Ex Parte Donate et al

Patent Trial and Appeal Board

Apr 12, 2017

13166915 (P.T.A.B. Apr. 12, 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.
13/166,915 06/23/2011 FELIPE Augusto DONATE 68033-US-NP 6914
21898 7590 04/14/2017
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
04/14/2017 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 FELIPE AUGUSTO DONATE,
BRIGITTE ROSE EMELIE, and EVA-MARIA MICHALSKI1
Appeal 2015-007860
Application 13/166,915
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
BRIAN D. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 3—5. We have jurisdiction under
35 U.S.C. § 6(b).
1 The real party in interest is The Dow Chemical Company.
2 In explaining our Decision, we cite to the Specification dated June 23,
2011 (Spec.), Advisory Action dated January 28, 2015, the Appeal Brief
dated April 7, 2015 (Appeal Br.), the Examiner’s Answer dated August 20,
2015 (Ans.), and the Reply Brief dated October 12, 2015 (Reply Br.).
Appeal 2015-007860
Application 13/166,915
We AFFIRM.
The claims are directed to an aqueous coating composition (see, e.g.,
claim 3) and a method for providing a coating including a step of forming
the aqueous coating of claim 3 or claim 4 (see, e.g., claim 5).
The aqueous coating composition includes a coalescent composition,
which is the mixture of two phenyl ethers. The mixture may be either: (1) a
mixture of ethylene glycol phenyl ether and diethylene glycol phenyl ether
or (2) a mixture of propylene glycol phenyl ether and dipropylene glycol
phenyl ether. See claim 3. Claim 3, as reproduced from the Claims
Appendix of the Appeal Brief, is further illustrative:
3. An aqueous coating composition comprising
an aqueous polymeric dispersion having a minimum film
formation temperature of from -20 °C to 30 °C and
from 0.1 % to 5% by weight, based on the weight of
aqueous polymeric dispersion solids, of a coalescent
composition comprising
from 20 to 80% by weight, based on the weight of
said coalescent composition of alkylene glycol phenyl
ether and
from 80% to 20% by weight, based on the weight
of said coalescent composition, of dialkylene glycol
phenyl ether;
wherein said alkylene is selected from the group
consisting of ethylene and propylene and said dialkylene
is diethylene when said alkylene is ethylene and said
dialkylene is dipropylene when said alkylene is
propylene;
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Application 13/166,915
wherein said coalescent composition has an initial boiling
point of greater than 250 °C measured at a standard
pressure of 101.3 kPa.
Appeal Br. 14 (paragraph indents added).
The Examiner maintains the following rejections:3
A. The rejection of claims 3—5 under 35U.S.C. § 112 | 1 for lack of
written descriptive support;
B. The rejection of claims 3—5 under 35 U.S.C. § 103(a) as obvious
over Arpin4 as evidenced by GuideChem;5 and
C. The rejection of claims 3—5 under 35 U.S.C. § 103(a) as obvious
over Arpin in view of Lynch6 as evidenced by GuideChem.
OPINION
Rejection A: Written Descriptive Support
According to the Examiner, claims 3—5 lack written descriptive
support under 35 U.S.C. 112 11 because the limitation “wherein said
coalescent composition has an initial boiling point of greater than 250 °C
measured at a standard pressure of 101.3 kPa” includes boiling point values
that are not supported by the original Specification. Ans. 2—3. The
Examiner’s finding of lack of support rests on underlying findings that
“Table 1.1 only has values ranging from 250.4 to 255.7 °C,” and the
Specification contains no other mention of initial boiling point, such as some
generic statement. Ans. 2—3, 9.
3 The Examiner withdrew a rejection under 35 U.S.C. § 103(a) over
Tanimoto. Ans. 8.
4 Arpin, US 4,530,954, issued July 23, 1985.
5 GuideChem, Chemical Trading Guide, available at
http://www.guidechem.com/reference/dic-380122.html.
6 Lynch et al., US 2010/0130645 Al, published May 27, 2010.
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Application 13/166,915
We agree with Appellants that the Examiner’s finding of lack of
support is misplaced. Appeal Br. 6—7.
In many cases where an open ended range is recited in a claim and the
specification fails to recite the range, values throughout the range or
otherwise indicate that the range is open-ended, the Examiner’s analysis
would support a finding of lack of written descriptive support, see, e.g., In re
Wertheim, 541 F.2d 257, 262—63 (CCPA 1976) (finding a step of
concentrating a coffee extract to a solids content of at least 35% was not
supported by a disclosed step of concentrating to 25 to 60% with examples
at 36% and 50%). However, the question is highly dependent on the specific
facts of the case and one must take care not to substitute mechanical rules
for an analysis grounded on the facts. Wertheim, at 263. Ultimately, what
the Examiner must establish is that the specification failed to reasonably
convey to the ordinary artisan that the inventor had possession of what was
claimed as of the filing date. Wertheim, at 262.
The facts of the current case differ from those of cases like Wertheim.
In Wertheim, the range at issue was a range of solids concentration in a
coffee extract. Wertheim had not shown that their original disclosure
conveyed possession of the full range of “at least 35%” solids
concentrations. But in the present case, it is not the concentrations of the
components that are at issue, it is the recitation of “an initial boiling point of
greater than 250 °C” in a claim to a composition. Unlike the component
concentration of Wertheim, the initial boiling point is an inherent property of
the coalescent compositions meeting the requirements of the claim.
Limiting the initial boiling point to those greater than 250 °C does not have
the same effect on the scope of the claim as limiting the concentration of the
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Application 13/166,915
components directly by reciting a concentration range in the context of
Appellants’ claim 3.
Claim 3 requires the coalescent composition comprise a mixture of 20
to 80 wt% of alkylene glycol phenyl ether and 80 to 20 wt% dialkylene
glycol phenyl ether, the weight percentages being based on the weight of the
coalescent composition. The claim further limits the mixture to two
combinations: (1) ethylene glycol phenyl ether (EPH) and diethylene glycol
phenyl ether (DiEPH); and (2) propylene glycol phenyl ether (PPH) and
dipropylene glycol phenyl ether (DiPPH).
Each of the monoalkylene glycol phenyl ethers and dialkylene glycol
phenyl ethers inherently have an initial boiling point. The evidence of
record indicates that mixtures of 70/30 EPH/DiEPH and 50/50 EPH/DiEPH
have initial boiling points above 250 °C. Spec. 9-10, Table 1.1. The
Examiner finds, and Appellants do not dispute, that DiPPH has an initial
boiling point of 340.8 °C as evidenced by GuideChem. Ans. 4; Appeal Br.
6—11; Reply Br. 2—7. There is no question that Appellants disclose
coalescent compositions comprising EPH/DiEPH and PPH/DiPPH mixtures
that would result in initial boiling points greater than 250 °C. Coating
compositions containing this coalescent mixture are what Appellants purport
to have invented and reciting the initial boiling point range in the claim does
not change that fact. The coalescent composition is selected so that it
qualifies as a zero-VOC coalescent composition. Spec. 9:23—26. To be a
zero-VOC coalescent composition, the composition must have an initial
boiling point above 250 °C. Id.', see also Spec. 1:15—23, 8:18—21. Reciting
the zero-VOC requirement in the claim does not change the genus of
coalescent compositions beyond what is reasonably conveyed by the original
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Application 13/166,915
Specification as possessed by Appellants at the time they filed the
application.
We do not sustain the Examiner’s rejection of claims 3—5 as lacking
written descriptive support under 35 U.S.C. § 112 11.
Rejections B and C: Obviousness
Turning to the obviousness rejection over Arpin, as evidenced by
GuideChem, and the rejection over those references further in view of
Lynch, we note that Appellants do not argue any claim apart from the others
for either rejection. Appeal Br. 7—11. We select claim 3 as representative to
resolve the issue on appeal, which is the same for both rejections.
There is no dispute that Arpin teaches an aqueous coating composition
comprising an aqueous polymeric dispersion having a minimum film
formation temperature within the range of claim 3 or that Arpin discloses
including a coalescent that can be, for instance, propylene glycol phenyl
ether or dipropylene glycol phenyl ether. Compare Ans. 3, with Appeal Br.
7—11. Nor is there any dispute that Arpin fails to exemplify using propylene
glycol phenyl ether in mixture with dipropylene glycol phenyl ether or their
relative amounts. Compare Ans. 3, with Appeal Br. 7.
The issue is: Have Appellants identified a reversible error in the
Examiner’s finding that the prior art suggests forming an aqueous coating
composition including from 0.1 to 5 wt%, based on the weight of aqueous
polymeric solids, of a coalescent composition, which is a mixture of
propylene glycol phenyl ether and dipropylene glycol phenyl ether in the
relative amounts of claim 3?
Appellants have not identified such an error.
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Application 13/166,915
Arpin’s aqueous coating composition (lime dispersion paint) can
contain:
coalescence agents, such as the monobutyl ether of ethylene
glycol or of diethylene glycol; the phenyl ether of ethylene
glycol, propylene glycol or dipropylene glycol; or products of
the white spirit type having a low content of aromatic
compounds to lower, where necessary, the minimum film­
forming temperature of the binder, for example, down to a
temperature below or equal to 0° C., in an amount ranging from
3 to 4 parts by weight per 100 parts of binder.
Arpin col. 4,11. 6—14 (emphasis added). As expressed above, the coalescent
agent is added to lower the minimum film-forming temperature of the
binder. Arpin suggests that any of the listed coalescent agents would
function to lower the minimum film-forming temperature of the binder.
As acknowledged by Appellants, Arpin discloses examples, some of
which contain combinations of coalescent agents, and some of which contain
dipropylene glycol phenyl ether as a single coalescent agent. Appeal Br. 7.
Specifically, Arpin discloses examples containing NAPSOL PPH2
(dipropylene glycol phenyl ether) and a white spirit (Example 1), NAPSOL
PPH1 (propylene glycol phenyl ether) and a white spirit (Example 2),
NAPSOL PPH2 and a white spirit (Example 4), and NAPSOL PPH2 alone
(Example 5). Arpin col. 5,11. 30-33; col. 6,11. 33—35; col. 7,11. 33—34; col.
7,1. 64.
Arpin does not expressly suggest combining propylene glycol phenyl
ether and dipropylene glycol phenyl ether. Arpin, however, teaches both
compounds as performing the same function of lowering the minimum film­
forming temperature of the binder. Arpin further teaches the use of other
combinations of coalescent agents in the examples. Arpin also teaches an
example of using dipropylene glycol phenyl ether alone. Aprin thus
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Application 13/166,915
provides evidence that those of ordinary skill in the art would have
understood that using any of the coalescent agents alone or in mixture would
have achieved the predictable result of lowering the minimum film-forming
temperature of the binder when used in amounts obtained through routine
experimentation. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007); see also In re Lindner, 457 F.2d 506, 507-08 (C.C.P.A. 1972)
(upholding the determination that it would have been obvious to combine
two old dispersants to obtain expected dispersant properties).7
Appellants attempt to distinguish In re Lindner, 457 F.2d 506 (CCPA
1972) on the basis that their invention is not directed to the same purpose as
Arpin. Appeal Br. 10. This argument fails because Appellants’ coalescent
and Arpin’s coalescent are, in fact, for the same purpose: for facilitating
film formation of an aqueous coating composition. Compare Spec. 3:5—9,
with Arpin col. 4,11. 10—14. The similarity in film forming purpose is
enough to establish a case of obviousness. See In re Lintner, 458 F.2d 1013,
1016 (CCPA 1972) (“The fact that appellant uses sugar for a different
purpose does not alter the conclusion that its use in a prior art composition
would be prima facie obvious from the purpose disclosed in the
7 Although the Examiner withdraws the rationale that “it would have been
obvious to combine two coalescent agents described by Arpin since they are
taught to be useful for the same purpose” (Ans. 8), we determine this
rationale has a sound legal basis in both KSR and Lindner. The Examiner
had cited Lindner in support of the rationale in the Advisory Action.
Because Appellants had an opportunity to respond to this rationale
(Appellants responded at Appeal Br. 10), it was harmless error to withdraw
it.
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Application 13/166,915
references.”). That Appellants also achieve a non-VOC coalescent property
is merely an additional benefit. “As long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir.
1992).
Appellants contend that Arpin teaches coalescent levels of 7.8 to
about 9 wt%, based on the polymeric dispersion solids, and provides no
suggestion to use the lower levels (i.e., 0.1 to 5 wt%) of their claims.
Appeal Br. 9. Appellants do not cite to any portion of Arpin that teaches
using 7.8 to about 9 wt%, and the Examiner points out that Arpin discloses
using 3 to 4 parts by weight of coalescent per 100 parts by weight of binder.
Ans. 12, citing Arpin col. 4,11. 13—14. The portion of Arpin cited by the
Examiner supports the Examiner’s finding. A preponderance of the
evidence supports the Examiner’s finding that Arpin would have suggested
the use of concentrations within the range of the claim.
Lynch further supports the rejection of the claims. The Examiner
finds that Lynch teaches coalescing agents and that the concentration of the
coalescent impacts the observed minimum film-formation temperature. Ans.
7. Like Arpin, Lynch supports the Examiner’s finding. Lynch 14; Arpin
col. 4,11. 6—14. The evidence further supports the Examiner’s determination
that the concentration of coalescent relative to binder is a result effective
variable that those of ordinary skill in the art would have optimized to
produce desired end results. Ans. 7—8. Appellants do not dispute this
determination. Appeal Br. 10— 11.
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We sustain the Examiner’s rejection of claims 3—5 under 35 U.S.C.
§ 103(a) as obvious over Arpin as evidenced by GuideChem and over Arp in
in view of Lynch as evidenced by GuideChem.
CONCLUSION
We sustain the Examiner’s obviousness rejections, but do not sustain
the written descriptive support rejection.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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