Ex Parte Hermes et alDownload PDFPatent Trial and Appeal BoardMay 24, 201612956001 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/956,001 11/30/2010 Ann R. HERMES 21898 7590 05/26/2016 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. 69485 8592 EXAMINER CHRISTENSEN, CHELSEA MULLANEY ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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 ANN R. HERMES, KIMBERLY B. KOSTO, MARY ANNE R. MATTHEWS, and DONALD C. SCHALL Appeal2015-000036 Application 12/956,001 Technology Center 1700 Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-6. We have jurisdiction. 35 U.S.C. § 6(b ). We AFFIRM. 1 According to the Appellants, the real party in interest is Rohm and Haas Company. Appeal Br. 2. We also note that the attorney for Appellants is with The Dow Chemical Company. Id. at 11. Appeal2015-000036 Application 12/956,001 STATEMENT OF CASE Appellants describe the present invention as a fast dry paint binder which could be used for traffic markings. Spec. 1 :6-12. Claims 1---6 are on appeal. Claims 7-9 were previously withdrawn from consideration. Final Act. 2. Claim 1 is the only independent claim on appeal and is illustrative of the claimed subject matter. Claim 1 is reproduced below with added line breaks, spacing, and bracketed material to enhance readability: 1. A fast dry binder composition comprising: one or more anionically stabilized emulsion polymer that is stabilized [ 1 J with an anionic surfactant, [2J by including in the emulsion polymer from 0.1 to 5.0 wt.%, based on total polymerized units, of a polymerized functional group that is anionic when deprotonated, [3 J or their combination, the emulsion polymer having [A J a weight average particle size of from 100 nanometers (nm) to 165 nm, [BJ one or more polyamine, [CJ one or more volatile base and [DJ one or more filler, extender and/or pigment, wherein the compositions have a percent pigment volume concentration (%PVC) of from 63 to 80. Appeal Br. 2 12 (Claims Appendix) (paragraphing and indentation added). 2 In this decision, we refer to the Final Office Action appealed from, filed January 15, 2014 ("Final Act."), the Appeal Brief filed June 13, 2014 ("Appeal Br."), and the Examiner's Answer filed July 17, 2014 ("Ans."). 2 Appeal2015-000036 Application 12/956,001 REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Clinnin et al. (hereinafter "Clinnin") Landy et al. (hereinafter "Landy") us 5,340,870 us 5,527,853 REJECTIONS The Examiner made the following rejections: Aug. 23, 1994 June 18, 1996 Rejection 1. The Examiner rejected claims 1---6 under pre-AIA 35 U.S.C. § 112, i-f 2 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Ans. 3. Rejection 2. The Examiner rejected claim 5 under pre-AIA 35 U.S.C. § 112, i-f 4 as being improper dependent form for failing for further limit the subject matter of the claim upon which it depends or for failing to include all the limitations of the claim upon which it depends. Id. at 4. Rejection 3. The Examiner rejected claims 1---6 under 35 U.S.C. § 103 as unpatentable over Clinnin in view of Landy as evidenced by the Hermes Declaration II submitted 10/9/13. Id. at 5. ANALYSIS Rejection 1. The Examiner rejects claims 1---6 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventors regard as the invention. Final Act. 2-3. In particular, the Examiner states that the phrase "or their combination" within the longer phrase "that is stabilized with an anionic surfactant, by including in the 3 Appeal2015-000036 Application 12/956,001 emulsion polymer from 0.1---0.5 wt% based on total polymerized units, of a polymerized functional group that is anionic when protonated, or their combination, the emulsion polymer" is unclear. Id. We agree with the Appellants that the "or their combination" language refers to one of three possibilities as to how the recited emulsion polymer is stabilized. Appeal Br. 4--5. It may be stabilized [ 1] with an anionic surfactant, [2] by including in the emulsion polymer from 0.1 to 5.0 wt.%, based on total polymerized units, of a polymerized functional group that is anionic when deprotonated, or [3] by a combination of [1] and [2]. This understanding of claim 1 is consistent with the Specification's explanation of how the emulsion polymer may be stabilized. Spec. 5:27-31. Although the claim's wording may be awkward, we do not discern any reasonable way the phrase "or their combination" can be differently understood in the context of claim 1, and we therefore do not agree with the Examiner that the phrase is unclear. Thus, we do not sustain the Examiner's indefiniteness rejection. Rejection 2. The Examiner rejects claim 5 as an improper dependent claim because it is broader than claim 4, the claim it depends on. Claim 4 recites "[ t ]he binder composition as claimed in claim 1, wherein the anionically stabilized emulsion polymer has a weight average particle size of from 110 nm to 165 nm." Appeal Br. 12 (Claims Appendix) (emphasis added). Claim 5 recites "[t ]he binder composition as claimed in claim 4, wherein the anionically stabilized emulsion polymer has a weight average particle size of from 100 nm to 160nm." Id. (emphasis added). Thus, the Examiner properly rejected claim 5 because its weight average particle size range includes sizes from 100 nm to 110 nm not included by claim 4. 4 Appeal2015-000036 Application 12/956,001 Appellants do not dispute this point. Appeal Br. 5. We therefore affirm the Examiner's rejection of claim 5 based upon 35 U.S.C. § 112, i-f 4. Rejection 3. The Examiner rejects claims 1---6 as obvious over Clinnin in view of Landy as evidenced by the Hermes Declaration II submitted 10/9/13. Appellants do not separately argue claims 2---6. We therefore limit our discussion to claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013). We sustain the Examiner's§ 103 rejection based on the findings of fact, conclusions of law, and rebuttals to arguments well-expressed by the Examiner in the Final Action and in the Answer. We note that the Examiner's findings and rebuttals provided by the Examiner's Response to Argument (Ans. 7-8) stand unchallenged because Appellants have not filed a reply brief. We provide additional comments below for emphasis. The Examiner correctly explains that Clinnin is directed to rapid dry traffic marking paint and discloses nearly all elements of claim 1. Final Act. 4--5. Clinnin, for example, teaches pigment value concentration (PVC) of 60% to 75% and preferably between about 68% and 75%. Id.; Clinnin 4:32- 43. This substantially overlaps claim 1 's recited range of 63% to 80%. The Examiner acknowledges, however, that Clinnin does not disclose a polyamine in its composition. Final Act. 5. Landy is also directed to rapid dry traffic marking paint, and it includes a polyamine. Final Act 5. Landy teaches that its added polyamine (polyOX-EMA) "produces early washout resistance with acceptable scrub resistance properties." Landy 9:21--44. Landy teaches that its paint including the polyamine dried in 10 minutes as compared to 20 minutes for the control paint. Id. Use of Landy's polyamine would have been expected to predictably improve Clinnin in the same way it improved the paint of 5 Appeal2015-000036 Application 12/956,001 Landy. We therefore agree with the Examiner that it would have been obvious to add the polyamine of Landy to the paint of Clinnin in order to gain faster dry times and improved scrub resistance properties. Cf KSR Int'!, Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants argue that there would be no reasonable expectation of success in combining any part of Landy into Clinnin because Clinnin is not a curable composition and is a solution polymer rather than an emulsion polymer. Appeal Br. 5---6. Similarly, Appellants argue that combining Landy's polyamine with Clinnin would require "chang[ing] the principle of operation of Clinnin from one of using solution polymers to one of using an emulsion polymer .... " Appeal Br. 7-8. Appellants' position is not consistent with a preponderance of the evidence provided by Clinnin. Clinnin teaches use of "an emulsion formed of a water-solubilized support polymer and a hydrophobic emulsion polymerized polymer." Clinnin 2:7-9; see also Clinnin 14: 13-15 (indicating that Clinnin's composition includes both anionic and non-ionic surfactants); see also October 9, 2013, Declaration of Dr. Ann Hermes (stating that Clinnin makes an emulsion polymer). Clinnin also teaches use of a support polymer as a surfactant. Clinnin 3: 63---6 7. Adding Landy' s polyamine to Clinnin would not require re-engineering it to avoid a solution polymer as Appellants suggest (Appeal Br. 6) because Clinnin already teaches that its composition, like that of Landy (1 :40-49), is an emulsion polymer. See also Ans. 7. Appellants thus do not identify reversible error. Appellants also emphasize that a person of ordinary skill would not have predictably modified Clinnin's known curable coating composition by increasing percent PVC. Appeal Br. 6. Clinnin, however, does not need to 6 Appeal2015-000036 Application 12/956,001 be modified; it already teaches a range of percent PVC substantially overlapping the range recited in claim 1. Ans. 8. Appellants also argue that claim 1 is unobvious because it provides unexpectedly improved dry time and formulation stability. Appeal Br. 8. In particular, the February 27, 2013, affidavit of Dr. Ann Hermes states at page 2 that Dr. Hermes "[ s ]urprisingly" discovered that raising percent PVC of paint slows dry time for the quick setting binder of the present invention which is said to be shown by examples in the Specification. This argument fails to establish Examiner error. The Examiner is correct that Appellants' Specification examples are not reasonably commensurate with claim scope. Ans. 8. Claim 1 broadly encompasses numerous emulsion polymers, polyamines, and other ingredients whereas the examples are limited to a particular formulation. Appellants' examples do not establish unexpected results across the broad range encompassed by claim 1. See, e.g., In re Greenfield, 571 F .2d 1185, 1189 ( CCP A 197 8) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."') We therefore affirm the Examiner's obviousness rejection of claims 1---6. DECISION For the above reasons: we reverse the Examiner's rejection of claims 1---6 under pre-AIA 35 U.S.C. § 112, i-f 2 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention; we affirm the Examiner's rejection of 7 Appeal2015-000036 Application 12/956,001 claim 5 under pre-AIA 35 U.S.C. § 112, il 4 as being in improper dependent form; and we affirm the Examiner's rejection of claims 1-6 under 35 U.S.C. § 103 as unpatentable over Clinnin in view of Landy as evidenced by the Hermes Declaration II submitted 10/9/13. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation