Ex Parte Zhang

Board of Patent Appeals and Interferences

Jun 29, 2012

10677436 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LIFENG ZHANG
_________

Appeal 2011-000408
Application 10/677,436
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C. PRATS,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 29, and 30, directed to a reduced viscosity hydrophobic thickener
system for thickening a polymer-containing aqueous system. The claims
have been rejected on the grounds of obviousness and non-statutory
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
“Polymer-containing aqueous systems,” such as paint formulations,
“typically employ [associative] thickeners to obtain the desired degree of
viscosity needed for the proper formulation and application of the aqueous
system” (Spec. 1, 14). “Associative thickeners are so-called because the
mechanism by which they thicken is believed to involve hydrophobic
associations between the hydrophobic moieties on the thickener molecules
themselves and/or with other hydrophobic surfaces” (id.).
It is conventional to “suppress the viscosity of the aqueous solution
containing the associative thickener to allow for ease in its handling before
its use as a thickener” (id. at 1), but the viscosity suppression must be
reversible “[i]n order for the thickener to [ultimately] perform its intended
viscosity increasing function” (id. at 9). The present invention is directed to
a reduced-viscosity composition containing a hydrophobically modified
polyethoxylated urethane associative thickener with at least one diisocyanate
functional group, and a cyclodextrin-containing compound.
Claims 1, 29, and 30 are pending and on appeal; claims 10, 12, 13,
and 16-24 have been allowed; and claims 4 and 6-9 have been withdrawn
from consideration (App. Br. 2).
Claim 29 reads as follows:
29. A composition for a reduced viscosity hydrophobic thickener system
for thickening a polymer-containing aqueous system, said composition
comprising:
a) a cyclodextrin-containing compound having a hydrophobic
cavity of a predetermined size; and
b) a hydrophobically modified polyethoxylated urethane thickener
comprising at least one terminal phobe of a size capable of complexing with
said hydrophobic cavity of said cyclodextrin-containing compound and at
least one urethane linkage formed from a diisocyanate comprising
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1,4-tetramethylene diisocyanate, 1,6-hexamethylene diisocyanate, 1,10-
decamethylene diisocyanate, 2,2,4-trimethyl-1,6-diisocyanatohexane, and a
combination comprising at least one of the foregoing diisocyanates;
wherein at least a portion of said cyclodextrin-containing compound is
complexed with said hydrophobically modified thickener in such a way that
at least a portion of at least one of said phobes at least partially fills said
hydrophobic cavity.
Claim 1, also an independent claim, is similar to claim 29 except that
the cyclodextrin is limited to methyl-α-cyclodextrin, while the list of suitable
thickeners is more extensive.
The Examiner relies on the following evidence:
Emmons et al US 4,079,028 Mar. 14, 1978
Tsuchiyama et al. US 4,746,734 May 24, 1988
Eisenhart et al. US 5,137,571 Aug. 11, 1992
Lau et al. US 5,376,709 Dec. 27, 1994
Lau US 5,521,266 May 28, 1996
Tanzer et al. US 6,887,928 B2 May 3, 2005
Harris et al. US 7,125,919 B2 Oct. 24, 2006
The claims stand rejected as follows:
I. Claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable over
Eisenhart and Emmons (Ans. 4-5);
II. Claim 1 under 35 U.S.C. § 103(a) as unpatentable over Eisenhart,
Emmons, Lau 709, and Lau 266 (Ans. 5-6);
III. Claims 29 and 30 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 4 of US Patent 7,125,919 in
view of Emmons (Ans. 6-7);
IV. Claims 29 and 30 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 3 of US Patent 6,887,928 in
view of Emmons (Ans. 7-8);
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V. Claims 29 and 30 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 1 of US Patent 5,376,709 in
view of Emmons (Ans. 8-9).
VI. Claims 29 and 30 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 2 of US Patent 5,137,571 in
view of Emmons (Ans. 9-10).
VII. Claim 1 on the ground of nonstatutory obviousness-type double
patenting as unpatentable over claim 2 of US Patent 5,137,571 in view of
Emmons, Lau 709, and Lau 266 (Ans. 9-10).
OBVIOUSNESS
Findings of Fact
1. Eisenhart teaches that aqueous systems containing emulsion
polymer binders, such as paint formulations, typically employ associative
thickeners “to obtain the desired degree of viscosity needed for the proper
formulation and application of the aqueous system” (Eisenhart, col. 1, ll. 6-
8, 18-24).
2. Eisenhart teaches that “associative thickeners, such as . . . the
polyurethane thickeners, are sold as aqueous solutions containing organic
cosolvents” in which “[t]he function of the organic cosolvent . . . is to
[reversibly] suppress the viscosity of the aqueous solution . . . to allow for
ease in its handling” (Eisenhart, col. 1, ll. 35-41, 44-45).
3. Eisenhart lists several “references which disclose various
hydrophobic compounds which act as associative thickeners . . . formulated
with organic cosolvents . . . for use in thickening aqueous latex systems”
(Eisenhart, col. 1, ll. 54-58), including US Patent No. 4,079,028 to Emmons
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et al., which is “directed to polyurethane thickeners, characterized by at least
three hydrophobic groups” (Eisenhart, col. 1, 59-60).
4. According to Eisenhart, the organic cosolvents in these aqueous
solutions perform their intended function, but present “environmental, safety
and health disadvantages” (id. at col. 1, ll. 42-47).
5. Eisenhart teaches that the need for organic cosolvents in
aqueous solutions containing associative thickeners can be eliminated “by
the addition of one or more cyclodextrin compounds” (id. at col. 2, ll. 25-
27), which reversibly “suppress[ ] the viscosity of aqueous solutions
containing associative thickeners” (id. at col. 2, ll. 28-31). In particular,
Eisenhart teaches that:
Applicants have found that not only can the alpha, beta
and gamma cyclodextrins be used effectively as transient
viscosity suppressing agents for hydrophobic associative
thickeners, but that modified cyclodextrins, such as for example
those . . . which are more soluble in water than the unmodified
cyclodextrin compounds can also be employed in this manner.
In fact applicants have found it preferable to utilize
hydroxyethyl- or hydroxypropyl-cyclodextrins having a higher
degree of water solubility than the unmodified cyclodextrins for
use with aqueous solutions containing high concentrations of
associative thickener.
(Id. at col. 3, ll. 50-63.)
6. Examples 1-6 of Eisenhart demonstrate the viscosity-reducing
effect of modified and unmodified alpha-, beta-, and gamma-cyclodextrins
on aqueous solutions containing various amounts of the polyurethane
associative thickener, QR-708 (a thickener based on a diisocyanate known as
Des W) (Eisenhart, cols. 7-10; see also App. Br. 7).
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Example 7 demonstrates the viscosity-reducing effect of beta-
cyclodextrin on solutions containing “other types of associative thickeners”
(id. at col. 10, ll. 38-41), specifically, a hydrophobically-modified alkali
soluble emulsion thickener, a hydrophobically-modified hydroxyethyl
cellulose thickener, and an unmodified (non-hydrophobic) hydroxyethyl
cellulose thickener (id. at col. 10, ll. 42-48). “The results show that beta-
cyclodextrin can reduce the viscosity of these two hydrophobically modified
thickeners . . . but has no effect on the viscosity for the non-hydrophobic
thickener” (id. at col. 11, ll. 12-15).
7. Emmons (see FF3) discloses a number of hydrophobically-
modified urethane polymer associative thickeners for use in aqueous
solutions (e.g., latex paint), including urethane thickeners wherein the
urethane linkages result from a reaction with polyisocyanates including, in
the following order:
1,4-tetramethylene diisocyanate,
1,6-hexamethylene diisocyanate (“HDI”),
2,2,4-trimethyl-1,6-diisocyanatohexane,
1,10-decamethylene diisocyanate,
1,4-cyclohexylene diisocyanate, and
4,4'-methylenebis(isocyanatocyclohexane) (“Des W”).
(Emmons, col. 1, ll. 11-25; col. 8, ll. 55-60.)
8. The Specification teaches that “[t]he central cavity of a
cyclodextrin compound can form inclusion complexes with hydrophobic
compounds, greatly increasing their solubility” (Spec. 4). “The size of a
cyclodextrin compound’s central hydrophobic cavity varies depending on
the type of cyclodextrin, and increases with the number of glucose units”
(id.). For example, the hydrophobic cavity of α-cyclodextrin is smaller than
that of β-cyclodextrin, which is smaller than that of γ-cyclodextrin (id.).
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9. According to the present Specification:
Applicants have unexpectedly discovered that . . . the
viscosity suppression efficiency of the cyclodextrin-containing
compound can be significantly improved by careful selection of
the thickener phobe(s) and the cyclodextrin-containing
compound. Applicants have further unexpectedly discovered
that when the hydrophobically modified associative thickener is
a polyethoxylated urethane thickener having at least one
diisocyanate functional group, the viscosity suppression
efficiency of the cyclodextrin-containing compound can be
significantly improved by careful selection of the thickener
phobe(s), the diisocyanate functional group(s), and the
cyclodextrin-containing compound.
(Spec. 2.)
10. Further according to the Specification,
Applicants have unexpectedly discovered that the configuration
of the diisocanate [sic] used to make the thickener urethane
linkage affects the viscosity suppression efficiency of a
cyclodextrin-containing compound. The configuration of the at
least one diisocyanate functional group is cyclic, branched
chained, straight chained, or combinations thereof. Without
being bound to any particular theory, it is believed that the
viscosity suppression efficiency of the cyclodextrin increases
with the increased flexibility of the diisocyanate chain. It is
believed that the diisocyanate compensates for any lack of fit of
the thickener’s at least one terminal phobe in the hydrophobic
cavity of the cyclodextrin-containing compound, by
complexing with the cavity, along with the phobe. Therefore,
the more flexible the diisocyanate chain, the better the
diisocyanate is able to compensate for any deficiency in the fit
of the phobe in the cyclodextrin cavity.
(Spec. 6-7.)
Further,
Diisocyanates useful for the present invention include, for
example, 1,4-tetramethylene diisocyanate; 1,6-hexamethylene
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diisocyanate (“HDI”); 1,10-decamethylene diisocyanate;
2,2,4-trimethyl-1,6-diisocyanatohexane; 1,4-cyclohexylene
diisocyanate; 4,4'-methylenebis(isocyanatocyclohexane)
(“Des W”); [etc.]
(id. at 7 (emphasis added).)
11. Examples 1-18 of the Specification compare solutions
containing associative thickeners modified with either 1,6-hexamethylene
diisocyanate (“HDI”), or 4,4'-methylenebis(isocyanatocyclohexane) (“Des
W”). The results consistently show that methyl-β-cyclodextrin and methyl-
α-cyclodextrin suppressed the viscosity of solutions containing thickeners
modified with HDI much more than the solutions containing thickeners
modified with Des W.
Discussion
I.
Claims 29 and 30 stand rejected as unpatentable over Eisenhart and
Emmons.
The Examiner finds that Eisenhart “explicitly describes . . . adding
cyclodextrins to an associative thickener for viscosity modification in order
to avoid the need for using organic solvents” (Ans. 10), but “does not
exemplify thickeners based on the diisocyanates recited in the claims” (id. at
5). However, the Examiner finds that Eisenhart specifically “refers to
Emmons as [an example of prior art] disclosing hydrophobically modified
polyurethane thickeners formulated with organic cosolvents” (id. at 10).
The Examiner finds that Emmons, in turn, discloses associative
thickeners with urethane linkages formed from diisocyanates, including all
four recited in claim 29. The Examiner concludes that it would have been
obvious “to select any of the hydrophobically modified polyethoxylated
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urethane thickeners taught by Emmons with a reasonable expectation of
success because Eisenhart suggests their use in order to eliminate the need
for organic solvents as viscosity modifiers” (id. at 5).
Appellant contends that “[n]owhere in Eisenhart is there any teaching
or suggestion to use the modified polyethoxylated urethane thickeners taught
by Emmons” because Eisenhart “clearly indicates that Emmons is
considered prior art . . . that suffers from disadvantages remedied by the
invention of Eisenhart” (App. Br. 6).
This argument is not persuasive. Eisenhart discloses “[a] method for
improving associative thickeners by the addition of one or more cyclodextrin
compounds to aqueous solutions containing associative thickeners” which
“suppresses the viscosity of [the] aqueous solutions . . . and eliminates the
need for organic cosolvents” (Eisenhart, col. 2, ll. 24-31; FF5), and
Eisenhart specifically identifies Emmons as prior art directed to associative
thickeners “formulated with organic cosolvents” (Eisenhart, col. 1, ll. 54-62;
FF3). We agree with the Examiner that these disclosed disadvantages
provide “precisely the motivation for combining the references” (Ans. 10),
and that it would have been obvious to select any of the associative
thickeners disclosed by Emmons.
Appellant further contends that “Eisenhart’s exclusive . . . teaching of
urethane thickeners based on 4,4’-methylene-bis(isocyanatocyclohexane)
[“Des W”], a cyclic diisocyanate, in 66 compositions set forth in six
examples, can be fairly and reasonably construed as teaching away from
urethane thickeners based on straight chain or branched chain (acrylic)
diisocyanates” (App. Br. 7). In other words, Appellant contends that one of
skill in the art would have been dissuaded from selecting straight and
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branched chain diisocyanates, which are the only type recited in the present
claims, from the more extensive list disclosed by Emmons, which includes
cyclic compounds like 4,4’-methylene-bis(isocyanatocyclohexane) (“Des
W”).
We disagree. A reference is said to “teach away” from a claimed
invention when 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.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That is not the
case here. Nothing in Eisenhart suggests that cyclodextrins would be
unlikely to suppress the viscosity of aqueous solutions containing
hydrophobically-modified associative thickeners other than the three used in
Examples 1-7. Indeed, only the viscosity of a solution containing a non-
hydrophobic cellulose thickener was unaffected by the presence of
cyclodextrin (FF6). In any case, it is well settled that disclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure or even non-preferred embodiments. See In re Susi, 440 F.2d
442, 446 n.3 (CCPA 1971).
Finally, Appellant contends that “the experimental results provided in
the present application . . . unequivocally demonstrate that compositions . . .
recited in claims 29 and 30, [all of which are straight-chained diisocyanates]
exhibit unexpected beneficial properties, which are sufficient to rebut a
prima facie case of obviousness” (App. Br. 8). Specifically, Appellant
contends that Examples 1-19 of the Specification consistently show that “the
viscosity of aqueous solutions of urethane thickeners derived from 1,6-
hexamethylene diisocyanate (HDI), which is a straight chain diisocyanate, is
suppressed more than the viscosity of aqueous solutions of urethane
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thickeners derived from (4,4'-methylene bis(isocyanatocyclohexane, or Des
W), which is a cyclic diisocyanate, when they are combined with methyl-α-
cyclodextrin or methyl-β-cyclodextrin” (id. at 9). In short, Appellant
contends that “[u]nexpectedly, the viscosity of solutions comprising
urethane thickeners derived from straight chain and branched chain
diisocyanates was suppressed to a greater extent than the viscosity of
solutions comprising urethane thickeners derived from cyclic or polycyclic
diisocyanates” (id. at 8-9).
We are not persuaded that the working examples in the Specification
demonstrate unexpected results stemming from the choice of urethane
thickeners derived from a straight chain diisocyanate versus a cyclic
diisocyanate.
First of all, Appellant has not established a nexus between the claimed
invention and the allegedly unexpected results. See Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of
secondary considerations to be accorded substantial weight, its proponent
must establish a nexus between the evidence and the merits of the claimed
invention.”). In this case, the Specification merely states that “unexpectedly
. . . the viscosity suppression efficiency of the cyclodextrin-containing
compound can be significantly improved by careful selection of the
thickener phobe(s), the diisocyanate functional group(s), and the
cyclodextrin-containing compound” (FF9), and that “unexpectedly . . . the
configuration of the diisocanate [sic] used to make the thickener urethane
linkage affects the viscosity suppression efficiency of a cyclodextrin-
containing compound” (FF10). The Specification does suggest that the
differences may be due to differences in flexibility of the diisocyanate chain
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(FF10), but no mention is made of a difference stemming from the use of a
cyclic diisocyanate versus and straight-chained diisocyanate. Moreover,
both cyclic and straight-chained diisocyanates are listed as “useful for the
present invention (FF10).
In addition, “objective evidence of nonobviousness must be
commensurate in scope with the claims.” In re Kulling, 897 F.2d 1147,
1149 (Fed. Cir. 1990). The Specification contains several examples
comparing thickeners made with a single cyclic diisocyanate (Des W) or a
single straight-chained diisocyanate (HDI); however, given the
Specification’s discussion of several other factors that may impact the
efficiency of viscosity reduction, we are not persuaded that Appellant has
adequately demonstrated that the superior results obtained with HDI are due
to the cyclic versus straight-chain distinction, or that the results obtained
with HDI would be significantly better than the other diisocyanates
disclosed by Emmons.
Finally, while we agree that the working examples consistently show
that the viscosity of aqueous solutions of urethane thickeners derived from
HDI is suppressed more than the viscosity of aqueous solutions of urethane
thickeners derived from Des W when they are combined with methyl-α-
cyclodextrin or methyl-β-cyclodextrin, Appellant has not pointed to
anything in the Specification that characterizes this particular result as
unexpected. Nor has Appellant otherwise established that one of ordinary
skill in the art would not have expected thickeners modified by HDI and
thickeners modified by Des W to affect viscosity differently. Attorney
argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
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The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). That
burden has not been carried here.
The rejection of claims 29 and 30 as unpatentable over Eisenhart and
Emmons is affirmed.
II.
Claim 1 stands rejected as unpatentable over Eisenhart, Emmons, Lau
709, and Lau 266. As discussed above, independent claim 1 is similar to
claim 29 except that the cyclodextrin is limited to methyl-α-cyclodextrin,
while the list of suitable diisocyanates is more extensive - although all
appear to be straight-chained or branched.
This rejection is largely analogous to Rejection I, with the additional
citation of Lau 709 and Lau 266 as evidence that methyl cyclodextrins are
known viscosity modifiers in combination with hydrophobically modified
associative thickeners (Ans. 6).
To the extent Appellant reiterates the arguments made in response to
Rejection I, we are not persuaded for the same reasons set forth above.
To the extent Appellant contends that Eisenhart teaches away from
methyl cyclodextrins, we disagree. Appellant contends that “Eisenhart’s
teaching of water-soluble cyclodextrins that are more water-soluble [than
unmodified cyclodextrins] is a clear teaching away from methyl
cyclodextrins” (App. Br. 15) because one of skill in the art “will expect . . .
methyl cyclodextrins [to be] considerably less water soluble than unmodified
cyclodextrins” (id.).
Eisenhart teaches that alpha, beta, and gamma cyclodextrins are all
effective transient viscosity suppressing agents for hydrophobic thickeners
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(FF5), as are modified cyclodextrins, for example, those that are more
soluble in water than the unmodified cyclodextrins (id.). Eisenhart does not
suggest that other cyclodextrin derivatives would not work as viscosity
suppressing agents. As discussed above, disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
even non-preferred embodiments.
Appellant further contends that “it would not have been obvious to
substitute methyl-β-cyclodextrin with methyl-α-cyclodextrin” because “they
are quite different in their physical structures” (App. Br. 17). Appellant
contends that “[m]ethyl-α-cyclodextrin is composed of six glucopyranoside
units arranged in a ring, while methyl-β-cyclodextrin is composed of seven
glucopyranoside units arranged in a ring” (id.), thus, the cavity of methyl-β-
cyclodextrin is larger than the cavity of methyl-α-cyclodextrin, and their
physical properties are different, for example, methyl-α-cyclodextrin is
much more water-soluble than methyl-β-cyclodextrin (id.).
This argument is not persuasive. Again, Eisenhart teaches that alpha,
beta, and gamma cyclodextrins are all effective viscosity suppressing agents
for hydrophobic associative thickeners (FF5).
Accordingly, the rejection of claim 1 as unpatentable over Eisenhart,
Emmons, Lau 709, and Lau 266 is affirmed.
DOUBLE PATENTING
Principles of Law
“Nonstatutory double patenting was borne out of 35 U.S.C. § 101, not
§ 103. Specifically, § 101 precludes more than one patent on the same
invention. [The Court of Customs and Patent Appeals], concerned that
applicants could evade the § 101 requirement by drafting claims that ‘vary
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slightly from the earlier patent,’ fashioned the doctrine of nonstatutory
double patenting ‘to prevent issuance of a patent on claims that are nearly
identical to claims in an earlier patent.’” Eli Lilly & Co. v. Teva Pharms.
USA, Inc., 619 F.3d 1329, 1341 (Fed. Cir. 2010).
An obviousness-type double patenting rejection is based on the claims
of an issued patent. The specification cannot be treated as prior art if it does
not qualify as prior art under some provision of § 102. See In re Kaplan,
789 F.2d 1574, 1580 (Fed. Cir. 1986).
III.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 4 of US
Patent 7,125,919 in view of Emmons (Ans. 6-7).
Claim 4 of the patent is directed to a “tinting composition” comprising
a colorant, a hydrophobically modified alkali soluble polymer, a nonionic
hydrophobically modified ethylene oxide urethane block copolymer, and “a
macromolecular organic compound having a hydrophobic cavity.”
The Examiner concludes that the presently claimed composition is not
patentably distinct from the patented composition because cyclodextrins “are
disclosed in the [Patent’s] written description of ‘macromolecular organic
compound having a hydrophobic cavity’” (Ans. 7), and Emmons discloses
that “hydrophobically modified ethylene oxide urethane block copolymers
have utility for preparing paint, a tinting composition comprising a colorant”
(id.).
We will reverse this rejection. Not only does claim 4 of the patent fail
to recite the required thickeners, it is considerably broader than the present
claim in its generic recitation of a “macromolecular organic compound
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having a hydrophobic cavity.” The Examiner relies on “the written
description” of the patent, which lists cyclodextrins, among other types of
compounds, as examples of the generic macromolecular organic compound.
However, the Specification of the Patent is not available as prior art to
combine with Emmons’ teachings.
The rejection of claims 29 and 30 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 4 of US
Patent 7,125,919 in view of Emmons is reversed.
IV.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of US
Patent 6,887,928 in view of Emmons (Ans. 7-8).
This rejection is analogous to obviousness-type double-patenting
Rejection III, and is reversed for the same reasons.
V.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 1 of US
Patent 5,376,709 in view of Emmons (Ans. 8-9).
Claim 1 of ‘709 is directed, in relevant part, to a method for
eliminating the need for organic solvents in aqueous systems containing
hydrophobically-modified polyethoxylated urethane thickeners by adding
methyl-β-cyclodextrin to the solution. Emmons discloses the specific
thickeners required by claims 29 and 30 (FF7). The Examiner concludes
that it would have been obvious for one skilled in the art to substitute
Emmon’s specific hydrophobically modified urethane thickeners for the
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generic hydrophobically modified polyethoxylated urethane thickeners of
patented claim 1 (Ans. 8-9).
Appellant contends that the arguments regarding the previous
obviousness-type double patenting rejections apply equally to this rejection
(App. Br. 23). That is, Appellant argues that the double patenting rejection
should be reversed based on the arguments presented in response to the
obviousness rejection of claim 29 (id. at 20).
We are not persuaded for the reasons discussed above in connection
with the obviousness rejection of claim 29.
To the extent Appellant contends that the Specification demonstrates
surprising and unexpected results (App. Br. 20, 22), again, we are not
persuaded for the reasons discussed in connection with the obviousness
rejection of claims 29 and 30 (rejection I).
The rejection of claims 29 and 30 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 1 of US
Patent 5,376,709 in view of Emmons is affirmed.
VI.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 2 of US
Patent 5,137,571 in view of Emmons (Ans. 9-10).
As acknowledged by Appellant (App. Br. 24), this rejection is
analogous to obviousness rejection I.
We affirm for the reasons discussed in connection with that rejection.
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VII.
Claim 1 stands rejected on the ground of nonstatutory obviousness-
type double patenting as unpatentable over claim 2 of US Patent 5,137,571
in view of Emmons, Lau 709, and Lau 266 (Ans. 9-10).
As acknowledged by Appellant (App. Br. 25), this rejection is
analogous to obviousness rejection II.
We affirm for the reasons discussed in connection with that rejection.
SUMMARY
Obviousness Rejections I and II are affirmed. Because our rationale
for affirming these obviousness rejections differs somewhat from the
Examiner’s, we designate those affirmances as new grounds of rejection
under 37 C.F.R. § 41.50(b).
Nonstatutory obviousness-type double patenting rejections III and IV
are reversed, while Rejections V, VI, and VII are affirmed.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
that “Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board.”
In addition to affirming the examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 10/677,436

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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 . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
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, 37 C.F.R. § 41.50(b)

lp