Ex Parte Ashmore et al

Patent Trial and Appeal Board

Aug 1, 2018

14369088 (P.T.A.B. Aug. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/369,088 06/26/2014 John W. Ashmore
21898 7590 08/03/2018
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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.
72088-US-PCT 1018
EXAMINER
CABRAL, ROBERTS
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
08/03/2018 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 JOHN W. ASHMORE, BORIS POLANUYER,
and DAVID LAGANELLA 1
Appeal2017-008612
Application 14/369,088
Technology Center 1600
Before TONI R. SCHEINER, ERIC B. GRIMES, and RY ANH. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a coating composition. All pending claims are on appeal as rejected under
35 U.S.C. § 103. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as "ROHM AND HAAS
COMP ANY." Br. 4. Herein we have considered the Specification of June
26, 2014 ("Spec."); the Final Office Action of Nov. 12, 2015 ("Prior Final
Action"); the Final Office Action of Mar. 22, 2016 from which is on appeal
("Final Action"); the Appeal Brief of Aug. 22, 2016 ("Br."); and the
Examiner's Answer of Feb. 9, 2017 ("Answer"). No Reply Brief was filed.
2 The claims' numbering in the Appeal Brief' s Claim Appendix does not
match the listing of pending claims by the Examiner at page 2 of the Final
Action, or as submitted in Appellants' claims amendment of Feb. 12, 2016.
However, Appellants understood the rejections to apply to all of the pending
claims (i.e., claims 2, 3, 6, 7, and 9--13). Br. 8.
Appeal2017-008612
Application 14/369,088
STATEMENT OF THE CASE
Independent claim 2 is representative and is reproduced below:
2. A coating composition comprising
A) an encapsulated active that is an isothiazolinone and
B) one or more metal additive and
C) one or more binder polymer, one or more binder
precursor, or a mixture thereof; and
D) one or more pigment
wherein the metal additive is selected from the group
consisting of:
1. a transition metal,
11. metal cation selected from periodic group 1, and
111. metal cation selected from periodic group 2;
and further wherein the metal additive does not comprise a co-
biocide selected from the group consisting of zinc pyrithione,
copper pyrithione, tolyl fluinid, dichlo fluinid, diiodomethyl-p-
tolylsulfone, 2-methylthio-4-tert-butylamino-6-isopropylamino-
s-triazine, dichlorophenyl dimethyl urea, zinc,bis(N,N-
dimethylcarbamodithioato-kS,kS')[m-[[N,N'-1,2-ethanediylbis
[carbamodithioato-kS,kS']](2-)]]di- (TOC 3204F), zinc ethane-
1,2-diylbis( dithiocarbamate ), non-encapsultated DCOIT,
cuprous oxide, cuprous thiocyanate, spinosad, spinetoram,
medetomidine, cypermethrin, tralopyr, TPBP, and mixtures
thereof.
Amendment filed Feb. 12, 2016, page 2 (paragraphing added for clarity).
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Appeal2017-008612
Application 14/369,088
The following rejections are appealed:
Claims 2, 3, 6, and 9--13 stand rejected 35 U.S.C. § I03(a) over
Reybuck, 3 Ikari, 4 and Jones. 5 Final Action 2; see also Prior Final Office
Action 4--5 (setting forth the rationale for the obviousness rejection of
"[c]laims 2, 3 and 6-15" over this prior art combination).
Claims 2, 3, 6, 7, 9, and 10 stand rejected under 35 U.S.C. § I03(a)
over Reybuck and Ikari. Final Action 2.
DISCUSSION
Only those arguments made by Appellants in the Appeal Brief have
been considered in this Decision (no Reply Brief was submitted); arguments
not so presented in the Brief are waived. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv)
(2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived."). Statements in a brief that
"merely mention [a] claim ... and lack any type of separate, substantive
argument concerning the claim" are not sufficient to constitute separate
argument regarding that claim under 37 C.F.R. § 4I.37(c)(l)(iv). In re Kao,
639 F.3d 1057, 1065 (Fed. Cir. 2011). "[T]he examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the applicant." In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
3 US 7,377,968 B2 (issued May 27, 2008) ("Reybuck").
4 EP O 475 781 Al (pub. Mar. 18, 1992) ("Ikari").
5 US 2014/0141263 Al (pub. May 22, 2014) ("Jones").
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Appeal2017-008612
Application 14/369,088
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "In determining
whether the subject matter of a patent claim is obvious, ... [ w ]hat matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
The Examiner determined that all pending claims would have been
obvious over Reybuck, Ikari, and Jones, except claim 7, which the Examiner
determined would have been obvious over Reybuck and Ikari. Final Action
2-3; see also Prior Final Action 4--7 (identifying how these references teach
and suggest the claim elements).
Br. 9.
Appellants' argument for patentability, in its entirety, is:
The metal compounds of the art are not the same
instantly claimed metal additives of the present invention. The
metal additives of Applicants invention must be transition
metals as defined by [0025] of applicant's specification, group I
metal cations or group II metal cations that do not have the
enumerated co-biocides. This is different from the art where
the metal compounds of Ikari are more akin to co-biocides and
not metal additives as per [0083] of Applicant's specification.
Thus, it is submitted that none of the cited prior art documents
provide any suggestion that would motivate the skilled person
to provide a coating composition comprising an encapsulated
isothiazolinone and the specific classes of metal additives
claimed in the present application which of a metal additive.
We conclude the Examiner's cited prior art combination teaches and
suggests the invention of claim 2 (listed as claim 3 in the Claims Appendix
to the Appeal Brief). Reybuck teaches a marine antifouling coating, e.g., a
paint, including encapsulated 4,5-dichloro-2-n-octyl-3(2H)-isothiazolone
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Appeal2017-008612
Application 14/369,088
(DCOIT), rosin binder, pigment, and copper(II) oxide. Reybuck Abstract,
6:1-29. Copper is a transition metal, i.e., an "element in the d-block of the
periodic table, which includes groups 3 to 12 on the periodic table." See
Spec. ,r 25, see also id. ,r 66 ("When metal salt is used, ... [ m Jost preferred
anions include ... oxide. When the metal salt is used, the metal salt
preferably contains copper."). Further, Ikari teaches combining an
isothiazolone-containing compound with a heavy metal salt ( e.g., zinc,
manganese, copper, iron, and nickel) and an inorganic copper compound,
( e.g., copper(II) oxide). Ikari Abstract, 3--4; see also id. at 8-9 (Table 2).
Moreover, Jones teaches a biocidal foul release coating including an
isothiazolone-containing compound (e.g., 4,5-dichloro-2-( n-octyl)-3 (2H)-
isothiazolone) mixed with a copper-containing compound ( e.g., copper
oxide). Jones Abstract, ,r 48.
Appellants' argument is unpersuasive. The only substantive argument
made for patentability is that the Ikari reference does not teach the "metal
additive" claim element, which, as shown above, is not correct and, in any
event, the disputed claim element is taught or suggested by each of the other
cited references.
SUMMARY
The obviousness rejections under 35 U.S.C. § 103 are affirmed.
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)(l )(iv).
AFFIRMED
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