Luiz Antonio M. Da Silva et al.Download PDFPatent Trials and Appeals BoardMay 1, 202013328895 - (D) (P.T.A.B. May. 1, 2020) 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. 13/328,895 12/16/2011 Luiz Antonio M. da SILVA 209485-0012-00- US-477420 1240 132086 7590 05/01/2020 Faegre Drinker Biddle & Reath LLP (BASFCorpDC) 1500 K Street, N.W. Suite 1100 Washington, DC 20005 EXAMINER REDDY, KARUNA P ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 05/01/2020 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): dbripdocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUIZ ANTONIO M. DA SILVA, JURACI MARQUES DA SILVA, ADILSON IGNACIO DA SILVA, and ANTONIO SEVERO PORTO JUNIOR Appeal 2019-002432 Application 13/328,895 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, BRIAN D. RANGE, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 2, 3, 13, and 19–25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE. Appeal Br. 3. Appeal 2019-002432 Application 13/328,895 2 STATEMENT OF THE CASE By action dated December 20, 2017, the Examiner finally rejected claims 22–25 under 35 U.S.C. § 112(a) and claims 2, 3, 13, and 19–25 under 35 U.S.C. § 103. Final Office Action (“Final Act.”) 3–7. On April 20, 2018, Appellant submitted an amendment seeking to clarify claims 22–25. Amendment Under 37 C.F.R. § 1.116 (April 20, 2018). This amendment was entered by the Examiner on April 27, 2018. The Examiner also issued an Advisory Action dated April 27, 2018. In the Advisory Action, the Examiner withdrew the rejection made under 35 U.S.C. § 112(a) and maintained the rejections of claims 2, 3, 13, and 19–25 made pursuant to 35 U.S.C. § 103. CLAIMED SUBJECT MATTER The present application generally relates to “stable acid form polyacrylate polymers, a process for preparing them, and the use of the stable acid form polyacrylate polymers as dispersants, for instance, in mineral slurries.” Specification filed Dec. 16, 2011 (“Spec.”) 2. Claim 2 is illustrative of the subject matter on appeal and is reproduced below: 2. An aqueous composition comprising: (1) a polymer comprising at least one carboxylic acid, wherein the polymer is represented by a formula of: Appeal 2019-002432 Application 13/328,895 3 Formula I: , wherein “n” is from about 13 to about 140; or Formula II: , wherein “m” is from about 13 to about 140; or wherein the polymer containing at least one carboxylic acid contains segments of Formula III: and Formula IV: , wherein “o” is from about 8 to about 132, and “p” is from about l to about 34, wherein a ratio of segments of formula III to segments of formula IV has a range of from 8:34 to 132:1, wherein R1 and R2 each independently represent a hydroxyl group or R1 and R2 are bound together to form an ether linkage of an anhydride group; and wherein the polymer containing at least one carboxylic acid is in acid form and has not been neutralized, has a molecular weight (MW) of about 1000 g/mol to about 10,000 g/mol and a Appeal 2019-002432 Application 13/328,895 4 polydispersity of 1.8 to 1.9, and is characterized by superior rheological performance in a mineral slurry relative to a reference polymer of comparable carboxylic composition, molecular weight and polydispersity, wherein the reference polymer is a fully neutralized polymer; and (2) a filler selected from kaolin, talc, clay, white carbon, aluminum hydroxide, titanium dioxide, calcium carbonate, calcite, marble, or a mixture thereof, wherein the aqueous composition is a slurry. Appeal Br. 39–40 (Claims App.) (emphases added). REFERENCES The Examiner relies upon the following prior art: Name Reference Date Holy et al. (“Holy”) US 5,268,437 Dec. 7, 1993 Kirk et al. (“Kirk”) US 6,335,404 B1 Jan. 1, 2002 Esser et al. (“Esser”) US 2005/0197278 A1 Sept. 8, 2005 REJECTIONS The Examiner maintains the following rejections: 1. Claims 2, 3, 13, and 19–22 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kirk. Final Act. 3–5. 2. Claims 2, 3, 13, 19–21, and 23–25 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Esser in view of Holy. Id. at 5–7. Appeal 2019-002432 Application 13/328,895 5 DISCUSSION Rejection 1. The Examiner rejects claims 2, 3, 13, and 19–22 as obvious over Kirk. Final Act. 3–5. In support of the rejection, the Examiner finds that Kirk, in Example 9, teaches an aqueous solution of copolymer comprising 10% by weight of maleic anhydride and 90% by weight of acrylic acid. Id. at 3. The Examiner further finds that the copolymer of Example 9 is not neutralized and has a molecular weight of 5590. Id. The Examiner additionally finds that the polymer of Kirk can be used as a dispersant for inorganic particulates such as kaolin, clay, calcium carbonate and titanium dioxide which satisfy the “filler” limitation. Id. at 3-4. The Examiner further finds that Kirk “in the general disclosure” teaches that the copolymer is preferred to have a polydispersity of < 2.0. Id. at 4. The Examiner further determines that, based on the similarity between the composition of Kirk and the claimed composition, a person of ordinary skill in the art would have expected the composition of Kirk to exhibit the claimed rheological properties. Id. at 4–5. Appellant asserts error on several bases. Appellant argues claims 2, 3, 13, and 19 collectively. Appeal Br. 11. Appellant presents separate argument relating to claims 20–22. Id. at 27–29. We address these arguments in sequence. Claims 2, 3, 13, and 19 First, Appellant argues that Kirk does not teach the polydispersity required by claim 2. Id. at 11 (A1.1). Claim 2 specifies a polydispersity “of 1.8 to 1.9.” Example 9 of Kirk specifies a polydispersity of 1.5. Kirk, Table Appeal 2019-002432 Application 13/328,895 6 2. In the Detailed Description of the Invention, Kirk further teaches that “[t]he polydispersity (the Mw divided by the number average molecular weight, Mn) of the polymer product is less than 2.5 preferably less than 2 and most preferably less than 1.8.” Kirk col. 8, ll. 39–42. Thus, Kirk teaches an overlapping range. Appellant argues that Example 9 does not teach the claimed polydispersity. Appeal Br. 11. Additionally, Appellant argues that Kirk teaches that the polydispersity is most preferably less than 1.8. Id. We do not find such arguments to be persuasive. First, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.”). Thus, the Examiner properly credited Kirk’s teaching of a polydispersity of “less than 2” although taught separately from Example 9. Second, the 1.8 to 1.9 polydispersity range of the claim overlaps Kirk’s polydispersity range of “preferably less than 2” and “[a] prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellant’s second argument (A1.2) concerns the combination of the polymer of Kirk’s Example 9 with other components. Appeal Br. 11–12. Appellant argues that the low pH polymer of Kirk “is intended as an additive in detergents, cleaning formulations, and water circulating systems” rather than as a dispersing agent which Kirk “merely mentions.” Id. at Br. 11. Appellant further argues that “[a]dditionally, Kirk further fails to mention an Appeal 2019-002432 Application 13/328,895 7 aqueous slurry composition comprising the Example 9 polymer and a filler selected from kaolin, talc, clay, white carbon, aluminum hydroxide, titanium dioxide, calcium carbonate, calcite, marble, or a mixture thereof.” Id. at 11– 12. In response, the Examiner directs us to Kirk’s teaching that “[t]he polymer product of the present invention may also be used as a dispersant for inorganic particulates such as pigments, kaolin clay, ceramics, calcium carbonate, zeolites, titanium dioxide.” Kirk col. 9, ll. 5–8. In view of such teaching, the Examiner determines that “use of polymer product as a dispersant for inorganic particulates is independent of its use in detergent composition.” Answer 9. As above, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co., Inc. v. Biocraft Labs., 874 F.2d at 807. Here, Kirk teaches to combine its polymer with the listed inorganic particulates. Accordingly, we discern no error in the Examiner’s determination that one of ordinary skill in the art would have had reason to combine the polymer of Example 9 with the inorganic particulates listed in column 9 of Kirk. For its third argument (A1.3), Appellant argues that Kirk does not explicitly teach any non-neutralized copolymer in an aqueous composition comprising a filler. Appeal Br. 12. Rather, Kirk teaches combining a non- neutralized polymer only in a detergent and cleaning formulation. As a result, Appellant argues, Kirk does not teach a composition that satisfies both the requirement that the polymer “has not been neutralized” and “wherein the aqueous composition is a slurry.” Id. at 12–13. Appeal 2019-002432 Application 13/328,895 8 In the Answer, the Examiner finds that Example 9 of Kirk teaches a non-neutralized polymer and, as discussed above, the general teachings of Kirk teach that the polymer may be used as a dispersant for inorganic particulates such as kaolin clay and calcium carbonate thereby forming an aqueous emulsion. Answer 10. We discern no error in the Examiner’s determination. For its fourth argument (A1.4–A1.6), Appellant contends that the claimed polymers yield “unexpected results.” Appeal Br. 13. More specifically, Appellant argues that “the acid form polyacrylate polymers of the disclosure have superior rheological performance in a mineral slurry as compared to neutralized polymers.” Id. at 13–14. In support of this argument, Appellant directs us to a series of figures from the Specification reflecting the results of various tests comparing the rheological properties of exemplary acid form polyacrylate polymers in combination with various fillers contrasted with fully or partially neutralized polymers in combination with fillers. Id. at 14–23 (discussing Figures 2–4, 6, and 7). Appellant argues that Kirk is not the closest prior art because it “does not teach the non-neutralized polymer of Example 9 in an aqueous composition comprising a filler selected from kaolin, talc, clay, white carbon, aluminum hydroxide, titanium dioxide, calcium carbonate, calcite, marble, or a mixture thereof.” Appeal Br. 23 (emphasis in original). Appellant argues that requiring comparison of the claimed slurry to a slurry formed of the polymer of Example 9 in combination with a filler “would be requiring comparison of the results of the invention with the results of the invention.” Id. (citing In re Chapman, 357 F.2d 418, 422 (CCPA 1966)). Appeal 2019-002432 Application 13/328,895 9 A prima facie case of obviousness may be rebutted by evidence that the claimed invention yields unexpectedly improved properties not present in the prior art. See, e.g., In re Fenn, 639 F.2d 762, 765 (CCPA 1981) (“[I]t is well settled that comparative test data showing an unexpected result will rebut a prima facie case of obviousness.”). To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention. Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also Pfizer, 480 F.3d at 1371. Unexpected properties, however, do not necessarily guarantee that a new compound is nonobvious. While a “marked superiority” in an expected property may be enough in some circumstances to render a compound patentable, a “mere difference in degree” is insufficient. In re Papesch, 50 CCPA 1084, 315 F.2d 381, 392 (CCPA 1963); In re Hoch, 57 CCPA 1292, 428 F.2d 1341, 1344 n. 5 (CCPA 1970) (explaining that unexpected “differences in properties” can mean “significant difference in degree of the same property” amounting to a “marked superiority” for purposes of evaluating unexpected results) (quotation omitted). Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). Further, “the applicant’s showing of unexpected results must be commensurate in scope with the claimed range.” In re Peterson, 315 F.3d at 1330. Accordingly, Appellant bears the burden of introducing evidence that the claimed composition exhibits rheological (or other) properties that a person of ordinary skill in the art would find surprising or unexpected. Here, Appellant introduces evidence of what it regards as superior properties but omits evidence that such properties would have been regarded as “surprising Appeal 2019-002432 Application 13/328,895 10 or unexpected.” See Appeal Br. 24 (A1.6). Absent such a showing, Appellant has not carried its burden. Because compounds normally vary from one another in properties, that a compound has a property somewhat “superior” in comparison to another compound does not necessarily mean the result would have been unexpected. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). We further find that Appellant has not introduced, nor have we found, evidence bearing upon the criticality of the upper bound of the molecular weight limitation of claim 2. Accordingly, Appellant’s showing is not commensurate in scope with claim 2 or its dependent claims which include such limitation. In view of the foregoing, we determine that Appellant has not shown error in the Examiner’s determination that Appellant has not presented evidence of unexpected results sufficient to rebut the prima facie case of obviousness. For its fifth argument (A1.7), Appellant contends that the Examiner errs in relying on the doctrine of inherency to find that Kirk teaches the claimed “superior rheological performance.” Appeal Br. 24–26. Appellant argues that the doctrine of inherency requires that the allegedly inherent characteristic necessarily flows from what is specifically disclosed in the prior art. Id. at 25. Appellant asserts that the polymer of Example 9 does not meet the polydispersity limitation recited in claim 2 either explicitly or inherently. Id. at 26. We do not find this persuasive. The Federal Circuit has held that one may “rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis” where the limitation at issue is “the natural result of the Appeal 2019-002432 Application 13/328,895 11 combination of elements explicitly disclosed by the prior art.” See Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). Here, as previously discussed, the combination of the polymer of Example 9 with fillers is taught by Kirk. Further, as discussed above, Kirk teaches the claimed polydispersity. Accordingly, the claimed rheological properties are the natural result of the combination taught by the prior art. This is equally applicable to the additional limitations of claims 20–22. In view of the foregoing, we determine that Appellant has not shown reversible error in the rejection of claims 2, 3, 13, and 19. Claims 20 and 21 Claims 20 and 21 depend from claim 2 and further limit the nature of the “superior rheological performance.” Appeal Br. 46–47 (Claims App.). With respect to both claims, Appellant argues that the claimed rheological performance is unexpected and further, that the Examiner has not shown that it necessarily flows from the teachings of Kirk. Id. at 27–29. Appellant’s argument that the claimed rheological performance is unexpected is not persuasive of error because, for the reasons discussed above, Appellant has not shown that superior properties were unexpected. See Pfizer, at 1371 (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.”). Appellant’s argument that the Examiner has not shown that the claimed performance necessarily flows from the teachings of Kirk is also not persuasive of error. The Examiner has put forth a reasoned basis why one of skill in the art would have had reason to use the polymer of Example 9 having the claimed polydispersity and with one or more of the claimed Appeal 2019-002432 Application 13/328,895 12 fillers. Answer 9–10. Appellant has not shown error in such determination. Accordingly, the limitation at issue is “the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., 773 F.3d at 1195–96. Claim 22 Claim 22 depends from claim 3 and further requires that “the polymer is a copolymer of acrylic acid and maleic anhydride and has a molecular weight (Mw) of about 5000 g/mol.” Appeal Br. 47 (Claims App.). Appellant argues that the Specification shows that the acid form co-polymer of acrylic acid and maleic anhydride exhibits better dispersion power than the fully neutralized version. Id. at 29. Appellant further argues that the Examiner fails to provide some “basis in fact or in technical reasoning” to support the finding that “the properties of the composition recited in claim 21 necessarily flows from what is specifically and allegedly disclosed in Kirk.” Id. Such argument is not persuasive of error because claim 22 does not require any rheological properties (other than by dependency). In view of all of the foregoing, we determine that Appellant has not shown error in the rejection of claims 2, 3, 13, and 19–22 as obvious over Kirk. Rejection 2. The Examiner rejects claims 2, 3, 13, 19–21, and 23–25 as obvious over Esser in view of Holy. In the Final Action, the Examiner finds that Esser teaches aqueous slurries including anionic dispersants such as polyacrylic acid. Final Act. 5. The Examiner further finds that the “polyacrylic acid is not neutralized.” Id. In the Advisory Action, the Appeal 2019-002432 Application 13/328,895 13 Examiner finds that “[t]here is nothing in Essar to teach that polyacrylic acid used as a dispersant is neutralized.” Advisory Action 4. The Examiner additionally finds that Holy teaches water soluble polymer products used as dispersants having a polydispersity below 2.5. Final Act. 5. In the Answer, the Examiner finds that Esser teaches that, “in order to prepare aqueous slurries of the fillers, an anionic dispersant e.g. polyacrylic acids having an average molar mass of from 1000 to 40,000 Daltons is generally used.” Answer 14 (citing Esser ¶ 29). The cited portion of Esser refers to polyacrylic acids as “anionic dispersants.” Esser ¶ 29 (“anionic dispersant, e.g. polyacrylic acids”). Appellant argues that, at the time the application was filed, it was well known in the art that sodium salts of polyacrylic acids (neutralized polyacrylates) were used as dispersants in mineral processing. Appeal Br. 30 (B1.1). As a result, Appellant argues, a person of skill in the art would have understood Esser’s teachings regarding polyacrylic acids to refer to neutralized polyacrylates. Id. at 30–31. In its Reply Brief, Appellant further asserts that it is “conventional knowledge in the art that typical anionic dispersants are salts of poly(acrylic acid).” Reply Brief dated Jan. 29, 2019 (“Reply Br.”), 5. In support, Appellant cites to an industrial handbook which teaches that, to achieve stabilization, “the dispersant applied needs to be highly anionic. Typically the salts of poly(acrylic acid) are applied for this purpose of electrostatic stabilization.” H. Holik, ed., Handbook of Paper and Board, Vol. 1, 2nd ed., (Wiley-VCH Verlag GmbH, Germany, 2013) § 3.66. This corroborates Appellant’s statements in the Background of the Specification (Spec. 1–2) and supports Appellant’s contention that paragraph 29 of Esser refers to the Appeal 2019-002432 Application 13/328,895 14 salt of polyacrylic acid rather than the acidic form as required by the claims. Accordingly, we determine that a preponderance of the evidence supports Appellant’s argument and, thus, Appellant has shown error in the Examiner’s finding that Esser teaches the use of acidic form polyacrylic acid. This, in turn, suggests error in the Examiner’s stated reason to combine which relies upon Esser’s teaching of “using polyacrylic acid as a filler/pigment dispersant.” Final Act. 6. The Examiner relies on this stated reason to combine with respect to the rejection of all claims subject to Rejection 2. Id. at 6–7. In view of the foregoing, we determine that Appellant has shown error with respect to the rejection of claims 2, 3, 13, 19–21, and 23–25 as obvious over Esser in view of Holy. CONCLUSION In view of the evidence and analysis described in the Final Action, the Examiner’s Answer, and above, the Examiner’s rejections are affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3, 13, 19–22 103(a) Kirk 2, 3, 13, 19–22 2, 3, 13, 19–22, 23– 25 103(a) Esser, Holy 2, 3, 13, 19– 21, 23–25 Overall Outcome 2, 3, 13, 19–22 23–25 Appeal 2019-002432 Application 13/328,895 15 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 IN PART Copy with citationCopy as parenthetical citation