Ex Parte Romero-Nochebuena et alDownload PDFPatent Trial and Appeal BoardMar 30, 201713588738 (P.T.A.B. Mar. 30, 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. 13/588,738 08/17/2012 Eduardo Romero-Nochebuena 11-11-FF01.US 1049 33249 7590 04/0 Hexion Inc. 12650 Directors Drive, Suite 100 Stafford, TX 77477 EXAMINER LEE, DORIS L ART UNIT PAPER NUMBER 1764 NOTIFICATION DATE DELIVERY MODE 04/03/2017 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): tammy.hodges @ hexion.com lisa.jones @ hexion.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDUARDO ROMERO-NOCHEBUENA, PARESH JASWANTLAL SHETH, JASON LEE HOLDER, HARDEN CHRISTOPHER WREN, and MICHAEL BURCE DANVERS Appeal 2016-002701 Application 13/588,738 Technology Center 1700 Before PETER F. KRATZ, JULIA HEANEY, and MICHAEL G. McMANUS, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner rejecting claims 1—25 of Application 13/588,738.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 Appellants identify the real party in interest as Hexion Inc. Appeal Br. filed July 30, 2015 (“Br.”)3. 2 Final Rejection mailed Nov. 14, 2014. The November 14, 2014 Final Rejection incorporates by reference the Office Action mailed June 27, 2014 (“Office Act.”), to which we refer herein for the grounds of the rejections on Appeal 2016-002701 Application 13/588,738 BACKGROUND The subject matter on appeal relates to a composition for providing water resistance to a gypsum product. App. Br. 7. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the subject matter on appeal: 1. A composition, comprising: at least one paraffin wax; a saponifiable wax; a styrene-maleic anhydride copolymer; and an alkali metal hydroxide. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Kuroda et al. (“Kuroda”) US 4,741,773 May 3, 1988 Tagawa et al. (“Tagawa”) US 5,098,943 Mar. 24, 1992 Mahoney et al. (“Mahoney”) US 2010/0116406 Al May 13,2010 Boelee WO 99/35103 July 15, 1999 appeal. This Decision also refers to the Examiner’s Answer mailed Nov. 3, 2015 (“Ans.”) and the Reply Brief filed Dec. 30, 2015 (“Reply Br.”). 2 Appeal 2016-002701 Application 13/588,738 THE REJECTIONS 1. Claim 15 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claims 1, 3—5, 8—13, 21—23, and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Mahoney and Kuroda. 3. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Mahoney, Kuroda, and Tagawa. 4. Claims 2, 14, 16—20, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Mahoney, Kuroda, and Boelee. DISCUSSION Rejection 1 Appellants state that subsequent to the Final Office Action, claim 15 was amended to correct the antecedent basis which is the subject of Rejection 1. App. Br. 6. The Application file record reflects that the Examiner approved the amendment for entry on February 20, 2015; the Advisory Action dated February 26, 2015, however, does not explicitly state that the amendment was entered. Id. Additionally, the Examiner has not expressly withdrawn the indefmiteness rejection. In view of the Examiner’s initialed approval of the amendment for entry, we procedurally reverse the rejection. We note that our decision is not based on the merits of the rejection. In the event of further prosecution, the Examiner is 3 Appeal 2016-002701 Application 13/588,738 requested to state expressly whether the indefiniteness rejection is withdrawn in view of the amendment to claim 15. Rejection 2 Appellants argue for patentability of the appealed claims on the basis of limitations in claims 1 and 25, and do not separately argue dependent claims 3—5, 8—13, or 21—23. App. Br. 9-13. We therefore focus our discussion on claims 1 and 25 as argued by Appellants; all other claims will stand or fall with those claims. 37 C.F.R. § 41.37(c)(l)(iv)(2013). Upon consideration of the evidence presented in this Appeal in light of each of Appellants’ contentions, we determine that a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. Accordingly, we affirm the rejections for the reasons set forth by the Examiner (Office Act. 3—9; Ans. 3—8), which we adopt as our own. We add the following primarily for emphasis. The Examiner finds that Mahoney teaches all of the components of the composition of claim 1, except a styrene-maleic anhydride copolymer. Office Act. 3, citing Mahoney H 21, 37. The Examiner finds, however, that Kuroda teaches a water repellant composition incorporating a styrene-maleic anhydride copolymer, and determines that it would have been obvious to a person of ordinary skill in the art to use Kuroda’s styrene-maleic anhydride copolymer as an additive in Mahoney, in order to improve the viscosity and stability of the emulsion. Office Act. 4, citing Kuroda 4:5—15. Appellants argue that the rejection should be reversed because Mahoney and Kuroda, alone or in combination, do not teach the composition of claim 1, and neither reference suggests modification of Mahoney to 4 Appeal 2016-002701 Application 13/588,738 include a styrene-maleic acid copolymer. App. Br. 9-13. Specifically, Appellants argue that Mahoney does not suggest any need for a viscosity or stability modifier because it discloses that its composition has equivalent or better viscosity and stability than control samples. Id. at 10. Further, Appellants argue that Mahoney’s statement that “other additives may be provided” and specific disclosure of polyvinyl alcohol as an example of such an additive (Mahoney 131), would not have suggested the use of styrene- maleic acid copolymer to a person of ordinary skill in the art. Id. Appellants’ arguments are not persuasive of reversible error. As the Examiner explains, both Mahoney and Kuroda teach emulsions formulated for water repellency (Ans. 3, citing Mahoney 1 5, Kuroda 3:25 40), and Kuroda teaches both polyvinyl alcohol and styrene-maleic acid copolymer for improving viscosity and stability of its emulsion. Id., citing Kuroda 4:5— 10. The Examiner’s explanation that a person of ordinary skill in the art would have been led by Kuroda to use styrene-maleic acid copolymer in Mahoney’s composition provides sufficiently articulated reasoning having evidentiary underpinnings to support the rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We also are not persuaded by Appellants’ further argument, see App. Br. 11—13; Reply Br. 3, that the references provide no suggestion to include Kuroda’s styrene-maleic anhydride copolymer in Mahoney’s composition because the compositions themselves have no components in common other than the optional additive of polyvinyl alcohol. As the Examiner explains, even though Kuroda is based in silicone oil and Mahoney is paraffin wax, both compositions are highly hydrophobic aqueous emulsions, and need additives to stabilize the hydrophobic components with the aqueous components. Ans. 6 (providing citations to 5 Appeal 2016-002701 Application 13/588,738 Kuroda and Mahoney). Further, Appellants’ argument that Kuroda is silent on the use of paraffin wax and other components recited in claim 1 is not responsive to the rejection, which is based on modification of Mahoney’s composition with Kuroda’s additive, and therefore not persuasive of reversible error. Rejections 3 and 4 Appellants argue that the reference the Examiner relies upon for Rejection 3, Tagawa, does not provide a suggestion to use a styrene-maleic anhydride copolymer in the recited ratio of claims 6—7 in the composition of Mahoney and Kuroda. App. Br. 18. Appellants do not explain the basis of their argument sufficiently to persuade us of reversible error by the Examiner. Appellants’ argument that Boelee does not provide a suggestion to use its wax system as a substitute for montan wax in Mahoney’s composition is similarly conclusory. App. Br. 24. The rest of Appellants’ arguments against Rejections 3 and 4 rely on the same points as Appellants’ arguments against Rejection 2. Accordingly, we affirm Rejections 3 and 4 for the same reasons as discussed above for Rejection 2. SUMMARY We procedurally reverse the rejection of claim 15 as indefinite under 35 U.S.C. § 112, second paragraph. We affirm the rejections of claims 1—14 and 16—25 as unpatentable under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation