Ex Parte Dombrowski et al

Patent Trial and Appeal Board

Sep 25, 2017

14353825 (P.T.A.B. Sep. 25, 2017)

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.
14/353,825 04/24/2014 Juergen Dombrowski 71747-US-PCT 6336
21898 7590 09/27/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
RIETH, STEPHEN EDWARD
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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 JUERGEN DOMBROWSKI,
HARTMUT KUEHN, MARGARITA PERELLO,
and SONJA SCHARLEMANN
(Applicant: DOW GLOBAL TECHNOLOGIES LLC)
Appeal 2017-008880
Application 14/353,8251 2 3
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, and 4—6.2,3 We have
jurisdiction under 35 U.S.C. § 6(b).
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “DOW GLOBAL TECHNOLOGIES LLC.” Appeal Brief, filed on April
12, 2016, hereinafter “Br.,” 4.
2 Br. 5—10; Examiner’s Answer (notice emailed on October 7, 2016),
hereinafter “Ans.,” 2—14; Final Office Action (notice emailed on November
12, 2015) hereinafter “Final Act.,” 2—14.
3 Claims 7, 8, and 10 are incorrectly included in the Claims Appendix, as
these claims have been withdrawn from consideration pursuant to a
restriction requirement. Final Act. 2—3.
Appeal 2017-008880
Application 14/353,825
We affirm.
A. BACKGROUND
Although not listed in the “Related Appeals, Interferences or Judicial
Proceedings” section of the Appeal Brief (Br. 4), a Notice of Appeal and
Appeal Brief were filed February 10, 2016 and April 11, 2016, respectively,
in Application 14/353,818 (Appeal No. 2017-001778). That appeal involves
claims that are not patentably distinct from the current claims on appeal, as
evidenced by the obviousness-type double patenting rejection discussed
below. 37 C.F.R. § 41.37(c)(1)(h).
The subject matter on appeal relates to additives prepared from a
polyurethane powder and a redispersible polymer powder, the additives
being useful in hydraulic binders, such as cement compositions.
Specification, hereinafter “Spec.,” 11. The inventors disclose that,
depending upon the polymer used to make the redispersible powder and the
cementitious application it is used in, various types of performance issues
can occur for such additives. Id. 14. To address these performance issues,
the inventors disclose a redispersible polymer powder that provides
improved performance. Id. 1 6.
Representative claim 1 is reproduced from page 11 of the Appeal
Brief (Claims Appendix) as follows (emphases added):
1. A redispersible polymer powder composite comprising a
co-dried admixture of a water insoluble film-forming polymer, a
colloidal stabilizer, and a powdered polyurethane foam or
elastomer, the amount of the powdered polyurethane being from
1 % by weight to 99% by weight, based upon the total weight of
the water-redispersible polymer powder composite.
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B. REJECTIONS ON APPEAL
On appeal, the Examiner maintains4,5 several rejections, which are as
follows (Ans. 2—9; Final Act. 3—13):
I. claims 1 and 4 as being unpatentable under 35 U.S.C.
§ 103(a) over Shin4 5 6 in view of Stephenson et al.7
(Stephenson);
II. claims 1, 2, 4, and 6 as being unpatentable under 35
U.S.C. § 103(a) over Karcher et al.8 (Karcher) in view of
Stephenson;
III. claims 2 and 6 as being unpatentable under 35 U.S.C.
§ 103(a) over Karcher in view of Stephenson, as
evidenced by Close;9 and
IV. provisionally, claims 1 and 4—6 as being unpatentable
4 A final rejection under 35 U.S.C. § 103 of claims 1 and 4 over Semmens
(US 2002/0129745 Al, published September 19, 2002) in view of Guevara
et al. (US 7,699,929 B2, issued April 20, 2010), as evidenced by Parrish
(“Emulsion Polymerization,” http://pslc.ws/macrog/level4.htm (last visited
October 28, 2015)), has been withdrawn. Ans. 9.
5 The Examiner indicated that claim 3 includes allowable subject matter.
Final Act. 13. Claim 5 is also no longer rejected over prior art after the
withdrawal of the § 103 rejection over Semmens and Guevara, as evidenced
by Parrish. However, the Examiner should consider the disclosure of Perello
et al. (WO 2009/099717 A2, published August 13, 2009), which was cited in
Application 14/353,818, upon the return of this application’s jurisdiction to
the Examiner and the continuance of examination.
6 WO 2009/061016 Al, published May 14, 2009.
7 US 5,472,498 A, issued Dec. 5, 1995.
8US 2010/0314111 Al, published Dec. 16, 2010.
9 US 4,892,891, issued Jan. 9, 1990.
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under nonstatutory obviousness-type double patenting
over claims 1—6 of Application 14/353,818.
C. DISCUSSION
Rejections I and II
Claims 1 and 4 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Shin in view of Stephenson.
Claims 1, 2, 4, and 6 are rejected as being unpatentable under 35
U.S.C. § 103(a) over Karcher in view of Stephenson.
The Appellant does not argue these rejections separately. Br. 6—8.
Therefore, we address both rejections together. We select claim 1 as
representative for the issues discussed below.
We have fully considered the Appellant’s arguments in support of
claim 1. These arguments, however, do not persuade us that the Examiner’s
findings, analysis, and conclusion, which we adopt as our own, are based on
any reversible error. Our reasons follow.
The Appellant contends each of Shin and Karcher does not disclose a
water-redispersible polymer powder or a water-insoluble film-forming
polymer. Id. at 6—7. These arguments are unpersuasive. As stated by the
Examiner at pages 9—10 of the Examiner’s Answer, these arguments address
the applied references individually rather than what the combination,
including Stephenson, would have suggested. “[T]he test for combining
references is not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
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With regard to Stephenson, the Appellant asserts the aggregate
disclosed by Stephenson “is not water dispersible and there is nothing to
suggest that it is; in fact, Stephenson proposes to use it as aggregate.” Id. at
6. This argument is unpersuasive. The Examiner finds Stephenson discloses
that an aqueous mixture of foam particles and binding agent emulsion is
dried to form free flowing particles that may be stored without
agglomeration. Ans. 10—11. The Examiner further finds Stephenson
discloses that the binding agent permits the foam particles to evenly disperse
in hydraulic cementitious mixtures, which the Examiner finds to be
dispersible within water in order to function. Id. at 11. In this regard, the
Examiner finds the Appellant’s Specification does not set forth an express
definition of “water-redispersible,” which the Examiner broadly interprets
under its plain meaning as “including powders that exhibit any form of water
dispersibility” and this encompasses the particles suggested by the
combination of the applied references. Id.
The Examiner’s claim construction and factual findings are
reasonable. Stephenson discloses coating a foamed particulate material with
a binding agent by emulsifying the binding agent in water that may further
include a surfactant to aid in the emulsification of the binding agent and “to
aid dispersion of the aggregate in cement.” Stephenson 3:6—16, 23, 34-41.
The coated material is produced by preparing an aqueous emulsion of the
binding agent and the surfactant, coating the foamed particulate material
with the emulsion, and drying the mixture to produce free flowing particles
that may be stored without agglomeration. Id. at 5:47—65, 6:9—11. Thus,
even under the Appellant’s asserted definition of “water redispersible
polymer powder” as powder that “was originally dispersed as the same thing
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in water” (Br. 6), Stephenson’s coated particles meet that definition.
Moreover, although Stephenson describes the coated particles as aggregate
particles, Stephenson discloses that the aggregate can be dispersed in cement
and that the particles are free flowing and storable without agglomeration, as
described above. We further note that the Appellant does not respond to the
Examiner’s findings in the Examiner’s Answer or otherwise identify a
reversible error in those findings.
With regard to the water-insoluble film-forming polymer of claim 1,
the Appellant disputes the Examiner’s finding that the hydroxypropyl methyl
cellulose disclosed by Stephenson is a cellulose ether, which is a film-
forming polymer. Br. 7. However, the Examiner has withdrawn this finding
and relies upon the alternative finding that Stephenson discloses polyvinyl
acetate, which the Examiner finds to be a water-insoluble film-forming
polymer. See Ans. 2, 3; Final Act. 4. The Appellant further argues:
Stephenson further fails to disclose a composite at all, or any
water insoluble film-forming polymer in any particle (powder)
form. None of the binder compositions in Stephenson alleged to
be a redispersible polymer powder are ever in powder form;
rather they are used in liquid form to coat a foam aggregate. See
the Abstract and Tables at cols. 4 and 5 and col. 5, lines 45-66 of
Stephenson. The final rejection at page 4 admits that the art of
Stephenson “coats foam particles.” See col. 3, lines 23-34. The
resulting coated aggregate product of Stephenson is a coated
aggregate, and is not a composite! Further, any polymer coating
of Stephenson is in the form of a film, not a powder.
Br. 6-7.
In response, the Examiner finds there is no express definition of
“composite” set forth in the Appellant’s Specification and so interprets
“composite” under its plain meaning as encompassing a material “made up
of disparate or separate parts or elements.” Ans. 11. The Examiner finds the
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particles suggested by the combination of the applied references fall within
this definition. Stephenson discloses foamed particles coated with a binder
and a surfactant, as discussed above. Such a material is made up of
disparate or separate parts. Therefore, the applied references support the
Examiner’s finding that the applied references suggest a composite.
With regard to the Appellant’s arguments that any water insoluble
film-forming polymer of Stephenson (i.e., the binding material) is a coating
and not in particle form, claim 1 recites a redispersible polymer powder
composite that comprises “a co-dried admixture of a water insoluble film-
forming polymer, a colloidal stabilizer, and a powdered polyurethane foam
or elastomer,” among other things. Id. at 11. Thus, claim 1 requires a
powder composite that includes the water insoluble film-forming polymer
while the polyurethane foam is in a powdered form. Therefore, the “water
insoluble film-forming polymer” of claim 1 is not limited to a powder and
thus reads upon the binding material coating disclosed by Stephenson.
The Appellant further argues “a surfactant is not a colloidal stabilizer
as a surfactant has hydrophobic groups,” citing paragraphs 42 and 43 of the
Appellant’s Specification and page 1 of Parrish. Br. 8. This argument is
unpersuasive. The Examiner finds the “colloidal stabilizer” of claim 1 has
not been expressly defined in the Appellant’s Specification and thus
interprets “colloidal stabilizer” under its ordinary meaning as including
surfactants. Ans. 12. We agree because the Specification paragraphs and
portion of Parrish cited by the Appellant do not set forth a definition for
“colloidal stabilizer” or otherwise exclude surfactants or surfactants having
hydrophobic groups. Further, the disclosure of Stephenson states a
surfactant aids in the emulsification of the binding agent and dispersion of
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the aggregate particles in cement. Stephenson 3:37-41. Therefore,
Stephenson suggests that the surfactant acts to stabilize the dispersion of the
coated particles in at least a cement (i.e., function as a colloidal stabilizer).
The Appellant asserts that Karcher does not disclose “any composite
which has powdered polyurethane particles embedded within redispersible
polymer particles.” Br. 7. Claim 1 recites a redispersible polymer powder
composite that comprises “a co-dried admixture of a water insoluble film­
forming polymer, a colloidal stabilizer, and a powdered polyurethane foam
or elastomer,” among other things. Id. at 11. As stated by the Examiner at
page 10 of the Answer, claim 1 does not require that the powdered
polyurethane foam or elastomer is embedded within the redispersible
polymer particles. Therefore, this argument fails from the outset because it
is not based on limitations set forth in the claims. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
In addition, the Appellant contends there would not have been a
reasonable likelihood of success to make the claimed redispersible polymer
powder composite because:
[t]he ordinary skilled artisan given the art of Shin, Stephenson,
Karcher and Close (i) would have no guidance as to how to make
a composite particle that itself redisperses in water, as the
claimed water redispersible polymer powder would do and (ii)
would not know how to make water insoluble film-forming
polymer particles as part of a composite
Br. 8. Specifically, the Appellant argues “one reading the art of Shin,
Stephenson, Karcher and Close would not know to use any colloidal
stabilizer to make a redispersible polymer powder composite, much less how
to form a composite of powdered polyurethane and water insoluble film-
forming polymer particles from any materials disclosed in the art.” Id.
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These arguments are unpersuasive because they rely upon the
arguments that the applied references do not disclose or suggest a
redispersible polymer powder composite that comprises, among other things,
a water-insoluble film-forming polymer. As discussed above, the applied
references suggest such a powder. Moreover, the Examiner has set forth a
rationale for modifying Shin or Karcher to use the binding agent emulsion of
Stephenson (i.e., to aid in the dispersion of the aggregate in cement and to
enhance binding between foam particles and cementitious material, as
disclosed by Stephenson).10 The Appellant’s arguments do not identify a
reversible error in the Examiner’s conclusion that it would have been
obvious to do so.
The Appellant does not argue claims 2, 4, and 6 separately from claim
1. Br. 6—8. For the reasons stated above and those discussed in the
Examiner’s Answer, we uphold the Examiner’s § 103(a) rejections of claims
1, 2, 4, and 6.
Rejection III
Claims 2 and 6 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Karcher in view of Stephenson, as evidenced by Close.
The Appellant merely contends Close also does not disclose a
redispersible polymer powder, a composite, or a water-insoluble film­
forming polymer. Id. at 7. In essence, the Appellant argues that Close does
not remedy the deficiencies of the references applied in the rejections of
claim 1. For the reasons set forth above, there are no deficiencies in the
rejection of claim 1 that require curing by Close. Thus, for the reasons set
10 Ans. 3, 5; Stephenson 1:57—63, 3:37-41.
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forth above and those discussed in the Examiner’s Answer, we uphold the
Examiner’s § 103(a) rejection of claims of claims 2 and 6 over Karcher and
Stephenson, as evidenced by Close.
Rejection IV
Claims 1 and 4—6 are provisionally rejected as being unpatentable
under nonstatutory obviousness-type double patenting over claims 1—6 of
Application 14/353,818.
The Appellant states:
[Appellant] might be willing to file a terminal disclaimer
to obviate a nonstatutory double patenting rejection. However,
as U.S. Application No. 14/353,818 has not been allowed, the
proper practice is to pass the current claims to allowance as set
forth in MPEP § 804, subsection I.B.l.
Br. 10.
In response, the Examiner finds the present application and
Application 14/353,818 have the same effective filing date, and, therefore,
the provisional nonstatutory double patenting rejection should be maintained
until the Appellant overcomes the rejections via a reply or via a terminal
disclaimer, neither of which the Examiner finds to have been done. Ans.
13—14. We agree with these findings because, although the applications
have the same effective filing dates (both non-provisional applications were
filed on the same date and claim priority to separate Patent Cooperation
Treaty (PCT) applications filed on the same date and separate provisional
applications filed on the same date), the Appellant has not overcome all
other outstanding rejections nor filed a terminal disclaimer or otherwise
identified a reversible error in the Examiner’s double patenting rejection.
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Therefore, we uphold the Examiner’s non-statutory obviousness-type
double patenting rejections of claims 1 and 4—6 for these reasons and those
discussed in the Examiner’s Answer.
D. SUMMARY
Rejections I—IV are affirmed. Therefore, the Examiner’s final
decision to reject claims 1, 2, and 4—6 is affirmed.
No time period for taking any subsequent action in connection with
this anneal may be extended under 37 C.F.R. $ 1.136(a)(1).
AFFIRMED
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