Ex Parte Frey et al

Patent Trials and Appeals Board

Jun 12, 2019

14207810 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/207,810 03/13/2014 Robert B. Frey
21898 7590 06/14/2019
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.
74513-US-NP 2262
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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 ROBERT B. FREY, WEI GAO, JOHN A. ROPER, III,
and JAMES WATSON
Appeal2017-007643
Application 14/207 ,810
Technology Center 1700
Before JULIA HEANEY, JEFFREY R. SNAY, and DEBRA L. DENNETT,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 request review pursuant to 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-14 of Application 14/207,810. We
have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 This Decision refers to the Specification dated March 13, 2014 ("Spec."),
Final Office Action dated July 8, 2016 ("Final Act."), Appeal Brief dated
December 1, 2016 ("Br."), and Examiner's Answer dated February 16, 2017
("Ans.").
2 Dow Global Technology LLC and Rohm and Haas Company are identified
as the Applicants (hereinafter "Appellants") and the real parties in interest.
Br. 3.
Appeal2017-007643
Application 14/207,810
BACKGROUND
The subject matter on appeal relates to a pigmented paper coating
composition. Br. 7. According to Appellants, titanium dioxide (Ti02)
improves optical properties, such as brightness and opacity, of a paperboard
coating. Spec. 1:4---6. Appellants' pigmented formulation comprises a
polyphosphate dispersant and a binder substantially free of phosphate and
phosphonate groups, in order to overcome the adverse effects of those
functional groups while still achieving the benefit of enhanced brightness.
Id. at 1:10-2:17.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with added paragraphing for readability:
1. A composition comprising an aqueous dispersion of
a) from 3 to 25 weight percent polymeric binder particles
containing a substantial absence of phosphate and phosphonate
groups;
b) from 5 to 35 weight percent rutile Ti02 having a purity of at
least 98% and a substantial absence of inorganic silica;
c) from O .1 to 2 weight percent of a dispersant which is
tetrasodium pyrophosphate, tetrapotassium pyrophosphate,
sodium tripolyphosphate, potassium tripolyphosphate, or
sodium hexametaphosphate;
wherein the polymeric binder particles comprise vinyl acetate,
vinyl-acrylic, styrene-acrylic, or styrene-butadiene-polymer
particles; and
wherein the weight percentages are all based on the weight of
total solids of the composition.
Br. 14 (Claims App.).
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Appeal2017-007643
Application 14/207,810
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1---6, 11, and 14 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Wen, 3
Mukkamala, 4 and Jensen. 5 Final Act. 3.
2. Claims 7, 8, 12, and 13 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Wen, Kruse, 6
Mukkamala, and Jensen. Id. at 6.
3. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Wen, Mukkamala, Jensen,
and Hiscock. 7 Id. at 8.
4. Claim IO is rejected underpre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Wen, Mukkamala, Jensen,
Kruse, and Hiscock. Id. at 9.
5. Claims 1-14 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims
1-6 and 8-13 of Application No. 14/226,872 ("the '872
Application"). Final Act. 10.
3 Wen et al. (US 2003/0024437 Al; publ. Feb. 6, 2003) ("Wen").
4 Mukkamala (EP 1 911 881 Al; publ. Apr. 16, 2008).
5 Jensen et al. (WO 00/32700 Al; pub 1. June 8, 2000) ("Jensen").
6 Kruse et al. (US 4,892,787; iss. Jan. 9, 1990) ("Kruse").
7 Hiscock et al. (US 2006/020773 7 A 1; pub 1. Sept. 21, 2006) ("Hiscock").
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Appeal2017-007643
Application 14/207,810
DISCUSSION
§ 103 (a) Rejections
Appellants argue for patentability of the appealed claims on the basis
of limitations in claim 1, and do not separately argue independent claim 7 or
any of the dependent claims. We, therefore, focus our discussion on claim 1
as argued by Appellants; all other claims will stand or fall with claim 1. 37
C.F.R. § 4I.37(c)(l)(iv) (2013).
The Examiner finds that Wen teaches a composition comprising an
aqueous dispersion of less than about 40% rutile Ti 0 2, which encompasses
the claimed range, and the same dispersants as recited in claim 1. Final Act.
3 (citing Wen ,r,r 13, 47--48, 51, 53). The Examiner acknowledges that Wen
does not teach a polymeric binder in its composition, but finds that
Mukkamala teaches a Ti02 pigmented paper coating composition comprising
polymeric binder as recited in claim 1, in a weight percentage amount
overlapping the claimed range. Id. (citing Mukkamala ,r,r 6-8, 75, 78). The
Examiner acknowledges that neither Wen nor Mukkamala teaches Ti02
having the claimed purity, but finds that Jensen teaches a film for coating
paper comprising rutile Ti02 having high refractive index that includes RPS
Vantage Ti02, which is identical to the Ti02 described in Appellants'
Specification. Id. at 4 (citing Jensen Abstract, 8:24--31; Spec. 3:6-11). The
Examiner determines that it would have been obvious to a person of
ordinary skill in the art to include a polymeric binder such as taught by
Mukkamala, in Wen's composition, and to use the RPS Vantage Ti02taught
in Jensen in Wen's composition, in order to impart high refractive index and
ability to effectively scatter light. Id. at 3--4 ( citing Mukkamala ,r 7 5; Jensen
8:12-16).
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Appeal2017-007643
Application 14/207,810
Appellants argue that Wen teaches away from optimizing spacing of
Ti02 particles using simple blends such as a Ti02 slurry and the specific
phosphate dispersants of Appellants' claims. Br. 9. Specifically, Appellants
argue that Wen teaches using precipitated calcium carbonate particles to
increase spacing between Ti02 particles, that a dispersant need not be used
to prevent particle agglomeration, and that dispersant may be washed away
from the Ti02 slurry so that it may or may not be present in the final
composition. Br. 9--10 (citing Wen ,r,r 10, 18, 40-41, 46, 55, 64, 79, 94).
Appellants further argue that Wen shows a clear preference for polyacrylic
acids and polyacrylate dispersants, and that even though Wen described
phosphate dispersants of the type claimed, a skilled artisan would have
chosen Wen's preferred dispersant over the claimed phosphate dispersants of
Appellants' claims. Id. at 10 (citing Wen ,r 47).
Appellants' argument is not persuasive of reversible error. Appellants
characterize Wen's discussion of deficiencies in the prior art (Wen
,r,r 2-11) as teaching away from blending Ti02 and a dispersant, when in
fact, that discussion in Wen is directed at poor optical properties associated
with blends ofTi02and calcium carbonate. Wen ,r 10. Further, Wen
supports the Examiner's finding that it discloses the same polyphosphate
dispersants as recited in appealed claim 1 (Wen ,r,r 48, 90), and Wen's
teaching is not limited to washing away the dispersant. Ans. 14. Rather,
Wen explicitly describes an embodiment where dispersant is present in the
final composition. Wen ,r 64.
Appellants further argue that the Examiner's combination of Wen
with Mukkamala and Jensen is improperly based on hindsight, because
Mukkamala teaches that a dispersant is optional in its coating composition,
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Appeal2017-007643
Application 14/207,810
and Jensen teaches that Kronos 1100 Ti02 is superior to RPS Vantage Ti02.
Br. 10-11. These arguments are not persuasive of reversible error, because
the Examiner relies on Mukkamala only for its teaching of a polymeric
binder, and provides a sufficient rationale for using Mukkamala's binder in
Wen's composition. Ans. 12-13 (citing Mukkamala ,r 75). As to Jensen,
although its data demonstrates different properties of Kronos 1100 and RPS
Vantage Ti02, it also describes the use of both pigments as inventive and
uses them in its inventive examples. Jensen Table 3A, 3B, 10:3---6, 11:11-
12. Therefore, Jensen supports the Examiner's finding that it teaches using
Ti02 having the claimed purity, and Appellants have not provided any
evidence that Jensen disparages the use of RPS Vantage Ti02.
Appellants further argue unexpected results, i.e., that the Specification
shows an improvement of at least three brightness units for the inventive
dispersants as compared with examples containing no dispersant, or a
polyacrylic acid homopolymer. Br. 10 ( citing Spec. Table 1 ). The burden of
showing unexpected results rests on the person who asserts them by
establishing that the difference between the claimed invention and the
closest prior art was an unexpected difference. See In re Baxter Travenol
Labs., 952 F.2d 388,392 (Fed. Cir. 1991). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
Appellants' Specification does not meet their burden to establish
unexpected results for several reasons. The data in Table 1 relied upon by
Appellants does not clearly show a significant difference between the
average brightness of Appellants' inventive and comparative examples, for
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Appeal2017-007643
Application 14/207,810
the reasons explained by the Examiner in the Answer. Ans. 15. Further, the
data is not commensurate in scope with the appealed claims, because it does
not include data at the claimed lower limit (i.e., 3 wt%) of binder. Also,
comparative example C 1, which does not use a dispersant, is not comparable
to the closest prior art (i.e., Wen), because Wen's composition includes a
dispersant. Ans. ,r,r 58-59. Appellants have not filed a Reply Brief to
dispute any of the Examiner's findings concerning Appellants' purportedly
unexpected results. Accordingly, Appellants' argument of unexpected
results is not persuasive.
Nonstatutory Double Patenting
The Examiner provisionally rejected claims 1-14 as unpatentable over
claims 1-6 and 8-13 of the '872 Application on the ground of nonstatutory
double patenting. Final Act. 10. Appellants did not argue the double
patenting rejection in the Br. See Ans. 20. Since briefing was completed in
this appeal, however, the '872 Application was abandoned. Accordingly, we
need not reach this rejection.
SUMMARY
We affirm the rejections of claims 1-14 as unpatentable under 35
U.S.C. § 103(a).
We do not reach the provisional rejection of claims 1-14 on the
ground of nonstatutory obviousness-type double patenting.
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).
AFFIRMED
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