14369026 (P.T.A.B. Jan. 8, 2019)

Ex Parte Tomlinson et al

Patent Trial and Appeal BoardJan 8, 2019

14369026 (P.T.A.B. Jan. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/369,026 06/26/2014 156155 7590 01/10/2019 Dow DuPont c/o E.I. du Pont de Nemours and Company P.O. Box 2915 974 Centre Road, Chestnut Run Plaza 721-2342 Wilmington, DE 19805 FIRST NAMED INVENTOR Ian A. Tomlinson 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. 71101-US-PCT 6587 EXAMINER ZEMEL, IRINA SOPJIA ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 01/10/2019 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): PTO-Legal.PRC@dupont.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IAN A. TOMLINSON and NICOLE L. WAGNER Appeal 2018-003 604 Application 14/369,026 Technology Center 1700 Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-5. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Appeal2018-003604 Application 14/369,026 Independent claim 1 is generally illustrative of the subject matter on appeal and is reproduced below (formatting added): 1. A composition comprising microcapsules, wherein said microcapsules comprise a core and an outer shell, wherein said core comprises a water-insoluble biocide that is a water-insoluble derivative of 4-isothiazolin-3-one, and wherein said outer shell consists essentially of one or more amino resin that is a reaction product of reactants consisting of: (a) one or more monomer polyamine, (b) one or more aldehyde, and ( c) one or more compound ( c) selected from the group consisting of additive diamines, additive diols, additive amino-alcohols, and mixtures thereof. Appellant1 (App. Br. 7), requests review of the following rejections from the Final Office Action: I. Claims 1-3 and 5 rejected under 35 U.S.C. Â§ 102(b) as anticipated by Igari et al. (US 6,486,099 B2, issued November 26, 2002) (hereinafter "Igari"). II. Claim 4 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Igari. For Rejection I, Appellant does not argue claims separately. Accordingly, we select claim 1 as representative of the subject matter before us for review on appeal for this rejection and decide the appeal as to claims 1-3 and 5 based on the arguments made by Appellant in support of the 1 Dow Global Technologies LLC is the Applicant/ Appellant and is also identified as the real party in interest. App. Br. 4. 2 Appeal2018-003604 Application 14/369,026 patentability of claim 1. We address the rejection of claim 4 (Rejection II) separately. OPINION After review of the respective positions provided by Appellant and the Examiner, we affirm the Examiner's rejections of claims 1-5 under 35 U.S.C. Â§Â§ 102(b) and 103(a) for the reasons presented by the Examiner. We add the following for emphasis. Anticipation Rejection of Claim 1 Independent claim 1 is directed to a composition comprising microcapsules having an outer shell consisting essentially of one or more amino resins that are reaction products of reactants consisting of (a) one or more monomer polyamine, (b) one or more aldehyde, and ( c) one or more compounds selected from the group consisting of additive diamines, additive diols, additive amino-alcohols, and mixtures thereof. We refer to the Examiner's Non-Final Office Action of November 15, 2016 for a statement of the rejection. Non-Final Act. 2. In addressing the rejection, Appellant contends that Igari does not disclose the composition of a shell that consists essentially of an amino resin or additives as instantly claimed because Igari requires a surfactant as an essential part of the coating. App. Br. 7. According to Appellant, the claimed invention does not require a surfactant coating. Id. Appellant also argues that Igari requires two coating layers. Id. We are unpersuaded of error in the Examiner's determination of anticipation. The phrase "consisting essentially of' limits the scope of claim 3 Appeal2018-003604 Application 14/369,026 1 to the specifically recited ingredients plus others that do not materially affect the basic and novel characteristic(s) of the composition. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003) (The phrase "consisting essentially of' in a patent claim "has long been understood to permit inclusion of components not listed in a claim, provided that they do not 'materially affect the basic and novel properties of the invention."') (citation omitted); PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (The claim term "consisting essentially of' is used in claim construction to indicate, for example, that "the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention."). Appellant has the burden of showing that the components not specifically claimed, but taught in the applied prior art, would materially affect the basic and novel characteristics of the claimed invention. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). In other words, Appellant has the burden of showing what the basic and novel characteristics of the claimed composition are and how they would be materially changed by the ingredient of the prior art reference sought to be excluded by Appellant's use of such transitional term. On this record, Appellant has not identified the basic and novel characteristics of the appealed invention. Further, Appellant has not explained why or how a surfactant would affect the basic and novel characteristics of the appealed invention. Appellant additionally argues that Igari requires two coatings. App. Br. 7. However, the language of claim 1 is drafted using the open transitional language "comprising" to describe the components of the 4 Appeal2018-003604 Application 14/369,026 microcapsule as a core and an outer shell. Thus, as the Examiner notes (Ans. 5), the claim does not exclude the presence of additional coatings on the microcapsule. Therefore, we agree with the Examiner's finding that the claim language does not preclude the presence of an intermediate layer between the core and the outer shell. Accordingly, we affirm the Examiner's rejection of claims 1-3 and 5 under 35 U.S.C. Â§ 102(b) for the reasons given by the Examiner and presented above. Obviousness Rejection of Claim 4 We refer to the Examiner's Non-Final Action for a statement of the rejection. Non-Final Act. 3. In addition to the arguments addressed above, Appellant argues that the claimed compositions have a better controlled release profile as compared to those ofigari. App. Br. 7. This argument does not persuade us of Examiner error because, as the Examiner notes (Ans. 6), it is unsupported by objective evidence. Appellant, at most, has provided mere attorney arguments and such arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303,315 (CCPA 1979). Accordingly, we affirm the Examiner's rejection of claim 4 under 35 U.S.C. Â§ 103(a) for the reasons given by the Examiner and presented above. DECISION The Examiner's prior art rejections of claims 1-5 under 35 U.S.C. Â§Â§ 102(b) and 103(a) are affirmed. 5 Appeal2018-003604 Application 14/369,026 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6