BASF SEDownload PDFPatent Trials and Appeals BoardAug 25, 20212020006347 (P.T.A.B. Aug. 25, 2021) 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. 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SE, Ludwigshafen, Germany” (Appellant’s March 26, 2020, Appeal Brief (Appeal Br.) 3). 2 Pending claims 29–35 stand withdrawn from consideration (see Appeal Br. 5). Appeal 2020-006347 Application 15/307,143 2 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.) Appeal 2020-006347 Application 15/307,143 3 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. Appeal 2020-006347 Application 15/307,143 4 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 Appeal 2020-006347 Application 15/307,143 5 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 Appeal 2020-006347 Application 15/307,143 6 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 Appeal 2020-006347 Application 15/307,143 7 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. Appeal 2020-006347 Application 15/307,143 8 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. Appeal 2020-006347 Application 15/307,143 9 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 Copy with citationCopy as parenthetical citation