Ex Parte Wang et al

Patent Trial and Appeal Board

Jul 17, 2018

13669537 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/669,537
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
11/06/2012
07/17/2018
FIRST NAMED INVENTOR
Wei Wang
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.
l 1007872Al 3331
EXAMINER
SAL VITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
07/17/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEI WANG, DAVID FENN, ROXALANA MARTIN,
RICHARD J. SADVARY, DENNIS A. SIMPSON and
RICHARD WILLIAMS
Appeal2017-007233
Application 13/669,537
Technology Center 1700
Before KAREN M. HASTINGS, WESLEY B. DERRICK,
and JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-3, 5, 15, and 18-20 under pre-AIA 35
U.S.C. § 102(b) as anticipated by Shalati (US Patent Number 6,372,840 Bl,
pat. Apr. 16, 2002), claim 6 under pre-AIA 35 U.S.C. §102(b) as being
unpatentable over Shalati as evidenced by Hashemzadeh (US Publication
Number 2010/0022738 Al, pub. Jan. 28, 2010), claim 4 under pre-AIA
U.S.C. §103(a) as being unpatentable over Shalati in view ofKawazu (US
1 Appellant is the Applicant, PPG Industries Ohio, Inc., which is also stated
to be the real party in interest is (Appeal Br. 1 ).
Appeal2017-007233
Application 13/669,537
Patent Number 5,880,187, pat. Mar. 9, 1999), claims 7 and 8 under pre-AIA
35 U.S.C. §103(a) as being unpatentable over Shalati, and claim 20 under 35
U.S.C. § 103(a) as being unpatentable over Shalati in view of Antonelli (US
Patent Number 5,468,801, pat. Nov. 21, 1995).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is representative of the claimed invention ( emphasis added to
highlight key disputed limitations):
A non-aqueous dispersion comprising a continuous phase
and a dispersed phase, wherein the dispersed phase comprises a
dispersion polymerization reaction product prepared from a
reaction mixture comprising an ethylenically unsaturated
monomer, a nonlinear acrylic polymer stabilizer, and an
aliphatic polyester stabilized seed polymer, wherein the acrylic
polymer stabilizer comprises 75 weight% or greater
(meth)acrylic monomer.
Independent claim 20 is similar to claim 1 except it further recites
"and wherein the acrylic polymer stabilizer comprises a polyfunctional
ethylenically unsaturated monomer" (Claims Appendix).
ANALYSIS
The§ 102 Rejections of claims 1-3, 5, 6, 15, and 18-20
At the outset, we note that while independent claim 20 was included in
the § 102 rejection in the Final Action, the Examiner does not address the
§ 102 of claim 20 in the Answer, or respond to the Appellant's argument's
pertaining thereto (Appeal Br. 8; Ans. generally). The Examiner only
addresses Appellant's argument with respect to the § 103 rejection of claim
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Application 13/669,537
20 in the Response to argument section (Ans. 11 ). Accordingly, we reverse
the Examiner's rejection of claim 20 as anticipated by Shalati.
However, having reviewed each of Appellant's arguments, we
determine that a preponderance of the evidence supports the Examiner's
finding that the claimed subject matter of representative claim 1 is
anticipated within the meaning of§ 102 in view of the applied prior art of
Shalati. Accordingly, we will sustain the Examiner's rejection for
essentially those reasons expressed in the Answer, including the Examiner's
Response to Argument section, and we add the following primarily for
emphasis.
The main dispute is whether Shalati describes, within the meaning of
§ 102, a non-linear acrylic polymer stabilizer, wherein the acrylic polymer
stabilizer comprises 75 weight% or greater (meth)acrylic monomer.
Appellant argues that Shalati does not teach a non-linear acrylic
polymer stabilizer and fails to teach an acrylic polymer stabilizer comprising
75 weight% or greater (meth)acrylic monomer as well as that Shalati fails to
teach a non-linear acrylic polymer stabilizer. (App. Br. 6-8; Reply Br. 1, 2).
Appellant also relies upon the Wang Declaration (filed October 31, 2014) as
further support that Shalati does not describes a stabilizer having at least 7 5
weight% (meth)acrylic monomer. Appellant's arguments and declaration
are not persuasive of reversible error in the Examiner's anticipation
rejection.
It is well established that the "PTO must give claims their broadest
reasonable construction consistent with the specification .... Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
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Application 13/669,537
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
The Examiner explains that the term "nonlinear" means that there is at
least one branch point along the backbone of the polymer (Spec. 5). In the
instant case grafting (meth)acrylic monomers onto a (meth)acrylic backbone
as described in Shalati meets the definition as claimed because grafting said
monomer onto said backbone creates a branching point (Ans. 3). Appellants
do not specifically dispute this definition, but rather conclude that pendant
groups are not "branches" and need to be polymeric (Appeal Br. 6).
This argument is not persuasive of reversible error. As pointed out by
the Examiner, Appellants' Specification does not contain a limiting or
special definition of "nonlinear" (Ans. 7, 8). Indeed, Appellant's
Specification discussion of nonlinear encompasses the branching taught in
Shalati (Spec. i-fl4; Shalati col. 4, 11. 35-57 (describing the groups attached to
the backbone)). Notably, Appellants have not directed our attention to any
persuasive reasoning or credible evidence to establish that the Examiner's
interpretation is unreasonable, nor to any portion of the Specification that
limits the definition of "nonlinear" to exclude the type of monomers found
in Shalati as pointed out by the Examiner.
The Examiner aptly points out that Shalati envisions various
embodiments but that one of its embodiments includes using greater than 7 5
wt% or greater (meth)acrylic monomer (Ans. 3-5). The Wang Declaration
discusses other examples to calculate (meth)acrylic values less than 75%
weight % and is not probative on the embodiment relied upon by the
Examiner.
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Application 13/669,537
A preponderance of the evidence supports the Examiner's position
that one of ordinary skill in the art would have readily recognized that a
(meth)acrylic backbone grafted with (meth)acrylic monomers is an acrylic
polymer stabilizer comprising 100% by weight (meth)acrylic monomer as
described by Shalati (Ans. 3). In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(In determining whether a reference anticipates the subject matter recited in
a claim, "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."); Cf In re Schaumann, 572 F.2d
312, 317 (CCP A 1978) (In order to anticipate, a reference must identify
something falling within the claimed subject matter with sufficient
specificity to constitute a description thereof within the purview of§ 102.).
It is well established that specific examples of the claimed subject matter are
not necessary to establish anticipation. Rather, to anticipate, one skilled in
the art must be able to "at once envisage" the claimed subject matter in the
prior art disclosure. In re Petering, 301 F.2d 676,681 (CCPA 1962).
Thus, a preponderance of the evidence supports the Examiner's de
facto position that one of ordinary skill in the art would have at once
envisaged that one of the reactants in Shalati's "dispersion polymerization
reaction product prepared from a reaction mixture" as recited in claim 1
may be an acrylic polymer stabilizer comprising 75 weight% or greater
(meth)acrylic monomer (Ans. generally).
To the extent Appellant argues the§ 102 rejection of dependent claim
6, a preponderance of the evidence supports the Examiner's determination
that a "reactive diluent" as recited therein encompasses Shalati's use of
glycidyl methacrylate (Appeal Br. 7; Ans. 9).
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Thus, we affirm the Examiner's§ 102 rejections of claims 1-3, 5, 6,
15, 18, and 19, but reverse as to independent claim 20.
The§ 103 Rejections of claims 4, 7, 8, and 20
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
With regards to the§ 103 rejection of dependent claims, 4, 7, and 8, a
preponderance of the evidence supports the Examiner's obviousness
determinations for reasons explained by the Examiner (Appeal Br. 7, 8;
Answer 10, 11 ).
With respect to the § 103 rejection of independent claim 20, Appellant
contends that crosslinking monomers taught in Antonelli are used in the
formation of the polymer particles, and not in making a stabilizer (Appeal
Br. 8). Appellant contends that neither Shalati nor Antonelli give any
suggestion that crosslinking monomers of any type should be used in the
preparation of the stabilizer. Id. These arguments are not persuasive of
error in the Examiner's rejection.
Notably, claim 20 requires no minimum amount of polyfunctional
ethylenically unsaturated monomer; a de minimus amount is encompassed
by the claim. The Examiner points out that Shalati teaches "the genus of the
claimed invention in naming crosslinkers" (Ans. 11; See also Final Action 6
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Application 13/669,537
(pointing out Shalati's use of glycidyl (meth)acrylates and (meth)acrylic
acids)). Antonelli indicates that monomers such as dimethacrylates and
divinylbenzene2 are art-recognized equivalent monomers to others such as
glycidyl (meth)acrylate and (meth)acrylic acid used in Shalati (Antonelli
4:49-5: 14) (Final Action 6). Thus a preponderance of evidence supports the
Examiner's position that one of ordinary skill would have, using no more
than ordinary creativity, used at least a small amount of a polyfunctional
ethylenically unsaturated monomer such as dimethacrylate with, or in place
of, e.g., the (meth)acrylate reactant of Shalati. See KSR, 550 U.S. at 421 ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton"); Ball Aerosol & Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry set forth
by the Supreme Court, the PTO must take account of the "inferences and
creative steps," as well as routine steps, that an ordinary artisan would
employ).
Accordingly, we affirm the Examiner's obviousness rejections of
claims 4, 7, 8, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
2 There is no dispute that dimethacrylates and divinylbenzene are
polyfunctional ethylenically unsaturated monomers.
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