DOW GLOBAL TECHNOLOGIES LLC et al.

Patent Trials and Appeals Board

Nov 17, 2021

2021000084 (P.T.A.B. Nov. 17, 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.
15/033,747 05/02/2016 Hong YANG 75496-US-PCT
(DC130007US)
6790
14268 7590 11/17/2021
The Dow Chemical Company/Cantor Colburn LLP
20 Church Street
22nd Floor
Hartford, CT 06103-3207
EXAMINER
LEONARD, MICHAEL L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
11/17/2021 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):
ffuimpc@dow.com
usptopatentmail@CantorColburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONG YANG, TAO HAN, and HAIYANG YU

Appeal 2021-000084
Application 15/033,747
Technology Center 1700
____________

Before TERRY J. OWENS, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–8, 10, and 11. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed May 2, 2016 (“Spec.”),
the Non-Final Office Action dated Feb. 7, 2019 (“Non-Final Act.”), the
Final Office Action dated July 12, 2019 (“Final Act.”), the Appeal Brief
filed Dec. 9, 2019 as corrected Mar. 3, 2020 (“Appeal Br.”), and the
Examiner’s Answer dated May 11, 2020 (“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Dow Global Technologies LLC as the real party in interest.
Appeal Br. 2.
Appeal 2021-000084
Application 15/033,747

2
STATEMENT OF THE CASE
The invention relates to a primerless paint composition and methods
of manufacture. Spec. ¶ 1. According to the Specification, polyolefin
elastomers are becoming more popular in toys and infant product
applications as polyvinylchloride is phased out due to environmental
regulations and market trends. Id. ¶ 2. The Specification states that paint
application to polyolefin substrates is challenging because the polyolefin
substrate lacks polar functional groups. Id. ¶ 3. Claim 1, reproduced below,
is illustrative.
1. A primerless paint composition comprising:
5 to 30 wt% of a carboxylated chlorinated polyolefin
elastomer; where the carboxylated chlorinated polyolefin
elastomer is a maleic anhydride modified chlorinated
propylene-ɑ-olefin random interpolymer, formed from a
propylene-ɑ-olefin interpolymer that has a density less than
0.895 g/cm3;
5 to 60 wt% of one or more of a polyacrylic binder, a
polyvinylchloride binder and a vinyl aromatic block copolymer
binder;
a pigment; and
15 to 80 wt% of a liquid carrier; where the liquid carrier
is an organic solvent.
Appeal Br. 12 (Claims Appendix) (disputed element italicized).

ANALYSIS
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
Appeal 2021-000084
Application 15/033,747

3
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the Examiner’s decision.
The Examiner relies on the following prior art references:
Name Reference Date
Yamamoto US 4,874,818 Oct. 17, 1989
Funakoshi US 7,045,574 B1 May 16, 2006
Tse US 2006/0293424 A1 Dec. 28, 2006

The Examiner maintains the following rejections:
Claims
Rejected 35 U.S.C. § References/Basis
1, 4–7, 10 103 Funakoshi, Tse
8, 11 103 Funakoshi, Tse, Yamamoto
Appellant argues the rejection of claim 1 over the combination of
Funakoshi in view of Tse stating that the rejections stand or fall on the
combination of Funakoshi and Tse. Appeal Br. 5. In the absence of separate
arguments for the rejections, we select claim 1 as representative and claims
4–8, 10, and 11 stand or fall with claim 1 from which they depend. See 37
C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner’s rejection of claim 1 relies on Funakoshi’s disclosure
of a primer composition for polyolefin materials that comprises acid
anhydride chlorinated polyolefin with a mol ratio of propylene/ethylene of
90/10, an acrylic copolymer including styrene blocks, pigment, and an
Appeal 2021-000084
Application 15/033,747

4
organic solvent. Non-Final Act. 2.3 The Examiner finds Funakoshi does not
expressly state the density of the propylene interpolymer that is modified
and turns to Tse which teaches modified functionalized propylene
interpolymers (3–25% by weight ethylene with the rest being propylene)
having a density of 0.85 to 0.88 g/ml at room temperature. Id. at 2–3. The
Examiner determines that a person having ordinary skill in the art would
conclude that Funakoshi’s 90/10 propylene/ethylene interpolymer would
have a density in the claimed range based on Tse’s teachings. Id. at 3.
Appellant contends the Examiner erred in rejecting claim 1 because
(1) Funakoshi’s Example 1 does not teach 7% polyacrylic binder, but, rather,
half of that as it is in a 50/50 blend with an alkyd resin part, and (2)
Funakoshi teaches away from the claimed composition which requires a
polyacrylic binder rather than a binder modified by covalent bonding with an
alkyd. Appeal Br. 7, 9.
Appellant’s arguments are not persuasive of error because in a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
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.”). The record supports the
Examiner’s finding that Funakoshi’s polyacrylic binder amount is not
limited to the 50/50 blend used in Example 1 in view of Funakoshi’s
teaching that the amount of alkyd resin to polyacrylic resin ranges from
25/75 to 75/25. Ans. 6; Funakoshi 4:31–33. Appellant’s focus on the

3 The Examiner directs us to the Non-Final Office Action for the statement
of the rejection. Final Act. 2.
Appeal 2021-000084
Application 15/033,747

5
polyacrylic binder content of Funakoshi’s Example 1 does not constrain this
teaching because “a reference is not limited to the disclosure of specific
working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation
omitted). Moreover, the record supports the Examiner’s finding that
Funakoshi provides a reason to increase the polyacrylic to alkyd resin ratio
in order to increase resistance to high pressure washing while providing
good adherence to polyolefin. Ans. 7; Funakoshi 2:40–45. Thus, modifying
Example 1’s 7 wt% resin content based on Funakoshi’s disclosure of a 75/25
polyacrylic to alkyd blend results in a 5.25 wt% polyacrylic binder content
(7 wt% x 0.75) which falls within the 5–60 wt% range required by claim 1.
Appellant does not dispute the Examiner’s findings regarding Funakoshi’s
teaching that the polyacrylic binder content may be greater than the alkyd
content in the disclosed resin.
Appellant’s argument concerning the polyacrylic binder not being
modified by covalent bonding with an alkyd resin as taught by Funakoshi
(Appeal br. 9) is not persuasive of error because claim 1 does not preclude
the presence of an alkyd resin in addition to the polyacrylic binder.
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover, as
the Examiner finds, Funakoshi teaches an acrylic resin present in its own
amount as a part of the primer composition. Ans. 8 (citing Funakoshi Table
2).
The preponderance of the evidence in this appeal record, therefore,
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Funakoshi and Tse. Accordingly, we affirm
Appeal 2021-000084
Application 15/033,747

6
the Examiner’s rejection of claim 1 as well as claims 2–8, 10, and 11 under
35 U.S.C. § 103 for the above reasons and those the Examiner provides.
CONCLUSION
For these reasons, we uphold the Examiner’s rejection of claims 1, 4–
8, 10, and 11 under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7, 10 103 Funakoshi, Tse 1, 4–7, 10
8, 11 103 Funakoshi, Tse, Yamamoto 8, 11
Overall
Outcome 1, 4–8, 10, 11
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)(1)(iv).

AFFIRMED