Roger Bergman et al.

Patent Trials and Appeals Board

Nov 4, 2019

12979608 - (D) (P.T.A.B. Nov. 4, 2019)

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.
12/979,608 12/28/2010 Roger Bergman 68553 3317
21898 7590 11/04/2019
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
HALL, DEVE V.
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex Parte ROGER BERGMAN,
J. KEITH HARRIS, LIANG HONG, THOMAS KALANTAR,
LINDA KIM-HABERMEHL, and MLADEN LADIKA
____________________

Appeal 2018-003190
Application 12/979,608
Technology Center 1700
____________________

Before GEORGE C. BEST, DONNA M. PRAISS, and AVELYN M. ROSS,
Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision we refer to the Specification filed January 28, 2011,
(“Spec.”), the Final Office Action appealed from dated March 23, 2017
(“Final”), the Appeal Brief filed August 21, 2017 (“Appeal Br.”), and the
Examiner’s Answer dated November 27, 2017 (“Ans.”). Appellant did not
file a Reply Brief.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Dow Global
Technologies LLC. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to redispersible polymer powders
stabilized with protective colloid compositions that include chelating
agents—previously unknown to stabilize colloidal emulsions. Spec. ¶¶ 1, 9.
According to the Specification, “[i]nclusion of the chelating agent with a
water soluble polymer colloidal stabilizer unexpectedly lowers the viscosity
of the liquid polymer composition.” Id. at ¶ 13. According to the
Specification, organic polymers, such as those claimed, are “generally added
to improve adhesion of an inorganic component such as concrete.” Id. at
¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter:
l. A water redispersible polymer powder comprising a co-
dried admixture of a water insoluble film-forming polymer and
a colloidal stabilizer, the water redispersible polymer powder
having an average particle size of from 5 to 100 micrometers,
said colloidal stabilizer comprising a chelating agent and at least
one water soluble polymer, wherein the amount of chelating
agent is at least 0.1 % by weight based upon the weight of the
water insoluble film-forming polymer, and the amount of the at
least one water soluble polymer is at least 0.1 % by weight based
upon the weight of the water insoluble film-forming polymer.
Appeal Br. 10 (Claims App’x).
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REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Perello3, as evidenced by Aberle4, in
view of Styron5, and in further view of Xiang.6 Final 3.

B. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Perello, as evidenced by Aberle, in view
of Styron, and in further view of Xiang, as evidenced by
Drechsler.7 Id. at 5.

C. Claims 1–6 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1–10
of US Patent No. 8, 710,131 (“the ’131 patent”) in view of
Xiang. Id. at 7.

Appellant seeks our review of Rejections A–C. Appeal Br. 3–4.
Appellant presents argument for claim 1 with respect to these rejections and
does not present argument for remaining claims 2–6 separate from that
advanced for claim 1. See generally id. Therefore, consistent with the
provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to
claim 1, and all other claims stand or fall together with claim 1.

3 Perello et al., WO 2008/140852 A1, published November 20, 2008
(“Perello”).
4 Aberle et al., US 2009/0223416 A1, published September 10, 2009
(“Aberle”).
5 Styron et al., US 6,554,894 B2, issued April 29, 2003 (“Styron”).
6 Xiang et al., US 2006/0270562 A1, published November 30, 2006
(“Xiang”).
7 Peter H. Dreschler, US 5,445,945, issued August 29, 1995 (“Dreschler”).
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejection; we do so for the reasons expressed in the Final Office
Action and the Answer. We add the following.
Rejection A – Obviousness (claims 1–5)
The Examiner rejects claim 1 as obvious over the combination of
Perello (as evidenced by Aberle), Styron, and Xiang. Final 3. The
Examiner finds that Perello
teaches a redispersible polymer powder and an aqueous
dispersion (p. 2, lines 17-18) wherein the redispersible polymer
powder comprises a co-dried admixture of a copolymer of vinyl
acetate/ethylene (which would read on a water-insoluble film
forming polymer) (p. 4, lines 20-21; p. 7, lines 5-17; and p. 8,
lines 4-10) and 2 to 30% by weight of protective colloids such as
polyvinyl alcohol, water-soluble polysaccharides, cellulose
derivatives, protein such as caseinate, lignosulfonate and several
water-soluble (pp. 8 and 9) (protective colloids would read on
colloidal stabilizer comprising water soluble polymer as required
by the present invention).
Id. According to the Examiner, Aberle explains that colloidal stabilizers
reduce efflorescence in hydraulically set systems. Id. The Examiner
acknowledges that Perello does not describe a colloidal stabilizer that
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includes a chelating agent, but finds that Styron teaches a cement
composition comprising resins and a chelating agent. Id. The Examiner
reasons that one skilled in the art would have had cause to combine the
teachings of Perello and Styron “to prevent efflorescence and also provide[]
a significant increase in compressive strength.” Id. at 4. The Examiner
further acknowledges that Perello and Styron fail to describe “the water
redispersible polymer powder having an average particle size of from 5 to
100 micrometers” as claimed. Appeal Br. 10 (Claims App’x). But the
Examiner finds that Xiang describes a redispersible polymer powder where
the particle size is less than 100 micrometers. Id. The Examiner further
reasons that one skilled in the art would have been motivated to provide a
redispersible polymer powder having a particle size of less than 100
micrometers “for the benefit of reducing the rate that the drilling fluid
pressure invades the borehole wall of a subterranean formation during
drilling.” Id. at 4–5.
Appellant first argues that the Examiner has engaged in improper
hindsight reconstruction because “[t]he art, even taken in combination, fails
to make any prima facie case of obviousness regarding the instant claims
because it nowhere provides any inclusion of a chelating agent in a polymer
composition, much less a water redispersible polymer powder.” Appeal Br.
4–5. According to Appellant, neither Perello nor Aberle disclose a chelating
agent and Styron does not disclose a chelating agent in a polymer. Id.
Appellant also asserts that the combination lacks direction regarding the
“polymer, colloidal stabilizer, chelating agent, [and] amounts thereof” and
therefore, fails to provide a reasonable expectation of success. Id. at 5–6.
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We are not persuaded by Appellant’s argument that the Examiner
engaged in improper hindsight reconstruction because the Examiner’s
reasons for combining the teachings of Perello (as evidenced by Aberle) and
Styron are supported by the prior art disclosures themselves. See, e.g.,
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(“The invention must be viewed not after the blueprint has been drawn by
the inventor, but as it would have been perceived in the state of the art that
existed at the time the invention was made.”) (citing Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)).
Here, the Examiner finds that Perello teaches a redispersible polymer
powder that includes a co-dried admixture of a copolymer of vinyl
acetate/ethylene acetate and polyvinyl alcohol (among others) which
correspond to the claimed insoluble film-forming polymer and colloidal
stabilizer respectively. Final 3. The Examiner also finds that colloidal
stabilizers are known to reduce efflorescence as taught by Aberle. Id.; see
also Aberle ¶ 13 (“it was possible to achieve the complex object by way of a
powder redispersible in water for reducing efflorescence . . . based on at
least one organic component and at least one water-soluble organic
polymeric protective colloid”). Although Perello’s colloidal stabilizer does
not include a chelating agent, the Examiner finds that Styron teaches a
composition including resins and a chelating agent. Final 3–4; see also
Styron, 2:17–22 (“the air entraining agent comprises . . . a resin”); 2:25–27
(explaining “[t]he masonry cement composition also preferably includes . . .
ethylene vinyl acetate”); see generally id., Examples 3–5 (same). According
to Styron, “the addition of a chelating agent helps prevent efflorescence and
also provides a significant increase in compressive strength.” Styron 3:48–
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51. The Examiner reasons that it would have been obvious to include
Styron’s chelating agent as Perello’s colloidal stabilizer to reduce
efflorescence. Final 4; Ans. 3. Contrary to Appellant’s argument, the
Examiner identifies a preponderance of the evidence in the record to provide
reason why one of ordinary skill would have combined the teachings of the
references to arrive at the claimed invention. KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 420 (2007). Furthermore, Appellant does not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and was not within the level of skill in the art at the
time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
Appellant then argues that the Examiner’s reason to combine—i.e.,
reducing efflorescence—lacks merit. According to Appellant, colloidal
stabilizers do not reduce or control efflorescence. Appeal Br. 6–7.
Appellant, through the testimony of Dr. Margarita Perello (“Perello Decl.”),
explains that “for polyvinyl alcohol colloid . . . to be effective, it has to be
water soluble, [but] it is not possible for a water-soluble protective colloid to
prevent efflorescence.” Id. at 7. According to Dr. Perello, Aberle “admits
that fatty and hydrophobic compounds cause the compositions therein to
effectively prevent efflorescence.” Id.
On this record, Appellant’s arguments are not persuasive of reversible
error. Aberle teaches that the combination of “at least one organic
component and at least one water-soluble organic polymeric protective
colloid” is important for reducing efflorescence. See Aberle Abstract, ¶¶ 1,
13, 30, and 42–43. Specifically, Aberle states that “[s]urprisingly enough, it
was possible to achieve the complex object by way of a powder redispersible
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in water for reducing efflorescence in hydraulically set systems based on at
least one organic component and at least one water-soluble organic
polymeric protective colloid.” Id. ¶ 13 (emphasis added). This
understanding is consistent with the findings detailed in the inventive and
comparative examples. Id. ¶¶ 49–72. Aberle does not suggest that it is the
organic component alone—to the exclusion of the water-soluble polymeric
protective colloid—that is responsible for reducing efflorescence as
suggested by Dr. Perello. See, e.g., Perello Decl. 3. Claim 1 is drafted using
“comprising” or open-ended language meaning that additional, unrecited
elements may also be present. MagSil Corp. v. Hitachi Global Storage
Techs., Inc., 687 F.3d 1377, 1383 (Fed. Cir. 2012) (“Open claim language,
such as the word ‘comprising’ as a transition from the preamble to the body
of a claim, ‘signals that the entire claim is presumptively open-ended.’”
(citing Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed.
Cir. 2005))). Therefore, additional elements, such as the organic component
of Aberle, are not excluded from the claims.
Furthermore, both Aberle and Styron recognize that efflorescence is a
known problem in cementitious systems. See Aberle ¶¶ 2–12 (discussing the
desire to reduce efflorescence); Styron 1:22–28 (describing “a disadvantage
of the addition of calcidic products such as limestone is that they can
produce a mortar which exhibits efflorescence.”). As the Examiner finds
(Final 3–4; Ans. 8), Styron explains that “the addition of a chelating agent
helps to prevent efflorescence and also provides a significant increase in
compressive strength.” Styron 3:48–51. Therefore, Styron itself provides
reason to pursue solutions that reduce efflorescence. Appellant does not
address or dispute the Examiner’s findings regarding Styron in either its
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briefing or through the testimony of its declarant, Dr. Perello. We adopt
these unrebutted findings of fact. Cf. In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964) (a finding not shown by the Appellant to be erroneous
may be accepted as fact). Because the Examiner has provided “an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue,” we sustain the Examiner’s rejection. KSR, 550 U.S. at 418.
Rejection B – Obviousness (claim 6)
The Examiner rejects claim 6 as obvious over the combination of
Perello (as evidenced by Aberle), Styron, and Xiang (as evidenced by
Dreschler). Final 5. Claim 6 additionally recites that the chelating agent
comprise at least one member chosen from the identified listing and
includes, inter alia, ethylenediamine and its derivatives. See Appeal Br. 11
(Claims App’x). The Examiner finds that Styron teaches use of Versene
which, according to Drechsler, is ethylenediamine tetraacetate. Final 6.
Appellant argues only that the evidentiary reference Drechsler, fails to
overcome the deficiencies in the combination proffered by the Examiner for
claim 1. Appeal Br. 8. Because we determine Appellant fails to identify
error in the Examiner’s rejection of claim 1, we similarly determine
Appellant fails to identify error in the Examiner’s rejection of claim 6 for the
same reasons discussed above.
Rejection C – Non-statutory Double Patenting (claims 1–6)
The Examiner rejects claims 1–6 on the ground of non-statutory
double patenting over claims 1–10 of the ’131 patent in view of Xiang.
Final 7. According to the Examiner, the ’131 patent describes all limitations
of claim 1 except that the ’131 patent “does not teach a water redispersible
polymer powder to have a particle size from 5 to 100 micrometers.” Id. As
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discussed above, the Examiner finds that Xiang teaches a redispersible
polymer powder having a particle size of less than 100 micrometers. Id. at 4
(discussing claim 1), 8 (discussing claim 6).
Appellant explains that a terminal disclaimer was submitted “to
obviate the nonstatutory double patenting rejection” but it was refused
because the signatory did not match the applicant on file. Appeal Br. 8.
Appellant states that a request to change the applicant has been filed along
with a new terminal disclaimer and therefore asserts that the rejection should
be withdrawn. Id.
The Examiner explains that “the request to change the Appellant is
not in the file and Terminal Disclaimer is not approved. Therefore, the
double patenting rejection is maintained.” Ans. 10.
Appellant does not disagree with the Examiner’s findings which are
consistent with the electronic file history. Accordingly, we sustain the
Examiner’s non-statutory double patenting rejection.
CONCLUSION
Appellant failed to identify a reversible error in the Examiner’s
rejection of claims 1–5 under 35 U.S.C. § 103(a) as unpatentable over
Perello, as evidenced by Aberle, in view of Styron, and in further view of
Xiang.
Appellant failed to identify a reversible error in the Examiner’s
rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Perello,
as evidenced by Aberle, in view of Styron, and in further view of Xiang, as
evidenced by Drechsler.
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Appellant failed to identify a reversible error in the Examiner’s
rejection of claims 1–6 on the ground of nonstatutory double patenting as
being unpatentable over claims 1–10 of the ’131 patent in view of Xiang.
DECISION
For the above reasons, the Examiner’s rejection of claims 1–6 is
affirmed as summarized below.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–5 103 Perello, Aberle, Styron,
Xiang 
1–5
6 103 Perello, Aberle, Styron,
Xiang, Drechsler 
6
1–6 Nonstatutory double
patenting
1–6
Overall
Outcome
1–6

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED