Ex Parte DING et al

Patent Trial and Appeal Board

Sep 7, 2018

14710680 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/710,680 05/13/2015
59272 7590 09/11/2018
SWIMCLLC
101 PROSPECT A VENUE N.W.
1100 MIDLAND BLDG. - LEGAL DEPARTMENT
CLEVELAND, OH 44115-1075
HONG DING
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.
17226C 2864
EXAMINER
BROOKS,KREGGT
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/11/2018 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):
LEGAL_IP@SHERWIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONG DING and ZHIQI Y ANG 1
Appeal2017-008910
Application 14/710,680
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7, 10, 11, and 18-22. We have jurisdiction
under 35 U.S.C. § 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to curable coating compositions.
E.g., Spec. ,r 2; Claim 1. Claim 1 is reproduced below from page 44 (Claims
Appendix) of the Appeal Brief:
1 The Appellant is the Applicant, The Sherwin-Williams Company, which is
also identified as the real party in interest. See Br. 4.
Appeal2017-008910
Application 14/710,680
1. A coating composition comprising:
a polymeric binder, which is the reaction product of:
(a) an acetoacetoxy functional polyester epoxy block or graft
copolymer; and
(b) a crosslinking component, wherein the crosslinking
component is an isocyanate functional crosslinker.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1-7, 10, and 18-20 over DePompei (US 5,714,563, issued
Feb. 3, 1998) and Kordomenos (US 4,698,398, issued Oct. 6, 1987);
2. Claim 11 over DePompei, Kordomenos, and Sawaguchi (JP 2003-
231861, dated Feb. 13, 2002);
3. Claim 21 over DePompei, Kordomenos, and Ohrbom
(US 2004/0068060 Al, published Apr. 8, 2004);
4. Claims 21 and 22 over DePompei, Kordomenos, and Mosser
(US 5,116,672, issued May 26, 1992).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-21;
Ans. 2-23.
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Rejection 1
The Examiner finds that DePompei teaches a curable composition
comprising a polymeric binder that is the reaction product of (a) an
acetoacetoxy functional polyester and (b) an isocyanate functional
crosslinker. Ans. 2. The Examiner finds that DePompei teaches that the
acetoacetoxy functional polyester is prepared by acetoacetylation of a
polyhydroxy polyester, but does not teach the claimed epoxy polyester block
or graft copolymer. Id.
The Examiner finds that Kordomenos teaches similar coating
compositions that have "a polyester epoxy graft or block copolymer formed
by reacting a diepoxide with a hydroxyl functional acid (e.g.,
dimethylolpropionic acid), with polymerization of lactones." Id. (citations
omitted). The Examiner further finds that Kordomenos "teaches that the
polyester epoxy graft of block copolymer used therein has a number of
benefits, including flexibility and toughness, and corrosion resistance." Id.
( citation omitted). The Examiner determines that it would have been
obvious "to modify the composition of DePompei, using the polyester epoxy
block or graft copolymer having hydroxyl functionality taught by
Kordomenos as the base polyester polyol for the acetoacetoxy functional
polyester, so as to obtain the benefits of flexibility and toughness, and
corrosion resistance as taught by Kordomenos, thereby arriving at the
invention of claim 1." Id. at 3.
The Appellant repeatedly argues that the composition of the combined
prior art "differ[ s] dramatically from the claimed compositions." E.g.,
Br. 17, 19, 20, 21, 22, 24, 25, 26, 27, 31. For support, the Appellant relies
principally on the following assertions: (1) DePompei's compositions cure
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rapidly without heating, (2) DePompei's reactants must be kept in anhydrous
conditions before use, (3) Kordomenos's compositions cure rapidly when
heated, ( 4) the claimed compositions cure under ambient conditions over
extended periods, and ( 5) the reactants used to create the claimed
compositions do not require anhydrous storage conditions. See id. at 13-1 7.
Relying on those assertions, the Appellant concludes:
Therefore, a skilled artisan that combined the cited references
could not have obtained the invention of claim 1. The
compositions resulting from a combination of the references
would have to result from reactants that had to be stored under
anhydrous conditions and would result in compositions that
rapidly cure in minutes when heated to elevated temperatures,
e.g., temperatures of about five (5) times ambient temperatures.
The present claimed compositions, in contrast, do not require
reactants stored under anhydrous conditions and result in
compositions that cure under ambient conditions over extended
periods, e.g,, days (See Example 3 and Example 4 where ambient
cure time is seven (7) days). Given these dramatic differences,
it is clear that a skilled artisan that combined the references could
hot [sic] have obtained the invention of claim 1 as asserted by the
Examiner.
E.g., Br. 17.
Those arguments are not persuasive. As the Examiner explains, the
Appellant identifies alleged differences between the prior art and the
Appellant's disclosure (e.g., anhydrous storage conditions, cure times) that
do not appear in the claims. E.g., Ans. 14; see also In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) ("The invention disclosed in Hiniker's
written description may be outstanding in its field, but the name of the game
is the claim."); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(rejecting appellant's nonobviousness argument as based on limitation not
recited in claim). Although the Appellant asserts that "these conditions
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regarding reactant storage and cure process do not need to be read into the
present claims," Br. 18, the Appellant does not persuasively dispute the
Examiner's finding that the proposed combination of DePompei and
Kordomenos would result in a polymeric binder that is the reaction product
of recited elements (a) and (b). That appears to be all that is required to fall
within the scope of claim 1. The Appellant points to nothing in the claim
language that would exclude the use of, e.g., (1) reactants that must be stored
under anhydrous conditions, or (2) reactants that cure rapidly under heat.
Nor does the Appellant identify any disclosure in the Specification or the
prior art references that suggests that the use of such reactants falls beyond
the scope of claim 1. See id. at 13-28.
Even assuming that the Appellant accurately asserts that the
composition of the combined prior art has certain "dramatic" differences
relative to the claimed composition, that would not necessarily cause the
composition of the combined prior art to fall beyond the scope of claim 1.
For example, a claim directed to "an apparatus comprising an engine" would
cover both an airplane and a motorboat, notwithstanding the fact that an
airplane and a motorboat might be described as significantly different from
each other. In this case, the Appellant has not adequately explained how the
alleged differences between the prior art and the disclosure of the
Specification relate to the limitations actually recited in claim 1. See
Hiniker, 150 F.3d at 1369; Van Geuns, 988 F.2d at 1184.
The Appellant also argues that "[ a ]dding the Kordomenos reactants to
DePompei and creating a composition would require heating the
Kordomenos reactants to at least 120°C. Such heating would be
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incompatible with the ambient cure conditions taught in DePompei and
would create a composition that is unsatisfactory and unusable." Br. 18.
That argument is not persuasive because it is attorney argument
unsupported by evidence or cogent reasoning. See, e.g., In re Huang, 100
F.3d 135, 139-40 (Fed. Cir. 1996); In re Pearson, 494 F.2d 1399, 1405
( CCP A 197 4) ("Attorney's arguments in a brief cannot take the place of
evidence."). DePompei and Kordomenos both describe coating
compositions that include similar ingredients, including polymeric
compounds and polyisocyanate crosslinking agents. E.g., DePompei at
Abstract, 5:25-27; Kordomenos at Abstract. The Appellant identifies no
persuasive reason that a person of ordinary skill would have believed that
the combination of DePompei and Kordomenos, as proposed by the
Examiner, would result in an unusable composition. Nor does the Appellant
allege that a person of ordinary skill in the art would not have been able to
determine a suitable cure temperature for the composition of DePompei and
Kordomenos. Additionally, in the Answer, the Examiner finds that
Kordomenos does not require curing temperatures of 120°C, but instead
teaches "curing temperatures of 120 degrees Corless." Ans. 18. The
Appellant does not file a Reply Brief to contest that finding. On this record,
we are not persuaded that alleged differences in cure temperature would
have dissuaded a person of ordinary skill in the art from combining
DePompei and Kordomenos.
The Appellant further argues that "[ t ]he Examiner provided no
reasoning that would have motivated a skilled artisan to combine the
references to achieve the present invention." E.g., Br. 19. That argument is
not persuasive because it ignores the Examiner's finding that a person of
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ordinary skill would have combined the references "to obtain the benefits of
flexibility and toughness, and corrosion resistance as taught by
Kordomenos." Ans. 3.
The Appellant also argues that DePompei "teaches away from the
present invention" because it teaches anhydrous storage conditions and rapid
curing. Br. 28. The Appellant argues that Kordomenos "teaches away from
the present invention" because it discloses heated curing. Id. However, as
set forth above, the Appellant has not persuasively explained how reactants
that use anhydrous storage conditions, or rapid/heated curing, are excluded
by claim 1. Accordingly, even assuming the Appellant's description of the
prior art is accurate, those features cannot provide the basis for teaching
away from the claimed invention.
We have carefully considered the Appellant's arguments concerning
claim 1, and we are not persuaded that the Appellant has identified
reversible error in the rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... "). Accordingly,
we affirm the Examiner's rejection of claim 1.
The Appellant does not meaningfully dispute the additional findings
made by the Examiner with respect to claim 2, but argues that "the Examiner
does not state how such rational[ e] or reasoning made the present claimed
invention obvious over a combination of references." Br. 28-29. However,
as above, the Examiner provides a specific reason that a person of ordinary
skill would have combined DePompei and Kordomenos. See Ans. 4. The
Appellant's limited argument fails to show error in the Examiner's findings
and conclusions, and it fails to show that making the proposed combination
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would have been beyond the ordinary level of skill in the art. See Jung, 637
F.3d at 1365.
The Appellant's arguments with respect to claims 3-7, see Br. 29-30,
are unpersuasive because they fail to address, or otherwise show error in, the
Examiner's specific findings and conclusions concerning the subject matter
of those claims, see Ans. 5-9. See Jung, 637 F.3d at 1365; In re Lovin, 652
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determines that it would have been obvious to modify the composition of
DePompei and Kordomenos to include Sawaguchi's rust-preventative to
improve corrosion protection. Id.
The Appellant argues that "nothing in the combination of Sawaguchi,
DePompei, or Kordomenos implies or suggests that such rust preventive
agents would be compatible with a coating composition comprising a
polymeric binder that is made by reacting (a) an acetoacetoxy functional
polyester epoxy block or graft copolymer and (b) an isocyanate functional
crosslinking component." Br. 34. The Appellant also argues that "there is
nothing in the cited references that would provide a logical reason to
combine the references to achieve the invention claimed in claim 11." Id.
The Appellant further argues that, because "[ t ]he present invention is not
directed to rust preventive compositions," "a skilled artisan would not be
motivated to use rust preventive pigments to achieve the present invention."
Id.
Those arguments are not persuasive. The reason to combine the
references is, as suggested by Sawaguchi, enhanced corrosion resistance.
The Appellant acknowledges that "[ t ]he use of Sawaguchi type pigments to
prevent rust is known in the art." Br. 34. As explained above, Kordomenos
is also concerned with corrosion resistance. E.g., Kordomenos at 4:52-53.
The Appellant provides no reason to believe that a person of ordinary skill in
the art would not have expected Sawaguchi's rust-preventative pigments to
function as rust-preventative pigments in the composition of DePompei as
modified by Kordomenos. The Appellant's assertion that "the present
invention" is not concerned with rust prevention fails to indicate error in the
Examiner's determination that a person of ordinary skill in the art would
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have been motivated to combine the references to reduce corrosion. See In
re Beattie, 974 F.2d 1309, 1312 (Fed.Cir.1992) ("[T]he law does not require
that the references be combined for the reasons contemplated by the
inventor."). On this record, the Appellant has not identified reversible error
in the rejection. See Jung, 637 F.3d at 1365.
Rejection 3
Claim 21 depends from claim 20, which depends from claim 18.
Claim 18 recites "[a] substrate coated" with the coating composition of
claim 1. Claim 20 requires the substrate to be metal. Claim 21 requires the
substrate to be aluminum.
The Examiner finds that DePompei teaches the use of its composition
as a coating, but does not specifically describe an aluminum substrate.
Ans. 12. The Examiner finds that Ohrbom teaches a coating for automotive
purposes which includes aluminum substrates, and that Ohrbom teaches
suitable topcoats include polyesters, and particular polyesters with
acetoacetoxy group and isocyanate crosslinkers. Id. Kordomenos
specifically describes automotive applications for its composition, including
application to metal substrates. E.g., Kordomenos at 3:34--35. The
Examiner determines that it would have been obvious to apply the
compositions of DePompei as modified by Kordomenos to aluminum
substrates, given that Ohrbom teaches the use of similar compositions as
suitable coatings for aluminum substrates. Ans. 12.
The Appellant argues that, in comparison to Ohrbom, "[ t ]he present
invention uses an entirely different polymeric binder coating composition to
coat metal substrates," and that nothing in the references "suggest[ s] or
predict[ s] the claimed coating composition." Br. 3 8.
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Those arguments are not persuasive. The Appellant does not dispute
that Ohrbom teaches coating compositions including polyesters, and, in
particular, polyesters with acetoacetoxy group and isocyanate crosslinkers.
See Ans. 12. Those coating compositions are similar to the coating
compositions of both DePompei and Kordomenos. As noted above,
Kordomenos specifically describes use of its composition on metal
automotive substrates. Even assuming the Appellant accurately identifies
certain differences among the three references, Br. 37-38, the Appellant
does not persuasively explain why those differences would have caused a
person of ordinary skill to doubt whether the coating composition of
DePompei and Kordomenos could be applied to an aluminum substrate, and
the similarities among the references provides at least a reasonable
expectation of success that the coating could successfully be used on a metal
substrate. The Appellant has not identified reversible error in the rejection.
See Jung, 637 F.3d at 1365.
Rejection 4
Claims 21 and 22 are subject to Rejection 4. Claim 21 is described
above in our discussion of Rejection 3. Claim 22 depends from claim 20
and specifies that the metal substrate is chrome pretreated aluminum.
The Examiner finds that Mosser teaches the use of organic coatings
for metal substrates, and that polyesters are suitable organic resins for such
coatings. Ans. 12. The Examiner finds that Mosser teaches that such
coatings may be applied to chrome treated aluminum. Id. at 12-13. The
Examiner determines that it would have been obvious to use the composition
of DePompei as modified by Kordomenos on Mosser's substrate because
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Mosser teaches the use of similar polyester coatings on chrome pretreated
aluminum substrates. Id. at 13.
The Appellant generally raises arguments similar to those described
above, e.g., that the present invention uses a different binder than Mosser,
and that the references do not disclose the claimed coating composition.
Br. 41--42.
Those arguments are not persuasive. Mosser teaches coatings that
provide improved corrosion resistance. As set forth above, Kordomenos is
also concerned with corrosion resistance, and a person of ordinary skill in
the art would have combined DePompei and Kordomenos with the
expectation of achieving a composition with corrosion resistance. Given the
known use of corrosion resistant coatings on chrome pretreated aluminum
substrates, the Appellant's limited arguments do not persuade us of
reversible error in the Examiner's proposed combination. In particular,
DePompei teaches the use of its composition as a coating but does not
specify a metal substrate. Kordomenos specifies metal substrates. Mosser
also describes metal substrates for corrosion resistant coatings, and
specifically identifies chrome pretreated aluminum substrates. Absent some
reason a person of ordinary skill in the art would not have expected the
corrosion resistant coating of DePompei as modified by Kordomenos to
work on chrome pretreated aluminum, the record reasonably suggests that
the coating of DePompei as modified by Kordomenos could be used on any
metal substrate in need of corrosion resistance, including chrome pretreated
aluminum. The Appellant has not identified reversible error in the rejection.
See Jung, 637 F.3d at 1365.
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CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-7, 10, 11, and 18-
22.
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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