Ex parte Brehm
| Decision Date | 27 December 2006 |
| Docket Number | Application 10/069,Appeal 2006-2401,721 |
| Court | Patent Trial and Appeal Board |
| Parties | Ex parte HELMUT BREHM and HANS-GEORG HARTAN Technology Center 1700 |
This Opinion is Not binding Precedent of the Board
Before EDWARD C. KIMLIN, CHARLES F. WARREN, and THOMAS A. WALTZ Administrative Patent Judges.
WARREN, Administrative Patent Judge.
This is an appeal under 35 U.S.C. § 134 from the decision of the Examiner finally rejecting claims 1 through 7, 9 through 17 19, and 20. Claim 18 is also of record and has been withdrawn from consideration by the Examiner under 37 C.F.R. § 1.142(b).
The Appeal was heard October 19, 2006.[1]
Claims 1 through 4, 9 and 19 illustrate Appellants' invention of a water-soluble polymer composition obtained by continuous polymerization of at least one unsaturated monomer and a process of continuous polymerization, and are representative of the claims on appeal:
1. A water-soluble polymer composition obtained by continuous polymerization of at least one unsaturated monomer, wherein during said polymerization at least one parameter biasing the polymerization is varied according to a recurrent pattern.
2. The polymer composition according to claim 1, wherein the pattern is an oscillation about a mean value which can be selected at random.
3. The polymer composition according to claim 2, wherein the oscillation is harmonic or anharmonic.
4. The polymer composition according to claim 1, wherein at least one of the following parameters is subject to variation:
9. A process for the continuous polymerization of a water-soluble polymer composition, said process comprising
polymerizing at least one unsaturated monomer, wherein at least one parameter biasing said polymerization is varied according to a recurrent pattern.
The references relied on by the Examiner are:
Patel
US 6, 103, 839
Aug. 15, 2000
Hatsuda
US 6, 174, 978
Jan. 16, 2001
Brehm
US 6, 911, 499 B1
Jun. 28, 2005
Ramesh
EP 0 630 909 A1
Dec. 28, 1994
Davies
EP 0 296 331 B1
The Examiner has advanced the following grounds of rejection on appeal:
Appellants substantively argue independent claim 1 with respect to the first ground of rejection, noting only the limitations of the remaining claims and alleging that the compositions of Patel are "different" from the so claimed compositions (Br., e.g., 4:5, 4-5, and 5-8; Reply Br., e.g., 9:12-14). With respect to the second ground of rejection, Appellants argue product-by-process claims 1 through 7, 15, 16, 19, and 20 as a group and process claims 9 through 14 as a group, substantively arguing independent claims 1, 9, and 19, noting only the limitations of the remaining claims and alleging that the compositions and processes of each of the references are "different" from the so claimed compositions and processes (Br., e.g., 8:23-9:3, 10:2-4, and 10-16; Reply Br., e.g., 10:13-16 and 11:5-7). In this respect, 37 C.F.R. § 41.37(c)(1)(vii) (2005) states in pertinent part, "merely [pointing] out what a claim recites will not be considered an argument for separate patentability of the claim." Appellants argue the appealed claims as a group with respect to the third ground of rejection (Br. 16-17; Reply Br. 12-13). The Examiner considered the sets of claims in this manner (Answer 4, 6-7, and 7-9). Thus, we decide this appeal based on claims 1 and 9 and on individual claims to the extent argued by Appellants. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
We affirm the first stated rejection with respect to claims 1, 5 through 7, and 20 under § 102(b) and claims 1 through 7, 19, and 20 under § 103(a) over Patel; the second stated rejection of claims 1 through 4, 6, 7, 9 through 12, 16, 17, 19, and 20 under § 102(b) and claims 1 through 7, 9 through 17, 19, and 20 under § 103(a) over Ramesh; the second stated rejection under § 103(a) over each of Hatsuda and Davies; and the third stated rejection. We reverse the first stated rejection with respect to claims 2 through 4 and 19 under § 102(b); the second stated rejection of claims 5 and 13 through 15 under § 102(b) over Ramesh; and the second stated rejection under § 102(b) over each of Hatsuda and Davies.
Accordingly, we affirm the decision of the Examiner.
We refer to the Answer and to the Brief and Reply Brief for a complete exposition of the positions advanced by the Examiner and Appellants.
OPINIONThe principal issues before us require that we interpret claims 1 and 9, and certain dependent claims necessary to that purpose, by giving the terms thereof the broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the Specification unless another meaning is intended by Appellants as established therein, and without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 U.S.P.Q.2d 1827, 1830 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372, 54 U.S.P.Q.2d 1664, 1666-67 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 U.S.P.Q.2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 U.S.P.Q.2d 1320, 1322 (Fed. Cir. 1989).
Claim 9 defines a continuous polymerization process for producing a water-soluble polymer, and claim 1 defines a water-soluble polymer product in product-by-process format encompassing the same continuous polymerization process. See, e.g., In re Spada, 911 F.2d 705, 708-09, 15 U.S.P.Q.2d 1655, 1657-58 (Fed. Cir. 1990); In re Thorpe, 777 F.2d 695, 697, 227 U.S.P.Q. 964, 966 (Fed. Cir. 1985); In re Wertheim, 541 F.2d 257, 271, 191 U.S.P.Q. 90, 103-04 (CCPA 1976). The process specified in each claim comprises at least any manner of continuous polymerization of at least any unsaturated monomer using any manner of apparatus which provides a polymer composition that is water soluble to any extent. Thus, the continuous process can be conducted by introducing in any manner the unsaturated monomer and any other reactants and reagents, separately or in admixture, on any apparatus providing a moving support. The moving support apparatus can include any conveying or polymerization belt and any extruder, the attendant processing advantages and disadvantages of the apparatus notwithstanding. See claims 4, 5, 12, 13, and 19; Specification, e.g., 2:28-3:10 and 3:20-32; see generally, Patel col. 1, l.19, to col. 4, l. 11, col. 6, ll. 33-37, and col. 7, l. 19, to col. 8, l. 3.
There is no dispute that variations in such parameters as reactants and reagents, reaction conditions, and apparatus affect, that is, bias, the polymerization reactions occurring during the continuous process, thus resulting in different mixtures of different polymers and/or copolymers having different chemical and/or physical properties (see Reply Br. 1-8). The variations can result from a step of controlling a biasing parameter to any possible extent. This can include varying reactants and/or reagents at the beginning of the continuous process, e.g., introduced at the beginning of a moving support apparatus; the introduction of the same or different amounts of reactants and reagents at different points or zones along the moving support apparatus; and regulation of temperature or other conditions at different points or zones of the apparatus.
The variations can also result from uncontrolled conditions which affect biasing parameters, such as slightly varying amounts of reactants and reagents introduced on or in the apparatus by a meter set at a particular amount; non-uniform mixing of solutions of reactants and reagents before introduction to the apparatus; and the non-uniform mixing of reactants and reagents during residency caused by the apparatus. Id. There is no claim limitation which requires that the controlled biasing parameter has a greater affect on the resulting polymer composition than the uncontrolled conditions.
The processes encompassed by claim 9 involve at least one step varying at least one parameter biasing a continuous polymerization to obtain a water-soluble polymer composition. The water-soluble polymer compositions products encompassed by claim 1 are the result of at least one controlled variation step and any and all uncontrolled variations in a parameter or parameters biasing a continuous polymerization process.
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