Ex Parte Kelly et al

Patent Trial and Appeal BoardApr 26, 2016

13531810 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/531,810 06/25/2012 MichaelD. KELLY 21898 7590 04/28/2016 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. 71131-US-NP 5783 EXAMINER REUTHER, ARRIE L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL D. KELLY and ROBIANA L. BEEGLE-RENNA Appeal 2014-007161 Application 13/531,810 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants' invention is best illustrated by the independent claim 1, reproduced below: Appeal 2014-007161 Application 13/531,810 1. An aqueous curable composition comprising: a. at least one water-soluble carbohydrate having a range of dextrose equivalents (DE) of from 4 to 40, being present in a weight percent on total composition binder solids from 50-97%; b. at least one high acid polycarboxy emulsion copolymer, as a latex modifier, including, as copolymerized units, from 8-40% by weight based on the total weight of the emulsion monomer solids, of at least one carboxy acid monomer; and c. at least one polyacid crosslinking agent. Appellants request review of the Examiner's rejection of claims 1-12 under 35 U.S.C. Â§ 103(a) as unpatentable over Kelly (US 2009/0170978 Al, published July 2, 2009) and Hawkins et al. (US 2011/0086567 Al, published April 14, 2011). App. Br. 3; Final Act. 2-5. OPINION We have thoroughly reviewed each of Appellants' arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner'sÂ§ 103(a) rejection of independent claim 1. 1 Accordingly, we will sustain the Examiner's rejection for essentially the reasons expressed in the Final Action and we add the following for emphasis. 1 Appellants do not argue any claim separate from the other. See Appeal Brief, generally. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal. Claims 2-12 will stand or fall with independent claim 1. 2 Appeal 2014-007161 Application 13/531,810 Independent claim 1 is directed to an aqueous curable composition comprising at least one water-soluble carbohydrate having a range of dextrose equivalents (DE) of from 4 to 40. According to the Specification, a dextrose equivalent value is a representation of the average degree of polymerization or saccharide groups in the carbohydrate component and can be used to calculate a number average molecular weight for the carbohydrate component (saccharide ). Spec. 3--4. We refer to the Examiner's Final Office Action for a statement of the rejection. Final Act. 2-5. Like Appellants, Kelly and Hawkins are directed to curable compositions for substrates that need to retain at least some flexibility. Spec. 1; Kelly i-f 2; Hawkins i-f 4. Kelly teaches an aqueous curable binder composition comprising 20- 95% by weight of a water soluble polysaccharide (carbohydrate) having a molecular weight of less than l 0,000 pretreated with c1tnc acid and polymer particles of at least one polycarboxy emulsion copolymer having from 5- 40% by weight of a carboxy acid monomer. Kelly i-fi-19, 10, 14, 18, 27. Kelly also discloses the compositions can include known polyol crosslinker additives. Id. at i-f 7. However, Kelly does not disclose a range of dextrose equivalents for the carbohydrates disclosed. On the other hand, Hawkins teaches an aqueous binder composition including water soluble carbohydrates having a dextrose equivalent (DE) value from 2 to 20 (dextrin or maltodextrin) and a citric acid cross-linking agent. Hawkins Abstract, i-fi-1 10, 33, 35. According to Hawkins, these carbohydrates can have a number average molecular weight from about 1,000 to about 8,000 and are beneficial because their low viscosity and ability to cure at moderate temperatures 3 Appeal 2014-007161 Application 13/531,810 alone or with additives. Id. at il 33. Thus, based on these disclosures, one skilled in the art would have had a reasonable expectation of arriving at a curable composition for substrates that needs to retain at least some flexibility by substituting Kelly's carbohydrates with the carbohydrates of Hawkins. Appellants argue Kelly does not provide guidance to arrive at a polysaccharide having the claimed DE. App. Br. 4--5. Relying on the Declaration under 37 C.F.R. Â§ 1.132 by co-inventor Michael D. Kelly (Declaration)2, Appellants further argue Hawkins does not overcome Kelly's deficiency. Id. at 4. According to Declarant, the skilled artisan may not reasonably expect success in modifying Kelly by adding Hawkins' carbohydrate because the carbohydrate of Hawkins would not be expected to work at the pH of the binder of Kelly, where the binder allegedly has a moderate pH instead of a low pH as recited in the Specification. App. Br. 5; Deel. ,-r 4. We are unpersuaded by these arguments. Appellants' arguments are premised on the embodiment of Kelly's curable compositions where no cross linking agent or additive is included. However, as noted above, Kelly does not exclude the addition of a crosslinking agent or additive to the curable composition. Kelly i-f 7. In addition, the claims do not require a specific pH for the composition. Moreover, Hawkins clearly discloses the use of polyacid crosslinking agent (citric acid) in curable compositions comprising carbohydrates crosslinking having a dextrose equivalent ranging from 2-20, which overlaps the claimed range. Hawkins i-f 33, 35. While 2 The Declaration was submitted on July 15, 2013. 4 Appeal 2014-007161 Application 13/531,810 Appellants argue that Kelly does not disclose a dextrose equivalent value for Kelly's carbohydrates, neither Declarant nor Appellants have positively stated that Kelly's carbohydrates having a molecular weight of less than 10,000 do not meet the claimed dextrose equivalent values (a measure of molecular weight). Spec. 3--4; App. Br. 4--5; Deel. i-f 4. Further, the patent to Kelly and the instant application are owned by the same assignee (Rohm and Haas Company) and share one common inventor (Michael D. Kelly). Thus, the patent to Kelly is Appellants' own prior art and Appellants are in the best position to explain the reference and distinguish the claimed carbohydrates from the carbohydrates disclosed in Kelly. Appellants have not adequately done so. Appellants have not adequately explained why one skilled in the art would not have been capable of modifying the curable composition of Kelly by substituting the carbohydrate of Kelly with the carbohydrate of Hawkins and further incorporate Hawkins' crosslinking agent given that a crosslinking agent is contemplated by both references,. Kelly i-f 7; Hawkins i-fi-133, 35. Appellants further argue that data from Table 9 in the Specification show binders having a carbohydrate with a dextrose equivalent value of 20 (compositions B6, B 10 and B 11) have an unexpected dilution stability when compared to a composition with no polycarboxy emulsion copolymer (comparative composition L) or with a higher molecular weight carbohydrate (comparative composition K), or with a polycarboxy emulsion copolymer having too little copolymerized carboxy acid monomer. App. Br. 7; Spec. 12-21. The burden of showing unexpected results rests on the person who asserts them. Appellants may meet their burden by establishing that the 5 Appeal 2014-007161 Application 13/531,810 difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035(CCPA1980). We are unpersuaded by Appellants' evidence as well and agree with the Examiner's determination that the Examples in the Specification are not commensurate in scope with the instant claims. Ans. 5. As noted by the Examiner, Appellants' Examples are based on carbohydrates with a dextrose equivalent of 20. Ans. 5; Spec 12 (see asterisk footnote for Table 3). Specifically; the Examples are based on maltodextrin with a dextrose equivalent of 20. Spec 12 (Table 3). Appellants have not adequately explained why this specific maltodextrin is representative of the entire scope of the carbohydrates having a dextrose equivalent value of 4--40 encompassed by independent claim 1. In addition, Appellants' showing in the Specification does not provide a comparison with the closest prior art (Kelly). On this record, Appellants have not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. 6 Appeal 2014-007161 Application 13/531,810 Therefore, we affirm the Examiner's rejection of claims 1-12 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner's rejection of claims 1-12 under 35 U.S.C. Â§ 103(a) is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 7