Ex Parte Brothers et al

Patent Trial and Appeal Board

Jan 13, 2017

13965317 (P.T.A.B. Jan. 13, 2017)

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.
13/965,317 08/13/2013 PAUL DOUGLAS BROTHERS FL0449-US-CNT[2] 5560
129406 7590 01/18/2017
The Chemours Company
Patent Legal Group
1007 Market Street
7028-1
Wilmington, DE 19801
EXAMINER
BUIE-HATCHER, NICOLE M
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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):
patentlegal @ chemours .com
g wen. a. wilson @ chemours .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL DOUGLAS BROTHERS and
SUBHASH VISHNU GANGAL
Appeal 2015-006620
Application 13/965,317
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—29 and 31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action mailed May 27, 2014
(“Final Act.”), the Appeal Brief filed January 26, 2015 (“App. Br.”), the
Examiner’s Answer mailed April 30, 2015 (“Ans.”), and the Reply Brief
filed June 29, 2015 (“Reply Br.”).
2 Appellants identify the real party in interest as The Chemours Company
FC, LLC, a wholly owned subsidiary of E.I. du Pont De Nemours and
Company. App. Br. 2.
Appeal 2015-006620
Application 13/965,317
The subject matter on appeal relates to a process for polymerizing a
fluorinated monomer in an aqueous medium using a fluoropolyether acid or
salt having a number average molecular weight of at least about 800 g/mol
in combination with a fluorosurfactant having a carbon chain length of no
greater than 6. Spec.3 1,11. 8—9, and Spec. 3,11. 25—29. Claim 1, reproduced
below with key disputed limitations italicized, is illustrative of the claims on
appeal.
1. A process comprising polymerizing at least one fluorinated
monomer in an aqueous medium containing initiator and
polymerization agent to form an aqueous dispersion of
particles of fluoropolymer, said polymerization agent
comprising:
fluoropolyether acid or salt thereof having a number
average molecular weight of at least about 800 g/mol; and
fluorosurfactant having the formula:
[R^Os-tL-A*] Y+
wherein:
R1 is a linear or branched partially or fully fluorinated
aliphatic group which may contain ether linkages;
n is 0 or 1;
L is a linear or branched alkylene group which may be
nonfluorinated, partially fluorinated or fully fluorinated and
which may contain ether linkages;
A' is an anionic group selected from the group
consisting of carboxylate, sulfonate, and sulfonamide anion; and
Y+ is hydrogen, ammonium or alkali metal cation;
with the proviso that the chain length ofR'-On-L- is not
greater than 6 atoms,
3 Application 13/965,317, Aqueous Polymerization of Fluorinated Monomer
Using Polymerization Agent Comprising Fluoropolyether Acid or Salt and
Short Chain Fluorosurfactant, filed August 13, 2013 (hereinafter “Spec.”).
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Application 13/965,317
wherein said polymerization agent comprises a minor
amount of said fluoropolyether acid or salt thereof and a major
amount of said fluorosurfactant; and
wherein said polymerizing produces less than about
10 wt% undispersed fluoropolymer based on the total weight of
fluoropolymer produced.
REJECTIONS ON APPEAL4
1. Claims 1—12, 14—26, 28, 29, and 31 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Morgan et al.
(US 6,395,848 Bl, issued May 28, 2002) (hereinafter “Morgan”)
in view of GB 1292268 (published Oct. 11, 1972) (hereinafter
“GB ’268”);
2. Claim 27 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Morgan in view of GB ’268, as evidenced by
Carlson (US 4,029,868, issued June 14, 1977) (hereinafter
“Carlson”); and
3. Claims 1—6, 13—26, and 28, 29, and 31 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Morgan in view of
GB 836741 (published June 9, 1960) (hereinafter “GB ’741”).
4 In the Final Office Action, the Examiner inadvertently lists claim 30 as
rejected under pre-AIA 35 U.S.C. § 103(a) over Morgan in view of GB ’268
(Rejection 1) and under pre-AIA 35 U.S.C. § 103(a) over Morgan in view of
GB ’741 (Rejection 3). Final Act. 3,6. As the Examiner points out,
claim 30 was previously canceled. Ans. 9. Thus, we consider the
typographical error in the Final Office Action regarding claim 30 to be
harmless error.
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Application 13/965,317
DISCUSSION
Rejections 1 & 2
The Examiner finds that Morgan discloses a process for polymerizing
at least one fluorinated monomer in an aqueous medium containing an
initiator and dispersing agent to obtain an aqueous dispersion of particles of
fluoropolymer, where the dispersing agent is a combination of at least two
fluorosurfactants: (1) at least one of the fluorosurfactants being a
perfluoropolyether carboxylic acid or sulfonic acid or salt thereof; and (2) at
least one of the fluorosurfactants being a fluoroalkyl carboxylic or sulfonic
acid or salt thereof, or fluoroalkoxy aryl sulfonic acid or salt thereof (Final
Act. 3 (citing Morgan 2:56—65)). Example 2 in Morgan, cited by the
Examiner on page 3 of the Final Office Action, uses a major amount of a
fluoroalkyl fluorosurfactant (6,2-TBS) and a minor amount of a
perfluoropolyether fluorosurfactant (PFPE-2) (Morgan 16:6—16). Although
the Examiner finds that Morgan discloses the second type of
fluorosurfactants include fluoroalkyl carboxylic acid and salts thereof having
6—20 carbon atoms, preferably 6—12 carbon atoms (Ans. 10 (citing 4:22—
25)), the Examiner acknowledges that Morgan does not limit the fluoroalkyl
carboxylic acid and salts thereof to having no more than 6 carbon atoms
(Final Act. 3). The Examiner, however, finds that GB ’268 teaches the
dimer of hexafluoropropene epoxide and carboxylic salts thereof (Final Act.
4 (citing GB ’268 1,11.13—20)). The Examiner finds GB ’268 teaches that
the carboxylic acid salts of the dimer of hexafluoropropene epoxide are very
active wetting agents and are useful in the dispersion polymerization of
fluoropolymers (Final Act 4 (citing GB ’268 1,11. 21—24)). Based on that
teaching, the Examiner finds that one of ordinary skill in the art would have
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Application 13/965,317
been motivated to substitute GB ’268’s carboxylic acid salt of the dimer of
hexafluoropropene epoxide, which has no more than 6 carbon atoms, for the
fluoroalkyl fluorosurfactant in Morgan’s polymerization process (Final
Act. 4).
Appellants argue that short chain fluorosurfactants, such as GB ’268’s
dimer acid, have poor surfactant properties (e.g., high surface tension), and
when used alone as a polymerization agent, cause higher amounts of
undispersed polymer (coagulum) in fluoropolymer polymerization. App.
Br. 6—8. Thus, Appellants contend that the Examiner erred in finding that
one of ordinary skill in the art would have been motivated to substitute
GB ’268’s short chain surfactant for Morgan’s long chain surfactant. See id.
at 4.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, as the Examiner points out, a reference may be relied upon for all
that it would have reasonably suggested to one of ordinary skill in the art.
See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (“‘[T]he fact that
a specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’”).
Although the fluoroalkyl surfactants exemplified in Morgan have
8 carbon atoms (e.g., 6,2-TBS), Morgan broadly discloses that fluoroalkyl
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Application 13/965,317
carboxylic acids and salts thereof having 6 to 20 carbon atoms, preferably 6—
12 carbon atoms, are useful dispersing agents in processes for polymerizing
fluoromonomers (Morgan 4:22—25). Thus, Morgan would have suggested to
one of ordinary skill in the art to use fluoroalkyl carboxylic acids and salts
thereof with as few as 6 carbon atoms (“short chain” fluoroalkyl carboxylic
acids and their salts) in combination with perfluoropolyether carboxylic
acids or salts thereof (Morgan 2:56—65). Because GB ’268 teaches that
carboxylic acid salts of hexafluoropropene epoxide, which have 6 carbon
atoms, are used in dispersion processes for polymerization of
fluoropolymers (GB ’268 1:21—24), such as the process disclosed in
Morgan, one of ordinary skill in the art would have been motivated to
substitute a carboxylic acid salt of the dimer hexafluoropropene epoxide, as
taught in GB ’268, for the fluoroalkyl fluorosurfactant in Morgan’s
polymerization process (e.g., instead of 6,2-TBS) in order to obtain the
predictable result of using GB ’268’s carboxylic acid salt in accordance with
its established function as a wetting agent. See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (In assessing the obviousness of claims to a
combination of prior art elements, the question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”). Thus, Appellants have not persuaded us
that the reason supporting the Examiner’s conclusion of obviousness is
erroneous.
Appellants argue that the statement that the “carboxylic acid salts are
very active wetting agents and are used, for example, in the dispersion
polymerization of fluoropolymers,” relied upon by the Examiner, is
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Application 13/965,317
unsupported by any polymerization data and thus is “not enabled.” App.
Br. 9.
A prior art patent is presumed to be enabled. See, e.g., In re Antor
Media Corp., 689 F.3d 1282, 1287-88 (Fed. Cir. 2012). GB ’268 teaches
that the carboxylic acid salts of the dimer of hexafluoropropene epoxide are
used in the dispersion of fluoropolymers. GB ’268 1:21—24. Data in
Appellants’ Specification demonstrates that the ammonium salt of the dimer
acid disclosed in GB ’268 lowers the surface tension of water, albeit not as
much as other surfactants. See Spec. 29—30 (Tables A and B); compare
Example III, identified as Appellants’ as the ammonium salt of GB ’268’s
dimer acid, with Example VI (Comp.) and Example IX (Comp.), identified
by Appellants as ammonium perfluorooctanoate (C8) and 6,2-TBS,
exemplified in Morgan. Additional data in Appellants’ Specification
demonstrates that a dimer acid salt (DAS) is useful for polymerization of
fluoromonomers, albeit producing more undispersed polymer (coagulum)
when used alone than when used in combination with an ammonium salt of
fluoropolyether acid (PFPEA). See Spec. 35 (Tables 2A and 2B); compare
Comp. Ex.’s 5—7, using only DAS, with Ex.’s 1—3, using PFPEA in
combination with DAS. Although salts of GB ’268’s dimer acid may have
weaker surfactant properties (e.g., surface tension) or produce higher
amounts of undispersed polymer when used in the polymerization of
fluoromonomers, Appellants have not persuasively argued or presented
evidence demonstrating why a person of ordinary skill in the art reading
GB ’268 would have had to engage in undue experimentation in order to use
the salts of the short chain dimer acid disclosed in GB ’268, having 6 carbon
atoms, in a dispersion process for polymerization of fluoropolymers, such as
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Application 13/965,317
the process disclosed in Morgan. Nor have Appellants presented evidence
demonstrating that salts of the short chain dimer acid disclosed in GB ’268
would not work in such a polymerization process. Thus, Appellants’
argument is not persuasive of reversible error in the Examiner’s rejections.
Appellants argue that neither GB ’268 nor Morgan teach producing a
undispersed fluoropolymer level of less than about 10 wt% and “the
Examiner’s determination that the claimed level of undispersed
fluoropolymer would necessarily result from the substitution of the dimer
acid from GB ’268 into the Morgan et al process is clearly erroneous.” App.
Br. 10, 12.
The mere recitation of a property or characteristic not disclosed
by the prior art does not necessarily confer patentability to a
composition or a method of using that composition. See In re Skoner,
517 F.2d 947, 950 (CCPA 1975). The Examiner must provide a basis
in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily
flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
The Examiner’s position that Morgan and GB ’268 teach “all
the claimed ingredients, claimed amounts, and substantially similar
process of making” is supported by a preponderance of the evidence
(Final Act. 4). Morgan’s process for polymerizing a fluorinated
monomer is similar to Appellants’ claimed process and uses a
combination of a perfluoropolyether fluorosurfactant and a fluoroalkyl
fluorosurfactant in the same amounts (i.e., a minor amount of the
fluoropolyether acid or salt and a major amount of the fluoroalkyl
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Application 13/965,317
fluorosurfactant) as recited in the claims. Morgan 2:56—65, 16:6—16
(Example 2). Appellants’ Specification describes using the same
perfluoropolyether carboxylic acid (Krytox® 157) as used in Morgan
and the same dimer acid salts as used in GB ’268. Compare Spec. 11,
11. 1—17 (which explicitly mentions GB ’268), Spec. 27,11. 24—32, and
Spec. 35 (Table 2A and 2B) with GB ’268 1:13—17 and Morgan 13:1—
22 (Table 1). Thus, we are not persuaded by the Appellants’
argument of reversible error in the Examiner’s determination that the
claimed level of undispersed fluoropolymer would necessarily result
from the substitution of the dimer acid from GB ’268 in Morgan’s
process.
Where the Examiner establishes a reasonable expectation of
inherency and thereby evinces that a claimed process appears to be
identical to a process disclosed by the prior art and/or that the
products claimed by the applicant and disclosed in the prior art appear
to be the same, the burden is properly shifted to the applicant to show
that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254—56 (CCPA 1977).
The data in Appellants’ Specification and the Declaration of
Paul Douglas Brothers (hereinafter “Brothers Declaration”)
demonstrate that when the dimer acid is employed alone as the
polymerization agent, it produces high undispersed polymer levels.
See Spec. 35; see also Brothers Declaration 4—5 (Table I and II).
Appellants, however, have not shown that using the carboxylic acid
salts of the dimer acid disclosed in GB ’268 as the fluoroalkyl
fluorosurfactant in Morgan’s polymerization process in combination
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Application 13/965,317
with Morgan’s perfluoropolyether acid or salt would not produce less
than about 10 wt% undispersed fluoropolymer (or less than about 3
wt% undisposed fluoropolymer, as recited in claim 31) based on the
total weight of the fluoropolymer produced.
Appellants also rely on the data in their Specification and the Brothers
Declaration as evidence that significantly lower surface tension values are
achieved when short chain dimer acid salts are used in combination with a
fluoropolyether acid or salt as compared to using short chain dimer acid salts
alone. App. Br. 18—20. Appellants argue that the Examiner erred by failing
to properly consider the unexpected results. App. Br. 18.
We are not persuaded by Appellants’ argument because the Examiner
has properly considered Appellants’ evidence of unexpected results, but
explains that the evidence is not persuasive because: (1) it does not provide
a comparison with the closest prior art, e.g., Morgan, which requires a
combination of a fluoropolyether acid or salt and a fluoroalkyl acid or salt,
and (2) is not commensurate in scope with the claims, which are open to
using the fluoropolyether acid or salt and fluorosurfactant in any amount as
long as the polymerization agent comprises a minor amount of the
fluoropolyether acid or salt and a major amount of the fluorosurfactant.
Ans. 13. For these same reasons, we do not find Appellants’ evidence
sufficient to rebut the Examiner’s prima facie case of obviousness.
In sum, for the reasons stated in the Final Office Action, the
Examiner’s Answer, and above, a preponderance of the evidence, taking into
account Appellants’ evidence of unexpected results, favors the Examiner’s
conclusion of obviousness as to claims 1—12, 14—26, 27—29, and 31.
Accordingly, we sustain rejection of claims 1—12, 14—26, 28, 29, and 31
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under pre-AIA 35 U.S.C. § 103(a) over Morgan in view of GB ’268, and we
also sustain the rejection of claim 27 under pre-AIA 35 U.S.C. § 103(a) over
Morgan in view of GB ’268, as evidenced by Carlson.5
Rejection 3
The Examiner’s finding regarding Morgan are the same as those
discussed above with respect to Rejections 1 & 2.
The Examiner finds GB ’741 is concerned with a process for
polymerizing tetrafluoroethylene to obtain an aqueous colloidal polymer
dispersion, and teaches using dispersing agents such as perfluoro-n-pentane
sulfonic acid, ammonium perfluoro-n-hexanesulfonate, and potassium
perfluoro-n-hexane sulfonate (Final Act. 7 (citing GB ’741 1,11. 13—17, 46—
52)). The Examiner finds that GB ’741 teaches that to be effective in
polymerizing fluoropolymers in aqueous media, the dispersing agent should
preferably have a carbon chain length of 5 to 10 to ensure a high degree of
surface activity and solubility in water (Final Act. 7 (citing GB ’741 1:35—
43)). Based on that teaching, the Examiner finds that one of ordinary skill in
the art would have been motivated to use ammonium perfluoro-n-
hexanesulfonate or potassium perfluoro-n-hexane sulfonate, each of which
has no more than 6 carbon atoms, as a fluoroalkyl fluorosurfactant in
Morgan’s polymerization process (Final Act. 4).
Appellants argue that the two examples in GB ’741 employ dispersing
agents with a carbon chain length of 7 and 8, and thus, when the disclosure
of GB ’741 is considered in its entirety, one of ordinary skill in the art would
5 Appellants’ argument that Carlson “adds nothing which would support the
Examiner’s position” in Rejection 1 does not amount to a separate
substantive argument with respect to claim 27 subject to Rejection 2.
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clearly have no reason to select a fluorosurfactant with no more than 6
carbon atoms, absent hindsight reasoning. App. Br. 15—16.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. As the Examiner points out, a reference may be relied
upon for all that it would have reasonably suggested to one having ordinary
skill the art, including non-preferred embodiments. Merck, 874 F.2d at 807.
Morgan broadly discloses that fluoroalkyl surfactants carboxylic acids and
salts thereof having 6 to 20 carbon atoms, preferably 6—12 carbon atoms, are
useful dispersing agents in processes for polymerizing fluoromonomers
(Morgan 4:22—25). Thus, Morgan would have suggested to one of ordinary
skill in the art to use fluoroalkyl carboxylic acid salts with a little as 6 carbon
atoms (“short chain” fluoroalkyl carboxylic acids) in combination with
perfluoropolyether carboxylic acids or salts thereof (Morgan 2:56—65).
Because GB ’741 teaches that dispersing agents should preferably have a
carbon chain length of 5 to 10 to ensure a high degree of surface activity and
solubility, one of ordinary skill in the art would have been motivated to use
any of the dispersing agents disclosed in GB ’741, including a dispersing
agent having a carbon chain length of 6 (e.g., ammonium perfluoro-n-
hexanesulphonate) in Morgan’s polymerization process (e.g., instead of 6,2-
TBS). See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is
not limited to the disclosure of specific working examples.”); see also In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the . . .
application.”). Moreover, Appellants do not address the Examiner’s reliance
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on Morgan for teaching fluoroalkyl fluorosurfactants having 6—20 carbon
atoms. See Reply Br. 4, 5; see also In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“[0]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”).
As with Rejections 1 and 2, the Appellants argue that the Examiner
erred by failing to properly consider the unexpected results. App. Br. 18.
For the same reasons as discussed above with regard to Rejections 1 and 2,
we agree with the Examiner that Appellants’ evidence of unexpected results
is not sufficient to overcome the determination of obviousness. See Ans. 13.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—29 and
31 are affirmed.
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
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