Ex Parte Heulings et al

Patent Trial and Appeal Board

Mar 31, 2016

13333320 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/333,320 12/21/2011 Harry R. HEULINGS
21898 7590 04/04/2016
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.
70671 7598
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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 HARRY R. HUELINGS, WILLIE LAU, and
JOSEPH M. ROKOWSKI
Appeal2014-008714
Application 13/333,320
Technology Center 1700
Before N. WHITNEY WILSON, WESLEY B. DERRICK, and,
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Action mailed October 17, 2013 ("Final Act."), finally rejecting claims
1-10 and 12. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Rohm and Haas
Company (Br. 2).
Appeal2014-008714
Application 13/333,320
CLAHvIED SUBJECT ivIATTER
The invention relates to shaped articles having a composite layer of (i) a
vulcanizate encapsulated in a colored or uncolored thermoplastic polymer matrix
containing a passivating agent, and (ii) a reflective material chosen from colored
fluidized particles of a thermoplastic reflective colorant encapsulated vulcanizate,
roofing granules, thermoplastic encapsulated roofing granules, the colored
thermoplastic polymer matrix, and combinations thereof (Abstract). The
Specification states that the shaped articles may be used in roofing applications
(Spec. 3). Details of the claimed invention are set forth in the independent claims
on appeal, claims 1 and 10, which are reproduced below from the Claims
Appendix of the Appeal Brief:
1. A shaped article comprising (i) a composite layer of a
vulcanizate encapsulated in a thermoplastic polymer matrix
containing one or more passivating agents in amounts such that
they do not color or bleach the shaped article, and (ii) a
reflective material chosen from colored fluidizable particles of
a thermoplastic reflective colorant encapsulated vulcanizate;
roofing granules, a colored thermoplastic polymer matrix, and
combinations thereof;
wherein the colored fluidizable particles are dispersed
within the surface of the composite layer or the colored
fluidizable particles or the roofing granules are dispersed on
the surface of the composite layer or are adhered thereto with a
thermoplastic resin; and,
further wherein, when the reflective material (ii) is the
colored thermoplastic matrix, the composite layer (i) comprises
black or non-colored thermoplastic polymer matrix.
10. A colored fluidizable particle or plurality thereof each
particle comprising a shelf-stable particle of a vulcanizate
encapsulated in a mixture of i) a thermoplastic polymer, ii) one
or more colorant chosen from an infrared (IR) reflective
pigment, a visibly reflective pigment and an opacifying
pigment, and iii) a passivating agent, wherein the colored
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Appeal2014-008714
Application 13/333,320
fiuidizable particle is at least substantially plasticizer free, or
contains no added plasticizer, and, further wherein the
passivating agent is present in an amount such that it does not
color or bleach the composition of the particle.
REJECTIONS
I. Claims 1, 3-7, and 9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boor2 in view of James. 3
II. Claim 2 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boor and James, and further in view of Suzuki. 4
III. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boor and James, and further in view of Akbari. 5
IV. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over James.
DISCUSSION
Rejections I, II, and III
Appellants and the Examiner agree that the claims do not require the
use of "roofing granules" or "a . . . . colored fluidizable particles of a
thermoplastic reflective colorant encapsulated vulcanizate," as recited at the
end of the first paragraph of claim, as these are optional components which
need not be present if the claimed article includes a reflective material which
is "a colored thermoplastic matrix" (Final Act. 4, Br. 5, Ans. 7-8).
2 Boor, U.S. Patent Pub. 2009/0308009 Al, published December 17, 2009.
3 James et al., US Patent Pub. 2007/0129483 Al, published June 7, 2007.
4 Suzuki et al., US Patent No. 3,869,298, issued March 4, 1975.
5 Akbari et al., "Evolution of Cool-Roof Standards in the US," 2 ADVANCES
IN BUILDING ENERGY RESEARCH, 1-32 (2006).
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Appeal2014-008714
Application 13/333,320
The Examiner finds that Boor discloses a composite material roofing
structure (corresponding to the claimed shaped article comprising a
composite layer) which comprises recycled tire bits (corresponding to the
claimed vulcanizate) which are mixed (i.e. encapsulated) with a non-colored
thermoplastic matrix (Final Act. 2, citing Boor, i-fi-f 12, 13, 19). The
Examiner further finds that Boor's disclosure of the use of an iron oxide
pigment (i.e., a colorant) on a binder makes the binder material a reflective
material comprising a colored thermoplastic matrix (Final Act. 2-3, citing
Boor, i-fi-f 16, 18, and 21 ). The Examiner also finds that Boor does not
disclose the use of passivating agents, but that their use is taught and
suggested by James (Final Act. 3, citing i-fi-f 10, 51, see, also i133). Finally,
the Examiner finds that Boor as modified by James inherently teaches the
use of an amount of passivating agent which would not color or bleach the
shaped article (Final Act. 3--4).
Urging reversal of this rejection, Appellants contend that the proposed
combination of Boor and James does not disclose both (i) a vulcanizate
which is encapsulated in a thermoplastic polymer matrix which is non-
colored or black and (ii) a reflective material of a colored thermoplastic
matrix (Br. 5). Appellants argue that Boor's colorant (iron oxide) will color
everything in Boor's composition, including the material encapsulating the
vulcanizate (id.). In support of this argument, Appellants point to an
example in Boor, which disclose that all the components are mixed together
to form "[a] homogeneous" composition (id., citing Boor, i135).
Appellants' argument is persuasive. Although the Examiner is correct
(Ans. 8-9) in stating that the claims do not preclude mixing the colored and
non-colored thermoplastics, the claim requires the presence of both colored
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Appeal2014-008714
Application 13/333,320
and non-colored particles. The preponderance of the evidence supports
Appellants' position that Boor teaches that its materials are uniformly
colored by the iron oxide colorant, precluding inclusion of both colored and
non-colored particles, and thus the teaching of Boor is of subject matter
outside the scope of claim 1. The disclosure of James does not cure this
deficiency.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
In this case, Appellants have shown error in the Examiner's finding
that the cited art discloses or suggests a shaped article containing both
colored and non-colored thermoplastic matrices. Accordingly, we conclude
the Appellants have demonstrated reversible error in the obviousness
rejection of claim 1. This conclusion also mandates reversal of the
obviousness rejections of claims which depend from claim 1, namely claims
2-9
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Appeal2014-008714
Application 13/333,320
Rejection IV
James is directed to mixture which can be cured to form thermoplastic
vulcanizates (TPV' s) and premixes for forming TPV' s which include
ethylene alpha olefin diene (EAODM) polymers and thermoplastic polymers
(James, i-f 2). Thus, the final product in James is a mixture of a vulcanizate -
formed from the cured EAODM's - and a thermoplastic polymer (James,
i-fi-15, 10). The Examiner finds that the TPV matrix of James "encapsulates"
the vulcanizate formed when the EAODM polymer is cured (Ans. 14). The
Examiner's finding is supported by the disclosure of James, which describes
that its TPV is a mixture wherein "the EAODM is in the form of finely
divided and well-dispersed rubber particles within a nonvulcanized [i.e. the
thermoplastic] matrix" (James, i-f 51 ).
Appellants argue that the Examiner has not shown that the vulcanizate
is encapsulated by a mixture which includes a passivating agent (Br. 7). The
claimed passivating agents are described in James as vulcanizing activators
(compare compounds described in James i-f 32 with those described in the
Specification as passivating agents at page 10). However, the Examiner has
not made any findings that the passivating agent is found within the
thermoplastic matrix, as opposed to within the vulcanizate (Final Act.,
generally; Ans., generally). As the passivating agent in James is described
as a vulcanizing activator, once the cross-linking reaction has occurred to
form the vulcanizate, it follows that the activator (passivating agent) may be
found in the vulcanizate, but not in the thermoplastic matrix. Thus, in the
absence of a supported finding that James teaches or suggests the presence
of a passivating agent in the mixture encapsulating the vulcanizate, we
reverse the obviousness rejection.
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Appeal2014-008714
Application 13/333,320
CONCLUSION
We REVERSE the rejection of claims 1, 3-7, and 9 under 35 U.S.C. § 103(a)
as being unpatentable over Boor in view of James.
We REVERSE the rejection of claim 2 under 35 U.S.C. § 103(a) as
being unpatentable over Boor and James, and further in view of Suzuki.
We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Boor and James, and further in view of Akbari.
We REVERSE the rejection of claims 10 and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over James.
REVERSED
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