Ex Parte Creamer et al

Patent Trial and Appeal Board

May 31, 2018

14353902 (P.T.A.B. May. 31, 2018)

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.
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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.
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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
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