Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardApr 26, 201813523976 (P.T.A.B. Apr. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/523,976 06/15/2012 Liang CHEN 21898 7590 04/30/2018 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. 71125 2736 EXAMINER NGUYEN,HAS ART UNIT PAPER NUMBER 1766 NOTIFICATION DATE DELIVERY MODE 04/30/2018 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 LIANG CHEN, LIANG HONG, and MANESH NADUPP ARAMBIL SEKHARAN Appeal2017-007057 Application 13/523,976 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and WLIA HEANEY, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner's final decision to reject claims 1-10.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appellants identify the real party in interest as "ROHM AND HAAS COMPANY" (Appeal Brief filed August 9, 2016, hereinafter "Br.," 4). 2 Br. 7-12; Final Office Action entered March 9, 2016, hereinafter "Final Act.," 2-9; Examiner's Answer entered January 4, 2017, hereinafter "Ans.," 2-12. Appeal2017-007057 Application 13/523,976 I. BACKGROUND The subject matter on appeal relates to water redispersible polymer powder (RDP) compositions (Specification filed June 15, 2012, hereinafter "Spec.," ,r 1; Abstract). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief (Br. 13), with key limitations emphasized, as follows: 1. A water redispersible polymer powder (RDP) comprising a co-dried admixture of a thermosettable epoxy resin, a colloidal stabilizer, and an interfacial crosslinking agent, said thermosettable epoxy resin having a glass transition temperature (T g) of less than 50°C, said colloidal stabilizer being capable of dispersing the epoxy resin at a temperature above the T g of the epoxy resin, the amount of the thermosettable epoxy resin being from 65% by weight to 85% by weight of the total weight of the water-redispersible polymer powder, the amount of the colloidal stabilizer being at least 2% by weight, based upon the weight of the thermo settable epoxy resin, and the amount of the interfacial crosslinking agent being from 0.1 % to 5% by weight, based upon the weight of the thermosettable epoxy resin. II. REJECTIONS ON APPEAL On appeal, the Examiner maintains two rejections under pre-AIA 35 U.S.C. § 103(a), as follows: A. Claims 1-8 as unpatentable over Smith et al. 3 (hereinafter "Smith"), Eck et al. 4 (hereinafter "Eck"), and Decker et al. 5 (hereinafter "Decker"); and 3 US 5,428,083, issued June 27, 1995. 4 US 5,959,017, issued September 28, 1999. 5 US 5,135,993, issued August 4, 1992. 2 Appeal2017-007057 Application 13/523,976 B. Claims 1-10 as unpatentable over Kohlhammer et al. 6 (hereinafter "Kohlhammer"), Smith, Eck, and Decker. (Ans. 2-12; Final Act. 2-9.) III. DISCUSSION Rejection A. The Appellants do not argue any claim separately pursuant to 37 C.F.R. § 4I.37(c)(l)(iv) (Br. 7-12). Therefore, as provided by this rule, claims 2-8 stand or fall with claim 1, which we select as representative. The Examiner finds that Smith describes most of the limitations recited in claim 1, including glycine----one of the interfacial crosslinking agents specified in dependent claim 5 (Ans. 2-3). Regarding the limitation "the amount of the thermosettable epoxy resin being from 65% by weight to 85% by weight of the total weight of the water-redispersible polymer powder" recited in claim 1, the Examiner finds that Smith teaches an epoxy resin content of at least 20 wt%, subject to Smith's additional requirement that a polyamide resin is also present in an amount of at least 20 wt%. Thus, according to the Examiner, Smith discloses a range for the epoxy content that overlaps with the Appellants' specified range (id. at 3, 9-10). The Examiner finds that Smith "does not explicitly teach the amount of at least 0.1 %-5% by weight of the interfacial crosslinking agent" but concludes that a person having ordinary skill in the art would have arrived at amounts within the Appellants' specified range through routine optimization in view of Eck's disclosure (id. at 3-5). 6 US 2001/0024644 Al, published September 27, 2001. 3 Appeal2017-007057 Application 13/523,976 The Appellants contend that "Smith fails to disclose the instantly recited amount of epoxy resin in a powder" (Br. 7). Specifically, the Appellants argue that "[t]he examples in Smith in fact only have 10 wt.% solids of epoxy, based on total epoxy plus polyamide" (id.). According to the Appellants, Smith discloses a maximum amount of epoxy groups in the epoxy resin to the acid or amine groups in the polyamide of 10: 1 and, based on certain assumptions and calculations, "the most epoxy one could ever use in Smith is 1,920 gout of(1920 plus 1120) or 1920g/3040 g or 63.1% epoxy, based on total resin weight" (id. at 7-8). Thus, in the Appellants' view, none of the applied prior art references disclose or suggest the epoxy resin content recited in claim 1 (id. at 9-10). Furthermore, the Appellants rely on a Declaration of Liang Chen, one of the joint inventors, filed July 9, 2015 (Br. 11 ). Based on the Declaration, the Appellants argue that "low T g thermosettable epoxy resins block in conventional redispersible powders and are not expected to be useful in making redispersible polymer powders" and that "[i]t is expected that all thermosettable epoxy resins softer than those tested in Experimental A of the Chen Declaration ( with a T g of 40°C) would fare worse in instantly recited than those used in Experimental A" (id. at 11 ). The Appellants' arguments fail to identify any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As the Examiner points out (Ans. 9-10), Smith teaches an epoxy resin content that overlaps with that recited in claim 1. Specifically, Smith teaches two polymers in the redispersible polymer powder: an epoxy resin; and a polyamide resin (Smith col. 1, 1. 60-col. 2, 1. 28). Smith teaches that the epoxy resin dispersion and the polyamide dispersion each have a content of at least 20% by weight (id. at col. 18, 11. 13-16), which would have 4 Appeal2017-007057 Application 13/523,976 reasonably indicated to a person skilled in the relevant art that the epoxy resin content in the polymer powder may be at least 20-80% by weight. Thus, the overlap between the range disclosed in the prior art (20-80% by weight) and the ranged specified in claim 1 (65-85% by weight) gives rise to a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("Aprimafacie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art."). Furthermore, Smith teaches that"[ v ]arying ratios of epoxy resin to polyamide resin can be employed, but preferably the initial ratio of epoxy groups of the epoxy resin to the free amine or acid groups of the polyamide resin is greater than about 1:1 and less than about 10:1" (id. at col. 12, 11. 2- 6). Thus, even assuming that the Appellants' calculations for an epoxy group:amine/acid ratio of 10: 1 providing an epoxy content of 63.1 % by weight are correct (Br. 7-8), Smith's disclosure that the ratios are preferred and Smith's use of the term "about" to qualify the numerical ratios would have reasonably indicated to a person skilled in the art that epoxy contents somewhat higher than 63 .1 % by weight, including contents falling within the Appellants' specified range, are contemplated. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990) ("a carbon monoxide concentration of 'about 1- 5%' does allow for concentrations slightly above 5%"). Regarding the Chen Declaration, the Examiner finds that the proffered evidence is insufficient because the experiments described in the Declaration do not compare against the closest prior art (Smith) and the showing is not commensurate in scope with the claims (Ans. 12). We discern no error in the Examiner's assessment of the proffered evidence. Specifically, the 5 Appeal2017-007057 Application 13/523,976 Declaration appears to rely on three experiments, namely Experiments A through C, purporting to compare the invention against the Kohlhammer (Chen Deel. ,r 4). These experiments, however, do not include a fair comparison between Smith, which describes a formulation including a blend of an epoxy resin and a polyamide resin and glycine, and a powder according to claim 1, where all variables are held constant except for the novel features recited in the claim. For example, Experiment A (prior art) appears to use glycine sodium as an interfacial crosslinking agent, whereas Experiment B (invention) uses taurine as an interfacial crosslinking agent. In re Dunn, 349 F.2d 433, 439 (CCPA 1965) ("[W]e do not feel it an unreasonable burden on appellants to require comparative examples relied on for non-obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables."). Moreover, the showing is far from being commensurate in scope with the claims because the Declaration relies on a single inventive experiment (Experiment B). Indeed, Experiment B does not even appear to fall within the scope of claim 1 because it is based on "99 .24 wt.% resin solids of just the thermosettable epoxy resin"-an amount that is outside the range ( 65- 85% by weight) recited in claim 1 (Chen Deel. ,r 4). For these reasons, we uphold Rejection A. Rejection B. The Appellants do not argue this rejection separately from Rejection A (Br. 7-12). Instead, the Appellants assert that "[t]he art of Kohlhammer, Smith, Eck, Decker or their combination all fail to disclose an epoxy resin water redispersible polymer powder having from 65 to 85 wt.% of the powder as a thermosettable epoxy resin with a glass transition 6 Appeal2017-007057 Application 13/523,976 temperature (T g) of less than 50°C" (id. at 9). For the reasons already discussed above, we cannot agree with the Appellants. Therefore, we also uphold Rejection B. IV. SUMMARY Rejections A and Bare sustained. Therefore, the Examiner's final decision to reject claims 1-10 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation