Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardMay 30, 201714386482 (P.T.A.B. May. 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. 14/386,482 09/19/2014 Jiguang Zhang 72245-US-PCT 1049 21898 7590 06/01/2017 ROHM AND HAAS COMPANY c/o The Dow Chemical Company P.O. Box 1967 2040 Dow Center Midland, MI 48641 EXAMINER BUTCHER, ROBERT T ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIGUANG ZHANG, JIT AO CHEN, FUJUN LU, WEI LU, SHAOGUANG FENG, JOSEPH M. ROKOWSKI, TONG SUN, and LOGANATHAN RAVISANKER Appeal 2016-006888 Application 14/3 86,4821 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—9 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 8, 2015). Appellants seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6(b). For the reasons set forth below, we affirm. 1 Dow Global Technologies LLC is identified as the real party in interest. Br. 2. Appeal 2016-006888 Application 14/386,482 BACKGROUND The ’482 Application describes a process for making polyurethane/acrylic hybrid dispersions useful in high PVC coatings. Spec. 1:5—6. According to the Specification, the process reduces atmospheric pollution by replacing organic solvents with waterborne coating compositions. Id. at 1:11—17. Claim 1 is representative of the ’482 Application’s claims and is reproduced below: 1. A process for making polyurethane/acrylic hybrid dispersions that provide filled or pigmented coatings with improved binder affinity to pigments and improved water swelling performance comprising the following continuous steps: i) adding at least one polyol into a reactor; ii) adding DMPA simultaneously with/after step i), but before step iii), as water dispersibility enhancing agent at a temperature of from 115°C to 140°C to obtain a homogeneous solution; iii) adding at least one polyisocyanate at a temperature of from 75°C to 95°C until the NCO content reaches a constant value to prepare the polyurethane prepolymer; iv) adding at least one acrylate monomer(s), at least one styrenic monomer(s), or the mixture thereof, as diluent to the polyurethane prepolymer, at a temperature of from 40°C to 65°C; v) adding a neutralizing agent; vi) dispersing and extending the polyurethane prepolymer in the presence of the acrylate monomer, and/or the styrenic monomer of step iv); and vii) feeding the emulsified mixture of at least one ethylenically unsaturated nonionic monomer(s), and based on the total weight of the ethylenically unsaturated nonionic 2 Appeal 2016-006888 Application 14/386,482 monomer(s) including the acrylate monomer, and/or the styrenic monomer of step iv), from 1 wt.% to 3 wt.% acid monomer(s), and copolymerizing them together, at a pH value from 7.2 to 8.6 in the presence of a buffer reagent, to get the polyurethane/acrylate hybrid dispersion. Br. 11. REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 1, 2 and 4—9 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Gertzmann3 and Satgurunathan.4 Final Act. 4. 2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Gertzmann, Satgurunathan, and Overbeek.5 Final Act. 6. DISCUSSION Appellants argue for the reversal of the rejections to claims 2—9 on the basis of limitations present in claim 1. See Br. 5—9. We, therefore, limit our analysis to independent claim 1 for the rejections of these claims. Claims 2— 9 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 2 The Examiner has withdrawn the rejection of claims 1—9 under 35 U.S.C. § 112(b) as indefinite. Ans. 6. 3 US 2004/0034146 Al, published Feb. 19, 2004. 4 US 2007/0141264 Al, published June 21, 2007. 5 US 4,983,662, issued Jan. 8, 1991 3 Appeal 2016-006888 Application 14/386,482 Rejection 1 and Rejection 2. Appellants argue, inter alia, that these rejections should be reversed because (1) the applied prior art “fails to disclose any polyurethane/acrylate hybrid dispersion wherein the amount of isocyanate groups in the dispersion is in excess of the active hydrogen groups therein . . . Br. 6, (2) the applied prior art “fails to recognize the gelling problems that are solved by the methods of the instant claims . . . id. at 6—7, (3) the record evidence establishes unexpected results against the closest prior art, id. at 7—8, and (4) the Examiner erred in finding that Appellants’ “comparisons and data on the record as not commensurate in scope with the instant claims.” Id. at 7, 8—9. We address Appellants’ arguments in turn. First, Appellants assert that the rejection of claim 1 should be reversed because “Gertzmann discloses only equimolar amounts of isocyanate and polyol or active hydrogen group containing material; otherwise, Gertzmann says that unacceptable gelling occurs.” Id. at 6 (citing Gertzmann 113). Appellants conclude, therefore, that “Gertzmann fails to disclose each and every feature of the instant claims . . . ,” particularly the step of adding at least one polyisocyanate to a polyol and DMPA mixture until the NCO content reaches a constant value. Br. 6. We are not persuaded by these arguments. Appellants’ characterization of Gertzmann as limited to disclosing equimolar amounts of reactants is incorrect. Rather, Gertzmann specifically discloses “. . . reacting the isocyanate component (Al) with a molar deficit of components (Bl)[, i.e., one or more polyols], (B3)[, i.e., a hydrophilic 4 Appeal 2016-006888 Application 14/386,482 potentially ionic compound, such as DMPA], [etc.] . . . Gertzmann || 16, 33, 75 (emphasis added). As the Examiner found, Gertzmann discloses reacting polyisocyanate with a polyol and DMPA mixture until no excess NCO or OH/NH/NH2 groups are present. Final Act. 3 (citing Gertzmann || 15—18, 33, 15, 29, 74— 75); see also Ans. 7. Appellants have not persuasively explained why Gertzmann’s disclosure would not have taught or suggested to the ordinary skilled artisan that the reaction proceeds until the NCO content reaches a constant value. We, therefore, discern no reversible error in the Examiner’s finding that Gertzmann suggests the disputed limitation. Second, Appellants assert in connection with argument (2) that “Gertzmann and Satgurunathan each fail[] to recognize that polymerization of monomers in the presence of an aqueous polyurethane dispersion results in gelling and gives a useless polymer.” Br. 7. Appellants further argue that Overbeek does not cure the deficiencies of Gertzmann and Satgurunathan. Id. We are not persuaded by these arguments. Appellants are incorrect in arguing that the applied prior art’s silence, with respect to the problem of gelling during monomer polymerization in the presence of an aqueous polyurethane, is relevant to our disposition. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419—20 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the 5 Appeal 2016-006888 Application 14/386,482 patentee controls. . . . The first error of the Court of Appeals in this case was . . . holding that courts and patent examiners should look only to the problem the patentee was trying to solve.” (citation omitted)). Third, Appellants assert in connection with arguments (3) and (4) that Tables 5 and 8 and Examples 1—3 of the Specification establish unexpected results when compared to the closest prior art. Br. 7—8. According to Appellants, the record evidence demonstrates that “[t]he method of the instant claims results in a composition that provides filled or pigmented coatings having an unexpected and dramatic improvement (<25—50% or more) in water swelling performance.” Id. at 7. Appellants’ further argue that “the Zhang Declaration compared the exact same compositions having three different acid monomers in the middle of the claimed acid monomer range (1.5 wt.%) with buffer (inventive) to those same compositions without buffer (comparative).” Id. at 8. Appellants’ assert that this comparison demonstrated a lack of gel formation with buffered samples, thus providing further evidence of unexpected results. Id. Unexpected results must be established by clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property.”); see also McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). For the reasons stated by the Examiner in the Answer, Appellants have not met their burden in providing clear and convincing evidence of unexpected results. See Ans. 8—9. In particular, the parameters tested are not commensurate in scope with the scope of the instant claims. 6 Appeal 2016-006888 Application 14/386,482 With respect to the Specification, Appellants have not provided evidence of unexpected results that are commensurate in scope with the claims because (i) no amounts of polyol, DMPA, water, etc., are claimed; (ii) the Examples tested only one polyol, i.e., solid Polycaprolactone PCL, see Spec. 12:22, and (iii) exemplification of the claimed “buffer reagent” is limited to only NaHC03 and Na2C03. Spec. 17:2—3; 19:18—20; 20:16—17. Furthermore, the claimed range of acid monomer is from 1—3 wt.%, but only an amount of 1.5 wt.% was tested. Zhang Decl. 2; see also Spec. 17:1; Example 1. Therefore, the Zhang Declaration does not provide evidence of unexpected results that occur over the entire claimed range. Accordingly, Appellants’ assertion of unexpected results is unconvincing. Thus, we affirm Rejection 1 and Rejection 2. CONCLUSION For the reasons provided in the Examiner’s Answer, and above, we affirm the rejections of claims 1—9 of the ’482 Application. 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 7 Copy with citationCopy as parenthetical citation