Documente Academic
Documente Profesional
Documente Cultură
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LIFENG ZHANG
_________
Appeal 2011-000408
Application 10/677,436
Technology Center 1600
__________
Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C. PRATS,
Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. 134 from the final rejection of
claims 1, 29, and 30, directed to a reduced viscosity hydrophobic thickener
system for thickening a polymer-containing aqueous system. The claims
have been rejected on the grounds of obviousness and non-statutory
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
6(b).
Appeal 2011-000408
Application 10/677,436
STATEMENT OF THE CASE
Polymer-containing aqueous systems, such as paint formulations,
typically employ [associative] thickeners to obtain the desired degree of
viscosity needed for the proper formulation and application of the aqueous
system (Spec. 1, 14). Associative thickeners are so-called because the
mechanism by which they thicken is believed to involve hydrophobic
associations between the hydrophobic moieties on the thickener molecules
themselves and/or with other hydrophobic surfaces (id.).
It is conventional to suppress the viscosity of the aqueous solution
containing the associative thickener to allow for ease in its handling before
its use as a thickener (id. at 1), but the viscosity suppression must be
reversible [i]n order for the thickener to [ultimately] perform its intended
viscosity increasing function (id. at 9). The present invention is directed to
a reduced-viscosity composition containing a hydrophobically modified
polyethoxylated urethane associative thickener with at least one diisocyanate
functional group, and a cyclodextrin-containing compound.
Claims 1, 29, and 30 are pending and on appeal; claims 10, 12, 13,
and 16-24 have been allowed; and claims 4 and 6-9 have been withdrawn
from consideration (App. Br. 2).
Claim 29 reads as follows:
29. A composition for a reduced viscosity hydrophobic thickener system
for thickening a polymer-containing aqueous system, said composition
comprising:
a)
a cyclodextrin-containing compound having a hydrophobic
cavity of a predetermined size; and
b)
a hydrophobically modified polyethoxylated urethane thickener
comprising at least one terminal phobe of a size capable of complexing with
said hydrophobic cavity of said cyclodextrin-containing compound and at
least one urethane linkage formed from a diisocyanate comprising
2
Appeal 2011-000408
Application 10/677,436
1,4-tetramethylene diisocyanate, 1,6-hexamethylene diisocyanate, 1,10decamethylene diisocyanate, 2,2,4-trimethyl-1,6-diisocyanatohexane, and a
combination comprising at least one of the foregoing diisocyanates;
wherein at least a portion of said cyclodextrin-containing compound is
complexed with said hydrophobically modified thickener in such a way that
at least a portion of at least one of said phobes at least partially fills said
hydrophobic cavity.
Claim 1, also an independent claim, is similar to claim 29 except that
the cyclodextrin is limited to methyl--cyclodextrin, while the list of suitable
thickeners is more extensive.
The Examiner relies on the following evidence:
Emmons et al
Tsuchiyama et al.
Eisenhart et al.
Lau et al.
Lau
Tanzer et al.
Harris et al.
US 4,079,028
US 4,746,734
US 5,137,571
US 5,376,709
US 5,521,266
US 6,887,928 B2
US 7,125,919 B2
Appeal 2011-000408
Application 10/677,436
V. Claims 29 and 30 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 1 of US Patent 5,376,709 in
view of Emmons (Ans. 8-9).
VI. Claims 29 and 30 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 2 of US Patent 5,137,571 in
view of Emmons (Ans. 9-10).
VII. Claim 1 on the ground of nonstatutory obviousness-type double
patenting as unpatentable over claim 2 of US Patent 5,137,571 in view of
Emmons, Lau 709, and Lau 266 (Ans. 9-10).
OBVIOUSNESS
Findings of Fact
1.
Appeal 2011-000408
Application 10/677,436
et al., which is directed to polyurethane thickeners, characterized by at least
three hydrophobic groups (Eisenhart, col. 1, 59-60).
4.
Appeal 2011-000408
Application 10/677,436
Example 7 demonstrates the viscosity-reducing effect of betacyclodextrin on solutions containing other types of associative thickeners
(id. at col. 10, ll. 38-41), specifically, a hydrophobically-modified alkali
soluble emulsion thickener, a hydrophobically-modified hydroxyethyl
cellulose thickener, and an unmodified (non-hydrophobic) hydroxyethyl
cellulose thickener (id. at col. 10, ll. 42-48). The results show that betacyclodextrin can reduce the viscosity of these two hydrophobically modified
thickeners . . . but has no effect on the viscosity for the non-hydrophobic
thickener (id. at col. 11, ll. 12-15).
7.
Appeal 2011-000408
Application 10/677,436
9.
Appeal 2011-000408
Application 10/677,436
diisocyanate (HDI); 1,10-decamethylene diisocyanate;
2,2,4-trimethyl-1,6-diisocyanatohexane;
1,4-cyclohexylene
diisocyanate;
4,4'-methylenebis(isocyanatocyclohexane)
(Des W); [etc.]
(id. at 7 (emphasis added).)
11.
Appeal 2011-000408
Application 10/677,436
urethane thickeners taught by Emmons with a reasonable expectation of
success because Eisenhart suggests their use in order to eliminate the need
for organic solvents as viscosity modifiers (id. at 5).
Appellant contends that [n]owhere in Eisenhart is there any teaching
or suggestion to use the modified polyethoxylated urethane thickeners taught
by Emmons because Eisenhart clearly indicates that Emmons is
considered prior art . . . that suffers from disadvantages remedied by the
invention of Eisenhart (App. Br. 6).
This argument is not persuasive. Eisenhart discloses [a] method for
improving associative thickeners by the addition of one or more cyclodextrin
compounds to aqueous solutions containing associative thickeners which
suppresses the viscosity of [the] aqueous solutions . . . and eliminates the
need for organic cosolvents (Eisenhart, col. 2, ll. 24-31; FF5), and
Eisenhart specifically identifies Emmons as prior art directed to associative
thickeners formulated with organic cosolvents (Eisenhart, col. 1, ll. 54-62;
FF3). We agree with the Examiner that these disclosed disadvantages
provide precisely the motivation for combining the references (Ans. 10),
and that it would have been obvious to select any of the associative
thickeners disclosed by Emmons.
Appellant further contends that Eisenharts exclusive . . . teaching of
urethane thickeners based on 4,4-methylene-bis(isocyanatocyclohexane)
[Des W], a cyclic diisocyanate, in 66 compositions set forth in six
examples, can be fairly and reasonably construed as teaching away from
urethane thickeners based on straight chain or branched chain (acrylic)
diisocyanates (App. Br. 7). In other words, Appellant contends that one of
skill in the art would have been dissuaded from selecting straight and
Appeal 2011-000408
Application 10/677,436
branched chain diisocyanates, which are the only type recited in the present
claims, from the more extensive list disclosed by Emmons, which includes
cyclic compounds like 4,4-methylene-bis(isocyanatocyclohexane) (Des
W).
We disagree. A reference is said to teach away from a claimed
invention when it suggests that the line of development flowing from the
reference's disclosure is unlikely to be productive of the result sought by the
applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That is not the
case here. Nothing in Eisenhart suggests that cyclodextrins would be
unlikely to suppress the viscosity of aqueous solutions containing
hydrophobically-modified associative thickeners other than the three used in
Examples 1-7. Indeed, only the viscosity of a solution containing a nonhydrophobic cellulose thickener was unaffected by the presence of
cyclodextrin (FF6). In any case, it is well settled that disclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure or even non-preferred embodiments. See In re Susi, 440 F.2d
442, 446 n.3 (CCPA 1971).
Finally, Appellant contends that the experimental results provided in
the present application . . . unequivocally demonstrate that compositions . . .
recited in claims 29 and 30, [all of which are straight-chained diisocyanates]
exhibit unexpected beneficial properties, which are sufficient to rebut a
prima facie case of obviousness (App. Br. 8). Specifically, Appellant
contends that Examples 1-19 of the Specification consistently show that the
viscosity of aqueous solutions of urethane thickeners derived from 1,6hexamethylene diisocyanate (HDI), which is a straight chain diisocyanate, is
suppressed more than the viscosity of aqueous solutions of urethane
10
Appeal 2011-000408
Application 10/677,436
thickeners derived from (4,4'-methylene bis(isocyanatocyclohexane, or Des
W), which is a cyclic diisocyanate, when they are combined with methyl-cyclodextrin or methyl--cyclodextrin (id. at 9). In short, Appellant
contends that [u]nexpectedly, the viscosity of solutions comprising
urethane thickeners derived from straight chain and branched chain
diisocyanates was suppressed to a greater extent than the viscosity of
solutions comprising urethane thickeners derived from cyclic or polycyclic
diisocyanates (id. at 8-9).
We are not persuaded that the working examples in the Specification
demonstrate unexpected results stemming from the choice of urethane
thickeners derived from a straight chain diisocyanate versus a cyclic
diisocyanate.
First of all, Appellant has not established a nexus between the claimed
invention and the allegedly unexpected results. See Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (For objective evidence of
secondary considerations to be accorded substantial weight, its proponent
must establish a nexus between the evidence and the merits of the claimed
invention.). In this case, the Specification merely states that unexpectedly
. . . the viscosity suppression efficiency of the cyclodextrin-containing
compound can be significantly improved by careful selection of the
thickener phobe(s), the diisocyanate functional group(s), and the
cyclodextrin-containing compound (FF9), and that unexpectedly . . . the
configuration of the diisocanate [sic] used to make the thickener urethane
linkage affects the viscosity suppression efficiency of a cyclodextrincontaining compound (FF10). The Specification does suggest that the
differences may be due to differences in flexibility of the diisocyanate chain
11
Appeal 2011-000408
Application 10/677,436
(FF10), but no mention is made of a difference stemming from the use of a
cyclic diisocyanate versus and straight-chained diisocyanate. Moreover,
both cyclic and straight-chained diisocyanates are listed as useful for the
present invention (FF10).
In addition, objective evidence of nonobviousness must be
commensurate in scope with the claims. In re Kulling, 897 F.2d 1147,
1149 (Fed. Cir. 1990). The Specification contains several examples
comparing thickeners made with a single cyclic diisocyanate (Des W) or a
single straight-chained diisocyanate (HDI); however, given the
Specifications discussion of several other factors that may impact the
efficiency of viscosity reduction, we are not persuaded that Appellant has
adequately demonstrated that the superior results obtained with HDI are due
to the cyclic versus straight-chain distinction, or that the results obtained
with HDI would be significantly better than the other diisocyanates
disclosed by Emmons.
Finally, while we agree that the working examples consistently show
that the viscosity of aqueous solutions of urethane thickeners derived from
HDI is suppressed more than the viscosity of aqueous solutions of urethane
thickeners derived from Des W when they are combined with methyl-cyclodextrin or methyl--cyclodextrin, Appellant has not pointed to
anything in the Specification that characterizes this particular result as
unexpected. Nor has Appellant otherwise established that one of ordinary
skill in the art would not have expected thickeners modified by HDI and
thickeners modified by Des W to affect viscosity differently. Attorney
argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
12
Appeal 2011-000408
Application 10/677,436
The burden of demonstrating unexpected results rests on the party
asserting them. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). That
burden has not been carried here.
The rejection of claims 29 and 30 as unpatentable over Eisenhart and
Emmons is affirmed.
II.
Claim 1 stands rejected as unpatentable over Eisenhart, Emmons, Lau
709, and Lau 266. As discussed above, independent claim 1 is similar to
claim 29 except that the cyclodextrin is limited to methyl--cyclodextrin,
while the list of suitable diisocyanates is more extensive - although all
appear to be straight-chained or branched.
This rejection is largely analogous to Rejection I, with the additional
citation of Lau 709 and Lau 266 as evidence that methyl cyclodextrins are
known viscosity modifiers in combination with hydrophobically modified
associative thickeners (Ans. 6).
To the extent Appellant reiterates the arguments made in response to
Rejection I, we are not persuaded for the same reasons set forth above.
To the extent Appellant contends that Eisenhart teaches away from
methyl cyclodextrins, we disagree. Appellant contends that Eisenharts
teaching of water-soluble cyclodextrins that are more water-soluble [than
unmodified cyclodextrins] is a clear teaching away from methyl
cyclodextrins (App. Br. 15) because one of skill in the art will expect . . .
methyl cyclodextrins [to be] considerably less water soluble than unmodified
cyclodextrins (id.).
Eisenhart teaches that alpha, beta, and gamma cyclodextrins are all
effective transient viscosity suppressing agents for hydrophobic thickeners
13
Appeal 2011-000408
Application 10/677,436
(FF5), as are modified cyclodextrins, for example, those that are more
soluble in water than the unmodified cyclodextrins (id.). Eisenhart does not
suggest that other cyclodextrin derivatives would not work as viscosity
suppressing agents. As discussed above, disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
even non-preferred embodiments.
Appellant further contends that it would not have been obvious to
substitute methyl--cyclodextrin with methyl--cyclodextrin because they
are quite different in their physical structures (App. Br. 17). Appellant
contends that [m]ethyl--cyclodextrin is composed of six glucopyranoside
units arranged in a ring, while methyl--cyclodextrin is composed of seven
glucopyranoside units arranged in a ring (id.), thus, the cavity of methyl-cyclodextrin is larger than the cavity of methyl--cyclodextrin, and their
physical properties are different, for example, methyl--cyclodextrin is
much more water-soluble than methyl--cyclodextrin (id.).
This argument is not persuasive. Again, Eisenhart teaches that alpha,
beta, and gamma cyclodextrins are all effective viscosity suppressing agents
for hydrophobic associative thickeners (FF5).
Accordingly, the rejection of claim 1 as unpatentable over Eisenhart,
Emmons, Lau 709, and Lau 266 is affirmed.
DOUBLE PATENTING
Principles of Law
Nonstatutory double patenting was borne out of 35 U.S.C. 101, not
103. Specifically, 101 precludes more than one patent on the same
invention. [The Court of Customs and Patent Appeals], concerned that
applicants could evade the 101 requirement by drafting claims that vary
14
Appeal 2011-000408
Application 10/677,436
slightly from the earlier patent, fashioned the doctrine of nonstatutory
double patenting to prevent issuance of a patent on claims that are nearly
identical to claims in an earlier patent. Eli Lilly & Co. v. Teva Pharms.
USA, Inc., 619 F.3d 1329, 1341 (Fed. Cir. 2010).
An obviousness-type double patenting rejection is based on the claims
of an issued patent. The specification cannot be treated as prior art if it does
not qualify as prior art under some provision of 102. See In re Kaplan,
789 F.2d 1574, 1580 (Fed. Cir. 1986).
III.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 4 of US
Patent 7,125,919 in view of Emmons (Ans. 6-7).
Claim 4 of the patent is directed to a tinting composition comprising
a colorant, a hydrophobically modified alkali soluble polymer, a nonionic
hydrophobically modified ethylene oxide urethane block copolymer, and a
macromolecular organic compound having a hydrophobic cavity.
The Examiner concludes that the presently claimed composition is not
patentably distinct from the patented composition because cyclodextrins are
disclosed in the [Patents] written description of macromolecular organic
compound having a hydrophobic cavity (Ans. 7), and Emmons discloses
that hydrophobically modified ethylene oxide urethane block copolymers
have utility for preparing paint, a tinting composition comprising a colorant
(id.).
We will reverse this rejection. Not only does claim 4 of the patent fail
to recite the required thickeners, it is considerably broader than the present
claim in its generic recitation of a macromolecular organic compound
15
Appeal 2011-000408
Application 10/677,436
having a hydrophobic cavity. The Examiner relies on the written
description of the patent, which lists cyclodextrins, among other types of
compounds, as examples of the generic macromolecular organic compound.
However, the Specification of the Patent is not available as prior art to
combine with Emmons teachings.
The rejection of claims 29 and 30 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 4 of US
Patent 7,125,919 in view of Emmons is reversed.
IV.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of US
Patent 6,887,928 in view of Emmons (Ans. 7-8).
This rejection is analogous to obviousness-type double-patenting
Rejection III, and is reversed for the same reasons.
V.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 1 of US
Patent 5,376,709 in view of Emmons (Ans. 8-9).
Claim 1 of 709 is directed, in relevant part, to a method for
eliminating the need for organic solvents in aqueous systems containing
hydrophobically-modified polyethoxylated urethane thickeners by adding
methyl--cyclodextrin to the solution. Emmons discloses the specific
thickeners required by claims 29 and 30 (FF7). The Examiner concludes
that it would have been obvious for one skilled in the art to substitute
Emmons specific hydrophobically modified urethane thickeners for the
16
Appeal 2011-000408
Application 10/677,436
generic hydrophobically modified polyethoxylated urethane thickeners of
patented claim 1 (Ans. 8-9).
Appellant contends that the arguments regarding the previous
obviousness-type double patenting rejections apply equally to this rejection
(App. Br. 23). That is, Appellant argues that the double patenting rejection
should be reversed based on the arguments presented in response to the
obviousness rejection of claim 29 (id. at 20).
We are not persuaded for the reasons discussed above in connection
with the obviousness rejection of claim 29.
To the extent Appellant contends that the Specification demonstrates
surprising and unexpected results (App. Br. 20, 22), again, we are not
persuaded for the reasons discussed in connection with the obviousness
rejection of claims 29 and 30 (rejection I).
The rejection of claims 29 and 30 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 1 of US
Patent 5,376,709 in view of Emmons is affirmed.
VI.
Claims 29 and 30 stand rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 2 of US
Patent 5,137,571 in view of Emmons (Ans. 9-10).
As acknowledged by Appellant (App. Br. 24), this rejection is
analogous to obviousness rejection I.
We affirm for the reasons discussed in connection with that rejection.
17
Appeal 2011-000408
Application 10/677,436
VII.
Claim 1 stands rejected on the ground of nonstatutory obviousnesstype double patenting as unpatentable over claim 2 of US Patent 5,137,571
in view of Emmons, Lau 709, and Lau 266 (Ans. 9-10).
As acknowledged by Appellant (App. Br. 25), this rejection is
analogous to obviousness rejection II.
We affirm for the reasons discussed in connection with that rejection.
SUMMARY
Obviousness Rejections I and II are affirmed. Because our rationale
for affirming these obviousness rejections differs somewhat from the
Examiners, we designate those affirmances as new grounds of rejection
under 37 C.F.R. 41.50(b).
Nonstatutory obviousness-type double patenting rejections III and IV
are reversed, while Rejections V, VI, and VII are affirmed.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 CFR 41.52(a)(1) provides
that Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board.
In addition to affirming the examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. 41.50(b) provides [a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
18
Appeal 2011-000408
Application 10/677,436
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution.
Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under 41.52 by the Board upon the same record . . . .
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, 37 C.F.R. 41.50(b)
lp
19