Hence, we reverse the anticipation rejection.

IV. New Ground of Rejection
Claims 7-10 and 16-19 are rejected under 35 U.S.C. § 103 as
being obvious over Rehmer.
We refer to the examiner’s findings regarding the teachings
found in Rehmer, made on pages 3-5 of the answer, and
incorporate them as our own. The examiner finds that each
element of the claims is disclosed in Rehmer, while recognizing
that Rehmer discloses a weight average molecular weight of from
50,000 to 2,000,000, while appellants’ claim a range of from
30,000 to 300,000. Appellants do not dispute these findings
regarding the teachings found in Rehmer as made by the examiner.
Appellants dispute the examiner’s conclusion of anticipation
with regard to these findings. See pages 5-7 of the brief.
As pointed out by the examiner, on page 4 of the answer,
Rehmer discloses a weight average molecular weight of from
50,000 to 2,000,000. See col. 9, lines 44-48 of Rehmer. This
disclosed range overlaps appellants’ claimed range of from
30,000 to 300,000. In addition, Rehmer teaches that molecular
weight regulators may be useful. See column 9, lines 53-59 of
Rehmer.
In cases involving overlapping ranges, we note that it has
been consistently held that even a slight overlap in range
establishes a prima facie case of obviousness. E.g., In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37
(concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1-5%” carbon
monoxide) abutted the claimed range (“more that 5% to about 25%
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carbon monoxide)); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ
549, 553 (concluding that a claimed invention was rendered prima
facie obvious by a prior art reference whose disclosed range
(0.020-0.035% carbon) overlapped the claimed range (0.030-0.070%
carbon)); see also In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d
1362, 1365 (acknowledging that a claimed invention was rendered
prima facie obvious by prior art reference whose disclosed range
(50-100 Angstroms) overlapped the claimed range (100-600
Angstroms)).
We determine that appellants’ claimed weight average
molecular weight overlaps the range disclosed by Rehmer and
therefore is rendered obvious by Rehmer.
In view of the above, we reject claims 7-10 and 16-19 under
35 U.S.C. § 103 as being obvious over Rehmer.
This decision contains a new ground of rejection pursuant
to 37 CFR § 41.50(b)(effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner
. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record . . . .

REVERSED; § 41.50(b)

CHUNG K. PAK )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
ROMULO H. DELMENDO ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
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Application No. 09/886,183

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JAMES G. VOUROS
ROHM AND HAAS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399