WACKER CHEMIE AG

Patent Trials and Appeals Board

Dec 7, 2021

2021000599 (P.T.A.B. Dec. 7, 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.
15/251,361 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

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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.
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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.
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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
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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,
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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
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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):
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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
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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