Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardNov 8, 201712403901 (P.T.A.B. Nov. 8, 2017) Copy Citation United States Patent and Trademark Office 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. 12/403,901 03/13/2009 Shiping WANG 6347-US 1588 79439 7590 Cardinal Health, Inc. 300 South Riverside Plaza Suite 2010 Chicago, IL 60606 EXAMINER CAI, WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 11/13/2017 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): Kim.Luna@cardinalhealth.com Marlene. Poulos @ cardinalhealth. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIPING WANG, SEONG FONG CHEN, IDA BERGER, YUN-SIUNG TONY YEH, and WEI CHEONG WONG1 Appeal 2016-002990 Application 12/403,901 Technology Center 1700 Before ROMULO H. DELMENDO, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL2 1 The real party in interest is identified as Allegiance Corporation (Appeal Brief, filed August 4, 2015 (“App. Br.”), 2). 2 In this decision, we also refer to the Final Office Action mailed January 7, 2015 (“Office Action,” cited as “Final Act.”), the Examiner’s Answer mailed November 25, 2015 (“Ans.”), and the Reply Brief filed January 25, 2016 (“Reply Br.”). Appeal 2016-002990 Application 12/403,901 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 4—6, 9, 11—16, 18—23, and 43. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a water-based resin composition and articles made therefrom.3 Spec. 11. More specifically, the claims are directed to an “aqueous elastomer dispersion” with “a dispersed phase” which “includes an elastomer such as polyisoprene and a minor amount of at least one additive” and “an aqueous phase” which “includes water and other optional components dissolved in it.” Id. 17. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An aqueous elastomer dispersion, comprising: a dispersed phase comprising an elastomer selected from the group consisting of synthetic polyisoprene and synthetic polychloroprene, and an accelerator, wherein said dispersed phase is formed by dissolving the elastomer and accelerator in a solvent system; and an aqueous phase, wherein the aqueous elastomer dispersion has a total solids content of from about 45% to about 70%, after said solvent is stripped from the dispersion. App. Br. 17 (Claims Appendix) (emphasis added.) 3 Application 12/403,901 filed March 13, 2009 (Specification cited as “Spec.”). 2 Appeal 2016-002990 Application 12/403,901 REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tanaka US 5,910,567 June 8, 1999 REJECTIONS Claims 1, 4—6, 9, 11—16, 18—23, and 43 are rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Tanaka. Final Act. 2. Alternatively, claims 1, 4—6, 9, 11—16, 18—23, and 43 are rejected under pre-AIA 35 U.S.C. 102(b) as anticipated by Tanaka. Final Act. 2. OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Examiner rejects claim l4 for obviousness finding, for example, that Tanaka describes “[a] method for producing a formed product deproteinized natural rubber latex.” Tanaka Abstract, 3:9—10; see Final Act. 3 (citing Tanaka Abstract). The Examiner reasons that any difference between the prior art deproteinized natural rubber and the recited synthetic polyisoprene is a matter of routine modification within the ordinary skill absent a showing of unexpected results. Final Act. 3. Appellants argue, on the other hand, that “[a] person of ordinary skill in the art understands that modifying the natural rubber by deproteinizing it 4 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), dependent claims 4—6, 9, 11—16, 18—23, and 43 stand or fall with claim 1, as Appellants argue for the patentability of these solely based on their dependency from claim 1. (App. Br. 16.) 3 Appeal 2016-002990 Application 12/403,901 does not make it a synthetic compound,” and as a result “the only modification possible” to Tanaka is “to replace or substitute the natural rubber of Tanaka with a synthetic elastomer compound.” App. Br. 14. Based on Tanaka’s disclosure that “there has not been found any substitute for natural rubber exhibiting such excellent properties” such as “increased toughness . . . and satisfactory workability and fittingness,” Appellants argue that Tanaka therefore teaches away from replacing or substituting natural rubber with a synthetic compound. App. Br. 14 (citing Tanaka 2:15—16); Tanaka 2:13—16. “[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.'1'’ In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (emphasis added). In this case, Appellants do not dispute that Tanka teaches a product which is a deprotenized natural rubber. App. Br. 2. As further explained below, “the rejection is based on the rationale that the deproteinized natural rubber is the same as or obvious to the synthetic polyisoprene.” Ans. 2. Appellants have not explained why Tanaka’s discussion regarding toughness, workability, and fittingness of a material teaches away from claim 1 which recites only “synthetic polyisoprene and synthetic polychloroprene.” See id. (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Appellants’ argument regarding possible allergic reactions caused by natural rubber (Reply 3) is equally inapposite here because Appellants have not explained why Tanaka teaches away from claim 1 when the claim does not recite any allergic reactions or the avoidance thereof. Appellants therefore 4 Appeal 2016-002990 Application 12/403,901 have not identified reversible error in the Examiner’s findings based on the teaching away argument. Appellants also argue that the Examiner erred in failing to provide a motivation to support the obviousness rejection. Final Act. 15. Appellants argue that while the “Examiner seems to suggest that using a synthetic polyisoprene is the same as using a natural rubber,” the Examiner erred by not explaining why a skilled artisan would use a synthetic polyisoprene instead of a natural rubber. App. Br. 15. Appellants supports this argument by enumerating various structural/compositional differences between synthetic polyisoprene and polyisoprene “in its naturally occurring state.” Id.; Reply 2—3. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[Wjhenthe question is whether a patent claiming the combination of elements of prior art is obvious,” the answer depends on “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 417. In this case, the Examiner finds that the recited “synthetic polyisoprene” is taught or suggested by “a rubber product derived from natural rubber latex” (i.e., deproteinized natural rubber) in Tanaka. Final Act. 3 (citing Tanaka 3:9—21, 11:43—67); Tanaka 1:8. Appellants attempt to distinguish the prior art rubber from the recited “synthetic polyisoprene” but do not offer a construction of the recited term “synthetic polyisoprene.” See App. Br. 10-15; see also Reply 2-4. To the extent that Appellants appear to take the position that the recited “synthetic polyisoprene” excludes 5 Appeal 2016-002990 Application 12/403,901 polyisoprene “in its naturally occurring state” (see Reply 2), Appellants have not explained why the prior art rubber which is a derivative product from a naturally occurring rubber (i.e., deproteinized) does not teach or suggest the recited “synthetic polyisoprene” which does not include any structural or compositional requirements. Furthermore, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 419—20. Here, the Specification provides that the polysioprene “may be either natural or synthetic” and provides an exemplary formulation which “may be used for natural rubber latex or in currently available commercial synthetic rubber latexes.” Spec. 20, 47. The record therefore shows that both Tanaka and the Specification provide that both forms of rubber (rubber that is naturally occurring and rubber that is not naturally occurring) were known at or before the time of the invention. Appellants therefore have not identified reversible error in the Examiner’s rationale in support of obviousness. Because we find that Appellants have not identified reversible error in the Examiner’s obviousness rejection, we decline to reach the anticipation rejection. DECISION The Examiner’s rejection of claims 1, 4—6, 9, 11—16, 18—23, and 43 is affirmed. 6 Appeal 2016-002990 Application 12/403,901 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation