Ex Parte Zhang et al

Patent Trial and Appeal Board

May 30, 2017

14386482 (P.T.A.B. May. 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.
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
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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
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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
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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
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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.
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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
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