Ex Parte Watanabe et al

Patent Trial and Appeal BoardMar 27, 2017

11816791 (P.T.A.B. Mar. 27, 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. 11/816,791 08/21/2007 Satoshi Watanabe 312296US0PCT 3665 22850 7590 03/29/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER KAUCHER, MARK S ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATOSHI WATANABE and HIROHISA OTAKE1 Appeal 2015-002900 Application 11/816,791 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and N. WHITNEY WILSON, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF CASE Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner’s decision to reject claims 1—12 under 35 U.S.C. § 102(b) as anticipated or, in the alternative, under 35 U.S.C. § 103(a) as obvious over 1 Appellants identify the real party in interest as Denki Kagaku Kogyo Kabushiki Kaisha. Appeal Br. 1. 2 In our opinion below, we reference the Specification filed August 21, 2007 (Spec.), Final Office Action mailed February 6, 2014 (Final), the Appeal Brief filed July 31, 2014 (Appeal Br.), the Examiner’s Answer mailed November 17, 2014 (Ans.), and the Reply Brief filed January 15, 2015 (Reply Br.). Appeal 2015-002900 Application 11/816,791 either Akazawa3 or Taniguchi.4 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is the only independent claim on appeal and is the major focus of the appeal. Claim 1 is directed to a modified polyvinyl alcohol containing a main chain of a particular structure (formula (1)) and 0 to 20 mol% of copolymerizable monomers. The modified polyvinyl alcohol cannot contain “units from polymerization of any of itaconic acid, maleic acid and maleic anhydride.” Claim 1. The claim recites the product in terms of the process used to make it. Claim 1. This process involves copolymerizing: (a) at least one monomer with an ethylenically unsaturated double bond and (b) a monomer having a vinyl ester unit. Id. The process further involves saponifying the copolymerized product. Id. In the copolymerization step, monomers (a) and (b) are continuously added to a polymerizer. Id. Monomer (a) must be one of a formula (3), (4), or (5). Claim 1. For instance, the unsaturated monomer may be dimethyl maleate or diethyl maleate. Spec. 5:5—6. We reproduce claim 1 from the Claims Appendix of the Appeal Br. with some key limitations highlighted. Claim 1. A modified polyvinyl alcohol containing bond units of formula (1) in its molecular main chain: 3 Akazawa et al., JP 54-135891, published Oct. 22, 1979. 4 Taniguchi et al., US 4,388,442, issued June 14, 1983. 2 Appeal 2015-002900 Application 11/816,791 -( CH CH ) g ™ CH c (CHg) h “ Y r 1 f c e-Q i i 0 0 ! i XI X2 (1 ) wherein each of XI and X2 is a Cm2 alkyl group, a hydrogen atom or a metal atom, g is an integer of from 0 to 3, h is an integer of from 0 to 12, Y1 is a hydrogen atom or —COOM, and M is a hydrogen atom, an alkyl group or a metal atom; and 0 to 20 mol% of copolymerizable monomers obtained by copolymerizing at least one monomer having an ethylenically unsaturated double bond of formulae (3), (4) and (5) and a monomer having a vinyl ester unit and saponifying an obtained copolymer H (CH*) s ” ¥2 i ! C = C i I O-C C-G (3) i i O G ) I X3 X4 wherein each of X3 and X4 is a Ci 12 alkyl group, a hydrogen atom or a metal atom, i is an integer of from 0 to 12, Y2 is a hydrogen atom or-COOM, and M is a hydrogen atom, an alkyl group or a metal atom; 3 Appeal 2015-002900 Application 11/816,791 X© 0 H i C“Gi r v zzw i f : C | Q— C 1 (CHs)j-Y3 1 0 1i X5 wherein each of X5 and X6 is a Ci 12 alkyl group, a hydrogen atom or a metal atom, j is an integer of from 0 to 12, Y3 is a hydrogen atom or —COOM, and M is a hydrogen atom, an alkyl group or a metal atom; and M (CH2>k-Y4 i I c « c ! 1 0=0 C-O V (s> wherein k is an integer of from 0 to 12, Y4 is a hydrogen atom or —COOM, and M is a hydrogen atom, an alkyl group or a metal atom wherein said monomer having an ethylenically unsaturated double bond and said monomer having a vinyl ester unit are continuously added to a polymerizer and wherein said modified polyvinyl alcohol has a saponification degree of from 30 to 99.9 mol% and does not contain units from polymerization of any of itaconic acid, maleic acid and maleic anhydride. Appeal Br. 17—19. 4 Appeal 2015-002900 Application 11/816,791 OPINION Rejections over Akazawa There is no dispute that Akazawa describes a modified polyvinyl alcohol made by copolymerizing ethylenically unsaturated monomers and vinyl esters or that the obtained copolymer is saponified to the levels required by claim 1. Compare Ans. 2, 8 with Appeal Br. 5—14; Reply Br. 1— 9. Akazawa copolymerizes three kinds of monomers: (A) a fatty acid vinyl ester; (B) one of an ethylenically unsaturated carboxylic acid, lower alkyl ester, and acid anhydride; and (C) vinyl ester acetate. Akazawa 3:2—11. Both monomers (A) and (C) have vinyl ester units. The monomers of (B) each have ethylenically unsaturated double bonds. Akazawa 5:17—6:3. There is no dispute that Akazawa discloses a genus of substances (B) overlapping with those of formulas (3), (4), and (5) of Appellants’ claim 1, but that the genus also includes monomers that would result in the excluded itaconic acid, maleic acid, and maleic anhydride units of claim 1. Compare Ans. 2 with Appeal Br. 5—6. As the Examiner finds, Akazawa exemplifies mono- and dialkyl maleates, e.g., monomethyl maleate, dimethyl maleate, diethyl maleate, dimethyl citraconate and diethyl citraconate, among others, which are monomers within the formula (3), (4), and (5) genera of the claim. Ans. 2. The Examiner specifically finds, and Appellants do not dispute, that monomethyl maleate and dimethyl maleate meet the requirements of formula (3) of claim 1. Compare Ans. 3 with Appeal Br. 5—8; Reply Br. 1— 9. Although Akazawa suggests using monomethyl maleate and dimethyl maleate, monomers within the formula (3) unsaturated monomer genus of claim 1, Akazawa further discloses preferred subgenera not including those 5 Appeal 2015-002900 Application 11/816,791 monomers. Akazawa 5:17—6:3. Specifically, Akazawa discloses “citraconic acid, maleic acid, itaconic acid, maleic acid monomethyl ester, and maleic acid anhydride are preferably used, where maleic acid, maleic acid anhydride, maleic acid monomethyl ester, and itaconic acid are particularly preferred.” Id. Of the preferred monomers, citraconic acid meets the requirements of the genera of claim 1, but most, if not all of Akazawa’s other preferred monomers are excluded. Claim 1. Akazawa’s examples use itaconic acid (Examples 1 and 2) or maleic acid anhydride (Examples 3 and 4), monomers excluded by claim 1. However, the fact remains that Akazawa specifically teaches using non-excluded formula (3) monomers monomethyl maleate and dimethyl maleate, which the Examiner finds are formula (3) monomers, as well as a preference for citraconic acid, another monomer meeting the requirements of the claim. As pointed out by Appellants, the method of adding the monomers is not particularly limited by Akazawa and Akazawa discloses several options. Appeal Br. 6; Akazawa 6:15—20. As found by the Examiner, and not disputed by Appellants, one of the options is a method of continuously adding (A), (B), and (C), a method meeting the requirements of claim 1. Ans. 2; Appeal Br. 6; Akazawa 6:19-20. The Examples prepare the copolymers batch-wise rather than by continuous addition. Akazawa Examples \—A. Appellants provide evidence in the Watanabe Declaration5 showing that a modified PVA (1) produced in accordance with their example 2 (produced by continuously adding dimethyl maleate and vinyl acetate) 5 Declaration of Satoshi Watanabe, dated June 7, 2010. 6 Appeal 2015-002900 Application 11/816,791 differs from the modified PVA products (2) and (3) produced by adding only dimethyl maleate continuously (modified PVA (2)) or adding neither continuously (modified PVA (3)). Decl. 1—2. Watanabe declares that the higher peak in the U.V. spectra graph at 270 nm for spectrum 1 as compared to spectra 2 and 3 shows that modified PVA (1) has more uniform distribution of unsaturated double bonds than modified PVA products (2) and (3). Decl. 2. Weighing the evidence as a whole, we agree with Appellants that they have overcome the Examiner’s finding of anticipation. Their evidence shows that continuously adding the unsaturated and vinyl ester monomers results in a difference in the polymer structure produced for at least one combination of monomers. The Examiner’s findings to the contrary are not particularly persuasive. From the Declaration, it appears that Appellants have reproduced their example 2 and then run the same process changing only the manner of adding monomers. Thus, the evidence supports the declaratory statement that the difference in U.V. absorbance shown in the graph is due to a difference in structure within the compared copolymers that results from the difference in adding the monomers. This showing of a difference in copolymer structure is enough to overcome the presumption that the product appears to be the same or substantially the same even if not made by the same process. The above being said, the difference has not been shown to be an unobvious difference. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (explaining that where “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 7 Appeal 2015-002900 Application 11/816,791 between the claimed product and the prior art product.”). Here, there is evidence that creating the product using the continuous addition method was known in the art. Akazawa provides a suggestion of selecting monomers of formula (3) and copolymerizing them with vinyl ester in a process where all the monomers are added continuously. In this case a prima face cases of obviousness is established and the burden shifts to Appellants to show they achieve unexpected results. Appellants do not rely upon their data to show unexpected results and the mere fact that one product is different in structure is not enough. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness,” and a proper evaluation considers what properties were expected). Given a preponderance of the evidence supports a conclusion of obviousness, we sustain the Examiner’s obviousness rejection. Rejections over Taniguchi For similar reasons to those discussed above, we agree with Appellants that the declaratory evidence overcomes the Examiner’s finding of anticipation, but that Appellants have not overcome the obviousness rejection. Although Taniguchi does not disclose continuously adding the unsaturated monomer, there is evidence of record indicating that it was known to do so. Spec. 8:16—27; see also Akazawa 6:12—20. Using the well- known continuous addition process would have been obvious to one of ordinary skill in the art for the reasonable expectation of obtaining Taniguchi’s modified and hydrolyzed PVA, which the ordinary artisan would have expected to have predictable properties. That being the case, the 8 Appeal 2015-002900 Application 11/816,791 burden shifted to Appellants to show an unexpected result. Appellants have not attempted to meet this burden. Dependent claims The dependent claims recite various properties that Appellants indicate arise due to the use of continuously adding the unsaturated monomers and vinyl ester monomers while excluding other unsaturated monomers. Claims 2—12; Appeal Br. 15. For the reasons we state above, a preponderance of the evidence supports the obviousness of forming the modified PVAs of these claims as the properties recited in the claims flow from the copolymerization of the monomers taught in the references by the known process of continuous polymerization, and Appellants have not provided evidence of unexpected results to overcome the case of obviousness. CONCLUSION We sustain the Examiner’s rejections under 35 U.S.C. § 103(a), but do not sustain the rejections under 35 U.S.C. § 102(b). DECISION The Examiner’s decision is affirmed. 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)(1). 9 Appeal 2015-002900 Application 11/816,791 AFFIRMED 10