Ex Parte Fuhry et al

Patent Trial and Appeal Board

Jul 31, 2015

12963045 (P.T.A.B. Jul. 31, 2015)

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.
12/963,045 12/08/2010 Mary Ann M. Fuhry 10007083A1 2072
24959 7590 07/31/2015
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
07/31/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARY ANN M. FUHRY, DAVID FENN,
JOHN M. DUDIK, LINDA K. ANDERSON, WEI WANG,
DENNIS A. SIMPSON, SCOTT MORAVEK,
and KEN W. NIEDERST
____________________

Appeal 2013-009572
Application 12/963,045
Technology Center 1700
____________________

Before JEFFREY T. SMITH, KAREN M. HASTINGS,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 through 15. We have jurisdiction under 35 U.S.C.
§ 6(b).
The claimed invention is directed to a non-aqueous dispersion
comprising the dispersion polymerization reaction product of an
ethylenically unsaturated monomer and a nonlinear, random, acrylic
Appeal 2013-009572
Application 12/963,045

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polymer stabilizer. App. Br. 2. Claim 1 illustrates the subject matter on
appeal and is reproduced below:
1. A non-aqueous dispersion comprising the
dispersion polymerization reaction product of an ethylenically
unsaturated monomer and a nonlinear, random, acrylic polymer
stabilizer.

Appellants request review (App. Br. 2) of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1–6, 13, and 14 rejected under 35 U.S.C. § 102(b) as
anticipated by Wang (US 5,695,919, issued December 9, 1997).
II. Claims 8–11 rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Wang.
III. Claims 1, 5–7, and 12–15 rejected under 35 U.S.C. § 102(b) as
anticipated by Bederke (US 5,661,199, issued August 26, 1997).
IV. Claims 8–11 rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Bederke.
OPINION
We AFFIRM-IN-PART.

Rejections based on Wang (Rejections I and II)

Rejection I (claims 1–6, 13, and 14)
The dispositive issue for this rejection on appeal is: Did the Examiner
err in determining that Wang describes a non-aqueous dispersion comprising
the dispersion polymerization reaction product of an ethylenically
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unsaturated monomer and a nonlinear, random, acrylic polymer stabilizer as
required by the subject matter of independent claim 1?1
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of claims 1–6, 13, and
14 for the reasons presented by the Examiner.
The Examiner found Example 3 of Wang discloses a coating
composition comprising polymer particles p-1 prepared by polymerizing
ethyl methacrylate (ethylenically unsaturated monomer) and methacrylic
acid in the presence of another polymer prepared by polymerizing isobutyl
methacrylate, ethylene glycol dimethacrylate and allyl methacrylate
(nonlinear, random, acrylic polymer). Ans. 5–62; Wang col. 11, ll. 20–30,
col. 12, ll. 32–36. The Examiner found the polymer of particles p-1
anticipates the subject matter of independent claim 1. Ans. 6.
Appellants argue Wang’s core shell particle is not a stabilizer and
cannot function as a stabilizer because the core polymer is encapsulated in a
shell material. App. Br. 4. Appellants further argue the Examiner unfairly
read Appellants’ definition of acrylic stabilizer in paragraph 6 of the
Specification, intended to identify the weight % of acrylic monomer in the
stabilizer, as encompassing a polymer that is not a stabilizer. Id. at 5.

1 Appellants present arguments for independent claim 1 but do not present
separate arguments for dependent claims 2–6, 13, and 14. Accordingly, we
limit our discussion to independent claim 1 and dependent claims 2–6, 13,
and 14 stand or fall with this claim.
2 We refer to the Examiner’s Answer for a statement of the rejections under
appeal. Ans. 5–6. Appellants have not indicated in the Reply Brief that the
rejections reproduced in the Examiner’s Answer are not reflective of the
rejections presented in prior office actions. See Reply Brief, generally.
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We are unpersuaded by these arguments and agree with the
Examiner’s finding of anticipation. The subject matter of independent claim
1 is directed to a non-aqueous dispersion comprising the reaction product of
an ethylenically unsaturated monomer and a nonlinear, random, acrylic
polymer stabilizer. There is no dispute that Appellants define an acrylic
stabilizer as a polymer comprising 50% or more of acrylic monomers. Spec.
¶ 6; App. Br. 5; Ans. 11. The Examiner found Wang’s core polymer
component from a reaction product of isobutyl methacrylate, ethylene glycol
dimethacrylate and allyl methacrylate meets the claimed non-aqueous
dispersion, as defined by Appellants. Ans. 5–6, 11; Wang col. 11, ll. 20–30.
Appellants have not adequately explained how or why the claimed
polymer differs from the core polymer component of Wang’s particle p-1.
Appellants have not adequately explained error in the Examiner’s finding.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
6, 13, and 14 for the reasons presented by the Examiner and given above.

Rejection II (claims 8–11)
The Examiner separately rejected claims 8–11 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Wang. Ans. 7–8. In addressing this rejection, Appellants rely
principally on substantially the same line of arguments with respect to the
core shell particles of Wang presented when discussing Rejection I. App.
Br. 6. We remain unpersuaded for the reasons given above.
Accordingly, we affirm the Examiner’s prior art rejections of claims
8–11 for the reasons presented by the Examiner and given above.

Appeal 2013-009572
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Rejections based on Bederke (Rejections III and IV)

After careful review of the respective positions provided by
Appellants and the Examiner, we REVERSE the Examiner’s rejection of
claims 1, 5–7, and 12–15 under 35 U.S.C. § 102(b) as anticipated by
Bederke (Rejection III) and of claims 8–11 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Bederke (Rejection IV) for the reasons presented by Appellants.
We refer to the Examiner’s Answer for a complete statement of the
rejections. Ans. 4–7.
The Examiner’s rejections are premised on Bederke’s (meth)acrylic
copolymer A corresponding to the claimed non-linear, random, acrylic
polymer stabilizer. Ans. 5; Bederke Example 3, col. 8, ll. 29–55.
Appellants define non-linear to mean there is at least one branch point along
the backbone of the polymer. Spec. ¶ 4; App. Br. 4. Appellants argue
Bederke’s (meth)acrylic copolymer A is a linear polymer because it is made
from components that are linear. App. Br. 3; Bederke, col. 8, ll. 29–55.
We agree. The Examiner does not direct us to any portion of Bederke
that describes the (meth)acrylic copolymer A is non-linear, as defined by
Appellants. The Examiner has not adequately explain why Bederke’s
polymer anticipates the claimed invention and, in the case of claims 8–11,
renders these claims obvious to one of ordinary skill in the art.
Accordingly, we reverse the Examiner’s Rejections III and IV for the
reasons presented by Appellants and given above.

ORDER
The Examiner’s rejection of claims 1–6, 13, and 14 under
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35 U.S.C. § 102(b) as anticipated by Wang is affirmed.
The Examiner’s rejections of claims 8–11 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Wang are affirmed.
The Examiner’s rejection of claims 1, 5–7, and 12–15 under 35 U.S.C.
§ 102(b) as anticipated by Bederke is reversed.
The Examiner’s rejections of claims 8–11 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Bederke are reversed.

TIME PERIOD
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-IN-PART

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