Ex Parte MACKULIN et alDownload PDFPatent Trial and Appeal BoardMay 22, 201813804193 (P.T.A.B. May. 22, 2018) Copy Citation 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. Appeal2017-008148 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 2 Appeal2017-008148 Application 13/804,193 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. 3 Appeal2017-008148 Application 13/804,193 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 4 Appeal2017-008148 Application 13/804,193 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). 5 Appeal2017-008148 Application 13/804,193 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 6 Appeal2017-008148 Application 13/804,193 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 7 Appeal2017-008148 Application 13/804,193 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 8 Appeal2017-008148 Application 13/804,193 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 9 Appeal2017-008148 Application 13/804,193 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 10 Appeal2017-008148 Application 13/804,193 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 11 Copy with citationCopy as parenthetical citation