Ex Parte 7,691,938 B2 et al

Patent Trial and Appeal Board

Sep 8, 2014

90012593 (P.T.A.B. Sep. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/012,593 09/14/2012 7,691,938 B2 13877/13101R 2211
26646 7590 09/09/2014
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/09/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte AKZO NOBEL COATINGS INTERNATIONAL B.V.
Appellant
__________

Appeal 2014-004555
Reexamination Control 90/012,593
Patent 7,691,938 B2
Technology Center 3900
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 13-19 and 24. We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on August 13, 2014.
We AFFIRM.
The subject matter on appeal is directed to an antifouling coating
composition comprising a silyl ester copolymer and an ingredient having biocidal
properties for aquatic organisms. Claim 13 is representative of the subject matter
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on appeal and is reproduced below from the Claims Appendix of the Appeal Brief
dated November 25, 2013 (“App. Br.”).
13. An antifouling coating composition, comprising a silyl
ester copolymer and an ingredient having biocidal properties for
aquatic organisms, wherein the composition has a VOC below 400
grams per liter and a viscosity of less than 10 poise at 25ºC, wherein
more than 40 weight percent of the copolymer consists of building
blocks having side chains with a silyl ester functionality, wherein the
copolymer has a weight-average molecular weight of more than 1,500
and less than 20,000 g/mol, and wherein the viscosity is measured
using a cone and plate viscometer in accordance with ASTM standard
D 4287-00.
App. Br., Claims App. 1 (emphasis omitted).
The claims on appeal stand rejected as follows:
(1) claims 13 and 24 under 35 U.S.C. § 103(a) as unpatentable over
JP 208,1 as evidenced by the Mori Declaration,2 and further in view of the
Admitted Prior Art;3
(2) claims 14-19 under 35 U.S.C. § 103(a) as unpatentable over JP 208, as
evidenced by the Mori Declaration, and further in view of the Admitted Prior Art
and Itoh;4 and
(3) claims 13-19 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Nakamura,5 as evidenced by the Mori Declaration, and further in view of the
Admitted Prior Art.
B. DISCUSSION

1 JP 2001-323208A dated November 22, 2001. In this Decision on Appeal, we
refer to the English translation which is of record in the instant Reexamination.
2 Declaration of Kiyomi Mori dated August 5, 2011.
3 Column 2, lines 32-42 of US Patent 7,691,938 B2, issued April 6, 2010.
4 EP 0 802 243 A2, published October 22, 1997.
5 EP 0 775 733 A1, published May 28, 1997.
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1. Rejections (1) and (2)
The Examiner finds that JP 208 discloses an antifouling coating composition
and directs our attention to Example 16. Ans. 2;6 see also JP 208, at 69 (Table 5).
The Examiner finds that Example 16 is an antifouling coating composition having
a VOC content of 392.4 g/L and a viscosity of 9 poise at 25ºC. Ans. 3. The
Examiner finds that Example 16 comprises copolymer H which has more than 40
weight percent of building blocks having side chains with a silyl ester functionality
and a weight-average molecular weight of about 20,925 g/mol. Ans. 2, 3.
As to JP 208, the dispute in this appeal involves the viscosity of the
antifouling coating composition of Example 16 and the weight-average molecular
weight of copolymer H.7,8 See App. Br. 5-6.
JP 208 is silent as to the viscosity of Example 16. The Examiner, however,
relies on the Mori Declaration to establish that the viscosity of Example 16 is
within the claimed range (i.e., “less than 10 poise at 25ºC”). The Mori Declaration
states:
The viscosity of the anti-fouling composition was calculated
using D4287-00. The viscosity meter used was TVE-20H (made by
Tooki Industry Co. Ltd), rotational speed 10 rpm. The value obtained
was 9 poise at 25ºC.
Mori Declaration ¶ 11 (emphasis added).

6 Examiner’s Answer dated December 20, 2013.
7 The Appellant does not direct us to any error in the Examiner’s findings that the
antifouling coating composition of Example 16 has a VOC of 392.4 g/L or that
more than 40 weight percent of copolymer H consists of building blocks having
side chains with a silyl ester functionality.
8 At the oral hearing, counsel for Appellant indicated that viscosity is the most
important issue. Transcript of August 13, 2014 oral hearing (“Tr.”), at 11, l. 21-12,
l. 3.
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Claim 13 recites that “the viscosity is measured using a cone and plate
viscometer in accordance with ASTM standard D 4287-00.” App. Br., Claims
App. (emphasis added). The Appellant directs our attention to the following
disclosure in the 938 Patent:
When a value is given for the viscosity of a copolymer solution or
coating composition according to the present invention, reference is
made to the high shear viscosity measured using a cone and plate
viscometer in accordance with ASTM standard D 4287-00.
938 Patent, col. 2, ll. 60-64 (emphasis added).
Based on this disclosure, the Appellant argues that “the viscosities as recited
in independent claim 13 are high shear viscosities measured using a cone and plate
viscometer in accordance with ASTM standard D 4287-00.” App. Br. 7 (emphasis
added). The Appellant contends that the TVE-20H viscometer referred to in the
Mori Declaration and used to measure the viscosity of Example 16 is incapable of
measuring a high shear viscosity in accordance with ASTM standard D 4287-00.
Therefore, the Appellant argues that the viscosity values reported in paragraph 11
of the Mori Declaration are not high shear viscosities as recited in claim 13. The
Appellant relies on a Declaration of Alistair A. Finnie, Ph.D. dated March 22,
2013, for support. App. Br. 7-8; Evidence App. 1-4.
The Appellant’s argument is supported by the record. Nonetheless, in
response, the Examiner finds that “[p]aints in general are shear thinning.
Therefore, a paint’s viscosity would be expected to decrease with increasing rate of
shear stress. Shear thinning is a common property of polymer solutions.” Ans. 21.
The Appellant does not contend that the Examiner’s finding is erroneous.
Rather, the Appellant contends that “[t]he use of the words ‘in general’ . . . is an
acknowledgement that not all paints/polymer solutions are shear thinning. Some
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are ‘shear thickening.’” App. Br. 8. The Appellant then directs our attention to
Exhibit 6 “[a]s evidence that silyl ester copolymer solutions are shear thickening.”
App. Br. 8.
According to the Appellant:
The experimental report [in Exhibit 6] shows that a silyl ester
copolymer solution of D28[9] (JP’857) has a low shear viscosity of
1.93 poise at 25ºC and a high shear viscosity of 2.5 poise at 25ºC.
The silyl ester copolymer solution of JP’857 is actually shear
thickening, i.e. an increase in shear results in an increase in viscosity.
In this case the measured high shear viscosity of the silyl ester
copolymer solution is approximately 30% higher than the measured
low shear viscosity.
App. Br. 8-9 (footnote omitted).
Exhibit 6 does not disclose the low shear viscosity or the high shear
viscosity of a silyl ester copolymer solution. Rather, Exhibit 6 discloses a single
viscosity for an antifouling coating composition prepared with a silyl ester
copolymer identified as “Copolymer II.”10 In particular, Exhibit 6 states:
The viscosity of the anti-fouling composition was calculated using
D4287-00. The viscosity meter used was TVE-20H (made by Tooki
Industry Co. Ltd), rotational speed 10 rpm. The value obtained was
2.4 poise at 25ºC.
Evidence App. 31.
To the extent that a silyl ester copolymer solution of D28 is shear
thickening, claim 13 recites the viscosity of an antifouling coating composition,

9 According to the Appellant, “‘D29’ mentioned at the top of the experimental
report is a typographical error ‒ it should actually read ‘D28.’” App. Br. 8, n.4.
10 It appears that the antifouling coating composition described in Exhibit 6 was
prepared with the silyl ester copolymer solution disclosed in the “experimental
report” discussed on pages 8 to 9 of the Appeal Brief. This experimental report
was filed in the instant Reexamination on August 26, 2013.
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not the viscosity of a silyl ester copolymer solution. The Appellant contends that
“[i]t could be predicted” that an antifouling coating composition containing a silyl
ester copolymer solution may also be shear thickening. App. Br. 9. However, the
Appellant has not directed us to any evidence of a shear thickening antifouling
coating composition.11 Nonetheless, the Examiner finds that one of ordinary skill
in the art would have been motivated to maintain the viscosity of the antifouling
coating composition of Example 16 as close as possible to 9 poise at 25ºC “to
prepare an antifouling coating composition that is suitable for coating on a vessel
or underwater structure (see ¶ 0001 of JP ‘208).”12 Ans. 24-25. The Appellant
does not direct us to any error in the Examiner’s finding.
As for the molecular weight, the Examiner calculates the weight-average
molecular weight of copolymer H to be about 20,925 g/mol based on the teaching
in JP 208 that the number-average molecular weight of copolymer H is about 7,500
g/mol.13,14 Ans. 3; JP 208, at 67 (Table 3). The Examiner finds:

11 We note that the Appellant does not direct us to any evidence of the high shear
viscosity of JP 208 Example 16 using a cone and plate viscometer in accordance
with ASTM standard D 4287-00 as recited in claim 13. See Ans. 21 (“Patent
Owner has proffered no evidence of measured viscosity according to ASTM
D4287-00 for JP ‘208’s antifouling coating (paint) composition of Example 16.”).
12 To the extent that copolymer H in JP 208 Example 16 is shear thickening, at the
oral hearing counsel for Appellant acknowledged that ingredients other than the
silyl ester copolymer contribute to the overall viscosity of an antifouling coating
composition. Tr. 10, ll. 1-3.
13 The Examiner finds that JP 208 does not expressly disclose that the molecular
weight of copolymer H is number-average molecular weight. However, the
Examiner finds that the only type of molecular weight discussed in JP 208 is
number-average molecular weight. Thus, the Examiner finds that the molecular
weight for copolymer H is a number-average molecular weight. Ans. 3.
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The difference between copolymer H’s weight-average molecular
weight of 20,925 and the claimed upper limit of less than 20,000
encompasses differences of such small amount that one of ordinary
skill in the art would have reasonably expected no appreciable
difference in performance in JP ‘208’s antifouling coating
composition. See Titanium Metals Corp. of America v. Banner, 778
F.2d 775, 783 (Fed. Cir. 1985).
Ans. 4. The Appellant does not direct us to any evidence demonstrating that the
Examiner’s finding is erroneous.
Moreover, the Examiner finds that JP 208 “is not limited to the exemplified
number-average molecular weight of about 7,500 g/mol” but rather discloses that
the number-average molecular weight of the disclosed silyl ester copolymer can be
as low as 5,000 g/mol. Ans. 4; JP 208, ¶ 47. Based on this disclosure in JP 208,
the Examiner concludes that it would have been obvious to one of ordinary skill in
the art to slightly lower the number-average molecular of copolymer H15 with the
“reasonable expectation of preparing a copolymer for use in JP ‘208’s antifouling
coating composition.” Ans. 4.
The Appellant argues:
[T]he skilled artisan would know (based on common general
knowledge as described in the specification of the ‘938 patent) that
reducing the molecular weight of the copolymer would be expected to
result in . . . problems in mechanical properties of the coating . . . .
Therefore, there would have been no reasonable expectation from the

14 The Examiner finds that the polydispersity of copolymer H is 2.79 (Mori
Declaration ¶ 8) and “[a] polydispersity of 2.79 for copolymer H means the
weight-average molecular weight for copolymer H is 7,500 x 2.79 = about 20,925
g/mol.” Ans. 3. The Appellant does not direct us to any error in the Examiner’s
calculation of the weight-average molecular weight of copolymer H.
15 The Examiner finds, and the Appellant does not dispute, that “[f]or a
polydispersity of 2.79 and a number-average molecular [weight] of 5,000 g/mol,
the weight average molecular weight would be 13,950.” Ans. 4.
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disclosure of JP’208 that a coating composition containing a silyl ester
copolymer having a lower weight average molecular weight (Mw less
than 20,000) would also have good mechanical properties.
App. Br. 11 (emphasis added).
Significantly, the Appellant does not direct us to any portion of the 938
Patent that discloses the “common general knowledge” referred to above. Suffice
it to say that JP 208 expressly discloses that the molecular weight of the silyl ester
copolymer is “typically 5,000 to 100,000.” JP 208, ¶ 47. JP 208 also discloses that
the antifouling coating composition has a variety of desirable properties, including
moderate wear and excellent long-term antifouling performance. See JP 208, ¶¶ 6-
7; see also Ans. 29. Thus, one of ordinary skill in the art would have expected the
antifouling coating composition of JP 208, which includes an antifouling coating
composition comprising a silyl ester copolymer having a number-average
molecular weight as low as 5,000, to have desirable antifouling properties.
Finally, the Appellant generally argues that the coatings of the claimed
invention “surprisingly possess mechanical properties just as good as coatings
comprising silyl ester copolymers of a higher molecular weight.” App. Br. 6, 11.
However, the Appellant does not direct us to any evidence demonstrating that the
mechanical properties of the claimed coating would have been unexpected to one
of ordinary skill in the art. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (“unexpected results must be established by factual evidence”).
For the reasons set forth above, the § 103(a) rejection of claim 13 based on
JP 208, as evidenced by the Mori Declaration, and further in view of the Admitted
Prior Art is sustained. The Appellant does not present arguments in support of the
separate patentability of dependent claims 14-19, and 24. Therefore, the § 103(a)
rejection of claim 24 based on JP 208, as evidenced by the Mori Declaration, and
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further in view of the Admitted Prior Art and the § 103(a) rejection of claims 14-19
based on JP 208, as evidenced by the Mori Declaration, and further in view of the
Admitted Prior Art and Itoh are sustained.
2. Rejection (3)
The Examiner finds that Nakamura discloses an antifouling coating
composition and directs our attention to composition M-10 which comprises
copolymer S-3. Ans. 11; Nakamura 44. The difference between M-10 and the
claimed antifouling coating composition is the viscosity. The Examiner finds that
the viscosity of M-10 is 14 poise at 25ºC16 which is higher than the claimed
viscosity (i.e., “less than 10 poise at 25ºC”). Ans. 14. Nonetheless, the Examiner
concludes that one of ordinary skill in the art would have lowered the viscosity of
antifouling coating composition M-10 to “facilitate application of the antifouling
coating composition.” Ans. 15.
The Appellant argues:
[T]here is no general disclosure/guidance in Nakamura of what
the viscosity of the coating composition should be.
Nakamura fails to provide the skilled artisan with any
reasonable expectation that it would be possible to make a coating
composition comprising a silyl ester copolymer having a weight
average molecular weight of less than 20,000, the coating composition
having a high shear viscosity of less than 10 poise at 25ºC, a VOC of
less than 400 g/L, as required in the invention of independent claim
13, while the coating still maintains its film forming ability and good
mechanical properties.
App. Br. 17.

16 The record on appeal supports the Appellant’s argument that this viscosity is not
a high shear viscosity measured using a cone and plate viscometer in accordance
with ASTM standard D 4287-00 as recited in claim 13. See App. Br. 13-14.
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We recognize that a lower viscosity would be desirable to facilitate the
application of Nakamura’s antifouling coating composition. However, the
Examiner has failed to show that, at the lower viscosity recited in claim 13 (i.e.,
“less than 10 poise at 25ºC”), one of ordinary skill in the art would have expected
the other properties of M-10 to remain within the ranges recited in claim 13. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections 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”). For this reason, the § 103(a) rejection of claims 13-
19 and 24 based on Nakamura, as evidenced by the Mori Declaration, and further
in view of the Admitted Prior Art is not sustained.
C. DECISION
The Examiner’s decision to reject claims 13 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over JP 208, as evidenced by the Mori Declaration, and
further in view of the Admitted Prior Art is affirmed.
The Examiner’s decision to reject claims 14-19 under 35 U.S.C. § 103(a) as
unpatentable over JP 208, as evidenced by the Mori Declaration, and further in
view of the Admitted Prior Art and Itoh is affirmed.
The Examiner’s decision to reject claims 13-19 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Nakamura, as evidenced by the Mori Declaration,
and further in view of the Admitted Prior Art is reversed.
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).
AFFIRMED

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cc: Third Party Requester

Gordon P. Klancnik
Nixon & Vanderhye, P.C.
901 North Glebe Road
11th Floor
Arlington, VA 22203

kmm