Ex Parte Zhou et al

Patent Trial and Appeal BoardOct 29, 2012

11698518 (P.T.A.B. Oct. 29, 2012)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111698,518 01125/2007 22879 7590 10/31/2012 HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528 FIRST NAMED INVENTOR Zhang-Lin Zhou UNITED STA TES 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. 82220468 5727 EXAMINER FINK, BRIEANN R ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 10/3112012 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): JERRY.SHORMA@HP.COM ipa.mail@hp.com brandon.serwan@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHANG-LIN ZHOU and SIV AP ACKIA GAN AP ATHIAPP AN Appeal 2011-004332 Application 11/698,518 Technology Center 1700 Before TERRY J. OWENS, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004332 Application 11/698,518 Appellants appeal under 35 U.S.C. Â§ 134 from the final rejection of claims 1-3 and 5-19. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. Appellants' invention is directed to a method of preparing anti- oxidant-modified latex particles that includes biocatalytic polymerization of the monomers in the discontinuous phase of an emulsion polymerization system (Spec. 5:5-11). Appellants further claim a method of preparing ink- jet ink and an ink-jet ink composition (Claims App'x, claims 10 and 14). Claim 1 is illustrative: 1. A method of preparing anti-oxidant-modified latex particulates in a fluid suspension, comprising: generating an emulsion with a hydrophilic continuous phase and a hydrophobic discontinuous phase, wherein the hydrophobic discontinuous phase includes multiple types of monomers for polymerization, at least one of the monomers being modified by an anti-oxidant moiety; and polymerizing the monomers in the hydrophobic discontinuous phase using a biocatalytic polymerization process. Appellants appeal the following rejection: Claims 1-3 and 5-19 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Zhou (US 2005/0027065 Al published Feb. 3, 2005) in view of Kaplan (WO 2004/050795 A2 published June 17, 2004) and Kalra (Bhanu Kalra & R. A. Gross, HRP-Mediated Polymerizations of Acrylamide and Sodium Acrylate, 4 GREEN CHEMISTRY 174 (2002)). 2 Appeal 2011-004332 Application 11/698,518 Appellants' arguments focus on the following groups of claims: (1) claims 1, 5-15, 18, and 19, of which we select claim 1 as representative, (2) claims 2 and 16, of which we select claim 2 as representative, and (3) claims 3 and 17, of which we select claim 3 as representative. CLAIM 1 ISSUE Have Appellants shown that the Examiner reversibly erred in determining that the combined teachings of Zhou, Kaplan and Kalra would have provided a reasonable expectation of success in substituting Kalra' s and Kaplan's biocatalytic catalyst for Zhou's catalyst in making anti-oxidant- modified latex? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES Appellants argue that one of ordinary skill in the art would not have combined Kaplan's or Kalra's biocatalytic method with Zhou's method because Zhou's method includes a protecting step for shielding the anti- oxidant group (App. Br. 12). However, as noted by Appellants and confirmed by the Examiner, claim 2 requires the anti-oxidant group be unprotected, not claim 1 (id., Ans. 8). Claim 1 does not exclude a step of protecting the anti-oxidant group. Patentability may not be premised on a limitation not appearing in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("appellant's arguments fail from the outset because, ... they are not based on limitations appearing in the claims.") Appellants argue that Kaplan only teaches HRP (horseradish peroxidase) enzymatic polymerization in a single phase environment unlike 3 Appeal 2011-004332 Application 11/698,518 the claim 1 requirement of two phases (i.e., a continuous hydrophilic phase and discontinuous, hydrophobic phase) (App. Br. 12; Reply Br. 4-5). Appellants contend that this failure of Kaplan does not provide an expectation that the teachings of Zhou and Kaplan can be successfully combined in the way proposed by the Examiner (App. Br. 12-13). Appellants contend that Kalra teaches surfactant-mediated concentrated emulsions (i.e., gel-like systems) where the continuous phase is minimal and it is not clear that Kalra teaches using surfactants in an amount sufficient to form a discontinuous phase (id. at 13; Reply Br. 5). Appellants contend that Kalra teaches making homopolymers and there is no suggestion of using multiple types of monomers for polymerization. (App. Br. 13; Reply Br. 5). Contrary to Appellants' arguments, the Examiner recognized that Kaplan fails to teach a two-phase biocatalytic polymerization system and the Examiner relies on Kalra to teach such a feature (Ans. 3-6). The Examiner finds that Kaplan teaches that using a biocatalytic polymerization process is advantageous because it provides high efficiency of the reactions without the need for a harsh environment (id. at 4 ). The Examiner further finds that Kalra teaches that biocatalytic polymerization in the presence of surfactants gives higher yields with shorter reaction times (id. at 5). The Examiner concludes that it would have been obvious to substitute the polymerization catalyst of Zhou with the enzymatic catalyst of Kaplan because Kalra teaches that polymerizing vinyl monomers in the presence of HRP and hydrogen peroxide can be successfully carried out with or without the presence of a surfactant (id. at 5-6). Appellants' arguments do not specifically address the Examiner's rejection based on substituting Kaplan's enzymatic catalyst for Zhou's 4 Appeal 2011-004332 Application 11/698,518 catalyst as suggested by Kalra's enzymatic polymerization in a two-phase system. Though Appellants contend that Kalra does not teach that the surfactant is present in an amount sufficient to form a two-phase system, Appellants concede that Kalra teaches forming an emulsion 1 and that a continuous phase is present (albeit minimal according to Appellants). Because claim 1 does not require a particular amount of continuous phase relative to discontinuous phase, Kalra's amount of continuous phase is not excluded by the claim. Appellants' arguments are unpersuasive because they attack the references individually instead of addressing what the combined teachings of the art would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). As noted above, the Examiner's conclusion is based upon the teachings of Zhou, Kaplan and Kalra together, not the piecemeal combination argued by Appellants. Appellants' arguments fail to show harmful error with the Examiner's findings and conclusion based thereon that one of ordinary skill in the art would have reasonably expected that substitution of Kalra's or Kaplan's enzymatic catalyst for Zhou's polymerization catalyst would have been successful (Ans. 5-6). We therefore affirm the Examiner's rejection of claims 1, 5-15, 18, and 19. 1 Emulsion is defined as "a stable mixture of two or more immiscible liquids held in suspension by small percentages of substances called emulsifiers." HAWLEY'S CONDENSED CHEMICAL DICTIONARY 461 (Richard J. Lewis Sr. ed.,lih ed. 1993). 5 Appeal 2011-004332 Application 11/698,518 CLAHvIS 2 AND 3 Appellants argue that claim 2 requires that the anti-oxidant group is unprotected, which is not taught by Zhou (App. Br. 14; Reply Br. 5-6). Appellants argue that Kaplan does not teach polymerization of antioxidant modified monomers whether protected or not (App. Br. 14; Reply Br. 6). There is no dispute that Zhou teaches protecting the anti-oxidant group (Ans. 8). The Examiner's rejection is based on substituting Kaplan's enzymatic catalyst for Zhou's polymerization catalyst in order to use less harsh conditions where protection of the anti-oxidant group would not have been necessary as suggested by Kaplan's lack of protecting groups on the anti-oxidant moiety (id. at 6). Appellants' argument that Kaplan does not teach polymerization of anti-oxidant modified monomers is factually incorrect. Kaplan plainly teaches on page 21, lines 25-26 that "Polymerization of the functionalized monomers can be done via enzymatic methods." Appellants fail to challenge specifically the Examiner's finding that Kaplan does not teach forming protecting groups on the anti-oxidant moiety. Regarding claim 3, Appellants argue that the cited references do not teach or suggest the use of horseradish peroxidase (HRP) in a two-phase polymerization system having a hydrophobic discontinuous phase with multiple monomers (App. Br. 15; Reply Br. 7). However, Appellants' argument is unpersuasive for the reasons discussed supra. Appellants further contend that the references do not teach unprotected anti-oxidant-modified monomer in a hydrophilic continuous phase. App. Br. 15; Reply Br. 7. Contrary to this argument, the Examiner finds that Zhou teaches the same conditions as disclosed by Appellants and 6 Appeal 2011-004332 Application 11/698,518 the only difference is using enzymatic catalysis which is taught by Kaplan and Kalra (Ans. 6 and 11-12). The Examiner reasons that because the reaction conditions of Zhou as modified by Kaplan and Kalra would have been the same as disclosed by Appellants, the particularly claimed transfer of monomer would have flowed naturally from the combination. Appellants' arguments do not specifically address the Examiner's findings or analysis. On this record, Appellants have failed to show harmful error in the Examiner's rejection of claims 2 and 3. We affirm the Examiner'sÂ§ 103 rejection of claims 2, 3, 16, and 17 over Zhou, Kaplan and Kalra as the preponderance of the evidence favors the Examiner's obviousness conclusion. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. bar ORDER AFFIRMED 7