Ex Parte Kalihari et al

Patent Trials and Appeals Board

Jan 30, 2019

14226872 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/226,872 03/27/2014 Vivek Kalihari
21898 7590 02/01/2019
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.
74585-US-NP 1635
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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 VIVEK KALIHARI and JOHN A. ROPER III
Appeal2017-004985
Application 14/226,872
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-6 and 8-13. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Dow Global Technologies LLC. According to
the Appeal Brief, the real party in interest is "ROHM AND HAAS
COMP ANY and DOW GLOBAL TECHNOLOGIES LLC." Appeal Br. 4.
Appeal2017-004985
Application 14/226,872
STATEMENT OF THE CASE2
Appellant describes the invention as relating to pigmented paper
coating with improved brightness. Spec. 1 :2. The Specification explains
that titanium dioxide (Ti02) is known as a pigment to improve optical
properties of a paper coating. Id. at 1 :4-5. Phosphate or phosphonate are
known to enhance adsorptivity of binder to the titanium oxide, but phosphate
and phosphonate contain impurities that are of concern to, for example, the
Food and Drug Administration. Id. at 1 :25-31. Appellant thus seeks a
paper coating formulation with enhanced brightness but without requiring
phosphate and phosphonate functionalized binders. Id. at 1:31-2:3. Claim
1, reproduced below with formatting modified for readability and emphasis
added to certain key recitations, is the only independent claim on appeal and
is illustrative of the claimed subject matter:
1. A laminate comprising
coated or uncoated paper or paperboard;
and a 5- to 35-µm thick layer of a film adhered to the
coated or uncoated paper or paperboard;
wherein the film comprises
a) from 3 to 25 weight percent of a
polymeric binder;
b) from 5 to 35 weight percent Ti02; and
c) from 0.05 to 2 weight percent
tetrapotassium pyrophosphate;
wherein the polymeric binder comprises vinyl
acetate, vinyl-acrylic, or styrene-acrylic polymer,
or blends thereof; and
2 In this Decision, we refer to the Final Office Action dated June 10, 2016
("Final Act."), the Appeal Brief filed September 12, 2016 ("Appeal Br."),
and the Examiner's Answer dated December 14, 2016 ("Ans.").
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Application 14/226,872
wherein the weight percentages are all based on
the weight of the film.
Appeal Br. 17 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Kruse et al. us 4,892,787 Jan.9, 1990
("Kruse")
Ercillo et al. us 5,827,609 Oct. 27, 1998
("Ercillo ")
Wen et al. US 2003/0024437 Al Feb. 6,2003
("Wen")
Hua et al. US 2005/0123761 Al June 9, 2005
("Hua")
Hiscock et al. US 2006/0207737 Al Sep.21,2006
("Hiscock")
Jens en et al. WO 2000/0032700 Al June 8, 2000
("Jensen")
Mukkamala EP 1 911 881 Al April 16, 2008
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1---6, 8, 9, and 12 under 35 U.S.C. § 103 as
unpatentable over Mukkamala in view of Hua as evidenced by Ercillo.
Ans. 2.
Rejection 2. Claims 10, 11, and 13 under 35 U.S.C. § 103 as
unpatentable over Mukkamala in view of Hua and further in view of
Hiscock. Id. at 4.
Rejection 3. Claims 1-6, 8, 9, and 12 under 35 U.S.C. § 103 as
unpatentable over Wen in view ofMukkamala and Kruse. Id. at 4.
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Rejection 4. Claims 10, 11, and 13 under 35 U.S.C. § 103 as
unpatentable over Wen in view ofMukkamala, Kruse, and Hiscock. Id. at 8.
Rejection 5. Claims 1-3, 5---6, 10, and 11 on the ground of
nonstatutory double patenting as being unpatentable over claims 7 and 8 of
copending Application No. 14/207,810 in view of Jensen. Id. at 9.
ANALYSIS
Rejections 1 and 2. The Examiner rejects claims 1-6, 8, 9, and 12 as
obvious over Mukkamala in view of Hua as evidenced by Ercillo. Ans. 2.
The Examiner applies the same combination to claims 10, 11, and 13 in
further view of Hiscock. Id. at 4.
The Examiner finds that Mukkamala teaches a laminate ( coated paper
and paperboard) with composition and ranges overlapping those of claim 1
except that Mukkamala fails to teach that its dispersant is tetrapotassium
pyrophosphate. Ans. 2 (citing Mukkamala). The Examiner makes use of
Ercillo to calculate the thickness of the Mukkamala film. Id. The Examiner
finds that Hua teaches a laminate for paper that makes use of 0.05 to 3
weight percent tetrapotassium pyrophosphate (TKPP) dispersant). Id. at 3.
The Examiner determines that it would have been obvious to combine the
teachings of Mukkamala and Hua and provides the following explanation:
Id.
It would have been obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to include
tetrapotassium pyrophosphate, including amount as presently claimed,
in the dispersant of Mukkamala in order to serve as a surface
activating agent and allow production of pigments having improved
light stability (Hua et al., paragraph [0038]).
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Appellant argues that Mukkamala does not strictly require dispersant
but instead indicates that, if dispersant is used, its amount should be
minimized. Appeal Br. 8-9. Appellant argues that Hua provides many
different choices for dispersants. Id. at 10.3 Appellant argues that Hua
teaches removing dispersant before reaching its final composition. Id. at 12.
Appellant further argues that the Examiner has not shown that a person of
skill would understand that using Hua's TKPP with Mukkamala would
result in improved brightness and that the Examiner has not adequately
considered the context of Mukkamala when combining Hua's TKPP. Id. at
9, 11.
On the whole, we agree with Appellant that the Examiner has not
adequately explained why a person of skill in the art would have used Hua's
TKPP in Mukkamala's laminate. In particular, Appellant presents evidence
that because of TKPP's water solubility, a person of skill in the art would
not have considered TKPP suitable for Mukkamala's polymer preparation.
July 23, 2015, Declaration of Dr. John Roper ("Roper Deel."), ,r 6. The
Examiner has not adequately explained why this testimony is incorrect or
why a person of skill in the art would have nonetheless reached the proposed
combination. In view of Dr. Roper's testimony, the preponderance of the
evidence does not support that a person of skill in the art would have reason
3 We note that although Hua teaches many possible dispersants (referred to
as surfactants in Hua and Wen), Hua names TKPP first when identifying a
preferred dispersant. Hua ,r 37. Wen is the similar. Wen ,r 48.
Accordingly, Appellant's position that a person of skill in the art would not
have been likely to choose TKPP from the possibilities of Hua (or Wen) is
not persuasive.
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to combine TKPP with Mukkamala's laminate with a reasonable expectation
of success.
The Examiner's use of the other cited references does not cure this
error. We therefore do not sustain these two rejections.
Rejections 3 and 4. The Examiner rejects claims 1-6, 8, 9, and 12 as
obvious over Wen in view ofMukkamala and Kruse. Ans. 4. The Examiner
applies the same combination to claims 10, 11, and 13 in further view of
Hiscock. Id. at 8.
We review appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments concerning these
two rejections, we are not persuaded that Appellant identifies reversible
error. Thus, we affirm these two rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
With respect to the rejections based on Wen, Appellant do not
substantively argue recitations of any of the dependent claims. We therefore
limit our discussion to claim 1. All remaining claims stand or fall with that
claim. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
The Wen reference has similar teachings to Hua, but the rationale of
the Examiner's rejection is substantially different. The Examiner finds that
Wen teaches a laminate having, for example, overlapping ranges of titanium
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dioxide and TKPP. Ans. 4 (citing Wen); see also Wen Abstract (indicating
Wen's pigment may be used with paper), ,r 2 (same). The Examiner finds
that Wen fails to teach 3 to 25 weight percent of a polymeric binder. Ans. 4.
Mukkamala teaches a laminate comprising 5 to 3 5 weight percent of a
polymeric binder. Ans. at 5 ( citing Mukkamala). The Examiner determines:
It would have been obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention to include a
polymeric binder, including amount presently claimed, in the
composition of Wen et al. in view of Kruse et al. in order to impart
film-forming characteristics (Mukkamala, paragraph [0075]).
Appeal Br. 5. The Examiner relies on Kruse to reach the layer thickness of
claim 1. Ans. 5-6 ( citing Kruse).
Appellant argues that Wen and Hua use similar approaches and argues
that "Wen brings nothing new to the table except an explicit teaching away
from optimizing spacing of Ti02 particles using simple blends such as Ti02
slurry and TKPP." Appeal Br. 13-14. Appellant also argues that neither
Hua nor Wen discloses films with spacers. Id.
Appellant's arguments are unpersuasive. Appellant fails to
persuasively rebut the Examiner's stated reason why a person of skill in the
art would have combined the teachings ofMukkamala (i.e., in order to
impart film-forming characteristics). Appellant's argument regarding
spacers is unpersuasive because claim 1 does not recite or require a lack of
spacers. Contrary to what Appellant implies, claim 1 also does not recite or
require a "simple blend." Rather, claim 1 is a comprising claim and permits
inclusion of unrecited spacers.
Appellant also argues unexpected results and relies on the Roper
Declaration to support this argument. Appeal Br. 14--16. The Examiner
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finds that the Appellant has not provided evidence to show unexpected
results across the claimed thicknesses and has not provided evidence that
thickness is not important. Ans. 14--17. The Examiner also finds that
Appellant has not established unexpected results (improved brightness) at a
TKPP value above 0.67. Id. at 17-18. The evidence supports the
Examiner's position. See, e.g., Roper Deel. ,r,r 9-14 (failing to establish
unexpected results across claimed range of thicknesses and failing to
establish unexpected results above 0.67 wt% TKPP).
Appellant also does not persuasively establish that the improved
brightness really would have been unexpected to a person of ordinary skill in
the art. While Appellant does explain that the inventor did not initially think
to use TKPP (Roper Deel. ,r 9), the record lacks evidence as to why a person
of skill in the art would not have expected TKPP to have better brightness.
Overall, Appellant's unexpected results argument is unpersuasive
because evidence of unexpected results commensurate in scope with the
claims and evidence that the results are truly unexpected is lacking. See In
re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (explaining that
applicant may overcome a prima facie case of obviousness by showing
unexpected results but showing of unexpected results "must be
commensurate in scope with the claims which the evidence is offered to
support") (internal quotes and citation omitted).
Because Appellant does not establish reversible error, we sustain these
rejections.
Rejection 5. Appellant does not dispute the Examiner's obviousness
type double patenting rejection of claims 1-3, 5---6, 10, and 11. Appeal Br.
16. We thus summarily sustain this rejection.
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DECISION
For the above reasons, we reverse the Examiner's rejections of ( 1)
claims 1-6, 8, 9, and 12 under 35 U.S.C. § 103 as unpatentable over
Mukkamala in view of Hua as evidenced by Ercillo and (2) claims 10, 11,
and 13 under 35 U.S.C. § 103 as unpatentable over Mukkamala in view of
Hua and further in view of Hiscock.
We affirm the Examiner's rejections of claims (3) claims 1-6, 8, 9,
and 12 under 35 U.S.C. § 103 as unpatentable over Wen in view of
Mukkamala and Kruse, (4) claims 10, 11, and 13 under 35 U.S.C. § 103 as
unpatentable over Wen in view of Mukkamala, Kruse, and Hiscock, and ( 5)
claims 1-3, 5---6, 10, and 11 on the ground of nonstatutory double patenting
as being unpatentable over claims 7 and 8 of copending Application No.
14/207,810 in view of Jensen.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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