Karl Zuercher et al.

Patent Trials and Appeals Board

Jul 1, 2020

2019005556 (P.T.A.B. Jul. 1, 2020)

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.
13/203,677 10/10/2011 Karl Zuercher 67554-US-PCT 9550
76104 7590 07/01/2020
The Dow Chemical Company/Brooks Cameron & Huebsch
1201 MARQUETTE AVENUE SOUTH, SUITE 400
Minneapolis, MN 55403
EXAMINER
TSCHEN, FRANCISCO W
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
DOW.DOCKETING@BIPL.NET
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARL ZUERCHER, JOUKO VYORYKKA,
BERNARD FEHR, RONALD WEVERS,
PEKKA SALMINEN, and ALEXANDER HIPP
____________

Appeal 2019-005556
Application 13/203,677
Technology Center 1700
____________

Before JEFFREY T. SMITH, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1, 5, and 6.1 A hearing was conducted
on June 24, 2020, a transcript of which will be made of record. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Dow Global Technologies LLC as the real party
in interest. Appeal Br. 3.
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BACKGROUND
The invention relates to a multilayer structure. Spec. 1. Claim 1 reads
as follows:
1. A multilayer structure comprising:
a first layer comprising one or more primary layers,
wherein said first layer has a thickness in the range of less than
1 cm;
a second layer that includes:
one or more polyolefin dispersions having at least
one or more base polymers selected from the group consisting
of ethylene-alpha olefin copolymers and propylene-alpha olefin
copolymers;
one or more polar polymer stabilizing agents
selected from the group consisting of ethylene-acrylic acid
copolymer and ethylene methacrylic acid copolymer;
one or more neutralizing agents;
calcium carbonate and water,
wherein said polyolefin dispersions includes from
10 to 70 percent by weight of said at least one or more base
polymers and from 25 to 65 percent by weight of the calcium
carbonate; and wherein said second layer has a thickness in the
range of from 0.5 to 10 μm; and
a third layer having a thickness in the range of less than
150 μm;
wherein said second layer is disposed therebetween said
first layer and said third layer.
Appeal Br. 12 (Claims Appendix) (emphasis added to highlight the
key recitation in dispute). Each of claims 5 and 6 depends from claim 1.
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REJECTION2
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vratsanos,3 Moncla,4 and McCarthy.5

OPINION
Appellant argues only claim 1, which we select as representative of
the rejected claims. Claims 5 and 6 stand or fall with claim 1.
Relevant to Appellant’s arguments on appeal, the Examiner finds
Vratsanos discloses a polymer dispersion adhesive layer in a composite
structure, and finds Moncla teaches formulating a polymer dispersion
adhesive composition with the second layer components recited in claim 1,
including calcium carbonate as filler. Final Act. 6–7. The Examiner further
finds McCarthy teaches use of 20–50 wt.% calcium carbonate as filler in
adhesive films. Id. at 7. See also Vratsanos 2:9–13 (“The present invention
provides for use as the intermediate adhesion layer an adhesive composition
consistently [sic] essentially of an aqueous adhesive emulsion polymer and
0.1 to 10 wt. % vinylamine (VAm) polymer, based on emulsion polymer.”);
Moncla ¶¶ 13–15, 143–145 (disclosing use of aqueous polyolefin
dispersions, including filler such as calcium carbonate, as coatings to impart
adhesiveness and other properties to substrates); McCarthy ¶ 3 (“One
method to reduce cost is to add an inexpensive filler, such as calcium

2 Additional rejections under 35 U.S.C. § 103(a) have been withdrawn. Ans.
5–6.
3 US 5,492,765, issued February 20, 1996.
4 US 2007/0292705 A1, published December 20, 2007.
5 US 2009/0110855 A1, published April 30, 2009.
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carbonate, with a cost lower than that of the polymer, to a polymer
formulation.”).
Appellant argues that “nothing in the cited art teaches or even
suggests the use of calcium carbonate in the claimed amount to realize
improved adhesion.” Appeal Br. 7 (emphasis added); see also Reply Br. 2–4
(arguing neither McCarthy nor Moncla addresses affects of calcium
carbonate on adhesion). Appellant further argues “there was no rational
basis for the suggested modifications, short of impermissible hindsight.” Id.
Appellant contends Vratsanos tacitly acknowledged use of calcium
carbonate filler in adhesive compositions but remained silent regarding use
of fillers in the disclosed adhesive compostions. Id. at 8. Appellant
acknowledges that Moncla provides that the disclosed aqueous dispersion
may include calcium carbonate filler, but argues that “nothing in Moncla,
however, teaches or suggests that the use of calcium carbonate has the
surprising improvements in adhesion.” Id. at 9. Appellant also argues
McCarthy fails to teach use of calcium carbonate in connection with
polymers other than polystyrene. Id. Lastly, Appellant purports that data for
specified samples reported in the Specification demonstrates unexpected
improvements in adhesion achieved by use of calcium carbonate. Id. at 9.
Having considered Appellant’s arguments and the evidence presented,
we are not persuaded of reversible error.
That the prior art may provide a different reason or motivation to
include calcium carbonate filler is of no moment as long as there is a
sufficient reason to make the combination. See In re Kemps, 97 F.3d 1427,
1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
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obviousness.”). Here, the prior art teaches that use of calcium carbonate
filler reduces cost. McCarthy ¶ 3. The fact that the prior art expressly
provides a reason for the use of calcium carbonate filler also negates any
contention that the Examiner employed impermissible hindsight.
Appellant’s argument that Vratsanos is silent regarding use of filler,
or that McCarthy focusses on calcium carbonate filler in polystyrene
compositions, does not address the basis of the rejection, which is founded
on the collective teachings of Vratsonos, Moncla, and McCarthy. The
Examiner does not rely on Vratsonos as evidence of providing filler. Nor
does the Examiner rely on McCarthy as evidence of providing the recited
polyolefin dispersion. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”)).
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellant. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied-
upon results must be commensurate in scope with the claims. See In re
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Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one
(or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of [the CCPA] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is
well settled that unexpected results must be established by factual evidence.
‘Mere argument or conclusory statements in the specification does not
suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
Here, Appellant relies on Table IV of the Specification as evidence
that “the specific use of calcium carbonate as required by the present claims
would not have been obvious to one skilled in the art as it provides
unexpected and surprising results.” Appeal Br. 9. According to Appellant,
Table IV shows improvements in adhesion for samples 5A, 6A, 11A, 12A,
17A, 18A, 23A, 24A, 29A, 30A, 35A, and 36A, each of which is said to
include about 50 wt.% calcium carbonate. Id.
With the exception of samples 35A and 36A, each of the listed
samples reportedly includes a second layer formed from equal parts of an
ethylene polymer based dispersion identified as POD 2, and a filler
identified as Hydrocarb 60 (HC60). Spec. 37 (Table III). Appellant does
not point us to any part of the record in which the filler Hydrocarb 60 is
defined, but states that this material is calcium carbonate. Appeal Br. 9.
Samples 35A and 36A do not specify what filler is used. Spec. 39. Even
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accepting Appellant’s contention that the listed samples provide an adhesive
layer comprising about 50 wt.% calcium carbonate filler, Appellant neither
alleges nor demonstrates why that singular concentration would have been
representative of the 25 to 65 wt.% range recited in claim 1. Moreover,
Appellant provides no explanation of the data reported in Table IV.
Although Table IV includes values corresponding to what is identified as an
“adhesion rating,” Appellant does not explain whether or how the reported
values demonstrate the purported unexpected improvement in adhesion. Nor
does Appellant explain how the relied upon data demonstrates that any such
improvement was attributable to calcium carbonate filler. For example,
samples 4A and 5A, both of which are characterized as inventive, are
reported to have similar adhesion ratings even though sample 4A omits
calcium carbonate. Samples 10A and 12A reportedly have identical
adhesion ratings even though samples appear to be identical but for the use
of calcium carbonate in 12A and not in 10A.
For all of the foregoing reasons, Appellant has not persuasively
demonstrated reversible error in the Examiner’s obviousness determination
with regard to claim 1. The rejection of claims 1, 5, and 6 is sustained.
CONCLUSION
The Examiner’s decision rejecting claims 1, 5, and 6 is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6 103(a) Vratsanos, Moncla,
McCarthy
1, 5, 6

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