Ex Parte Finley et al

Patent Trial and Appeal Board

Aug 2, 2016

12316404 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/316,404 12/12/2008 Maureen Joanne Finley
21898 7590 08/04/2016
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.
A01959 3099
EXAMINER
FINK, BRIEANN R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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 MAUREEN JOANNE FINLEY
and MICHAEL De WAYNE KELLY
Appeal2015-001158
Application 12/316,404
Technology Center 1700
Before JACQUELINE WRIGHT BONILLA, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 4--8, and 11 of Application
12/316,404 under 35 U.S.C. § 103(a) as obvious. Final Act. (June 24,
2013). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Rohm & Haas Co.is identified as the real party in interest. Appeal Br. 2.
Appeal2015-001158
Application 12/316,404
BACKGROlJt-JD
The application at issue describes a water-dispersed coating
composition for imparting flexibility to cured amino resin-bound glass fiber
nonwovens. Spec. 1. When used as a coating for glass fiber non-wovens,
the claimed composition serves to provide improved wet and dry tensile
strength and tear strength. Id.
Claim 1 is representative of the claims at issue and is reproduced
below:
1. A water-dispersed coating composition comprising
a) at least one aqueous dispersion of particles of a
copolymer made from, based on the weight of the
copolymer:
1 from 96 to 99.8 weight percent of at least one
monoethylenically unsaturated nonionic monomer
not including the (meth)acrylamide of component
111;
11 from 0.1 to 2 weight percent of a multi-ethylenically
unsaturated monomer comprising allyl
(meth)acrylate;
111 from 0.1 to 2 weight percent of (meth)acrylamide;
wherein the said [sic] copolymer comprises no more than 1
weight percent, based on the weight of the copolymer, of a self-
crosslinking monomer; and
b) at least one amino resin selected from the group
consisting of melamine/formaldehyde resin,
urea/formaldehyde resin, guanamine/formaldehyde resin,
benzoguanamine/formaldehyde resin and
acetoguanamine/formaldehyde resin or combinations
thereof;
wherein the ratio of components a:b is from 1 :99 to 20:80 based
on the solids of both components.
Appeal Br. 6 (Claims App.).
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Appeal2015-001158
Application 12/316,404
REJECTIONS
On appeal, the Examiner maintains the rejection of claims 1, 4--8, and
11under35 U.S.C. § 103(a) as obvious over Inoue (JP 01-261480,
published Oct. 18, 1989) in view of Pangrazi (U.S. 4,859,508, issued Aug.
22, 1989).
DISCUSSION
The claims at issue stand rejected over Inoue in view of Pangrazi.
The primary reference, Inoue, teaches an amino resin adhesive composition
that is generally similar to that at issue. Inoue teaches an acrylic emulsion
(analogous to component A of claim 1) and a melamine/formaldehyde based
resin (analogous to component B of claim 1) in a ratio of 2 to 30 parts by
weight acrylic emulsion to 100 parts by weight amino resin adhesive.
The Appellants challenge the present rejections on the basis that the
cited references fail to disclose a copolymer having from 0.1 to 2 percent
(meth)acrylamide as required by claim 1.2 The Examiner finds that,
although Inoue does not teach a range of (meth)acrylamide values, it does
teach compositions with no acrylamide and compositions that are 8 percent
and 10 percent acrylamide by weight. Answer 5. The Examiner further
notes that Inoue teaches that the content of other monomers may vary. For
instance, Inoue teaches compositions that are 1 % and 3% methacrylic acid
by weight and compositions that are 0% and 5% acrylonitrile by weight. Id.
2 The Appellants nominally include a second basis of appeal - a single
sentence asserting that the Examiner fails to make a prima facie case of
obviousness. This is insufficient to state a ground of appeal. See 37 C.F.R.
§ 41.37(c)(l)(iv) (requiring that appellant's "arguments shall explain why
the examiner erred as to each ground of rejection contested by appellant.").
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Appeal2015-001158
Application 12/316,404
In view of such disparities, the Examiner determines that Inoue teaches
"clear variation" in monomer content. Id. The Examiner further finds that it
is within the teaching of Inoue to vary the amount of each comonomer so
long as products made from the Inoue composition embody the intended
advantages; prevention of yellowing, prevention of fishy odor; and
imparting flexural and mechanical strength. Id. at 5---6. Accordingly, the
Examiner finds the present claims obvious over Inoue in view of Pangrazi.
A claim will be rejected where "the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art." 35 U.S.C. § 103. The ultimate
determination of obviousness under § 103 is a question of law based on
underlying factual findings. In re Baxter Int'!, Inc., 678 F.3d 1357, 1361
(Fed. Cir. 2012). These underlying factual considerations consist of: (1) the
level of ordinary skill in the pertinent art, (2) the scope and content of the
prior art, (3) the differences between the prior art and the claims at issue, and
(4) secondary considerations of non-obviousness such as commercial
success, long-felt but unsolved needs, failure of others, etc. KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 406, (2007) (citing Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966)).
Here, the primary reference teaches acrylic emulsions with no
acrylamide, with 8% acrylamide, and with 10% acrylamide. Inoue at 11,
Table 2. The reference further teaches that one may vary the type and ratio
of monomers. In this regard, the Inoue specification provides that "[ w ]hen
two or more types of acrylic emulsion are used as well, their ratio is
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Appeal2015-001158
Application 12/316,404
arbitrary." Inoue at 6-7. Thus, Inoue teaches certain specific proportions of
acrylamide and, generally, that such proportion may vary.
A prima facie case of obviousness may exist where the claimed ranges
or amounts do not overlap with the prior art but are merely close. Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Here,
the acrylamide content taught by Inoue is simply not sufficiently close to
create a prima facie case of obviousness. The acrylic emulsions taught by
Inoue that contain no acrylamide are of little relevance. The acrylic
emulsions of Inoue that contain 8 and 10 percent acrylamide by weight are
too far removed from the claimed range of 0.1 to 2 percent by weight.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of claim 1. Similarly, as all other claims at issue depend from
claim 1, we do not sustain their rejection.
CONCLUSION
The rejection of claims 1, 4--8, and 11under35 U.S.C. § 103(a) is
reversed.
REVERSED
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