Ex Parte Haigh et al

Patent Trial and Appeal Board

Jun 16, 2017

12893072 (P.T.A.B. Jun. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/893,072 09/29/2010 John Haigh A02079 3446
21898 7590 06/20/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
STEELE, JENNIFER A
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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 JOHN HAIGH, THIERRY EGRAZ,
ZHIQIANG (STEVEN) MAO,
LILYANE RENEE MORINO-FERAUD,
and MIAO YANG
Appeal 2016-007099
Application 12/893,072
Technology Center 1700
Before BEVERLY A. FRANKLIN, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134 of the
Examiner’s Final Rejection of claims 1—8. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
1 Appellants identify The Dow Chemical Company as the real party in
interest (Appeal Br. 2).
Appeal 2016-007099
Application 12/893,072
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal, and is
set forth below:
1. A curable aqueous composition consisting essentially of:
an emulsion polymer comprising, as copolymerized
units, from 0.5 to 9% ethylenically-unsaturated dicarboxylic
acid monomer, anhydrides, salts, and mixtures thereof by
weight, based on the weight of said emulsion polymer;
a polyol in the amount of from 0.5 to 15%, by weight,
based on the weight of said emulsion polymer; and
optionally, one or more second aqueous emulsion
polymers; independently optionally, one or more or polymers
dispersed in an aqueous medium; and, independently
optionally, one or more polymers soluble in the aqueous
medium of said curable aqueous composition;
wherein said curable aqueous composition comprises
total carboxylic acid-containing polymer comprising, as
polymerized units, from 0.5 to 9% carboxylic acid monomer by
weight, based on the total weight of said carboxylic acid-
containing polymer.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Michl et al. US 2009/0252962 A1 Oct. 8,2009
(hereinafter “Michl”)
THE REJECTIONS
1. Claims 1—8 are rejected under 35 U.S.C. §112(b) or 35 U.S.C.
§112 (pre-AIA), second paragraph.
2. Claims 1—8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Michl.
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Appeal 2016-007099
Application 12/893,072
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 1
Beginning on page 2 of the Final Office Action, the Examiner states
that claim 1 is indefinite for two reasons. First, the Examiner states that it is
not clear if the anhydrides, salts and mixtures thereof are related to the
ethylenically-unsaturated dicarboxylic acid monomer or are additional
components. Second, the Examiner states that it is not clear whether the
claim phrase of “carboxylic acid containing polymer” (found at lines 12—13
of claim 1) also includes the salts and anhydride forms.
In an effort to address the rejection, Appellants filed an After-Final
Amendment on October 13, 2014, which is reproduced in part below, with
regard to the changes made to claim 1:
1 (currently amended). A curable aqueous composition
consisting essentially of
an emulsion polymer comprising, as copolymerized units, from
0.5 to 9% ethylenically-unsaturated dicarboxylic acid monomer
selected from the group consisting essentially of crotonic acid,
itaconic acid, fumaric acid, maleic acid, and their anhydrides, salts,
and mixtures thereof by weight, based on the weight of said emulsion
polymer;
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Appeal 2016-007099
Application 12/893,072
a polyol in the amount of from 0.5 to 15%, by weight, based on
the weight of said emulsion polymer; and
optionally, one or more second aqueous emulsion polymers;
independently optionally, one or more or polymers dispersed in an
aqueous medium; and, independently optionally, one or more
polymers soluble in the aqueous medium of said curable aqueous
composition;
wherein said curable aqueous composition comprises total
carboxylic acid-containing polymer comprising, as polymerized units,
from 0.5 to 9% carboxylic acid monomer by weight, based on the total
weight of said carboxylic acid-containing polymer.
In response to the After-Final Amendment filed October 13, 2014, the
Examiner issued an Advisory Action on November 5, 2014, indicating that
the Amendment was not entered because it does not place the application in
condition for allowance. Therein, the Examiner stated:
Applicant's claim amendments overcome one of 35 USC § 112,
2nd paragraph rejection of indefiniteness [for] by limiting the
ethylenically unsaturated dicarboxylic acid monomer to
those "selected from the group consisting essentially of crotonic
acid, itaconic acid, fumaric acid, maleic acid and their
anhydrides, salts, and mixtures thereof. The claim amendment
is improper because it underlines the “anhydrides, salts and
mixtures thereof’ which was formally in the claims of
6/24/2014. Applicant did not overcome the 35 USC §112, 2nd
paragraph rejection of lack of antecedent basis for the
term “total carboxylic acid containing polymer”. If the total
carboxylic acid containing polymer includes the salt form, an
amendment would be sufficient to overcome Michl.
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Appeal 2016-007099
Application 12/893,072
Advisory Action, pp. 1—2.
On page 7 of the Appeal Brief, Appellants state that they are prepared
to accept an examiner’s amendment to claim 1 (as well as to claim 4), with
proper underlining, as presented in their response (that was not entered), to
further specify the subject matter therein. Appellants also state that with
regard to the claim phrase “carboxylic acid containing polymer”, the final
paragraph of claim 1, and the corresponding section of claim 4, limit the
copolymerized carboxylic acid content of all of the carboxylic acid-
containing named species in the curable aqueous composition.
Based upon Appellants’ position to accept an examiner’s amendment
as discussed above, we affirm Rejection 1.
Rejection 2
Because of the indefmiteness of the claimed subject matter as
discussed above, we are unable to resolve the prior art rejection on the
merits. We thus reverse Rejection 2. However, we emphasize that our
reversal of these rejections is because the claims are indefinite; hence, a
decision has not been made based on the technical merits. See In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63
(CCPA 1962).
DECISION
Rejection 1 is affirmed.
Rejection 2 is reversed.
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Appeal 2016-007099
Application 12/893,072
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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