Ex Parte Bridgewater et al

Board of Patent Appeals and Interferences

Sep 14, 2010

10700078 (B.P.A.I. Sep. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/700,078 11/03/2003 Brian Michael Bridgewater 3734
21898 7590 09/14/2010
ROHM AND HAAS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399
EXAMINER
NERANGIS, VICKEY MARIE
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/14/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN MICHAEL BRIDGEWATER,
MARTIN JOHN DEETZ,
RALPH CRAIG EVEN,
MATTHEW STEWART GEBHARD,
and CAREN ANN PUSCHAK
____________

Appeal 2010-008978
Application 10/700,078
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-008978
Application 10/700,078

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-7 and 15-18.2 We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants claim an aqueous coating composition comprising an
aqueous acrylic emulsion polymer comprising, as copolymerized units,
monoethylenically unsaturated nonionic (meth)acrylic monomer and
monoethylenically unsaturated acid monomer wherein the emulsion polymer
is formed by emulsion polymerization in the presence of a thermal initiator
and wherein less than half of the initiator is present during the first 10% of
the conversion of monomers to the emulsion polymer (claim 2).
Representative claim 2 reads as follows:
2. An aqueous coating composition comprising a pigment and an
aqueous acrylic emulsion polymer comprising, as copolymerized units, from
50 to 99.75% by weight, based on dry polymer weight, monoethylenically
unsaturated nonionic (meth)acrylic monomer and from 0.25 to 10% by
weight, based on dry polymer weight, monoethylenically unsaturated acid
monomer, said polymer having a Tg of -10 °C to 35 °C wherein said
emulsion polymer is formed by emulsion polymerization at a temperature of
from 70 °C to 99 °C in the presence of a thermal initiator, wherein said
initiator is used in the amount of 0.05 to 0.3%, by weight, based on dry
polymer weight, and wherein less than half of said initiator is present during
the first 10%, by weight, based on dry polymer weight, of the conversion of
monomers to said emulsion polymer, and a neutralizer, wherein said
neutralizer is used in the amount of from 5% to 75%, on an equivalents
basis, based on said monoethylenically unsaturated acid monomer, and
wherein less than half of said neutralizer is present during the first 25%, by

2 We will not entertain Appellants' Request for Reconsideration of the
Examiner's restriction requirement (App. Br. 14). Such a request is a matter
to be reviewed by petition, not appeal. See the Manual of Patent Examining
Procedure (MPEP) § 1201 (Rev. 3, August 2005) and § 1002.02(c) (Rev. 2,
May 2004).
Appeal 2010-008978
Application 10/700,078

3
weight, based on dry polymer weight, of the conversion of monomers to said
emulsion polymer.

The Examiner rejects claims 2-5, 7, and 17 under 35 U.S.C. § 102(b)
as being unpatentable over Friel (US Patent 5,731,377, issued March 24,
1998) (Ans. 3-4).
Under 35 U.S.C. § 103(a), the Examiner rejects claim 6 over Friel,
rejects claims 1, 3-7, and 16 over Friel in view of Ishikawa (US Patent
4,325,856, issued April 20, 1982), rejects claim 15 over Friel, Ishikawa, and
Bricker (US Patent 5,502,089, issued March 26, 1996), and rejects claim 18
over Friel in view of Bricker (id. at 4-9).
We will sustain these rejections based on the findings of fact,
conclusions of law, and rebuttals to argument expressed by the Examiner in
the Answer (id. at 3-12). We add the following comments for emphasis.
The only reasonably specific issue raised by Appellants' arguments is
whether the product-by-process claims on appeal, as represented by
independent claim 2, define an emulsion polymer which is distinguishable
from the emulsion polymer disclosed by Friel.
In an attempt to refute the Examiner's finding that the above two
emulsion polymers are indistinguishable, Appellants proffer the Even
Declaration of December 21, 2007 and the Even Declaration of March 3,
2009 (App. Br. 7-9). In addition to presenting scrub resistance data, the
2009 Even Declaration includes and clarifies the chromatogram data in the
2007 Even Declaration. Accordingly, it is appropriate to discuss the 2009
Declaration only.
Appellants argue that the three chromatograms in Appendix A of the
2009 Even Declaration show that the three tested inventive polymers and
Appeal 2010-008978
Application 10/700,078

4
Friel polymers are different because they exhibit different elutions (App. Br.,
para. bridging 7-8).
However, we agree with the Examiner that two of the three
chromatograms militate against Appellants' argument because they show
dual elutions for both the inventive and comparison examples (Ans. 9).
Indeed, no meaningful difference is shown, and Appellants describe none
specifically, by the almost identical elutions of the inventive (AH311) and
comparison (AH309) examples in the third chromatogram. Significantly,
Appellants' Reply Brief contains no rebuttal to the Examiner's criticism of
this chromatogram evidence.
Appellants also argue that the 2009 Even Declaration shows their
claimed polymers are different from Friel's polymers by the higher scrub
resistance for the AH303 inventive polymer relative to the AH301
comparison polymer (App. Br. para. bridging 8-9).
This argument is unpersuasive. As correctly pointed out by the
Examiner in the Answer, and not disputed by Appellants in the Reply Brief,
the scrub resistance data in the 2009 Declaration are not consistent because,
unlike the above polymers identified by Appellants, the SB171 inventive
polymer exhibits a lower scrub resistance than the SB170 comparison
polymer (Ans. para. bridging 9-10). Therefore, contrary to Appellants'
belief, the inconsistent scrub resistance data of the Declaration does not
establish that the claim 2 polymers are necessarily different from the
polymers of Friel.
Appellants further argue that their claim 2 polymers, relative to the
Friel polymers, are not only novel but unobvious on the grounds that they
Appeal 2010-008978
Application 10/700,078

5
exhibit unexpected results as shown, for example, by the scrub resistance
data in the 2009 Even Declaration (App. Br. 9-13). We cannot agree.
The evidence proffered by Appellants is not commensurate in scope
with claim 2. In this regard, the Examiner correctly explains, and Appellants
do not disagree in the Reply Brief, that the exemplified amounts (i.e., 10-
35%) of initiator added during the first 10% of monomer conversion are not
commensurate in scope with the claim 2 amounts of less than half (Ans. 10-
12). We also find merit in the Examiner's point that claim 2 is not limited to
the inventive polymers of the 2009 Declaration which are all derived from
ureido monomer (id.). While we understand Appellants' reason for testing
ureido-derived polymers (Reply Br. 2-3), the fact remains that claim 2
encompasses a wide variety of other polymers which might well exhibit
expected rather than unexpected results.
Concerning the Examiner's criticism that Appellants' data is not
commensurate in scope with claim 2, Appellants argue that no factual basis
exists for expecting untested claim 2 compounds to behave differently from
the compounds tested in the data (App. Br. 12).
Appellants are incorrect. As indicated above, the Examiner has
expressly identified factual bases in the chromatogram data and in the scrub
resistance data which reveal that Appellants' inventive polymers do not
necessarily and consistently distinguish from Friel's polymers. At best,
Appellants' Declaration evidence merely indicates that some inventive
polymers appear to be different while other inventive polymers appear to be
the same as the polymers of Friel. This circumstance supports the
Examiner's finding that claim 2 is anticipated by Friel.
Appeal 2010-008978
Application 10/700,078

6
For the reasons set forth above and in the Answer, we sustain the
§ 102 rejection of claims 2-5, 7, and 17 as being anticipated by Friel. We
also sustain the alternative § 103 rejection of these claims over Friel on the
grounds that evidence establishing lack of novelty necessarily evinces
obviousness. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
Finally, we sustain the remaining rejections on appeal for the reasons given
above and in the Answer.
The decision of the Examiner is affirmed.
AFFIRMED

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PATENT DEPARTMENT
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