Ex Parte Hart et alDownload PDFBoard of Patent Appeals and InterferencesJun 21, 201210952652 (B.P.A.I. Jun. 21, 2012) Copy Citation 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. 10/952,652 09/29/2004 Terence J. Hart 1890A1 9987 7590 06/22/2012 PPG INDUSTRIES, INC. Intellectual Property Department One PPG Place Pittsburgh, PA 15272 EXAMINER LIGHTFOOT, ELENA TSOY ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 06/22/2012 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 ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TERENCE J. HART, ROBERT B. HODEK, LOUIS J. NEHMSMANN, ROBERT H. TANG, and YINGCHAO C. ZHANG ____________ Appeal 2010-009406 Application 10/952,652 Technology Center 1700 ____________ Before CHUNG K. PAK, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. PAK, Administrative Patent Judge DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 2, 4, 8 through 14, 16, 17, 19, 21, 27, and 29 through 31.1 We have jurisdiction under 35 U.S.C. § 6. 1 See Appeal Brief (“App. Br.”) filed March 10, 2010, 1; Examiner’s Answer (“Ans.”) filed May 11, 2010, 2. Appeal 2010-009406 Application 10/952,652 2 STATEMENT OF THE CASE The subject matter on appeal is directed to “methods particularly suitable for coating ceramic substrates.” (See Spec. 1, para. 0002.) Details of the appealed subject matter are recited in illustrative claim 12, which are reproduced below: 1. A method for coating a ceramic substrate comprising: applying to at least a portion of the substrate at least one colored coating composition comprising at least one curable organic binder and at least one colorant; applying to at least a portion of the substrate a substantially clear coating composition comprising a curable organic binder; and substantially simultaneously curing the binders in the colored coating composition and the substantially clear coating composition; wherein either the colored coating composition or the substantially clear coating composition can be applied first, and wherein the first applied coating composition further comprises a plurality of spacer particles having an average particle diameter of at least 1 micron that retain the first applied coating at substantially the desired location until the other coating is applied and the coatings are cured, wherein the spacer particles of the first applied coating composition are rigid at or below a first temperature and soften and flow at a second temperature at or below the temperature at which the binder(s) cure. 2 We decide the propriety of the Examiner’s § 103(a) rejections set forth in the Answer based on the separately argued claims discussed infra consistent with 37 C.F.R. § 41.37(c)(iv). Appeal 2010-009406 Application 10/952,652 3 According to relevant parts of paragraphs 0015, 0016 and 0017 of the Specification, the spacer particles recited in claim 1 are defined as follows: …The coating that is applied first, and optionally the coating that is applied second, further comprises a plurality of "spacer" particles. The particles can be organic, inorganic or combinations thereof, spherical, not spherical or combinations thereof. Organic particles can be polymeric, nonpolymeric or combinations thereof. The particles can be solid, hollow, or combinations thereof. Suitable inorganic particles are commercially available as inert fillers and may comprise, for example, glasses, including borosilicate glass and soda lime silica glass, and ceramics. Organic particles are also widely commercially available. Organic particles suitable for use in the present invention can comprise a wide variety of polymeric species and blends thereof; these particles can exhibit the combination of rigidity and thermal softening desired in certain embodiments as described below. Certain organic particles are particularly beneficial in achieving the desired level of gloss in certain embodiments because they readily soften and flow, resulting in a smooth, glossy surface. Examples of suitable polymeric materials include polyamides, polysiloxanes, polyacrylates, polyacrylamides, polystyrene, polyurethane and polyester. Nonlimiting examples of suitable polyamides include polyamide 12, polyamide i 1, and polyamide 6/12. Coatings used according to the present invention can include organic particles that soften, and/or organic particles that may not possess the softening properties discussed below, and/or inorganic particles. The particles may be rigid at or below a first temperature and soften at a higher second temperature at or below the temperature at which the binder(s) cure; the binder(s) remain uncured at the first temperature. Alternatively, the particles may be rigid at all relevant temperatures, i.e. they do not soften at or below the temperature at which the binder(s) cure and will not undergo any appreciable softening at the temperatures to which the substrate will be exposed during the coating steps described herein. The "non-softening" particles may be useful in Appeal 2010-009406 Application 10/952,652 4 achieving objectives such as surface texture, coefficient of friction, abrasion resistance and/or special reflectivity. The particles may be present at levels and ratios sufficient to exhibit a desired effect in the coating composition. "Rigid" and like terms mean that the particles are not readily compressible at a given temperature; that is, the particles have greater structural integrity than the uncured binder in which they are contained. More specifically, the components of one or more of the compositions used are selected so that the binder(s) are uncured and the particles in the colored composition and/or the substantially clear coating composition are rigid at a first temperature. The first temperature will typically be the temperature at which the composition is applied to the substrate and/or the temperature at which a second or subsequent coating layer may be applied to the substrate. This may be room temperature, or it may be at somewhat elevated temperatures. In certain embodiments, the binder(s) cure and the particles soften at a second temperature. "Cure" and like terms refer to chemical reactions that link together the various components of the organic binder forming a thermoset polymer. "Soften" and like terms refer to the loss of sufficient rigidity of structure in the particles such that a deformation and/or other shape change occurs in the particles. For example, particles protruding from the surface of the compositions of the present invention change shape at or below the second temperature, "melting" or smoothing the coating surface; because of this smoothing, the gloss reduction normally observed when particles protrude through a coating surface is minimized if not eliminated. The Examiner relies on the following evidence to establish unpatentability of the appealed subject matter (Ans. 2-3): Brockway US 3,903,339 Sep. 2, 1975 Backhouse US 4,220,679 Sep. 2, 1980 Nota US 4,424,239 Jan. 3, 1984 Suss US 4,620,993 Nov. 4, 1986 Bleile US 5,979,714 Nov. 9, 1999 Harrison US 6,068,915 May 30, 2000 Appeal 2010-009406 Application 10/952,652 5 Tang US 6,214,414 B1 Apr. 10, 2001 Appellants seek review of the following grounds of rejection set forth by the Examiner in the Answer: 1) Claims 1, 2, 4, 8 through 14, 16, 19, 21, 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Suss and Backhouse; 2) Claims 1, 2, 4, 8 through 14, 16, 17, 19, 21, 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Tang, Suss and Backhouse; 3) Claims 9 through 11 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Suss, Backhouse, and Nota or the combined disclosures of Tang, Suss, Backhouse, and Nota; 4) Claim 17 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Suss, Backhouse, and Tang; 5) Claim 27 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Suss, Backhouse, and Bleile or the combined disclosures of Tang, Suss, Backhouse, and Bleile; and 6) Claim 27 and 29 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Suss, Blackhouse, Bleile and Blockway or the combined disclosures of Tang, Suss, Blackhouse, Bleile, and Blockway. (See App. Br. 2-3.) DISCUSSION I. REJECTION (1) Appellants do not dispute the Examiner’s finding that Appeal 2010-009406 Application 10/952,652 6 Suss et al discloses a method for coating a substrate comprising: applying to the substrate such as glass or metal (See column 24, lines 5-8) a basecoating composition [comprising at least one curable organic binder and at least one colorant], applying to the basecoat a substantially clear top coating composition [comprising a curable organic binder] (See column 23, lines 43-46); and substantially simultaneously curing the coatings (See column 24, lines 48-55) typically at a temperature within a range of 80°C-150°C (See column 24, lines 35-39), wherein both coating layers comprise a plurality of organic polymer particles (See column 16, lines 61-66) having diameter of 0.1-10 microns (See column 17, lines 1-2). [(Compare Ans.3 with App. Br. 3-4 and Reply Br. 1-2; See also Suss, col. 23, l. 43 to col. 24, l. 39.)] The spacer particle diameter size of at least 1 micrometer recited in claim 1 substantially overlaps (at least about 90% overlap) with the organic particle diameter size of 0.1 to 10 micrometers taught by Suss. According to the Examiner, Suss incorporates by reference the disclosure of US 4,220,679 issued to Backhouse on September 2, 1980 for the specific organic polymer microparticles which include the spacer particles having the functional properties recited in claim 1. Appellants do not question the Examiner’s finding that Suss incorporates by reference the disclosure of Backhouse for the specific organic particles useful for its base coat and clearcoat compositions. (See App. Br. 3-4 and reply Br. 1-2.) However, Appellants contend that one of ordinary skill in the art would not have been led to employ the spacer particles having the functional properties (rigid at or below a first temperature, but softens and flows at a second temperature at or below the curing temperature) recited in claim 1. Id. Appeal 2010-009406 Application 10/952,652 7 Thus, the dispositive question raised by the Examiner and Appellants is: Has the Examiner reversibly erred in determining that Suss, as explained by Backhouse, would have led one of ordinary skill in the art to employ the spacer particles having the functional properties recited in claim 1(i.e., rigid at or below a first temperature (room temperature), but softens and flows at a second temperature at or below the curing temperature) in the basecoat and/or clearcoat composition in the coating method taught by Suss? On this record, we answer this question in the negative. As indicated supra, Suss teaches using the polymer microparticles described in Backhouse in its basecoat and clearcoat compositions. (See also Suss, col. 16, l. 61 to col. 17, l. 8.) The Examiner has found, and Appellants do not dispute, that: Backhouse '679 teaches that polymer microparticles present in a basecoat composition should be insoluble in and be stably dispersed (i.e. should be rigid at room temperature) in a coating solution of a film-forming polymer (See column 2, lines 8-11), have a diameter of from 0.01 to 10 microns (See column 4, lines 41-44), and may be of various types (See column 8, lines 10-11), e.g. polyamide microparticles (See column 7, lines 57-58). …Backhouse teaches that the chemical composition and degree of crosslinking of the microparticle polymer may be such that it has a Tg (glass-rubber transition temperature) below room temperature, in which case the microparticles will be rubbery in nature; alternatively, it may be such that the Tg is above room temperature, that is to say the particles will be hard and glassy (See column 5, lines 39-45). [(Compare Ans. 4-5 with App. Br. 3-4.)] Nor do Appellants dispute the Examiner’s official notice that: It is well known in the art that typically the non-crosslinked (thermoplastic) polyamide particles and slightly cross-linked polyamide particles (i.e. uncured thermosetting resin) is heated Appeal 2010-009406 Application 10/952,652 8 at or above its glass transition temperature, the thermosetting resin softens and flows. [(Compare Ans. 5 with App. Br. 3-4.)] Given the above undisputed teachings, we concur with the Examiner that Suss, as explained by Backhouse, would have led one of ordinary skill in the art to employ suitable polymer particles (corresponding to the space particles recited in claim 1) having particle sizes of 1 microns to 10 microns, including those having the functional properties recited in claim 1 (i.e., rigid at or below a first temperature (room temperature), but softens and flows at a second temperature at or below the curing temperature) in the basecoat and/or clearcoat compositions in the coating method taught by Suss. See Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious.” ); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives.”) Indeed, Appellants’ argument at page 4 of the Appeal Brief that “Suss appears to teach the significance of particles that do not have these [claimed] parameters” indicates that Suss also teaches some polymer particles having such claimed parameters as being useful for the basecoat and/or clearcoat compositions used in its coating method. Appellants contend that one of ordinary skill in the art would not have been led to employ the polymer particles recited in claim1 in the basecoat and/or clearcoat compositions in the coating method taught by Suss since some selection are required to choose appropriate polymer particles that are Appeal 2010-009406 Application 10/952,652 9 insoluble in the polymer (binder) solution or that comport with the type of the curable binder employed. (See App. Br. 3-4.) However, as indicated supra, Suss and Backhouse, like Appellants, disclose all sorts of polymer particles useful for a basecoat composition and/or a clearcoat composition, some of which include the polymer microparticles having the functional properties recited in claim 1. Suss, as explained by Backhouse, provides sufficient guidance to select appropriate polymer particles, including those claimed, for the basecoat composition and/or the clearcoat composition used in the coating method taught by Suss as indicated supra and as indicated at column 4, lines 41-66 of Backhouse referred to at pages 8 and 9 of the Answer . On this record, Appellants have not shown that the use of such space polymer particles in the basecoat composition and/or the clearcoat composition imparts unexpected results over the closest embodiment described in Suss or Backhouse. (See App. Br. 3-4 and Reply Br. 1-2.) Accordingly, based on the totality of record on appeal, including due consideration of the arguments advanced by Appellants and the findings relied upon by the Examiner, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claims 1, 2, 4, 8 through 14, 16, 19, 21, 30 and 31 within the meaning of 35 U.S.C. § 103. II. REJECTION (2) Appellants do not dispute the Examiner’s determination that it would have been obvious to one of ordinary skill in the art to employ the polymer microparticles and organo-modified clay taught or suggested by Suss, as explained by Backhouse, in both the basecoat and clearcoat layers taught by Tang. (Compare Ans. 6-8 with App. Br. 5.) Rather, Appellants repeat the Appeal 2010-009406 Application 10/952,652 10 same arguments that Suss and Backhouse would not have suggested the polymer particles having the functional properties recited in claim 1. (See App. Br. 5.) Thus, based on the same reasons set forth above, we also determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claims 1, 2, 4, 8 through 14, 16, 17, 19, 21, 30 and 31 within the meaning of 35 U.S.C. § 103. III. REJECTION (3) The disclosures of Tang, Suss and Backhouse are discussed above. Moreover, as noted by the Examiner at pages 9 and 10 of the Answer, Nota, like Backhouse, teaches forming microparticles useful for a coating composition, made of polyamides prepared from polycondensation of a diamine, such as hexamethylene diamine. (Compare Nota, col. 1, l. 37 to col. 2, l. 12 with Backhouse, col. 7, ll. 50-65.) According to col. 1, ll. 37- 42 of Nota, such polyamide microparticles have a softening point of 110- 230oC, which is more than 30oC greater than room temperature (first temperature) but below the curing temperature as explained in the Examiner’s official notice discussed above. Thus, notwithstanding Appellants’ arguments to the contrary at pages 5 and 6 of the Appeal Brief, we determine that one of ordinary skill in the art, armed with the collective teachings of Suss, Backhouse, and Nota or the collective teachings of Tang, Suss, Backhouse, and Nota, would have been led to employ suitable polymer particles having the claimed particle sizes, including those having the functional properties recited in claims 9, 10, and 11, in the basecoat composition and/or the clearcoat composition in the coating method taught by Suss . Appeal 2010-009406 Application 10/952,652 11 Accordingly, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claims 9 through 11 within the meaning of 35 U.S.C. § 103. IV, REJECTION (4) Appellants do not dispute the Examiner’s determination that one of ordinary skill in the art would have been led to apply the coating compositions suggested by Suss and Backhouse using the screen coating techniques taught by Tang. (Compare Ans. 10-11 with App. Br. 6.) Rather, Appellants repeat the same arguments that Suss and Backhouse would not have suggested the polymer particles having the functional properties recited in claim 1. (See App. Br. 5.) Thus, based on the same reasons set forth above, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claim 17 within the meaning of 35 U.S.C. § 103. V. REJECTIONS (5) AND (6) Appellants contend that one of ordinary skill in the art would not have been led to treat the glass substrate taught by Suss with the silicon oil composition taught by Bleile or the polyethylene composition taught by Brockway prior to applying and curing the coating compositions as suggested by Suss and Backhouse. (See App. Br. 6-7.) However, as indicated supra, Appellants do not dispute the Examiner’s finding that Suss, as explained by Backhouse, teaches applying and then curing basecoat and clearcoat compositions on a glass substrate. Although neither Suss nor Backhouse mentions employing a composition or a polyethylene composition for enhancing the releasability of the cured composition from a glass substrate, there is no dispute that: Appeal 2010-009406 Application 10/952,652 12 Bleile et al teaches that treating the outer surface of a glass bottle with a silicone oil (claimed release treatment) after coming out of the cooling station improves the flowing properties of a synthetic material coating in the mold and prevents chemical or physical reactions between glass and synthetic material (See column 5, lines 60-65). … Brockway et al teaches that it has generally been considered desirable to maximize adherence between glass and coating in order to improve the mechanical properties of a container (See column 3, lines 13-25). More recently, however, it has been recognized that improved protection against shatter is achieved if there is only a slight adhesion between the glass and coating (See column 3, lines 25-28). The desired limited degree of adherency may be provided by initially applying to the outside surface of the glass body an adherency modifying primer coating which is effective to reduce the adherency of the containment coating to the desired extent such as polyethylene, silicone resins and montan wax (See column 4, lines 12-25). [(Compare Ans. 11 and 12 with App. Br. 6-7.)] Given the advantages of applying the silicone oil composition taught by Bleile or the polyethylene composition taught by Brockway on a glass substrate prior to applying a coating, we concur with the Examiner that one of ordinary skill in the art would have been led to treat the glass substrate taught by Suss with the silicon oil composition taught by Bleile or the polyethylene composition taught by Brockway prior to applying and curing the coating compositions suggested by Suss and Backhouse. From the functions of the silicon oil composition taught by Bleile or the functions of the polyethylene composition taught by Brockway, one of ordinary skill in the art would have reasonably expected that the treatment of a glass substrate, including that taught by Suss, with such silicon oil or Appeal 2010-009406 Application 10/952,652 13 polyethylene composition would have enhanced the releasability of cured coating compositions from the glass substrate. In any event, such releasability function would have naturally flowed from following the suggestion of employing such silicon oil or polyethylene composition on a glass substrate prior to applying and curing the coating compositions as indicated supra. See In re Gershon, 372 F.2d 535, 537-39 (CCPA 1967)("We think it is sufficient that the prior art clearly suggests doing what appellants have done, although an underlying explanation of exactly why this should be done, other than to obtain the expected superior beneficial results, is not taught or suggested in the cited references."); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious.") Accordingly, we determine that the preponderance of evidence weighs most heavily in favor of obviousness of the subject matter recited in claims 27 and 29 within the meaning of 35 U.S.C. § 103. CONCLUSION In view of the foregoing, the decision of the Examiner is affirmed. No timer period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tc Copy with citationCopy as parenthetical citation