Ex Parte Confalone et al

Patent Trial and Appeal Board

Aug 23, 2016

12839662 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/839,662 07/20/2010
25570 7590 08/25/2016
Roberts Mlotkowski Safran Cole & Calderon, P,C,
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
Philip CONFALONE
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.
201 OP0044USNP
[15666USNP]
CONFIRMATION NO.
8636
EXAMINER
MULCAHY, PETER D
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte PHILIP CONFALONE,
Rajeev Farwaha, and Kerstin Gohr1
Appeal2014-0094372
Application 12/839,662
Technology Center 1700
Before CATHERINE Q. TIMM, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Philip Confalone, Rajeev Farwaha, and Kerstin Gohr ("Confalone")
timely appeal under 35 U.S.C. § 134(a) from the Final Rejection3 of
claims 1-5 and 7.4 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as Celanese International
Corporation. (Appeal Brief, filed 17 February 2014 ("Br."), 1.)
2 Confalone waived the scheduled hearing. (Letter dated 26 July 2016.)
3 Office action mailed 12 September 2013 ("Final Rejection"; cited as
"FR").
4 Remaining copending claims 8-18 have been withdrawn from
consideration (FR 1, § 5a), and are not before us.
Appeal2014-009437
Application 12/839,662
A. Introduction5
OPINION
The subject matter on appeal relates to aqueous, surfactant-stabilized
emulsions of vinyl ester/ethylene interpolymers that are disclosed as having
enhanced dry pick strength in paper coating formulations. (Spec. 1 [001].)
The '668 Specification explains that "[p ]icking is defined as the lifting of a
coating, film or fibers from the surface of the base paper during printing."
(Id. at 12 [0042].) The particular standard test is said to "measure[] the
speed, in cm/sec, required to lift the paper coating off of the surface of a
paper substrate strip when printed using an ink roller and standard conditions
.... " (Id. at 13 [0043].)
The Specification reveals that vinylacetate/ethylene ("V AE")
copolymers have been developed for paper coating applications.
(Id. at 2 [006].) The most effective nonionic emulsifiers for these coatings at
present are said to be alkylphenol ethoxylates ("APEs"). (Id. at 3 [007].)
However, because APEs are believed to break down in the environment into
persistent compounds that act as endocrine disruptors, they are subject to
regulations in Europe and the United States, and "the use of APE-type
nonionic emulsifiers in V AE emulsion-containing products is increasingly
viewed as disadvantageous." (Id.)
5 Application 12/839,662, Vinyl ester/ethylene-based binders for paper and
paperboard coatings, filed 20 July 2010. We refer to the
'"662 Specification," which we cite as "Spec."
2
Appeal2014-009437
Application 12/839,662
Sole independent claim 1 is representative and reads:
A surfactant-stabilized latex emulsion comprising
a vinyl ester interpolymer colloidally dispersed in an
aqueous medium, the interpolymer comprising:
(a) from about 73.5 to 87.85 pphm of a vinyl ester of
an alkanoic acid having 1 to about 13 carbon atoms
interpolymerized with the following co-monomers:
(b) from about 12 to 25 pphm of ethylene;
( c) from about 0.1 to 1.0 pphm of an ethylenically
unsaturated C3-C10 mono- or dicarboxylic acid or half
ester of such dicarboxylic acid with a C1-C1s alkanol;
and
( d) from about 0.05 to 0.5 pphm of a polyethylenically
unsaturated co-monomer selected from the group
consisting of triallyl cyanurate, triallyl isocyanurate,
diallyl maleate, diallyl fumarate, divinyl benzene and
diallyl phthalate;
wherein said stabilizer consists of anionic and/or nonionic
emulsifiers which are substantially free of alkylphenol
ethoxylate surfactants.
(Claims App., Br. 9; some indentation, paragraphing, and emphasis added.)
Claim 7 further requires that the interpolymer comprise only
monomer components permitted by certain regulations of the U.S. Food and
Drug Administration. (Claims App., Br. 10.)
The Examiner maintains the following ground of rejection: 6
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Lindemann 7 and Morgan. 8
6 Examiner's Answer mailed 30 June 2014 ("Ans.").
7 Martin K. Lindemann and Kim Deacon, Coating compositions, U.S.
Patent No. 5,169,884 (1992).
3
Appeal2014-009437
Application 12/839,662
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The core issue raised by Confalone in this appeal is whether the
Examiner erred harmfully in finding that Lindemann teaches or suggests, in
column 8 (cited by the Examiner (FR 3, 11. 5-6)), latex emulsions wherein
the stabilizers consist of anionic or nonionic emulsifiers that are
substantially free of alkylphenol ethoxylate surfactants. 9
Confalone does not dispute that Lindemann discloses surfactants that
are not APEs that are useful for preparing stabilized latex emulsions, but
insists that Lindemann teaches APEs as preferred components of a
stabilizing system, and that Lindemann' s examples all include AP Es such as
Triton surfactants. (Br. 3-4) "Nowhere," Confalone urgess, "do Lindemann
et al. suggest that these compounds should be avoided or replaced as
surfactant stabilizers." (Id. at 4, 11. 13-14.) Confalone urges that the
Examiner's conclusion that the claimed AP Es-free stabilized emulsions
would have been obvious is based on impermissible hindsight. (Id. at 11. 14-
17.)
8 Tamela A. Morgan et al., Vinylidene chloride emulsion interpolymer
composition, U.S. Patent No. 5,344,867 (1994).
9 According to the 662 Specification, "[ fJor purposes of this invention, such
emulsions and coating compositions are considered to be substantially free
of AP Es if they contain less than 500 ppm of alkylphenol ethoxylates."
(Spec. 10 [0030].)
4
Appeal2014-009437
Application 12/839,662
It is instructive to consider specifically the disputed disclosure of
Lindemann at column 8, which reads in most relevant parts:
The emulsions of the present invention are prepared in
the presence of suitable anionic, cationic or nonionic
emulsifiers or mixtures thereof. Optionally, protective
colloids, illustrated by polyvinyl alcohol and hydroxyethyl
cellulose, may also be present. Suitable nonionic emulsifying
agents include alkylphenoxypolyethoxyethanols ... ; also
ethylene oxide derivatives of long chained carboxylic acids,
such as ... ; also analogous ethylene oxide condensates of
long-chained alcohols, such as ... , ethylene oxide
derivatives of etherified or esterified polyhydroxy
compounds having a hydrophobic component, such as ... ;
also analogous ethylene oxide condensates of long-chained
alcohols, such as ... , ethylene oxide derivatives of etherified
or esterified poly hydroxy compounds having a hydrophobic
hydrocarbon chain, such as ... ; also block copolymers of
ethylene oxide and propylene oxide comprising a
hydrophobic propylene oxide section combined with one or
more hydrophilic ethylene oxide sections. Suitable anionic
emulsifying agents include higher fatty alcohol sulfates, such
as ... , the alkylaryl sulfonates, such as ... , and the
ammonium salt of a sulfate or phosphate ester of an
alkylphenoxy poly(ethyleneoxy) ethanol, where the
oxyethylene content is from 3 to 30 moles per alkylphenol.
Suitable cationic emulsifiers include . . . Generally, the
polymer emulsions of this invention contain from 1
to 10 percent, preferably from 3 to 6 percent, emulsifiers
based on the weight of the monomers (solids). ·
An ethylenically unsaturated carboxylic acid is also
preferably added to the polymer emulsions to provide
mechanical stability to the emulsion. Generally, an
ethylenically unsaturated mono- or dicarboxylic acid may be
used ...
(Lindemann, col. 8, 11. 20-67; emphasis added.)
5
Appeal2014-009437
Application 12/839,662
Notably, Lindemann does not teach that AP Es are required for the
successful use of the disclosed aqueous emulsion coating compositions. Nor
does Lindemann teach that protective colloids such as polyvinyl alcohol are
required: to the contrary, Lindemann teaches that such materials are
optional. Indeed, Lindemann names at least four other classes of nonionic
emulsifying agents, as well as anionic emulsifying agents within the scope
of the appealed claims. Significantly, the general prescription limits the
amount of emulsifiers, but not their composition. (Id. at 11. 60-63.)
It is settled law that a prima facie case of obviousness is established if
the prior art provides a reasonable expectation of success of any embodiment
within the scope of a claim. E.g., In re 0 'Farrell, 853 F.2d 894, 903-04,
(Fed. Cir. 1988) ("For obviousness under§ 103, all that is required is a
reasonable expectation of success.") A preference, even a strong preference,
for a material that a later applicant seeks to exclude, does not amount to a
teaching away from excluding that material if alternative materials are
suggested by that prior art reference, as is the case here. The substitution of
one material for another, due to the known suitability of the properties, is a
classical instance of obviousness.
Regarding Confalone's further arguments regarding claim 7,
Confalone has not shown harmful error in the Examiner's rationale (Ans. 8)
that conformance with published regulations by using known monomers
with known properties for their known purposes would have been prima
facie obvious.
6
Appeal2014-009437
Application 12/839,662
Confalone does not raise arguments in the Brief or in the Reply10 for
patentability based on so-called secondary considerations such as
unexpected results or commercial success.
We are not persuaded of harmful error in the appealed rejection. 11
C. Order
It is 0 RD ERED that the rejection of claims 1-5 and 7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
10 Reply Brief filed 29 August 2014 ("Reply").
11 The Examiner's proposed alternative claim interpretation, suggesting that
"[i]t is questionable as to whether or not alkylphenol ethoxylate emulsifiers
are positively excluded" is not well-taken, as it is at best incomplete. The
Examiner has not come forward with evidence that indicates, for example,
that such a compound might be present somehow in an emulsion
composition and yet not function (due, perhaps, to some sequestration) as an
emulsion stabilizer. Absent remarkable circumstances, such as this strained
hypothetical, our reviewing court has long held that a broad transitional term
in a claim cannot broaden a closed group recited in the body of the claim.
See, e.g., The Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1372
(Fed. Cir. 2005) (the fact that the overall process is defined by the
transitional term "comprising" does not broaden the type of emulsifiers
which are recited in the Markush Group) Moleculon Research Corp. v. CBS,
Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986) ("comprising" opens a method
claim to the inclusion of additional steps, but does not affect the scope of the
structure recited within the steps.). Nonetheless, this error was not harmful
as it is not required to sustain the rejection.
7