Ex Parte Sharma et al

Patent Trial and Appeal Board

Jan 17, 2017

13482564 (P.T.A.B. Jan. 17, 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.
13/482,564 05/29/2012 Ashutosh SHARMA 138248.12401 1018
99892 7590 01/17/2017
Pepper Hamilton/Xinova, LLC
701 5th Avenue
Suite 4100
Seattle, WA 98104
EXAMINER
NORRIS, CLAIRE A
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
01/17/2017 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 ASHUTOSH SHARMA,
NISHITH VERMA,
and AJIT KUMAR SHARMA
Appeal 2014-007459
Application 13/482,564
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARKNAGUMO, and
BRIAN D. RANGE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1, 2, 4—16, and 26—30.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claimed subject matter is directed to a method of preparing a polymeric
bead which is useful for adsorbing contaminants, such as arsenic and fluoride in
wastewater. Spec. 113. Claim 1, the sole independent claim, is reproduced below
1 Claims 17—25 are also pending but have been withdrawn from consideration.
Appeal 2014-007459
Application 13/482,564
from the Claims Appendix of the Appeal Brief dated February 5, 2014 (“App.
Br.”).
1. A method of preparing a polymeric bead comprising a plurality
of metals or salts thereof, the method comprising:
preparing a mixture of one or more monomers, a crosslinking
agent, a suspension stabilizing agent, and a plurality of metal salts,
under conditions sufficient to produce the polymeric bead doped with
a plurality of metals or salts thereof,
wherein the one or more monomers comprises an aromatic
alcohol.
App. Br. 20.
The claims on appeal stand rejected as follows:2,3
(1) claims 1, 9, 12, 13, 15, 16, and 26—28 under 35 U.S.C. § 103(a) as
unpatentable over Ballard et al.2 3 4 in view of Loukine et al.5 and Reed et al.;6
(2) claim 10 under 35 U.S.C. § 103(a) as unpatentable over Ballard in
view of Loukine and Reed, and further in view of Lanphere et al.;7
2 The rejection of claim 30 under 35 U.S.C. § 112, second paragraph, was
withdrawn in the Examiner’s Answer dated April 28, 2014 (“Ans.”), at 12.
3 In an Amendment dated July 3, 2013, the Appellants cancelled claim 3 and
amended claim 1 to incorporate the elements of claim 1. The Examiner entered the
Amendment in an Advisory Action dated July 15, 2013, indicating that “[t]he
proposed amendments do not place the application in a condition for allowance,”
and maintained the rejections “as previously presented with addition of Reed
(USPN 4,427,793), as used regarding claim 3, over claim 1.” See Rejections (1)
and (5), infra.
4 US 6,171,489 Bl, issued January 9, 2001 (“Ballard”).
5 US 2011/0124492 Al, published May 26, 2011 (“Loukine”).
6 US 4,427,793, issued January 24, 1984 (“Reed”).
7 US 7,449,236 B2, issued November 11, 2008 (“Lanphere”).
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(3) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Ballard in
view of Loukine and Reed, and further in view of Li et al.;8
(4) claims 14, 29, and 30 under 35 U.S.C. § 103(a) as unpatentable over
Ballard in view of Loukine and Reed, and further in view of Malana et al.;9 and
(5) claims 1, 2, and 4—8 under 35 U.S.C. § 103(a) as unpatentable over
Mitschker et al.10 in view of Ballard, Loukine, and Reed.
B. DISCUSSION
1. Claim 1
The Examiner finds Ballard teaches a method of preparing a polymeric bead.
Ans. 2. The polymeric beads are said to be useful for removing contaminants from
water. Ballard, col. 4,11. 16—17. The Examiner finds the method comprises the
step of preparing a mixture of one or more monomers, a crosslinking agent, a
stabilizing agent, and a metal. Ans. 2. The Examiner finds Ballard does not teach
that “the one or more monomers compris[e] an aromatic alcohol” as recited in
claim l.* 11 Ans. 3. Nonetheless, the Examiner concludes that “[i]t would have
been obvious to one skilled in the art to add aromatic alcohol to the polymerization
8 US 5,583,162, issued December 10, 1996 (“Li”).
9 Muhammad Aslam Malana et al., Adsorption Studies of Arsenic on Nano
Aluminium Doped Manganese Copper Ferrite Polymer (MA, VA, AA) Composite:
Kinetics and Mechanism, 172 Chem. Eng. J. 721—27 (2011) (“Malana”).
10 US 4,772,635, issued September 20, 1988 (“Mitschker”).
11 The Examiner also finds Ballard does not teach using a plurality of metal salts as
recited in claim 1. The Examiner concludes, and the Appellants do not dispute,
that “[i]t would have been obvious to one skilled in the art at the time of invention
[to] replace the metals of Ballard with the metal salts of Loukine because using
metal salts in place of metal oxides [as disclosed in Ballard] is the simple
substitution of one know [sic, known] material for another with expected results.”
Ans. 3 (citing Loukine 142).
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Application 13/482,564
mixture of Ballard as taught by Reed because aromatics form cross-links.” Ans. 3
(citing Reed, col. 2,11. 19-23).
The Appellants argue that Ballard teaches away from using an aromatic
alcohol in the disclosed method. More specifically, the Appellants argue that
Ballard uses “porogens,” which include aromatic compounds, to produce
macroporous polymeric beads. The Appellants argue that the porogens do not take
part in the polymerization reaction and are removed from the final product. App.
Br. 7—8 (citing Ballard, col. 4,11. 20-22); see also Ballard, col. 4,11. 25—28
(removing porogens produces macroporosity in the polymer beads). Thus, the
Appellants argue the teachings of Ballard “would clearly discourage one of skill in
the art from modifying Ballard as the Office suggests.” App. Br. 8.
In response, the Examiner finds Ballard does not teach that all aromatics
function as porogens in the disclosed method. Rather, the Examiner finds Ballard
teaches the use of both aromatics and alcohols as cross-linking monomers. Ans. 13
(citing Ballard, col. 3,1. 65—col. 4,1. 4).12 “As Ballard requires the use of a cross
linking monomer,” the Examiner concludes that it would have been obvious to one
of ordinary skill in the art “to use the aromatic alcohol taught by Reed because
Vinylbenzyl alcohol is highly effective at forming cross-links.” Ans. 13. In the
Reply Brief, the Appellants do not address the Examiner’s findings of fact or
conclusion of obviousness and thus do not identify reversible error in this
conclusion.
The Appellants also argue:
[T]he Office has failed to show that one of skill in the art would have
had a reasonable expectation of success in preparing polymeric bead
12 Ballard discloses that cross-linking monomers include divinyl benzene which is
an aromatic monomer. Ballard, col. 3,11. 65—67.
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Application 13/482,564
comprising a plurality of metals or metal salts according to the
presently claimed methods using aromatic alcohols as a monomer.
App. Br. 11.
As discussed above, Ballard teaches preparing a polymeric bead from a
mixture of, inter alia, an aromatic cross-linking monomer and a metal. Reed
teaches that aromatic alcohols form crosslinks in polymeric beads of the type
disclosed in Ballard. See Ans. 3. Thus, the disclosure of Ballard, in combination
with the disclosure of Reed, provides a reasonable expectation of successfully
forming a crosslinked polymeric bead using an aromatic alcohol.
The Appellants argue that “Reed fails to discuss using aromatic alcohols as
monomers for the preparation of a polymeric bead that comprises a plurality of
metals or salts thereof!” App. Br. 10 (emphasis added). However, the fact that the
polymeric beads disclosed in Reed do not include a metal or a metal salt does not,
without more, weigh against a finding of a reasonable expectation of success.
For the reasons set forth above, the § 103(a) rejection of claim 1 based on
the combination of Ballard, Loukine, and Reed is sustained. The Appellants do not
present arguments in support of the separate patentability of any of claims 9-16
and 26—28. Therefore, the § 103(a) rejections of claims 9-16 and 26—28 based on
the combination of Ballard, Loukine, and Reed, either alone or in combination with
Lanphere, Li, or Malana, are also sustained.
Claims 1,2, and 4—8 also stand rejected under § 103(a) based on Mitschker
in view of Ballard, Loukine, and Reed. The Appellants do not address the
rejection in the Appeal Brief.13 Therefore, the § 103(a) rejection of claims 1, 2,
13 In the Appeal Brief, the Appellants present arguments against a § 103(a)
rejection of claims 1, 2, and 4 based on Mitschker in view of Ballard, and Loukine.
App. Br. 17—18. In the Advisory Action dated July 15, 2013, the Examiner
maintained the rejection based on Mitschker in view of Ballard, and Loukine “with
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Application 13/482,564
and 4—8 based on the combination of Mitschker, Ballard, Loukine, and Reed is
sustained for the reasons set forth in the Examiner’s Answer.
2. Claims 29 and 30
Claim 29 depends from claim 1 and recites “wherein the plurality of metal
salts comprises salts of A1 and Fe, or Fe and Ni, or A1 and Ni, or Cu and Ni, or Cu
and Fe, or Cu and Al.” App. Br. 21 (emphasis added). Claim 30 depends from
claim 1 and recites “wherein the plurality of metal salts consists [of] salts of Al and
Fe, or Fe and Ni, or Al and Ni, or Cu and Ni, or Cu and Fe, or Cu and Al.” App.
Br. 21 (emphasis added).
The Examiner finds Ballard and Loukine do not teach the combination of
metal salts recited in claims 29 and 30. Ans. 11, 12. The Examiner, however,
finds Malana teaches doping a polymeric bead with Al and Cu, Al and Fe, and Fe
and Cu. Ans. 11, 12. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art “to modify the metals of Ballard and Foukine to the
combination of Malana because the combination of metals improves the adsorption
capacity of the polymeric bead. . . compared to beads with only iron salts.” Ans.
11, 12 (emphasis added).
The Appellants argue that Malana describes using a ferrite nanomaterial
(Mno.5Cuo.5Fe1.2AI0.8O4) to dope a polymeric bead. App. Br. 12. The Appellants
argue that “[f]errite nanomaterial is not a metal salt nor has the Office . . . ever
argued that the materials in Malana are salts.” App. Br. 12 (emphasis omitted).
Thus, according to the Appellants, “the Office has . . . not adequately explained
addition of Reed (USPN 4,427,793), as used regarding claim 3, over claim 1.”
Therefore, the rejection of claims 1, 2, and 4 based on the combination of
Mitschker, Ballard, and Foukine was withdrawn by the Examiner and is not before
us on appeal.
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Application 13/482,564
with sufficient evidence why one of skill in the art would have replaced the ferrite
nanomaterial of Malana with the specific metal salts [recited in claims 29 and 30]
that fail to be disclosed in any of the references.” App. Br. 13.
In response, the Examiner explains the rejection on appeal as follows:
Loukine teaches making a polymeric bead with a plurality of metal
salts (see para. 0042, 0049), but does not teach the specific
combination claimed. Malana teaches a polymeric material with the
same combination of metals as used in the claimed method and
teaches that the combination of metals improves the function of the
material. As the combination of metals is known, and the method of
making a polymeric bead with metal salts is known it would be
obvious to use the metal salts taught by Loukine in the combination
taught by Malana to make the polymeric bead [of Ballard].
Ans. 14 (emphasis added).
Significantly, the combination of metals taught by Malana is in a ferrite
nanomaterial and the improvement relied on by the Examiner (i.e., improvement in
adsorption capacity) is attributed to the ferrite nanomaterial (or nanocomposite) as
a whole. See Malana, 726, col. 1 (“The adsorption capacity of the nanocomposite
for arsenic is greater than many of the adsorbents reported in literature and hence
can be used as adsorbent for the removal of arsenic from aqueous solution.”).
On this record, the Examiner has not explained, in any detail, why one of
ordinary skill in the art would have expected metal salts of the individual metals in
Malana’s ferrite nanomaterial to perform the same function as Malana’s ferrite
nanomaterial (i.e., provide an improved adsorption capacity for arsenic). See
Reply Br. 3 (Examiner “has not provided sufficient evidence to show that one of
skill in the art would have considered [metal salts and ferrite nanomaterial to be]
equivalents”).14 The mere fact that “Loukine teaches making a polymeric bead
14 Reply Brief dated June 24, 2014.
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with a plurality of metal salts” (Ans. 14) does not suffice. Thus, absent the
Appellants’ disclosure, there would have been no reason to use the metal salts
recited in claims 29 and 30 to prepare the polymeric bead of Ballard.
For the reasons set forth above, the § 103(a) rejection of claims 29 and 30 is
not sustained.
C. DECISION
The Examiner’s decision rejecting claims 1, 9, 12, 13, 15, 16, and 26—28
under 35 U.S.C. § 103(a) as unpatentable over Ballard in view of Loukine and
Reed is affirmed.
The Examiner’s decision rejecting claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Ballard in view of Loukine and Reed, and further in view of
Lanphere is affirmed.
The Examiner’s decision rejecting claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Ballard in view of Loukine and Reed, and further in view of Li
is affirmed.
The Examiner’s decision rejecting claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Ballard in view of Loukine and Reed, and further in view of
Malana is affirmed.
The Examiner’s decision rejecting claims 1, 2, and 4—8 under 35 U.S.C.
§ 103(a) as unpatentable over Mitschker in view of Ballard, Loukine, and Reed is
affirmed.
The Examiner’s decision rejecting claims 29, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Ballard in view of Loukine and Reed, and further in
view of Malana is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
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AFFIRMFD-IN-PAFT
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