Ex Parte Musa et al

Patent Trials and Appeals BoardMar 26, 2019

13178224 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/178,224 07/07/2011 67749 7590 03/28/2019 Ashland LLC WILLIAM J. DA VIS, ESQ. 1005 U.S. 202/206 Bridgewater, NJ 08807 FIRST NAMED INVENTOR Osama M. Musa 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. 3291USPCT-CIP 7992 EXAMINER KANTAMNENI, SHOBHA ART UNIT PAPER NUMBER 1627 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): ntietcheu@ashland.com wdavis@ashland.com schen@ashland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OSAMA M. MUSA, DAVID C. STREULI, JOSE MARTINEZ- SANTIAGO, and CUIYUE LEI Appeal2018-000384 Application 13/178,224 1 Technology Center 1600 Before FRANCISCO C. PRATS, RACHEL H. TOWNSEND, and DAVID COTT A Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to a branched polymer, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE "Branching agents are moieties that have the functionality to link one monomer and/or polymer chain to another monomer and/or polymer chain, and result in polymers that are non-linear polymers, or partially crosslinked 1 Appellants identify the real party in interest as ISP INVESTMENTS INC. (Br. 3.) Appeal2018-000384 Application 13/178,224 polymers, wherein either the non-linear and/or partially crosslinked polymers may contain linear polymer portion(s), and combinations thereof." (Spec. ,r 5.) "[P]olymer properties can depend on the selected monomer(s), branching agent(s) (with its spacer arm length), and the branching agent addition level and the resulting polymer chain densities." (Id. ,r 6.) "[T]he lactam polymers, including poly(N-vinyl-2-pyrrolidone) (PVP), are well known." (Id. ,r 2.) "N-vinyl amides are electron rich monomers. [C]ommonly known cyclic N-vinyl amides include N-vinyl-2- pyrrolidone (VP) and N-vinyl-2-caprolactam (VCL), and commonly known acyclic N-vinyl amides are N-vinyl acetamide (NV A) and N-vinyl formamide (NVF)." (Id.) "[B]ranched polymers, especially poly(N-vinyl-2- pyrrolidone)" of high molecular weight, are known. (Id. ,r 8.) "[B]ranched polyvinylpyrrolidone" that "is a fully crosslinked, water-swellable, but water-insoluble polymer" is commercially available. (Id. ,r 10.) Also known are "polymers resulting from the polymerization of at least one reactive vinyl monomer moiety and a multifunctional N-vinyl formamide crosslinking moiety[,]" such as the following "N-vinyl formamide crosslinking moieties: ~ f''r ,.. N 0 o'}W'~J"/'s'v,â€¢"~/'v,< \';-' c,,::J H '"-1 ("" 0\.: N . _.,-"--0"..--,_ .. N,(,/0 H H "":.1 H O .... ~G .. N~,/ .. , 0 ......-,,,_...Q..._. ............ r,,(G .. ~ 1 i'.1 l:,.,,_ " (Id. ,I 11 (citing PCT/USl 1/20208).) 2 Appeal2018-000384 Application 13/178,224 "[O]ne aim of the invention [is] to provide branched polymers that demonstrate lower viscosity, enhanced processability, and/or improved sprayability. Another aim is to illustrate nonlimiting formulations and uses of these polymers to the personal care arts." (Id. ,r 13.) Claims 1-5, 7, 10, and 12-21 are on appeal. 2 Claims 1 and 7 are representative and read as follows: 1. A branched polymer resulting from the polymerization of at least one: (Al) reactive monomer having a vinyl functional group, or (A2) a hybrid reactive monomer having (a) at least one vinyl functional group and (b) at least one reactive non-vinyl functional group, and at least one: (B 1) branching agent having at least two N- vinyl formamide functional groups or (B2) a hybrid branching agent having (a) at least one N-vinyl formamide functional group, and (b) at least one vinyl functional group, wherein the branched polymer has a weight-average molecular weight from about 200 Dato about 20,000,000 Da. 7. The branched polymer according to claim 1, wherein said (B 1) is selected from the group consisting of: 2 Claims 6, 8, and 11 are also pending, but stand withdrawn from consideration. 3 Appeal2018-000384 Application 13/178,224 ~ ( ~C,N~N,y~O # H ~ ( cfc .. ~~N._y~.O ,17' H ~ ~ o~ 9 -N~ 0 ~N, 9 ~o H H ~ ~ o~9-~,,1--./"'o~o~N ,c~ H ~ ~ r-9Â· o~q.Â· N___.-"'- 0 ~o~ 0 ~N ~ 9 ~o H H , and combinations thereof. (Br. 24--25.) Appellants elected prosecution of the species N-vinyl-2- pyrrolidone as Al monomer, and 1,8-di-(N-vinyl formamido )-3,6- dioxyoctane (DVFOO) as B 1 branching agent in their response filed on July 18, 2014. (Final Action 2.) The Examiner expanded the search to include polyvinylpyrollidone ("PVP") with branching agents B 1 recited in claim 7, in view of the art. (Id.) 4 Appeal2018-000384 Application 13/178,224 The following grounds of rejection by the Examiner are before us on review: Claims 1-5, 7, 10, and 12-21 under 35 U.S.C. Â§ 103 as unpatentable over Drzewinski3 and Moradi-Araghi. 4 Claims 1-5, 7, 10, and 12-21 under 35 U.S.C. Â§ 103 as unpatentable over Aizawa. 5 Claims 1-5, 7, 10, and 12-21 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-28 of US 12/984,926. 6 DISCUSSION First Obviousness Rejection The Examiner finds that Drzewinski teaches crosslinked poly(vinyl amide/polymerizable carboxylic acid where the vinyl amide monomer is selected from vinyl pyrrolidone, vinyl caprolactam, and N-vinyl formamide. (Final Action 4.) The Examiner finds that Drzewinski further teaches that the crosslinker "is selected from pentaertythritol triallyether, pentaerythritol triacrylate, pentaerythritol tetraacrylate, methylene bisacrylamide and is used in an amount of 0.5-2 % based on weight of the monomers." (Id.) The Examiner notes that Drzewinski teaches that the crosslinked polymers are 3 Drzewinski et al., US 7,205,271 B2, issued Apr., 17, 2007. 4 Moradi-Araghi et al., US 8,669,214 B2, issued Mar. 11, 2014. 5 Aizawa et al., US 5,407,996, issued Apr. 18, 1995. 6 Claims 1-5, 7, 10, and 12-21 were also rejected on the ground ofnon- statutory obviousness-type double patenting as being unpatentable over claims 1-18 of US 13/520,802. The '802 application has since gone abandoned, and thus, the rejection has been rendered moot. 5 Appeal2018-000384 Application 13/178,224 anionic and used in hair care compositions that can be an aqueous formulation or hydro-alcoholic solutions. (Id.) The Examiner notes that Drzewinski does not teach the use of the crosslinking agents recited in claim 7. (Id. at 5.) However, the Examiner concludes that the use of such agents would have been obvious in light of the teachings of Moradi-Araghi. (Id.) In particular, the Examiner finds that Moradi-Araghi teaches "aninonic copolymers comprising vinyl amide, sodium acrylate and a cross-linking agent." (Id.) The Examiner further finds that the cross-linking agent can be pentaerythritol triacrylate or tetraacrylate as is taught to be used in Drzewinski, but can also be 2-bis[2,2 ' - di(N-vinylformamido )ethoxy ]propane, or 2-(N-vinylformamido )ethylether. (Id.) The Examiner notes that Moradi-Araghi teaches that these crosslinkers "can be advantageously used with monomers such as N-vinyl pyrrolidone, N-vinyl formamide. See column 4, lines 14--22." (Id.) The Examiner also finds that Moradi-Araghi teaches that the crosslinked polymers ( or branched polymers) "can be used in various applications such as hygiene, medical arts, food industry, as thickeners .... and like," as well as "injection fluids in petroleum production, see Moradi-Araghi et al., column 1, lines 29-32; column 3, lines 10-17." (Ans. 7.) The Examiner finds that one of ordinary skill in the art would have found it obvious to use 2-bis[2,2 '-di(N-vinylformamido )ethoxy ]propane, or 2-(N-vinylformamido )ethylether instead of the specified crosslinkers of Drzewinski such as pentaerythritol triallyether, triacrylate, or tetraacrylate, in light of the fact that Moradi-Araghi teaches all of these can be used advantageously as cross-linkers with monomers such as N-vinyl pyrrolidone and N-vinyl formamide. (Final Action 5---6; Ans. 8-12.) 6 Appeal2018-000384 Application 13/178,224 The Examiner further concludes that it would have been obvious to one having ordinary skill in the art to obtain a polymer with a molecular weight in the claimed range because "molecular weight distribution appears to be nothing more than optimization of amounts of monomers, and amount of initiator employed to obtain the polymer." (Final Action 6.) The Examiner explains that accounting for differences in the molecular weight distribution of a polymer "is routine to a person of ordinary skill in the art" and that optimization of the molecular weight of the polymer would have been obvious to one of ordinary skill in the art absent a showing of unexpected results. (Id. at 7.) We agree with the Examiner's findings of fact and conclusion that Appellants' claim 1 would have been obvious. Appellants argue that Drzewinski and Moradi-Araghi "are not properly combinable" because Drzewinski "discloses rheology modifier/hair styling resins" and Moradi-Araghi "discloses stable cross-linked water- soluble swellable polymers used as injection fluids in petroleum production." (Br. 16-17.) We do not find this argument persuasive. "In order to rely on a reference as a basis for rejection of the applicant's invention, the reference must either be in the field of the applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned." In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Appellants' Specification discloses that the polymers described can be used in the personal care arts, among other things. (Spec. ,r,r 13, 15.) As the Examiner finds, and Appellants do not contest, Moradi- Araghi discloses that the crosslinked swellable polymers that it discloses 7 Appeal2018-000384 Application 13/178,224 "can also include use in the hygiene" arts, among other things. (Moradi- Araghi 1 :26-29; Ans. 7 .) Thus, we find Moradi-Araghi is analogous art. Appellants also appear to argue that the rejection is based on hindsight. (Br. 1 7 ("The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art and not based on applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). MPEP 706.020) (emphasis added).") We do not find this argument persuasive for the reasons explained by the Examiner. (Ans. 8-11.) In particular, it is obvious to those skilled in the art to substitute one known equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) ("[T]his court finds no ... error in [the] conclusion that it would have been obvious to one skilled in the art to substitute one ARC [ alkaline reactive compound] for another."). Indeed, an "[e]xpress 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). The Examiner has established such a known equivalency. As explained by the Examiner, Moradi-Araghi teaches that pentaertythritol triallyether, pentaerythritol triacrylate, pentaerythritol tetraacrylate, 2-bis[2,2' -di(N-vinylformamido )ethoxy ]propane, and 2-(N- vinylformamido )ethylether are all known cross-linking agents that can be used to make crosslinked polymers with N-vinyl pyrollidone and N-vinyl formamide. (Moradi-Araghi 4:13-20, 4:53---64; Final Action 5; Ans. 8-9, 10.) Drzewinski discloses that pentaertythritol triallyether, pentaerythritol triacrylate, and pentaerythritol tetraacrylate are employed to obtain hair styling resins containing vinyl amide monomers such as N-vinyl pyrrolidone and N-vinyl formamide. (Drzewinski 1:38--41,1:45--48; Final Action 5; 8 Appeal2018-000384 Application 13/178,224 Ans. 8.) We conclude that substitution would have been obvious to one of ordinary skill in the art on those facts alone. In addition, as the Examiner explained, Moradi-Araghi provides a reason to select that 2-bis[2,2'-di(N- vinylformamido )ethoxy ]propane and 2-(N-vinylformamido )ethylether over pentaertythritol triallyether, pentaerythritol triacrylate, and pentaerythritol tetraacrylate. As the Examiner explained Moradi-Araghi indicates that 2- bis[2,2 '-di(N-vinylformamido )ethoxy ]propane and 2-(N- vinylformamido )ethylether are "advantageously combined" with N-vinyl pyrollidone and N-vinyl formamide. (Moradi-Araghi 4: 13-20, 4:53---64; Final Action 5; Ans. 8-9, 10.) "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the Examiner's rejection provides a reason it would have been obvious to use 2-bis[2,2' -di(N-vinylformamido )ethoxy ]propane or 2-(N- vinylformamido )ethylether instead of the pentaertythritol triallyether, pentaerythritol triacrylate, and pentaerythritol tetraacrylate cross-linkers described to be used in Drzewinski that is not based solely on Appellants' disclosure. For the above reasons, Appellants do not persuade us that the Examiner erred in rejecting claim 1 as being obvious over Drzewinski and Moradi-Araghi. Claims 2-5, 7, 10, and 12-21 have not been argued separately and therefore fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). 9 Appeal2018-000384 Application 13/178,224 Second Obviousness Rejection The Examiner finds that Aizawa teaches a polymer comprising vinyl monomers, where the vinyl monomers can be vinyl formamide ( component A of Aizawa), and N-vinyl-2-pyrrolidone (component B of Aizawa) and the cross-linking agent can be N,N'-1,4-butylenebis(N-vinylformamide) or N,N' -1,6-hexylene(N-vinylformamide ). (Final Action 12 ( citing Aizawa 4:43--46, 5:25-36, and 6:7-9); Ans. 12.) The Examiner further finds that "Aizawa teaches that the polymerization degree of the backbone chain is from 500,000 to 100 and the crosslinking density is from 1/500,000 to 1/100. See column 9, lines 38-41." (Final Action 13.) The Examiner notes that Aizawa "does not exemplify a polymer that comprises vinyl monomer component A which is vinyl formamide monomer, component B which can contain N-vinyl-2-pyrrolidone monomer." (Id.) However, the Examiner concludes that arriving at such a polymer using the cross-linking agents N,N' -1,4-butylenebis(N- vinylformamide) or N,N' -1,6-hexylene(N-vinylformamide) from the teachings of Aizawa would have been obvious to one of ordinary skill in the art with a reasonable expectation of success. (Id.; Ans. 12-14.) The Examiner further concludes that it would have been obvious to one having ordinary skill in the art to obtain a polymer with a molecular weight in the claimed range because "molecular weight distribution appears to be nothing more than optimization of amounts of monomers, and amount of initiator employed to obtain the polymer" and "Aizawa teaches that the polymerization degree of the backbone chain can be varied from 500,000 to 100." (Final Action 14; Ans. 14.) The Examiner explains that accounting 10 Appeal2018-000384 Application 13/178,224 for differences in the molecular weight distribution of a polymer "is routine to a person of ordinary skill in the art" and that optimization of the molecular weight would have been obvious to one of ordinary skill in the art absent a showing of unexpected results. (Final Action 14--15.) We agree with the Examiner's factual findings and conclusion that claim 1 would have been obvious from the teachings of Aizawa. Appellants argue that "Aizawa recites an explicit and extensive list of the compounds that may be component A and component B" and the Examiner concedes that Aizawa "does not disclose the components of appellants' branched polymers, namely a polymer that comprises vinyl monomer component A, which can be vinyl formamide monomer, and component B, which can contain N-vinyl-2-pyrrolidone monomer." (Br. 22.) Appellants also contend that "[t]he Examiner ... cites a polymerization degree of the backbone chain that is not appellant's weight- average molecular weight." (Id.) According to Appellants, "there is no teaching or suggestion in Aizawa et al. to make the claimed combination." (Id.) We do not find this argument persuasive. "In determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). "' [A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests."' In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)). Thus, for example, where a reference fails to exemplify a specific 11 Appeal2018-000384 Application 13/178,224 combination of compounds, it may nevertheless render a specific combination of compounds obvious. As the Examiner explained, even though Aizawa does not exemplify a branched polymer using vinyl formamide, N-vinyl-2-pyrrolidone monomers (as component Al) and the crosslinking agent as N, N'-1,6-hexylene(N- vinylformamide ), it teaches a method of making a polymer containing reactive monomers with vinyl functional group, and crosslinking agent, "wherein vinylformamide is used as the monomer and a crosslinking agent is used to make branched polymer." (Ans. 17; Aizawa Example 2.) Moreover, Aizawa teaches that "vinyl monomers such as vinyl formamide, N-vinyl-2- pyrrolidone can be polymerized in the presence of crosslinking agent which can be N,N' -1,4-butylenebis(N-vinylformamide) or N,N' -1,6-hexylene(N- vinylformamide) and initiator." (Ans. 17; Aizawa 4:43, 4:47, 5:35-36, 5:48, 5: 7-9.) We agree with the Examiner that the foregoing is sufficient disclosure to render the branched polymer recited in claim 1 obvious. "Reading 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); see also Merck & Co. Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious," as it is here, the answer depends on "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). Appellants have not offered any persuasive 12 Appeal2018-000384 Application 13/178,224 evidence that the claimed monomers combined with the claimed cross- linking agents are unexpected over the disclosure in Aizawa. Regarding the molecular weight range recited in claim 1 and the fact that "[t]he Examiner ... cites a polymerization degree of the backbone chain that is not appellant's weight-average molecular weight" (Br. 22), the Examiner notes, and Appellants do not contest, that "molecular weight distribution appears to be nothing more than optimization of amounts of monomers, and amount of initiator employed to obtain the polymer, and Aizawa teaches that the polymerization degree of the backbone chain can be varied from 500,000 to 100." (Ans. 14.) The Examiner also finds, and Appellants do not contest, that Aizawa's teaching that the polymerization degree can be varied "further supports that molecular weight can be varied by varying the degree of polymerization." (Id.) In other words, there is no dispute that there is a link between the degree of polymerization and the molecular weight and that varying one will necessarily result in varying the other. As such, because Aizawa teaches that the degree of polymerization is a result effective variable, we find that one of ordinary skill in the art would have understood that the molecular weight of the polymers in Aizawa would also be a result effective variable. As a general rule, "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art [ and obvious.]" In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Accordingly, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Applied Materials, Inc., 692 F.3d 1289, 1295-96 (Fed. Cir. 2012) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)). We 13 Appeal2018-000384 Application 13/178,224 agree with the Examiner's conclusion that the disclosure of Aizawa would have been sufficient to one of ordinary skill in the art to arrive at the claimed branched polymer with a molecular weight within the claimed range as a matter of routine optimization. For the above reasons, Appellants do not persuade us that the Examiner erred in rejecting claim 1 as being obvious over Aizawa. Claims 2-5, 7, 10, and 12-21 have not been argued separately and therefore fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Provisional Obviousness-Type Double Patenting Rejection The rejection of claims 1-5, 7, 10, and 12-21 on the ground ofnon- statutory obviousness-type double patenting as being unpatentable over claims 1-28 of US 12/984,926 has not been withdrawn by the Examiner. (Advisory Action dated March 20, 2016 at 3.) Appellants do not mention that rejection, much less contest it. Therefore, we summarily affirm that rejection. SUMMARY We affirm the rejection of claims 1-5, 7, 10, and 12-21 under 35 U.S.C. Â§ 103 as unpatentable over Drzewinski and Moradi-Araghi. We affirm the rejection of claims 1-5, 7, 10, and 12-21 under 35 U.S.C. Â§ 103 as unpatentable over Aizawa. We affirm the rejection of claims 1-5, 7, 10, and 12-21 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-28 of US 12/984,926. 14 Appeal2018-000384 Application 13/178,224 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. Â§ 1.136(a). AFFIRMED 15