Ex Parte Mackulin et al

Patent Trial and Appeal Board

May 22, 2018

13804193 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/804, 193 03/14/2013 Peter J. MACKULIN
59272 7590 05/24/2018
SWIMC,LLC
101 PROSPECT A VENUE N.W.
1100 MIDLAND BLDG. - LEGAL DEPARTMENT
CLEVELAND, OH 44115-1075
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.
17547 3215
EXAMINER
NGUYEN, HAS
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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):
LEGAL_IP@SHERWIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. MACKULIN and RANDOLPH B. KRAFCIK
Appeal2017-008148
Application 13/804, 193
Technology Center 1700
Before TERRY J. OWENS, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-5, 9, 12, 13, 18-20, 22, and
27. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, The Sherwin-Williams Company, which,
according to the Appeal Brief, is the real party in interest. Appeal Brief filed
October 7, 2016 ("App. Br."), 2.
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Application 13/804,193
STATEMENT OF THE CASE
Appellant claims an aqueous coating composition and a stratifying
latex resin. Independent claims 1 and 27 illustrate the subject matter on
appeal and are reproduced below:
1. An aqueous coating composition comprising:
(a) a base latex resin; and
(b) a stratifying latex resin comprising:
( 1) hybrid metal oxide latex particles wherein the
hybrid particles are the polymerization reaction
product of a two-stage polymer, having
a first stage soft polymer comprising:
(i) about 2% to about 24% by weight based
on the total monomer weight of a fluorine
containing monomer; and
(ii) about 2% to about 6% by weight based
on the total monomer weight of a monomer having
silane functionality; and
a second stage hard polymer comprising
about 1 % to about 5% by weight based on the total
monomer weight of a long chain acrylate monomer
having an alkyl length of at least 12; and
wherein the metal oxide nanoparticle is
embedded within the first stage soft polymer
hybrid particles; and
(2) at least one monomer having latent
crosslinking functionality selected from the group
consisting of
methacryloyloxypropyltrimethoxysilane,
methacryloyloxypropyltriethoxysilane
methacryloyloxypropyltripropoxysilane,
vinyltrimethoxysilane, vinyltriethoxysilane,
vinylisopropoxysilane, gamma-aminotriethoxy
silane, cycloaliphatic epoxide trimethoxy silane,
and gammamethacryloxy propyl trimethoxy silane.
27. A stratifying latex resin comprising hybrid metal oxide
latex particles
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wherein the hybrid particles are the polymerization
reaction product of at least one or more copolymerizable
monoethylenically unsaturated monomers,
wherein the monoethylenically unsaturated monomers
comprise at least one low surface energy driver monomer
selected from the group consisting of (i) a fluorine containing
monomer; and (ii) a silane-containing monomer; and
wherein the polymerization reaction is in the presence of
a metal oxide nanoparticle; and
wherein the metal oxide nanoparticle is embedded within
the hybrid particles.
App. Br. 48, 50 (Claims Appendix) (paragraphing and indentation
added).
The Examiner sets forth the following rejections in the Final Office
Action entered May 16, 2016 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered March 13, 2017 ("Ans.")2 :
I. Claims 1-5, 9, 12, 13, 18-20, and 22 under 35 U.S.C. § 112,
first paragraph for failing to comply with the written description
requirement;
II. Claim 27 under 35 U.S.C. § 102(b) as anticipated by Shin
(Preparation of silica/peifluoroalkyl methacrylate polymer
inorganic/organic particles in supercritical carbon dioxide, 288 COLLOID.
POLYM. SCI. 63-72 (2010)).
III. Claims 1-5, 9, 12, 22, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Ando (US 5,668,194, issued September 16, 1997) in view
of Su-Bok (KR 10-2005-0043160, published May 11, 2005);
2 In the Answer, the Examiner withdrew the rejection of claims 1-5, 9, 12,
13, 18-20, and 22 under 35 U.S.C. § 112, second paragraph, as being
indefinite. Compare Final Act. 7-10, with Ans. 14.
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IV. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Ando
in view of Su-Bok and Ishida (US 2004/017 6554 Al, published September
9,2004);and
V. Claims 18-20 under under 35 U.S.C. § 103(a) as unpatentable
over Ando in view of Su-Bok and Overbeek (US 5,962,571, issued October
5, 1999).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
claims 1-5, 9, 12, 13, 18-20, and 22 under 35 U.S.C. § 112, first paragraph,
and rejection of claim 27 under 35 U.S.C. § 102(b ), for the reasons set forth
in the Final Office Action, the Answer, and below, and reverse the
Examiner's rejections of claims 1-5, 9, 12, 13, 18-20, 22, and 27 under
35 U.S.C. § 103(a), for the reasons set forth below.
Rejection I
The Examiner finds that the recitation of "a second stage hard
polymer comprising about 1 % to about 5% by weight based on the total
monomer weight of a long chain acrylate monomer having an alkyl length of
at least 12," which was added to claim 1 in an amendment filed December 8,
2014, is "not supported by the original disclosure 3." Final Act. 4--5. The
3 In addition to rejecting claims 1-5, 9, 12, 13, 18-20, and 22 under
35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement due to the subject matter added to claim 1 in the
December 8, 2014 amendment, the Examiner objects to the amendment
"because it introduces new matter into the disclosure." Final Act. 2--4.
However, Appellant did not amend the Specification, abstract, or drawings
in the December 8, 2014 amendment, and the Examiner's objection for
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Examiner finds that paragraphs 5, 7, 23, 25, 30, and 31, and claims 1, 11, 16
and 17, of the Specification as originally filed would convey to one of
ordinary skill in the art that Appellant's invention "is a core-shell polymer
layer arrangement where the soft-shell core layer is obtained by
polymerizing [a] fluorine containing monomer, a silane containing
monomer, and the long chain acrylate monomer, and the hard-shell layer is a
polymer excluding the long chain acrylate monomer." Final Act. 5-7.
Appellant argues that paragraph 23 of the Specification as originally
filed supports the claim language at issue by disclosing that a long chain
acrylate monomer having an alkyl length of at least 12 is a useful driver in
the stratifying resin of Appellant's invention, and by disclosing that in
several embodiments of the invention, the stratifying resin comprises about
1 % to about 5% by weight based on the total monomer weight of a long
chain acrylate monomer having an alkyl length of at least 12. Br. 11.
Appellant further refers to the language of original claim 17, which recites
that "the hard segment comprises the polymerization reaction product of one
or more copolymerizable monoethylenically unsaturated monomers
excluding fluorine containing monomers and long chain acrylate monomers
having an alkyl length of at least 12." Br. 11-12. Appellant contends that
one of ordinary skill in the art would conclude from this language, by logical
necessity, that original claims 1, 12, and 13, from which original claim 17
depends, include the long chain acrylate monomers, "[ o ]therwise the
monomers could not be excluded in [original] claim 17." Br. 12-14.
As Appellant correctly points out, paragraph 23 of the Specification as
introduction of new matter into the disclosure is therefore improper.
M.P.E.P. § 2163.06(1).
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originally filed does disclose that a long chain acrylate monomer having an
alkyl length of at least twelve is a useful driver in the stratifying latex resin
of Appellant's invention, and indicates that in one embodiment of the
invention, the stratifying latex resin comprises about 1 % to about 5% by
weight based on the total monomer weight of a long chain acrylate monomer
having an alkyl length of at least 12. However, Appellant does not direct us
to any disclosure in the Specification describing inclusion of this amount of
such a long chain acrylate monomer in a second stage hard polymer of a
two-stage polymer, as recited in claim 1. Br. 11-14.
Contrary to Appellant's argument, the explicit recitation in original
claim 17 of excluding long chain acrylate monomers having an alkyl length
of at least 12 from the recited hard segment of the two-stage polymer of
original claim 12 does not mean that original claims 1, 12, and 13, from
which original claim 1 7 depends, provide written description support for the
inclusion of such long chain acrylate monomers within the hard segment of a
two-stage polymer, because these original claims do not include any
recitation of a long chain acrylate monomer in the hard segment of a two-
stage polymer.
Accordingly, on this record, Appellant does not direct us to any
disclosure in the Specification as originally filed demonstrating that the
inventors were in possession of a second stage hard polymer comprising
about 1 % to about 5% by weight based on the total monomer weight of a
long chain acrylate monomer having an alkyl length of at least 12 at the time
of filing. Br. 11-14. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64
(Fed. Cir. 1991) (To fulfill the written description requirement "the applicant
must ... convey with reasonable clarity to those skilled in the art that, as of
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the filing date sought, he or she was in possession of the invention. The
invention is, for purposes of the 'written description' inquiry, whatever is
now claimed.")
We accordingly sustain the Examiner's rejection of 1-5, 9, 12, 13,
18-20, and 22 under 35 U.S.C. § 112, first paragraph for failing to comply
with the written description requirement.
Rejection II
The Examiner finds that Shin's disclosure of silica/perfluoroalkyl
methacrylate polymer (PHDFDMA) core/shell particles prepared by
modifying the surface of silica nanoparticles with 3-methacryloxypropyl
trimethoxysilane monomers ( silane-containing monomers), and
polymerizing heptadecafluorodecyl methacrylate monomers (HDFDMA)
(fluorine-containing monomers) onto the surface of the silane-treated silica
nanoparticles, meets the limitations of claim 27. Final Act. 10; Shin pgs. 63,
66, 68---69.
Appellant does not directly dispute the Examiner's finding that the
silica nanoparticles disclosed in Shin correspond to the metal oxide
nanoparticles recited in claim 27. Compare Final Act. 10, with Br. 16-17.
Rather, Appellant argues that Shin discloses preparing silica/perfluoroalkyl
methacrylate polymer particles using various types of silica in a process that
involves polymerization in supercritical carbon dioxide and soxhlet
extraction, and does "not use a fluorine containing monomer or a silane
containing monomer and conduct the polymerization reaction in the
presence of a metal oxide nanoparticle." Br. 15-16. Appellant asserts that
the reaction conditions for Shin and the present invention are dramatically
different, and the resulting products have dramatically different structures
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and compositions. Br. 1 7.
However, contrary to Appellant's arguments, the process disclosed in
Shin for preparing silica/PHDFDMA core/shell particles utilizes fluorine
containing monomers (heptadecafluorodecyl methacrylate monomers) and
silane containing monomers (3-methacryloxypropyl trimethoxysilane
monomers), and involves polymerization in the presence of metal oxide
(silica) nanoparticles. Shin pgs. 63, 66, 68---69. The silica/PHDFDMA
core/shell particles disclosed in Shin are therefore the product of a
polymerization reaction of fluorine and silane-containing monomers
conducted in the presence of a metal oxide nanopartide, as recited in claim
2 7. Regardless of any differences in the process conditions utilized in Shin
for preparing the silica/perfluoroalkyl methacrylate polymer (PHDFDMA)
core/shell particles, and the process used by Appellant to prepare the hybrid
metal oxide latex particles recited in claim 27, the PHDFDMA core/shell
particles disclosed in Shin nonetheless meet the structural requirements of
claim 2 7. Because Appellant's conclusory arguments do not identify any
specific structural distinction between the silica/perfluoroalkyl methacrylate
polymer (PHDFDMA) core/shell particles disclosed in Shin and the hybrid
metal oxide latex particles recited in claim 2 7, Appellant's arguments are
unpersuasive of reversible error in the Examiner's rejection.
Appellant also argues that "Shin discloses that some silica particles
are useful and some are not useful. Clearly, Shin cannot disclose the present
invention when the majority of Shin's embodiments are taught to be non-
functional." Br. 17.
However, any disclosure in Shin of silica particles that are not
"useful" in Shin's process for preparing silica/perfluoroalkyl methacrylate
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polymer (PHDFDMA) core/shell particles does not negate Shin's explicit
disclosure of using silica nanoparticles to successfully produce
silica/PHDFDMA core/shell particles. Appellant's arguments therefore do
not identify reversible error in the Examiner's rejection.
We accordingly sustain the Examiner's rejection of claim 27 under
35 U.S.C. § 102(b) as anticipated by Shin.
Rejections III-V
We need consider only independent claims 1 and 27, which both
require metal oxide nanoparticles to be embedded within hybrid metal oxide
latex particles.
The Examiner finds that Ando discloses all of the features of claims 1
and 27 except teaching a polymerization reaction conducted in the presence
of a metal oxide nanoparticle as recited in claim 27, and disclosing metal
oxide nanoparticles embedded within hybrid particles, as recited in claims 1
and 27. Final Act. 11-12. The Examiner relies on Su-Bok to address these
features missing from Ando, and finds that Su-Bok discloses a composite
material comprising a core/shell fluoropolymer particle having a
fluoropolymer shell and a titanium oxide particle core, which the Examiner
finds corresponds to the stratifying latex resin recited in claims 1 and 27.
Final Act. 12-13. The Examiner finds that Su-Bok discloses that the
fluoropolymer imparts the core/shell particles with low surface energy/anti-
stain properties and the inorganic particle imparts anti-reflective/low
refractive properties. Final Act. 13.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant's invention to embed a
titanium dioxide particle as disclosed in Su-Bok in the core of the core/shell
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particles disclosed in Ando to impart anti-reflective/low refractive properties
to the particles. Final Act. 13; Ans. 21-22.
However, Ando discloses a weather-resistant, durable coating
composition comprising core/shell particles "for application to interior and
exterior sidings, automotive shell plates, home electrical appliance housings,
and various plastic substrates." Col. 1, 11. 8-12; col. 1, 1. 53---col. 2, 1. 32.
Su-Bok discloses a composite material applied to a liquid crystal flat panel
display to protect against contamination, fingerprints, water, and oil, and to
prevent reflection of external light. Abstract; pgs. 2-3, 8. Su-Bok discloses
that the composite material comprises core/shell particles having inorganic
particles, such as titanium oxide, in the core. Pgs. 3--4. Su-Bok discloses
that the inorganic particles impart low surface energy and low refractive
energy to the composite material, preventing reflection of external light that
impinges on a flat panel display coated with the material. Pgs. 2--4, 8.
The Examiner does not provide sufficient reasoning or evidence to
establish that one of ordinary skill in the art would have found the anti-
reflective properties imparted by the inorganic titanium oxide particles
disclosed in Su-Bok useful for the weather-resistant, durable coating
composition disclosed in Ando. Although the Examiner asserts that Ando
and Su-Bok are both "used in the same field of weather resistant, anti-
fouling, and anti-stain coatings" (Ans. 21), we find no disclosure in Su-Bok
indicating that the composite material described in the reference for coating
flat panel liquid crystal displays is weather resistant. Nor do we find any
disclosure in Ando indicating that the weather-resistant coating composition
described in the reference is anti-fouling and anti-staining. Consequently,
the Examiner does not establish that one of ordinary skill in the art would
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have had an apparent reason to embed the titanium oxide particles disclosed
in Su-Bok within the core/shell particles disclosed in Ando, as recited in
claims 1 and 17. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(Establishing a prima facie case of obviousness of an invention comprising a
combination of known elements requires an "apparent reason to combine the
known elements in the fashion claimed.")
Accordingly, consistent with Appellant's arguments, we do not
sustain the Examiner's rejections of claims 1-5, 9, 12, 13, 18-20, 22, and 27
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1-5, 9, 12, 13, 18-20,
and 22 under 35 U.S.C. § 112, first paragraph, and rejection of claim 27
under 35 U.S.C. § 102(b), and reverse the Examiner's rejections of claims
1-5, 9, 12, 13, 18-20, 22, and 27 under 35 U.S.C. § 103(a).
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
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