Ex Parte Zhou et al

Patent Trial and Appeal Board

Oct 29, 2012

11698518 (P.T.A.B. Oct. 29, 2012)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111698,518 01125/2007
22879 7590 10/31/2012
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528
FIRST NAMED INVENTOR
Zhang-Lin Zhou
UNITED STA TES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82220468 5727
EXAMINER
FINK, BRIEANN R
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
10/3112012 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):
JERRY.SHORMA@HP.COM
ipa.mail@hp.com
brandon.serwan@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND
APPEAL BOARD
Ex parte ZHANG-LIN ZHOU and
SIV AP ACKIA GAN AP ATHIAPP AN
Appeal 2011-004332
Application 11/698,518
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2011-004332
Application 11/698,518
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-3 and 5-19. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to a method of preparing anti-
oxidant-modified latex particles that includes biocatalytic polymerization of
the monomers in the discontinuous phase of an emulsion polymerization
system (Spec. 5:5-11). Appellants further claim a method of preparing ink-
jet ink and an ink-jet ink composition (Claims App'x, claims 10 and 14).
Claim 1 is illustrative:
1. A method of preparing anti-oxidant-modified latex
particulates in a fluid suspension, comprising:
generating an emulsion with a hydrophilic continuous
phase and a hydrophobic discontinuous phase, wherein the
hydrophobic discontinuous phase includes multiple types of
monomers for polymerization, at least one of the monomers
being modified by an anti-oxidant moiety; and
polymerizing the monomers in the hydrophobic
discontinuous phase using a biocatalytic polymerization
process.
Appellants appeal the following rejection:
Claims 1-3 and 5-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhou (US 2005/0027065 Al published Feb. 3, 2005) in
view of Kaplan (WO 2004/050795 A2 published June 17, 2004) and Kalra
(Bhanu Kalra & R. A. Gross, HRP-Mediated Polymerizations of Acrylamide
and Sodium Acrylate, 4 GREEN CHEMISTRY 174 (2002)).
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Appeal 2011-004332
Application 11/698,518
Appellants' arguments focus on the following groups of claims:
(1) claims 1, 5-15, 18, and 19, of which we select claim 1 as representative,
(2) claims 2 and 16, of which we select claim 2 as representative, and
(3) claims 3 and 17, of which we select claim 3 as representative.
CLAIM 1
ISSUE
Have Appellants shown that the Examiner reversibly erred in determining
that the combined teachings of Zhou, Kaplan and Kalra would have
provided a reasonable expectation of success in substituting Kalra' s and
Kaplan's biocatalytic catalyst for Zhou's catalyst in making anti-oxidant-
modified latex? We decide this issue in the negative.
FINDINGS OF FACT AND ANALYSES
Appellants argue that one of ordinary skill in the art would not have
combined Kaplan's or Kalra's biocatalytic method with Zhou's method
because Zhou's method includes a protecting step for shielding the anti-
oxidant group (App. Br. 12). However, as noted by Appellants and
confirmed by the Examiner, claim 2 requires the anti-oxidant group be
unprotected, not claim 1 (id., Ans. 8). Claim 1 does not exclude a step of
protecting the anti-oxidant group. Patentability may not be premised on a
limitation not appearing in the claims. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) ("appellant's arguments fail from the outset because, ... they
are not based on limitations appearing in the claims.")
Appellants argue that Kaplan only teaches HRP (horseradish
peroxidase) enzymatic polymerization in a single phase environment unlike
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Appeal 2011-004332
Application 11/698,518
the claim 1 requirement of two phases (i.e., a continuous hydrophilic phase
and discontinuous, hydrophobic phase) (App. Br. 12; Reply Br. 4-5).
Appellants contend that this failure of Kaplan does not provide an
expectation that the teachings of Zhou and Kaplan can be successfully
combined in the way proposed by the Examiner (App. Br. 12-13).
Appellants contend that Kalra teaches surfactant-mediated concentrated
emulsions (i.e., gel-like systems) where the continuous phase is minimal and
it is not clear that Kalra teaches using surfactants in an amount sufficient to
form a discontinuous phase (id. at 13; Reply Br. 5). Appellants contend that
Kalra teaches making homopolymers and there is no suggestion of using
multiple types of monomers for polymerization. (App. Br. 13; Reply Br. 5).
Contrary to Appellants' arguments, the Examiner recognized that
Kaplan fails to teach a two-phase biocatalytic polymerization system and the
Examiner relies on Kalra to teach such a feature (Ans. 3-6). The Examiner
finds that Kaplan teaches that using a biocatalytic polymerization process is
advantageous because it provides high efficiency of the reactions without the
need for a harsh environment (id. at 4 ). The Examiner further finds that
Kalra teaches that biocatalytic polymerization in the presence of surfactants
gives higher yields with shorter reaction times (id. at 5). The Examiner
concludes that it would have been obvious to substitute the polymerization
catalyst of Zhou with the enzymatic catalyst of Kaplan because Kalra
teaches that polymerizing vinyl monomers in the presence of HRP and
hydrogen peroxide can be successfully carried out with or without the
presence of a surfactant (id. at 5-6).
Appellants' arguments do not specifically address the Examiner's
rejection based on substituting Kaplan's enzymatic catalyst for Zhou's
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Appeal 2011-004332
Application 11/698,518
catalyst as suggested by Kalra's enzymatic polymerization in a two-phase
system. Though Appellants contend that Kalra does not teach that the
surfactant is present in an amount sufficient to form a two-phase system,
Appellants concede that Kalra teaches forming an emulsion 1 and that a
continuous phase is present (albeit minimal according to Appellants).
Because claim 1 does not require a particular amount of continuous phase
relative to discontinuous phase, Kalra's amount of continuous phase is not
excluded by the claim.
Appellants' arguments are unpersuasive because they attack the
references individually instead of addressing what the combined teachings of
the art would have suggested to one of ordinary skill in the art. In re Keller,
642 F.2d 413, 425 (CCPA 1981). As noted above, the Examiner's
conclusion is based upon the teachings of Zhou, Kaplan and Kalra together,
not the piecemeal combination argued by Appellants.
Appellants' arguments fail to show harmful error with the Examiner's
findings and conclusion based thereon that one of ordinary skill in the art
would have reasonably expected that substitution of Kalra's or Kaplan's
enzymatic catalyst for Zhou's polymerization catalyst would have been
successful (Ans. 5-6).
We therefore affirm the Examiner's rejection of claims 1, 5-15, 18,
and 19.
1 Emulsion is defined as "a stable mixture of two or more immiscible liquids
held in suspension by small percentages of substances called emulsifiers."
HAWLEY'S CONDENSED CHEMICAL DICTIONARY 461 (Richard J. Lewis Sr.
ed.,lih ed. 1993).
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Appeal 2011-004332
Application 11/698,518
CLAHvIS 2 AND 3
Appellants argue that claim 2 requires that the anti-oxidant group is
unprotected, which is not taught by Zhou (App. Br. 14; Reply Br. 5-6).
Appellants argue that Kaplan does not teach polymerization of antioxidant
modified monomers whether protected or not (App. Br. 14; Reply Br. 6).
There is no dispute that Zhou teaches protecting the anti-oxidant
group (Ans. 8). The Examiner's rejection is based on substituting Kaplan's
enzymatic catalyst for Zhou's polymerization catalyst in order to use less
harsh conditions where protection of the anti-oxidant group would not have
been necessary as suggested by Kaplan's lack of protecting groups on the
anti-oxidant moiety (id. at 6).
Appellants' argument that Kaplan does not teach polymerization of
anti-oxidant modified monomers is factually incorrect. Kaplan plainly
teaches on page 21, lines 25-26 that "Polymerization of the functionalized
monomers can be done via enzymatic methods." Appellants fail to
challenge specifically the Examiner's finding that Kaplan does not teach
forming protecting groups on the anti-oxidant moiety.
Regarding claim 3, Appellants argue that the cited references do not
teach or suggest the use of horseradish peroxidase (HRP) in a two-phase
polymerization system having a hydrophobic discontinuous phase with
multiple monomers (App. Br. 15; Reply Br. 7). However, Appellants'
argument is unpersuasive for the reasons discussed supra.
Appellants further contend that the references do not teach
unprotected anti-oxidant-modified monomer in a hydrophilic continuous
phase. App. Br. 15; Reply Br. 7. Contrary to this argument, the Examiner
finds that Zhou teaches the same conditions as disclosed by Appellants and
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Appeal 2011-004332
Application 11/698,518
the only difference is using enzymatic catalysis which is taught by Kaplan
and Kalra (Ans. 6 and 11-12). The Examiner reasons that because the
reaction conditions of Zhou as modified by Kaplan and Kalra would have
been the same as disclosed by Appellants, the particularly claimed transfer
of monomer would have flowed naturally from the combination.
Appellants' arguments do not specifically address the Examiner's findings
or analysis.
On this record, Appellants have failed to show harmful error in the
Examiner's rejection of claims 2 and 3. We affirm the Examiner's§ 103
rejection of claims 2, 3, 16, and 17 over Zhou, Kaplan and Kalra as the
preponderance of the evidence favors the Examiner's obviousness
conclusion.
DECISION
The Examiner's decision 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.
bar
ORDER
AFFIRMED
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