Ex Parte Golchert et al

Patent Trial and Appeal Board

Oct 16, 2017

13058364 (P.T.A.B. Oct. 16, 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.
13/058,364 02/10/2011 Ursula Golchert 373536US99PCT 1744
22850 7590 10/18/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
10/18/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URSULA GOLCHERT, KLAUS SCHULTES, STEFAN NAU,
ERNST BECKER, MANUEL KAISER, JURGEN GRONEN,
DANIEL CLEFF, VIOLA ROSNER, andNORBERT BENDZKO
Appeal 2016-004492
Application 13/058,364
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 3, 4 and 12—20 of Application
13/058,364 under 35 U.S.C. § 103(a) as obvious. Final Act. (Jan. 21, 2015)
6—10. Appellants1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6. We heard oral
argument on September 28, 2017.
For the reasons set forth below, we AFFIRM.
1 Evonik Roehm GMBH is identified as the real party in interest. Appeal
Br. 2.
Appeal 2016-004492
Application 13/058,364
BACKGROUND
The present application generally relates to an aqueous colorant
preparation for coloring thermoplastic plastics. Spec., Abstract.
Claim 3 is representative of the pending claims and is reproduced
below:
3. A thermoplastic polymer, which is directly coloured with
a colorant preparation by adding the colorant preparation to an
uncoloured thermoplastic polymer composition, wherein the
colorant preparation comprises 1 % by weight to 49% by
weight of a modified polyacrylate in the form of a 48% by
weight to 52% by weight aqueous solution, 0.5% by weight to
50% by weight of a colorant or of a colorant mixture, 0% by
weight to 50% by weight of one or more further additives and
demineralized water, where the portions by weight of the
components add up to 100% by weight, wherein the colorant
preparation is within a matrix of the thermoplastic polymer,
wherein the thermoplastic polymer is produced by injection
molding or extrusion, and wherein the modified polyacrylate
consists essentially of a alpha-methylstyrene monomer, a 2-
ethylhexyl acrylate monomer, and a MPEG methacrylate.
Appeal Br. 12 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 3, 4 and 12—19 are rejected under 35 U.S.C. § 103(a) as
obvious over Ohrbom et al. (US 2007/0062412 Al, pub. Mar. 22, 2007)
(hereinafter “Ohrbom”). Final Act. 6—8.
2. Claim 20 is rejected under 35 U.S.C. § 103(a) as obvious over
Ohrbom in view of Friedman et al. (EP 1 093 911 A2, pub. April 25, 2001)
(hereinafter “Friedman”). Id. at 8—9.
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Appeal 2016-004492
Application 13/058,364
DISCUSSION
Rejection 1. The Examiner rejected claims 3, 4 and 12—19 as obvious
over Ohrbom. In support of this rejection, the Examiner finds that Ohrbom
teaches that “film forming polymers and resins include polyurethanes and
acrylic polymers (i.e. read on thermoplastic polymer in present claims 3 and
4).” Final Act. 7; see also Answer 6. The Examiner further finds that
Ohrbom does not teach injection molding or extrusion. Final Act. 7. The
Examiner determines, however, that the injection molding or extrusion
limitation is a product-by-process limitation and, if the product of the
process is the same as, or obvious in view of, the prior art, the claim is
unpatentable even if prior art product was made by a different process. Id.
The Examiner further finds that Ohrbom teaches “an aqueous
dispersion which contains the pigment and dispersing agent. To this
aqueous dispersion may be added a film forming polymer, such as acrylic
polymers.” Id. at 10. The Examiner determines that this portion of Ohrbom
teaches the limitation regarding the thermoplastic polymer being “directly
colored” with a colorant preparation because “a film formed from such a
composition would necessarily have the pigment and dispersing agent
dispersed in the acrylic matrix polymer that is different from the dispersing
agent.” Id.
Appellants assert error on several bases. Appellants argue that
Ohrbom fails to teach the “wherein the thermoplastic polymer is produced
by injection molding or extrusion” limitation of claim 3. Appeal Br. 5.
Specifically, Appellants argue that Ohrbom teaches neither a thermoplastic
nor injection molding or extrusion. Id. at 5—6.
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Application 13/058,364
“A Thermoplastic Polymer ”
We first consider Appellants’ assertion that Ohrbom does not teach a
thermoplastic polymer. Appeal Br. 6. Appellants argue that Ohrbom
teaches crosslinked polymers which are understood to be thermosetting
rather than thermoplastic. Id. at 8. Appellants cite to a portion of Ohrbom
which provides as follows:
Preferably, the waterborne basecoat composition also comprises
a film-forming polymer other than the dispersing vinyl or
acrylic polymer dispensing the pigment, and preferably a
crosslinking agent, which may be dispersed by a dispersing
vinyl or acrylic polymer according to the invention.
Ohrbom | 14. The Examiner, however, finds that, while Ohrbom
“preferably includes a crosslinking agent,” it additionally “teaches that the
coating composition also includes a film-forming polymer or resin, other
than the dispersing acrylic polymer, and includes acrylates (i.e. a
thermoplastic polymer).” Answer 6; see also Final Act. 7 (finding that
Ohrbom teaches that “film forming polymers and resins include
polyurethanes and acrylic polymers (i.e. read on thermoplastic polymer in
present claims 3 and 4).”). This finding is unrebutted.
Board rules require that “the brief shall contain .... The arguments of
appellant.... The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant.” See 37 C.F.R.
41.37(c)(l)(iv). Here, Appellants have not explained why the Examiner’s
finding that Ohrbom teaches a thermoplastic polymer is in error.
Accordingly, Appellants have not shown error in the Examiner’s finding that
Ohrbom teaches a thermoplastic polymer.
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Appeal 2016-004492
Application 13/058,364
“Injection Molding or Extrusion ”
Appellants additionally argue that Ohrbom fails to teach that the
“polymer is produced by injection molding or extrusion” as required by
claim 3. The Examiner concedes that Ohrbom does not teach injection
molding or extrusion, but determines that the claim element is a product-by­
process limitation and the coating layer of Ohrbom has the same
composition as an extruded coating of the present claims. Answer 5—6. In
response, Appellants argue that “[i]t is understood and acknowledged that
while a product-by-process limitation is distinguishing only if the process
imparts a difference in the product. Here, the processing does so based on
the knowledge in the art, supported by the evidence of record in this case.”
Reply Br. 2.
In support thereof, Appellants note that the pigment compositions of
Ohrbom are liquid dispersions incapable of being formed into a three-
dimensional object. Appeal Br. 6; Reply Br. 3. Appellants additionally
argue that “a colored object which has been coated with Ohrbom’s pigment
composition is only colored on the surface and cannot nor would not be
confused with a product directly colored.”2 Reply Br. 3; see also Appeal Br.
6.
2 In their Reply, Appellants further state that extrusion and injection molding
are high temperature processes and that such high temperatures are
necessary “so that the polymeric material melts forming a matrix in which
the colorant preparation resides.” Reply Br. 3. This, however, is a new
argument not raised in the appeal brief nor has good cause been shown for
its inclusion in the reply brief. See 37 C.F.R. § 41(b)(2).
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Application 13/058,364
In regard to Appellants’ argument that Ohrbom teaches a liquid
composition, the Examiner finds that “[t]he coating layers of 1 mil or more
are usually applied to allow some of the solvent or aqueous medium to
evaporate (see paragraph 0055 of Ohrbom).” Answer 6. Thus, the
Examiner finds that the final coating would be a solid (such as a film) after
curing. Final Act. 10; see Ohrbom | 53 (“The coating compositions of the
present invention may be enamels, such as primers and one-coat topcoats, or
may be a tinted clearcoat.”).
In regard to Appellants’ argument that Ohrbom teaches a coating
composition that would cover only the surface of an object, the Examiner
finds that Ohrbom teaches to form a film. Final Act. 10. The Examiner
further finds that “a film formed from such a composition would necessarily
have the pigment and dispersing agent dispersed in the acrylic matrix
polymer that is different from the dispersing agent.” Id. The Examiner
further finds that a coating may be obtained by extrusion. Answer 6. That
is, the Examiner finds that the film of Ohrbom is equivalent to an extruded
coating of the present claims.
Thus, the Examiner finds that Ohrbom teaches a thermoplastic film
having a colorant dispersed within the polymeric matrix. Appellants have
not shown error in the Examiner’s findings in this regard. Accordingly, on
the present record Appellants have not rebutted the Examiner’s finding that
Ohrbom teaches a composition that is the same as the injection molded or
extruded composition of the present claims.
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Appeal 2016-004492
Application 13/058,364
“Directly Coloured”
Appellants present a similar argument with regard to the limitation
requiring that the thermoplastic polymer be “directly coloured” by the
colorant preparation. Appellants argue that “a colored object which has
been coated with Ohrbom’s pigment composition is only colored on the
surface and cannot nor would not be confused with a product directly
colored.” Appeal Br. 6. In response, the Examiner points out Ohrbom’s
teaching that the “coating composition also includes a film-forming polymer
or resin other than the dispersing acrylic polymer and includes acrylates
(paragraph 0045).” Answer 7. The Examiner finds that the colorant is
dispersed throughout the “film forming acrylic polymer matrix” and, thus,
the polymer is directly colored. The Examiner does not consider the object
to be coated (by the coating of Ohrbom) as part of the polymer at issue. As
above, Appellants do not directly contest the Examiner’s findings.
Criticality
Appellants further argue that, even if there is a prima facie case of
obviousness, it is rebutted by the unexpected effect that “by using an
aqueous colorant preparation according to present claim 3 (and not e.g. a
solvent based preparation) the Vicat softening temperature is not decreased.”
Appeal Br. 10.
In general, an applicant may overcome a prima facie case of
obviousness by establishing “that the [claimed] range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)
(alteration in original) (citation omitted). “Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
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Application 13/058,364
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA
1981). Moreover, “[i]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984), quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995).
“It is the established rule that ‘objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.”’ Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed.
Cir. 2014) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). This is as
true for evidence of unexpected results as it is for any other type of objective
evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (“the applicant's showing of unexpected results must be
commensurate in scope with the claimed range”); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980) (“In order to establish unexpected results for a
claimed invention, objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”).
Here, Appellants implicitly identify Ohrbom as the closest known
prior art. Appeal Br. 10. Appellants do not, however, adduce any evidence
regarding the Vicat softening temperature of the composition of Ohrbom.
Id.', Final Act. 10 (“there is no data to show that the film formed from
coating composition, of Ohrbom, would not have the Vicat soften[]ing point
of present invention.”). Nor do Appellants introduce evidence of the
claimed unexpected effect (constant or increased Vicat softening
temperature) being commensurate with the scope of the claims. Claim 3
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Application 13/058,364
lacks any limitation as to the relative concentration of thermoplastic polymer
composition to colorant preparation; thus, the claim would encompass any
ratio. Despite this, Appellants’ briefs omit any explanation of the effect of
increased or decreased concentration of polymer relative to colorant
preparation.
Rejection 2. The Examiner rejected claim 20 as obvious over
Ohrbom in view of Friedman. Final Act. 8—9. Appellants do not present
separate argument in support of the patentability of claim 20. Appeal Br. 4—
11. Accordingly, the rejection of claim 20 is affirmed for the same reasons
as set forth above with regard to claims 3, 4 and 12—19.
CONCFUSION
The rejection of claims 3, 4 and 12—19 as obvious over Ohrbom is
affirmed. The rejection of claim 20 as obvious over Ohrbom in view of
Friedman 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)(i)(iv).
AFFIRMED
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