Ex Parte Bene et al

Patent Trial and Appeal Board

Jun 7, 2016

12598505 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/598,505 11102/2009
23657 7590 06/09/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Peter Bene
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.
C 3221 PCT
(CGG0237-00US)
CONFIRMATION NO.
1815
EXAMINER
BRUNSMAN, DAVID M
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
docket@dsiplaw.com
spedersen@dsiplaw.com
jescobar@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BENE, HARALD FROMMELIUS,
HEINZ-GUNTHER SCHULTE, ANNEMARIE MEINHOLD, and
EDDA BERGMANN
Appeal2014-009113
Application 12/598,505
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
CHRISTOPHER L. OGDEN, 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, 11-13, 19 and 20. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a coalescent composition and a coating
composition comprising the coalescent composition. Claims 1 and 13 are
illustrative:
1. A coalescent composition consisting of one or more esters
of the general formula (I),
R 1-COOR2 (I)
Appeal2014-009113
Application 12/598,505
in which R 1 is a saturated alkyl radical having 9 to 23
C atoms and R2 is a saturated alkyl radical selected from the
group of methyl, ethyl, n-propyl, and isopropyl, and wherein,
upon formulation into a film, the one or more esters of
general formula (I) in which R 1 is a saturated alkyl radical
having 9 to 23 C atoms and R2 is a saturated alkyl radical
selected from the group of methyl, ethyl, n-propyl, and
isopropyl increases the hardness of the film when compared
to a comparative coalescent composition that contains an
ester of general, formula (I) in which there is unsaturation in
R1, R2 , or both.
13. A coating composition comprising the coalescent
composition of claim 1 and an aqueous dispersion of
polymers or latex particles.
Van de Mark
The References
US 2007 /0093579 Al Apr. 26, 2007
Carl W. Bonhorst et al., Esters of Naturally Occurring Fatty Acids; Physical
Properties of Methyl, Propyl, and Isopropyl Esters of C6 to C1s Saturated
Fatty Acids, 40 IND. & ENGR. CHEM. 2379-84 (1948) (hereinafter Bonhorst).
The Rejections
The claims stand rejected as follows: claims 1, 11 and 12 under
35 U.S.C. § 102(b) over Bonhorst, claims 13 and 19 under 35 U.S.C.
§ 102(a ore) over Van de Mark, and claim 20 under 35 U.S.C. § 103 over
Van de Mark.
OPINION
We affirm the rejections.
Rejection of claims 1, 11 and 12 under
35 U.S.C. § 102(b) over Van de Mark
The Appellants argue the claims as a group (Br. 10-13). We therefore
limit our discussion to one claim, i.e., claim 1, which is the sole independent
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claim among claims 1, 11 and 12. Claims 11 and 12 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Bonhorst discloses methyl, propyl and isopropyl esters ( caprate,
laurate, muristate, palmitate and stearate) (p. 2393) which fall within the
Appellants' claim 1 's formula I (Spec. 7:33 - 8:8).
The Appellants assert that "Bonhorst does not teach or suggest using
its esters for increasing the hardness of a film or as coalescent agents"
(Br. 12).
That assertion is not well taken because it is directed toward a
limitation which is not in the claims. See In re Self, 671 F.2d 1344, 1348
(CCP A 1982) ("[A ]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims.").
The Appellants assert that "Bonhorst does not recognize that
saturation at R 1 and R2 leads to compositions with significantly improved
hardness versus comparative compositions that have unsaturation at R 1, R 2,
or both" (Br. 12).
"From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing." In re Papesch,
315 F.2d 381, 391(CCPA1963). Because Bonhorst's esters falling within
the Appellants' claim 1 's formula I are the same as the corresponding esters
in that claim, they have the same properties including claim 1 's recited
property of increasing film hardness.
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Application 12/598,505
Thus, we are not persuaded of reversible error in the rejection of
claims 1, 11 and 12 under 35 U.S.C. § 102(b) over Bonhorst.
Rejection of claims 13 and 19 under 35 U.S. C.
§ 102(a ore) over Van de Mark
The Appellants argue the claims as a group (Br. 14--15). Accordingly,
we limit our discussion to one claim, i.e., claim 13, which is the sole
independent claim among claims 13 and 19. Claim 19 stands or falls with
claim 13. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Van de Mark discloses "a coalescent aid comprising an ester having
the formula RCOOX wherein R and X are independently hydrocarbyl or
substituted hydrocarbyl and at least one of R and X comprises at least two
unsaturated carbon-carbon bonds" (i-f 8). Van de Mark's Table 1 (p. 3)
shows numerous vegetable oils comprising both 1) saturated esters which
can be methyl esters (i-f 49) and have a carbon atom number within the
Appellants' claim 1 's C9 to C23 range, and 2) unsaturated esters.
The Appellants assert that "Van de Mark specifically discloses a
coalescent aid that comprises unsaturated carbon-carbon bonds, while the
claimed coalescent aid consists of only saturated bonds" (Br. 14).
"' [D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification."' In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). The claim transition term
"comprising" generally opens the claim to elements other than those recited,
see In re Baxter, 656 F.2d 679, 686 (CCPA 1981), but even if a claim's
transition term is "comprising," the term "consisting of' within a claim
element may limit the claim with respect to that element. See Mannesmann
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Demag Corp. v. Engineered Metal Prods. Co., 793 F.2d 1279, 1282 (Fed.
Cir. 1986) ("The district court correctly observed that the phrase 'consisting
of' appears in clause (a), not the preamble of the claim, and thus limits only
the element set forth in clause (a). The court correctly declined to read this
usage of 'consisting of' as excluding all other elements from the claim as a
whole"). The Appellants' Specification, however, indicates that in the
embodiment claimed in claim 13 wherein claim 1 's formula I's esters are
included in an aqueous dispersion of polymers or latex particles, those esters
"are used either alone (in the form of a pure species or a mixture of different
species) or in a blend with other coalescents" which are different from them
(Spec. 11, 5-8) and can be esters (Spec. 10, 11. 23-36). Thus, claim 13,
given its broadest reasonable interpretation consistent with the Specification,
encompasses a composition comprising both saturated and unsaturated
esters.
Hence, we are not convinced of reversible error in the rejection of
claims 13 and 19 under 35 U.S.C. § 102(a ore) over Van de Mark.
Rejection of claim 20 under 35 U.S.C
§ 103 over Van de Mark
Claim 20, which depends from claim 13, requires that formula I's R2
is isopropyl.
The Appellants assert that the Declaration under 37 C.F.R. § 1.132 of
Harald Frommelius indicates that the coating composition claimed in the
Appellants' claim 20 produces unexpected results (Br. 16).
For the above reasons and those which follow, the evidence as a
whole, including the Frommelius Declaration, indicates that the coating
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composition claimed in the Appellants' claim 20 would have been obvious
to one of ordinary skill in the art over Van de Mark.
First, the Appellants have not established that the Frommelius
Declaration provides a comparison of the claimed invention with the closest
prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Second, it is not enough for the Appellants to show that the results for
the Appellants' invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The Appellants provide mere attorney argument that
the results in the Frommelius Declaration would have been unexpected by
one of ordinary skill in the art (Br. 16), and such arguments of counsel
cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re
Greenfield, 571F.2d1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974).
Third, the Appellants have not established that the evidence in the
Frommelius Declaration is commensurate in scope with claim 20. See In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980). We find in the evidence of record no reasonable
basis for concluding that the great number of materials encompassed by the
Appellants' claim 20 would behave as a class in the same manner as the
particular materials tested. See In re Lindner, 457 F.2d 506, 508 (CCPA
1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
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Fourth, the Frommelius Declaration compares C12 esters to C1s esters
(Decl'n i-fi-13, 5). Consequently, the cause-and-effect relationship which the
Appellants desire to show between ester saturation and film hardness is lost
in multiple unfixed variables. See In re Heyna, 360 F.2d 222, 228 (CCPA
1966); In re Dunn, 349 F.2d 433, 439 (CCPA 1965).
Accordingly, we affirm the rejection of claim 20 under
35 U.S.C. § 103 over Van de Mark.
DECISION/ORDER
The rejections of claims 1, 11 and 12 under 35 U.S.C. § 102(b) over
Bonhorst, claims 13 and 19 under 35 U.S.C. § 102(a ore) over Van de
Mark, and claim 20 under 35 U.S.C. § 103 over Van de Mark are affirmed.
It is ordered that the Examiner's decision is affirmed.
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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