DONOVAN, Megan et al.

Patent Trials and Appeals Board

Dec 6, 2019

13589235 - (D) (P.T.A.B. Dec. 6, 2019)

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.
13/589,235 08/20/2012 Megan DONOVAN 71471 1015
21898 7590 12/06/2019
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MEGAN DONOVAN, ADAM J. FASULA, QIANQIAN LI,
SARADA NAMHATA, EDWIN H. NUNGESSER, and WEI ZHANG

Appeal 2019-001819
Application 13/589,235
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1 and 13–16.2 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. The Appellant identifies the real parties in interest as
“Rohm and Haas Company and The Dow Chemical Company” (Appeal
Brief filed September 26, 2018 (“Appeal Br.”) at 2).
2 See Appeal Br. 4–10; Reply Brief filed December 28, 2018 (“Reply Br.”)
at 2–6; Final Office Action entered April 26, 2018 (“Final Act.”) at 2–9;
Examiner’s Answer entered October 31, 2018 (“Ans.”) at 3–8.
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I. BACKGROUND
The subject matter on appeal relates to a coated substrate comprising a
basecoat having a “Pigment Volume Concentration” (PVC) higher than
critical PVC (CPVC)3 and a matte clearcoat (Specification filed August 20,
2018 (“Spec.”) at 2, ll. 10–21). Claims 1, 15, and 16 are reproduced from
the Claims Appendix to the Appeal Brief, as follows:
1. A coated substrate comprising:
(a) a substrate having at least one surface: and, disposed on
said surface,
(b) a first coating comprising:
inorganic pigment, extender, or combination
thereof, and having a Pigment Volume Concentration
(“PVC”) higher than the critical PVC, and a first
polymeric binder comprising an emulsion polymer or
polyurethane dispersion, having a calculated Tg of from
-60 °C to 150 °C and an average particle diameter of from
50 nm to 490 nm,
wherein said first coating does not comprise
core/shell polymeric particles having a core comprising,
when dry, at least one void having a diameter of from 100
to 1200 nm; and an outer shell, substantially encapsulating

3 The Specification states that “[w]hen a coating is above critical PVC[,] air
voids develop in the dry coating[,]” and “[a]t this point, the opacity of the
coating is increased due to the relative differences in the refractive index
between the coating components (typically 1.4-3.0) and air (1.0)” (Spec. 9,
ll. 30–32). The Specification further states (id. at 10, ll. 2–9):
To determine if a coating is above or below critical PVC for the
purposes of the present invention the difference in reflectance of
the paint in the dry state and after re-wetting with a solvent that
penetrates into the air voids of the dry paint, fills the void with a
higher refractive index solvent and reduces the reflectivity of the
coating is measured. The solvent used herein is ISOPAR™ L
(ExxonMobil Corp.). When a coating is above critical PVC the
reflectance of the coating will decrease by at least 0.3% from the
initial reflectance value of the paint.
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said core and having a calculated Tg of from -60 °C to 50
°C; and, disposed on said first coating,
(c) a clear matte second coating comprising from 1% to
99% by weight, based on the weight of said second coating, of a
core/shell particulate polymer comprising, as copolymerized
units, from 0.5% to 10% by weight, based on the weight of the
particulate polymer, of a multiethylenically unsaturated
monomer, and from 1% to 99% by weight, based on the weight
of said second coating, of a film-forming emulsion polymer or
polyurethane dispersion;
wherein the core/shell particulate polymer has a Tg of -60
to 75 °C and a particle diameter of from 0.5 microns to 30
microns; and
wherein predominantly the particulate polymer remains a
particulate polymer in the dry second coating.
15. The coated substrate of claim 1, wherein the
core/shell particulate polymer has a core polymer composition
comprising, as copolymerized units, at least 99.9 wt.%, based on
the weight of the core polymer, of a combination of butyl
acrylate, methyl methacrylate, alpha-methylstyrene, and allyl
methacrylate, and a shell polymer composition consisting of, as
copolymerized units, methyl methacrylate and ethyl acrylate.
16. The coated substrate of claim 1, wherein the
core/shell particulate polymer has a core comonomer
composition comprising, as copolymerized units, about 77% by
weight butyl acrylate, about 0.4% by weight alpha-
methylstyrene, about 3% by weight allyl methacrylate, and
about 0.1 % by weight of methyl methacrylate, and a shell
comonomer composition consisting of, as copolymerized units,
about 18.5% by weight methyl methacrylate and about 1 % by
weight ethyl acrylate, wherein all weight percents are based on
the weight of the core/shell particulate polymer.
(Appeal Br. 11–12 (emphases added)).
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II. REJECTIONS ON APPEAL
The claims on appeal stand rejected as follows:
A. Claims 15 and 16 under pre-AIA 35 U.S.C. § 112 ¶ 1, as failing
to comply with the written description requirement; and
B. Claims 1 and 13–16 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Chiou et al.4 (“Chiou”) in view of Wicks, Jr.
et al.5 (“Wicks”).
(Ans. 3–8; Final Act. 2–9).
III. DISCUSSION
Rejection A
1. The Examiner’s Position
With respect to claims 15 and 16,6 the Examiner finds that “there is no
general disclosure of which monomers are in the core and which are in the
shell” (Final Act. 2). The Examiner acknowledges, however, that “there is
an Example [Sample A described in the original disclosure] with the claimed
monomers in the core and shell” but that “this does not support that when
specifically used in the core and shell they would be combined at other
monomer percentages than those of the example” (id.). Furthermore, with
respect to claim 16, the Examiner finds that “given the wording ‘about’ for
all weight percentages, this would encompass a range around each weight
percentage that is not supported by Sample A” (id.).

4 US 2007/0218291 A1, published September 20, 2007.
5 Zeno W. Wicks, Jr., et al., Organic Coatings: Science and Technology
407–16 (2nd ed. 1998).
6 Claims 15 and 16, which depend from claim 1, were amended during
examination on December 21, 2017.
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2. The Appellant’s Contentions
With respect to claim 15, the Appellant contends that the claim
complies with the written description requirement because the original
disclosure contains a description of Sample A in which the particulate
polymer has a core polymer composition of butyl acrylate (BA), α-methyl
styrene (AMS), and allyl methacrylate (ALMA) and a shell copolymer
composition of methyl methacrylate (MMA) and ethyl acrylate (EA)
(Appeal Br. 4). The Appellant also refers to the original disclosure at page
6, lines 3–24, and the glass transition temperature (Tg) range of -60 to 75°C
(id. at 4–5). The Appellant argues that, collectively, these descriptions
support the subject matter recited in claim 15 (id.).
As for claim 16, the Appellant contends that the claim complies with
the written description requirement “because the person of ordinary skill in
the art would have a reasonable expectation that comonomer weight
fractions slightly below and slightly above the specific weight fractions of
Sample A are enabled by the disclosure” (id. at 5 (emphasis added)).
According to the Appellant, “[t]he person of ordinary skill in the art would
have a reasonable expectation that comonomer weight fractions slightly
below and slightly above the specific weight fractions of Sample A would
provide core/shell particulate polymers that still meet the claimed Tg (-60 to
75 °C) and particle diameter (0.5 microns to 30 microns) limitations” and
“also exhibit substantial stain resistance improvement relative to the first
coating” (id.). Significantly, the Appellant argues that the Examiner
“neglects ordinary experimental error” and that “[t]he modification of each
comonomer weight fraction by ‘about’ allows for this expected experimental
error in the core/shell particulate polymer synthesis” (id.).
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3. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The written description requirement does not require in haec verba
support. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). Nevertheless,
“the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Claim 15, reproduced above, recites that “the core/shell particulate
polymer has a core polymer composition comprising, as copolymerized
units, at least 99.9 wt.%, based on the weight of the core polymer, of a
combination of butyl acrylate [BA], methyl methacrylate [MMA], alpha-
methylstyrene [AMS], and allyl methacrylate [ALMA]” (emphases added).
The Specification, as originally filed, contains a description of Sample A in
which the seed (core) polymer consists of 5113.0 g of BA, 26.8 g of AMS,
and 214.2 g of ALMA (Spec. 13, l. 29–15, l. 18). Sample A’s core polymer,
however, does not include MMA—i.e., methyl methacrylate. Although the
Specification mentions the possibility of including MMA among numerous
other monomers in the particulate polymer (Spec. 6, ll. 3–24), it does not
specify whether the MMA should be included in the core polymer, the shell
polymer, or both—let alone in a core polymer comprising “at least 99.9
wt.%, based on the weight of the core polymer, of a combination of butyl
acrylate [BA], methyl methacrylate [MMA], alpha-methylstyrene, and allyl
methacrylate “ as recited in claim 15. The broad Tg and particle diameter
ranges recited in claim 1 are of no help to the Appellant because unguided
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picking and choosing would be required to arrive at the specified monomer
composition for the core polymer. Thus, although the subject matter recited
in claim 15 may have been obvious over the original disclosure as a whole,
obviousness is not the proper test for written description. Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“One shows that one is
‘in possession’ of the invention by describing the invention, with all its
claimed limitations, not that which makes it obvious.”).
Claim 16, reproduced above, recites “a core comonomer composition
comprising, as copolymerized units, about 77% by weight butyl acrylate,
about 0.4% by weight alpha-methylstyrene, about 3% by weight allyl
methacrylate, and about 0.1 % by weight of methyl methacrylate”
(emphases added). For the same or similar reasons, we find that the original
disclosure does not provide adequate written description support for claim
16, which specifies a core copolymer that contains BA, AMS, ALMA, and
MMA in the amounts as recited in claim 16. Neither the description for
Sample A nor the generic disclosure in the Specification (Spec. 6, ll. 3–24)
mentions the copolymerization of MMA as part of the core polymer in the
relative amounts as recited in claim 16. And, again, even with the broad Tg
and particle diameter ranges recited in claim 1, indiscriminate picking and
choosing would be required to arrive at the specified monomer compositions
in the amounts as recited in claim 16.
Moreover, contrary to the Appellant’s unsupported allegation, the
Specification does not include any indication that the term “about” is
intended to be limited to deviations approximating experimental errors,
particularly with respect to the amounts for the specific monomers disclosed
for the core polymer and the shell polymer in Sample A. See, e.g., Pall
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Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995)
(explaining that the use of the word “about” avoids a strict numerical
boundary to the specified parameter, but that the degree of latitude or
tolerance must be ascertained by consulting, e.g., the descriptions in the
relevant specification).
For these reasons, we sustain the Examiner’s rejection on this ground.

Rejection B
1. Grouping of Claims
Although the Appellant provides additional arguments for claim 14,
those arguments rely on the same arguments offered for the other claims
(Appeal Br. 6–10). Therefore, we decide this appeal on the basis of claim 1,
which we designate as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). Claims 13–16 stand or fall with claim 1.
2. The Examiner’s Position
The Examiner finds that Chiou describes a coated substrate that can
include all the limitations recited in claim 1 except for the requirement that
the PVC in the first coating is higher than the CPVC (Final Act. 3–4). To
resolve this difference, the Examiner relies on Wicks, which was found to
teach that “underlayers having a PVC greater than the critical PVC (CPVC)
provide better adhesion to the topcoat and better hiding of the underlying
substrate” (id. at 4). Based on these findings, the Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art . . . to have
the underlayer between the substrate and topcoat of Chiou have a PVC
greater than the CPVC using inorganic pigments, in order to provide better
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adhesion for the topcoat and/or better hiding of the substrate as taught by
Wicks” (id. at 4–5).
3. The Appellant’s Contentions
The Appellant does not dispute the Examiner’s findings regarding
Chiou’s scope and content (Appeal Br. 7–9). Rather, the Appellant contends
that the claimed subject matter would not have been obvious to a person
having ordinary skill in the art because “in addition to providing one
advantage to having CPVC > PVC, Wicks also teaches several
disadvantages to having CPVC > PVC” (id. at 7). Citing Wicks’s Fig. 21.2
(Wicks 408), the Appellant argues that “[a]s can be seen from graphs (b) and
(c), both tensile strength and fracture value drop precipitously at PVC
higher than CPVC” (id. at 8). The Appellant also argues that Wicks teaches
additional disadvantages for PVC > CPVC because the reference teaches
that “if one applies a single coat of a coating with PVC above CPVC to steel
and exposes the panel to humidity, rapid rusting can occur, since the pores
permit water and oxygen to get to the surface of the steel with little
interference” (id. at 8 (quoting Wicks 408–409)). According to the
Appellant, “giving substantially more weight to the one advantage accruing
to CPVC > PVC than the many disadvantages likewise accruing to CPVC >
PVC, appears to be an example of impermissible hindsight” (id.).
4. Opinion
We are in complete agreement with the Examiner that the claimed
subject matter would have been obvious to a person having ordinary skill in
the art. In describing the relationship between a film’s properties and PVC,
Wicks lists both the advantages and disadvantages of having a coating with
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PVC > CPVC (Wicks 408–409). Specifically, Wicks teaches an advantage,
as follows:
It is sometimes desirable to design a primer with PVC
greater than CPVC. Adhesion of a top coat to such a primer is
enhanced by mechanical interlocking resulting from penetration
of vehicle from the top coat into pores of the primer. Many of
the pores in the primer are filled with binder from the top coat,
which decreases the PVC of the top coat resulting in loss of gloss
of the top coat. Such a primer is said to have poor enamel hold
out. The primer PVC should be only enough higher than CPVC
to provide adhesion to minimize loss of gloss of the top coat.
(Id. at 409).
Wicks teaches that a further advantage of PVC > CPVC is that an
“increase in hiding above CPVC results from air voids left in the film when
PVC is above CPVC” and that such an “increase in hiding above CPVC can
be useful” and “particularly desirable in ceiling paints” (id. at 409–410).
Thus, although Wicks does teach some disadvantages (e.g., a decrease
in tensile strength and adhesion above CPVC as shown in Fig. 21.1(b) and
(c) (id. at 408), we agree with the Examiner (Ans. 5) that the person having
ordinary skill in the art would have considered both the advantages and
disadvantages disclosed in Wicks and that the mere existence of some
disadvantages in certain situations does not negate a motivation or reason to
combine Wicks with Chiou. Medichem S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”).
Additionally, claim 1 reads on situations in which PVC is only
slightly higher than CPVC or even higher levels to the extent that the tensile
strength or adhesion levels would not result in an unusable coating. As
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shown in Wicks’s Fig. 21.1 (a) and (b), the decreases in tensile strength and
adhesion at PVC levels only slightly above CPVC are not significant and,
even in the case of much higher PVC levels, some level of tensile strength or
adhesion is maintained. Thus, Wicks does not indicate that PVC > CPVC
would result in an unusable coated substrate in all instances, and, in any
event, a person having ordinary skill in the art would have balanced the
advantages against the disadvantages.
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/ Basis Affirmed Reversed
15, 16 112 ¶ 1 Lack of Written Description 15, 16
1, 13–16 103(a) Chiou, Wicks 1, 13–16
Overall
Outcome
1, 13–16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED