Ex Parte Ashmore et al

Patent Trial and Appeal Board

Jul 17, 2018

13490588 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/490,588 06/07/2012 John William Ashmore
21898 7590 07/19/2018
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
70757 9768
EXAMINER
CHANG, JOSEPHINE L
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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 JOHN WILLIAM ASHMORE
and BORIS POLANUYER
Appeal2017-009774
Application 13/490,588
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
DEBRA L. DENNETT, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 5, and 6. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a coating composition. Claim 1 is illustrative:
1. A stable solvent borne coating composition comprising
(a) one or more polymeric biocide comprising zinc
ethylenebisdithiocarbamate;
(b) one or more polymer-encapsulated biocide, wherein
the biocide portion of said polymer-encapsulated biocide is
4,5-dichloro-2-n-octyl-3(2H)-isothiazolone; and
( c) one or more solvent mixed with an ethoxylated
triglyceride apart from the biocides wherein said ethoxylated
Appeal2017-009774
Application 13/490,588
triglyceride is an ethoxylated castor oil that has an average
number of moles of ethylene oxide units per mole of
triglyceride molecules of 10 to 45 and wherein the solvent is
either xylene or mixtures of xylene with methyl isobutyl
ketone;
wherein the solvent comprises 0-10% water, by weight,
based on the weight of the solvent; and
wherein the combination of (a), (b ), and (c) in the
solvent borne coating composition forms dispersed particles
and the dispersed particles have a particle size of less than
50 micrometers.
Yu
Reybuck
Ikari
The References
us 5,444,078
US 7,377,968 B2
EP O 475 781 Al
The Rejection
Aug.22, 1995
May 27, 2008
Mar. 18, 1992
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103 over Reybuck
in view of Ikari and Yu.
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 1, which claims a composition requiring
polymer-encapsulated 4,5-dichloro-2-n-octyl-3(2H)-isothiazolone and an
ethoxylated castor oil. To meet those claim requirements the Examiner
relies upon the combined disclosures of Reybuck and Yu (Ans. 2-3).
Reybuck discloses a marine antifoulant paint composition comprising
polymer-encapsulated 4,5-dichloro-2-n-octyl-3(2H)-isothiazolone (DCOIT)
and a free biocide which can be DCOIT (col. 1, 11. 8-13; col. 2, 11. 23-30;
col. 6, 11. 1-6, 35-39, 51-52). The free DCOIT releases from the paint
surface in the presence of water at a sufficient rate initially to provide
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Appeal2017-009774
Application 13/490,588
resistance to fouling organisms, and the polymer-encapsulated DCOIT
releases from the capsules in the presence of water gradually to provide
long-term resistance to fouling organisms (col. 2, 11. 5-7, 10-14, 21-23;
col. 3, 11. 3-7; col. 6, 11. 35--42). "[T]he capsule size range is about
5 microns to about 40 microns" ( col. 5, 11. 56-57).
Yu discloses a water-free biocidal microemulsion concentrate made
by dissolving a solid active ingredient (which can be DCOIT) in an organic
solvent ( which can be xylene) to form an oil phase, and mixing the oil phase
with a surfactant (which can be ethoxylated (EO 30) castor oil) (col. 3,
11. 41--42; col. 3, 1. 65 - col. 4, 1. 2; col. 4, 11. 44, 57; col. 5, 1. 4; col. 14,
11. 52-53). Microemulsions can be formed by diluting the concentrate with
up to 99.9 wt% water (col. 1, 11. 60-66; col. 3, 11. 33--43; col. 4, 11. 14--16).
The microemulsions are "thermodynamically [stable] and clear, opalescent,
or only slightly cloudy at all levels of water dilution up to 99.9%" (col. 3,
11. 47--49).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner concludes (Ans. 3):
Given that Reybuck discloses xylene and solvents
partially miscible in water and the advantages of mixture of
xylene with an ethoxylated castor oil taught by Yu, it would
have been obvious to a person having ordinary skill in the art at
the time of invention to employ an ethoxylated castor oil having
a specified average number of moles of ethylene oxide units per
mole of triglyceride molecules in order to provide a
composition that is thermodynamically stable even when the
solvent contains no water.
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Appeal2017-009774
Application 13/490,588
The Examiner does not establish that Reybuck's disclosure that the
marine paint's solvent base can be xylene (col. 6, 11. 13-16) and Yu's
disclosure of a microemulsion concentrate which contains xylene and
ethoxylated castor oil (Example 1) and is thermodynamically stable at all
levels of water dilution up to 99.9 wt% (col. 3, 11. 47--49) would have
provided one of ordinary skill in the art with an apparent reason to include
Yu's microemulsion concentrate in Reybuck's marine paint. Thus, the
Examiner's rejection appears to be based upon impermissible hindsight in
view of the Appellants' disclosure. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) ("A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art"). Accordingly, we reverse
the rejection.
DECISION
The rejection of claims 1, 5, and 6 under 35 U.S.C. § 103 over
Reybuck in view of Ikari and Yu is reversed.
The Examiner's decision is reversed.
REVERSED
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