Ex Parte KillileaDownload PDFPatent Trial and Appeal BoardSep 26, 201611300070 (P.T.A.B. Sep. 26, 2016) Copy Citation 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. 11/300,070 12/14/2005 T. Howard Killilea 287.00180101 3833 26813 7590 09/26/2016 MUETING, RAASCH & GEBHARDT, P.A. P.O. BOX 581336 MINNEAPOLIS, MN 55458-1336 EXAMINER SALVITTI, MICHAEL A ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 09/26/2016 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 T. HOWARD KILLILEA ____________ Appeal 2015-004422 Application 11/300,070 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 2, 4–12, 18–21, 23–43, 46, 47, and 50. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM and designate our affirmance as a NEW GROUND OF REJECTION pursuant to 37 CFR 41.50(b) because we rely on findings not relied upon by the Examiner. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A coating composition comprising: water; Appeal 2015-004422 Application 11/300,070 2 a latex polymer stabilized with an alkali-soluble polymer; wherein the alkali-soluble polymer is derived from greater than 10% by weight of one or more polymerizable acid monomers; wherein the latex polymer comprises one or more acetoacetyl-functional groups of the formula: wherein R1 is a Cl to C22 alkylene group and R2 is a C1 to C22 alkyl group; and an ethylenically unsaturated compound distinct from the polymer comprising acetoacetyl functionality; wherein the ethylenically unsaturated compound is a monomer, oligomer, or mixture thereof; and a hydrogen abstraction-type photoinitiator; wherein the hydrogen abstraction-type photoinitiator is selected to cure the acetoacetyl-functional latex polymer via a free radical UV cure mechanism through hydrogen abstraction of the –C(O)–CH2– C(O)– hydrogens. App. Br. 62 (Claims Appendix). Appellant requests review of the following rejections from the Examiner’s Final Action (App. Br. 4): I. Claims 1, 2, 4–12, 18–21, 23–43, 46, 47, and 50 rejected under 35 U.S.C. § 103(a) as being unpatentable over Panades (WO 2004/003074 A1, published January 8, 2004) and Esser (WO 93/16133 A2, published August 19, 1993). Appeal 2015-004422 Application 11/300,070 3 II. Claims 1, 2, 4–12, 18–21, 23–43, 46, 47, and 50 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–22 of copending Application No. 11/342,412, now U.S. Patent No. 8,609,762, in view of Esser. ANALYSIS Prior Art Rejections Rejection I (Claim 1)1 After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C. § 103(a). Because we rely on facts and reasoning not explicitly discussed by the Examiner, we designate our affirmance as a new grounds of rejection. Appellant argues Panades is directed to an unstable composition and the addition of Esser’s amine crosslinker in addition to the polymer derived from acid functional monomers would stabilize Panades’ composition, contrary to the intended purpose of Panades. App. Br. 13–15; Esser 1. Appellant supports the assertion by reference to a Declaration under 37 C.F.R. 1.132 (Declaration)2 by inventor and Declarant T. Howard Killilea. App. Br. 14–15; Decl. ¶¶ 7–8. 1 Appellant relies on the arguments presented when discussing independent claim 1 in addressing all independent claims (claims 1, 36, 50). See Appeal Brief, generally. Appellant does not present separate arguments for any of the dependent claims. Id. Accordingly, we select claim 1 as representative of the subject matter before us on appeal. Independent claims 36, 50 stand or fall with independent claim 1 and dependent claims 2, 4–12, 18–21, 23– 35, 37–43, 46 and 47 stand or fall with their respective independent claim. 2 The Declaration was submitted January 17, 2012 and entered by the Examiner in the Final Action of October 23, 2012 (“Decl.”). Appeal 2015-004422 Application 11/300,070 4 We are unpersuaded by these arguments. Initially, we note that Appellant’s claim 1 is drafted using the transitional language “comprising” and, thus, does not exclude additional components, such as Esser’s non- polymeric polyfunctional amine and base, from the claim. Both Panades and Esser, like Appellant, are directed to latex coating compositions comprising polymers having one or more acetoacetyl- functional groups. Spec. 2; Panades 1; Esser 5–6. The Examiner found, and Appellant does not dispute, that Panades’ Example 1 teaches a coating composition comprising water latex polymer containing the claimed acetoacetyl-functional groups, an ethylenically unsaturated monomer and hydrogen abstraction-type photoinitiator. Ans. 23; App. Br. 17 (Table); Panades 11, 14, 18. The Examiner found Panades does not disclose inclusion of an alkali-soluble polymer containing 10% by weight or more of acid polymerizable monomers. Ans. 3. To remedy this deficiency the Examiner found Esser teaches a storage stable aqueous acetoacetoxy polymer containing the claimed alkali-soluble polymer having up to 100% by weight of an acid functional polymer that separates polymer possessing COOH-functionality to result in a much longer storage stability in compositions containing the claimed alkali-soluble polymer. Ans. 3; Esser 21, 39–40 (Examples 12 and 13). Esser additionally discloses the inclusion in the aqueous carrier of a non-polymeric polyfunctional amine and an effective amount of base for inhibiting gelation from the crosslinking 3 We refer to the Examiner’s Answer for a statement of the rejection on appeal. Appellants have not indicated in the Reply Brief dated March 6, 2015 that the rejection reproduced in the Examiner’s Answer is not reflective of the rejection presented in prior office actions. See Reply Brief, generally. Appeal 2015-004422 Application 11/300,070 5 between the acetoacetoxy functional and amine-functional moieties. Esser 5–6. In fact, Esser clearly attributes the stabilization of the composition to the presence of the base. Id. at 19. Thus, as recognized by Appellant, the combined teachings of the cited art would include the addition of not only the polymer derived from acid-functional monomers, but also of the non- polymeric polyfunctional amine and the base to yield a storage stable formulation. App. Br. 17 (Table). Given the open language of the claim, Appellant has not adequately explained why one skilled in the art would not have modified Panades’ latex composition by adding a polymer derived from acid·-functional monomers, a non-polymeric polyfunctional amine and a base as taught by Esser to yield a storage stable composition. While Appellant asserts that Panades composition is unstable, Appellant directs us to no portion of Panades supporting this assertion. App. Br. 13. Instead, Appellant relies on a Declaration under 37 CF.R. § 1.132 by inventor and Declarant T. Howard Killilea where Declarant states the addition of an amine crosslinker would cause Panades’ composition to stabilize, contrary to the intended purpose of Panades. App. Br. 13–15; Decl. ¶¶ 7–8. However, Appellant’s argument and Declarant’s statement does not take into account the presence of the stabilizing base that would also be added as discussed above. App. Br. 17 (Table). Thus, we find Appellant’s argument and Declarant’s statement unavailing. Appellant additionally argues the Declaration presents unexpecteC results for the claimed invention over Panades in terms of stability and reclaiming ability. App. Br. 19; Declaration Appendix A, ¶¶ 6 and 8. We are also unpersuaded by this evidence. Appellant’s showing of unexpected result is based on a single inventive composition 161A. Decl. Appeal 2015-004422 Application 11/300,070 6 Appendix A, ¶ 6. Appellant has not adequately explained why this single inventive composition comprising a single example of alkali soluble polymer is representative of the entire scope of compositions encompassed by representative claim 1. Thus, on this record, Appellant has not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Appellant’s arguments and proffered Declaration have not adequately shown patentable distinction of the claimed invention over the prior art. For the reasons stated above, we affirm the Examiner’s prior art rejection of claims 1, 2, 4–12, 18–21, 23–43, 46, 47, and 50 under 35 U.S.C. § 103(a). Because we recognize our decision is based on further reasons that differ from the reason advanced by the Examiner, we denominate this affirmed rejection as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). Rejection II The Examiner rejected provisionally rejected claims 1, 2, 4–12, 18– 21, 23–43, 46, 47, and 50 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–22 of copending Application No. 11/342,412, now U.S. Patent No. 8,609,762, in view of Esser. Final Act. 18–19. The provisional rejection is now de facto based upon U.S. Patent No. 8,609,762, thereby making the rejection non-provisional. In view of this, we note that the scope of the claims of copending Application No. 11/342,412 may have changed from the scope of the claims as addressed by the Appeal 2015-004422 Application 11/300,070 7 Examiner during its prosecution. Thus, we decline to reach the merits of the obvious-type double patenting rejection. Ex parte Jerg, 2012 WL 1345142, *3 (BPAI 2012) (“Panels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections.”). ORDER The Examiner’s prior rejection under 35 U.S.C. § 103(a) is affirmed. We decline to reach the Examiner’s rejection on the ground of nonstatutory obviousness-type double patenting. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the Appeal 2015-004422 Application 11/300,070 8 claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(iv). AFFIRMED NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b)) Copy with citationCopy as parenthetical citation