Ex Parte Fringant et al

Board of Patent Appeals and Interferences

May 17, 2012

10572944 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHE FRINGANT, VINCENT BODART, BERENGERE
RIXENS, ROMAIN SEVERAC, YVES HERVAUD, PATRICK
LACROIX-DESMAZES, and BERNARD BOUTEVIN
____________

Appeal 2011-005983
Application 10/572,944
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and KAREN M. HASTINGS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 13, 15, 16, 21 through 23, 26, 28, and 36 through 47, all
of the claims pending in the above-identified application.1 An oral hearing
was held on March 8, 2012. We have jurisdiction under 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed September 23, 2010, 2; and
Examiner’s Answer (“Ans.”) filed December 13, 2010, 2.

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STATEMENT OF THE CASE
The subject matter on appeal
relates to a polymer composition, to a process for preparing
such a polymer composition, to its use for coating metal,
polymer, paper or cellophane surfaces and for producing thin
single-layer or multilayer films and moulded objects, to a
process for coating such surfaces by means of said polymer
composition and to the articles or parts of articles obtained.
[(See Spec. 1, ll. 1-5.)]

The polymer composition comprises a polymer (P1) comprising monomeric
units derived from an ethylenically unsaturated monomer (M1) and at least
one co-oligomer (O1) having component (A) comprising at least one
monomeric unit derived from the ethylenically unsaturated monomer (M1)
and component (B) comprising at least one monomeric unit (m2) derived
from an ethylenically unsaturated monomer carrying at least one group, such
as a phosphonate group. (See Spec. 2, ll. 1-25.) The Specification defines
the term “polymer (P1)” as “a polymer of molar mass greater than that of the
co-oligomer (O1)” and the term “co-oligomer (O1)” as a copolymer of low
molar mass. (See Spec 2, ll. 26-28 and 7, ll. 1-2.) The Specification, at page
3, lines 4-16 and page 4, lines 29-32, also states that:
For the purposes of the present invention, the expression
"polymer (P1) comprising monomeric units derived from an
ethylenically unsaturated monomer (M1)" is intended to denote
the polymers which are obtained by addition polymerization.
The polymer (P1) contains at least 50%, preferably at least
60%, particularly preferably at least 70%, by weight of
monomeric units derived from the ethylenically unsaturated
monomer (M1).
As examples of such polymers (P1), mention may be
made of halogenated polymers, polymers of acrylic acid or of
its esters, polymers of methacrylic acid or of its esters,
polymers of acrylonitrile or of methacrylonitrile, polymers of
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acrylamide, of methacrylamide or of their derivatives, vinyl
acetate polymers, polymers of itaconic acid, of maleic acid or of
maleic anhydride, polymers of ethylene, of propylene, of
butadiene, of isoprene or of styrene and of its derivatives.
. . . .
Most particularly preferably, the polymer (P1) of the
composition according to the invention is a polymer of
vinylidene chloride. The ethylenically unsaturated monomer
(M1) is therefore, in this case, most particularly preferably
vinylidene chloride.

Further, the Specification, at page 8, lines 1-7 and 18-28, states that:
Component (A) of the co-oligomer (O1) may comprise at
least one monomeric unit derived from at least one monomer
that is copolymerizable with the monomer (M1) as defined
above, i.e. a halogenated monomer and/or a nonhalogenated
monomer if (M1) is preferably a halogenated monomer, a
chlorinated monomer and/or a nonchlorinated monomer if (M1)
is particularly preferably a chlorinated monomer, or a monomer
that is copolymerizable with vinylidene chloride if (M1) is most
particularly preferably vinylidene chloride.
. . . .
In the co-oligomer, component (B) comprises at least one
monomeric unit (m2), derived from an ethylenically unsaturated
monomer, carrying at least one group chosen from the
following groups:
-CaH2a+1 with a between 6 and 30,
-(CH2)b-CcF2c+l with b between 1 and 11 and c greater than or
equal to 5,
-(CH2)d-(Si(CH3)2-O)e-Si(CH3)3 with d between 1 and 11 and e
between 1and 1000,
-COOH,
-SO3H, and
the phosphonate groups -PO(OH)(OR1) with R1 being a
hydrogen atom or an alkyl radical containing from 1 to 11
carbon atoms.
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Details of the appealed subject matter are recited in representative
claims 13 and 362 reproduced from the Claims Appendix to the Appeal Brief
as shown below:
Claim 13: A polymer composition comprising

1) a polymer (P1) comprising at least 50% by weight of monomeric
units derived from an ethylenically unsaturated monomer (M1), and

2) at least one co-oligomer (O1) comprising at least:

a) a component (A) comprising at least one monomeric unit
identical to that derived from the monomer (M1) on which the
polymer (P1) is based, and

b) a component (B) comprising at least one monomeric unit
(m2), derived from an ethylenically unsaturated monomer, carrying at
least one phosphonate group - PO(OH)(OR1) with R1 being a
hydrogen atom or an alkyl radical containing from 1 to 11 carbon
atoms,

wherein the number-average molar mass of polymer (P1) is greater
than 30,000 and the number-average molar mass of co-oligomer (O1) is less
than or equal to 30,000.

Claim 36: A polymer composition comprising

1) a polymer (P1) comprising at least 50% by weight of monomeric
units derived from an ethylenically unsaturated monomer (M1), and

2) at least one co-oligomer (O1) comprising at least:

2 Appellants have separately argued independent claims 13 and 36 (App.
Br.6-16). Therefore, for purposes of this appeal, we select independent
claims 13 and 36 and decide the propriety of the Examiner’s §103(a)
rejections set forth in the Answer based on these claims alone in accordance
with 37 C.F.R. § 41.37(c)(1)(vii).

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a) a component (A) comprising at least one monomeric unit
identical to that derived from the monomer (M1) on which the
polymer (P1) is based, and

b) a component (B) comprising at least one monomeric unit
(m2), derived from an ethylenically unsaturated monomer, carrying at
least one -(CH2)b-CcF2c+l group with b between 1 and 11 and c greater
than or equal to 5,

wherein the number-average molar mass of polymer (P1) is greater
than 30,000 and the number-average molar mass of co-oligomer (O1) is less
than or equal to 30,000.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer:
Messwarb3 US 2,971,948 Feb. 14, 1961
Padget EP 0 185 464 A1 Jun. 25, 1986
Behr US 6,365,769 B1 Apr. 2, 2002
Thames US 6,599,972 B2 Jul. 29, 2003

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:
1) Claims 13, 15, 16, 21 through 23, 26, 28, 44, and 45 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of
Padget and Messwarb;
2) Claims 36 through 43 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Padget and Thames; and

3 Both the Examiner and Appellants refer to “Messwarb” as “Denk et al.” in
the Answer, Appeal Brief and Reply Brief.

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3) Claims 36 through 43, 46, and 47 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Padget and Behr. (See
App. Br. 6.)

DISCUSSION
I. REJECTION (1)
We reverse the Examiner’s § 103(a) rejection of claims 13, 15, 16, 21
through 23, 26, 28, 44, and 45 based on the collective teachings of Padget
and Messwarb. As correctly indicated by Appellants at pages 6 through 11
of the Appeal Brief, the Examiner has not demonstrated that one of ordinary
skill in the art would have been led to employ a vinyl phosphonate monomer
useful for promoting the adhesion characteristic of Messwarb’s vinyl
chloride copolymer-based lacquer products to copolymer B of Padget’s
contact adhesive for bonding two substrates. On this record, the Examiner
has not evinced that Messwarb’s vinyl phosphonate monomer could provide
sufficient adhesive or bonding strength to Padget’s contact adhesive for the
purpose of bonding two substrates. Thus, on this record, the Examiner has
not established a prima facie case of obviousness regarding the subject
matter recited in claims 13, 15, 16, 21 through 23, 26, 28, 44, and 45 within
the meaning of 35 U.S.C. § 103(a).
II. REJECTION (2)
We affirm the Examiner’s § 103(a) rejection of claims 36 through 43
based on the collective teachings of Padget and Thames for the findings of
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fact set forth by the Examiner at pages 6, 7, 13 and 14 of the Answer.4 We
add the following primarily for emphasis.
There is no dispute that Padget teaches a latex composition for use as
contact adhesives comprising copolymer A containing 10 to 70 wt% of
vinylidene chloride (corresponding to the claimed copolymer P1 containing
at least 50% by weight of monomeric units derived from an ethylenically
unsaturated monomer (M1)) and copolymer B containing 35 to 70 wt% of
vinylidene chloride (corresponding to the claimed oligomer O1), wherein
exemplified copolymer A contains 27.2% vinylidene chloride (claimed M1),
70.8% n-butyl acrylate, and 2.0% acrylic acid, with a molecular weight of
114,898 (greater than 30,000) and exemplified copolymer B contains 59.4%
vinylidene chloride (claimed M1), 5.1% of n-butyl acrylate, 33.5% methyl
methacrylate, and 2.0% acrylic acid, with a molecular weight of 19,171(less
than 30,000). (Compare Ans. 6 with App. Br. 11-14.)
Although Padget does not mention that its polymer B corresponding
to the claimed oligomer O1 has “component (B) comprising at least one
monomeric unit (m2), derived from an ethylenically unsaturated monomer,
carrying at least one –(CH2)b-CcF2c +1 group with b between 1 and 11 and c
greater than or equal to 5” recited in claim 36, Appellants have not disputed
the Examiner’s finding that Thames teaches using an ethylenically
unsaturated internal plasticizing and crosslinking monomer corresponding to
component B recited in claim 36 as a part of its latex composition suitable
for contact adhesives. (Compare Ans. 7 with App. Br. 11-14.) Nor have

4 Any new arguments in the Reply Brief will not be considered. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief
[is not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).

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Appellants disputed the Examiner’s finding that copolymer B of Padget’s
contact adhesive can include an internally plasticizing comonomer and that
the internally plasticizing and crosslinking comonomer of Thames useful for
a latex composition suitable for contact adhesives provides self-plasticized
compositions with no subsequent VOC emissions. (Compare Ans. 6-7 with
App. Br. 11-14; see also Padget, p. 11.)
Given the above teachings, we determine that the Examiner has not
reversibly erred in determining that one of ordinary skill in the art would
have been led to include an internally plasticizing comonomer, such as the
claimed component B disclosed in Thames, in copolymer B of Padget’s
latex compositions suitable for contact adhesives, with a reasonable
expectation of successfully imparting the desired plasticizing property to
copolymer B of Padget’s latex composition.
Appellants’ argument at pages 12 and 13 of the Appeal Brief that
“Padget requires an internally plastici[z]ing comonomer in copolymer A and
optionally in copolymer B” does not negate the prima facie case of
obviousness established by the Examiner. The fact remains that Padget still
teaches that an amount of an internally plasticizing comonomer, inclusive of
that taught by Thames, can still be included in its copolymer B so long as the
amount used “should be” selected to provide a Tg in the range of 0 to 80oC.
(See also Padget, pp. 10-11.) Moreover, claim 36, by virtue of using the
term “comprising” in the context of its copolymer P1, does not exclude the
presence of an internally plasticizing comonomer in its copolymer P1
(corresponding to Padget’s copolymer A).
Appellants also contend that Padget teaches away from the addition of
internally plasticizing and crosslinking monomers, such as that taught by
Thames, in its copolymer B. (See App. Br. 13-14.) In support of this
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contention, Appellants refer to a portion of page 13 of Padget. (See App. Br.
14.) However, Padget, at page 13 (emphasis added), teaches that
The copolymer A and/or the copolymer B of the present
invention may optionally contain . . . at least one multi-
functional comonomer that has effected, when present, a partial
. . . cross-linking during the polymeri[z]ation . . . as this can
sometimes improve the creep performance properties of the
copolymer. . . .
. . . Nevertheless, even though such cross-linking may be
used, it is not usually preferred [and] . . . it is not recommended
as a general rule.”

Although Padget may prefer to not employ cross-linking monomers, it does
not teach away from using such internally plasticizing and crosslinking
comonomer in its copolymer B. See Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)(“[T]he fact that a specific [embodiment] is taught to
be preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.”)
III. REJECTION (3)
We reverse the Examiner’s § 103(a) rejection of claims 36 through 43,
46, and 47 based on the collective teachings of Padget and Behr for the
reasons set forth by Appellants at pages 15 and 16 of the Appeal Brief.
Although the Examiner may have shown that Behr discloses component B
recited in claim 36 as polymerizable surfactants in emulsion, the Examiner
has not provided any apparent reason to incorporate such polymerizable
surfactants as part of copolymer B of Padget as required by claim 36. As
acknowledged by the Examiner at page 15 of the Answer, Padget teaches
using a surfactant, but does not teach or suggest incorporating such
surfactant as a part of its copolymer B.
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ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting of claims 13,
15, 16, 21 through 23, 26, 28, 44, and 45 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Padget and Messwarb is
REVERSED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 36 through 43 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Padget and Thames is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 36 through 43, 46, and 47 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Padget and Behr is REVERSED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED -IN-PART

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