WACKER CHEMIE AG

Patent Trials and Appeals Board

Feb 22, 2022

2021000599 (P.T.A.B. Feb. 22, 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. 15/251,361 08/30/2016 Hans-Peter WEITZEL WASN0194PUSA1 2636 22045 7590 02/22/2022 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER CAI, WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-PETER WEITZEL, ROBERT BRAUNSPERGER, and JESSICA SEIDEL Appeal 2021-000599 Application 15/251,361 Technology Center 1700 Before TERRY J. OWENS, LINDA M. GAUDETTE, and LILAN REN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant requests rehearing of our Decision (entered Dec. 7, 2021) affirming the Examiner’s rejection of claims 25-32 under 35 U.S.C. § 103(a) over Eck (US 2001/0034391 A1) and over Weitzel (US 7,863,370 B2) (Req. Reh’g 2). Appeal 2021-000599 Application 15/251,361 2 The Appellant argues that we erred in our Decision when stating: 1) “[t]he Appellant argues claims 25-32 as a group (Appeal Br. 3-39). We therefore limit our discussion to one claim, i.e., claim 25, which is the sole independent claim” (Dec. 2); and 2) “[t]he Appellant’s statement that ‘[t]hese [dependent] claims are individually and separately patentable’ (Appeal Br. 38) is not a substantive argument as to the separate patentability of those claims” (Dec. 2, n.1) (Req. Reh’g 2-3). The Appellant argues that “Appellant has argued separate patentability of these claims throughout the prosecution of the application” (Req. Reh’g 3), and in the Reply Brief stated that “[d]ependent claims 26-32 are yet more specific, with much narrower ranges. These claims are separately patentable” (id.). Arguments for separate patentability of claims on appeal must be in the appeal brief, not in the prosecution history. See 37 C.F.R § 41.37(c)(1)(iv) (2013). The Appellant’s mere assertions that the dependent claims are more specific and are separately patentable do not provide a substantive argument for separate patentability of the claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 “require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). The Appellant argues that: 1) Eck’s preferred polymers include not only those in paragraph 17 relied upon by the Board (Dec. 3), but also those in paragraphs 15, 16, and 18-23; 2) Eck’s preferred polymers all have identical status regarding their preference; and 3) because so many monomers are disclosed, one of ordinary skill in the art would have had no motivation to select any of them or to select amounts of multiple disclosed Appeal 2021-000599 Application 15/251,361 3 monomers within disclosed ranges overlapping those in the Appellant’s claims, particularly in view of Eck’s statement that “[i]t was the object of the invention to develop a polymer composition by means of which, independently of the composition of the thermoplastic polymer, effective flexibilization of building materials, in particular of cement containing building materials, is obtained” (¶ 5) (Req. Reh’g 4-5). The Appellant asks (Req. Reh’g 5): Where is the motivation for one skilled in the art to select one particular preferred class of copolymers from among the ten preferred classes, and then to narrow the vinyl ester employed in that one class to one of many vinyl esters disclosed, and more specifically a monomer not preferred (vinyl versatate is “particularly preferred,”) and then to reformulate all three of the comonomer weight percentage ranges? Those arguments indicate the Appellant’s view is that Eck discloses so many monomers and relative monomer amounts that one of ordinary skill in the art would not have been led to select any of them and, therefore, would not have selected a combination of monomer and monomer amount within the Appellant’s claims.1 The fact that many monomers and monomer amounts are disclosed, however, would not have made any of them less obvious, particularly where, as here, the material recited in the Appellants’ claim is used for the identical purpose taught by the reference (i.e., polymer compositions for cement-containing building materials (Eck ¶ 5; Spec. 1, 1 See Appeal Br. 10 (“Eck himself states that his results are independent of the type of polymer used [(¶ 5)]. Thus, Eck does not direct the skilled artisan to any particular polymer.”). Appeal 2021-000599 Application 15/251,361 4 ll. 16-19)). See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). Eck discloses a thermoplastic polymer for flexibilizing cement- containing building materials (¶ 5), comprising (¶ 17): vinyl ester/ethylene/vinyl chloride copolymers having an ethylene content of preferably from 1 to 40% by weight and a vinyl chloride content of preferably from 20 to 90% by weight, vinyl acetate and/or vinyl propionate and/or one or more copolymerizable vinyl esters, such as vinyl laurate, vinyl pivalate, vinyl 2-ethylhexanoate, vinyl esters of an alpha-branched carboxylic acid, in particular vinyl versatate, preferably being present as vinyl esters. The polymer comprises 20-90 wt% vinyl chloride, 1-40 wt% ethylene, and one or more vinyl esters that can be vinyl acetate, which is the particularly preferred vinyl ester (¶ 11), in an amount ranging from a small amount to as much as 97 wt%. When the vinyl ester is vinyl acetate, the ranges in Eck’s paragraph 17 encompass the ranges in the Appellant’s claim 25. As stated in In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003): In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness. . . . . Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when, as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. [(Citations omitted.)] One component of Eck’s polymer composition is “at least one water- insoluble, film-forming polymer of one or more ethylenically unsaturated Appeal 2021-000599 Application 15/251,361 5 monomers capable of free radical polymerization” (¶ 7). A preferred film- forming polymer is a vinyl ester/ethylene/vinyl chloride copolymer (¶ 17). Eck would have led one of ordinary skill in the art, through no more than ordinary creativity, to select the particularly preferred vinyl ester (vinyl acetate (¶ 11)) as the vinyl ester. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. The Appellant argues that Schulze’s Comparison Example G teaches away from using amounts of vinyl chloride less than 40 wt% and “would clearly discourage a skilled artisan to select, from all of the myriad of Eck or Weitzel polymers, one with the claimed composition” (Req. Reh’g 8, 10). In Schulze’s Comparison Example G, a copolymer of vinyl acetate, vinyl chloride, and ethylene having a vinyl acetate/vinyl chloride weight ratio of 90/10 and containing less than 40 wt% vinyl chloride, when used in typical floor tile adhesive, resulted in a 34.8% adhesive strength decrease after 21 days in water (Table IV) compared to a 16-22.2% adhesive strength decrease for adhesive containing copolymers having a 63.5 wt% or 64 wt% vinyl chloride content. “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Schulze’s Comparison Example G does not criticize, discredit, or otherwise discourage investigation into use of a copolymer Appeal 2021-000599 Application 15/251,361 6 containing 35 wt% vinyl chloride (within Eck’s paragraph 17 and the Appellant’s claim 25), for Eck’s use in flexibilizing building materials (¶ 5). Schulze merely exemplifies a composition that contains less than 40% vinyl chloride and has a greater adhesive strength decrease after 21 days in water than Schulze’s composition (containing 63.5% (Example 2) or 64% (Example 1) vinyl chloride) and two of three commercially-available compositions (C and E, but not A) (Table IV). Thus, Schulze does not support the Appellant’s argument that “Schulze teaches not to use the claimed copolymers for hydraulically settable compositions” (Req. Reh’g 8). Eck’s paragraph 17 discloses a copolymer composition that can contain relative amounts of vinyl acetate, vinyl chloride, and ethylene overlapping those in that claim and, therefore, would have rendered the Appellant’s claimed copolymer composition prima facie obvious to one of ordinary skill in the art. See Peterson, 315 F.3d at 1329-30. Regarding the Appellants evidence of unexpected results, the Appellant argues that the copolymers in the Appellant’s Comparative Example 9 and Schulze’s Example 1 both contain 64 wt% vinyl chloride, 16 % vinyl acetate, and 20% ethylene and that, therefore, the Appellant has compared the claimed invention to Schulze (Req. Reh’g 11). The composition in the Appellant’s Comparative Example 9 is not within the scope of the Appellant’s claim 25. The Appellant does not provide a side-by-side comparison of the Appellant’s claimed composition with that of Schulze. With respect to the requirement that evidence of unexpected results be commensurate in scope with the claims, the Appellant provides much verbiage (Req. Reh’g 12-18) but does not show that the Appellant’s Appeal 2021-000599 Application 15/251,361 7 exemplified 51-68 wt% vinyl acetate is representative of claim 25’s 40- 80 wt% vinyl acetate, or the exemplified 9.9-18.7 wt% ethylene is representative of claim 25’s 1-25 wt% ethylene. Regarding the rejection over Weitzel, the Appellant relies upon the same arguments set forth with respect to the rejection over Eck (Req. Reh’g 6). Weitzel’s component ranges for a vinyl acetate (1-40 wt%)/ethylene (1-40 wt%)/vinyl chloride (1-60 wt%) copolymer encompass the ranges in the Appellant’s claim 25, and the disclosed uses of the water-redispersible dispersion powders comprising the vinyl acetate/ethylene/vinyl chloride copolymer (col. 7, ll. 47-60) include the Appellant’s use for the claim 25 copolymer, i.e., use in tile adhesives (Spec. 1:16-19). Consequently, Weitzel would have rendered the claim 25 copolymer composition prima facie obvious to one of ordinary skill in the art. See Peterson, 315 F.3d at 1329- 30. The fact that many polymers are disclosed would not have made any of them less obvious, particularly where, as here, the material recited in the Appellant’s claim can be used for the identical purpose taught by the reference. See Merck, 874 F.2d at 807; Lemin, 332 F.2d at 841. CONCLUSION For the above reasons, we are not persuaded of reversible error in our Decision. Accordingly, we deny the Appellant’s request for rehearing. Appeal 2021-000599 Application 15/251,361 8 Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 25-32 103(a) Eck 25-32 25-32 103(a) Weitzel 25-32 Overall Outcome 25-32 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 25-32 103(a) Eck 25-32 25-32 103(a) Weitzel 25-32 Overall Outcome 25-32 DENIED