SUN CHEMICAL CORPORATION

Patent Trials and Appeals Board

Mar 31, 2022

2021002239 (P.T.A.B. Mar. 31, 2022)

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. 15/562,251 09/27/2017 Safraz KHAN 66847-9993 C-1025 US 2279 96610 7590 03/31/2022 Ostrolenk Faber LLP 845 THIRD AVENUE 8TH FLOOR New York, NY 10022 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): pat@ostrolenk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAFRAZ KHAN Appeal 2021-002239 Application 15/562,251 Technology Center 1700 Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 12, 14, 22, 23, and 26-40. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sun Chemical Corporation. Appeal Br. 2. Appeal 2021-002239 Application 15/562,251 2 CLAIMED SUBJECT MATTER Claim 222 is illustrative of Appellant’s subject matter on appeal and is set forth below: 22. A barrier coating composition comprising one or more copolymers comprising: d) vinyl acetate; e) isopropenyl acetate; and f) one or more dispersions of exfoliated nano clays in an amount of 1 wt% to 5 wt%, based on the total weight of the barrier coating composition; wherein the copolymer is greater than 90% hydrolyzed, and the one or more copolymers are soluble in solvent mixture comprising water and lower alcohol, wherein the amount of alcohol is 50% to 95%%, and the amount of isopropenyl alcohol in the copolymer is less than 50mol% %, and the oxygen transmission rate for the coating composition, when applied to 12 micron thick corona discharge treated polyethylene substrate, is less than 20 cc/m2/day at 23°C and 65/0% RH or 50/50% RH when applied at a dried coating thickness of < 0.5 µm. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Inskip US 3,689,469 Sept. 5, 1972 Gröndahl US 2010/0129642 A1 May 27, 2010 Yoshinaga JP 10-152527 A June 9, 1998 K. E. Strawhecker & E. Manias Structure and Properties of Poly(vinyl alcohol)/Na+ Montmorillonite Nanocomposites, 12 Chem. Mater. 2943-49 2000 2 We note that claim 22 lists components uses the letters “d”, “e”, and “f”, rather than “a”, “b”, and “c”. Appeal 2021-002239 Application 15/562,251 3 REJECTIONS 1. Claims 12, 22, 23, and 26-40 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoshinaga in view of Gröndahl. 2. Claims 12 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoshinaga and Gröndahl, as applied to claim 34 above, further in view of Inskip. 3. Claims 12, 22, 23, 26, and 29-40 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoshinaga in view of Strawhecker. 4. Claims 12 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoshinaga and Strawhecker, as applied to claim 34 above further in view of Inskip. OPINION On page 8 of the Appeal Brief, Appellant lists independent claims 22 and 34 together, and we select claim 22 as representative of this group. Appellant also groups dependent claims 37 and 39 together, and we select claim 37 as representative of this group. Appellant also groups dependent claims 38 and 40 together, and we select claim 38 as representative of this group. We limit our discussion below to these claims. Otherwise, each of the dependent claims included in the rejection will stand or fall with the independent claim from which it depends. 37 C.F.R. § 41.37(c)(1)(iv). We review the appealed rejections for error based upon the issues Appellant identifies and in light of the arguments and evidence produced thereon. 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) (“[I]t has long been the Board’s practice to require an applicant to identify Appeal 2021-002239 Application 15/562,251 4 the alleged error in the examiner’s rejections.”)). After considering the argued claims and each of Appellant’s arguments in the record, we are not persuaded of reversible error in the appealed rejections essentially for the reasons provided by the Examiner in the record, with the following emphasis. Rejections 1 and 2 We refer to the Examiner’s statement of the rejection as set forth on pages 2-5 of the Final Office Action. Therein, the Examiner relies upon Yoshinaga for teaching every claim element of claim 22 except for including clay in the barrier coating composition of claim 22. Final Act. 2. The Examiner relies upon Gröndahl for teaching adding nano clay for improving the liquid/moisture resistance of the composition and concludes it would have been obvious to have modified Yoshinaga’s composition to include nano clay to improve liquid/moisture resistance of the composition. Final Act. 2-3. Appellant argues that the coatings described in Yoshinaga and Gröndahl are compositionally different such that one skilled in the art would not predict that the inclusion of clay in the claimed composition would improve barrier properties. Appeal Br. 6. Appellant also argues that in Gröndahl, the phyllosilicate clay is added for the purpose of providing moisture resistance. Appellant argues that Gröndahl does not suggest that including clay would improve oxygen transmission rates (OTR) in a copolymer or terpolymer composition of vinyl acetate and isopropenyl acetate. Appeal Br. 6-7. Appellant submit that therefore Yoshinaga in view of Gröndahl does not disclose or suggest the claimed invention. Appeal Br. 6-7. Appeal 2021-002239 Application 15/562,251 5 We agree with the Examiner’s stated reply made on pages 3-4 of the Appeal Brief. Therein, the Examiner states that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1936 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). Appellant next discusses unexpected results on page 8 of the Appeal Brief, and refers to Tables 4, 6, and 7 of the Specification showing reported OTR values. Appellant points out OTR values recited in claims 22, 34, and 37-40. We agree with the Examiner’s stated response that this showing is unpersuasive for the reasons stated on pages 4-5 of the Answer. The burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In view of the above, we affirm Rejection 1. We also affirm Rejection 2 (Appellant does not separately argue the claims in Rejection 2). Rejections 3 and 4 We refer to the Examiner’s statement of the rejection as set forth on pages 6-7 of the Final Office Action. Therein, the Examiner relies upon Yoshinaga for teaching every claim element of claim 22 except for including Appeal 2021-002239 Application 15/562,251 6 clay in the barrier coating composition of claim 22. Final Act. 6. The Examiner relies upon Strawhecker for teaching to add exfoliated clay for improved barrier properties, and concludes it would have been obvious to have modified Yoshinaga’s composition to include Strawhecker’s clay to improve barrier properties. Final Act. 6-7. Appellant argues that Yoshinaga does not teach that its compositions may include clay. Appellant argues that Strawhecker is directed to polyvinyl alcohol/montmorillonite nanocomposites, and does not include isopropenyl acetate. Appellant also argues that while Strawhecker indicates that water permeability of the nanocomposites is improved, Strawhecker does not teach that oxygen transmission rates would be improved, let alone attain the values set forth in claims 22, 34 and 37-40. Appellant also argues that Strawhecker’s nanocomposites are not copolymers of vinyl alcohol and isopropenyl acetate (i.e., they lack isopropenyl acetate). Appeal Br. 7. Appellant also argues that while Strawhecker may suggest that a polymer-nanoclay combination improves water barrier properties, that suggestion does not provide reason to combine Yoshinaga with Strawhecker to improve oxygen barrier properties. Appeal Br. 7. In response to Appellant argument’s argument that Strawhecker’s compositions do not include isopropenyl acetate, the Examiner states that arguments against the references individually are unpersuasive because one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 Appeal 2021-002239 Application 15/562,251 7 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Ans.5-6. We agree as the Examiner relies upon Yoshinaga for teaching this claim element. With regard to Appellant’s argument that Strawhecker does not teach that oxygen transmission rates would be improved, we agree with the Examiner’s stated response made on page 6 of the Answer that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. The Examiner also reiterates that Strawhecker teaches that the exfoliated nanoclay improves barrier properties (p. 2948). Ans. 6. With regard to Appellant’s arguments that Strawhecker does not teach the OTR values of claims 22, 34, and 37-40, we agree with the Examiner’s response made on pages 6-7. Therein, it is the Examiner’s position that the combination of applied art meets the claim composition and therefore would possess the claims OTR values. With regard to Appellant’s arguments pertaining to unexpected results (Appellant points out OTR values recited in claims 22, 34, and 37-40 (Appeal Br. 8)), we agree with the Examiner’s response made on pages 6-7 of the Answer, and again note that the burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. In re Klosak, at 1080. In view of the above, we affirm Rejection 3. We also affirm Rejection 4 (Appellant does not separately argue the claims in Rejection 4). Appeal 2021-002239 Application 15/562,251 8 CONCLUSION We affirm the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12, 22, 23, 26-40 103 Yoshinaga, Gröndahl 12, 22, 23, 26-40 12, 22, 23, 26, 29-40 103 Yoshinaga, Strawhecker 12, 22, 23, 26, 29-40 12, 14 103 Yoshinaga, Gröndahl, Inskip 12, 14 Overall Outcome 12, 14, 22, 23, 26-40 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED