IPS, CORPORATION -WELD-ON DIVISION

Patent Trials and Appeals BoardOct 29, 2021

2020005679 (P.T.A.B. Oct. 29, 2021)

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. 14/862,751 09/23/2015 Wei-Young Wu 1255.18 3683 20792 7590 10/29/2021 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER SERGENT, RABON A ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 10/29/2021 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): myersbigel_pair@firsttofile.com uspto@myersbigel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WEI-YOUNG WU and ANDREAS SCHNEIDER Appeal 2020-005679 Application 14/862,751 Technology Center 1700 BEFORE CATHERINE Q. TIMM, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge TIMM. Opinion Dissenting filed by Administrative Patent Judge REN. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4–11, 14, 17, 19, 21, and 26–30. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant, which refers to “applicant” as defined in 37 C.F.R. § 1.42(a), identifies the real party in interest as IPS, CORPORATION - WELD-ON DIVISION. Appeal Br. 2. Appeal 2020-005679 Application 14/862,751 2 We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a solvent cement for bonding thermoplastic resin articles, see, e.g., claim 1, and the associated method of bonding thermoplastic articles using the solvent cement, see, e.g., claim 14. According to the Specification, solvent cements are used to bond together certain thermoplastic articles, such as polyvinyl chloride (PVC) or chlorinated PVC (CPVC) pipes. Spec. 1:15–19. Solvent cements, as the name implies, include solvents, and, most commonly, potentially hazardous solvents, such as tetrahydrofuran (THF), N-Methyl-2-pyrrolidone (NMP), dimethyl sulfoxide (DMSO), dimethyl formamide (DMF), and others. Spec. 2:16–30. New European regulations classify THF as a suspected carcinogen (cf. 3rd Adaptation to Technical Progress (ATP) to the EU Classification, Labeling and Packaging Regulation EC No. 1272/2008 (CLP)) and a new French regulation bans the use of solvent cements comprising harmful solvents for drinking water applications. Spec. 2:24–30. Thus, there is a need to formulate solvent cements devoid of hazardous solvents such as THF and NMP while retaining other desirable properties. Spec. 2:32–3:1. Appellant replaces hazardous solvents—tetrahydrofuran (THF), N- Methyl-2-pyrrolidone (NMP), and aliphatic compounds having a hydrocarbon ring with at least two ether groups in the ring structure—with a mixture of methyl ethyl ketone (MEK) and at least one of acetone or cyclohexanone (CYH). See, e.g., claims 1 and 14. Specifically, the solvent cement includes: Appeal 2020-005679 Application 14/862,751 3 (a) 5–25 wt% dissolved thermoplastic resin comprising PVC or CPVC; (b) 70 wt% solvent, the solvent comprising methyl ethyl ketone (MEK) and at least one additional solvent selected from the group consisting of acetone, cyclohexanone, and combinations thereof; and (c) 0.5–7 wt% at least partially imidized acrylic polymer, the amount also being less than 25 wt% of the combination of dissolved thermoplastic resin and the at least partially imidized acrylic polymer. Id. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A solvent cement for bonding articles made of a thermoplastic resin wherein the solvent cement comprises: a dissolved thermoplastic resin comprising PVC or CPVC in an amount from 5% to 25% by weight of the solvent cement, a solvent in an amount of at least 70 wt. % in relation to the total weight of the solvent cement, and an at least partially imidized acrylic polymer in an amount from 0.5% to 7% by weight of the solvent cement, wherein the solvent cement does not comprise tetrahydrofuran, wherein the solvent cement does not comprise N-Methyl- 2-Pyrrolidone (NMP), wherein the solvent cement does not comprise an aliphatic compound having a hydrocarbon ring with at least two ether groups in the ring structure, wherein the solvent comprises methyl ethyl ketone (MEK) and at least one additional solvent selected from the Appeal 2020-005679 Application 14/862,751 4 group consisting of acetone, cyclohexanone, and combinations thereof; wherein the at least partially imidized acrylic polymer is present in the solvent cement in an amount less than 25 wt. % of the dissolved thermoplastic resin and the at least partially imidized acrylic polymer together. Claims Appendix (Appeal Br. 27). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Patel US 6,372,821 B1 Apr. 16, 2002 Brady US 6,031,047 Feb. 29, 2000 Abel US 5,563,193 Oct. 8, 1996 Bush US 5,416,142 May 16, 1995 Bush ’476 WO 2006/121476 Al Nov. 16, 2006 REJECTIONS2 Claims 1, 2, 4, 5, 7, 8, 10, 11, 14, 17, 19, 21, 26, 27, 29, and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over Bush. Non-Final Act. 4; Ans. 4. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Bush in view Patel and Abel. Non-Final Act. 6; Ans. 5. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Bush in view of Patel or Abel and further in view of Brady. Non-Final Act 7; Ans. 7. 2 The Examiner has withdrawn the rejection of claims 28 and 30 as indefinite under 35 U.S.C. § 112(b). Ans. 15. Appeal 2020-005679 Application 14/862,751 5 Claims 1, 2, 4–8, 10, 11, 14, 17, 19, 21, and 26–30 are rejected under 35 U.S.C. § 103 as being unpatentable over Bush in view of Bush ’476. Non-Final Act. 8; Ans. 8. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Bush in view of Bush ’476, further in view of Patel and Abel. Non-Final Act. 11; Ans. 11. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Bush in view of Bush ’476, further in view of Patel or Abel and further in view of Brady. Non-Final Act. 12; Ans. 13. Claim 30 is rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Non-Final Act. 2; Ans. 3. OPINION The Obviousness Rejections Appellant presents arguments under separate claim headings. Appeal Br. 4–24. We have considered the issues for each separately argued claim, but we do not repeat our reasoning where we have already addressed an issue and, where possible, we address similar issues together. Claims not separately argued stand or fall with the claim from which they depend in accordance with the provisions of 37 C.F.R. § 41.37(c)(1)(iv). Where Appellant has not addressed a specific rejection, we summarily affirm that rejection. For the purposes of this opinion, our discussion below focuses on the rejections argued. Claim 1 We begin with the Examiner’s rejections of claim 1, of which there are two: one over Bush alone (Non-Final Act. 4) and one over Bush in view of Bush ’476 (Non-Final Act. 8). Appellant presents arguments against the Appeal 2020-005679 Application 14/862,751 6 rejection over Bush alone under heading I.A. (Appeal Br. 5) and against the rejection over Bush in view of Bush ’476 under heading I.C. (Appeal Br. 14). The Rejection over Bush Alone In rejecting claim 1 as obvious over Bush, the Examiner finds that Bush teaches or suggests a solvent cement including PVC or CPVC thermoplastic resin, an imidized acrylic polymer, and solvent, each in concentrations overlapping the ranges of claim 1. Non-Final Act. 4–5. The Examiner finds that Bush teaches a list of solvents that may be used in combination. Non-Final Act. 4. The Examiner acknowledges that Bush’s list of solvents includes solvents THF and NMP, which claim 1 excludes, but finds that the list also includes solvents within the scope of claim 1, i.e., methyl ethyl ketone (MEK), acetone, and cyclohexanone (CYH). Non-Final Act. 5. Based on Bush’s solvent list, the Examiner concludes that it would have been obvious to the ordinarily skilled artisan to have selected any of the solvents known to be suitable for dissolving the claimed polymers including combinations within the scope claim 1, i.e., combinations of methyl ethyl ketone (MEK) with at least one of acetone and cyclohexanone (CYH). Non- Final Act. 5. Appellant contends that Bush’s broad ranges for general components do not provide enough direction to support the Examiner’s finding of suggestions in Bush for selecting the recited components in the manner claimed. Appeal Br. 6. According to Appellant, Bush teaches away from a solvent including at least 70 wt% solvent comprising MEK and at least one of acetone or CYH without also including THF or NMP when the polymer is PVC or CPVC, which we refer to collectively as PVC/CPVC. Appeal Br. 6– Appeal 2020-005679 Application 14/862,751 7 10; Reply Br. 2–3. Further according to Appellant, Bush does not provide any suggestion or direction to include an at least partially imidized acrylic polymer in the concentration required by claim 1 and, in fact, Bush’s examples direct the ordinary artisan away from such concentrations. Appeal Br. 10–11; Reply Br. 3–5. Lastly, according to Appellant, Bush’s broad ranges for general components and laundry lists of possible components fail to provide any direction to the particularly claimed solvent cement or a reasonable expectation of success in achieving it. Appeal Br. 11–13; Reply Br. 5–6. For the following reasons, we determine that Appellant has not identified a reversible error in the Examiner’s rejection of claim 1. First, Bush’s broad teachings support the Examiner’s findings. Bush teaches a solvent cement including: (A) from about 5 to about 60 wt% of at least one water-insoluble polymer selected from ABS, PVC, CPVC or mixtures thereof, which is a range encompassing the 5 to 25 wt% PVC/CPVC range of claim 1; (B) from about 1 to about 60 wt% of at least one imide-containing acrylic polymer, which overlaps the 0.5 to 7 wt% range recited in claim 1; and (C) from about 10 to about 90 wt% solvent, which overlaps with the at least 70 wt% solvent range recited in claim 1. Bush col. 5, ll. 56–66. Second, Bush’s more specific teachings with regard to component (A) support the Examiner’s findings. As to component (A), Bush discloses a concentration preference of about 5 to about 30 wt% for water-insoluble polymer mixtures, stating that mixtures of PVC and CPVC have been useful. Bush col. 6, l. 1–col. 7, l. 25. Bush’s about 5 to about 30 wt% range encompasses Appellant’s range of 5 to 25 wt% for dissolved thermoplastic Appeal 2020-005679 Application 14/862,751 8 resin comprising PVC or CPVC. Bush’s examples include PVC/CPVC in concentrations within the range of claim 1. See, e.g., Examples 5–10. Third, although the evidence as to the imidized acrylic polymer is somewhat more complicated, contrary to Appellant’s arguments (Appeal Br. 10–11; Reply Br. 4–5), we determine that Bush provides direction for including imide-containing acrylic polymer in a range overlapping the range of claim 1. See Bush col. 5, ll. 63–64 (disclosing 1 to 60 wt%, “of at least one imide containing acrylic polymer”). Appellant contends that Bush directs one of ordinary skill in the art away from the claimed composition because Bush’s examples do not have imidized acrylic polymer in the range required by claim 1. Appeal Br. 10– 11; Reply Br. 4. We agree with Appellant that Bush’s examples do not appear to contain concentrations of imidized acrylic polymer within the concentration range of claim 1. See Bush col. 9, ll. 65–68 (disclosing that Paraloid HT-510 from Rohm & Haas Company is an imidized acrylic polymer); and Bush Examples 5 and 7–10 (including Paraloid HT-510 in concentrations greater than the ranges recited in claim 1). But we disagree that the examples teach away. This is because the general discussion teaches or suggests using concentrations overlapping the range of the claim. When the prior art teaches away from a combination, that combination is more likely to be nonobvious, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), but to teach away, a reference must discourage one of ordinary skill in the art from following the path set out in the reference, or lead that person in a direction divergent from the path that was taken by the applicant, In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The path set out by Bush indicates that, generally, the workable or optimal range Appeal 2020-005679 Application 14/862,751 9 of the imide-containing acrylic polymer is 1 to 60 wt% (Bush col. 5, ll. 62– 63). Given Bush intends to formulate the same product as Appellant, i.e., a solvent cement, and Bush does not discourage the use of imidized acrylic polymers in concentrations in the lower portion of the broader 1 to 60 wt% range, we determine that a preponderance of the evidence supports the Examiner’s finding that it would have been obvious to select concentrations within the 1 to 7% range, i.e., within the range that is both within Bush’s component (B) range and within the range recited in claim 1. Normally, the ordinary artisan would arrive at workable compositions through routine experimentation. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Further, disclosed examples do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Fourth, although the evidence with regard to the solvent composition, i.e., Bush’s component (C) is also more complicated, we disagree with Appellant’s contention that Bush teaches away from the solvent mixture required by claim 1, i.e., a mixture of MEK and at least one of acetone and CYH. Appeal Br. 6–10; Reply Br. 2–3. As to component (C), Bush discloses that the solvent may be any liquid or liquids that will dissolve the water-insoluble polymers (A) and (B) and preferably is a solvent for the plastics to be welded or bonded together with the solvent cement. Bush col. 13, ll. 12–33. Toxicity and biodegradability should also be considered. Id. Thus, Bush provides general directions to the ordinary artisan for selecting the solvent and provides a Appeal 2020-005679 Application 14/862,751 10 reason for not selecting those that are toxic. Bush evinces that it was known that acetone was desirable as it can be used to prepare solvent cements with desirable viscosity and low toxicity. Bush col. 13, l. 66–col. 14, l. 1. Bush discloses a list of useful solvents that includes both the solvents permitted by claim 1 (MEK, acetone, and CYH) and those excluded (e.g., THF and NMP). Bush col. 13, ll. 34–47. This list is generic for the (A) and (B) components and, thus, encompasses solvents for ABS as well as for PVC/CPVC. For this reason, care must be taken in evaluating what the list of references conveys to the ordinary artisan for selecting solvents for PVC/CPVC. The choice of solvent depends on the type of water-insoluble polymers (A) and (B) used and the intended use of the composition. Bush col. 13, ll. 47–50. As a general matter, Bush states a preference for the permitted solvents methyl ethyl ketone (MEK), acetone, cyclohexanone (CYH) and the excluded solvents tetrahydrofuran (THF) and N-methyl pyrrolidone (NMP) without distinguishing which polymer (A) is selected. According to Bush, Although any of the above solvents may be used, it has been discovered that the preferred solvents when the compositions of the invention are to be used as solvent cements characterized as having low VOC, the solvents preferably are tetrahydrofuran, methyl ethyl ketone, acetone, cyclohexanone, N-methyl pyrrolidone (NMP), dimethylformamide (DMF), and mixtures thereof, although DMF is no longer a desirable solvent in view of its carcinogenic potential in humans. Bush col. 13, ll. 54–64 (emphasis added). Bush calls out MEK and acetone as particularly useful when polymer (A) is ABS. Bush col. 13, ll. 63–66. Bush calls out mixtures containing THF as useful when polymer (A) is PVC or CPVC. Specifically, Bush states: Appeal 2020-005679 Application 14/862,751 11 Mixtures of tetrahydrofuran (THF) and cyclohexanone and a mixture of THF, CYH, MEK and acetone are useful solvents in adhesive compositions when the water-insoluble polymer (A) is PVC. When the water-insoluble polymer (A) is CPVC, THF or mixtures of THF, CYH, MEK and acetone are useful solvents. Bush col. 14, ll. 1–7. Bush also includes THF or NMP in all the exemplified compositions containing PVC/CPVC. Examples 2–10, 12–22. But Bush, as found by the Examiner, does not mandate THF or NMP be included, they are only described as preferred or part of preferred mixtures. Non-Final Act. 4. Nor does Bush discourage the use of MEK in combination with acetone or cyclohexanone (CYH) as a solvent for PVC/CPVC, and Bush teaches these solvents as preferred as well, albeit generally. Bush col. 13, l. 11–col. 14, l. 7. Appellant relies on the Wu Declaration as evidence that “it was known that certain solvents such as, e.g., tetrahydrofuran (THF), could be used with PVC resins and provide better adhesives than solvent cements including PVC with MEK as the solvent.” Appeal Br. 8. Wu declares that “[f]or example, use of the solvent tetrahydrofuran (THF) with the thermoplastic resin poly(vinyl chloride) (PVC) is known to provide bonds with higher intrinsic joint strength compared to when the solvent methyl ethyl ketone (MEK) is used with PVC.” Wu Decl. ¶ 4, citing Yue, C. Y. and Chui, C. M. “On the Structure and Strength of Solvent-Welded Joints.” J. Adhesion, 1987, Vol. 24, pp. 155-171, Abstract and page 161, second paragraph to page 163. Yue is a research paper with an object of investigating the effect of the amount of dissolved PVC polymer on the structure and strength of solvent-welded joints. Yue Intro, ¶ 5. Yue provides evidence that MEK was Appeal 2020-005679 Application 14/862,751 12 a known solvent for use in PVC solvent cements. See Yue, Experimental ¶ 1 (“THF and MEK were chosen since most commercial solvent cements are based on either of these solvents.”). Although Yue discloses that solvent welds from pure tetrahydrofuran (THF) and cyclohexanone (CYH) bonding solvents had high intrinsic joint strength while solvent welds from pure methyl ethyl ketone (MEK) bonding solvent had lower intrinsic joint strength, adding dissolved PVC powder to the THF system led to significant decreases in strength, but adding up to 2 wt% in the MEK system increased strength. Yue abs.; Experimental ¶ 1. In both THF and MEK solvent cements, large (greater than 5%) amounts of dissolved polymer led to low intrinsic strength. Yue Conclusion ¶ 2. Wu further declares that “[o]ne reason why an adhesive including THF and PVC can provide stronger bonds compared to an adhesive including MEK and PVC is because THF can better dissolve PVC.” Wu Decl. ¶ 5, citing Yue, C. Y., “Influence of the Bonding Solvent on the Structure and Strength of Solvent Welded Joints” J. Adhesion, 1986, Vol. 20, pp. 99-116, Abstract (hereinafter “Yue II”). Yue II indicates that CYH and MEK were known to dissolve PVC. Yue II “Solvent diffusion experiments” ¶ 1 (“Complete dissolution of the PVC was observed in the beakers containing THF and CYH. The few particles of PVC in the beaker containing MEK completely dissolved on light stirring.”); Yue II “Results and Discussion” at p. 108 (“Strong solvent welded joints were obtained with MEK, THF, and CYH as bonding solvents.”); Yue II Conclusion ¶ 1 (“THF and CYH are good bonding solvents for PVC”) and ¶ 2 (“MEK is a fairly good solvent for PVC”). Appeal 2020-005679 Application 14/862,751 13 Wu further reports on data showing that MEK was unable to dissolve PVC resin Shintech SE-650A, Wu Decl. ¶ 6. The table shows that undissolved PVC particles remained in the MEK-containing compositions even after shaking for 24 hours at 75 °F and even when the sample contained only 5% SE-650A PVC. Id. It is unclear why MEK was unable to dissolve Shintech SE-650A PVC in Wu’s experiments, but Yue II was able to dissolve PVC on light stirring. Wu further declares that “MEK is not an ideal solvent for PVC or chlorinated PVC (CPVC), particularly when present in an adhesive composition at a concentration of 50% by weight of the composition or greater.” Wu Decl. ¶ 8. Wu also declares that the inventors unexpectedly discovered that a solvent cement could be prepared that has sufficient bonding strength to meet the requirements of European standard EN 14814. Wu Decl. ¶ 9. Wu declares that this unexpected discovery was made for a solvent cement that “includes PVC or CPVC in an amount of at least 10% by weight of the solvent cement and MEK in an amount of at least 50% by weight of the solvent—and does not include THF, NMP, and aliphatic compounds having a hydrocarbon ring with at least two ether groups in the ring structure, which are each solvents traditionally used in solvent cements.” Id. (emphasis added). Claim 1 does not require MEK be present in the solvent at a concentration of 50 wt% or greater. In fact, claim 1 does not particularly limit the concentration of MEK at all. Claim 1 only requires MEK be present with at least one of acetone or CYH and the total amount of solvent be at least 70 wt%. Claim 1 allows for as little of 5% PVC/CPVC. Appeal 2020-005679 Application 14/862,751 14 After weighing the above facts in the context of the evidence of record in this appeal as a whole, we determine that a preponderance of the evidence supports the Examiner’s finding that the ordinary artisan would have reasonably expected solvent combinations of MEK and at least one of acetone or CYH, that may also contain solvents other than those excluded by claim 1, would dissolve mixtures of PVC/CPVC with imidized acrylic polymer and result in a viable solvent cement. As evidenced from the above findings and a reading of Bush as a whole, Bush provides sufficient direction to the ordinary formulator of solvent cements for arriving at a useable solvent cement having the components of claim 1 in the required concentrations. Bush specifically names PVC/CPVC as component (A), at least partially imidized acrylic polymer as component (B), and MEK, CYH, and acetone as component (C) solvents. Bush discloses ranges encompassing or overlapping those of claim 1. Yue and Yue II, which Wu cites, indicate that MEK and CYH were known solvents for PVC. We agree with Appellant that Bush teaches many combinations. But Bush specifically names the components Appellant claims and indicates they will be effective for creating a solvent cement. That is enough to render the combinations obvious. See Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.”). We recognize that Bush discloses preferences and examples that include the excluded THF and NMP solvents and examples including more Appeal 2020-005679 Application 14/862,751 15 imidized acrylic polymer (Paraloid HT-510) than allowed by claim 1. But we do not agree with Appellant that the examples and preferences disclosed in Bush amount to a teaching away from solvent cements encompassed by claim 1. “[J]ust because ‘better alternatives’ may exist in the prior art ‘does not mean that an inferior combination is inapt for obviousness purposes.’” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1381 (Fed. Cir. 2015) (quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)); see also Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013))). It is well settled that, “in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.”’ Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d at 807 (alteration in original) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Thus, “[a]ll the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citations omitted). When we evaluate all the disclosures, including those in the Wu Declaration, Yue, and Yue II, we determine that a preponderance of the evidence conveys that those of ordinary skill in the art would have had a reasonable expectation of successfully making a workable solvent cement containing PVC/CPVC, imidized acrylic polymer, and Appeal 2020-005679 Application 14/862,751 16 solvent mixtures containing MEK with at least one of CYH or acetone in concentrations within the ranges of claim 1. Lastly, the fact that Bush also lists THF and NMP as useful solvents does not negate the fact that Bush also lists MEK, acetone, and CYH as useful solvents that can be used alone or in any combination. Bush col. 13, ll. 34–50. Bush need not expressly state that THF and NMP be excluded as Bush affirmatively teaches the required solvents and does not mandate the excluded solvents be present. Where the prior art does not teach away, the burden shifts to Appellant to show unexpected results relative to the prior art or other pertinent secondary considerations. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d at 738. Appellant does not rely on such a showing and, thus, has not met the burden. Appeal Br. 5–13. Appellant has not identified a reversible error in the Examiner’s rejection of claim 1 over Bush. The Rejection over Bush and Bush ’476 The Examiner also added Bush ’476 to reject claim 1 as well as other claims. In addition to the arguments already addressed above, Appellant contends that the secondary reference, Bush ’476, describes solvent cements with too little PVC/CPVC and too much imidized acrylic polymer. Appeal Br. 14. This is true, but it is not a teaching away from the claimed solvents because it does not discredit the compositions of the primary reference to Bush. Bush ’476 seeks to form a universal solvent cement useful for application to any of PVC, CPVC, and ABS and, for this reason, Bush ’476 seeks to minimize the concentration of those polymers in the composition. See Bush ’476 ¶ 38 (“Because the concentrations of PVC, CPVC and ABS Appeal 2020-005679 Application 14/862,751 17 in such solvent cements are kept low or non-existent, compatibility problems between different resins, e.g., PVC vs. CPVC, PVC vs. ABS and CPVC vs. ABS, are avoided.”). The primary reference to Bush discloses solvent cements for PVC/CPVC and suggests that compositions within the scope of claim 1 will suffice for application to PVC/CPVC articles. Appellant has not identified a reversible error in the Examiner’s rejection of claim 1 over Bush in view of Bush ’476. Claim 14 Next, we turn to the rejection of claim 14, which the Examiner rejects (1) as obvious over Bush and (2) over Bush in view of Bush ’476. Although we have considered Appellant’s arguments as they apply to each of these rejections, it will suffice to address them together given the similarity in issues presented. We address only those aspects of the argument that are not already addressed above. Claim 14 recites a method of bonding thermoplastic articles by applying the solvent cement of claim 1,3 contacting the surfaces of the thermoplastic articles, and allowing the surfaces to bond. Appeal Br. 29–30 (Claims Appendix). In terms of new argument, Appellant contends that there is no teaching or suggestion in Bush of a method as claimed that includes the 3 Claim 14 is somewhat confusing as it recites “at least partially imidized acrylic polymer (PMMI),” but the Specification refers to PMMI as an abbreviation for at least partially imidized poly(methyl methacrylate) in some places. See, e.g., Spec. 4:26. Because claim 14 recites “at least partially imidized acrylic polymer” before the abbreviation, we interpret PMMI as used in claim 14 as referring to at least partially imidized acrylic polymer. Appeal 2020-005679 Application 14/862,751 18 applying, surface contacting, and article bonding steps of claim 14 and the Examiner failed to establish a reasonable expectation of success in achieving the method. Id. Given Bush expressly teaches the method steps (Bush col. 2, ll. 40–61) and, as we explained above, Bush teaches or suggests solvent cements of compositions within the scope of the claim, this argument has no merit. Claim 2 Claim 2 is directed to the solvent cement of claim 14, “wherein the articles to be bonded comprise PVC or CPVC.” Appeal Br. 27 (Claims Appendix). Appellant contends Bush fails to provide any teaching or suggestion of a method as claimed in claim 2 that applies a solvent cement in the manner claimed to articles comprising PVC or CPVC and, instead Bush, alone or in combination with Bush ’476, directs one away from the claimed method. Appeal Br. 15. Again, Appellant’s argument has no merit. Bush, in fact, specifically, directs the ordinary artisan to apply the solvent cement to PVC articles. See, e.g., Bush col. 18, ll. 61–65 (“The utility of the method and the compositions described herein as solvent cements for PVC pipes and fittings is demonstrated by testing the composition of Examples 2–5, 13 and 18–21 for joining PVC to PVC parts per ASTM D-2564.”). Claim 6 Claim 6 is directed to the solvent cement according to claim 1, and requires the solvent further comprise methyl isoamyl ketone (MIAK). Appeal Br. 28 (Claims Appendix). The Examiner rejects claim 6 as obvious over Bush in view of Bush ’476, finding that MIAK was a known solvent for use in PVC/CPVC solvent Appeal 2020-005679 Application 14/862,751 19 cements as evidenced by Bush ’476. Non-Final Act. 10; Ans. 19–20. Appellant merely rehashes prior arguments without calling into question the Examiner’s finding regarding MIAK. Appeal Br. 16. And Bush ’476 supports the Examiner’s finding. Bush suggests using ketones as solvents, and although MIAK is not amongst the ketone solvents Bush lists, Bush ’476 lists methyl iso-amyl ketone (MIAK) as a solvent of particular interest in a solvent cement that may be used to bond PVC/CPVC articles. Bush ’476 ¶ 31. Thus, we cannot say Appellant has identified a reversible error in the Examiner’s rejection of claim 6. Claim 7 Claim 7 is directed to the solvent cement of claim 1, “wherein the at least partially imidized acrylic polymer is an at least partially imidized poly(methyl methacrylate) (PMMI).” Appeal Br. 28 (Claims Appendix). The Examiner finds that column 9, lines 25 and 26 of Bush disclose esters of methacrylic acid that satisfy the requirements of claim 7. Ans. 20. Indeed, this portion of Bush states that “[t]he acrylic polymers which are reacted with the amines to form the imidized acrylic polymers may be any polymer containing units derived from esters of acrylic or methacrylic acid.” Bush col. 9, ll. 23–25 (emphasis added). Appellant has not persuaded us of a reversible error in the Examiner’s finding or conclusion of obviousness regarding claim 7. Claim 8 Claim 8 is directed to the solvent cement of claim 1, “wherein the solvent cement further comprises a toughening resin, comprising acrylonitrile butadiene styrene (ABS) or methyl methacrylate butadiene styrene (MBS).” Appeal Br. 28 (Claims Appendix). Appeal 2020-005679 Application 14/862,751 20 The Examiner rejects claim 8 as obvious over: (1) Bush alone; (2) over Bush in view of Patel and Abel; (3) over Bush in view of Bush ’476; and (4) over Bush in view of Bush ’476, Patel, and Abel. Appellant’s arguments address the Examiner’s findings made in the rejection over Bush in view of Patel and Abel. Appeal Br. 17 (addressing the Examiner’s findings found on page 7 of the Non-Final Action). Thus, we will also focus on this rejection. At page 7 of the Non-Final Action, the Examiner finds that Bush discloses the use of ABS and, furthermore, that “both Patel and Abel et al. teach the use of the claimed species within solvent cement compositions.” Non-Final Act. 7, citing Patel col. 7, ll. 56+; Abel col. 11, ll. 34+. Appellant contends that there is no direction in Bush to include ABS or MBS in a solvent cement as claimed and Patel and Abel fail to correct the deficiencies of Bush and Bush ’476 “as the cited teachings, at best, merely describe that other polymers, such as ABS, can be used.” Appeal Br. 17. Contrary to Appellant’s argument, the teaching of using ABS and MBS in similar solvent cements to those of Bush supports the Examiner’s finding of a suggestion to use those in Bush’s solvent cement. Patel is particularly relevant as it teaches a solvent cement similar to that of Bush. Patel teaches a solvent cement specifically formulated to join PVC/CPVC pipes and is particularly concerned with using low VOC solvent to make the solvent cement environmentally friendly. Patel col. 1, ll. 15–23; col. 3, ll. 14–25. Patel provides more evidence that MEK, acetone, and CYH as well as THF were known solvents for use in PVC/CPVC-containing solvent cements. Patel col. 2, ll. 1–21. Patel specifically desires to create a solvent cement that does not include THF or NMP. Patel col. 2, ll. 3–56. Appeal 2020-005679 Application 14/862,751 21 And Patel teaches that acetone is desirable as there is no legal limit on the amount of acetone that can be used in a solvent cement. Patel col. 2, ll. 33– 38. Patel’s low VOC solvent cement, like Appellant’s solvent cement, contains from about 5 to about 25 wt% PVC resin. Patel col. 3, ll. 27–48. It also contains 0 to about 25 wt% acrylic resin, which is a range overlapping Appellant’s claimed range for imidized acrylic polymer, which is a subgenus of acrylic resin. Id. And Patel’s solvent cement contains a mixture of solvents in a concentration that may be at least 70 wt% and includes both acetone and MEK. See, e.g., Patel col. 8, ll. 22–27 (describing a preferred solvent mixture of 5 to 25 wt% isomeric dimethyl-2-piperidones (DMPD) and about 10 to 68 wt% of a mixture of MEK and acetone). As found by the Examiner, Patel discloses adding ABS and MBS to solvent cement. Non-Final Act. 7. Patel suggests adding ABS and MBS to PVC/CPVC solvent cements as rheology additives. Patel col. 7, ll. 56–63. Given the similarities between Patel’s solvent cement and Bush’s solvent cement, the prior art supports the Examiner’s finding of a suggestion to add ABS or MBS to Bush’s solvent cement as rheology additives. When a claim is to a combination that “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). Claim 9 Claim 9 is directed to the solvent cement of claim 1, “wherein the solvent cement further comprises a core-shell toughening resin comprising a Appeal 2020-005679 Application 14/862,751 22 crosslinked poly(butyl acrylate) core with a grafted poly(methyl methacrylate) shell.” Appeal Br. 28 (Claims Appendix). Appellant’s arguments address the Examiner’s findings made in the rejection over Bush in view of Patel or Abel, and further in view of Brady. Appeal Br. 19 (addressing the Examiner’s findings found on page 8 of the Non-Final Action). Thus, we will also focus on this rejection. As pointed out by Appellant, the Examiner at page 8 of the Non-Final Action cites to Patel and Abel as teaching “the use of core/shell materials within solvent cement compositions.” Appeal Br. 19. Indeed, Patel teaches adding “acrylic polymers (in the case of CPVC adhesives), MBS polymers, ABS polymers, linear and core/shell polymers, and random and block polymers including elastomeric and rubber resins” as rheology additives. Patel col. 7, ll. 56–63. Appellant contends that Patel and Abel provide no direction for using the specific a crosslinked poly(butyl acrylate) core with a grafted poly(methyl methacrylate) shell (Appeal Br. 19), but the Examiner relies on Brady for such direction. Non-Final Act. 8 (finding “the use of such core/shell materials having the claimed composition as impact modifiers within such materials as PVC was known at the time of invention, as evidenced by Brady et al. at column 3, lines 23+ and column 7”). Brady teaches specific polymers, which as undisputed by Appellant, have the chemical composition required by claim 9 for use as core/shell polymers. A preponderance of the evidence supports the Examiner’s finding that the ordinary artisan would have selected Brady’s core/shell polymer for use as the core/shell polymer of Patel, particularly given Patel also suggests using acrylic polymers. Appeal 2020-005679 Application 14/862,751 23 Claims 17, 19, and 21 Claim 17 further narrows the solvent concentration of claim 1 to an amount of 78 to 90 wt%. Claims 19 and 21 further limit the imidized acrylic polymer to 0.5 to 5 wt% in the solvent cement and method, respectively. Given the concentrations taught by Bush overlap with these claimed ranges, a preponderance of the evidence supports the Examiner’s determination of obvious. The reasons parallel those we discussed above for claim 1. Claim 26 Claim 26 further excludes dimethyl sulfoxide (DMSO) and dimethyl formamide (DMF) from the solvent cement of claim 1. Like THF and NMP excluded by claim 1, neither DMSO nor DMF, as stated by the Examiner, is mandated by Bush. Ans. 21. For the reasons we explain above with regard to the rejection of claim 1, we do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection. Claim 27 Claim 27 requires claim 1’s solvent cement meet the requirements of the European standard EN 14814. Appeal Br. 31 (Claims Appendix). According to the Specification, EN 14814 promulgates a pressure resistance requirement measured using a specified test. Spec. 6:23–30; 13:7–9. Appellant contends that Bush does not provide one of ordinary skill in the art with a reasonable expectation of success that the claimed composition would meet EN 14814, but instead directs one away from a solvent cement including a solvent as claimed. Appeal Br. 22. For the reasons we explained above for the rejection of claim 1 over Bush, we do not agree that Bush teaches away from the solvent cement of claim 27. Bush teaches a range of compositions that will function as solvent Appeal 2020-005679 Application 14/862,751 24 cements that overlaps the solvent cement composition of claim 1. The ordinary artisan would have had the skill to select the components and concentrations necessary for the composition to so function and that is enough to establish prima facie obviousness. Bush also indicates that solvent cement compositions have to meet various regulations and standards. See Bush col. 2, l. 9–col. 3, l. 22 (discussing various regulations and standards). Appellant offers no persuasive evidence that meeting any particular known standard would have been unexpected. Thus, Appellant has not identified a reversible error in the Examiner’s rejection of claim 27. Claims 28 and 29 Claims 28 and 29 require particular mixtures of solvents. Claim 28 requires the solvent cement of claim 1 consist of MEK, methyl isoamyl ketone (MIAK), cyclohexanone, and acetone. Claim 29 requires the solvent cement of claim 17 consist of MEK, cyclohexanone, and acetone. Appellant contends that Bush fails to provide direction for formulating a solvent cement with the mixture of solvents required by claims 28 and 29 and Bush ’476 does not fill this void. Appeal Br. 22–23. We disagree. Bush suggests using ketones, generally, and specifically lists acetone, MEK, and cyclohexanone (CYH). Bush ’476 suggests using the ketone, MIAK, in a solvent cement. Bush suggests using the solvents either alone or in combination and suggests concentrations of from 10 to 90 wt%. Thus, the prior art suggests that the solvent mixtures of claims 28 and 29 would have been reasonably expected to form a useful solvent cement in concentrations overlapping the ranges of the claims. Appeal 2020-005679 Application 14/862,751 25 Claim 30 Claim 30 requires the solvent cement of claim 1 contain MEK and acetone with acetone present in a concentration of at least 10 wt%. As Bush expressly discloses MEK and acetone as useful solvents and Bush suggests a solvent range of 10 to 90 wt%, the prior art supports the Examiner’s determination that Bush suggests that solvent mixtures containing MEK and at least 10 wt% acetone would provide a usable solvent cement. Appellant offers no persuasive evidence evincing that the ordinary artisan would have expected formulations with 10 or more wt% acetone to be unacceptable. Written Description The Examiner rejects claim 30 under 35 U.S.C. § 112(a) as lacking written descriptive support, finding no support in the original written description for the full range of the at least 10 wt% acetone concentration range of the claim. Non-Final Act. 2. The Examiner acknowledges that the Specification discloses the use of two or more solvents of which acetone may be one where the total solvent content may be at least 50 wt%, including the claimed 70 wt% and that Example 5 reasonably conveys support for a solvent cement containing 10.1 wt% acetone, but maintains that the whole range of at least 10 wt% is not supported. Ans. 15. Appellant points to pages 9, lines 1–2, 8–11, 13–16 and page 14, lines 6–9 (Example 5) as reasonably conveying support. Appeal Br. 25; Reply Br. 6. With regard to the solvent, the Specification discloses various solvents and combinations of solvents. Spec. 8:36–9:11. Amongst the lists of solvents, the Specification reasonably conveys that acetone may be used alone or in combination with cyclohexanone. Spec. 9:8–11. But claim 30 Appeal 2020-005679 Application 14/862,751 26 requires the presence of MEK due to its dependence from claim 1. Thus, the disclosure on page 9 is not particularly relevant to the solvent mixture of claim 30. Example 5 is more relevant. Example 5 requires a mixture of acetone, cyclohexanone, MEK and MIAK. Spec. 14:6–11. Example 5 contains 10.1 wt% acetone. 35 U.S.C. § 112 ¶ 1 requires the Specification “contain a written description of the invention.” 35 U.S.C. § 112 ¶ 1 (2010). “The description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation, internal quotation marks, and brackets omitted). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. Possession must be shown in the disclosure. Id. Appellant’s Specification does not reasonably convey that Appellant had possession of the full range of acetone concentrations encompassed by claim 30. Claim 30 requires acetone be present in a range of at least 10 wt% in a solvent also containing MEK where the solvent has a total solvent content of at least 70 wt%. The endpoint of the “at least 10 wt%” range is somewhat unclear given the solvent must contain MEK, but it must be something less than 100 wt% minus the required amounts of PVC/CPVC and imidized acrylic polymer. Example 5 is the only disclosure of concentration specific to a solvent cement with both acetone and MEK and Example 5 contains only one point within the range of claim 30, i.e., 10.1 wt%. The broader disclosures on page 9 of the Specification do not serve to reasonably convey possession of other concentrations of acetone in Appeal 2020-005679 Application 14/862,751 27 a MEK-containing solvent cement. Thus, we agree with the Examiner that the concentration range at least 10 wt% recited in claim 30 lacks written descriptive support. In response to our dissenting colleague, we emphasize that our affirmance of the rejection under 35 U.S.C. § 112(a) is based on a lack of written descriptive support, not on a lack of enablement. The question here is not one of undue experimentation, the question is whether the written description reasonably conveys that Appellant had possession of solvent cements containing acetone concentrations spanning the range of at least 10 wt% acetone (a range of from 10 wt% to some unspecified endpoint) in the context of a solvent with at least acetone mixed with MEK. And the written description question is relevant when the limitation at issue is a range differing from what is described by the written description. See In re Wertheim, 541 F.2d 257, 262–64 (CCPA 1976) (discussing In re Ruschig, 379 F.2d 990, 995–96 (CCPA 1967), stating “[m]ere comparison of ranges is not enough, nor are mechanical rules a substitute for an analysis of each case on its facts to determine whether an application conveys to those skilled in the art the information that the applicant invented the subject matter of the claims,” and finding a lack of written descriptive support for a solids content range of “at least 35%,” which was outside the 25–60% range described in a priority application). CONCLUSION The Examiner’s decision to reject claims 1, 2, 4–11, 14, 17, 19, 21, and 26–30 is affirmed. Appeal 2020-005679 Application 14/862,751 28 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 7, 8, 10, 11, 14, 17, 19, 21, 26, 27, 29, 30 103 Bush 1, 2, 4, 5, 7, 8, 10, 11, 14, 17, 19, 21, 26, 27, 29, 30 8 103 Bush, Patel, Abel 8 9 103 Bush, Patel, Brady 9 9 103 Bush, Abel, Brady 9 1, 2, 4–8, 10, 11, 14, 17, 19, 21, 26–30 103 Bush, Bush ’476 1, 2, 4–8, 10, 11, 14, 17, 19, 21, 26–30 8 103 Bush, Bush ’476, Patel, Abel 8 9 103 Bush, Bush ’476, Patel, Brady 9 9 103 Bush, Bush ’476, Abel, Brady 9 30 112 Written Description 30 Overall Outcome 1, 2, 4–11, 14, 17, 19, 21, 26–30 TIME PERIOD FOR RESPONSE 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). Appeal 2020-005679 Application 14/862,751 29 AFFIRMED Appeal 2020-005679 Application 14/862,751 30 REN, Administrative Patent Judge, dissenting. I respectfully dissent from the panel’s decision to affirm the Examiner’s rejections. From the outset, the panel affirms the written description rejection finding that “[t]he endpoint of the ‘at least 10 wt%’ range is somewhat unclear given the solvent must contain MEK, but it must be something less than 100 wt%.” Op. at 26. There is also no dispute that example 5 describes an embodiment in which 10.1 wt% is acetone is used. Op. at 26; see also Non-Final Act. 2 (acknowledging that at least “example 5 within page 14 [of the Specification] only supports 10.1 weight percentage of acetone, relative to the total weight of the solvent cement”); see also Ans. 15 (acknowledging that the Specification provides additional examples such as those with at least 50 wt% of acetone). To the extent that the panel finds that the entire claim scope is not enabled, the rejection is not based on the requirement that “the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Magsil Corp. v. Hitachi Global Storage Techs, Inc., 687 F.3d 1377, 1380 (Fed. Cir. 2012) (citation omitted) (upholding the district court’s summary judgment ruling for lack of enablement because the specification does not show the full scope of enablement for the claim term “a change in resistance of at least 10%”). I therefore dissent from the panel’s affirmance of the written description rejection instead of reversing the written description rejection and entering a new ground of rejection for lack of enablement. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010) (en banc) (“In addition to the statutory language and Supreme Court precedent Appeal 2020-005679 Application 14/862,751 31 supporting the existence of a written description requirement separate from enablement, stare decisis impels us to uphold it now.”). I additionally dissent from the panel’s affirmance of the obviousness rejection. To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). “An examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). In this case, the Examiner acknowledges that the prior art does not teach or suggest a solvent cement that excludes the recited compounds. Non- Final Act. 5 (finding that “the reference in no way mandates the use of the excluded solvents”). The Examiner in fact recognizes that “tetrahydrofuran and N-methyl pyrollidone are disclosed as being preferred and tetrahydrofuran is further disclosed as being ‘useful’” in certain instances. Ans. 15–16. Disclosure of chemical genus does not render obvious all species that fall within it. In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992). The Examiner’s conclusion that, based on the prior art teachings, “it would have been obvious to utilize any of the disclosed solvents suitable for dissolving the claimed polymers, such as methyl ethyl ketone, acetone, and cyclohexanone” (Non-Final Act. 5) does not address the compounds that are specifically excluded by the claim language, namely tetrahydrofuran, N- Methyl-2-Pyrrolidone (NMP), and an aliphatic compound having a hydrocarbon ring with at least two ether groups in the ring structure. I therefore dissent from the affirmance of the rejection. See KSR Int’l Co. v. Appeal 2020-005679 Application 14/862,751 32 Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Other than impermissible hindsight, the Examiner provides no analysis as to why a skilled artisan would have excluded these recites compounds. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983).