Ex Parte Smith et al

Patent Trial and Appeal Board

Sep 27, 2018

13304846 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/304,846 11/28/2011
124330 7590 10/01/2018
McKee, Voorhees & Sease P.L.C. ATTN: Ecolab Inc
801 Grand Avenue
Suite 3200
Des Moines, IA 50309
KimR. Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P09629US02 - 2769USU2 8830
EXAMINER
NGUYEN, THUY-AI N
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
patatty@ipmvs.com
michelle. woods@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM R. SMITH, ERIK C. OLSON, KEITH E. OLSON,
STEVEN E. LENTSCH, MINYU LI, CATHERINE HANSON, and
ANDREW WOLD
Appeal2017-010649
Application 13/304,846
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-22, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed
November 28, 2011 ("Spec."); Final Office Action dated August 26, 2016
("Final Act."); Advisory Action dated December 1, 2016 ("Adv. Act.");
Appeal Brief filed February 17, 2017 ("Appeal Br."); Examiner's Answer
dated June 19, 2017 ("Ans."); and Reply Brief filed August 17, 2017
("Reply Br.").
2 Ecolab USA Inc. is identified as the real party in interest. Appeal Br. 1.
Appeal2017-010649
Application 13/304,846
The Claimed Invention
Appellants' disclosure relates to soil resistant surface treatments and,
in particular, soil resistant laminate compositions formed using soil resistant
treatment compositions. Spec. 1; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A soil resistant laminate composition comprising:
a multilayer composition comprising:
a clean or soiled surface as a bottom layer, wherein
said surface is a substrate selected from the group
consisting of glass, fiberglass, concrete, ceramic,
porcelain, plastic, rubber, metals, paint, a cured
polymeric coating and combinations thereof; and
a dried polymer layer disposed as a top layer on
said surface, wherein said polymer layer is obtained from
a solution comprising from about 1 wt% to about 15
wt% of at least one soil resistant agent having a
molecular weight from about 1,000 to about 20,000
g/mol and a detergent carrier;
wherein the soil resistant agent is selected from
copolymers from the group consisting of a
maleic/olefin, an olefin/acrylate and combinations
thereof,
wherein polymer layer is substantially free of
fluorinated substituents, and
wherein said laminate composition surface has an
oil/water contact angle ratio of at least 2.
Appeal Br. 22 (Claims App'x) (key disputed claim language italicized and
bolded).
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Application 13/304,846
The Rejection
On appeal, the Examiner maintains (Ans. 2) the following rejection:
claims 1-22 under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over
Baker et al., US 2010/0112344 Al (published May 6, 2010) (hereinafter
"Baker").
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejection based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Appellants argue claims 1-22 as a group. Appeal Br. 12. We select
claim 1 as representative, and claims 2-22 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that Baker teaches or suggests surface
treated articles satisfying all of the limitations of claim 1 and thus, concludes
that the reference would have rendered the claim obvious. Ans. 2-5 (citing
Baker, Abstract, ,r,r 2, 18, 19, 25, 29, 53, 54, 58). Regarding the recitation
"selected from copolymers from the group consisting of a maleic/olefin, an
olefin/acrylate and combinations thereof," the Examiner finds Baker teaches
an acrylic or vinyl polymer that is the polymerization product of an
ethylenically unsaturated acid monomer and the remainder of one or more
nonionic acrylic and vinyl comonomer. Id. at 2-3 (citing Baker ,r,r 2, 18).
The Examiner further finds that Baker defines "acrylic" as referring to "both
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acrylic and methacrylic polymers, including copolymers thereof with vinyl
polymers, e.g., styrene" and, for example, specifically discloses the
polymerization of styrene and methacrylic acid. Id. at 5 (citing Baker ,r,r 25,
29).
Appellants argue that the Examiner's rejection should be reversed
because the Examiner has failed to establish a prima facie case of
obviousness. Appeal Br. 12. Appellants argue that the Examiner has failed
to establish that the Baker reference teaches or suggests the "selected from
copolymers from the group consisting of a maleic/olefin, an olefin/acrylate
and combinations thereof' recitation of claim 1. Id. at 14--16. In particular,
Appellants contend that the Examiner's reliance on Baker's disclosure
regarding acrylic or vinyl polymers is misplaced because "the number of
species encompassed by the overly broad disclosure of Baker et al. would
not motivate a skilled artisan to select the species claimed" (id. at 15) and
such broad disclosure would require one of skill in the art to conduct "undue
experimentation" to arrive at the claimed copolymer composition (id. at 16).
See also Reply Br. 2-3. Appellants also contend that there is a "clear lack of
guidance and/ or suggestion to a skilled artisan" to precisely select the
claimed copolymers and the prior art polymers do not perform as well as
those claimed materials. Appeal Br. 16; see also Reply Br. 3--4.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection. Contrary to what Appellants argue, on the
record before us, we find that Baker does teach or suggest all of the
limitations of claim 1, including "wherein the soil resistant agent is selected
from copolymers from the group consisting of a maleic/olefin, an
olefin/acrylate and combinations thereof." As the Examiner finds (Ans. 2-
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Application 13/304,846
5), Baker teaches or suggests an acrylic polymer that falls within the scope
of the "olefin/acrylate" recitation of the claim. In particular, as the
Examiner finds (Ans. 2-3), Baker discloses that the polymer is the
polymerization product of an ethylenically unsaturated acid monomer and
the remainder of one or more nonionic acrylic and vinyl comonomer (Baker
,r,r 2, 18) and includes both acrylic and methacrylic polymers and
copolymers thereof with, for example, styrene (id. ,r 25). As the Examiner
further finds (Ans. 4--5), Baker specifically discloses a polymer having a
molecular weight (Mn) of 5,000 that is polymerized from styrene and
methacrylic acid. Baker ,r 29 ( disclosing "a polymer with an Mn of 5,000
and polymerized from 80 wt. % of styrene and 20 wt. % of methacrylic
acid"). Moreover, Appellants do not dispute the Examiner findings (Ans. 5)
that styrene is an olefin and methacrylic acid is an acrylate. Indeed, the
Examiner's findings in this regard are consistent with the disclosure in
Appellants' Specification. See Spec. 10, 11. 4--5 (disclosing that "[t]he olefin
segment may include a variety of linear, branched and cyclic alkenes");
Spec. 11, 11. 24--25 ( disclosing that "the acrylate is selected from at least one
of a polymer or copolymer of acrylic acid or methacrylic acid").
Thus, on the record before us and based on the fact-finding and
reasoning provided by the Examiner at pages 2-5 of the Answer, we find
that one of ordinary skill in the art would have understood Baker's
disclosure (Baker ,r 29) regarding the combination of styrene/methacrylic
acid as teaching or suggesting the "olefin/acrylate" element of claim 1.
We do not find Appellants' contentions that "the number of species
encompassed by the overly broad disclosure of Baker et al. would not
motivate a skilled artisan to select the species claimed" (Appeal Br. 15) and
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would require one of skill in the art to conduct "undue experimentation" (id.
at 16) persuasive of reversible error in the Examiner's rejection because they
are conclusory. Attorney argument is not evidence. In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Appellants' arguments in this regard are also misplaced because this is
not the type of case where the prior art's disclosure is so broad as to
encompass a very large number of possible distinct compositions analogous
to the obviousness of a species when the prior art broadly discloses a genus.
Contra In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994). Rather, as the
Examiner finds (Ans. 2-5), here, the prior art discloses a specific
olefin/acrylate copolymer species comprising styrene and methacrylic acid
that falls within the claimed genus. Baker ,r 29. Therefore, Appellants'
assertion that there is a "clear lack of guidance and/ or suggestion to a skilled
artisan" to precisely select the claimed copolymers (Appeal Br. 16; Reply
Br. 3--4) is unpersuasive of reversible error.
Appellants argue further that the claimed invention yields unexpected
results. Appeal Br. 17-18. See also Reply Br. 4--5. In particular, Appellants
contend that "each of Examples 1, 2, 5, and 6 [ of the Specification]
demonstrate[ s] unexpected and superior results of soil resistance in the
absence of viscosity-building and threshold activity of the claimed ranges of
about 1 wt% to about 15 wt% of at least one soil resistant agent." Reply Br.
4--5. Appellants also contend that the Examiner did not adequately consider
the rebuttal evidence presented supporting Appellants' showing of
unexpected results. Id. at 5; see also Appeal Br. 18.
This argument is not persuasive. In attempting to overcome a prima
facie case of obviousness by showing unexpected results, the burden rests
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with Appellants to establish (1) that the alleged unexpected results presented
as being associated with the claimed invention are, in fact, unexpected, (2)
that the comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Based on the fact-finding and for the well-stated reasons provided by
the Examiner at pages 5---6 of the Answer, we concur with the Examiner that
Appellants' alleged showing of unexpected results is not commensurate in
scope with the claims. For example, as the Examiner finds (Ans. 5---6),
Example 5 discloses that the solutions having 15 wt% of the claimed
copolymer soil resistant agent actually did not demonstrate superior or
unexpected performance. See Spec. 3 5, 11. 10-13 ( disclosing that the "more
concentrated" 15 wt% solution samples "were observed to not sufficiently
dry" and "did not provide desired longevity of soil resistance in the presence
of water"). Thus, we are not persuaded that Appellants have provided data
sufficient to show that the alleged unexpected results occur over the entire
claimed range of "from about 1 wt% to about 15 wt%." See In re Kao, 639
F.3d 1057, 1068 (Fed. Cir. 2011) ("Evidence of secondary considerations
must be reasonably commensurate with the scope of the claims.").
In view of this deficiency, Appellants' assertion that Examples 1, 2, 5,
and 6 "demonstrate unexpected and superior results of soil resistance"
(Reply Br. 4--5) is conclusory and, without more, insufficient to establish
unexpected results. De Blauwe, 736 F.2d at 705 ("It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice."). Appellants
do not adequately explain why the alleged improvements Appellants contend
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are shown in Examples 1, 2, 5, and 6 of the Specification are considered to
be unexpected results and not just typical results by one of ordinary skill in
the art. Klosak, 455 F .2d at 1080 ("[T]he burden of showing unexpected
results rests on [the party] who asserts them.").
Accordingly, we affirm the Examiner's rejection of claims 1-22 under
35 U.S.C. § 103(a) as obvious over Baker.
DECISION/ORDER
The Examiner's rejection of claims 1-22 is affirmed.
It is ordered that the Examiner's decision is affirmed.
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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