Ex Parte Romero-Nochebuena et al

Patent Trial and Appeal Board

Mar 30, 2017

13588738 (P.T.A.B. Mar. 30, 2017)

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.”).
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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
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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
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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
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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
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