HENKEL AG & CO.KGAA

Patent Trials and Appeals Board

Mar 21, 2022

2021002189 (P.T.A.B. Mar. 21, 2022)

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. 14/284,973 05/22/2014 Hanns Misiak PT019540 US 6164 31217 7590 03/21/2022 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER PATTERSON, MARC A ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 03/21/2022 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANNS MISIAK, HOLGER EICHELMANN, CHRISTINA HUEBNER, and OLIVER SOMMER Appeal 2021-002189 Application 14/284,973 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 4, 5, 7, 8, 10-14, 16, and 17. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed May 22, 2014 (“Spec.”); Final Office Action entered March 3, 2020 (“Final Act.”); Appeal Brief filed August 3, 2020 (“Appeal Br.”); and Examiner’s Answer entered November 17, 2020 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Henkel AG & Co. KGaA as the real party in interest. Appeal Br. 3. Appeal 2021-002189 Application 14/284,973 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to “aqueous dispersions based on polyvinyl acetate for the production of a coating on film substrates so as to decrease the diffusion of oil-containing substances.” Spec. ¶ 1. Claim 10 is reproduced below and is illustrative of the claimed subject matter (Appeal Br. 12, Claims App.): 10. A film substrate comprising a porous substrate and a barrier coating consisting essentially of: (D) at least 50 wt%, based on the total solids content of the aqueous dispersion, of a polyvinyl acetate copolymer A, which comprises at least 80 mol% of structural units that are directly obtained by the polymerization of vinyl acetate; (E) a polymer B that contains hydroxy and/or ionic groups selected from the group consisting of polyvinyl alcohols, polyelectrolytes, chitosan derivatives and mixtures thereof; and (F) 0.2 to 2.5 wt% of a surfactant; wherein the copolymer A is different from the polymer B, wherein the barrier coating decreases migration of an oily substance over a coating without the polymer B wherein the barrier coating is an aqueous dispersion. Claims 13 and 17 are also independent and each recite a packaging including a barrier coating with similar limitations as recited in claim 10. Appeal Br. 13-14, Claims App. Appeal 2021-002189 Application 14/284,973 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Doggett US 3,128,181 Apr. 7, 1964 Rubenstein US 3,373,043 Mar. 12, 1968 Levine et al. (“Levine”) US 3,423,352 Jan. 21, 1969 Lu et al. (“Lu”) US 4,024,292 May 17, 1977 Bellin et al. (“Bellin”) US 7,544,375 B1 June 9, 2009 Weitzel US 2002/0035192 A1 Mar. 21, 2002 Nonomura et al. (“Nonomura”) US 2006/0257635 A1 Nov. 16, 2006 Nopco GB 876,226 Aug. 30, 1961 REJECTIONS 1. Claims 5, 8, and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Levine, Nonomura, and Nopco. Final Act. 2-4. 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Levine, as evidenced by Nonomura and Nopco,3 and further in view of Weitzel. Final Act. 4. 3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Levine, as evidenced by Nonomura and Nopco, and further in view of Bellin. Final Act. 4-5. 3 Although the Examiner does not list Nonomura and Nopco in the rejections of claims dependent on claim 10, their dependency implies the Examiner is relying on Nonomura and Nopco in the same manner as in the rejection of claim 10. Thus, we list Nonomura and Nopco in the statements of the rejections of claims dependent on claim 10. Appeal 2021-002189 Application 14/284,973 4 4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Levine, as evidenced by Nonomura and Nopco, and further in view of Doggett. Final Act. 5. 5. Claims 12-14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Levine, Nonomura, Nopco, Rubenstein, and Lu. Final Act. 5-7. OPINION We confine our discussion to claim 10, which is representative of the separate arguments made by Appellant with respect to the rejections on appeal. 37 C.F.R. § 41.37(c)(1)(iv)(2013). Rejection 1 The Examiner’s Rejection In rejecting claim 10 as unpatentable over Levine, Nonomura, and Nopco, the Examiner found Levine discloses an aqueous dispersion including a vinyl acetate copolymer, a polymer containing hydroxyl groups (polyvinyl alcohol), and a surfactant in an amount of about 3% to about 10% by weight that is used as a coating for paper. Final Act. 2, citing Levine, col. 2, ll. 39-51 and col. 4, ll. 14-23, 58-63, 74. The Examiner cited Nopco as evidence that polyvinyl acetate satisfies the requirements of a coating that is a barrier to oily substrates. Id. at 3. The Examiner cited Nonomura as evidence that paper is a porous substrate. Id. The Examiner found Levine does not disclose that one surfactant in the mixture of surfactants is present in an amount of 0.2 to 2.5% as recited in claim 10. Final Act. 3. However, the Examiner found that Levine discloses Appeal 2021-002189 Application 14/284,973 5 one surfactant in the mixture of surfactants is present in an amount of about 50% to about 100% by weight of the surfactant (corresponding to about 1.5% to about 10% by weight of the composition). See id., citing Levine, col. 4, ll. 14-23. Thus, the Examiner determined that Levine’s disclosed range, although not identical to the recited range in claim 10, overlapped the recited range, which rendered the recited range obvious. Id. As to the transitional phrase “consisting essentially of” in claim 10, the Examiner found Levine does not state that the dispersion consists essentially of the copolymer, polymer, and surfactant, but that Appellant has the burden of showing the introduction of additional steps or components would materially change the characteristics of Appellant’s invention. Final Act. 3. Appellant’s Arguments Appellant argues Levine discloses the presence of monomers and polymerization catalysts or initiators that would fundamentally change the characteristics of the barrier coating recited in claim 10. Appeal Br. 7-8. Appellant contends also that the amount of surfactant recited in claim 10 would be interpreted as the total weight percentage of surfactants present in the composition such that Levine’s disclosure of about 3 to about 10 weight percent fails to suggest a total amount of surfactant within the recited range. Id. at 8. Discussion We are not persuaded by Appellant’s arguments. Claim 10 recites a barrier coating “consisting essentially of” a polyvinyl acetate copolymer A, a Appeal 2021-002189 Application 14/284,973 6 polymer B, and a surfactant. It is well settled that the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551- 52 (CCPA 1976). Although Appellant generally contends Levine discloses additional monomers and radical polymerization catalysts that would “materially change the characteristics of Appellant’s invention,” we agree with the Examiner that Appellant does not provide any particular details as to what such characteristics are and how such characteristics would be materially changed. Ans. 9. That is, the Specification describes the polyvinyl acetate copolymer dispersions “can be manufactured by processes known per se in aqueous solution by radical polymerization.” Spec. ¶ 32. The Specification describes copolymerizable ethylenically unsaturated monomers for the polyvinyl acetate copolymers including, for example, vinyl esters and acrylic acid. Id. ¶¶ 22-27. Likewise, Levine discloses producing polyvinyl acetate copolymer emulsions with copolymerizable ethylenically unsaturated monomers including vinyl esters and acrylic acid through radical polymerization. Levine, col. 2, ll. 40-60, col. 3, l. 43 - col. 4, l. 13, col. 5, ll. 6-14. Thus, it is not readily apparent what basic and novel characteristics of the claims would be altered by such disclosures in Levine. In this regard, claim 10 and the Specification emphasize that “the barrier coating decreases migration of an oily substance over a coating without the polymer B.” Claim 10; Spec. ¶¶ 14, 33. Therefore, it appears that the “basic and novel characteristics of the invention” are related to the Appeal 2021-002189 Application 14/284,973 7 presence of polymer B, which, as the Examiner found, is disclosed in Levine. Final Act. 2, Levine, col. 4, l. 74. We observe also that the Specification discloses the presence of a number of additives besides the components expressly recited in claim 10. Spec. ¶¶ 43-49. Thus, we agree with the Examiner that Appellant has not provided a sufficient showing that Levine includes additional components that would be excluded by the transitional phrase “consisting essentially of” recited in claim 10. Ans. 9. As to the recitation in claim 10 of “0.2 to 2.5 wt % of a surfactant,” we are of the view that Appellant’s arguments are insufficient to demonstrate reversible error on the part of the Examiner. In particular, the recitation of “a” surfactant in claim 10 is consistent with the Examiner’s position that the claim only requires the presence of one surfactant within the range recited therein. Indeed, the Specification allows for amounts of surfactant from “0 to about 5.0 wt %,” which is up to twice the amount recited in claim 10. Spec. ¶ 45. Thus, Levine’s disclosure that the amount of surfactant “will generally range from about 3% to about 10% by weight” and that “from about 50% to about 100% by weight based on the total surfactant content” is a surfactant containing at least four ether linkages results in an amount of surfactant (1.5 to 10 wt. %) that overlaps the amount recited in claim 10, thus rendering the recitation “0.2 to 2.5 wt % of a surfactant” obvious. Final Act. 3; Ans. 9. However, even if Appellant is correct that the “0.2 to 2.5 wt % of a surfactant” recited in claim 10 is the total amount of surfactant in the composition, we do not find this argument persuasive of reversible error. As discussed above, Levine discloses amounts of surfactant that “generally” range from “about” 3% to 10% by weight and the Specification, although Appeal 2021-002189 Application 14/284,973 8 disclosing the surfactant content “is preferably kept low,” does not assign any particular criticality to the amount of surfactant that would distinguish the upper limit of 2.5 wt % recited in claim 10 from the lower limit of “about 3 %” by weight recited in Levine. Spec. ¶ 45. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); In re Brandt, 886 F.3d 1171, 1176-77 (Fed. Cir. 2018) (holding that abutting ranges of “less than 6 lbs/ft3” and “between 6 lbs/ft3 and 25 lbs/ft3” constituted a “virtually negligible” difference and were “so mathematically close that the examiner properly rejected the claims as prima facie obvious”) Accordingly, we affirm the Examiner’s rejection of claim 10, and claims 5 and 8 dependent therefrom. Rejections 2-5 Claims 4, 7, and 11, the subject of Rejections 2-4, depend from claim 10. Appellant argues the additionally cited references fail to cure the deficiencies in Levine discussed with respect to claim 10. See Appeal Br. 8-9. Claims 12-14, 16, and 17, which include independent claims 13 and 17, are the subject of Rejection 5. Appellant addresses only the independent claims, setting forth similar arguments as discussed above with respect to claim 10. See Appeal Br. 10-11. Appellant contends the additionally cited prior art does not cure the deficiencies of Levine. Id. Accordingly, we affirm Rejections 2-5 for similar reasons as discussed above for Rejection 1. Appeal 2021-002189 Application 14/284,973 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 8, 10 103(a) Levine, Nonomura, Nopco 5, 8, 10 4 103(a) Levine, Nonomura, Nopco, Weitzel 4 7 103(a) Levine, Nonomura, Nopco, Bellin 7 11 103(a) Levine, Nonomura, Nopco, Doggett 11 12-14, 16, 17 103(a) Levine, Nonomura, Nopco, Rubenstein, Lu 12-14, 16, 17 Overall Outcome 4, 5, 7, 8, 10- 14, 16, 17 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED