Ex Parte Heulings et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613718085 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 13/718,085 12/18/2012 Harry R. HEULINGS IV 71964 6028 21898 7590 01/03/2017 ROHM AND HAAS COMPANY c/o The Dow Chemical Company P.O. Box 1967 2040 Dow Center Midland, MI 48641 EXAMINER WALTERS JR, ROBERT S ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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 HARRY R. HEULINGS IV and LARRY N. HYMAN Appeal 2015-004811 Application 13/718,085 Technology Center 1700 Before CATHERINE Q. TIMM, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—8 of Application 13/718,085 under 35 U.S.C. § 103(a) as obvious. Final Act. (May 2, 2014). Appellants 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 Dow Global Technologies LLC and Rohm and Haas Company are identified as the real parties in interest. Br. 3. Appeal 2015-004811 Application 13/718,085 BACKGROUND The ’085 Application describes an aqueous tape joint compound. Spec. 1. Tape joint compound is a paste-like material commonly applied at the joint between two adjacent wallboard panels. Id. Tape joint compound is used to create a monolithic wall surface for subsequent painting. Id. Claim 1 is representative of the ’085 Application’s claims and is reproduced below from the Claims Appendix to Appellants’ Brief: 1. An aqueous tape joint compound comprising: an inorganic filler; from 0.5 to 4% by weight as solid polymer based on the weight of said aqueous joint compound of[ ]an emulsion polymer binder; cellulose ether thickener; water; and from 0.01 to 1.3% by weight based on the weight of said aqueous joint compound, water-soluble polymer or salts thereof, said water-soluble polymer selected from the group consisting of (a) polymer consisting essentially of, as polymerized units, from 50% to 100%, by weight based on the weight of said polymer, acrylic acid, and from 0% to 50%, by weight based on the weight of said polymer, second monoethylenically unsaturated acid monomer, (b) diisobutylene-maleic anhydride polymer, and (c) mixtures thereof; said water-soluble polymer having a weight average molecular weight of from 1500 to 75,000 and a calculated Tg of from 80 °C to 250 °C; and wherein said aqueous tape joint compound is substantially free from calcium sulfate hemihydrate. Br. 10 (some paragraphing and indentation added). 2 Appeal 2015-004811 Application 13/718,085 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1—6 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Podlas2 and Loth.3 Final Act. 4. 2. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Attard,4 Podlas, and Loth. Final Act. 5. DISCUSSION Rejection 1. The Examiner rejected claims 1—6 as unpatentable over the combination of Podlas and Loth. Final Act. 4. In so doing, the Examiner found that Podlas describes an aqueous joint compound and a method for making an aqueous joint compound. Id. at 4, 5. Podlas’s aqueous joint compound comprises an inorganic filler, an emulsion polymer binder in the amounts claimed, cellulose ether thickener, and is substantially free of calcium sulfate hemihydrate. Id. at 4. The Examiner further found that Podlas does not describe the inclusion of a water-soluble polyacrylic acid having the claimed molecular weight or Tg. Id. The Examiner also found that Loth describes similar joint compounds that include a polyacrylic acid salt as a dispersant. Id. As the Examiner found, however, Loth does not describe the molecular weight and Tg of the polyacrylic acid salt. Id. The Examiner found that a person having ordinary skill in the art would 2 US 5,102,462, issued April 7, 1992. 3 US 6,828,382 Bl, issued December 7, 2004. 4 US 5,336,318, issued August 9, 1994. 3 Appeal 2015-004811 Application 13/718,085 have arrived at the claimed Tg and molecular weight by adjusting the joint compound’s viscosity. Id. at 4—5. Appellants argue that this rejection should be reversed because, inter alia, the Examiner has not provided any reason why a person having ordinary skill in the art would want to optimize the viscosity of the joint compound. Br. 7—8. Appellants further argue that the Examiner has not provided any reason why, assuming a person having ordinary skill in the art would want to adjust the joint compound’s viscosity, the viscosity adjustment would be accomplished by changing the Tg and molecular weight of the water-soluble polyacrylic acid. Id. at 8. We agree with the Examiner that, at the time of the invention, a person having ordinary skill in the art would have known that viscosity is a critical feature of the joint compounds and that it, therefore, should be optimized. Answer 5. Thus, we are not persuaded by Appellants’ first argument. We, however, are persuaded by Appellants’ second argument. Appellants argue that the viscosity of the joint compound can be adjusted in many different ways. Br. 8. The Examiner agrees. Answer 6. Nevertheless, the Examiner does not present any persuasive evidence or arguments why a person having ordinary skill in the art would have chosen to adjust the joint compound’s viscosity by adjusting the weight average molecular weight and Tg of the water-soluble polyacrylic acid as opposed to any other of the myriad of properties of the various components that affect the joint compound’s viscosity. See id. at 6-7. In the absence of such an explanation, we conclude that the Examiner’s analysis is the result of an unacceptable use of hindsight. 4 Appeal 2015-004811 Application 13/718,085 We, therefore, reverse the rejection of claims 1—6 as unpatentable over the combination of Podlas and Loth. Rejection 2. The Examiner rejected claims 7 and 8 as unpatentable over the combination of Attard, Podlas, and Loth. Final Act. 5. Appellants argue that this rejection should be reversed for the same reasons they have presented with respect to the rejection of claims 1—6 as unpatentable over the combination of Podlas and Loth. Br. 8—9. As discussed above, we have reversed the rejection of claims 1—6. We, therefore, also reverse the rejection of claims 7 and 8. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1—8 of the ’085 Application. REVERSED 5 Copy with citationCopy as parenthetical citation