Ex Parte Adamson et al

Patent Trial and Appeal Board

Nov 9, 2017

13435270 (P.T.A.B. Nov. 9, 2017)

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.
13/435,270 03/30/2012 Linda A. ADAMSON 70878 6819
21898 7590 11/14/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
BROOKS, KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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 LINDA A. ADAMSON, MICHAEL C. BECKER,
FELIPE A. DONATE, DAVID M. FASANO, SARAH E. ITTNER,
REBECCA J. WACHOWICZ, and THOMAS R. TEPE
Appeal 2016-008304
Application 13/435,2701
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejections adverse to the patentability of claims 1—17 and 19-21 under 35
U.S.C. §§ 102 and 103.
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify the real party in interest as The Dow Chemical
Company. App. Br. 3.
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Application 13/435,270
BACKGROUND
The subject matter on appeal is directed to low and no VOC glycol
ether-ester compositions for use in aqueous polymeric dispersions, paints
and coatings to aid in the formation of a film. Spec. 1: 3—25.
Claims 2 and 3 are illustrative and appear below.
2. A glycol ether-ester coalescent selected from the group of
compositions of Formula (I)
wherein Ri is a Ci — Cg alkyl group, phenyl or benzyl, R2 is
methyl, R3 is a carbon chain comprising 4—5 carbon atoms, and
n = 2-4.
3. A glycol ether-ester coalescent selected from the group of
compositions of Formula (II)
wherein Ri and R4 are, independently, C4 — C10 alkyl groups, phenyl
or benzyl, R2 is methyl, R3 is a carbon chain comprising 3^4 carbon
atoms, and n = 1—4; and mixtures thereof; wherein the boiling point of
said coalescent is greater than 450°C at 760 mm Hg.
(II)
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REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Izard US 2,041,715
Hudson US 4,525,512
Brandenburger US 2005/0032954 A1
Bardman US 2007/0043159 A1
Zhou US 2009/0198002 A1
Kokeguchi US 2010/0203003 A1
May 26, 1936
June 25, 1985
Feb. 10, 2005
Feb. 22, 2007
Aug. 6, 2009
Aug. 12, 2010
SciFinder® Physical Properties for CAS Registry No. 117264—85—4
(2015) (hereinafter “Scifmder”)
Momentive Axilat DS 910 Technical Data Sheet (2014)
(hereinafter “Momentive”)
UCAR 629 Latex Data Sheet, Dow Chemical (2014)
http://www.specialchem4coatings.com/tds/ucar-latex-629/dow-
chemical/11 491/index.aspx (retrieved Sept. 16, 2014) (hereinafter
“UCAR 629”)
REJECTIONS ON APPEAL
I. Claim 3 under 35 U.S.C. § 102(a)/(e) as anticipated by Kokeguchi
as evidenced by Appellants’ Specification and Knovel critical
tables;
II. Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
Izard;
III. Claims 2, 4—6, 8, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Hudson, Brandenburger, Scifmder, and
Momentive;
IV. Claims 3,9, 10, 20, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Zhou as evidenced by Appellants’ Specification
and UCAR 629;
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V. Claims 7, 11, 12, and 17 under 35 U.S.C. § 103(a) as unpatentable
over Hudson, Brandenburger, Bardman, Scifmder, and
Momentive; and
VI. Claims 13, 14, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Zhou in view of Bardman as evidenced by Appellants’
Specification.
OPINION
We begin with the obviousness rejections.
Rejection II
With respect to claim 1, the Examiner finds, and Appellants do not
dispute, that in the same field of endeavor as Appellants (i.e., coatings
(compare Final Act. 6 citing Izard 2, col. 2:55—70, with Spec. 1:23)), Izard
teaches genera of “levulinic acid esters of ether alcohols” such as “alkyl,
aryl, and aralkyl ethers of glycols.” Final Act. 4. Specifically, the Examiner
finds that “Izard specifies ethylene glycol, diethylene glycol, and other
polyethylene glycols (which includes triethylene glycol), and dipropylene
glycol,” as well as “straight chain alkyl groups from methyl to octyl,
specifically reciting butyl” as a terminal group, but not n-hexyl as recited in
several of the claimed species. Id. The Examiner determines that the skilled
artisan would have expected the recited glycol ether-esters, such as
diethylene glycol n-hexyl ether levulinate, to “possess similar properties” as
structurally homologous ether-esters falling within the broad disclosure of
Izard. Id. Based on this determination, the Examiner concludes that it
would have been obvious for the skilled artisan to make the compounds
recited in claim 1. Id. at 5.
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Appellants contend that the skilled artisan would not have been
motivated, based on the disclosure within Izard, to pick and choose the
recited compounds and that Izard’s compounds are used for a different
utility than that of claim 1. This argument fails to persuade us of reversible
error. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the
Board’s long-held practice of requiring Appellants to identify the alleged
error in the Examiner’s rejection). Rather, we agree with the Examiner for
the reasons expressed on pages 16 and 17 of the Answer, and add the
following.
“[Structural similarity between claimed and prior art subject
matter . . . where the prior art gives reason or motivation to make the
claimed compositions, creates a prima facie case of obviousness, and that
the burden (and opportunity) then falls on an applicant to rebut that prima
facie case.” In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
[I]t is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed
and prior art compound ... be shown and that there be a
suggestion in or expectation from the prior art that the claimed
compound... will have the same or a similar utility as one newly
discovered by applicant. To the extent that [In re Wright, 848
F.2d 1216 (Fed. Cir. 1988)] suggests or holds to the contrary, it
is hereby overruled. In particular, the statement that a prima
facie case of obviousness rejection is not supported if no
reference shows or suggests the newly-discovered properties and
results of a claimed structure is not the law.
Id. at 693.
In certain fact patterns such as the one here, structural similarity
weighs heavily in favor of the obviousness conclusion. Our reviewing court
and its predecessor have recognized that
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[structural relationships may provide the requisite motivation or
suggestion to modify known compounds to obtain new
compounds. For example, a prior art compound may suggest its
homologs because homologs often have similar properties and
therefore chemists of ordinary skill would ordinarily contemplate
making them to try to obtain compounds with improved
properties.
In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995). See also In re Wilder,
563 F.2d 457, 460 (CCPA 1977) (“one who claims a compound, per se,
which is structurally similar to a prior art compound must rebut the
presumed expectation that the structurally similar compounds have
similar properties.”)
Here, it is undisputed that Izard broadly discloses structurally similar
glycol ether-ester compounds containing alkyl terminal groups “such as
methyl, ethyl, butyl, octyl, dodecyl, or octadecyl,” i.e., a range of alkyl
groups which naturally includes n-hexyl as recited in claim 1. Izard 1, col.
1:48-49 (emphasis added). As such, we discern no error in the Examiner’s
well-reasoned determination that the skilled artisan would have expected the
recited compounds containing the n-hexyl substituent to have similar
properties to those expressly disclosed in Izard, and would thus have had the
requisite motivation to prepare the compounds recited in claim 1.
Regarding claim 2, the Examiner finds, and Appellants do not dispute,
that Izard discloses glycol ether-esters that fall within the scope of those
claimed. Final Act. 6, 18. The Examiner treats Appellants’ recitation of
“coalescent” as an intended use. Id.
Appellants’ arguments (App. Br. 9) are unpersuasive for the well-
stated reasons set forth by the Examiner at 18 and 19 of the Answer.
Moreover, we note Appellants’ argument that there is no “suggestion within
Izard nor motivation provided within Izard” to use the recited compounds as
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a coalescent (App. Br. 9) is not well-taken. Rather, we emphasize that the
prior art need not recognize Appellants’ utility to establish a prima facie case
of obviousness. In re Dillon, 919 F.2d at 693.
It follows that we sustain Rejection II.
Rejections III and V
Appellants make substantive arguments against the rejection of claim
2, but do not separately argue any of the rejected dependent claims.
App. Br. 10, 12. Thus, we focus our analysis on claim 2. All other claims
encompassed in Rejections III and V will stand or fall accordingly.
37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds, and Appellants do not dispute, that Hudson
teaches the genus of compounds recited in claim 2, except for the
requirement for the R3 moiety to be “a carbon chain comprising 4—5 carbon
atoms.” Final Act. 6—7. The Examiner finds that Brandenburger remedies
this deficiency by teaching structurally similar coalescent agents with an R1
group (corresponding to the claimed R3 group) which preferably has from 3
to 24 carbon atoms. The Examiner concludes that it would have been
obvious to the skilled artisan to have modified Hudson’s coalescents to have
4 to 5 carbon atoms as claimed because Brandenburger expresses a
preference for such chain lengths in his coalescent compounds. Id. at 7—8.
Appellants argue “there is no motivation within Hudson or
Brandenburger to make the extremely narrow selections from these
disclosures” to arrive at the claimed subject matter. App. Br. 10. This
argument fails to persuade us of reversible error, and we sustain the rejection
of claim 2 for the reasons expressed by the Examiner on pages 19 and 20 of
the Answer. Moreover, we emphasize that the Supreme Court of the United
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States lias stated that an “obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents,” KSR Infl Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). Appellants’ arguments, limited to the teachings of the references
themselves, do not reveal error in the Examiner’s obviousness conclusion.
Thus, we sustain Rejections III and V.
Rejections IV and VI
We address the claims separately to the extent they are so argued by
Appellants. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Claim 3
The Examiner finds, and Appellants do not dispute, that Zhou teaches
the genus of compounds according to Formula II, but is silent regarding the
recited boiling points. Final Act. 10. The Examiner further finds, and
Appellants do not dispute, that three species falling within both Formula II
and Zhou are listed on page 29 of Appellants’ Specification which indicates
that the boiling point of each of these species falls within the recited range.
Id. at 10—11.
Appellants argue that the boiling point limitation is not taught by
Zhou, and that Zhou’s general teaching regarding boiling points would teach
the skilled artisan to prefer “lower boiling point coalescents” and “to only []
moderate VOC reduction.” App. Br. 11.
We are not persuaded by these arguments for the reasons provided by
the Examiner on pages 20—22 of the Answer and below. Appellants fail to
even address, much less reveal error in, the Examiner’s evidence regarding
the boiling points of the three compounds which undisputedly fall within the
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scope of the claim and the prior art. Further, Appellants’ arguments
characterizing Zhou’s teaching as limited to moderating VOC reduction
reveal no error as they are not directed to limitations appearing in the claims.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Appellant’s arguments fail
from the outset because . . . they are not based on limitations appearing in
the claims.”).
It follows that we sustain the rejection of claim 3.
Claim 9
Claim 9 is directed to an aqueous coating composition containing
from 0.1% to 40% of the coalescent of claim 3, based on the weight of
aqueous polymeric dispersion solids.
The Examiner finds that Zhou teaches an aqueous coating
composition (i.e., Latex 629) containing the recited amount of coalescent, as
further evidenced by UCAR 629. Final Act. 11.
Appellants do not address the Examiner’s calculations regarding the
Latex 629 embodiment with any reasonable specificity, but rather focus on a
different embodiment to Latex F-9100. App. Br. 11. Such incomplete
arguments do not reveal error in the Examiner’s finding that the coalescent
amounts are taught by Zhou.
Moreover, we observe that the coalescent concentration is an art-
recognized result-effective variable because varying the amount of
coalescent in a semi-gloss paint composition affects its film formation
characteristics. Zhou 1103, Fig. 8. “[Discovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of
the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). To show criticality
of a claimed range
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[u]nder [the proper] standard, “it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re
Alter, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Only if the “results of optimizing a variable” are “unexpectedly
good” can a patent be obtained for the claimed critical range. In
re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977).
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We, therefore, sustain the rejection of claim 9.
Claim 10
Claim 10 depends from claim 9 and requires that the aqueous coating
composition contain an aqueous polymeric dispersion having a minimum
film forming temperature (i.e., “MFFT”) from -5 -C to 100 -C, and that the
coalescent composition of claim 3 be present in an amount from 0.1% to
30%, based on the weight of aqueous polymeric dispersion solids.
As with claim 9, the Examiner provides a calculation, undisputed by
Appellants, demonstrating that the Latex 629 embodiment disclosed in
paragraph 98 of Zhou meets the recited coalescent concentration. Final Act.
12. The Examiner finds further that Zhou teaches, in Figure 1, an aqueous
coating composition having an MFFT between -2 -C and 16 °C, depending
on how much of the coalescent composition is added. Id. The Examiner
concludes that it would have been obvious to the skilled artisan to form
coatings, based on the overall teachings of Zhou, to include the claimed
amounts of coalescent compounds within the claimed range to arrive at the
subject matter of claim 10. Id. at 13.
Appellants urge that Zhou does not teach the MFFT of the polymeric
dispersions, and contend that the relevance of the MFFT values indicated in
Figures 7 and 8 is unclear. App. Br. 11—12. These arguments do not
persuade us of reversible error.
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“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826—27 (CCPA 1968). See also
PerfectWeb Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir.
2009) (explaining that the obviousness analysis “may include recourse to
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference or expert
opinion”).
Here, the Examiner aptly notes the breadth of the recited aqueous
polymeric dispersion’s MFFT, i.e., a range of approximately 105 °C, and
that such limitation would be “easily met because of its large breadth.”
Ans. 23. The Examiner acknowledges that even though “Zhou does not
specifically measure MFFT ... of the semigloss and latex formulations, Fig.
8 [of Zhou] shows that excellent films form from the semigloss formulation
at 40 degrees.” Id. Moreover, we note that Zhou expressly teaches that
“[coalescing agents are high boiling point solvents . . . used to reduce the
minimum film formation temperature (MFFT) of paints.” Zhou 13.
In view of Zhou’s teaching, we determine that it would have been
well within the ambit of the skilled artisan to select both a polymeric
dispersion with a MFFT value within the broadly recited range of -5 °C to
100 -C, as well as the optimum amount of the coalescent falling within the
recited range of 0.1 to 30% by weight, in order to prepare a coating having
the desired characteristics, e.g., a certain film forming temperature. In re
Boesch, 617 F.2d at 276 (holding that optimization of a result effective
variable is ordinarily within the ambit of one of ordinary skill in the art).
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For example, the skilled artisan would have reasonably expected from
Zhou’s teaching that there is a direct relationship between the amount of
coalescing agent and the effect on a composition’s overall MFFT. See Zhou
Figs. 1 and 2. Thus, if a coating with a specific MFFT was desired, the
skilled artisan would have known to select a polymeric dispersion with a
certain MFFT, as well as the proper amount of the coalescent composition
impacting such MFFT.
Thus, we sustain the rejection of claim 10.
Rejections IV and VI are sustained.
Rejection I
We decline to reach the anticipation rejection of claim 3 because our
decision upholds the Examiner’s obviousness rejection of this claim.
SUMMARY
We sustain Rejections II—VI, but decline to reach Rejection I.
The Examiner’s final decision to reject claims 1—17 and 19—21 is
affirmed.
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).
AFFIRMED
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