Ex Parte Chasser et al

Board of Patent Appeals and Interferences

May 25, 2012

11159501 (B.P.A.I. May. 25, 2012)

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.
11/159,501 06/23/2005 Anthony M. Chasser 2046A1 3007
7590 05/29/2012
PPG Industries, Inc.
Intellectual Property Department
One PPG Place
Pittsburgh, PA 15272
EXAMINER
MCCULLEY, MEGAN CASSANDRA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
05/29/2012 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
____________________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________________

Ex parte ANTHONY M. CHASSER, MICHAEL P. MAKOWKI
and BRIAN E. WOODWORTH
____________________

Appeal 2011-007267
Application 11/159,501
Technology Center 1700
____________________

Before: FRED E. McKELVEY, RICHARD TORCZON and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007267
Application 11/159,501

2

Statement of the case
PPG Industries Ohio, Inc. (“PPG”), the real party in interest (Brief, page 2), 1
seeks review under 35 U.S.C. § 134(a) of a rejection dated 4 February 2010. 2
The application has been published as U.S. Patent Application Publication 3
2006/0292374 A1. 4
In support of prior art rejections, the Examiner relies on the following 5
evidence: 6
Pettit U.S. Patent 4,921,913 1 May 1990
Nugent et al.
“Nugent”
U.S. Patent 5,491,204 13 Feb. 1996
Hart et al.
“Hart”
U.S. Patent Application
Publication
2002/0004557 A1
10 Jan. 2002
Ring et al.
“Ring”
U.S. Patent 6,531,524 11 Mar. 2003
Iwahashi et al.
“Iwahashi”
U.S. Patent Application
Publication
2003/0121453 A1
3 Jul. 2003
7
Ring is cited by the Examiner in responding to argument presented by PPG 8
in the Appeal Brief. See Answer, page 9. 9
All evidence is prior art under 35 U.S.C. § 102(b). 10
We have jurisdiction under 35 U.S.C. § 134(a). 11
Rejections 12
The claims on appeal are 1-2, 4-6, 8, 11-12, 15, 17, 19, 21, 23-24 and 27-29. 13
The Examiner maintains the following rejections: 14

Appeal 2011-007267
Application 11/159,501

3

(1) Claims 1-2, 5-6, 8, 11-12, 19 and 23 as being unpatentable under 1
§ 103 over Hart and Iwahashi. Answer page 3. 2
(2) Claim 4 as being unpatentable under § 103 over Hart, Iwahashi 3
and Pettit. Answer, page 4. 4
(3) Claims 15, 17, 21 and 24 as being unpatentable under § 103 over 5
Hart and Iwahashi. Answer, page 5. 6
(4) Claims 27-28 as being unpatentable under § 103 over Hart and 7
Iwahashi. Answer, pages 6-7. 8
(5) Claim 29 as being unpatentable under § 103 over Hart, Iwahashi 9
and Nugent. Answer, page 7. 10
Claims on appeal 11
Claim 1 which we reproduce from the Claim Appendix of the Appeal Brief, 12
reads [matter in brackets and indentation added (see 37 C.F.R. § 1.75(i)) added; 13
principal limitations at issue in italics]: 14
A curable powder coating composition comprising a film-15
forming resin composition comprising: 16
(a) a first film-forming resin, wherein the first film-forming 17
resin comprises an acid group containing acrylic resin, 18
(b) a second film-forming resin that is different from and 19
incompatible with the first film-forming resin, wherein the second 20
film-forming resin is selected from polyepoxy resin, an epoxy-21
polyester hybrid resin, or a mixture thereof; and 22
(c) a compatibilizing agent comprising a fatty alcohol ester, 23
wherein the compatibilizing agent is present in the composition in an 24

Appeal 2011-007267
Application 11/159,501

4

amount sufficient to result in a coating composition that, when 1
deposited onto at least a portion of a substrate and cured, produces a 2
mid-gloss coating having a 60º gloss of from10-80 gloss units. 3
Analysis 4
What is PPG’s fatty alcohol ester? 5
The claims call for a fatty alcohol ester. See independent Claims 1, 15, 27 6
and 28. 7
The specification mentions fatty alcohol esters. Specification, ¶ 0037 (“the 8
compatibilizing agent may comprise a monocarboxylic acid, such as a fatty acid 9
and/or a fatty alcohol ester.”). The Specification does not define “fatty alcohol 10
ester.” Accordingly, we construe “fatty alcohol ester” to have its ordinary meaning 11
as viewed by one skilled in the art. What is the ordinary meaning? It depends on 12
what source is consulted. For example, a first source defines fatty alcohol as “[a] 13
primary alcohol (from C8 to C20), usually straight chain.” Lewis, Hawley’s 14
Condensed Chemical Dictionary, page 508 (ISBN 0-442-01131-8) (12 ed. 1993). 15
A second source, Wikipedia, defines fatty alcohol as “aliphatic alcohols consisting 16
of a chain of 8 to 22 carbon atoms” (http://en.wikipedia.org/wiki/Fatty_alcohol 17
(5/18/2012)). Wikipedia is a post-filing date reference. A third source defines 18
fatty alcohol as “[a] high-molecular weight straight-chain primary alcohol derived 19
from natural fats and oils . . .” Parker, McGraw-Hill Dictionary of Chemistry, 20
page 153 (ISBN 0-07-052428-9) (1997). A fourth source describes long chain 21
alcohols reacted with long chain acids to form an ester, but the ester also has a 22
hydroxyl group. See U.S. Patent Application Publication 2011/0136188, a post 23
filing date publication. 24

Appeal 2011-007267
Application 11/159,501

5

Given the various possible definitions, we have had some difficulty 1
determining precisely what PPG means by “fatty alcohol” and therefore have had 2
difficulty determining the meaning of the claim term “fatty alcohol ester”. 3
However, from the Specification, we know that (1) a first portion of the 4
compatibilizer, including a fatty alcohol ester compatibilizer, must be compatible 5
with the first-forming resin and (2) a second portion of the fatty alcohol ester must 6
be compatible with the second film-forming resin. Specification, ¶ 0033. The 7
claims also require that the fatty alcohol ester be such that the claimed composition 8
must produce a cured coating composition that produces a specified mid-gloss 9
coating of 60º glass of from 10-80 gloss units. See, e.g., Claim 1. 10
While the claims do not mention a first or second portion, we feel 11
comfortable interpreting “fatty alcohol ester” in light of the specification such as to 12
require the fatty alcohol ester to have the “first” and “second” portions mentioned 13
in ¶ 0033. In addition, the fatty alcohol ester must be capable, when used in a 14
proper proportion, to achieve the claimed gloss. 15
Prior art rejections 16
A principal argument on appeal by PPG is that Hart and Iwahashi are non-17
analogous art. Appeal Brief, pages 13-16. 18
Hart describes powder coating compositions which are similar to those 19
claimed by PPG. The Hart compositions comprise an acid group containing 20
(1) an acrylic resin, (2) a polyepoxy resin and (3) a compatibilizer. Hart, Abstract, 21
¶¶ 0002, 0012 and 0049. However, Hart does not describe the use of a fatty 22
alcohol ester. 23
Hart is within PPG’s field of endeavor. 24

Appeal 2011-007267
Application 11/159,501

6

To overcome the difference, the Examiner turns to Iwahashi. 1
Iwahashi describes the use of a fatty acid ester. ¶ 0009 (“the [Iwahashi] 2
inventors . . . found out that when a wax containing a higher fatty acid ester as the 3
main component is used as a surface treating agent for the surface of inorganic fine 4
power, an improved matting effect can be achieved by adding only a relatively 5
small amount of such surface treated inorganic fine power to a UV paint”). See 6
also ¶ 0019. A fatty acid ester described by Iwahashi is beeswax. ¶ 0022 7
(Embodiment 1). According to Wikipedia, beeswax is an ester made from 8
aliphatic alcohols having approximately 30-32 carbon atoms. See 9
http://en.wikipedia.org/wiki/Beeswax (5/18/2012). We will assume, without 10
deciding, that beeswax is a fatty alcohol ester within the scope of PPG’s claims. 11
However, Iwahashi is not directed to the same field of endeavor as Hart. 12
Nor does Iwahashi’s description of the use of beeswax purport to solve any 13
problem discussed by either Hart or PPG. On the record before us, the only 14
suggestion for using a fatty alcohol ester as a compatibilizing agent comes from 15
PPG’s Specification. 16
The Examiner found that Hart and Iwahashi involve the same field of 17
endeavor because both deal with epoxy-acrylate coatings and both concern 18
controlling gloss of the coating. Answer, page 8. However, Hart and Iwahashi 19
cure their respective resins through different mechanisms and are solving different 20
technical problems. See Appeal Brief, page 14. 21
The Examiner suggests that the claims can be interpreted to not require the 22
presence of the compatibilizing agent. Answer, page 9. Based on that 23
interpretation, the Examiner further suggests that Hart alone possibly meets the 24

Appeal 2011-007267
Application 11/159,501

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claims. Id. We cannot agree because the claims plainly require three elements: 1
(1) a first resin, (2) a second resin and (3) a compatibilizer. A composition without 2
a compatibilizer does not fall within the scope of the claims. 3
The Examiner relies on Ring to show that it would not be inconsistent with 4
Hart’s purpose to include silica—an element described by Iwahashi. We agree 5
with PPG that Ring makes out a case that silica is a poor performer in powder 6
compositions as Ring utilizes a separate gloss-reducing agent. See (1) col. 8 7
(item b1) and col. 10:36 to col. 11:23 called to our attention in the Reply Brief at 8
page 5. 9
On the record before us, the evidence does not provide a sufficient basis for 10
using the Iwahashi’s beeswax in the Hart composition. 11
Decision 12
Upon consideration of the appeal, and for the reasons given herein, it is 13
ORDERED that the decision on the Examiner rejecting the claims on 14
appeal under § 103(a) is reversed. 15
FURTHER ORDERED that no time period for taking any subsequent 16
action in connection with this appeal may be extended under 37 CFR 17
§ 1.136(a)(1)(iv). 18
REVERSED 19
20
ak 21
22
FATTY ACID ENOL ESTER 508
cause such acids are necessary nutrients that are
not synthesized in the animal body.
Use: Special soaps, heavy-metal soap, lubricants,
paints and lacquers (drying oils), candles, salad
oil, shortening, synthetic detergents, cosmetics,
emulsifiers.
For further details, refer to Fatty Acid Produc­
ers Council, 475 Park Ave. South, NY, NY
10016.
fatty acid enol ester. A fatty acid reacted with
enolic form of acetone for the purpose of in­
creasing the chemical reactivity of the acid. Stea­
ric acid (18-carbon) combined with acetone (3­
carbon) gives isopropenyl stearate (21-carbon).
This is effective in making the fatty stearoyl
group available for synthesis of polymers, me­
dicinals, and the like.
See also fatty ester.
fatty acid pitch. A by-product residue from (1)
soap stock and candle stock manufacture, (2) re­
fining of vegetable oils, (3) refining of refuse
greases, (4) refining of wool grease.
Properties: Dark brown to black, properties an­
algous to complex hydrocarbons, contains fixed
carbon (5-35%), soluble in naphtha and carbon
disulfide.
Use: Manufacture of black paints and varnishes,
tarred papers, printers' rolls, rubber filing
agent, impregnating agent, electrical insula­
tions, marine caulking, waterproofing, sealant.
fatty alcohol. A primary alcohol (from C8 to
C20), usually straight chain. High-molecular
weight-alcohols are produced synthetically by
the Oxo and Ziegler processes. Those from C8 to
Cll are oily liquids; those greater than Cll are
solids. Other methods of production are (1) re­
duction of vegetable seed oils and their fatty
acids with sodium, (2) catalytic hydrogenation
at elevated temperatures and pressures, and (3)
hydrolysis of spermaceti and sperm oil by sa­
ponification and vacuum fractional distillation.
The more important commercial saturated alco­
hols are octyl, decyl, lauryl, myristyl, cetyl, and
steary!. The commercially important unsatu­
rated alcohols, such as oleyl, linoleyl, and
linolenyl, are also normally included in this
group. The odor tends to disappear as the chain
length increases.
Use: Solvent for fats, waxes, gums and resins;
pharmaceutical salves and lotions, lube oil addi­
tives, detergents and emulsifiers, textile anti­
static and finishing agents, plasticizers, nomonic
surfactants, cosmetics.
fatty amine. A normal aliphatic amine derived
from fats and oils. May be saturated or unsatu­
rated, primary, secondary or tertiary, but the
alkyl groups are straight-chain and have an even
number of carbons in each. The I
from 8 to 22 carbon atoms.
Derivation: Fatty acids are treated w
and heated to form fatty acid amid
converted to nitriles and reduced to
Use: Organic bases, soaps, plasl
cords, fabric softeners, water-resis!
hair conditioners, cosmetics, medici
fatty ester. A fatty acid with the acti
replaced by the alkyl group of a me
cohol. The esterification of a
RCOOH, by an alcohol, R'OR yie
ester RCOOR'. The most common
is methanol, yielding the m
RCOOCH3 • The methyl esters of
have higher vapor pressures tblU
sponding acids and are distilled mOl
fatty nitrile. (RCN). An organic
rived from a fatty acid.
Derivation: Fatty acids are treated w
and heated to form fatty acid amid
converted to nitriles.
Use: Intermediates for fatty amines,
ditives, plasticizers.
faujasite. NalCaO°All03°5SiOl°10E
A mineral.
Use: As a zeolite or molecular sieve.
Favorskii-Babayan synthesis. Synth.
lenic alcohols from ketones and tel
lenes in the presence of anhydrous c
Favorskii rearrangement. Base-ca
arrangement of a-halo ketones to ae
The rearrangement of a,a'-di
hexanones to I-hydroxycycIopenta
acids, followed by oxidation to tb
known as the Wallach degradation.
FBR. Abbreviation for fast breeder
See breeder.
FCC. (1) Abbreviation for Fooe
Codex, a publication giving specil
test methods for chemicals used i
Abbreviation for fluid-cracking cat
in the petroleum refining industry. I
powdered silica-alumina in which a
pregnated with dry synthetic silica
ous natural clays impregnated with
FDA. Abbreviation for Food and I
istra~n.
FD&C color. A series of colorants
food'Pfoducts, marking inks, etc.•
the FDA. Among the more impo:
following:
a
'Ie
s.
of
ig
F
'r
\
F. lCI!EMlSTRYI See fluorine.
- ~glng ligand /ORGANIC CHEMISTRYI A ligand that forms a bridge over one tri­
angular face of the polyhedron of a metal cluster structure. I 'fas ,brij' iI) 'Iig' and I
laIsebody IPHYSICAL CHEMISTRY! The property of certain colloidal substances. such
aspaints and printing inks. of solidifying when left standing. ! Ifols 'bM· e I
famHV jCHEMISTRYI A group of elements whose chemical properties. such as valence.
solubility of salts. and behavior toward reagents. are similar. ! 'fam ·Ie I
fampbur IORGANIC CHEMISTRYI C'QH,,,NO,PS, A crystalline compound with a melting
.point of 55·C; slightly soluble in water; used as an insecticide for lice and grubs of
telndeer and cattle. , 'fam· f