Ex parte Ziemelis et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08103318 (B.P.A.I. Jun. 29, 1998)

Application for patent filed August 9, 1993. According to1
the appellants, the application is a continuation of Application
No. 07/926,619, filed August 10, 1992, which is a division of
Application No. 07/563,123, filed August 6, 1990, now Patent
No. 5,026,781, which is a division of Application No. 07/460,771,
filed January 4, 1990, now Patent No. 5,135,989, which is a
division of Application No. 07/334,501, filed April 7, 1989, now
Patent No. 4,898,913.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 7
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARIS J. ZIEMELIS and WILLIAM R. R. PARK
____________
Appeal No. 95-3398
Application No. 08/103,3181
____________
ON BRIEF
____________
Before CAROFF, Administrative Patent Judge, McKELVEY, Senior
Administrative Patent Judge and OWENS, Administrative Patent
Judge.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This decision on appeal relates to the final rejection of
claims 27-34, all the claims remaining in the involved
application.
Appeal No. 95-3398
Application No. 08/103,318
2
The claims relate to a hydrophilic copolymer having a cross-
linked hydrophobic copolymer backbone with an acrylic acid or
methacrylic acid monomer polymerized on its surface, so that
carboxylic acid sites are formed on the surface of the
hydrophobic backbone copolymer.
Claims 31 is illustrative and reads as follows:
31. A hydrophilic copolymer comprising a cross-linked
hydrophobic polymer, produced by precipitation polymerization in
a solvent of at least one polyunsaturated ester monomer soluble
therein, the polymer containing a monomer polymerized on the
surface of the hydrophobic polymer, in order to form carboxylic
acid sites on the surface of the hydrophobic polymer, the polymer
being in a form including unit particles of less than about one
micron in average diameter, fused unit particles of sizes in the
range of about twenty to eighty microns in average diameter, and
aggregates of clusters of fused unit particles of sizes in the
range of about two hundred to about twelve hundred microns in
average diameter, the monomer polymerized on the surface being
selected from the group consisting of acrylic acid and
methacrylic acid.
The examiner relies upon the following references of record
as the evidentiary basis for rejecting appellants’ claims:
Albright 3,767,600 Oct. 23, 1973
Frechtling 3,892,822 July 01, 1975
Carmody et al. (Carmody) 4,948,818 Aug. 14, 1990
The following rejections are before us for consideration:
I. Claims 27-34 stand rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-14 of
Carmody.
Appeal No. 95-3398
Application No. 08/103,318
3
II. Claims 27-34 also stand rejected for obviousness under
35 U.S.C. § 103 in view of Albright taken in combination with
Frechtling.
Based on the record before us, we agree with appellants that
the examiner has failed to establish a prima facie case of
obviousness with regard to each of the rejections before us.
Accordingly, we shall not sustain either of those rejections
which we now address seriatim:
I. The “Double Patenting” Rejection
The examiner acknowledges that the claims of Carmody do not
expressly require that either acrylic acid or methacrylic acid be
polymerized onto the surface of a hydrophobic copolymer. To
remedy this deficiency, the examiner refers to Example III in the
Carmody specification as showing the polymerization of
methacrylic acid onto the surface of a hydrophobic copolymeric
powder. This approach is improper since, when considering the
question of obviousness-type double patenting, the patent
disclosure may not be used as prior art. See In re Vogel,
422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970).
In directing attention to Carmody Example III, the examiner
incorrectly states that methacrylic acid is the hydrophilic
monomer of the Carmody claims. Rather, as we see it, the
Appeal No. 95-3398
Application No. 08/103,318
4
hydrophilic monomer mentioned in the Carmody claims is one of the
initial monomers used in forming a macroporous cross-linked
copolymer powder and, therefore, is not used as in Example III to
treat the surface of an already formed cross-linked hydrophobic
copolymeric lattice (Carmody: column 9, line 54-column 10,
line 6). Further in this regard, we note that neither acrylic
acid nor methacrylic acid are ever mentioned by Carmody as a
monomer which may be used to construct the initial cross-linked
copolymeric structure as recited in the Carmody claims.
II. The 35 U.S.C. § 103 Rejection
We are unpersuaded by the examiner’s assertions regarding
the combinability of Albright and Frechtling under 35 U.S.C.
§ 103. Unlike the examiner, we find that the prior art provides
no clear motivation to combine the teachings of these references
and thereby arrive at appellants’ invention. First of all, as
noted by appellants, Albright and Frechtling each relate to
different types of polymers - Albright relates to porous,
macroreticulated polymers cross-linked with a polyunsaturated
monomer, whereas the vinyl acetate monomer and dialkyl fumarate
monomer of Frechtling are both monounsaturated. No poly-
unsaturated monomers are used by Frechtling. In this
sense, the references applied by the examiner are non-analogous.
Appeal No. 95-3398
Application No. 08/103,318
5
Furthermore, the examiner asserts that those of ordinary
skill in the art would discern a need to make the Albright
polymers more hydrophilic, and therefore more wettable, when used
as ion exchange resins. This assertion appears to be based on
unsupported speculation on the part of the examiner inasmuch as
Albright is apparently unconcerned with the enhancement of
hydrophilic properties. In fact, the polymers of Albright are
designed to be used in both aqueous and nonaqueous media
(Albright: column 2, lines 18-20). Indeed, the examiner has not
even established a nexus in the prior art between the hydrophilic
characteristics of a resin and its ion exchange properties.
Additionally, the combination of Frechtling with Albright is
even more problematic in that each relates to resins having
different ultimate utilities. The polymers of Albright are used
as adsorbents or ion exchange resins. On the other hand,
Frechtling is concerned with forming a free-flowing powder which
can be converted to a stable latex by the addition of water. In
this regard, the following portions of the Frechtling disclosure
are particularly pertinent: column 1, lines 9-27; column 3, lines
45-51; column 4, lines 21-27; column 5, lines 51-55; column 6,
lines 8-21. Accordingly, we fail to discern any logical reason
Appeal No. 95-3398
Application No. 08/103,318
6
why an ordinary artisan would have been motivated to apply the
teachings of Frechtling to Albright’s polymeric products.
In conclusion, we agree with appellants that the combination
of references applied by the examiner against the claims is
unsound. The examiner in effect has used the instant claims as a
blueprint for combining the references which amounts to
impermissible hindsight. Accordingly, we shall not sustain the
35 U.S.C. § 103 rejection.
For all of the foregoing reasons, the decision of the
examiner is reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
FRED E. McKELVEY ) APPEALS
Senior Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-3398
Application No. 08/103,318
7
Patent Department - Mail C01232
Dow Corning Corporation
Midland, MI 48686-0994
MLC/jrg
JENINE GILLIS
Appeal No. 95-3398
Serial No. 08/103,318
Judge CAROFF
Judge OWENS

Senior APJ McKELVEY

Received: 15 Jun 98
Typed: 15 Jun 98
Revision: 16 Jun 98
DECISION: REVERSED
Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s): ___________
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