Ex Parte Dombrowski et al

Patent Trial and Appeal Board

Sep 25, 2017

14353818 (P.T.A.B. Sep. 25, 2017)

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.
14/353,818 04/24/2014 Juergen Dombrowski 71743-US-PCT 9448
21898 7590 09/27/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
RIETH, STEPHEN EDWARD
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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 JUERGEN DOMBROWSKI,
HARTMUT KUEHN, MARGARITA PERELLO,
and SONJA SCHARLEMANN
(Applicant: DOW GLOBAL TECHNOLOGIES LLC)
Appeal 2017-001778
Application 14/353,8181 2 3
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1—6.2,3 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “DOW GLOBAL TECHNOLOGIES LLC.” Appeal Brief filed on April
11, 2016, hereinafter “Br.,” 4.
2 Appeal Br. 5—9; Examiner’s Answer (notice emailed on September 6,
2016), hereinafter “Ans.,” 2—9; Final Office Action (notice emailed on
November 10, 2015) hereinafter “Final Act.,” 2—10.
3 Claims 7, 8, and 10 are incorrectly included in the Claims Appendix as
these claims have been withdrawn from consideration pursuant to a
restriction requirement. Final Act. 2—3.
Appeal 2017-001778
Application 14/353,818
A. BACKGROUND
Although not listed in the “Related Appeals, Interferences or Judicial
Proceedings” section of the Appeal Brief (Br. 4), a Notice of Appeal and
Appeal Brief were filed February 12, 2016 and April 12, 2016, respectively,
in Application 14/353,825 (Appeal No. 2017-008880). That appeal involves
claims that are not patentably distinct from the current claims on appeal, as
evidenced by the obviousness-type double patenting rejection discussed
below. 37 C.F.R. § 41.37(c)(1)(h).
The subject matter on appeal relates to additives prepared from a
polyurethane powder and a redispersible polymer powder, the additives
being useful in hydraulic binders, such as cement compositions.
Specification, hereinafter “Spec.,” 11. The inventors disclose that,
depending upon the polymer used to make the redispersible powder and the
cementitious application it is used in, various types of performance issues
can occur for such additives. Id. 14. To address these performance issues,
the inventors disclose a redispersible polymer powder that provides
improved performance. Id. 1 6.
Representative claim 1 is reproduced from page 10 of the Appeal
Brief (Claims Appendix), as follows (emphases added):
1. An additive for a hydraulic binder, the additive comprising
a preblend of a powdered polyurethane flexible foam and a water
redispersible polymer powder (RDP), said water redispersible
polymer powder comprising a water insoluble fdm-forming
polymer and a colloidal stabilizer, the amount of the powdered
polyurethane flexible foam being from 10% by weight to 80% by
weight, based upon the total weight of the powdered
polyurethane flexible foam and the water redispersible polymer
powder.
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Application 14/353,818
B. REJECTIONS ON APPEAL
On appeal, the Examiner maintains4 several rejections, which are as
follows (Ans. 2—6; Final Act. 3—8):
I. claims 1—6 as being unpatentable under 35 U.S.C.
§ 103(a) over Perello et al.5 (Perello) in view of Karcher
et al.6 (Karcher);
II. claims 1—6 as being unpatentable under 35 U.S.C.
§ 103(a) over Perello in view of Karcher, as evidenced by
Close;7 and
III. provisionally, claims 1, 2, and 4—6 as being unpatentable
under nonstatutory obviousness-type double patenting
over claims 1 and 4—6 of Application 14/353,825.
C. DISCUSSION
Rejections I and II
Claims 1—6 are rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Perello in view of Karcher.
Claims 1—6 are also rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Perello in view of Karcher, as evidenced by Close.
4 A final rejection under 35 U.S.C. § 103 of claims 1 and 4 over Shin (WO
2009/061016 Al, published May 14, 2009) in view of Stephenson et al. (US
5,472,498, issued December 5, 1995) has been withdrawn. Ans. 6.
5 WO 2009/099717 A2, published Aug. 13, 2009.
6 US 2010/0314111 Al, published Dec. 16, 2010.
7 US 4,892,891, issued Jan. 9, 1990.
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Application 14/353,818
The Appellant does not argue these rejections separately. Br. 7—9.
Therefore, we address both rejections together. We select claim 1 as
representative for the issues discussed below.
The Appellant does not dispute the Examiner’s prima facie case of
obviousness with any reasonable degree of particularity.8 Br. 7—9. Rather,
the Appellant contends Perello is the closest prior art and that the inventive
examples (i.e., Samples 6, 8, and 10) described in Table 6 of the inventors’
disclosure (Spec. 1 60) provide “dramatically improved tile adhesion
strength (including after heat aging and water immersion) [when evaluated
as an external cement based tile adhesive] in all of a styrene butadiene, a
vinyl acetate and a vinyl versatate polymer” when compared with the
comparative examples (i.e., Samples 7, 9, and 11) described in Table 6. Id.
at 7—8. The Appellant asserts “[s]uch a dramatic improvement was
unexpected and is inventive.” Id. at 8.
8 The Appellant states:
As stated in the prior paragraph, the art does not come close to
disclosing any combination of any redispersible polymer powder
and a powdered polyurethane foam, let alone one with a specific
colloidal stabilizer. The closest art of Perella discloses the same
amount of the same colloidal stabilizer in the same styrene-
butadiene polymer as in the data and comparisons in the instant
specification. See Perella at page 25, lines 10—24. Thus, [the
inventors] have compared the closest art to the instant claims.
Appeal Br. 8. To the extent the Appellants dispute the Examiner’s findings
in support of a prima facie case of obviousness, the Appellant has not stated
with sufficient particularity how the Examiner reversibly erred. In re Jung,
637 F.3d 1356, 1365-66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072
(BPAI2010).
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Appeal 2017-001778
Application 14/353,818
The Examiner finds Sample 1 in Table 6 of the Appellants’ disclosure
“contains only styrene-butadiene copolymer and no polyurethane foam and
thus is the composition most representative of the closest prior art, and yet
Sample 1 achieves superior and/or comparable tensile adhesion strength
compared to the corresponding inventive example with styrene-butadiene
copolymer and polyurethane foam.” Ans. 7.
Sample 1 described in Table 6 exhibits a tensile adhesion strength of
1.12 N/mm2, a water immersion tensile adhesion strength of 0.85 N/mm2,
and a heat aging tensile adhesion strength of 0.81 N/mm2. Spec. 27.
Samples 6, 8, and 10, which the Appellant identifies as inventive examples,9
exhibit tensile adhesion strengths of 1.23, 1.26, and 1.34 N/mm2; water
immersion tensile adhesion strengths of 0.82, 0.81, and 0.81 N/mm2; and
heat aging tensile adhesion strengths of 0.75, 1.03, and 1.14 N/mm2. Id.
Thus, the Examiner correctly finds that at least the water immersion tensile
adhesion strength of Sample 1 is superior or comparable to the Appellant’s
inventive examples and the heat aging tensile adhesion strength of Sample 1
is superior to that of inventive Example 6. The Appellant does not respond
to the Examiner’s findings.
Moreover, the Examiner finds the asserted unexpected results are not
commensurate in scope with the claimed invention. Ans. 7—8. We agree
with the Examiner’s findings because inventive Examples 6, 8, and 10
respectively include styrene butadiene, vinyl acetate ethylene, and vinyl
acetate ethylene vinyl acetate vinyl as a redispersible powder, as described
in Table 5 of the Appellants’ Specification. Spec. 26. However, claim 1
encompasses any type of water redispersible polymer powder, not merely
9 Appeal Br. 8.
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Appeal 2017-001778
Application 14/353,818
these three redispersible polymers. Moreover, each of Examples 6, 8, and
10 is a 50/50 blend of redispersible powder and polyurethane foam powder,
as shown in Table 5, but claim 1 encompasses blends in which the powdered
polyurethane flexible foam is 10—80% by weight of the additive.
The Appellant argues that the Examiner’s finding of the results not
being commensurate in scope with the claims lacks merit because the
inventors “have no duty to compare the present invention against art that
does not exist.” Br. 8. This argument is unpersuasive because the Examiner
considers Sample 1 in Table 6 to be the most representative of the closest
prior art, which is Perello, and Sample 1 exhibits properties comparable or
similar to the inventive examples. Even if the inventive examples exhibited
unexpected results over Perello, the showing of unexpected results is not
sufficiently comprehensive to support the broad scope of the claims. See In
re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
Based on the foregoing, the Appellants’ evidence of unexpected
results is entitled to little weight. A preponderance of the evidence supports
the Examiner’s obviousness determination.
The Appellants do not argue claims 2—6 separately from claim 1.
Appeal Br. 7—8.
The Appellants argue the unexpected results should also apply to
claim 10, which is withdrawn from consideration, and that claim 10 should
be rejoined with claims 1—6. Appeal Br. 8—9. For the reasons stated above
and those discussed in the Examiner’s Answer, we uphold the Examiner’s
§ 103(a) rejections of claims 1—6. Therefore, claims 1—6 remain rejected
and claim 10 is not before us on appeal.
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Application 14/353,818
Rejection III
Claims 1, 2, and 4—6 are provisionally rejected as being unpatentable
under nonstatutory obviousness-type double patenting over claims 1 and 4—6
of Application 14/353,825.
The Appellant states:
Appellants might be willing to file a terminal disclaimer to
obviate a nonstatutory double patenting rejection. However, as
U.S. Application No. ‘825 Application has not been allowed, the
proper practice is to pass the current claims to allowance as set
forth in MPEP § 804, subsection I.B.l.
Appeal Br. 9.
In response, the Examiner finds the present application and
Application 14/353,825 have the same effective filing date and therefore the
provisional nonstatutory double patenting rejection should be maintained
until the Appellant overcomes the rejections via a reply or via a terminal
disclaimer, neither of which the Examiner finds to have been done. Ans. 9.
We agree with these findings because, although the applications have the
same effective filing dates (both non-provisional applications were filed on
the same date and claim priority to separate Patent Cooperation Treaty
(PCT) applications filed on the same date and separate provisional
applications filed on the same date), the Appellant has not overcome all
other outstanding rejections nor filed a terminal disclaimer or otherwise
identified a reversible error in the Examiner’s double patenting rejection.
Therefore, we uphold the Examiner’s non-statutory obviousness-type
double patenting rejections of claims 1,2, and 4—6 for these reasons and
those discussed in the Examiner’s Answer.
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Appeal 2017-001778
Application 14/353,818
D. SUMMARY
Rejections I—III are affirmed. Therefore, the Examiner’s final
decision to reject claims 1—6 is affirmed.
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
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