Ex Parte Lu et alDownload PDFPatent Trial and Appeal BoardOct 10, 201712975885 (P.T.A.B. Oct. 10, 2017) 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. 12/975,885 12/22/2010 Ning Lu 1302-703 (5072021) 6379 28249 7590 10/10/2017 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER NIELSEN, THOR B ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 10/10/2017 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 ____________ Ex parte NING LU, SIGFREDO GONZALEZ, EMIE M. SILVESTRE, and GENG WANG ____________ Appeal 2016-008724 Application 12/975,8851 Technology Center 1600 ____________ Before DONALD E. ADAMS, FRANCISCO C. PRATS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims 1–13 and 20–25 (App. Br. 8).2 Examiner entered rejections under 35 U.S.C. § 103(a) and obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as “Momentive Performance Materials Inc.” (App. Br. 3). 2 Claims 14–19 stand withdrawn from consideration (App. Br. 8). Appeal 2016-008724 Application 12/975,885 2 STATEMENT OF THE CASE Appellants’ disclosure “relates to network copolymer compositions, processes for their preparation, and products comprising the same” (Spec. ¶ 2). Claim 1 is representative and reproduced below: 1. A personal care product composition comprising a crosslinked network polymer provided by the reaction of (i) at least one anionic polymerizable ethylenically unsaturated monomer (I) selected from the group consisting of [CH2=C(R3)C(O)OXa(C2H4O)b(C3H6O)c(C4H8O)d]pP(O)(OY)q(OZ)r where R3 = H or alkyl of 1 to about 6 carbon atoms; X= alkyl, ary1, or alkaryl diradical connecting group of 0 to about 9 carbon atoms; a is 0 to about 100; b is 0 to about 100; c is 0 to about 100; d is 0 to about 100; q is 0 to about 2; r is 0 to about 2; p is 1 to about 3 subject to the limitation that p+q+r = 3; and Y and Z is H, or metal ion; wherein at least one of b, c, and d is at least 1; and CH2=C(R3)C(O)OXa’(C2H4O)b’(C3H6O)c’(C4H8O)d-(SO3-Y) where R3 = H or alkyl of from l to about 6 carbon atoms; X= alkyl, aryl, or alkaryl diradical connecting group of 0 to about 9 carbon atoms; a’ is 0 to about 100; b’ is 0 to about 100; c’ is 0 to about 100; d’ is 0 to about 100: Y is H, or meta1 ion; wherein at least one of b’, c’, and d’ is at least 1; and (ii) one or more additional monomers (II) selected from the group consisting of acrylic acid/acrylate, rnethacrylic Appeal 2016-008724 Application 12/975,885 3 acid/methacrylate, acrylamides, vinyl acetate and styrene, which are copolymerizable with (I); and (iii) a cross-linking agent (III), containing at least one ethylenically unsaturated group and capable of copolymerizing with (I) and (II), wherein the network polymer is simultaneously polymerizied and cross-linked; and wherein the personal care product composition has an oil and/or water swellability of 5 to 500 times its original volume. (App. Br. 13–14.) The claims stand rejected as follows: Claims 1–4, 7–13, 20, 21, and 23–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Munro3 and Yoon.4, 5 Claims 1–13 and 20–25 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1–6 of Lu ’444.6 Claims 1–13 and 20–25 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1–24 of Lu ’337.7 Obviousness-type Double Patenting: Appellants do not contest either of the obviousness-type double patenting rejections, but instead “request that the rejection[s] be held in abeyance until claims [on this record] are allowed” (see App. Br. 11.) We 3 Munro et al., US 2005/0196432 A1, published Sept. 8, 2005. 4 Yoon et al., US 2006/0141392 A1, published June 29, 2006. 5 Examiner withdrew the rejection of claims 6 and 22 from this rejection (see Ans. 2). 6 Lu et al., US 8,809,444 B2, issued Aug. 19, 2014. 7 Lu et al., US 8,669,337 B2, issued Mar. 11, 2014. Appeal 2016-008724 Application 12/975,885 4 therefore summarily affirm these rejections. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”); id. (“[T]he Board may summarily sustain any grounds of rejections not argued.”). Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Munro “relates to a process for coating a perforated substrate with a gel and to coated perforated substrates obtainable by the process” (Munro ¶ 1; see generally Final Act.8 6). FF 2. Munro discloses that “[g]el coated perforated substrates are known for use in a variety of consumer care applications, for example as wound dressings” (Munro ¶ 2; see also id. ¶ 15 (“coated perforated substrate[s] . . . [are] useful in . . . cosmetic applications, e.g., for the attachment of wigs or toupees, or for therapeutic applications, e.g. as wound dressings, transdermal drug delivery, therapeutic patches or as electrodes (e.g. biomedical skin electrodes)”); see Final Act. 6). FF 3. Munro discloses: 8 Examiner’s July 15, 2015 Office Action. Appeal 2016-008724 Application 12/975,885 5 [A] process for coating a perforated substrate with a gel without substantial occlusion of the perforations, which process comprises: (i) forming (e.g. by extrusion) a layer of a liquid pregel mixture, comprising one or more monomers, on a web coated with a coating having a surface energy less than the surface energy of the liquid pregel mixture: (ii) contacting the perforated substrate with the liquid pregel mixture layer; and (iii) curing the liquid pregel mixture. (Munro ¶¶ 5–8.) FF 4. Munro discloses that “the gel formed by the liquid pregel mixture . . . is any gel conventionally used to coat substrates, for example, to act as an adhesive. Preferably the gel formed by the pregel is a tacky gel such as a hydrogel or a xerogel” (Munro ¶ 22; see generally Final Act. 7). FF 5. Munro discloses that “the pregel mixture [typically] used to form a hydrogel is an aqueous solution of one or more ionic monomers, optionally in association with a cross-linking agent” (Munro ¶ 22; Final Act. 7). FF 6. Munro discloses “preferred embodiments [wherein] the one or more ionic monomers will be acrylate based monomers selected for their ability to polymerise rapidly in water” (Munro ¶ 23; see also id. ¶ 24 (“[p]referably the one or more ionic monomers are 2-acrylamido-2-methlpropane sulphonic acid or an analogue thereof or one of its salts, e.g. . . . a polymerisable sulphonate or a salt e.g. . . . a sodium, potassium or lithium salt, of acrylic acid (3-sulphopropyl)ester or an analogue thereof”); id. ¶¶ 25 and 41; see Final Act. 6–7). FF 7. Munro discloses that “[c]onventional crosslinking agents are preferably used to provide the necessary mechanical stability and to control Appeal 2016-008724 Application 12/975,885 6 the adhesive properties of the hydrogel,” wherein “[t]ypical crosslinkers include tripropylene glycol diacrylate . . . [and] methylene bis acrylamide” (Munro ¶ 26; Final Act. 6–7). FF 8. Examiner finds that Munro fails to disclose a polymer comprising a second copolymerizable monomer and relies on Yoon to make up for this deficiency in Munro (Final Act. 8). FF 9. Yoon “relates to a photosensitive resin composition, a preparing method, and a dry film resin comprising the same, more specifically for pattering the barrier ribs of [a] [p]lasma display panel (PDP)” (Yoon ¶ 3; see Final Act. 7). FF 10. Yoon discloses that “a plasma display panel (PDP) is a flat display device using a plasma phenomenon, which is also called a gas-discharge phenomenon . . . to display an image in the plasma display panel” (Yoon ¶ 5). FF 11. Examiner finds that Yoon exemplifies the preparation of an alkali- soluble acrylate resin, which comprises a “methacrylic acid (i.e. monomer ‘ii’ of [Appellants’] invention) and other acrylate monomers, a phosphate ester-containing polyethylene glycol or propylene glycol methacrylate monomer . . . (i.e. monomer (i) of [Appellants’] invention), and solvent” (Final Act. 7; see Yoon ¶ 55). FF 12. Yoon discloses that “[t]he phosphate ester-containing monomer improves adhesiveness of polymer and controls the acid value in small usage amount[s],” wherein “[t]he preferred example is at least one selected from the group consisting of[, inter alia,] pentaethyleneglycol phosphate monomethacrylate[ and] pentapropyleneglycol phosphate monomethacrylate” (Yoon ¶ 28; Final Act. 7). Appeal 2016-008724 Application 12/975,885 7 FF 13. Examiner finds that Yoon’s Example 5 exemplifies a “network polymer (i.e., Yoon’s resin 1 and resin 2) are simultaneously polymerized (to each other) and cross-linked (with the indicated cross-linkers)” (Ans. 3, citing Yoon ¶ 56). ANALYSIS Based on the combination of Munro and Yoon, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to combine the teachings of Munro and Yoon in order to ensure adhesiveness and performance of the polymer gel, which Munro discloses as important for the performance of hydrogels as pressure sensitive adhesives” (Final Act. 8, citing Munro ¶ 30; see FF 1–12). Appellants recognize that “Yoon discloses that phosphate-ester- containing monomers can provide adhesiveness to a polymer” (App. Br. 9). Appellants contend, however, that there is no reason to combine Yoon’s disclosure with Munro, because “Munro already provides the adhesiveness property . . . [by] disclosing that the adhesiveness is controlled by the crosslinking agents disclosed [in Munro]” (id., citing Munro ¶ 26; see FF 7). “Therefore, [Appellants contend,] substituting the ionic monomers used by Munro with the ionic monomers used by Yoon would provide no additional benefit and therefore would not provide any motivation for such combination” (id.). We are not persuaded. As Examiner explains, a person of ordinary skill in this art would have found it prima facie obvious to substitute one anionic acrylate monomer (i.e., Yoon’s phosphate ester-containing monomer) for another anionic acrylate monomer (Munro’s sulfate ester-containing monomer) because the monomers have similar structures and should have Appeal 2016-008724 Application 12/975,885 8 similar properties. Therefore, the ordinary artisan would reasonably have expected that the cross-linked network polymer resulting from polymerization of the phosphate ester- containing monomer would have similar properties, or improved adhesiveness, compared to the sulfate ester- containing monomer. (Ans. 3; see FF 6 and 11–12.) We find no error in Examiner’s reasoning. See In re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious”). Further, Appellants failed to explain why a person of ordinary skill in this art would not have realized that a cross-linking agent and a monomer, such as Yoon’s more adhesive monomer, could have been used in combination to control the adhesiveness of a final product (See generally Ans. 2–3 (“The person of ordinary skill in the art would have found it obvious to use Yoon’s ingredients to balance the desired properties of the composition because Yoon discloses that the phosphate ester- containing monomer improves adhesiveness of the polymer [0028]” (alteration original)); see FF 12; see also FF 7). We are not persuaded by Appellants’ contention that “Munro does not discuss the sequence of polymerization and cross-linking and Yoon uses a two-step sequential process of polymerization followed by cross-linking” (App. Br. 10, citing Yoon ¶¶ 11–13). Notwithstanding Appellants’ contention to the contrary, Examiner finds that Yoon’s Example 5 exemplifies two resins “(i.e., Yoon’s resin 1 and resin 2) [that] are simultaneously polymerized (to each other) and cross-linked (with the indicated cross-linkers)” (FF 13). Further, as Examiner explains, the combination of Munro and Yoon suggests a product comprising the same ingredients as required by Appellants’ claim 1 and Appellants have “not Appeal 2016-008724 Application 12/975,885 9 shown that the sequence of the reactions results in a product having different properties” (Ans. 3). See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”). Appellants contend that “Munro and Yoon are references unrelated to the presently claimed invention, namely, personal care product compositions” and “[o]ne skilled in the art would not have any motivation to combine Munro and Yoon, none of which is directed to personal care product compositions” (App. Br. 10). We are not persuaded. As Examiner explains, Examiner did not find, and Appellants do not identify, a disclosure in Appellants’ Specification that defines the term “personal care products” (see Ans. 4). Thus, we agree with Examiner’s conclusion that Munro’s disclosure of products for “cosmetic applications . . . would reasonably encompass use as a personal care product” within the scope of Appellants’ claim 1 (id.; FF 2). Further, Appellants’ disclosure, Munro, and Yoon all relate to the use of polymer products with adhesive properties. Thus, although Yoon may use its polymer product for a different application than is contemplated by either of Munro or Appellants, Yoon is reasonably pertinent to the particular problem with which the inventor is involved; specifically, a polymer product with adhesive properties. See In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992). Appellants’ claim 1 is not limited to a product that has “improve[d] sensory feeling through the use of [a] water phase” (see App. Br. 13). Appeal 2016-008724 Application 12/975,885 10 Therefore, we are not persuaded by Appellants’ contentions that “the purpose of the present invention is to improve sensory feeling through the use of water phase” and “Appellants do not want to improve adhesion to the skin surface” (Reply Br. 3). See Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in view of the specification, of which they are a part, we do not read limitations from the embodiments in the specification into the claims”). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (“any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Munro and Yoon is affirmed. Claims 2–4, 7–13, 20, 21, and 23–25 are not separately argued and fall with claim 1. 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). AFFIRMED Copy with citationCopy as parenthetical citation