Ex Parte Sobczak

Patent Trial and Appeal Board

Aug 15, 2016

13333287 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/333,287 12/21/2011 Jeffrey J. SOBCZAK
21898 7590 08/17/2016
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.
70662 7808
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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 JEFFREY J. SOBCZAK
Appeal2015-003218
Application 13/333,287
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our decision below, we refer to the Specification dated December 21,
2011 (Spec.), the Final Office Action appealed from mailed April 17, 2014
(Final Act.), the Appeal Brief filed September 17, 2014 (Appeal Br.), and
the Examiner's Answer mailed October 24, 2014 (Ans.).
2 Appellant identifies the real party in interest as Rohm and Haas Company,
the owner of the instant application. Appeal Br. 2.
Appeal2015-003218
Application 13/333,287
STATEMENT OF CASE
The claims are directed to an aqueous coating composition "suitable
for use in decorative and/or protective coatings for various substrates,
particularly for clear (i.e., unpigmented) sealers for cementitious substrates
such as for example, concrete driveway sealers, and pigmented coatings for
cementious substrates, such as, for example, patio paints and garage floor
paints .... " Spec. 1, 11. 13-18. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An aqueous coating composition comprising:
a first emulsion polymer comprising, as copolymerized
units, 5% to 50% styrene monomer, by weight based on the
weight of said first emulsion polymer, wherein the glass
transition temperature (Tg) of said first emulsion polymer is from
55°C to 110°C; and
from 20% to 35%, by weight based on the weight of said
first emulsion polymer, coalescent selected from the group
consisting of hexaoxatricosane, C4 alkyl glutarates, C4 alkyl
succinates, C4 alkyl adipates, and mixtures thereof.
Claims Appendix at Appeal Br. 10.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Fu. 3 Final Act. 3.
B. Claim 3 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Fu in view of Obst.4 Id. at 5.
3 Fu et al., US 2009/0318596 Al, published December 24, 2009 (hereinafter
"Fu").
4 Obst et al., US 2007/0191522 Al, published August 16, 2007 (hereinafter
"Obst").
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Appeal2015-003218
Application 13/333,287
OPINION
The Examiner rejects claim 1 (and claims depending therefrom) under
35 U.S.C. § 103(a) as being unpatentable over Fu. Final Act. 3. The
Examiner finds that Fu teaches a styrene-acrylic copolymer that has a glass
transition temperature up to 90QC and a coalescent that comprises 4 to 30
wt% of the aqueous composition. Id. The Examiner explains that Fu
teaches coalescents, "includ[ing] dibutyl adipate and diethyl adipate (Table
4) (which reads on an C4 alkyl adipate)." Id. The Examiner also explains
that while "Fu does not explicitly teach using styrene as the vinyl copolymer
[0033]," it would have been obvious to one skilled in the art "to pick and
choose styrene because FU teaches the vinyl copolymer can be styrene and
its proportions therein." Id. at 3--4 (emphasis omitted). The Examiner
rationalizes that even though "dibutyl adipate [may] be a less preferred
embodiment that has a negative hardness development ... FU provides the
option to utilize dibutyl adipate in the composition which would still
function as a coalescent; therefore the present claims are met." Ans. 5.
Appellant argues that Fu fails to render obvious the coalescent taught
by the invention. Appellant begins by arguing that the Examiner's finding
that diethyl adipate reads on the C4 alkyl adipate of the instant claims is in
error. Appeal Br. 4--5. Specifically, Appellant urges that the C4 alkyl
portion of the adipate is "an alkyl group having 4 carbon atoms" and the
Specification expressly defines C4 alkyl to mean "butyl group isomers." Id.
at 5. Because "[e]thyl groups have 2 carbon atoms, not 4 carbon atoms,"
diethyl adipate falls outside the scope of the claims. Id.
We agree with Appellant. The claims require C4 alkyl groups which
the Specification expressly defines. According to the Specification, "[b ]y
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Application 13/333,287
'C4 alkyl' herein is meant any of the butyl group isomers such as, for
example, n-butyl, s-butyl, i-butyl, t-butyl, and mixtures thereof." Spec. 6.
Based on this definition-as well as the common understanding of the
term-the Examiner's finding that diethyl adipate reads on C4 alkyl adipate
1s m error.
Appellant next argues that any modification of Fu to use dibutyl
adipate as the coalescent would render Fu inoperative for its intended
purpose and therefore teaches away. Appeal Br. 6. Appellant notes that the
comparative example of Fu, that uses dibutyl adipate, yields "40% less 1 day
hardness development results and 85% less 7 day hardness development
even when compared to diethyl adipate." Id. Therefore, "the selection of
dibutyl adipate in Fu would destroy the early hardness development therein
and render Fu inoperative for its intended purpose of achieving early
development of hardness and toughness." Id.
Again, we agree with Appellant. "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). However, when the prior art teaches away from a
combination, that combination is more likely to be nonobvious. See id. To
teach away, a reference discourages one of ordinary skill in the art from
following the path set out in the reference, or leads that person in a direction
divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Various types of teachings may support a finding of
"teaching away," including known disadvantages in old devices that would
naturally discourage the search for new inventions, teachings leaving the
impression that the product would not have the property sought by the
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Appeal2015-003218
Application 13/333,287
applicant, and reference combinations that would produce a seemingly
inoperative device. Id. (emphasis added)
Here, Fu teaches that a coalescent having a boiling point of less than
300 QC is required to achieve early development of toughness and hardness.
Fu i-fi-12, 8, 9, 31, 65 and 110. In Table 4 of Fu, Fu compares the I-day and
7-day hardness development of polymer compositions having both a
coalescent boiling point less than 300 QC and greater than 300 QC. Id. i-f l 09
(Table 4). As Fu explains,
[i]t can be seen that the early hardness development for the hard-
soft blends is critically dependent on the coalescent normal
boiling point. Early hardness development is greatly improved
for all of the coalescents with normal boiling point below 300°
C., and, generally, optimum hardness is obtained more readily
for the lower boiling point coalescents. However, coalescents
with normal boiling point greater than 300° C. show essentially
no improvement in hardness compared to films of the hard
copolymer alone.
Id. i-f 110 (emphasis added). Thus; Fu plainly discourages use of a
coalescent having a boiling point greater than 300 QC as it would not achieve
early hardness development. The Examiner however relies upon Fu's
comparative disclosure of the coalescent dibutyl adipate to read on the
coalescent of claim 1-i.e., a C4 alkyl adipate. 5 Final Act. 3. But, dibutyl
adipate possesses a boiling point of 305 QC, greater than the required boiling
5 The claims recite several species of coalescent including hexaoxatricosane,
C4 alkyl glutarates, C4 alkyl succinates, and C4 alkyl adipates. Claims
Appendix at Appeal Br. 10 (Claim 1 ). The Examiner, however, relies solely
upon the disclosure of C4 alkyl adipate and the presence dibutyl adipate in
making his rejection. Final Act. 3. The Examiner does not make findings
with respect to other the other claimed species, for example C4 alkyl
succinate, and the disclosure of Fu.
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Application 13/333,287
point of Fu. Fu if 109 (Table 4). And, as shown in Figure 4, even a
coalescent having boiling point slightly above 300 QC (see dibutyl adipate
having a boiling point of 305 QC) yields little improvement in early hardness
by comparison. Id. Based on the teachings of Fu, we find that the skilled
artisan would have been discouraged from using a coalescent having a
boiling point greater than 3 00 QC. On this record, we cannot sustain the
Examiner's rejection of claims 1-5.
CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Fu.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5 is
reversed.
REVERSED
6