Ex Parte Hart et al

Board of Patent Appeals and Interferences

Jun 21, 2012

10952652 (B.P.A.I. Jun. 21, 2012)

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.
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Application 10/952,652

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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).
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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
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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
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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
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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.
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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
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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
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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
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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 .
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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:
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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
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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

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