Ex Parte Creamer et alDownload PDFPatent Trial and Appeal BoardMay 31, 201814353902 (P.T.A.B. May. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/353,902 04/24/2014 Marianne P. Creamer 21898 7590 06/04/2018 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. 71955-US-PCT 8998 EXAMINER NERANGIS, VICKEY M ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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 MARIANNE P. CREAMER, GARY W. DOMBROWSKI, ERIC C. GREYSON, and ERIC P. WASSERMAN 1 (Applicants: ROHM and HAAS COMP ANY and DOW GLOBAL TECHNOLOGIES LLC) Appeal2017---009207 Application 14/353,902 Technology Center 1700 Before BEYERL YA. FRANKLIN, CHRISTOPHER L. OGDEN, and JANEE. INGLESE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as ROHM and HAAS COMP ANY. Appeal Br. 4. Appeal2017-009207 Application 14/353,902 Appellant requests our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: 1. Polymer particles having an average diameter from 100 nm to lOµm, where each particle comprises: (a) a core; and (b) lobes comprising at least 24 wt% but no more than 50 wt% polymerized residues of at least one C3-C6 carboxylic acid monomer. The Examiner relies on the following prior art references as evidence of unpatentability: Ishikawa Kowalski us 4,325,856 us 5,030,666 THE REJECTIONS Apr. 20, 1982 Jul. 9, 1991 1. Claims 1-7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kowalski. 2. Claims 1--4, 6, and 7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ishikawa. 2 Appeal2017-009207 Application 14/353,902 ANALYSIS To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claims on appeal, we will address them separately consistent with 37 C.F.R. § 4I.37(c)(l)(vii). Upon consideration of the evidence on this record and each of the respective positions set forth in the record, we find that the preponderance of evidence on this record supports the Examiner's findings and conclusion that the subject matter of Appellants' claims is unpatentable over the applied art. Accordingly, we sustain each of the Examiner's rejections on appeal essentially for the reasons set forth in the Final Office Action and in the Answer. We add the following for emphasis. "[W]here the prior art gives reason or motivation to make the claimed [invention] ... the burden (and opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of ... any other argument or presentation of evidence that is pertinent." In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (internal citations omitted) (en bane). According to Appellants, the Wasserman Declaration of record demonstrates that the results obtained by Appellants are superior and unexpected (regarding the level of acid monomer), thereby rebutting any primafacie case of obviousness established by the Examiner. Appeal Br. 7-10. It is the Examiner's position that the comparisons made in the Table set forth in the Wasserman Declaration are not convincing because a direct comparison is not made such that Appellants have not shown that the amount of C3-C6 carboxylic monomer alone accounts for the differences between the inventive and comparative examples. Ans. 4--5. 3 Appeal2017-009207 Application 14/353,902 We agree for the reasons provided by the Examiner in the record. We add that with regard to side-by-side comparisons, the court stated in In re Dunn, 349 F.2d 433, 439 (CCPA 1965) "[t]he cause and effect sought to be proven is lost here in the welter of unfixed variables." Within this context, the Examiner also makes a valid point that Table 1 in the Specification shows that different monomers affect the rheological properties ( while the lobe composition remains the same). Ans. 5---6. A Reply Brief is not of record to address this point made by the Examiner. In view of the above, we affirm Rejection 1. For the same reasons, we also affirm Rejection 2. DECISION Each rejection is affirmed. TIME PERIOD 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). ORDER AFFIRMED 4 Copy with citationCopy as parenthetical citation