Ex Parte Bowman

Patent Trial and Appeal Board

Jul 24, 2013

11840282 (P.T.A.B. Jul. 24, 2013)

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.
11/840,282 08/17/2007 Mark P. Bowman 064629A1GC 1036
24959 7590 07/25/2013
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
07/25/2013 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 MARK BOWMAN
____________

Appeal 2012-002754
Application 11/840,282
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 25, 27-29, 32-35 and 37-43 under 35 U.S.C.
§ 103(a) as unpatentable over Narayan-Sarathy3 in view of Park4 and claims

1 Our decision refers to Appellant’s Brief (Br.) filed July 11, 2011, and the
Examiner’s Answer (Ans.) mailed September 2, 2011.
2 Appellant identifies the real party in interest in this appeal as PPG
Industries Ohio, Inc.
3 US 2005/0027082 A1, published February 3, 2005.
4 US 6,899,927 B2, issued May 31, 2005.
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26, 39 and 40 over Narayan-Sarathy and Park further in view of Van Dijk5.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to a curable coating composition capable of
curing by a dual mechanism involving exposure to radiation and by a
Michael addition reaction. Spec. [0002]. The composition comprises a
polyene containing an electron-withdrawing group, a polythiol, and a
Michael addition catalyst. Id. [0005]. In addition, the composition may
contain a photoinitiator when exposed to ultraviolet radiation. Id. [0024].
Appellant does not separately argue the claims on appeal. Br. 3-5.
Accordingly, all claims stand or fall with independent claim 25 (37 C.F.R. §
41.37(c)(1)(vii)), reproduced below:
25. A composition comprising:
(i) a polyene with an electron-withdrawing group,
(ii) a polythiol,
(iii) a Michael addition catalyst,
(iv) a photoinitiator,
wherein the photoinitiator comprises at least one of a benzoin,
benzoin derivatives, acetophenone, acetophenone derivatives, 2,2-
diacetoxyacetophenone, benzophenone, benzophenone derivatives,
thioxanthone, thioxanthone derivatives, anthraquinone, 1-
benzoylcyclohexanol, organophosphorus compounds, and acyl
phosphine oxides.
App. Br., Claims App’x (emphasis added).

5 US 6,639,046 B1, issued October 28, 2003.
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ANALYSIS
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ. [(Emphasis added.)]

After careful consideration of the respective positions of the Examiner
and Appellant, we find a preponderance of the evidence supports the
Examiner’s obviousness conclusion. We will sustain each of the Examiner’s
Section 103(a) rejection for the reasons expressed in the Answer with the
comments below added for emphasis.
The Examiner finds Narayan-Sarathy discloses a coating composition
comprising a multifunctional mercaptan and a Michael addition
multifunctional acrylate oligomer having pendant unsaturated acrylate
groups. Ans. 5. The Examiner finds the mercaptan reads on the recited
polythiol and the oligomer reads on the recited polyene containing an
electron-withdrawing group which undergoes a thiol-ene reaction catalyzed
by a base (reading on the Michael addition catalyst). Id. In addition, the
Examiner finds an exogenous photoinitiator may be added to the
composition. Id., referring to Narayan-Sarathy, [0031].
The Examiner acknowledges Narayan-Sarathy fails to teach a
photoinitiator as claimed. Id. However, the Examiner finds Park teaches
use of an acetophenone photoinitiator for UV radiation curing of a coating
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composition comprising a urethane acrylate oligomer and an acrylate based
monomer. Id. The Examiner then concludes
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have used acetophenone as
a photoinitiator in acrylate based coating of Narayan-Sarathy et
al with the expectation of providing the desired UV-curing of
the acrylate based coating since Park et al teaches that
acetophenone photoinitiator is suitable for UV radiation curing
of a coating layer containing a binder having acrylate groups,
and since Narayan-Sarathy et al does not limit photoinitiators.

Id. at 7-8.
Appellant contends that “[a]lthough a Michael addition catalyst
was used to form the oligomer, the catalyst is inactivated before
combining the oligomer with the polythiol.” Br. 3-4. In addition,
Appellant also argues Narayan-Sarathy fails to support a teaching of
the use of a photoinitiator. Id. at 4. In particular, Appellant argues
Narayan-Sarathy’s teaching in ¶ [0030] that exogenous photoinitiators
may be added “hardly warrants a teaching or suggestion of using a
photoinitiator when read in the context of the entire disclosure of
Narayan-Sarathy.” Id. Indeed, Appellant argues, “[w]hen read in its
entirety, Narayan-Sarathy teaches an inventive composition that
excludes a photoinitiator.” Id.
We note the Examiner has fully addressed Appellant’s argument
above. Ans. 12. Narayan-Sarathy unquestionably teaches a composition
that does not require the addition of an exogenous photoinitiator. However,
it is equally clear that Narayan-Sarathy teaches exogenous photoinitiators
may be added to the composition. We find no merit in Appellant's
contention that the disclosure of the use of an exogenous photoinitiator is so
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submerged in Narayan-Sarathy, and the teaching of the self-photoinitiating
composition so predominant, that Narayan-Sarathy cannot be said to place
use of exogenous photoinitiators in the possession of the public. In re
Burckel, 592 F.2d 1175 (CCPA 1979) (“‘all disclosures of the prior art,
including unpreferred embodiments, must be considered’ in determining
obviousness”), quoting In re Lamberti, 545 F.2d 747 (CCPA 1976).
Further, Narayan-Sarathy teaches the use of a Michael addition
catalyst for catalyzing the thiol-ene reaction in the dual cure coating
composition. As found by the Examiner, the composition upon application
to a substrate includes the Michael addition acrylate oligomer, the
multifunctional mercaptan, a Michael addition base catalyst added to the
composition for the thiol-ene reaction, and a photoinitiator. In particular,
although Narayan-Sarathy neutralizes the Michael addition catalyst after
making the oligomer, the thiol-ene reaction may be catalyzed by a base
([0031]), peroxide ([0030]), or amine ([0055]).
Appellant further contends Narayan-Sarathy discloses a composition
that cures through one cure mechanism, and cannot result in a composition
providing an ultraviolet radiation activated cure through the use of a
photoinitiator in conjunction with a Michael addition reaction through the
use of a Michael addition catalyst. Br. 4. However, contrary to Appellant’s
argument, Narayan-Sarathy expressly discloses a dual cure composition
undergoing both the free radical reaction initiated by UV light and the thiol-
ene reaction which may be initiated by a Michael addition catalyst. Ans. 14,
referring to Narayan-Sarathy ¶ [0036].
As to Park, Appellant argues Park fails to teach or suggest a
composition including a Michael addition catalyst. Br. 5. However, this
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argument misapprehends the Examiner’s rejection. The secondary reference
to Park is applied in the rejection as evidence that acetophenone
photoinitiator may be used for UV radiation curing of a coating composition
including acrylate oligomer. Ans. 15, referring to Park, Abstract. Based on
Park’s teaching, the Examiner concludes it would have been obvious to use
Park’s photoinitiator in Narayan-Sarathy’s composition with a reasonable
expectation of success since Park teaches the acetophenone photoinitiator is
suitable for UV radiation curing of an acrylate based coating. Appellant
fails to rebut the combination as the Examiner proposed.
Turning to the second Section 103 rejection based on the combination
of Narayan-Sarathy, Park and Van Dijk, the Examiner finds Van Dijk
teaches furnace black and titanium dioxide pigments are suitable for use in
polythiol-polyene compositions. Ans. 10. Therefore the Examiner
concludes it would have been obvious to have used Van Dijk’s pigments in
Narayan-Sarathy’s polythiol-polyene compositions. Id. Moreover, the
Examiner finds Van Dijk teaches use of primary and secondary amines may
be used as a catalyst in polythiol-polyene compositions. Id. The Examiner
concludes it would have been obvious to use such amines as a catalyst in
Narayan-Sarathy’s compositions.
Appellant argues since Van Dijk’s compositions cure solely by
Michael addition, there would be no motivation to combine Van Dijk’s
Michael addition catalyst in Narayan-Sarathy’s compositions which cure
through UV radiation. Br. 5. Appellant also argues Van Dijk uses a
Michael addition catalyst whereas Narayan-Sarathy explicitly teaches
neutralizing the Michael addition catalyst. Id. These arguments however
are not persuasive. The Examiner finds Van Dijk teaches use of UV
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radiation curing of a composition similar to Narayan-Sarathy’s. Ans. 10.
Appellant fails to rebut or address this finding. Further, both Narayan-
Sarathy and Van Dijk teach use of base and amine Michael addition
catalysts for carrying out thiol-ene reactions. Narayan-Sarathy, ¶¶ [0029],
[0055]; Van Dijk, 4:59-64.
Therefore, we affirm the Examiner’s decision to reject claims 25-29,
32-35, and 37-43 for the reasons expressed in the Answer.
CONCLUSION
In sum, for the reasons expressed in the Answer and above, we find a
preponderance of the evidence favors the Examiner’s conclusion of
obviousness as to appealed claims 25-29, 32-35, and 37-43. The Section
103 rejections over claims 25-29, 32-35, and 37-43 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

kmm