Ex Parte Dombrowski et alDownload PDFPatent Trial and Appeal BoardSep 25, 201714353818 (P.T.A.B. Sep. 25, 2017) 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. 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“Final Act.,” 2—10. 3 Claims 7, 8, and 10 are incorrectly included in the Claims Appendix as these claims have been withdrawn from consideration pursuant to a restriction requirement.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. 2 Appeal 2017-001778 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. 3 Appeal 2017-001778 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). 4 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. 5 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. 6 Appeal 2017-001778 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. 7 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 8 Copy with citationCopy as parenthetical citation