Ex Parte Adamson et alDownload PDFPatent Trial and Appeal BoardNov 9, 201713435270 (P.T.A.B. Nov. 9, 2017) Copy Citation 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. 13/435,270 03/30/2012 Linda A. ADAMSON 70878 6819 21898 7590 11/14/2017 ROHM AND HAAS COMPANY c/o The Dow Chemical Company P.O. Box 1967 2040 Dow Center Midland, MI 48641 EXAMINER BROOKS, KREGGT ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 11/14/2017 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LINDA A. ADAMSON, MICHAEL C. BECKER, FELIPE A. DONATE, DAVID M. FASANO, SARAH E. ITTNER, REBECCA J. WACHOWICZ, and THOMAS R. TEPE Appeal 2016-008304 Application 13/435,2701 Technology Center 1700 Before CATHERINE Q. TIMM, BRIAN D. RANGE, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’ rejections adverse to the patentability of claims 1—17 and 19-21 under 35 U.S.C. §§ 102 and 103. We have jurisdiction under 35 U.S.C. § 6. We affirm. 1 Appellants identify the real party in interest as The Dow Chemical Company. App. Br. 3. Appeal 2016-008304 Application 13/435,270 BACKGROUND The subject matter on appeal is directed to low and no VOC glycol ether-ester compositions for use in aqueous polymeric dispersions, paints and coatings to aid in the formation of a film. Spec. 1: 3—25. Claims 2 and 3 are illustrative and appear below. 2. A glycol ether-ester coalescent selected from the group of compositions of Formula (I) wherein Ri is a Ci — Cg alkyl group, phenyl or benzyl, R2 is methyl, R3 is a carbon chain comprising 4—5 carbon atoms, and n = 2-4. 3. A glycol ether-ester coalescent selected from the group of compositions of Formula (II) wherein Ri and R4 are, independently, C4 — C10 alkyl groups, phenyl or benzyl, R2 is methyl, R3 is a carbon chain comprising 3^4 carbon atoms, and n = 1—4; and mixtures thereof; wherein the boiling point of said coalescent is greater than 450°C at 760 mm Hg. (II) 2 Appeal 2016-008304 Application 13/435,270 REFERENCES The Examiner relies on the following references as evidence of unpatentability: Izard US 2,041,715 Hudson US 4,525,512 Brandenburger US 2005/0032954 A1 Bardman US 2007/0043159 A1 Zhou US 2009/0198002 A1 Kokeguchi US 2010/0203003 A1 May 26, 1936 June 25, 1985 Feb. 10, 2005 Feb. 22, 2007 Aug. 6, 2009 Aug. 12, 2010 SciFinder® Physical Properties for CAS Registry No. 117264—85—4 (2015) (hereinafter “Scifmder”) Momentive Axilat DS 910 Technical Data Sheet (2014) (hereinafter “Momentive”) UCAR 629 Latex Data Sheet, Dow Chemical (2014) http://www.specialchem4coatings.com/tds/ucar-latex-629/dow- chemical/11 491/index.aspx (retrieved Sept. 16, 2014) (hereinafter “UCAR 629”) REJECTIONS ON APPEAL I. Claim 3 under 35 U.S.C. § 102(a)/(e) as anticipated by Kokeguchi as evidenced by Appellants’ Specification and Knovel critical tables; II. Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Izard; III. Claims 2, 4—6, 8, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Hudson, Brandenburger, Scifmder, and Momentive; IV. Claims 3,9, 10, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Zhou as evidenced by Appellants’ Specification and UCAR 629; 3 Appeal 2016-008304 Application 13/435,270 V. Claims 7, 11, 12, and 17 under 35 U.S.C. § 103(a) as unpatentable over Hudson, Brandenburger, Bardman, Scifmder, and Momentive; and VI. Claims 13, 14, and 19 under 35 U.S.C. § 103(a) as unpatentable over Zhou in view of Bardman as evidenced by Appellants’ Specification. OPINION We begin with the obviousness rejections. Rejection II With respect to claim 1, the Examiner finds, and Appellants do not dispute, that in the same field of endeavor as Appellants (i.e., coatings (compare Final Act. 6 citing Izard 2, col. 2:55—70, with Spec. 1:23)), Izard teaches genera of “levulinic acid esters of ether alcohols” such as “alkyl, aryl, and aralkyl ethers of glycols.” Final Act. 4. Specifically, the Examiner finds that “Izard specifies ethylene glycol, diethylene glycol, and other polyethylene glycols (which includes triethylene glycol), and dipropylene glycol,” as well as “straight chain alkyl groups from methyl to octyl, specifically reciting butyl” as a terminal group, but not n-hexyl as recited in several of the claimed species. Id. The Examiner determines that the skilled artisan would have expected the recited glycol ether-esters, such as diethylene glycol n-hexyl ether levulinate, to “possess similar properties” as structurally homologous ether-esters falling within the broad disclosure of Izard. Id. Based on this determination, the Examiner concludes that it would have been obvious for the skilled artisan to make the compounds recited in claim 1. Id. at 5. 4 Appeal 2016-008304 Application 13/435,270 Appellants contend that the skilled artisan would not have been motivated, based on the disclosure within Izard, to pick and choose the recited compounds and that Izard’s compounds are used for a different utility than that of claim 1. This argument fails to persuade us of reversible error. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellants to identify the alleged error in the Examiner’s rejection). Rather, we agree with the Examiner for the reasons expressed on pages 16 and 17 of the Answer, and add the following. “[Structural similarity between claimed and prior art subject matter . . . where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case.” In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). [I]t is not necessary in order to establish a prima facie case of obviousness that both a structural similarity between a claimed and prior art compound ... be shown and that there be a suggestion in or expectation from the prior art that the claimed compound... will have the same or a similar utility as one newly discovered by applicant. To the extent that [In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)] suggests or holds to the contrary, it is hereby overruled. In particular, the statement that a prima facie case of obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law. Id. at 693. In certain fact patterns such as the one here, structural similarity weighs heavily in favor of the obviousness conclusion. Our reviewing court and its predecessor have recognized that 5 Appeal 2016-008304 Application 13/435,270 [structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties. In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995). See also In re Wilder, 563 F.2d 457, 460 (CCPA 1977) (“one who claims a compound, per se, which is structurally similar to a prior art compound must rebut the presumed expectation that the structurally similar compounds have similar properties.”) Here, it is undisputed that Izard broadly discloses structurally similar glycol ether-ester compounds containing alkyl terminal groups “such as methyl, ethyl, butyl, octyl, dodecyl, or octadecyl,” i.e., a range of alkyl groups which naturally includes n-hexyl as recited in claim 1. Izard 1, col. 1:48-49 (emphasis added). As such, we discern no error in the Examiner’s well-reasoned determination that the skilled artisan would have expected the recited compounds containing the n-hexyl substituent to have similar properties to those expressly disclosed in Izard, and would thus have had the requisite motivation to prepare the compounds recited in claim 1. Regarding claim 2, the Examiner finds, and Appellants do not dispute, that Izard discloses glycol ether-esters that fall within the scope of those claimed. Final Act. 6, 18. The Examiner treats Appellants’ recitation of “coalescent” as an intended use. Id. Appellants’ arguments (App. Br. 9) are unpersuasive for the well- stated reasons set forth by the Examiner at 18 and 19 of the Answer. Moreover, we note Appellants’ argument that there is no “suggestion within Izard nor motivation provided within Izard” to use the recited compounds as 6 Appeal 2016-008304 Application 13/435,270 a coalescent (App. Br. 9) is not well-taken. Rather, we emphasize that the prior art need not recognize Appellants’ utility to establish a prima facie case of obviousness. In re Dillon, 919 F.2d at 693. It follows that we sustain Rejection II. Rejections III and V Appellants make substantive arguments against the rejection of claim 2, but do not separately argue any of the rejected dependent claims. App. Br. 10, 12. Thus, we focus our analysis on claim 2. All other claims encompassed in Rejections III and V will stand or fall accordingly. 37 C.F.R. § 41.37(c)(l)(iv) (2015). The Examiner finds, and Appellants do not dispute, that Hudson teaches the genus of compounds recited in claim 2, except for the requirement for the R3 moiety to be “a carbon chain comprising 4—5 carbon atoms.” Final Act. 6—7. The Examiner finds that Brandenburger remedies this deficiency by teaching structurally similar coalescent agents with an R1 group (corresponding to the claimed R3 group) which preferably has from 3 to 24 carbon atoms. The Examiner concludes that it would have been obvious to the skilled artisan to have modified Hudson’s coalescents to have 4 to 5 carbon atoms as claimed because Brandenburger expresses a preference for such chain lengths in his coalescent compounds. Id. at 7—8. Appellants argue “there is no motivation within Hudson or Brandenburger to make the extremely narrow selections from these disclosures” to arrive at the claimed subject matter. App. Br. 10. This argument fails to persuade us of reversible error, and we sustain the rejection of claim 2 for the reasons expressed by the Examiner on pages 19 and 20 of the Answer. Moreover, we emphasize that the Supreme Court of the United 7 Appeal 2016-008304 Application 13/435,270 States lias stated that an “obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents,” KSR Infl Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Appellants’ arguments, limited to the teachings of the references themselves, do not reveal error in the Examiner’s obviousness conclusion. Thus, we sustain Rejections III and V. Rejections IV and VI We address the claims separately to the extent they are so argued by Appellants. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claim 3 The Examiner finds, and Appellants do not dispute, that Zhou teaches the genus of compounds according to Formula II, but is silent regarding the recited boiling points. Final Act. 10. The Examiner further finds, and Appellants do not dispute, that three species falling within both Formula II and Zhou are listed on page 29 of Appellants’ Specification which indicates that the boiling point of each of these species falls within the recited range. Id. at 10—11. Appellants argue that the boiling point limitation is not taught by Zhou, and that Zhou’s general teaching regarding boiling points would teach the skilled artisan to prefer “lower boiling point coalescents” and “to only [] moderate VOC reduction.” App. Br. 11. We are not persuaded by these arguments for the reasons provided by the Examiner on pages 20—22 of the Answer and below. Appellants fail to even address, much less reveal error in, the Examiner’s evidence regarding the boiling points of the three compounds which undisputedly fall within the 8 Appeal 2016-008304 Application 13/435,270 scope of the claim and the prior art. Further, Appellants’ arguments characterizing Zhou’s teaching as limited to moderating VOC reduction reveal no error as they are not directed to limitations 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.”). It follows that we sustain the rejection of claim 3. Claim 9 Claim 9 is directed to an aqueous coating composition containing from 0.1% to 40% of the coalescent of claim 3, based on the weight of aqueous polymeric dispersion solids. The Examiner finds that Zhou teaches an aqueous coating composition (i.e., Latex 629) containing the recited amount of coalescent, as further evidenced by UCAR 629. Final Act. 11. Appellants do not address the Examiner’s calculations regarding the Latex 629 embodiment with any reasonable specificity, but rather focus on a different embodiment to Latex F-9100. App. Br. 11. Such incomplete arguments do not reveal error in the Examiner’s finding that the coalescent amounts are taught by Zhou. Moreover, we observe that the coalescent concentration is an art- recognized result-effective variable because varying the amount of coalescent in a semi-gloss paint composition affects its film formation characteristics. Zhou 1103, Fig. 8. “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). To show criticality of a claimed range 9 Appeal 2016-008304 Application 13/435,270 [u]nder [the proper] standard, “it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Alter, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Only if the “results of optimizing a variable” are “unexpectedly good” can a patent be obtained for the claimed critical range. In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We, therefore, sustain the rejection of claim 9. Claim 10 Claim 10 depends from claim 9 and requires that the aqueous coating composition contain an aqueous polymeric dispersion having a minimum film forming temperature (i.e., “MFFT”) from -5 -C to 100 -C, and that the coalescent composition of claim 3 be present in an amount from 0.1% to 30%, based on the weight of aqueous polymeric dispersion solids. As with claim 9, the Examiner provides a calculation, undisputed by Appellants, demonstrating that the Latex 629 embodiment disclosed in paragraph 98 of Zhou meets the recited coalescent concentration. Final Act. 12. The Examiner finds further that Zhou teaches, in Figure 1, an aqueous coating composition having an MFFT between -2 -C and 16 °C, depending on how much of the coalescent composition is added. Id. The Examiner concludes that it would have been obvious to the skilled artisan to form coatings, based on the overall teachings of Zhou, to include the claimed amounts of coalescent compounds within the claimed range to arrive at the subject matter of claim 10. Id. at 13. Appellants urge that Zhou does not teach the MFFT of the polymeric dispersions, and contend that the relevance of the MFFT values indicated in Figures 7 and 8 is unclear. App. Br. 11—12. These arguments do not persuade us of reversible error. 10 Appeal 2016-008304 Application 13/435,270 “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826—27 (CCPA 1968). See also PerfectWeb Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (explaining that the obviousness analysis “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”). Here, the Examiner aptly notes the breadth of the recited aqueous polymeric dispersion’s MFFT, i.e., a range of approximately 105 °C, and that such limitation would be “easily met because of its large breadth.” Ans. 23. The Examiner acknowledges that even though “Zhou does not specifically measure MFFT ... of the semigloss and latex formulations, Fig. 8 [of Zhou] shows that excellent films form from the semigloss formulation at 40 degrees.” Id. Moreover, we note that Zhou expressly teaches that “[coalescing agents are high boiling point solvents . . . used to reduce the minimum film formation temperature (MFFT) of paints.” Zhou 13. In view of Zhou’s teaching, we determine that it would have been well within the ambit of the skilled artisan to select both a polymeric dispersion with a MFFT value within the broadly recited range of -5 °C to 100 -C, as well as the optimum amount of the coalescent falling within the recited range of 0.1 to 30% by weight, in order to prepare a coating having the desired characteristics, e.g., a certain film forming temperature. In re Boesch, 617 F.2d at 276 (holding that optimization of a result effective variable is ordinarily within the ambit of one of ordinary skill in the art). 11 Appeal 2016-008304 Application 13/435,270 For example, the skilled artisan would have reasonably expected from Zhou’s teaching that there is a direct relationship between the amount of coalescing agent and the effect on a composition’s overall MFFT. See Zhou Figs. 1 and 2. Thus, if a coating with a specific MFFT was desired, the skilled artisan would have known to select a polymeric dispersion with a certain MFFT, as well as the proper amount of the coalescent composition impacting such MFFT. Thus, we sustain the rejection of claim 10. Rejections IV and VI are sustained. Rejection I We decline to reach the anticipation rejection of claim 3 because our decision upholds the Examiner’s obviousness rejection of this claim. SUMMARY We sustain Rejections II—VI, but decline to reach Rejection I. The Examiner’s final decision to reject claims 1—17 and 19—21 is affirmed. 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). AFFIRMED 12 Copy with citationCopy as parenthetical citation