WACKER CHEMIE AGDownload PDFPatent Trials and Appeals BoardDec 7, 20212021000599 (P.T.A.B. Dec. 7, 2021) Copy Citation 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. 15/251,361 08/30/2016 Hans-Peter WEITZEL WASN0194PUSA1 2636 22045 7590 12/07/2021 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER CAI, WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 12/07/2021 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-PETER WEITZEL, ROBERT BRAUNSPERGER, and JESSICA SEIDEL Appeal 2021-000599 Application 15/251,361 Technology Center 1700 Before TERRY J. OWENS, LINDA M. GAUDETTE, and LILAN REN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 25–32. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Wacker Chemie AG (Appeal Br. 2). Appeal 2021-000599 Application 15/251,361 2 CLAIMED SUBJECT MATTER The claims are directed to vinyl acetate copolymers for hydraulically setting construction materials. Claim 25, reproduced below, is illustrative of the claimed subject matter: 25. A copolymer composition, comprising: A protective colloid-stabilized copolymer of 40-80 wt.% vinyl acetate, 15-35 wt.% vinyl chloride, and 1-25 wt.% ethylene, and optionally one or more further ethylenically unsaturated monomers, prepared by aqueous addition polymerization; wherein the protective colloid-stabilized copolymer is in the form of an aqueous dispersion, or in the form of a copolymer powder dispersible in water prepared by drying the aqueous dispersion; wherein the weight percentages of all monomers total 100 wt. %, wherein the aqueous addition polymerization proceeds in the absence of emulsifiers, and wherein no cellulose or cellulose derivatives are included as protective colloids. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Eck US 2001/0034391 A1 Oct. 25, 2001 Weitzel US 7,863,370 B2 Jan. 4, 2011 REJECTIONS Claims 25–32 stand rejected under 37 U.S.C. § 103(a) over Eck and over Weitzel.2 2 Obviousness-type double patenting rejections of claims 1–5, 7, and 8 over US 7,956,113 and US 7,863,370 (Final 3) maintained in the Examiner’s Answer (Ans. 4) are moot because those claims have been cancelled. Appeal 2021-000599 Application 15/251,361 3 OPINION Rejection over Eck The Appellant argues claims 25–32 as a group (Appeal Br. 3–39).3,4 We therefore limit our discussion to one claim, i.e., claim 25, which is the sole independent claim. Eck discloses a thermoplastic polymer for flexibilizing cement- containing building materials (¶ 5), comprising (¶ 17): vinyl ester/ethylene/vinyl chloride copolymers having an ethylene content of preferably from 1 to 40% by weight and a vinyl chloride content of preferably from 20 to 90% by weight, vinyl acetate and/or vinyl propionate and/or one or more copolymerizable vinyl esters, such as vinyl laurate, vinyl pivalate, vinyl 2-ethylhexanoate, vinyl esters of an alpha-branched carboxylic acid, in particular vinyl versatate, preferably being present as vinyl esters. The polymer comprises 20–90 wt% vinyl chloride, 1–40 wt% ethylene, and one or more vinyl esters that can be vinyl acetate, which is the particularly preferred vinyl ester (¶ 11), in an amount ranging from a small amount to as much as 97 wt%. When the vinyl ester is vinyl acetate, the ranges in Eck’s paragraph 17 encompass the ranges in the Appellant’s claim 25. As stated in In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003): 3 The Appellant’s statement that “[t]hese [dependent] claims are individually and separately patentable” (Appeal Br. 38) is not a substantive argument as to the separate patentability of those claims. 4 With respect to the rejections over Eck and Weitzel, we address only the Appeal Brief because the arguments in the Reply Brief are similar to those in the Appeal Brief. Appeal 2021-000599 Application 15/251,361 4 In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness . . . . . . . . Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when, as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. [(Citations omitted.)] The Appellant argues (Appeal Br. 10): “Eck himself states that his results are independent of the type of polymer used [(¶ 5)]. Thus, Eck does not direct the skilled artisan to any particular polymer.” Eck states that “[t]he invention relates to a polymer composition for flexibilizing building materials” (¶ 6). One component of the composition is “at least one water-insoluble, film-forming polymer of one or more ethylenically unsaturated monomers capable of free radical polymerization” (¶ 7). A preferred film-forming polymer is the vinyl ester/ethylene/vinyl chloride copolymer set forth above (¶ 17). Eck would have led one of ordinary skill in the art, through no more than ordinary creativity, to select the particularly preferred vinyl ester (vinyl acetate) as the vinyl ester. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. The Appellant argues: As indicated at the top of column 11 [(of Schultze (US 4,850,751 (Aug. 22, 1989)], comparison Example G, a Appeal 2021-000599 Application 15/251,361 5 copolymer of vinyl acetate, vinyl chloride, and ethylene containing only 40% by weight of vinyl chloride, showed a notable drop in adhesion after storage in water. Schultze, the closest reference, and the only reference which exemplifies a vinyl acetate/vinyl chloride/ethylene copolymer, teaches against employing the claimed copolymers, which contain less than 40% vinyl chloride. [(Appeal Br. 8)] . . . [Eck’s] range of 20-90% by weight includes a range of less than 40% by weight, a range which Schultze teaches to avoid. [(Appeal Br. 12)] In Schultze’s comparison Example G, a copolymer of vinyl acetate, vinyl chloride, and ethylene having a vinyl acetate/vinyl chloride weight ratio of 90/10 and containing less than 40 wt% vinyl chloride, when used in typical floor tile adhesive, resulted in a 34.8% adhesive strength decrease after 21 days in water (Table IV) compared to a 16–22.2% adhesive strength decrease for adhesive containing copolymers having a 63.5 wt% or 64 wt% vinyl chloride content. The Appellant does not show that Schultze’s Example G would have indicated to one of ordinary skill in that Eck’s paragraph 17 copolymer, when containing 35 wt% vinyl chloride (within the Appellant’s claim 25) would be unsuitable for Eck’s use in flexibilizing building materials such that Schultze teaches away from using 35 wt% vinyl chloride in Eck’s paragraph 17 copolymer. The Appellant argues that “obviousness cannot be predicated on a reference which does not even mention the problems addressed” (Appeal Br. 14). Establishing a prima facie case of obviousness does not require that references solve the same problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, Appeal 2021-000599 Application 15/251,361 6 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). The Appellant claims a copolymer composition (independent claim 25). Eck’s paragraph 17 discloses a copolymer composition that can contain relative amounts of vinyl acetate, vinyl chloride, and ethylene overlapping those in that claim and, therefore, would have rendered the Appellant’s claimed copolymer composition prima facie obvious to one of ordinary skill in the art. See Peterson, 315 F.3d at 1329–30. The Appellant argues that the examples and comparative examples in the Appellant’s Specification and the Declaration of Dr. Hans-Peter Weitzel under 37 C.F.R. § 1.132 show evidence of unexpected results (Appeal Br. 21–39). We have begun anew and determined that for the following reasons the totality of the evidence supports a conclusion of obviousness of the Appellant’s claimed copolymer composition. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). First, the Appellant’s showing of unexpected results does not provide a comparison of the claimed invention with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The Appellant states that the closest prior art is Schultze (Appeal Br. 8), but the Appellant does not compare to Schultze or establish that the Appellant’s comparative examples are closer than Schultze to the claimed copolymer composition. Second, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The Appellant’s independent claim 25 Appeal 2021-000599 Application 15/251,361 7 encompasses ranges of 40–80 wt% vinyl acetate, 15–35 wt% vinyl chloride, and 1–25 wt% ethylene. The ranges in Appellant’s examples, however, are 51–68 wt% vinyl acetate, 17–34 wt% vinyl chloride, and 9.9–18.7 wt% ethylene (Spec. Table 1; Decl. Table 1). The Appellant argues that “a showing of surprising and unexpected results need not encompass the endpoints of every range or every variable in the claims” (Appeal Br. 30). The evidence must be representative of the scope of the claims, and the Appellant has not shown that 51–68 wt% is representative of 40–80 wt%, or 9.9–18.7 wt% is representative of 1–25 wt%. In the Declaration, Weitzel states that “I would expect, as one skilled in the art, that other compositions within the claimed ranges would also confer surprising and unexpected advantages over the general teachings of Eck, and find no reason believe otherwise” (¶ 7). Weitzel does not provide evidence that being skilled in the art and having no reason to believe otherwise is sufficient to establish that the Appellant’s evidence is representative of the ranges in the Appellant’s claim 25. Rejection over Weitzel The Appellant argues claims 25–32 as a group (Appeal Br. 39–41). We, therefore, limit our discussion to one claim, i.e., claim 25, which is the sole independent claim. Weitzel discloses protective colloid-stabilized, water-dispersible dispersion powders comprising emulsion-polymerized copolymers containing 1–40 wt% vinyl acetate, 1–40 wt% ethylene, and 1–60 wt% vinyl chloride (col. 4, ll. 24–26, 61–62). The disclosed uses of the powders include use in tile adhesives (col. 7, ll. 47–60). The Appellant argues (Appeal Br. 40): Appeal 2021-000599 Application 15/251,361 8 The vast number of different categories which Weitzel discloses, even when limited to Weitzel’s five preferred categories (each of which contains an infinite number of variations), would not lead one skilled in the art to select from among this virtually infinite number of possibilities, a vinyl acetate, vinyl chloride, ethylene copolymer having comonomers in ranges considerably different than those recited by Weitzel. Although Weitzel discloses many polymers other than copolymers of vinyl acetate, ethylene, and vinyl chloride, the component ranges in the disclosed vinyl acetate (1–40 wt%)/ethylene (1–40 wt%)/vinyl chloride (1– 60 wt%) copolymer encompass the ranges in the Appellant’s claim 25, and the disclosed uses of the water-redispersible dispersion powders comprising the vinyl acetate/ethylene/vinyl chloride copolymer (col. 7, ll. 47–60) include the Appellant’s use for the claim 25 copolymer, i.e., use in tile adhesives (Spec. 1:16–19). Consequently, Weitzel would have rendered the claim 25 copolymer composition prima facie obvious to one of ordinary skill in the art. See Peterson, 315 F.3d at 1329–30. The fact that many polymers are disclosed would not have made any of them less obvious, particularly where, as here, the material recited in the Appellant’s claim can be used for the identical purpose taught by the reference. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). The Appellant argues that “Weitzel does not exemplify a single polymer within Appellant’s claims, nor does he direct the skilled artisan to any such polymer” (Appeal Br. 40). Weitzel is not limited to its examples. See In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972). Instead, all disclosures therein must be evaluated for what they would have Appeal 2021-000599 Application 15/251,361 9 fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966). The Appellant relies upon the argument of surprising and unexpected results set forth with respect to the rejection over Eck (Appeal Br. 40–41). That argument is not persuasive for the reasons given above regarding that rejection. CONCLUSION For the above reasons, we are not persuaded of reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 25–32 103(a) Eck 25–32 25–32 103(a) Weitzel 25–32 Overall Outcome 25–32 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation