Ex Parte Eldredge et alDownload PDFPatent Trial and Appeal BoardMay 24, 201613044588 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/044,588 03/10/2011 JOSEPHINE LOUISE ELDREDGE 21898 7590 05/26/2016 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. 69702 1155 EXAMINER EASHOO, MARK ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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 JOSPEHINE LOUISE ELDREDGE, PAUL MERCANDO, and THEODORE TYSAK Appeal2015-000637 Application 13/044,588 Technology Center 1700 Before TERRY J. OWENS, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's November 22, 2013 decision finally rejecting claims 1-9 and 11-13 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Rohm and Haas Company, (Appeal Br. 4). Appeal2015-000637 Application 13/044,588 CLAIMED SUBJECT MATTER Appellants' invention is directed to a method of forming an aqueous composition containing at least one polymer dispersed in water and at least one polyvalent metal cation (Spec. i-f 2). Such compositions are said to be useful in a variety of applications, including leather treatments and floor polishes (id.). Details of the claimed method device are set forth in representative claim 1, which is reproduced below from the Claims Appendix: 1. A method forming an aqueous composition, said method compnsmg (a) first forming at least one aqueous polymer dispersion by a process comprising polymerizing a monomer mix comprising by weight based on the weight of said monomer mix, of one or more carboxylic acid functional monomers; (b) second, adding to said aqueous polymer dispersion, ingredients comprising (i) 1 to 10 parts by weight of at least one swelling agent, based on 100 parts by weight of said monomer mix; and (ii) one or more nonionic surfactant, anionic surfactant, or mixture thereof; and ( c) third, adding calcium cation to said aqueous polymer dispersion; wherein, after the completion of said step (b) and prior to the beginning of said step ( c ), the ratio of equivalents of all polyvalent metal cations in said preliminary admixture to equivalents of carboxylic acid functional groups in said preliminary admixture is zero or is from 0 to 0.1; wherein, after the completion of said step ( c ), the ratio of equivalents of calcium ions in said composition to the equivalents of carboxylic acid functional groups in said composition is 0.4 or more; and 2 Appeal2015-000637 Application 13/044,588 wherein, after completion of said step ( c) the ratio of equivalents of all polyvalent metal cations other than calcium and magnesium to equivalents of carboxylic acid functional groups in said composition is zero or is from 0 to 0.1. REJECTIONS I. Claims 1--4, 6-8, and 11-13 are rejected under 35 U.S.C. § 102(b) as being anticipated by Eichman. 2 II. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Eichman in view of Owens. 3 III. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Eichman in view of Kohr. 4 DISCUSSION Appellants do not offer separate substantive arguments with respect to Rejections II and III (Appeal Br. 16)5, and in connection with Rejection I, Appellants offer arguments only with respect to claim 1 (see Appeal Br. 15). Accordingly, our discussion will focus on the anticipation rejection of claim 1 over Eichman. "A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet 2 Eichman et al., U.S. Patent Pub. 2008/0114114 Al, published May 15, 2008. 3 Owens et al., U.S. Patent No. 5,149,745, issued September 22, 1992. 4 Kohr et al., U.S. Patent No. 6,548,596 Bl, issued April 15, 2003. 5 In this regard, see discussion on arguments raised for the first time in the Reply Brief on page 6, infra. 3 Appeal2015-000637 Application 13/044,588 Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance, Appellants argue that Eichman does not anticipate claim 1 because it fails to teach the use of calcium cations in step ( c) of the claimed method (Appeal Br. 11). The Examiner finds (Final Act. 3) that Eichman discloses the use of calcium ions as required by step ( c) of claim 1 as set forth below: The practice of the present invention involves the use of at least one polyvalent metal cation, which means herein a metal cation with charge of +2 or higher. Suitable polyvalent metal cations are, for example, polyvalent cations of alkaline earth metals and polyvalent cations of transition metals. (Eichman, i-f 38, emphasis added). The Examiner further finds that "one of ordinary skill in the art would envision ... using calcium as one of the few choices of alkaline earth metals and known metal that is frequently used" (Final Act. 3). Appellants argue that the cited passage in Eichman discloses not only the alkaline earth metals (which include calcium), but also transition metals, and that the total number of possible metals recited in Eichman is at least 70 ( 6 alkaline earth metals, plus at least 62 transition metals, plus zinc and cadmium, which are disclosed separately in Eichman) (Appeal Br. 11-13). This genus, according to Appellants, is large enough so that a person of ordinary skill in the art would not automatically envision any particular species, including calcium (Appeal Br. 14). Appellants conclude that it is novel to choose a single species out of a disclosed genus which contains dozens of species, and that their claimed method is novel over the disclosure of Eichman (id.). 4 Appeal2015-000637 Application 13/044,588 We have carefully considered Appellants' arguments, but do not find them persuasive of reversible error in the anticipation rejection, essentially for the reasons set forth in the Answer. We add the following for emphasis. Appellants are correct that Eichman does state that both alkaline earth metals, as well as the group of transition metals and cadmium and zinc may be used. However, Eichman also explicitly identifies "alkaline earth metals" as a group from which the requisite polyvalent metal cations can be chosen (Eichman i-f 38). Appellants have not persuasively shown that a person of skill in the art reviewing Eichman would not have understood that Eichman discloses the use of a group of "alkaline earth metals." The fact that additional metals are disclosed in Eichman does not alter Eichman's statement that "alkaline earth metals" are suitable for use. Based on the record on appeal, Appellants have not shown reversible error in the Examiner's finding that Eichman discloses the use of alkaline earth metals as a separate group. The Examiner finds (Ans. 6), and Appellants do not dispute (Appeal Br. 13), that the term "alkaline earth metals" is well understood by those of skill in the art to include the 6 elements in column IIA of the Periodic Table: beryllium, magnesium, calcium, strontium, barium, and radium. Moreover, the Examiner finds, and Appellants do not challenge, that of these 6 alkaline earth metals, magnesium, calcium, and barium are the most common and are known for use in compositions like that disclosed in the claims (Ans. 6). If one of ordinary skill in the art is able to "at once envisage" a specific species within a generic group disclosed in the prior art, that species may be understood to have been disclosed by the art. In re Petering, 301 F.2d 676, 681(CCPA1962). In this instance, Appellants have not shown 5 Appeal2015-000637 Application 13/044,588 reversible error in the Examiner's finding that a person of skill in the art would "at once envisage" calcium upon reading Eichman's disclosure of "alkaline earth metals." Accordingly, we affirm the anticipation rejection. With regards to the Rule 132 Declaration of Dr. Eldredge referenced by Appellants (Appeal Br. 15), we agree with the Examiner that the unexpected results Appellants allege are disclosed in the Declaration are not pertinent to the anticipation rejection. Appellants also allege that the showing in the Declaration is relevant to obviousness rejections of claims 5 and 9 (Reply Br. 8-9). However, Appellants have not explained why these arguments were not raised in the Appeal Brief, and therefore will not be considered. Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (arguments and evidence not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); In re Hyatt, 211F.3d1367, 1373 (Fed. Cir. 2000) (an argument not first raised in the brief to the Board is waived on appeal). CONCLUSION We AFFIRM the rejection of claims 1--4, 6-8, and 11-13 under 35 U.S.C. § 102(b) as being anticipated by Eichman. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Eichman in view of Owens. We AFFIRM the rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Eichman in view of Kohr. 6 Appeal2015-000637 Application 13/044,588 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation