BASF SE

Patent Trials and Appeals Board

Aug 25, 2021

2020006347 (P.T.A.B. Aug. 25, 2021)

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.
15/307,143 10/27/2016 Ewelina BURAKOWSKA-MEISE 32471/78402 6852
4743 7590 08/25/2021
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/25/2021 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EWELINA BURAKOWSKA-MEISE, JOANNA MECFEL-
MARCZEWSKI, MATTHIAS BRATZ, WOLFGANG DENUELL,
STEVEN BOWE, RONALD REPAGE, and JOHN FRIHAUF
____________

Appeal 2020-006347
Application 15/307,143
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 16–28 (see Appeal Br. 5).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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, Ludwigshafen, Germany” (Appellant’s March 26, 2020, Appeal Brief
(Appeal Br.) 3).
2 Pending claims 29–35 stand withdrawn from consideration (see Appeal Br.
5).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a process for producing
microcapsules which contain a shell and a core of a liquid water-insoluble
material” (Spec. 1). Appellant’s claim 16 is reproduced below:
16. A process for producing microcapsules which contain a
shell and a core of a liquid water-insoluble material, where
(a) a premix (I) is prepared from water and a protective
colloid;
(b) a further premix (II) is prepared from the water-
insoluble material and at least one bifunctional isocyanate (A)
or a mixture bifunctional isocyanate (A) and a different
isocyanate;
(c) the two premixes (I) and (II) are mixed together until
an emulsion is formed;
(d) at least one bifunctional amine is then poured into the
emulsion from step (c);
and
(e) the emulsion is then heated until the microcapsules
are formed; and
where the liquid water-insoluble material comprises a
pesticide,
where the protective colloid is a polyvinyl alcohol
copolymer having hydrolysis degrees from 60 to 99.9 %,
where the polyvinyl alcohol copolymer contains
comonomers with anionic groups, and
wherein the isocyanate (A) is selected from alicyclic or
aliphatic isocyanates.
(Appeal Br. 20.)

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Claims 16–28 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Denuell3 and Naoki.4

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Denuell “relates to a process for producing microcapsules” (Denuell
¶ 1).
FF 2. Denuell discloses:
A process for producing microcapsules which contain a
shell and a core of a liquid, water-insoluble material, the
process comprising:
bringing together an aqueous solution of a protective colloid
and a solution of a mixture of at least two structurally
different at least difunctional diisocyanates (A) and (B)
in a water-insoluble liquid until an emulsion is formed;
adding an at least difunctional amine to the emulsion; and
heating to a temperature of at least 60° C, until the
microcapsules are formed,
wherein the isocyanate (B) is selected from the anionically
modified isocyanates or the polyethylene oxide-
containing isocyanates and the isocyanate (A) is
uncharged and is not a polyethylene oxide-containing
isocyanate.
(Denuell ¶ 134; see Non-Final Act.5 6.)

3 Denuell et al., US 2013/0095158 A1, published Apr. 18, 2013.
4 Naoki et al., JP H10139820 (A), published May 26, 1998.
5 Examiner’s June 26, 2019, Non-Final Office Action.
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FF 3. Denuell discloses:
During the reaction between the isocyanates and the
amines, a protective colloid must be present. This is preferably
a polyvinylpyrrolidone (PVP). Protective colloids are polymer
systems which, in suspensions or dispersions, prevent a
clumping together (agglomeration, coagulation, flocculation) of
the emulsified, suspended or dispersed substances. During
solvation, protective colloids bind large amounts of water and
in aqueous solutions produce high viscosities depending on the
concentration. Within the context of the process described
herein, the protective colloid may also have emulsifying
properties. The aqueous protective colloid solution is likewise
preferably prepared with stirring.
(Denuell ¶ 35.)
FF 4. Denuell discloses that “at least difunctional, preferably
polyfunctional, isocyanates are used, [in its process,] i.e.[,] all aromatic,
alicyclic and aliphatic isocyanates are suitable provided they have at least
two reactive isocyanate groups” (Denuell ¶ 38; see generally Non-Final Act.
6–7).
FF 5. Denuell discloses that biocides, such as pesticides, can be present in
its microcapsules (see Denuell ¶¶ 65–67; see also Non-Final Act. 7).
FF 6. Examiner finds that Denuell does not disclose that its “protective
colloid is a polyvinyl alcohol copolymer having hydrolysis degrees from 60
to 99.9%, where the polyvinyl alcohol copolymer contains comonomers with
anionic groups” and relies on Naoki to make up for this deficiency (Non-
Final Act. 7).
FF 7. Naoki discloses that “microcapsule[s] can be produced by
emulsifying and dispersing (A) a hydrophobic oily liquid (e.g.[,] natural
mineral oil, animal oil, vegetable oil or synthetic oil optionally mixed with
pharmaceuticals, agrochemicals . . . etc.) in (B) an aqueous medium
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containing preferably 0.1-25mol% of a modified polyvinyl alcohol” (Naoki,
Abstr.; see Non-Final Act. 7–8).
FF 8. Examiner finds that Naoki’s
modified PVA may be copolymerized with a copolymerizable
ethylenic unsaturated monomer at a modification amount of
preferably 5 mole% or less and that examples of such
ethylenically unsaturated monomers include olefins such as
ethylene, propylene, 1-butene and isobutene; olefins such as
acrylic acid, methacrylic acid, crotonic acid, (anhydrous)
phthalic acid, (anhydrous) maleic acid, ) Itaconic acid or salts
thereof or mono- or dialkyl esters having 1 to 18 carbon atoms;
acrylamide, N-alkylacrylamide having 1 to 18 carbon atoms, N,
N-dimethylacrylamide, 2-acrylamidopropanesulfonic acid
Acrylamides such as acrylamide propyldimethylamine or its
acid salt or quaternary salt thereof; methacrylamide, N-alkyl
methacrylamide having 1 to 18 carbon atoms, N, N-dimethyl
methacrylamide, 2-methacrylamide propane Sulfonic acid
Methacrylamides such as methacrylamidopropyldimethylamine
or an acid salt thereof or a quaternary salt thereof; N-
vinylamides such as N-vinylpyrrolidone, N-vinylformamide
and N-vinylacetamide; acrylonitrile, methacrylonitrile and the
like ; Vinyl ethers such as alkyl vinyl ethers, hydroxyalkyl vinyl
ethers and alkoxyalkyl vinyl ethers having 1 to 18 carbon
atoms; halogenated compounds such as vinyl chloride,
vinylidene chloride, vinyl fluoride, vinylidene fluoride, vinyl
bromide and the like Vinyls; vinylsilanes such as
trimethoxyvinylsilane, allyl acetate, allyl chloride, allyl alcohol,
dimethylallyl alcohol, trimethyl- (3-acrylamido-3-
dimethylpropyl) -an Niumukurorido, and acrylamide-2-
methylpropanesulfonic acid.
(Non-Final Act. 8–9 (citing Naoki ¶ 13.)
FF 9. Examiner finds that
[t]he content of the hydroxyalkyl group having 1 to 20 carbon
atoms in the modified PVA is preferably 0.1 to 25 mole%, more
preferably 0.3 to 15 mole % . . . and the degree of
saponification of the modified PVA of the invention is
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preferably 75 to 99.95 mole%, more preferably 82 to 99.9
mole%, more preferably 85 to 99 mole%, within the range
having water solubility or water dispersibility. More preferably
7 mole%, and particularly preferably 90 to 99.0 mole%.
(Non-Final Act. 8 (citing Naoki ¶ 11).)
ANALYSIS
Based on the combination of Denuell and Naoki, Examiner concludes
that, before the effective filing date of Appellant’s claimed invention , it
would have been prima facie obvious to utilize Naoki’s “polyvinyl alcohol
copolymer having hydrolysis degrees from 60 to 99.9 %, where the
polyvinyl alcohol copolymer contains comonomers with anionic groups
selected from carboxyl- and/or sulfonic acid groups and that the polyvinyl
alcohol copolymer contains 0.1 to 30 mole% of the comonomers with
anionic groups” as the protective colloid in Denuell’s method of preparing
microcapsules (see Non-Final Act. 9–10; see also FF 1–9).
As discussed above, Denuell discloses:
During the reaction between the isocyanates and the amines, a
protective colloid must be present. This is preferably a
polyvinylpyrrolidone (PVP). Protective colloids are polymer
systems which, in suspensions or dispersions, prevent a
clumping together (agglomeration, coagulation, flocculation) of
the emulsified, suspended or dispersed substances. During
solvation, protective colloids bind large amounts of water and
in aqueous solutions produce high viscosities depending on the
concentration. Within the context of the process described
herein, the protective colloid may also have emulsifying
properties. The aqueous protective colloid solution is likewise
preferably prepared with stirring.
(FF 3.) Thus, although Denuell prefers PVP, Denuell defines a class of
protective colloids that, absent evidence to the contrary, reads on the
polyvinyl alcohol copolymer containing comonomers with anionic groups
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and hydrolysis degrees from 60 to 99.9 %, used in Naoki’s method of
preparing microcapsules (see FF 7–9). Because Denuell does not limit the
scope of its protective colloid to PVP, we agree with Examiner’s conclusion
that it would have been prima facie obvious to use the protective colloid
disclosed by Naoki (see Non-Final Act. 9–10; see also Ans.6 4). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that “Denuell only discloses the non-ionic PVP as a protective
colloid” (Appeal Br. 13). For the same reasons we are not persuaded by
Appellant’s contention that “(i) Naoki does not teach any problems
associated with Denuell’s non-ionic PVP protective colloid that might be
solved with Naoki’s modified PVA, and (ii) Denuell does not use anionic
water-soluble polymer protective colloids that create a problem to be solved
by Naoki’s modified PVA” (id.). On this record, Appellant’s claim “recites
a combination of elements that were all known in the prior art, and all that
was required to obtain that combination was to substitute one well-known . .
. agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012). “Express suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982).
For the foregoing reasons, we are not persuaded by Appellant’s
contentions relating to whether a person of ordinary skill in this art would

6 Examiner’s July 9, 2020, Answer.
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have had a reasonable expectation of success in using Naoki’s protective
colloid in Denuell’s method of preparing microcapsules (Appeal Br. 17–18;
see also Reply Br.7 2–3). See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988) (“Obviousness does not require absolute predictability of success . . .
all that is required is a reasonable expectation of success.”).
“Disclos[ure of] a multitude of effective combinations does not
render any particular formulation less obvious.” Merck & Co. Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Stated
differently, “[r]eading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put into
the last opening in a jig-saw puzzle. It is not invention.” Sinclair & Carroll
Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945). Therefore, we are not
persuaded by Appellant’s contention that it would not have been prima facie
obvious at the time of Appellant’s claimed invention to select “Naoki’s
Modified PVA with Anionic Comonomer” from the various protective
colloids disclosed by Naoki (Appeal Br. 14 (emphasis omitted)). For the
same reason, we are not persuaded by Appellant’s contention that Examiner
relied upon impermissible hindsight (see id. at 14–15; cf. Ans. 6–8).
As Examiner explains, Denuell and Naoki both relate to “methods of
producing microcapsules” (Non-Final Act. 9; see also FF 1–9). Naoki
discloses that its microcapsules can contain, inter alia, agrochemicals (FF 7).
Denuell more precisely states that its microcapsules may contain
agrochemicals, such as “pesticides” (see FF 5). Thus, not only is (1) the art
from the same field of endeavor, it is (2) reasonably pertinent to the

7 Appellant’s September 9, 2020, Reply Brief.
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particular problem with which the inventor is involved, i.e., the production
of microcapsules containing agrochemicals, such as pesticides. See In re
Clay, 966 F.2d 656, 658–9 (Fed. Cir. 1992) (stating the two criteria for
determining whether prior art is analogous). Thus, we are not persuaded by
Appellant’s contentions that because Naoki’s microcapsules are “suitable as
starting materials for manufacturing pressure-sensitive recording sheets,”
“Naoki is not from the same field of endeavor as the claimed invention, and
Naoki is not pertinent to the problem addressed by the claimed process and
corresponding microcapsules. Accordingly, Naoki is non-analogous art and
[is] not proper for combination with Denuell in the present obviousness
rejection” (Appeal Br. 15–16; cf. Ans. 9–10).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 16 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Denuell and Naoki is
affirmed. Claims 17–28 are not separately argued and fall with claim 16.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–28 103 Denuell, Naoki 16–28

TIME PERIOD FOR RESPONSE
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)(1)(iv) (2019).

AFFIRMED