10494444 (B.P.A.I. Jun. 25, 2009)

Ex Parte Lach et al

Board of Patent Appeals and InterferencesJun 25, 2009

10494444 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte CHRISTIAN LACH and MICHAEL MELAN ________________ Appeal 2009-003510 Application 10/494,444 Technology Center 1700 ________________ Decided:1 June 25, 2009 ________________ Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-9 and 11-13, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-003510 Application 10/494,444 2 The Invention The Appellants claim an aqueous synthetic resin formulation. Claim 1 is illustrative: 1. An aqueous synthetic resin formulation, comprising: A) from 3 to 75 % by weight of at least one synthetic resin, denoted as resin A comprising a) from 50 to 99.9 % by weight of at least one ester of α,β- monoethylenically unsaturated carboxylic acids having 3 to 6 carbon atoms and alkanols having 1 to 18 carbon atoms or of at least one vinyl ester of an aliphatic monocarboxylic acid having 2 to 8 carbon atoms, or of a mixture of [sic] thereof, denoted as monomers a, b) from 0.1 to 12 % by weight of at least one α,β-monoethylenically unsaturated monobasic or dibasic acid having 3 to 8 carbon atoms, or anhydrides thereof, or of a mixture thereof, denoted as monomers b, c) from 0 to 10 % by weight of one or more monoethylenically unsaturated acetophenone derivatives or benzophenone derivatives, or of a mixture of [sic] thereof, denoted as monomers c, and d) from 0 to 50 % by weight of one or more other copolymerizable monoethylenically unsaturated monomers, denoted as monomers d, in copolymerized form, the weight fractions of the monomers a, b, and d being selected within the stated limits such that a synthetic resin consisting of the monomers a, b and d would have a glass transition temperature ranging from -50 to +40ºC; B) at least one metallic cation with a charge number ranging from 2 to 4 in water-soluble form to neutralize from 0.2 to 6 times the amount of its conjugate bases that corresponds to the amount of acid functions incorporated into the synthetic resin A in the form of the monomers b, denoted as component B; C) from 0 to 10 % by weight, based on the resin A, of benzophenone or acetophenone or of one or more acetophenone derivatives or Appeal 2009-003510 Application 10/494,444 3 benzophenone derivatives which are not monoethylenically unsaturated, or of a mixture of these active substances, denoted as component C; D) a dispersant; E) at least 5 % by weight of water; and F) from 0 to 85 % by weight of finely divided fillers, denoted as filler F, wherein the resin A is prepared by free-radically initiated aqueous emulsion polymerization of the monomers a to d in the presence of from 0.01 to 3 parts by weight of an alien polymer seed, based on 100 parts by weight of the mixture of the monomers a to d. The References Witt GB 2,109,802 A Jun. 8, 1983 Rehmer 5,162,415 Nov. 10, 1992 The Rejection Claims 1-9 and 11-13 stand rejected under 35 U.S.C. § 103 over Rehmer in view of Witt. OPINION We reverse the Examiner’s rejection. Issue Have the Appellants shown reversible error in the Examiner’s determination that the applied references would have rendered prima facie obvious, to one of ordinary skill in the art, an aqueous synthetic resin formulation obtained by carrying out Rehmer’s free-radically initiated aqueous emulsion polymerization in the presence of from 0.01 to 3 parts by weight of an alien polymer seed per 100 parts of the monomer mixture? Appeal 2009-003510 Application 10/494,444 4 Findings of Fact It is undisputed that Rehmer would have rendered prima facie obvious, to one of ordinary skill in the art, the Appellants’ claimed invention except for carrying out the free-radically initiated aqueous emulsion polymerization in the presence of from 0.01 to 3 parts by weight of an alien polymer seed per 100 parts of the monomer mixture.2 Witt discloses an emulsion polymerization process, which Witt calls a seed polymerization method, for preparing an aqueous stable polymer latex composed of emulsified particles having an inner or core phase of high glass transition temperature resinous polymer and a polymeric outer or shell phase integral with the core phase (p. 1, ll. 24-26; p. 2, ll. 10-12). “The ratio of total shell phase to total core phase monomer, or alternatively core particles, may vary from about 3:1 to 10:1, with a range of from 5:1 to 8:1 being preferred” (p. 3, ll. 55-56). Analysis The Appellants argue that Witt uses at least three times more core phase than the Appellants use alien seed, and that Rehmer and Witt fail to suggest polymerization in the presence of 0.01 to 3 parts by weight of an alien polymer seed per 100 parts of the monomer mixture (Br. 7, 8; Reply Br. 4, 5). The Examiner argues that the Examiner has established a prima facie case of obviousness based on overlapping ranges of the ratio of shell to core, 2 The Appellants state that “[i]t is an object of the present invention to further improve the toughness of the elastic coating materials obtainable by the teaching of EP-B 417568” (Spec. 2:15-17) which, the Appellants state, corresponds to Rehmer (Reply Br. 5). Appeal 2009-003510 Application 10/494,444 5 and that this ratio is a result effective variable which can be optimized by those skilled in the art (Ans. 6, 10-11). Witt’s minimum core:shell phase monomer ratio of 1:10 (i.e., 10:100) is more than 3 times the Appellants’ maximum ratio of 3:100. Hence, contrary to the Examiner’s argument, there is no overlapping range. The Examiner has provided no reason why one of ordinary skill in the art would have been led by the applied references to optimize outside Witt’s range. The Examiner states that because the formulations of the Appellants and Rehmer are similar except for the Appellants’ alien polymer seed, “it is the examiner[’s] position to believe that the product, i.e. aqueous synthetic resin formulations of Rehmer is substantially the same as the aqueous synthetic resin formulations recited in claim 1, even though obtained by a different process” (Ans. 13). When an Examiner relies upon product-by-process rationale the Examiner has the initial burden of establishing a prima facie case of unpatentability by providing evidence or reasoning which indicates that the Appellants’ product and that of the prior art are identical or substantially identical. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The Examiner has not provided the required evidence or reasoning which indicates that Rehmer’s polymerization would produce substantially the same product as would be obtained if the polymerization were carried out in the presence of an alien polymer seed. As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “‘rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some Appeal 2009-003510 Application 10/494,444 6 rational underpinning to support the legal conclusion of obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has not provided the required articulated reasoning with rational underpinning. Conclusion of Law The Appellants have shown reversible error in the Examiner’s determination that the applied references would have rendered prima facie obvious, to one of ordinary skill in the art, an aqueous synthetic resin formulation obtained by carrying out Rehmer’s free-radically initiated aqueous emulsion polymerization in the presence of from 0.01 to 3 parts by weight of an alien polymer seed per 100 parts of the monomer mixture. DECISION/ORDER The rejection of claims 1-9 and 11-13 under 35 U.S.C. § 103 over Rehmer in view of Witt is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED PL Initial: sld OBLON, SPIVAK, MCCELLAND, MAIER & NEUSTADT, P.C. 1940 DUKE STREET ALEXANDRIA, VA 22314