Ex Parte 6,454,902 et al

Patent Trial and Appeal Board

Apr 10, 2019

95002397 (P.T.A.B. Apr. 10, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,397 09/15/2012 6,454,902 10007-114RX1 1050
96039 7590 04/10/2019
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
UNITED STATES OF AMERICA
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
04/10/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SNF SAS
Requester and Appellant

v.

CIBA SPECIALITY CHEMICALS WATER TREATMENTS LTD.
Patent Owner and Cross-Appellant
____________

Appeal 2018-001194
Reexamination Control 95/002,397
Patent 6,454,902 B1
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
WESLEY B. DERRICK, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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On August 16, 2018, Patent Owner, Ciba Speciality Chemicals Water
Treatments Ltd. (“Patent Owner”), requested rehearing under 37 C.F.R.
§ 41.79(a)(4) (“Request”) of our Final Decision on Appeal under 37 C.F.R.
§ 41.77(f) mailed July 16, 2018 (“41.77(f) Decision”) and the Decision on
Appeal mailed August 19, 2016 (“2016 Decision”). Third-Party Requester
SNF SAS (hereinafter “Requester”) did not file comments under 37 C.F.R.
§ 41.79(c) in opposition to Patent Owner’s Request.
Patent Owner raised the following points in the Request:
1) the Board erred by not designating the affirmance of the
Examiner’s determination that claims 2–6, 11–13, 15–17, 19–25,
and 52–54 were obvious over WO ’9731 and EP ’1202 as a new
ground of rejection;
2) the Board erred by finding features in claim 13 inherent that do not
necessarily flow from the cited reference (WO ’973);
3) the Board erred by not designating the rejection of claim 10 as a
new ground of rejection and in its interpretation of EP ’120 with
regard to claim 10;
4) the Board erred by analyzing claims 44 and 51 in a manner
inconsistent with its analysis of claim 10;
5) the Board erred in its analysis of claims 22 and 54 by failing to
consider the prior art as a whole; and

1 Kettunen, WO 98/24973, June 11, 1998 (“WO ’973”).
2 Nakamura, WO 97/23691, July 3, 1997 (WO ’691, as evidenced by its
English equivalent EP 0 877 120 A1 (“EP ’120”).
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6) the Board erred in its analysis of claim 18 by improperly shifting
the burden to the Patent Owner to demonstrate patentability, rather
than requiring the Requester and Examiner to demonstrate non-
patentability.
(Request 10–11.)
Point 1
Patent Owner contends that in affirming the Examiner’s rejection of
claim 13 as obvious in the 2016 Decision, the Board articulated facts and
rationales not applied by the Examiner, such that the Board should have
articulated its affirmance a new ground of rejection. (Request 11–13.) In
particular, Patent Owner argues that the Board relied on U.S. Patent No.
5,676,796 (“the ’796 Patent”) to articulate additional reasons why one of
ordinary skill in the art would have used the claimed cationic polymers
beyond the reasons set forth by the Examiner. (Request 12 (citing 2016
Decision 11, 12; ACP 11–12; RAN 11–12).)
In its argument, by incorporating footnote 9 into the body of the
quote, Patent Owner sets forth a representation of the 2016 Decision
implying that footnote 9 of the 2016 Decision was the thrust of the analysis.
(See 2016 Decision 11, n.9.) We observe that this modification of the
quoted passage misconstrues the actual decision as grounded on the subject
matter of the footnote, rather than the body text. However, to the extent that
footnote 9 can be interpreted as containing additional fact findings and
rationale beyond that set forth by the Examiner, we clarify that our
affirmance is of the Examiner’s rejection, which does not depend in any way
on the statements made in footnote 9. Indeed, the 2016 Decision states:
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As a result, the Examiner had sufficient basis to support the
position that all preferred cationic acrylamide-based polymers
disclosed in WO ’973 having a molecular weight of 1 million to
20 million would have intrinsic viscosities within the range
recited in the claims.
(2016 Decision 11.)
Similarly, we withdraw any reliance the statements on page 12 of the
2016 Decision, as pointed to by Patent Owner, as being necessary to the
2016 Decision. Specifically, we withdraw any perceived reliance on the
statements reproduced below from the 2016 Decision, page 12, as a rationale
to affirm the Examiner’ rejection.
Moreover, EP ’120 teaches an intrinsic viscosity range for a
cationic copolymer of 5 to 30 dl/g and negative results if it is
outside of this range. (EP ’120, p. 7, ll. 31-34.) Thus, an
intrinsic viscosity of at least 4 dl/g would have been obvious to
use in the cationic copolymers disclosed in WO ’973 even if a
preferred intrinsic viscosity is not disclosed therein, which is
also consistent with the molecular weight calculation of the
Examiner.

Accordingly, we have considered Patent Owner’s request, and have
modified the 2016 Decision accordingly, but we decline to designate our
affirmance of claim 13 as a new ground of rejection.
Point 2
Patent Owner contends that the Board in its 2016 Decision erred in
finding that the intrinsic viscosity of 4 dl/g recited in claim 13 is an inherent
property of the water-soluble cationic polymer disclosed in WO ’973.
(Request 13–17.) Patent Owner argues that the Examiner’s selection of K/a
values is arbitrary, because other K/a combinations in the Polymer
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Handbook3 leads to intrinsic viscosities that do not read on the claims, and
that properties of poly(N,N’-dimethylacrylamide) are not necessarily
predictive of a cationic polyacrylamide. (Request 14.) Patent Owner argues
that the Polymer Handbook contains data for polyacrylamide, which is the
actual polymer described in WO ’973 and such data leads to an intrinsic
viscosity below the level recited in the claims. (Request 14–15.) Patent
Owner contends that the evidence of record (Jehn-Rendu Declaration4)
explains that molecular weight is not the only factor that contributes to
intrinsic viscosity, whereas Requester has provided no expert testimony or
other evidence to support the Examiner’s use of poly(N,N’-
dimethylacrylamide) to predict the intrinsic viscosity for a cationic
acrylamide. (Request 15.) Patent Owner contends that in the 2016
Decision, the Board improperly faulted Patent Owner for failing to provide
persuasive evidence that poly(N,N’-dimethylacrylamide) was an
inappropriate comparator. (Request 16.) Patent Owner contends that some
of the cationic polymers described in WO ’973 may have the claimed
intrinsic viscosity, but such disclosure is not specific enough to constitute an
inherent disclosure. (Request 16–17.)
Patent Owner appears to be re-presenting the same arguments made in
the briefing as opposed directing our attention to any particular points that

3 J. BRANDRUP & E. H. IMMERGUT, POLYMER HANDBOOK IV–21 (1966)
(“Polymer Handbook”).
4 Declaration of Christian Jehn-Rendu dated September 19, 2016 (“Jehn-
Rendu Declaration”). (Submitted with PATENT OWNER REQUEST TO
REOPEN PROSECUTION UNDER 37 C.F.R. § 41.77(b) filed September
19, 2016 (hereinafter “Request to Reopen” or “Req. to Reopen”).)
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we misapprehended or overlooked in the 2016 Decision in considering this
issue. That is, in the 2016 Decision, we explained that the Examiner’s
reliance on the K/a values for poly(N,N’-dimethylacrylamide) in the
Polymer Handbook was reasonable because the molecular weight ranges
preferred for the cationic acrylamide-based polymers preferred in WO ’973
were more consistent with the molecular weight ranges of the poly(N,N’-
dimethylacrylamide) polymers in the Polymer Handbook than for the
polyacrylamide polymers in the Polymer Handbook. (2016 Decision 11–
13.)5
Point 3
Patent Owner contends that the Board erred by failing to introduce a
new ground of rejection for claim 10 in the 41.77(f) Decision. (Request 17.)
Specifically, Patent Owner argues that the Board’s statement that the ’188
Patent6 was relied on in the 41.77(f) Decision only for the teaching of
rheological oscillation values from branched polymers in an aqueous
solution is at odds with the 2016 Decision, which relied on the ’188 Patent
for motivation to use polymers having the claimed rheological oscillation
values and for the use of branched polymers. (Request 18.) Patent Owner

5 Patent Owner’s arguments with respect to the Jehn-Rendu Declaration
submitted after the 2016 Decision, with the Request to Reopen (Request 15)
have not been considered as such portions of the Jehn-Rendu Declaration
submitted with Patent Owner’s Request to Reopen were not entered for
consideration. (See Corrected Remand Order entered February 28, 2017, 4,
indicating that the Jehn-Rendu Declaration was entered, but not as to
portions direct to claims not subjected to the new grounds of rejection in the
Decision; 41.77(f) Decision 2–3.)
6 U.S. Patent 5,958,188.
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contends that in the 41.77(f) Decision, the Board, rather than relying on the
’188 Patent, relied on EP ’120 for a general motivation to increase water
solubility. (Request 18–19.) Patent Owner contends that it has not had an
opportunity to respond to the issues raised in the 41.77(f) Decision.
(Request 19.)
Patent Owner also contends that the Board erred in its interpretation
of EP ’120 in rejecting claim 10. (Request 19.) Specifically, Patent Owner
contends that the Board’s position that EP ’120 discloses branched cationic
polymers does not naturally flow from the disclosure therein. (Request 19–
21.)
We are not persuaded that we misapprehended or overlooked any
points in this regard. With respect to Patent Owner’s allegation that the
nature of our reliance on the ’188 patent changed between the 41.77(f)
Decision and the 2016 Decision, it appears that Patent Owner has
misunderstood the 41.77(f) Decision. In particular, by stating that “the ’188
patent is only relied upon in the [2016] Decision for the teaching of
rheological oscillation values [from] branched polymers in an aqueous
solution,” we intended to clarify that with respect to rheological oscillation
values, it was not the cationic or anionic nature of the polymer, but rather the
teaching with respect to branched polymers in general upon which we relied.
(41.77(f) Decision 7–8.) Indeed, in the 41.77(f) Decision, we stated:
In this regard, the disclosure of the ’188 Patent does not
particularly associate the tan delta values with respect to
whether the polymer is anionic or cationic, but rather attributes
the values to the tendency of branched polymers to dissolve (as
opposed to cross-link) in a given aqueous solution. (’188
Patent, col. 4, ll. 26–36.)
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(41.77(f) Decision 8.)
Thus, contrary to Patent Owner’s assertions, our reliance on the ’188
Patent did not change between the 2016 Decision and the 41.77(f) Decision.
Moreover, our reliance on EP ’120 did not change between the 2016
Decision and the 41.77(f) Decision. In both cases, we relied on EP ’120 for
the obviousness of optimizing the water soluble cationic polymer to a
branched water soluble polymer. (41.77(f) Decision 8 (expressly citing
2016 Decision 26–27).) Therefore, Patent Owner’s arguments in this regard
are without merit.
As to Patent Owner’s contention that the Board erred in its
interpretation of EP ’120 as disclosing branched polymers or block polymers
(Request 19–20; 41.77(f) Decision 8; 2016 Decision 26), we do not view
this as a point misapprehended or overlooked, but rather a disagreement as
to the disclosure of EP ’120. Simply put, we are of the view that the
inventors of the EP ’120 whose understanding is indicative of one of
ordinary skill in the art, by disclosing that a branched or block copolymer is
produced, meant just that. (EP ’120, 4, ll. 23–31.) Patent Owner’s
additional argument (Request 20–21) that none of the monomers have
polymerizable or crosslinkable functional groups are attorney argument
insufficient to outweigh the express disclosure of EP ’120.

Point 4
Patent Owner contends that the Board’s conclusions with respect to
the obviousness of claims 44 and 51 are inconsistent with the analysis of
claim 10, from which claim 44 and claim 51 depend. (Request 21–22 (citing
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41.77(f) Decision 6–8; 2016 Decision 25–27).) Specifically, Patent Owner
argues that if the dispersion polymerization methods in EP ’120 produce
branched polymers having the claimed tan delta values, there is no evidence
that the methods recited in claims 44 and 51 would result in the branched
cationic polymer having the claimed rheological oscillation properties such
that claim 10 and claims 44 and 51 cannot be rejected under the same
reasoning. (Request 22.)
Regarding claims 44 and 51, we do not agree with Patent Owner that
we misapprehended or overlooked product characteristics of the
polymerization methods for the cationic branched polymer recited in EP
’120 in considering the obviousness of the claims over the combination of
WO ’973 and EP ’120. Rather, in entering a new rejection in the 2016
Decision we explained that the ’188 Patent discloses branched cationic
polymers having the rheological oscillation properties prepared by reverse
phase emulsion polymerization. (2016 Decision 25–27.) We do not see this
analysis as being in conflict with our analysis in claim 10, because as
expressed in the 2016 Decision, the ’188 Patent discloses that branched
polymers have rheological oscillation values which are preferably above 0.7.
(2016 Decision 26–27.) Thus, we are not persuaded that branched polymers
produced by the polymerization methods recited in claims 44 and 51 would
be unsatisfactory for retention and/or drainage.

Point 5
Patent Owner argues that with respect to claims 22 and 54, the Board
erred by failing to consider WO ’973 and EP ’120 as a whole. (Request 22.)
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In particular, Patent Owner contends that the Board erred in considering the
polymerization methods recited in claim 22 as merely less preferred
embodiments of EP ’120, because EP ’120 makes clear that disclosed
dispersion polymerization method is critical for the success of the invention.
(Request 23–24.) Patent Owner argues that the Board has selectively cited
teachings of EP ’120 in order to bolster a conclusion of obviousness while at
the same time disregarding teachings of EP ’120 that suggest the claims are
not obvious. (Request 24–25.) Patent Owner contends that WO ’973 is
directed to a method of making paper with additives that improve retention
and drainage such that it would be illogical to combine WO ’973 and EP
’120 in a way that would result in inferior drainage and retention. (Request
25.) Patent Owner argues that even if EP ’120 does not constitute a teaching
away, the Board has failed to establish why one of ordinary skill in the art
would have proceeded contrary to the teachings of EP ’120. (Request 25.)
Patent Owner also argues that the Board has improperly relied on the ’902
Patent for the proposition that polymerization methods recited therein are
conventional. (Request 26.)
We do not agree with Patent Owner that we misapprehended or
overlooked the importance of the method of polymerization disclosed in EP
’120 in obtaining the cationic polymers as recited in claim 13, from which
claims 22 and 54 depend. We expressly considered Patent Owner’s
argument regarding the disclosure in EP ’120 with respect to the use of
dispersion polymerization methods as opposed to other methods in the 2016
Decision in conjunction with claims 22 and 54, and found that EP ’120 does
not suggest that polymers produced by other polymerization methods,
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although less preferred, would be unsatisfactory for retention and/or
drainage. (2016 Decision 14–16.) We are not persuaded that WO ’973’s
disclosure of additives to improve retention and drainage would mean that
one of ordinary skill in the art would be dissuaded from using branched
cationic polymers produced by other methods. Indeed, WO ’973 discloses
only that the addition of cationic polymer in order “give better retention that
is obtained when not adding the component.” (WO ’973, 4, ll. 9–11.) Thus,
that the retention and drainage of cationic polymers produced by other
methods may be inferior than polymers produced by the method disclosed in
EP ’120, does not mean that use of such polymers would not have been
obvious to one of ordinary skill in the art.
In addition, we are of the view that Patent Owner has not considered
the prior art as a whole in arguing that one of ordinary art would have
understood in view of the disclosure in EP ’120 that cationic polymers
produced according to the dispersion method would have intrinsic viscosity
recited in the claims while cationic polymers produced according to other
methods would not have the intrinsic viscosity recited in the claims.
(Request 24.) That is, we stand by our analysis in the 2016 Decision that the
preferred polymers in WO ’973 having the molecular weights disclosed
therein would have intrinsic viscosities within the range recited in the
claims. (See 2016 Decision 9–13.)
Regarding Patent Owner’s argument that the Examiner and the Board
improperly relied on the ’902 Patent for disclosing that the recited
polymerization method are conventional (Request 25–26), we addressed this
argument in the 2016 Decision, in which we note that the ’902 Patent
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includes citations to examples of various prior art processes. (2016 Decision
16–17.) We are not persuaded that the ’902 Patent does not refer to
conventional polymerization techniques merely because these prior art
citations are not located in the Background section of the ’902 Patent.

Point 6
Patent Owner argues that for claim 18, the Board may not rely on EP
’893 for a disclosing that cellulosic suspensions free of filler were known
while ignoring another teaching therein that the use of anionic soluble
polymers gives inferior results. (Request 27–28.) Patent Owner also
contends that the Board has improperly required Patent Owner to prove non-
obviousness by somehow establishing that the selection of bentonite was
related to the absence of filler. (Request 28.) Patent Owner argues that the
Examiner and the Board must show that the skilled person would have
understood that EP ’893’s admonition against water-soluble anionic
polymers was unrelated to the decision to make unfilled paper. (Request
28.)
We are not persuaded that we misapprehended or overlooked any
aspects of the 41.77(f) Decision with respect to claim 18. In particular, we
expressly considered the disclosure in EP ’893 with respect to anionic
polymers as well as the Jehn-Rendu Declaration and concluded that the
evidence as a whole was insufficient to support the Patent Owner’s position.
(41.77(f) Decision 10–12.) We emphasize that we did not improperly shift
the burden to Patent Owner to prove non-obviousness. In this regard,
contrary to Patent Owner’s assertions, we did explain that EP ’893 does not
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itself relate the selection of whether to include filler in paper depending on
its use to any inferior results obtained by including anionic polymer in paper.
(41.77(f) Decision 9–12.) Thus, our position is that in view of WO ’973,
which discloses combinations of cationic and anionic polymer, combined
with the general knowledge that paper may be filled or unfilled, additional
evidence would have been needed to overcome the evidence in favor of
obviousness tying the filler to anionic polymer. This was not shifting the
burden, but merely an explanation of the weight accorded to the evidence on
each side of the obviousness inquiry with an explanation as to why the
evidence of obviousness outweighed the evidence of non-obviousness.

CONCLUSION
Therefore, we have considered Patent Owner’s request for rehearing
and have modified the Decision entered August 19, 2016 as discussed above.
However, we decline to make any changes as to the outcome of the 2106
Decision or the 41.77(f) Decision. Accordingly, Patent Owner’s Request for
Rehearing is denied.

DENIED

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ACP

PATENT OWNER:

MEUNIER CARLIN & CURFMAN LLC
999 PEACHTREE STREET NE
SUITE 1300
ATLANTA, GA 30309

THIRD-PARTY REQUESTER:

MINTZ LEVIN/SPECIAL GROUP
ONE FINANCIAL CENTER
BOSTON, MA 02111