Ex Parte Goulet et al

Patent Trial and Appeal Board

Oct 31, 2012

11787300 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/787,300 04/16/2007 Mike Thomas Goulet 64041569US08 (19693.1) 1451
23556 7590 10/31/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
MCCULLEY, MEGAN CASSANDRA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKE THOMAS GOULET, TRACY HO MATHEWS,
STACEY LYNN POMEROY, and MAURIZIO TIRIMACCO
____________

Appeal 2011-008347
Application 11/787,300
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-008347
Application 11/787,300

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 8-16, 20 and 21. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to an aqueous binder
composition comprising an unreacted mixture of a carboxylated vinyl
acetate-ethylene terpolymer emulsion and a water-soluble
poly(methyldiallylamine)-epichlorohydrin resin. App. Br. 7. Claim 1 is
illustrative:
1. An aqueous binder composition comprising an unreacted
mixture of a carboxylated vinyl acetate-ethylene terpolymer
emulsion and a water-soluble poly(methyldiallylamine)-
epichlorohydrin resin having 4 or more pendant epoxy groups,
wherein the amount of the water-soluble
poly(methyldiallylamine)-epichlorohydrin resin relative to the
amount of the carboxylated vinyl acetate-ethylene terpolymer
emulsion is from about 0.5 to about 25 weight percent on a
solids basis, said composition further comprising an anti-
blocking additive selected from the group consisting of glyoxal,
glutaraldehyde and glyoxalated polyacrylamides.
Appellants request review of the following rejections (App. Br. 2)
from the Examiner’s final office action:
1. Claims 1, 8-16, and 20 stand rejected under 35 U.S.C. §103(a) as
unpatentable over the combination of Keim (US 3,833,531 issued Sept. 3,
1974), Kohlhammer (US 2001/0024644 A1 published Sept. 27,
2001),Yamamoto (US 4,152,507 issued May 1, 1979) and Goldstein
(US 6,117,492 issued Sept. 12, 2000).1

1 Appellants inadvertently excluded claim 20 from the statement of the
rejection in the Brief.
Appeal 2011-008347
Application 11/787,300

3
2. Claim 21 stands rejected under 35 U.S.C. §103(a) as unpatentable
over over the combination of Keim, Kohlhammer, Yamamoto, Goldstein,
and Vinson (US 6,420,013 B1 issued July 16, 2002).
OPINION2
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE for the reasons presented by
the Appellants and add the following.
We refer to the Examiner’s Answer for a statement of the Examiner’s
rejection (Ans. 3-7).
The Examiner found that Keim teaches an aqueous binder comprising
a water soluble poly(methyldiallylamine)-epichlorohydrin resin. However,
the binder does not include a carboxylated vinyl acetate-ethylene terpolymer
emulsion. The Examiner found that Kohlhammer teaches an epoxy-reactive
polymer/copolymer having monomers of ethylenically unsaturated
carboxylic acids. The Examiner found that it would have been obvious to
combine the carboxylated vinyl acetate-ethylene terpolymer of Kohlhammer
with the water soluble poly(methyldiallylamine)-epichlorohydrin resin of
Keim because the terpolymer is a good binder for paper products. (Id. 3-4).
We agree with Appellants that Kohlhammer fails to teach the claimed
epoxy reactive polymer. (App. Br. 4). The claimed invention requires an
unreacted carboxylated vinyl acetate-ethylene terpolymer emulsion.
Appellants further argue that “Kohlhammer fail to teach the claimed epoxy
reactive polymer, there is absolutely no suggestion in Kohlhammer to
modify the aqueous polymer composition to omit the ethylenically
unsaturated comonomers containing epoxide groups.” (Id.)

2 We limit our discussion to independent claims 1 and 20.
Appeal 2011-008347
Application 11/787,300

4
The Examiner has not adequately addressed Appellants’ argument.
The Examiner does not explain where Kohlhammer describes an unreacted
terpolymer as required by the claimed invention.
On the present record, the Examiner has failed to meet the initial
burden of establishing a prima facie case of obviousness. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
For the reasons stated above and those presented by Appellants, the
rejections of claims 1, 8-16, 20 and 21 under 35 U.S.C. § 103(a) are
reversed.

ORDER
The rejections of claims 1, 8-16, 20 and 21 under 35 U.S.C. § 103(a)
are reversed.

REVERSED
bar