Rohm and Haas Company

Patent Trials and Appeals Board

Sep 9, 2021

2021000099 (P.T.A.B. Sep. 9, 2021)

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.
15/183,930 06/16/2016 Joy A. Gallagher 78031-US-NP 8500
21898 7590 09/09/2021
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2211 H.H. Dow Way
Midland, MI 48674
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/09/2021 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 JOY A. GALLAGHER, PHILIP R. HARSH, PU LUO, and
EDWIN NUNGESSER
Appeal 2021-000099
Application 15/183,930
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant, which refers to “applicant” as defined in 37 C.F.R. § 1.42,
identifies the real party in interest as Rohm and Haas Company. Appeal
Br. 4.
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Application 15/183,930

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CLAIMED SUBJECT MATTER
The claims are directed to a composition comprising an aqueous
dispersion of polymer particles and polymer beads (see, e.g., claims 1 and
14) and an article comprising a leather substrate coated with a clear matte
finish comprising an acrylic or styrene-acrylic polymer film and polymer
beads (see, e.g., claim 9). The claims further require the polymer particles
(claims 1 and 14) or film (claim 9) as well as the polymer beads include
structural units of a phosphorus acid monomer. The structural unit may be,
for instance, a structural unit of phosphoethyl methacrylate. Spec. 2, 4.
Claim 1 is illustrative of the composition:
1. A composition comprising an aqueous dispersion of 1)
polymer particles having an average particle size of from 50 to
300 nm; and b) polymer beads having an average particle size
of from 2 to 30 μm; wherein the polymer particles and the
polymer beads comprise from 0.1 to 5 weight percent structural
units of a phosphorus acid monomer.
Appeal Br. 2 (amended claims appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Devonport US 7,071,261 B2 July 4, 2006
Chiou US 7,829,626 B2 Nov. 9, 2010
Hermes US 2003/0224184 A1 Dec. 4, 2003

REJECTIONS
Claim 15 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement. Final Act. 2.
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Claims 1–19 are rejected under 35 U.S.C. § 103 as being unpatentable
over Chiou in view of Hermes. Final Act. 3.
Claims 1–6 and 8–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chiou in view of Devonport. Final Act. 12.
OPINION
Written Descriptive Support
Claim 15 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement. Final Act. 2.
Claim 15 requires the polymer beads of claim 14 further comprise a
hard domain having a Tg greater than 40 °C wherein “the hard domain is
functionalized with structural units of I) the phosphorus acid monomer; and
II) methyl methacrylate or styrene or a combination thereof at a II:I ratio in
the range of from 99.5:0.5 to 94:6.” Claim 15 (emphasis added).
The Examiner finds that the written description found in the originally
filed Specification does not provide support for functionalizing the hard
domain with methyl methacrylate or styrene of a combination thereof. Final
Act. 2; Ans. 17.
Appellant contends that the Specification “implicitly, if not explicitly
provides such support on page 4, [lines] 5–9, inasmuch as the second stage
monomers in the disclosed concentration ranges form the hard domain in the
same disclosed ranges.” Appeal Br. 8. We agree.
The relevant portion of page 4, lines 5–9 describes second monomers
used to form the beads and reads as follows:
Preferably, the second monomers comprise a) styrene or methyl
methacrylate or a combination thereof; and b) a phosphorus
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acid monomer, preferably phosphoethyl methacrylate. Most
preferably, the second monomers comprise methyl methacrylate
and phosphoethyl methacrylate at a weight-to-weight ratio
99.5:0.5, and more preferably from 99:1, to 92:8, more
preferably to 94:6, and most preferably from 96:4.
Spec. 4:5–9 (emphasis added).
The Specification reasonably conveys that the second monomers form
the hard domains of the beads. Page 4, lines 5–9 of the Specification
describe second monomers used in a preferred method of forming a
dispersion of the polymer beads. Spec. 3:4–4:19. This process is multi-step
thermal polymerization using a gradual addition process. Spec. 3:4–5. In the
first step, low Tg first monomers, which form a film-forming polymer at 25
°C, are thermally polymerized by gradual addition. Spec. 3:26–4:9.
Thereafter, high Tg second monomers, which do not form films at 25 °C, are
added. Id. The Specification explains that the polymer beads preferably have
a hard domain characterized by a Tg greater than 40 °C and a soft domain
characterized by a Tg of less than 25 °C. Spec. 4:10–16. In other words, the
later addition and polymerization with the second high Tg monomer forms
the hard domain.
After reviewing the page 4, lines 5–9 of the Specification in the
context of the entirety of the disclosure, we agree with Appellant that the
written description reasonably conveys that the second stage monomers form
the hard domain and, thus, the written description reasonably conveys
functionalizing the hard domains with methyl methacrylate or styrene
structural units or a combination thereof.
Thus, we do not sustain the Examiner’s rejection.

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Obviousness
As noted by Appellant, the Examiner has repeated the obviousness
grounds of rejection the Board previously sustained in a prior appeal, i.e.,
the rejections over Chiou in view of Hermes and Chiou in view of
Devonport. Appeal Br. 8. We affirmed the Examiner’s rejections over those
references in Appeal No. 2018-001586.
Appellant has presented new arguments and evidence to refute two
determinations underlying the prior affirmance: 1) the determination that it
would have been obvious to functionalize non-film-forming beads with a
phosphorus acid monomer because it is known to functionalize film-forming
binder particles with a phosphorus acid monomer; and 2) beads having a
particle size of greater than 1 μm are made the same way, and therefore
require the same procedures and starting materials, as binder particles having
a particle size up to 1 μm.
Given the new arguments and evidence, we must evaluate the
rejections anew. Our reevaluation has persuaded us that the differences in
the compositions and processing of the film-forming binder particles and
duller particles (beads) support Appellant’s position. Our analysis follows.
There is no dispute that Chiou discloses an aqueous dispersion of: 1)
film-forming binder particles that correspond to the 50 to 300 nm polymer
particles of Appellant’s claims and 2) duller particles that correspond to the
2 to 30 µm polymer beads of Appellant’s claims. Appeal Br. 8.
Chiou teaches that the film-forming binder may be acid functionalized
with, for example, phosphoethyl (meth)acrylate. Chiou col. 8, l. 63–col. 9, l.
10. Thus, Chiou suggests that the film-forming binder particles may be
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functionalized with structural units of phosphorus acid monomer. But Chiou
does not disclose so functionalizing the duller particles (beads).
The Examiner turns to Hermes and Devonport to support findings of
suggestions to functionalize the duller particles of Chiou. Final Act. 4, 12.
The Examiner’s rejection rests on a finding that Hermes teaches micron-
sized polymer beads and this provides motivation for functionalizing the
larger 2–30 µm duller particles of Chiou. See, e.g., Ans. 19. But neither
Hermes nor Devonport discloses functionalizing duller particles (beads) with
phosphorus acid monomer. Rather, Hermes and Devonport functionalize
film-forming binder particles. See Hermes ¶ 43 (describing modifying latex
binder copolymer particles with an acid functional monomer such as
phosphoethyl methacrylate monomer); Devonport col. 1, ll. 12–19; col. 10,
ll. 61–65; col. 17, ll. 14–18 (describing functionalizing polymeric
nanoparticles (PNPs), which are used as binders in aqueous coating
compositions, with acid monomer such as phosphoethyl methacrylate).
As explained in the Bohling Declaration,2 duller particles (beads)
differ from film-forming binder particles. Bohling Decl. ¶¶ 4, 10. Bohling
declares that “[a] ‘duller’ particle (also known as a ‘bead’) is a term of the
art and does not include ‘binder.’” Id. ¶ 4. Chiou supports Bohling’s
declaration. Chiou describes dullers as matting agents that can be either
inorganic or organic particles that “function by roughening the surface of the
film.” Chiou col. 1, ll. 22–27. Chiou describes aqueous component binder
B) as comprising “any one or more (co)polymer compatible with duller

2 Declaration of Dr. James Bohling, dated Nov. 13, 2019.
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component A) that can form a film under conditions of use.” Chiou col. 7, ll.
57–59.
Bohling declares that, although both the film-forming binder particles
and the duller particles are made of polymer, they are quite different in
properties and utility. Bohling Decl. ¶ 10. Duller particles are more like golf
balls while the smaller film-forming binder particles are more like glue
pellets. Id. A preponderance of the evidence supports Bohling’s declaration
in this regard. Given the differences in function and composition between
film-forming binder particles and dullers/beads, teachings of functionalizing
film-forming binder particles, such as the teachings of Hermes and
Devonport, do not suffice to provide a suggestion for functionalizing
Chiou’s duller particles.
Our change in decision in this appeal from the last appeal is based on
Appellant’s new arguments and evidence, which gave rise to a new
understanding of the evidence. No decision is ever set in stone. Each must be
based on the facts and evidence developed in the record and the record has
changed here.
We do not sustain the rejection over Chiou in view of Hermes or the
rejection over Chiou in view of Devonport.
CONCLUSION
The Examiner’s decision to reject claims 1–19 is reversed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Chiou, Hermes 1–19
1–6, 8–19 103 Chiou, Devonport 1–6, 8–19
15 112(a) Written
Description
15
Overall
Outcome
1–19

REVERSED