DOW GLOBAL TECHNOLOGIES LLC et al.

Patent Trials and Appeals Board

Oct 8, 2020

14646512 - (D) (P.T.A.B. Oct. 8, 2020)

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.
14/646,512 05/21/2015 Jeffrey Wilbur 73778-US-PCT 1828
76104 7590 10/08/2020
The Dow Chemical Company/Brooks Cameron & Huebsch
1201 MARQUETTE AVENUE SOUTH, SUITE 400
Minneapolis, MN 55403
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
10/08/2020 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):
DOW.DOCKETING@BIPL.NET
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY WILBUR, DENISE LINDENMUTH,
RAY E. DRUMRIGHT, DHARAKUMAR METLA,
DAVID L. MALOTKY, and BERNHARD KAINZ
Appeal 2019-006744
Application 14/646,512
Technology Center 1700
Before TERRY J. OWENS, DONNA M. PRAISS, and MICHAEL G.
McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 8–18, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to coating compositions and coated articles.
Claim 1, reproduced below, is illustrative of the claimed subject matter:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Dow Global
Technologies LLC (Appeal Br. 3).
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1. A coating composition comprising:
from 50 to 85 percent of an aqueous dispersion based on
a total weight of the coating composition, wherein the aqueous
dispersion comprises a melt blending product of (a) a base
polymer that is an alpha-olefin homopolymer or an alpha-olefin
copolymer, wherein the alpha-olefin is selected from ethylene,
propylene, 1-butene, 3-methyl-1-butene, 4-methyl-1-pentene,
3-methyl-1-pentene, 1-heptene, 1-hexene, 1-octene, 1-decene,
and 1-dodecene, (b) a polymeric stabilizing agent, and (c) a
compatiblizer, wherein the aqueous dispersion has a solid
content from 15 weight percent to 70 weight percent based on a
total weight of the aqueous dispersion, the solid content
comprises from 50 to 85 percent by weight of the base polymer
based on a total weight of the solids content, from 10 to 35
percent by weight of the stabilizing agent based on the total
weight of the solids content, and from 2 to 15 percent by weight
of the compatiblizer based on the total weight of the solids
content;
an abrasion reducing composition comprising a
polyethylene wax that is from 0.01 weight percent to 1.5 weight
percent of the coating composition based on the total weight of
the coating composition, wherein the polyethylene wax has a
melting point of less than 113 °C as measured according to
ASTM-D-127;
a solvent, wherein the solvent is from 3 weight percent to
20 weight percent of the coating composition based on the total
weight of the coating composition;
a basic water composition comprising from 90 to 99.99
percent by weight water based on a total weight of the basic
water composition and from 0.01 percent to 10 percent by
weight of a base based on the total weight of the basic water
composition, wherein the basic water composition is from
10 weight percent to 25 weight percent of the coating
composition based on the total weight of the coating
composition; and
a crosslinker, wherein the crosslinker is from 0.01 weight
percent to 40 weight percent of the coating composition based
on the total weight of the coating composition.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nakamoto JP 8-207199 A Aug 13, 1996
Shiba US 6,777,096 B2 Aug. 17, 2004
Foster US 2005/0009698 A1 Jan. 13, 2005
Jensen Moller US 2006/0040061 A1 Feb. 23, 2006
Klier US 2010/0143837 A1 June 10, 2010
Kainz WO 2011/011707 A2 Jan. 27, 2011
POLYWAX POLYWAX
Polyethylenes
2011

REJECTIONS
Claims 1, 8–18, and 20 stand rejected under 35 U.S.C. § 103(a) over
1) Kainz in view of Shiba, Klier, and POLYWAX; 2) Kainz in view of
Shiba, Klier, Nakamoto, and Foster; and 3) Kainz in view of Shiba and
Jensen Moller. Claim 20 also stands rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
OPINION
Rejections under 35 U.S.C. § 103(a)
The Appellant states that claims 8–18 stand or fall with claim 1
(Appeal Br. 24, 32). We therefore limit our discussion to claims 1 and 20.
See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Although additional references are
applied in the second and third rejections, the Appellant relies upon the same
arguments with respect to all three rejections (Appeal Br. 8–32). The
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Application 14/646,512
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following discussion of the rejection over Kainz in view of Shiba, Klier, and
POLYWAX, therefore, applies to all of the rejections.
Kainz discloses an aqueous dispersion coating composition
comprising 15–99 wt% of one or more base polymers (pp. 5–18), 1–50 wt%
of one or more stabilizing agents (pp. 18–22), one of which can be
LICOCENE 6452 (p. 19), which is one of the Appellant’s compatibilizers
(Spec. ¶ 36), polyethylene wax (pp. 24, 32), 30–75 vol% water (p. 23), one
or more organic solvents (pp. 23–24)), a basic neutralizing agent (pp. 22–24,
32), and a crosslinking agent (pp. 24–29 ). The composition has a solids
range of about 1–99 vol% (p. 23), can be formed by melt kneading (pp. 29–
31), and is useful for coating cans (pp. 32–35). Kainz does not disclose the
amount or melting point of the polyethylene wax or the amount of the one or
more organic solvents.
Shiba discloses an aqueous polyolefin resin dispersion which
comprises a specific polyolefin resin (preferred amount 1–60 wt%), a basic
compound, and an aqueous medium, and is useful for forming an
anticorrosion coating on metal (col. 2, l. 48 – col. 3, l. 60; col. 9, ll. 42–51).
The aqueous medium can contain an organic solvent in an optimal amount
of 3–30 wt% to promote water compatibilization of the polyolefin resin to
reduce the diameter of the dispersed particles (col. 7, l. 66 – col. 8, l. 20;
col. 9, ll. 7–41). The aqueous dispersion can contain less than 0.1 wt% of a
non-volatile water-compatibilizing agent such as a polyethylene wax having
a number average molecular weight not greater than 5,000, provided that it
does not deteriorate the aqueous dispersion’s intrinsic properties (col. 1,
ll. 46–52, 61–63; col. 15, ll. 22–27).
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POLYWAX discloses polyethylene waxes having number average
molecular weights of 1,000 or less and melting points of 113 ºC or less.2
The Appellant argues that because Shiba’s polyolefin terpolymer
(col. 3, l. 60 – p. 3, l. 28) differs from the Appellant’s alpha-olefin
copolymer, Shiba is nonanalogous art (Appeal Br. 8–11).
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor’s endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA
1979).
The field of endeavor of both the Appellant (Spec. ¶ 4) and Shiba
(col. 3, ll. 44–46) is coating compositions made from polyolefin-containing
aqueous dispersions. Consequently, Shiba is analogous art.
The Appellant argues that Kainz and Shiba teach away from their
combination because Kainz includes a polyethylene wax nonvolatile water-
compatibilizing agent in the aqueous dispersion (pp. 24, 32) whereas Shiba
does not add a nonvolatile water-compatibilizing agent to the aqueous
dispersion (col. 2, ll. 50–57) (Appeal Br. 11–13).
Shiba discloses that the aqueous dispersion preferably contains no
nonvolatile water-compatibilizing agent, but can contain such an agent in a
proportion smaller than 0.1 wt% based on the amount of polyolefin resin as
long as the effects of the aqueous dispersion are not impaired (col. 14, ll. 48–
52). Thus, Shiba would have suggested, to one of ordinary skill in the art,
adding to the aqueous dispersion less than 0.1 wt%, based on the polyolefin

2 A discussion of Klier is not necessary to our decision.
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resin, of a nonvolatile water-compatibilizing agent such as polyethylene wax
having a number average molecular weight no greater than 5,000 (col. 14,
ll. 61–63, col. 15, ll. 22–27), to increase the compatibility of the polyolefin
resin with water. Amounts of polyethylene wax less than 0.1 wt% include
amounts within the Appellant’s recited range of 0.01–1.5 wt% (claims 1
and 20). Because the POLYWAX polyethylene waxes have number average
molecular weights no greater than 5,000, one of ordinary skill in the art
would have used them in Shiba’s aqueous dispersion. POLYWAX discloses
that the waxes having number average molecular weights of 1,000 or less
have melting points of 113 ºC or less.
The Appellant argues that because Kainz (Table 1, Examples A, B
and D) achieves average particle diameters ≤ 1 µm without the teachings of
Shiba, one of ordinary skill in the art would not have modified Kainz’s
aqueous dispersion to include organic solvent as taught by Shiba (col. 3,
ll. 29–34; col. 7, l. 66 – col. 8, l. 20) to obtain such a particle diameter
(Appeal Br. 14–15).
Kainz discloses that the aqueous dispersion can contain organic
solvent (pp. 23, 24), but does not disclose the amount of organic solvent.
Although Kainz’s polyolefin homopolymer or copolymer (pp. 6–18) differs
from Shiba’s polyolefin terpolymer (col. 2, l. 60 – col. 3, l. 29), Shiba’s
disclosure that blending organic solvent in the aqueous medium optimally in
the range of 3–30 wt% promotes water compatibilization of the polyolefin
resin (col. 7, l. 66 – col. 8, l. 20) would have suggested, to one of ordinary
skill in the art, using Kainz’s organic solvent in that amount to promote
water compatibilization of Kainz’s polyolefin resin. See In re O’Farrell, 853
F.2d 894, 903–04 (Fed. Cir. 1988) (“Obviousness does not require absolute
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predictability of success. . . . For obviousness under § 103, all that is
required is a reasonable expectation of success.”). The 3–30 wt% range
encompasses the Appellant’s recited 3–20 wt% range (claims 1 and 20).
The Appellant argues, in reliance upon the Appellant’s Examples 26
(POLYWAX 500) and 27 (POLYWAX 1000) and Comparative Example U
(POLYWAX 3000), that only POLYWAX having a number average
molecular weight of 1,000 or less provides a coefficient of friction low
enough for the POLYWAX to be suitable as an abrasion reducing
compound, and that this is a surprising and meaningful distinction (Appeal
Br. 15–16).
That argument is not persuasive because the Appellant compares
POLYWAX 1000 (number average molecular weight 1,000, melting point
113 ºC), which is within the Appellant’s claims, to POLYWAX 3000
(number average molecular weight 3,000, melting point 129 ºC), not to the
closest prior art (POLYWAX 2000 (number average molecular weight
2,000, melting point 126 ºC), for example, is closer than POLYWAX 3000
to POLYWAX 1000). See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also,
the Appellant does not provide evidence that the relied-upon results would
have been unexpected by one of ordinary skill in the art. See In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). The Appellant provides mere attorney argument, and such
argument of counsel cannot take the place of evidence. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
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Rejection under 35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first paragraph,
written description requirement if it conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, the inventor was in
possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563–64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976).
The Examiner finds:
Though paragraph [049] of instant specification recites that “the
aqueous dispersion can comprise wax, or a portion of the wax,
can be a component of the aqueous dispersion”, that is, the
aqueous dispersion can comprise the wax along with the melt
blending product, instant specification does not provide a
support for i) the wax being component of the melt blending
product portion of said aqueous dispersion and for ii) the
overall abrasion reducing composition which comprises wax,
being part of the melt blending product, i.e. the overall abrasion
reducing composition being melt blended as the component (d)
along with the components (a) to (c). The abrasion resistant
composition, as the component (d), may include components
other than said wax, as well, and said abrasion resistant
composition being part of the melt blending product is not
supported by instant specification. [(Ans. 14)]

The Appellant argues: “[T]he present specification explicitly
provides: ‘embodiments of the present disclosure provide coating
compositions that comprise an aqueous dispersion including a melt blending
product of (a) a base polymer comprising at least one polyolefin, (b) a
stabilizing agent, and (c) a compatibilizer’ (paragraph [009])” (Appeal
Br. 7).
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That paragraph does not state that the melt blending product can
contain polyethylene wax.
The Appellant argues:
Further, the present specification explicitly provides:
“embodiments provide that the abrasion reducing composition
comprises a wax” and “the wax may be utilized neat” and “a
number of embodiments of the present disclosure provide that
the aqueous dispersion can comprise the wax, e.g., the wax or a
portion of the wax, can be a component of the aqueous
dispersion” (paragraph [049], emphasis added). [(Appeal Br. 7–
8)]

That paragraph states that the aqueous dispersion can contain wax, but
does not state that the wax in the aqueous dispersion can be in the abrasion
reducing composition.
The Appellant argues that “[t]he present specification provides that
the aqueous dispersion, which the wax can be a component of, can be
prepared by melt blending (See paragraph [044] for example)” (Appeal
Br. 8).
That paragraph states that one or more base polymers, one or more
stabilizing agents, and one or more compatibilizers can be melt-kneaded to
form a melt blending product, but does not state that the wax can be part of
the melt blending product.
CONCLUSION
The Appellant has not indicated reversible error in the Examiner’s
rejections under 35 U.S.C. § 103(a) or rejection under § 112, first paragraph.
Accordingly, we affirm those rejections.
Appeal 2019-006744
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10
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 8–18, 20 103(a) Kainz, Shiba,
Klier, POLYWAX
1, 8–18, 20
1, 8–18, 20 103(a) Kainz, Shiba,
Klier, Nakamoto,
Foster
1, 8–18, 20
1, 8–18, 20 103(a) Kainz, Shiba,
Jensen Moller
1, 8–18, 20
20 112, first
paragraph
Written
Description
20
Overall
Outcome
1, 8–18, 20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED