Ex Parte Gallagher et al

Patent Trial and Appeal Board

Nov 20, 2018

15183930 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/183,930 06/16/2016 Joy A. Gallagher
21898 7590 11/23/2018
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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. CONFIRMATION NO.
78031-US-NP 8500
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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 JOY A. GALLAGHER, PHILIP R. HARSH, PU LUO, and
EDWIN NUNGESSER
Appeal 2018-001586
Application 15/183 ,93 0
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-12 under 35 U.S.C. § 103(a) as
1 In explaining our Decision, we cite to the Specification of June 16, 2016
(Spec.), Final Office Action of February 10, 2017 (Final), Appeal Brief of
July 5, 2017 (Appeal Br.), and Examiner's Answer of October 4, 2017
(Ans.). A Reply Brief was not filed.
2 Appellant is the applicant, Rohm and Haas Company, which, according to
the Brief, is the real party in interest. Appeal Br. 4.
Appeal 2018-001586
Application 15/183,930
obvious over Chiou3 in view of Hermes4 and claims 1---6 and 8-13 under 35
U.S.C. § I03(a) as obvious over Chiou in view of Devonport5. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a composition comprising an aqueous
dispersion of polymer particles and polymer beads (see, e.g., claim 1) and an
article comprising a leather substrate coated with a clear matte finish
comprising an acrylic or styrene-acrylic polymer film and polymer beads
(see, e.g., claim 9). The claims further require the polymer particles ( claim
1) or film ( claim 9) as well as the polymer beads include structural units of a
phosphorus acid monomer. The structural unit may be, for instance, a
structural unit of phosphoethyl methacrylate. Spec. 2, 4. Claim 1 is
illustrative of the composition:
1. A composition comprising an aqueous dispersion of 1)
polymer particles having an average particle size of from 50 to
300 nm; and b) polymer beads having an average particle size
of from 2 to 30 µm; wherein the polymer particles and the
polymer beads comprise from 0.1 to 5 weight percent structural
units of a phosphorus acid monomer.
Appeal Br. 14 (claims appendix).
OPINION
The primary focus of Appellant's arguments is on the rejection of
claim 1 as obvious over Chiou in view of Hermes. Appeal Br. 8-13. Insofar
as Appellant's arguments directed to the other claims and to the rejection of
3 Chiou et al., US 7,829,626 B2, issued November 9, 2010.
4 Hermes et al., US 2003/0224184 Al, published December 4, 2003.
5 Devonport et al., US 7,071,261 B2, issued July 4, 2006.
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Application 15/183,930
claims 1-6 and 8-13 as obvious over Chiou in view of Devonport raise
separate issues, we address them separately.
The Rejection over Chiou and Hermes
Claim 1
As to claim 1, the issue arising is: Has Appellant identified a
reversible error in the Examiner's finding that the prior art provides a
suggestion for including phosphoethyl methacrylate monomer to provide an
acid functional pendant moiety that provides the copolymer particles and
beads of Chiou with a desired acid number taking into account Appellant's
evidence of unexpected results?
Appellant has not identified such an error.
In addressing Appellant's arguments, we incorporate the Examiner's
well-supported and thorough response to arguments provided in the Answer.
Ans. ,r,r 39-69. We provide the following for emphasis.
Chiou discloses an aqueous composition including a film-forming
binder ( component B) and a polymer beads ( duller component A). Chiou
col. 2, 11. 6-13. The polymer beads (duller component A) have an average
particle diameter of 1-20 microns, a range overlapping the 2-30 micron
range of claims 1 and 9. Chiou col. 4, 11. 24--27. The film-forming binder
( component B) polymers take the form of particles having an average
diameter of 30-1000 nm, with the preferred range of 50-300 nm being the
same as the range of claim 1. Chiou col. 9, 11. 28-33.
The film-forming binder (component B) is preferably a two-stage
acrylic copolymer. Chiou col. 8, 11. 6-16. Suitable copolymers include
styrene, carboxylic acid monomers, phosphoethyl (meth)acrylate (as a polar
copolymerizable monoethylenically unsaturated monomer), and
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Application 15/183,930
acetoacetamide-containing monomers. Chiou col. 8, 1. 47---col. 9, 1. 24. The
composition may be used to form a matte-coated leather article. Chiou col.
2, 11. 61---63; col. 10, 11. 4--16.
There is no real question that it was known in the art to functionalize
small polymer particles of average diameter up to 1 micron with phosphorus
acid monomers. Luo Deel. ,r 7 ( declaring small polymer particles are
preferentially functionalized with phosphorus acid monomers "to provide
controlled adsorption of polymer particles onto pigment particles[,] such as
Ti02 particles[,] to improve the efficiency of pigment dispersion"); Hermes
,r,r 18, 43 (teaching functionalizing copolymer particles of 20-1000 nm
average diameter); Chiou col. 9, 11. 1-10, 28-30 (teaching using
phosphoethyl (meth)acrylate to add polar groups to binder particles of 30-
1000 nm average diameter).
Hermes teaches functionalizing copolymer particles with an acid
monomer that may be a carboxylic acid monomer, a sulfur acid monomer, or
a phosphorous acid monomer, with a stated preference for carboxylic acid
monomers. Hermes ,r 43.
According to Luo, "acid monomers are known to provide colloidal
stability for small polymer particles." Luo Deel. ,r 8. Luo declares that
"those skilled in the art of latexes know that functionalizing latex particles
with acid groups is a way of providing colloidal stability to the polymer
particles" and "for traffic paints requiring rapid curing, functionalization of
latexes with carboxylic groups in the presence of an amine containing
additive in the paint provides a mechanism for rapid curing of the
consequent coating at low pH's." Luo Deel. ,r 5. Luo further declares that
skilled artisans would choose a carboxylic acid monomer over a phosphorus
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acid monomer to achieve colloidal stability because phosphorus acid
monomers "are known to propagate in the serum phase to form oligomers,
which do not contribute to colloidal stability" and "traffic paints containing
latexes functionalized with phosphorus acid groups are known to undergo
uncontrolled flocculation." Luo ,r 2.
Luo does not provide any evidence to support these declarations of
what was known in the art. It remains that Hermes teaches, albeit as a less
preferred embodiment, selecting a phosphorus acid monomer to provide the
copolymer with an acid number in the range of0.1 to 390. Hermes ,r 43.
Preferred embodiments do not constitute a teaching away from non-
preferred embodiments. In re Susi, 440 F.2d 442,446 n.3 (CCPA 1971).
Chiou provides further evidence that it was known to add a phosphorus acid
monomer (phosphoethyl (meth)acrylate) to add polar groups to a copolymer
used to form particles of 30-1000 nm. Chiou col. 9, 11. 1-3, 28-30.
Luo further declares that it would not have been obvious to
functionalize polymer beads, much less both polymer particles and polymer
beads, with a phosphorus acid monomer because:
Whereas acid monomers are known to provide colloidal
stability for small polymer particles, polymer beads in the
claimed range are too large to be stabilized by acid
functionalization; the difference in surface area between the
small latex particles and the large beads, which is at least -50-
fold, necessitates the use of a bulky stabilizer for the large
particles; accordingly, stability of large beads is more
appropriately accomplished with hydoxyethyl cellulose (HEC).
Luo Deel. ,r 8.
Hermes' discloses that the copolymer particles typically have an
average diameter in the range of from 20 nm to 1000 nm, i.e., up to 1
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micron. Hermes ,r 18. Based on this disclosure, the Examiner finds there
would have been a reasonable expectation of success in using phosphorus
acid monomer to achieve the desired acid number absent evidence to the
contrary. Ans. ,r 42.
The Examiner accorded due weight to the Declarant Luo' s opinions
on the knowledge within the art and what was not obvious to Dr. Luo. See
In re Lindell, 385 F.2d 453,456 (CCPA 1967) (according no weight to a
declarant's opinion on the ultimate legal issue, but stating "some weight
ought to be given to a persuasively supported statement of one skilled in the
art on what was not obvious to him." (emphasis added)). Given that the
Examiner's findings are supported by the disclosure of Hermes whereas
Declarant Luo statement lacks evidentiary support, we, like the Examiner,
determine that the evidence weighs in favor of the Examiner's finding of a
reasonable expectation of success. See In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.").
Appellant contends that Table 4 of the Specification illustrates the
unexpected stain resistance of Appellant's formulation as compared to paints
containing non-acid functionalized beads and carboxylic acid functionalized
latex particles. Appeal Br. 11-12. However, we agree with the Examiner's
determination that the data is not commensurate in scope with the claims.
Ans. ,r 63. For instance, as noted by the Examiner, only specific copolymer
formulations were tested, but the claims encompass any polymer particles,
any polymer beads, and any phosphorus monomer. Id.
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Appellant contends that the actual monomeric composition is not
relevant to patentability; rather, it is the combination of phosphorus acid
functionalized beads and particles that cause the desired effect. Appeal Br.
12. But, as pointed out by the Examiner, Appellant presents no support in
the Luo Declaration for this statement; it is merely an argument of counsel
and this argument cannot take the place of evidence. Ans. ,r 65. A showing
of unexpected results must be based on evidence, not argument or
speculation. In re Mayne, 104 F.3d 1339, 1343--44 (Fed. Cir. 1997); In re
Schulze, 346 F.2d 600, 602 (CCPA 1965).
Appellant has not identified a reversible error in the Examiner's
finding that the prior art provides a suggestion for including phosphoethyl
methacrylate monomer in the particles and beads of Chiou to provide an acid
functional pendant moiety and a desired acid number after weighing all the
evidence and taking into account Appellant's evidence of unexpected
results.
Claims 2-5
Under separate headings Appellant state that the references alone or in
combination do not teach what is recited in these claims. However,
Appellant does not address the specific findings and conclusions of
obviousness set forth by the Examiner. Thus, Appellant has not identified a
reversible error in the Examiner's rejection of claims 2-5.
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Claims 6 and 7
Turning to claims 6 and 7, Appellant contends that these claims are
further patentable because they limit the concentration of pigments. Appeal
Br. 12. Claim 6 requires a substantial absence of pigments.
There is no dispute that Hermes suggests that pigments are optional.
Compare Final 5, with Appeal Br. 12. But, according to Appellant, the use
of phosphorus acid functionalized latexes and beads in coating formulations
containing little or no pigment is unobvious. Id. To support this contention,
Appellant's state that "according to Dr. Luo, phosphorus acid
functionalization of latexes is advantageously used to adsorb latex particles
to pigment particles such as Ti02 to improve hiding; however, hiding is not
a feature in unpigmented systems." Id.
Appellant's argument hinges on Dr. Luo's declaration that "[s]mall
polymer particles are preferentially functionalized with phosphorus acid
monomers for a specific reason, namely, to provide controlled adsorption of
polymer particles onto pigment particles such as Ti02 particles to improve
the efficiency of pigment dispersion." Luo Deel. ,r 7.
Although Chiou and Hermes state that pigments may be included, as
pointed out by the Examiner, they are an optional additive. Ans. 17, citing
Chiou col. 12, 11. 29--35; col. 13, 11. 12-19; Hermes ,r 53.
Hermes states that the acid functional monomer, which may be
phosphoethyl methacylate monomer, is added to provide the copolymer
particles with an acid number from 0.1 to 390. This disclosure is not tied to
the inclusion of pigment.
Devonport discloses that adding the acid monomer is an effective
means for dispersing pigments. Devonport col. 16, 11. 52-59. However,
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given that Hennes teaches adding pigments is optional, the weight of the
evidence supports a finding that those of ordinary skill in the art understood
that adding an acid functional monomer, such as phosphoethyl methacrylate
monomer, would provide the desired acid number disclosed by Hermes with
its benefits whether or not pigment was added.
Appellant has not identified a reversible error in the Examiner's
rejection of claims 6 and 7.
The Rejection over Chiou and Devonport
As to the rejection of claims 1---6 and 8-13 as obvious over Chiou in
view of Devonport, Appellant contends Devonport teaches a composition
comprising an aqueous dispersion of polymer nanoparticles having an upper
limit of 50 nm and a lower limit of 5% phosphorus acid functionalization;
nevertheless, Devonport provides no further enlightenment on the failure of
Hermes or Chiou to motivate, much less enable, the skilled artisan to
functionalize the polymeric beads with a phosphorus acid monomer. Appeal
Br. 11. For the reasons we discuss above, we disagree. A preponderance of
the evidence supports the Examiner's finding of a reason or suggestion
within the prior art to select phosphoethyl methacrylate monomer for use in
the copolymer of Chiou.
CONCLUSION
We sustain the rejection of claims 1-12 under 35 U.S.C. §103(a) as
obvious over Chiou in view of Hermes and the rejection of claims 1---6 and
8-13 under 35 U.S.C. § 103(a) as obvious over Chiou in view of Devonport.
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DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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