Ex Parte Singer et al

Patent Trial and Appeal Board

Oct 11, 2018

13939222 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/939,222
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
07/11/2013
10/11/2018
FIRST NAMED INVENTOR
Debra L. Singer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
09006914Al 9914
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
10/11/2018 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 DEBRA L. SINGER and JOHN M. DUDIK
Appeal2017-011664
Application 13/939,222
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5, 7, 9-12, 14--20, 22, 24--27, and 29-32 under
35 U.S.C. § 103. Br. l; Final Act. 3-8.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In this Decision, we refer to the Specification filed July 11, 2013 ("Spec."),
the Final Office Action entered June 14, 2016 ("Final Act."), the Appeal
Brief filed November 3, 2016 as corrected November 29, 2016 ("Br."), the
Declaration of Gregory J. McCollum dated July 24, 2016 ("McCollum
Deel."), and the Examiner's Answer entered June 12, 2017 ("Ans.").
2 Appellant/ Applicant is PPG Industries Ohio, Inc., which is also identified
in the Appeal Brief as the real party in interest. Br. 1.
Appeal 2017-011664
Application 13/939,222
The invention relates to a composition useful for coating containers,
including food and beverage containers. Spec. ,r 1. Claim 1 is illustrative:
1. An aqueous coating composition comprising:
(A) an aqueous polymer dispersion comprising a film-
forming polymer in the form of dispersed polymer
particles comprising a polymer phase P1 and a different
polymer phase P2; the polymer dispersion obtained by
free radical aqueous emulsion polymerization in aqueous
medium comprising the following steps:
(i) polymerizing in non-aqueous medium a first
monomer charge Ml comprising a polymerizable
ethylenically unsaturated monomer mixture
comprising 15 to 60 percent by weight of a
carboxylic acid group-containing ethylenically
unsaturated monomer and 2 to 20 percent by
weight of a phosphorus acid group-containing
ethylenically unsaturated monomer, the
percentages by weight being based on total weight
of the ethylenically unsaturated monomers in M 1,
to form the polymer phase P1;
(ii) at least partially neutralizing the carboxylic acid
groups with an amine in the aqueous medium, and
(iii) polymerizing in the aqueous medium a second
monomer charge M2 in the presence of P 1
comprising a polymerizable ethylenically
unsaturated monomer mixture different from that
of Ml and containing a 1,2-epoxy group-
containing ethylenically unsaturated monomer to
form the polymer phase P2;
(B) a curing agent reactive with the film-forming polymer.
Br. 7 (Claims Appendix). Claim 16, the only other independent claim
among the claims on Appeal, is directed to a food can coated at least in part
with a coating deposited from the aqueous coating composition of claim 1.
Id. at 9.
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Appeal 2017-011664
Application 13/939,222
The Examiner maintains and Appellant appeals the following
rejections under 35 U.S.C. § 103: 3
1. Claims 1, 2, 7, 9--12, and 15 over Huybrechts; 4
2. Claims 3-5 over Huybrechts in view ofNaka; 5
3. Claims 14, 16, 17, 22, 24--27, and 29--32 over Huybrechts in view of
0 'Briell" 6 and
'
4. Claims 18-20 over Huybrechts in view of O'Brien and Naka.
Ans. 2---6; Final Act. 4--8; Br. 3.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections"). After review of the
arguments and evidence presented by both Appellant and the Examiner, we
conclude that the claim limitations recited in claim 1 are so indefinite as to
require us to make assumptions about the meaning of the terms employed in
order to determine the scope of the claim.
Rejection 1: Obviousness over Huybrechts
The Examiner determines that claims 1, 2, 7, 9--12, and 15 would have
been obvious to one of ordinary skill in the art at the time of the invention
3 The rejections of claims 1 and 16 under 35 U.S.C. § 112(b) as indefinite
have been withdrawn. Advisory Action dated August 31, 2016, 2.
4 Huybrechts et al., WO 95/32228, published Nov. 20, 1995 ("Huybrechts").
5 Naka et al., JP 2008115339, published May 22, 2008 ("Naka").
6 O'Brien et al., WO 2006/045017 Al, published Apr. 27, 2006 ("O'Brien").
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Appeal 2017-011664
Application 13/939,222
over Huybrechts for the reasons stated on pages 4--6 of the Final Office
Action. Appellant argues the claims as a group (Br. 4--5). In accordance
with 37 C.F.R. § 4I.37(c)(l)(iv), claims 2, 7, 9--12, and 15 will stand or fall
together with independent claim 1 from which they depend.
Appellant contends that the Examiner erred in two respects ( 1) finding
that Huybrechts' hydrophobic backbone corresponds to the recited P 1 phase
and that the macromonomer side chains correspond to polymer phase P2 and
(2) finding that Dr. McCollum has not addressed the phosphoric acid group-
containing monomer is disclosed by Huybrechts in amounts up to 50% by
weight, which overlaps the claimed range of 2-20% by weight of a
phosphorus acid group-containing ethylenically unsaturated monomer. Br.
5.
Appellant asserts that Huybrechts' hydrophobic backbone polymer is
analogous to the claimed P2 phase, not the P 1 phase. Id. According to
Appellant, there is no dispute that Huybrechts discloses phosphorus acid-
containing ethylenically unsaturated monomers of the type required for
polymer phase P1, but argues that Huybrechts teaches such monomers in the
formation of the hydrophobic backbone, which is analogous to the claimed
P2 phase. Id. Appellant notes that Huybrechts teaches that the
macromonomer can first be dispersed in aqueous medium followed by
polymerization of the hydrophobic monomers. Id. ( citing Huybrechts 12: 1-
33). Paragraph 8 of the McCollum Declaration describes the claimed
polymers as "core/shell polymers" in which the P 1 phase is hydrophilic and
forms the shell of the polymer in the aqueous medium. McColl um Deel. ,r 8.
The hydrophilic groups are said to be neutralized carboxylic acid and
phosphorus acid groups that are drawn to the surrounding aqueous phase and
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Appeal 2017-011664
Application 13/939,222
available to bond to the surface of a substrate (an adhesion-promoting
effect). Id. The P2 phase, on the other hand, is said to be hydrophobic
relative to the P 1 phase and forms a core that is shielded from the
surrounding aqueous medium. Id.
Regarding the amount of phosphoric acid group-containing monomer
disclosed by Huybrechts, Appellant contends that Huybrechts teaches that
the hydrophobic backbone can contain up to 50% of methacrylates and up to
50% by weight of graft copolymer of polymerized ethylenically unsaturated
non-hydrophobic monomers which may contain reactive functional groups.
Br. 5. According to Appellant, other vinyl monomers can be incorporated
into the backbone and include phosphoric acid or phosphonic acid group-
containing monomers, however, these monomers do not have reactive
functional groups, and, if present, are present in an undisclosed amount. Id.
(citing Huybrechts 8:6-23).
The Examiner responds that a core/shell structure is not claimed nor
do the claims explicitly require that the P1 phase is hydrophilic or that the P2
phase is hydrophobic. Ans. 8. The Examiner further responds that the
claims do not exclude a P2 phase that has the same neutralized carboxylic
acid and phosphoric acid groups as the P 1 phase, therefore, it is not clear that
in aqueous medium the P1 phase would form an outer shell and the P2 phase
would form an inner core. Id. The Examiner also points out that neutralized
phosphoric acid groups are not claimed. Id.
Regarding the amount of phosphoric acid group-containing monomer
disclosed by Huybrechts, the Examiner finds that Huybrechts teaches 0-50%
by weight for the amount of ethylenically unsaturated monomers which may
contain reactive functional groups. Id. The Examiner also finds that the
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Appeal 2017-011664
Application 13/939,222
phosphoric or phosphonic acid group-containing monomers disclosed by
Huybrechts do have reactive functional groups, because acid functionality is
reactive with any functionality that neutralizes acid. Id. The Examiner
further finds that Huybrechts does not indicate that a lack of reactive
functional groups prevents the amount of phosphoric or phosphonic acid
group-containing monomers from being within the range of 0-50% by
weight. Id.
After considering the positions and evidence of both Appellant and
the Examiner, we find that the preponderance of the evidence cited in this
Appeal record supports the Examiner's rejection of claim 1 under 35 U.S.C.
§ 103 over Huybrechts. Claim 1 is directed to a composition. As such, the
limitations in claim 1 directed to the processing conditions are only
meaningful to the extent they serve to differentiate the structure of the
claimed composition from the structure of the prior art composition. See In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (internal citations omitted)
(noting that "even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product
itself. The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process").
Appellant has not provided convincing evidence of a patentable
difference in structure between the composition of claim 1 and that
suggested by the prior art. Based on the record cited in this Appeal, the
core/shell structure described in paragraph 8 of the McCollum Declaration
would not necessarily result from the process steps recited in claim 1
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Application 13/939,222
because the claim does not require neutralized phosphoric acid groups or a
P2 phase that is hydrophobic or less hydrophilic than the P 1 phase, nor does
the claim exclude a P2 phase that has the same neutralized carboxylic acid
and phosphoric acid groups as the P 1 phase. Appellant does not rebut the
Examiner's findings in regard to the processing conditions recited in claim 1
encompassing a composition that does not form a core/shell structure.
Accordingly, Appellant's distinctions over Huybrechts' composition on this
basis are not persuasive of error by the Examiner because limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
In addition, the Examiner's finding that Huybrechts discloses an
overlapping amount (0-50% by weight) of ethylenically unsaturated
monomers which may contain reactive functional groups, and, specifically,
phosphoric or phosphonic acid group-containing monomers that do have
reactive functional groups because acid functionality is reactive with any
functionality that neutralizes acid, is reasonable and supported by the record.
Ans. 2, 8; Huybrechts 8:6-20. The Examiner's finding that the carboxylic
acid groups are at least partially neutralized with an amine in Huybrechts'
process (Ans. 3) is also supported by the record and not disputed by
Appellant. Huybrechts 12: 1-14.
For the foregoing reasons and those provided in the Final Office
Action and the Answer, Appellant's arguments are unpersuasive as to error
in the rejection of claims 1, 2, 7, 9-12, and 15 under 35 U.S.C. § 103.
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Application 13/939,222
Rejection 2: Obviousness over Huybrechts and Naka
The Examiner determines that claims 3-5 would have been obvious to
one of ordinary skill in the art at the time of the invention over Huybrechts
in view ofNaka for the reasons stated on page 6 of the Final Office Action.
Claim 3 depends from claim 1 and recites "the phosphorus acid
group-containing ethylenically unsaturated monomer has the following
structure:
i -~:: c~ .-.·,-. f> w·· r\~ .... x:.
where R1 represents hydrogen or methyl; R2 represents a polyoxyalkylene
group and X represents a phosphoric acid group." Br. 7-8 (Claims
Appendix). Appellants argue the rejection of claims 3-5 as a group (Br. 6).
Accordingly, claims 4 and 5 will stand or fall together with claim 3 from
which they depend. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant contends that the Examiner erred because N aka does not
disclose using the monomer required by claim 3 in forming the final
polymer, but, rather, discloses dimerizing the particular monomer to form a
phosphoric acid group-containing monomer having the following structure:
~: :~ : ~
~t~(; ~~ f; .... l; ~., {{)f()>:x':: N-' () ,W tt ,-.',> ()~f
!:,\(; ·:;::· (~ -~'"· (~ '·" {()f{~~~:":~~~ ,,.,,. ()
! . H
({~ ()
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Appeal 2017-011664
Application 13/939,222
Br. 4, 5. Appellant further asserts that Naka discloses extremely high
amounts of the dimerized phosphoric acid group-containing monomer, i.e.,
70-97 .5% versus 2-20% as claimed. Id. at 6.
The Examiner responds that N aka discloses a mixture of the monomer
and the dimer comprising 0.5% dimer by weight, therefore Naka is not
limited to the dimer even though dimerization is taught. Ans. 9 ( citing Naka
,r 39). The Examiner further responds that Naka teaches that the amount of
the monomer to be copolymerized with another monomer is preferably 70-
97.5% by weight, therefore Naka is not limited to that preferred range. Id.
We have fully considered Appellant's arguments and do not find them
persuasive of error by the Examiner because the Examiner's findings are
supported by the record. The dimer monomer to which Appellant directs us
is referred to in N aka as "monomer 2" while N aka' s "monomer 1" is not a
dimer. Naka ,r 7. The Examiner's finding that Naka discloses a preferred
composition in which the dimer is 5% of the monomer composition is
supported by the record. Naka ,r 39. The Examiner's finding that Naka is
not limited to the high range of phosphoric acid group-containing monomer
asserted by Appellant is also supported by the record because N aka discloses
that it is a preferred range, stating "[ t ]he total amount of monomer 1 and
monomer 2 in the monomer used for polymerization is preferably at least 70
wt. %, more preferably at least 80 wt.%, still more preferably at least 85
wt.%, furthermore at least 95 wt.% and still further at least 97.5 wt.%."
Naka ,r 42. Moreover, the Examiner finds that Huybrechts discloses the
amount of phosphoric acid group-containing monomer required by
independent claim 1 from which claim 3 depends. Final Act. 4 ( citing
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Application 13/939,222
Huybrechts 9:19--29). Accordingly, we are not persuaded of reversible error
in the Examiner's findings regarding the disclosures ofNaka.
For the foregoing reasons and those provided in the Final Office
Action and the Answer, Appellant's arguments are unpersuasive as to error
in the rejection of claims 3-5 under 35 U.S.C. § 103.
Rejections 3 and 4: Obviousness over Huybrechts, 0 'Brien, and Naka
Appellant asserts that the Examiner's rejections of claims 14, 16-20,
22, 24--27, and 29-32 should be reversed in view of the shortcomings
associated with Huybrechts and Naka as discussed above in connection with
Rejections 1 and 2. Br. 6. Because we do not find Appellant's arguments
persuasive of error by the Examiner for the reasons discussed above, we
likewise affirm the Examiner's rejections of claims 14, 16-20, 22, 24--27,
and 29--32.
Conclusion
Appellant has not shown that the Examiner erred in rejecting claims
1-5, 7, 9--12, 14--20, 22, 24--27, and 29-32.
DECISION
The decision of the Examiner to reject claims 1-5, 7, 9--12, 14--20, 22,
24--27, and 29-32 is affirmed.
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Application 13/939,222
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
11