Ex Parte Leyrer et al

Patent Trials and Appeals Board

Jun 21, 2019

13670889 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/670,889 11/07/2012
123223 7590 06/25/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Reinhold J. Leyrer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074048-0075-US (287507) 8845
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINHOLD J. LEYRER, CHRISTOPER ARISANDY,
and OUIDAD BENLAHMAR1
Appeal2018-005830
Application 13/670,889
Technology Center 1600
Before RICHARD M. LEBOVITZ, JAMES A. WORTH, and
ROBERT A. POLLOCK, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
The claims in this appeal are directed a thickener prepared by inverse
emulsion polymerization. The Examiner rejected the claims under 35
U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134, Appellants appeal the
Examiner's determination that the claims are unpatentable. We have
jurisdiction for the appeal under 35 U.S.C. § 6(b). The Examiner's decision
is affirmed-in-part.
1 The Appeal Brief ("Appeal Br." entered Dec. 27, 2017) lists BASF SE as
the Real Party in Interest. Appeal Br. 2.
Appeal2018-005830
Application 13/670,889
STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows:
1. Claims 22-28, 30, 31, 33, 35-40, 45 and 46 under pre-AIA 35
U.S.C. § 103(a) as obvious in view of Creamer et al. (U.S. Patent
Application Publication 2004/0258648, published Dec. 23, 2004)
("Creamer"), Moraes et al. (Moraes R.P., Graillat C., Jeanson G., Haw S.,
Favero C., McKenna T.F. "Evaluation of alternative comonomers for the
production of ASE and HASE thickeners," J. Colloid Interface Sci., 2010,
352(1):19-29 ("Moraes"), Blondel F. (WO 2010/078957 Al, published July
15, 2010) ("Blondel"), and Vanderhoff et al. (J.W. Vanderhoff, E.B.
Bradford, H.L. Tarkowski, J.B. Shaffer, and R.M. Wiley, "Inverse Emulsion
Polymerization," in POLYMERIZATION AND POL YCONDENSATION
PROCESSES, published Jan. 1, 1962, pages 32-51) ("Vanderhoff'). Final
Act. 3.
2. Claims 41 and 42 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Creamer, Moraes, Blondel, and Vanderhoff, and further in view of
McKay (McKay, T, Apr. 1, 2005, at
http://www.naturallycurly.com/curlreading/ curlproducts/ph-and-how-it-
relates-to-hair; accessed by the Examiner July 10, 2011) ("McKay"). Final
8-9.
3. Claims 43 and 44 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Creamer, Moraes, Blondel, and Vanderhoff, and further in view of
Johnson (Johnson, D. "Hair and Hair Care" in Cosmetic Science and
Technology, Series/Volume 17; New York, NY, 1997, page 196). Ans. 9-
10.
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4. Claims 22-28, 30, 31, 33, 35-40, 45-47 and 50 under pre-AIA 35
U.S.C. § 103(a) as obvious in view of Blondel, Moraes, and Vanderhoff.
Final Act. 10-11.
Independent claim 22 is reproduced below.
22. A thickener prepared by a process which comprises
obtaining a cationic polymer by inverse emulsion
polymerization of
a) 20 to 99.99% by weight, based on the cationic
polymer, of at least one water soluble ethylenically unsaturated
monomer comprising at least one cationic monomer, wherein
the cationic monomer is a compound of the formula (II)
wherein
R1 is Hor C1-C4-alkyl,
R2 is H or methyl,
R3 is C1-C4-alkylene,
R4, Rs and R6 are each independently Hor C1-C30-alkyl,
Xis -0- or -NH- and
' Y is Cl, Br, I, hydrogensulfate, or methosulfate,
b) 0.01 to 80% by weight, based on the cationic polymer,
of at least one ethylenically unsaturated associative monomer,
wherein the ethylenically unsaturated associative monomer is a
compound of the formula
(I) R-O-(CH2-CHR'-O)n-CO-CR"=CH2 (I)
wherein
R is C6-Cso-alkyl,
R' is Hor C1-C4-alkyl,
R" is Hor methyl, and
n is an integer from O to 100,
c) 0 to 0.3% by weight, based on the cationic polymer, of
at least one crosslinker, and
d) 0 to 0.3% by weight, based on the cationic polymer, of
at least one chain transfer agent,
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the temperature being kept constant during the inverse
emulsion polymerization and being at least 40°C and, after the
inverse emulsion polymerization has ended, an activator is
added to obtain the thickener.
CLAIM22
Claim 22 is directed to a thickener which is a cationic polymer. The
thickener is prepared by inverse emulsion polymerization of:
a) 20 to 99.99% by weight of "at least one water soluble ethylenically
unsaturated monomer comprising at least one cationic monomer" of formula
II·
'
b) 0.01 to 80% by weight of "at least one ethylenically unsaturated
associative monomer" of formula I;
c) 0 to 0.3% by weight of at least one crosslinker, and
d) 0 to 0.3% by weight of at least one chain transfer agent.
The claim requires that the temperature is "kept constant during the
inverse emulsion polymerization and being at least 40°C" and that an
activator is added to obtain the thickener after the inverse emulsion
polymerization has ended.
In response to an election requirement, Appellants elected TMAEMC
(2-trimethylammonioethyl methacrylate chloride) as a) and Cl 6E025Mac
(C16-Cl8-fatty alcohol-(ethylene glycol)2s ether methacrylate) as b).
Response to Species Election Requirement (May 14, 2013).
REJECTION 1 BASED ON CREAMER
The Examiner found that Creamer describes a polymer comprising a
monomer of the elected species a) in an amount encompassed by the claimed
range. Final Act. 3; Creamer ,-J,-J 25, 29. The Examiner also found that
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Creamer describes an ethylenically unsaturated associative monomer
("alkoxy poly( ethyleneoxy)ethyl methacrylate) as required by b) of claim
22, but not the specifically elected species Cl6E025Mac. Final Act. 4;
Creamer ,-J 27. To meet this deficiency, the Examiner cited the disclosure in
Moraes of the elected species Cl 6E025Mac, identified in Moraes under its
commercial name "PLEX 6954-0." Final Act. 4-5. The Examiner found
that Moraes describes that the addition of "an associative monomer to
acrylate copolymers leads to associations between the polymer chains which
enhance the viscosity." Id. at 4. The Examiner found that one of ordinary
skill in the art would have been motivated to have selected this monomer
because Moraes teaches that it is advantageous in a thickener and shown to
have improved transparency. Id. at 6.
The Examiner further relied upon the teachings in Blondel and
Vanderhoff for describing reverse emulsion polymerization at the claimed
temperature. Final Act. 5-6.
Appellants argue that Creamer does not describe the copolymer as a
thickening agent. Appeal Br. 8. A thickening agent or thickener is used to
increase the viscosity of a solution. Application Specification 5:23-24;
20:21-22. Appellants argue that Creamer describes the purpose of its
polymer is to form a stable hair fixative agent which is compatible with a
thickener, but not a thickener, itself. Id. at 9. Appellants contend there
would have been no reason to alter the polymers described in Creamer
"purportedly suggested by Moraes and Blondel'' because "those references
are specific to thickening polymers, whereas the polymer relied upon by the
Examiner in Creamer is not a thickening polymer." Id.
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Appellants points to Examples 14-27 of Creamer which all show
polymers having a pH of below 5. Appeal Br. 10. In contrast, Appellants
argue that Moraes teaches that its polymers only thicken at a pH value above
7. Id. Appellants explain that Moraes discloses that at pH above 7 "the
thickening of the HASE thickener results from repulsion of carboxylate
anions along the polymer backbone" and that "the disclosed associative
monomers only exhibit viscosity-increasing properties as long as the
polymers have anionic groups." Id.
Discussion
Creamer describes its invention as "directed to styling and
conditioning compositions for modifying and fixing hair comprising one or
more solution polymers." Creamer 1. Creamer discloses its polymer are
"multi-functional polymers for modifying hair." Id. at ,-J 6. Creamer teaches
that the polymers "are compatible when combined with additives including
neutralizers, surfactants and thickeners." Id. at ,-J,-J 6, 8. Creamer further
discloses:
The present invention provides multifunctional solution
polymers that have utility for modifying hair, said polymers
having an excellent balance of moisture (water) resistance
versus water sensitivity, polymers having good color stability,
good water stabilities, polymers that are non-flaking after
application, and polymers that are compatible with thickeners .
. . , providing clear, non-hazy hair formulations having stable
formulation viscosities over time. Moreover, the formulations
provide a smooth coating on hair, provide better adhesion to
hair follicles and skin surfaces, and improve the sheen and
glossiness of hair treated with the invented polymers. Inventors
discovered that the formulation compatibility, clarity and
viscosity stability problems associated with anionic emulsion
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polymers of the prior art are solved utilizing critical amounts of
one or more acid-containing monomers in the polymer.
Creamer ,i 31 ( emphasis added).
Based on these disclosures from Creamer, we find that Appellants'
argument that Creamer does not disclose that its polymer is a thickener is
supported by a preponderance of the evidence. Creamer describe the
polymers as solving "viscosity stability problems," but not as serving as a
thickener, itself. Table 1 of Creamer ( at pages 16-1 7) identified by the
Examiner as evidence that Creamer's polymer is a thickener (Ans. 3-4),
shows that different polymers produced by Creamer have different
viscosities, but does not demonstrate that the polymer is being used as a
thickener to increase the solution's viscosity. Rather, the polymer is
described as a hair fixative which provided a smooth coating on hair, better
adhesion to hair follicles and skin surfaces, and improved sheen and
glossiness of hair. Creamer ,i 31 (see paragraph reproduced above).
Moraes, on the other hand, describes polymers which are thickeners.
Specifically, Moraes describes "a hydrophobically-modified alkali soluble
emulsion (HASE) thickener" which is produced by grafting an associative
monomer to a polymer backbone. Moraes 19 ( col. 1 ). Moraes discloses:
When hydrophobic macromonomers, referred to as the
associative monomers (AM), are grafted in small amounts to
the polymer backbone, the hydrophobic moieties interact
among themselves, creating rheological modifiers called
associative polymers. The incorporation of AM enhances the
thickening power with respect to unmodified polymers of
similar molecular weight and therefore has been a source of
many studies in the last decades.
Moraes 19 ( col. 1) ( emphasis added).
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The Examiner found it would have been obvious to one of ordinary
skill in the art to have used the associative monomer PLEX 6954-0 (the
elected monomer species) of Moraes to increase the viscosity and
"thickening ability" of Creamer's polymers. Final Act. 7. The weakness of
this argument is that Creamer does not teach that its polymers are thickeners
or that it would be "advantageous" to make them more viscous as found by
the Examiner. Id. at 6. It was not disputed by Appellants that PLEX 6954-
0 is within the genus of monomers disclosed by Creamer as being "usefully
employed in the solution polymers of the invention." Creamer ,-J 27. But the
monomer is used in Creamer to prepare a copolymer by solution
polymerization (Creamer ,-J 22), and is not described as being "grafted" to a
polymer backbone as it is in Moraes to allow the hydrophobic moieties to
interact (Moraes 19). Creamer also recognizes "associative thickeners"
(Creamer ,-J 77), but does not characterize its own inventive polymer as one,
referring to it instead as a solution polymer (Creamer ,-J 79). For these
reasons, the Examiner's statement of the motivation to utilize Moraes' s
associative monomer in Creamer's polymer is not persuasive.
Appellants argue that Moraes discloses that its polymers thicken at a
pH above 7, while Creamer teaches a pH value below 7. Appeal Br. 10.
Appellants argue that one of ordinary skill in the art would not have used
Moraes' s associative monomer in the acid environment of Creamer. Id. at
11.
Appellants' argument is supported by a preponderance of the
evidence. The Examiner acknowledges that Creamer only exemplifies
acidic pHs, but states that a specific pH range is not required by Creamer.
Ans. 6. While we agree with this statement, the only guidance on pH
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provided by Creamer is in Examples 14-27 of Creamer, each which show a
polymer having a pH of below 5. Appeal Br. 10. Furthermore, Creamer
discloses that its inventors "discovered" that "utilizing critical amounts of
one or more acid-containing monomers in the polymer" solved "the
formulation compatibility, clarity and viscosity stability problems associated
with anionic emulsion polymers of the prior art." Creamer ,i 31; see also
Reply Br 2. On the other hand, Moraes expressly teaches "HASE polymers
thicken at a pH above 7 through repulsion of carboxylate anions along the
polymer backbone" (Moraes 19 (col. 1)) and provides evidence that "[n]o
significant changes in viscosity was observed in the range from 4 to 7"
(Moraes 24 ( col. 1 ). See also Moraes, Fig. 8. The Examiner did not
adequately explain why one of ordinary skill in the art would have chosen an
associative monomer which works at a pH above 7 to use in the polymer
described by Creamer that comprises critical acid-containing monomers in
which all the exemplified polymers are at an acid pH below 5.
In sum, while Moraes describes a monomer within the scope of
monomers described by Creamer, Moraes is using the elected monomer for a
different purpose than described by Creamer for its monomers and at a
different pH range. The Examiner has not adequately established that one
of ordinary skill in the art would have sought to use Moraes's associative
monomer grafted on to polymer backbone in Creamer's solution polymer.
The rejection of claims 22-28, 30, 31, 33, 35-40, 45 and 46 as
obvious based on Creamer is reversed.
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REJECTION 4 BASED ON BLONDEL, MORAES, AND V ANDERHOFF2
Rejection
The Examiner found that Blondel describes thickeners made by
inverse emulsion polymerization, where the thickener comprises "the
cationic monomer" as claimed. Final Act. 11. Appellants do not dispute
this cationic monomer of Blondel meets a) of claim 22.
The Examiner further found that "Blondel does not teach an
ethylenically unsaturated associative monomer of Cl 6E025Mac ( C 16-C 18-
fatty alcohol-( ethylene glycol)2s ether methacrylate) as elected [ for b) of
claim 22] or that the polymer is obtained at a constant temperature of at least
40°C." Final Act. 11-12. The Examiner found that "[t]hese deficiencies are
made up for by the teachings of Moraes et al. and Vanderhoff et al." Id.
The Examiner found that Moraes teaches "the addition of an
associative monomer to acrylate copolymers leads to associations between
the polymer chains which enhance the viscosity." Final Act. 12. The
associative monomer is b) of claim 22.
Claims 22 further recites: "the temperature being kept constant during
the inverse emulsion polymerization and being at least 40°C and, after the
inverse emulsion polymerization has ended, an activator is added to obtain
the thickener."
The Examiner found that Vanderhoff investigated the kinetics of
inverse emulsion polymerization and described conditions in which the
temperature is kept constant throughout the polymerization, which begins
after the addition of the initiator. Final 12-13. The Examiner also found
2 We considered Rejection 4, before Rejections 2 and 3, for clarity.
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that "Vanderhoff et al. further teach that the molecular weight and rate of
polymerization of the polymers increase with increasing temperature, with
70°C providing most increased rate of reaction and 50°C, 60°C, and 70°C
providing high molecular weight (e.g. Figures 4 and 5; pages 39 and 40)."
Final Act. 13.
The Examiner stated that "One of ordinary skill in the art would have
been motivated to select C 16-C 18-fatty alcohol-( ethylene glycol)2s ether
methacrylate [the elected species b) of claim 22] as it is taught to be an
advantageous thickener and was shown to have improved transparency."
Final Act. 13.
The Examiner found that it would be obvious to keep the
polymerization reaction at constant temperature as required by the rejected
claims because "Vanderhoff et al. teach the temperature is maintained during
the polymerization and demonstrate that by selecting the polymerization
temperature between 40-70°C one can control the rate of polymerization
and the molecular weight." Final Act. 13. The Examiner concluded:
One of ordinary skill in the art would have been motivated to
select the temperatures of 50°C, 60°C, or 70°C in order to
increase the molecular weight of the polymers of Blondel as
this would increase the viscosity of the resulting solution and
therefore increase the thickening ability of the invention ( e.g.
page 2, lines 8-11 ).
Ans. 14.
Species a) and b) of claim 22
Appellants state in the Appeal Brief that they "traverses the rejection
for at least the reasons discussed" in the rejection based on Creamer. Appeal
Br. 15. However, Appellants had argued that the rejection based on Creamer
was defective because Creamer does not described its polymers as
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thickeners. This defect is not present in this rejection because the Examiner
relied on Blondel for its teaching of the claimed polymer and these polymers
are characterized by Blondel as thickeners ("This invention relates to the
technical field of cationic cross-linked polymers and their uses as a
thickening agent." Blondel 1 :3-4.) Other arguments depended on the
combination of Creamer with other cited publications, and Creamer is not a
part of this rejection.
Constant temperature
Appellants contend that "Vanderhoff merely presents a series of
kinetic measurements at fixed temperatures in order to determine the rate
constant kt of the inverse emulsion polymerization of the above described
monomers" and that because "the rate constant kt is heavily dependent on
the reaction temperature, it is obvious to the skilled person that the
measurements shown in Vanderhoff have to avoid any heating steps which
would hamper the calculation of kt." Appeal Br. 13. For this reason,
Appellants contend that while "the skilled artisan would appreciate that the
temperature should be kept constant during kinetic measurements, nothing in
Vanderhoff would have motivated or suggested one skilled in the art to carry
out emulsion polymerization reactions at one specific constant temperature."
Id. Appellants also argue that that Vanderhoff doesn't teach the advantages
of polymerizing at a constant temperature. Appeal Br. 14.
This argument does not persuade us that the Examiner erred.
Vanderhoff describes carrying out the inverse emulsion
polymerization at a constant ("fixed") temperature as acknowledged by
Appellants. Appeal Br. 13. Even if the purpose of the experiments was to
study the kinetics of inverse emulsion polymerization, Appellants have not
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presented sufficient evidence that one of ordinary skill in the art would not
have recognized such conditions as useful for making a polymer by
emulsion polymerization. Appellants only provided attorney argument
which is unsupported by objective evidence. An argument made by counsel
in a brief does not substitute for evidence lacking in the record. Estee
Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Vanderhoff does not have to provide advantages of the constant
temperature as argued by Appellants. The constant temperature conditions
described in Vanderhoff are useful to carry out inverse emulsion
polymerization and do not have to be advantageous or better than other
alternatives in the art as long as they are operable to carry out inverse
emulsion polymerization, which Vanderhoff established they are. "[J]ust
because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012). A "finding that the prior art as a whole
suggests the desirability of a particular combination need not be supported
by a finding that the prior art suggests that the combination claimed by the
patent applicant is the preferred, or most desirable, combination." In re
Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Nonetheless, the Examiner
provided a well-reasoned explanation as to why Vanderhoff s conditions
would have been adopted: to control the polymer's molecular weight and
resulting viscosity and thickening ability. Ans. 14.
Appellants further argue with respect to Vanderhoff that:
the polymerization at higher temperatures of 60 or 70 °C results
in lower induction periods, an overall higher polymerization
rate, and a faster conversion rate, but also a smaller number of
polymer particles (see e.g., page 38, 2nd paragraph, pages 40
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and 45, Figure 12). Based on these data, the skilled person
would have naturally chosen a temperature profile of variable
temperatures to exploit the advantages and to circumvent the
disadvantages of only a single polymerization temperature.
Appeal Br. 13-14.
Claim 22 recites that "the temperature being kept constant during the
inverse emulsion polymerization and being at least 40°C." Vanderhoff
describes fixed temperatures above this range of 50°, 60°, and 70°C,
meeting the claimed limitation. Vanderhoff 3 7. Appellants did not establish
that the temperatures in Vanderhoff were not being kept constant as required
by the claims. Appellants' argument that the skilled worker would have
"chosen a temperature profile of variable temperatures to exploit the
advantages and to circumvent the disadvantages of only a single
polymerization temperature" because Vanderhoff allegedly describes
disadvantages at certain temperatures is not supported by objective evidence.
Specifically, Appellants did not provide objective evidence or an
explanation as to why such particle sizes would have discouraged one of
ordinary skill in the art from using the temperatures in Vanderhoff and that a
variable temperature would have been used instead. Attorney argument
alone is insufficient to establish this deficiency in Vanderhoff in the absence
of evidence that one of ordinary skill in the art would have implemented a
variable temperature to avoid the alleged disadvantages.
Blondel also is consistent with Vanderhoff. While Blondel may not
have used a constant temperature throughout the entire process, Blondel
does disclose holding the emulsion at 65°C for 60 minutes. Blondel 6: 1-2;
Final Act. 5. Accordingly, despite Appellants' arguments about the
disadvantages of these temperatures and holding the reaction constant for
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fixed periods of time, these conditions were known to be effective for
inverse emulsion polymerization.
Different solubility
Appellants also argue that "Blondel and Vanderhoff concern polymers
of very different solubility and thus one skilled in the art would not have
combined Blondel and Vanderhoff." Appeal Br. 15-16.
This argument is not persuasive. Vanderhoff was only relied upon by
the Examiner for teaching inverse emulsion polymerization at constant and
fixed temperature and that controlling polymerization in such a way also
controls the molecular weight of the resulting product. Final Act. 12-13.
Appellants did not provide evidence that constant temperature conditions
would not be effective in controlling the molecular weight, particularly when
Blondel polymerizes at 65°C, a temperature which falls within the range of
temperatures described in Vanderhoff. Thus, the Examiner found it obvious
to carry out the inverse emulsion polymerization reaction at a constant
temperature to control molecular weight and thickening ability as taught by
Vanderhoff. Appellants did not provide objective evidence that one of
ordinary skill in the art would have been dissuaded from applying
Vanderhoff to Blondel, simply because the solubility of the polymers
differed.
Unexpected results
Appellants contend that the thickeners described in Example 5 of the
Specification establish unexpected results. Appellants state that "thickeners
comprising cationic polymers prepared from both the ethylenically
unsaturated monomer of component a) and from an ethylenically unsaturated
associative monomer (Examples 5.2 and 5.3) exhibit a higher viscosity as
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compared to thickeners comprising cationic polymers prepared only from
component a) (Example 5.1)." Appeal Br. 14. Appellants state that the
"viscosity of such thickener can be significantly increased even more when
the polymerization is conducted at a constant temperature above 40°C,
leading to an improvement in thickener performance of approximately
30%." Id.
Appellants did not describe in the Appeal Brief the structure of the
thickeners that were used to establish the asserted unexpected results. 3
However, the Examiner found from reviewing the Specification that the
polymers comprise elected monomer species, TMAEMC and Cl 6E025Mac.
See Spec. 24-25, Examples 1.1 and 1.2 in Table 2. Thus, only a single
polymer (made with different concentrations of the monomers) was
compared to the same polymer without the associative monomer.
Appellants have not explained how the results obtained from only one
polymer species is sufficient to establish unexpected results for the full
scope of the claim which includes a genus of polymers comprising the
monomers of formulae II and I and a broad range of monomer amounts (20
to 99.99% by weight for formula II and 0.01 to 80% by weight for formula
II. Unexpected results must be "commensurate in scope with the degree of
protection sought by the claimed subject matter." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). When unexpected results are proffered by an
appellant to rebut a prima facie case of obviousness, the appellant must
3 Table 6 of the Specification states that example 5.2 is a "comparative
example." Spec. 30:5-7. However, Appellants state in the brief, as
indicated above, that it is a polymer comprising an associative monomer
within the scope of claim 22.
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"provide[] an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner" in
order to "establish that the evidence is commensurate with [the] scope of the
claims." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). One data point is
insufficient to "to ascertain a trend in the exemplified data which would
allow [ one having ordinary skill in the art] to reasonably extend the
probative value thereof." In re Kollman, 595 F.2d 48, 56 (CCPA 1979).
Here, Appellants must, therefore, demonstrate or explain why the result of
the single polymer would establish the asserted unexpected result for the full
scope of claim 22. We conclude they have not done so.
The Examiner set forth this objection in the Final Office Action on
pages 15-16, including identifying other deficiencies in the data which we
agree with but need not reiterate here. Appellants did not adequately
respond to the Examiner's well-reasoned statement as to why the data does
not overcome the obviousness rejection. Accordingly, we conclude that, for
the reasons stated here and by the Examiner, the data in the Specification is
inadequate to establish the non-obviousness of the full scope of claim 22.
Summary
The foregoing reasons, the rejection of claim 22 as obvious based on
Blondel, Moraes, and Vanderhoff is affirmed. Claims 23-28, 30, 31, 33,
35-40, 45-47 and 50 were not argued separately and fall with claim 22. 37
C.F.R. § 41.37(c)(l)(iv).
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REJECTIONS 2 AND 3
Appellants did not provide separate arguments for claims 41-44.
Creamer is relied upon in these rejections to meet the recited pH of the
rejected claims. Final Act. 9-10. Because the Examiner did not make
findings that such pH would have been obvious based on Blondel, Moraes,
and Vanderhoff, which we found describe the claimed polymer, we are
compelled to reverse rejections 2 and 3 of these claims, as well. The
obviousness rejections of claims 41-44 are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED-IN-PART
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