Ex Parte Hillebrandt Poulsen et alDownload PDFPatent Trial and Appeal BoardDec 19, 201713140088 (P.T.A.B. Dec. 19, 2017) Copy Citation 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. 13/140,088 01/31/2012 Soren Hillebrandt Poulsen 065496.01200.01USPC 5957 24959 7590 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 12/19/2017 EXAMINER LEE, DOUGLAS ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 12/19/2017 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 SOREN HILLEBRANDT POULSEN, PER MOLLER, and SVERRIR GRIMUR GUNNARSSON Appeal 2017-000924 Application 13/140,0881 Technology Center 1700 Before CHRISTOPHER L. OGDEN, JULIE HEANEY, and JENNIFER R. GUPTA, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1-11 in the above-identified application.2 We have authority pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is DYRUP A/S. Appeal Br. 2, Jan. 22, 2016. 2 See Appeal Br. 1; see also Reply Br., Oct. 13, 2016; Final Office Action, Aug. 21, 2015 [hereinafter Final Action]; Examiner’s Answer 6, Aug. 19, 2016 [hereinafter Answer] (noting that claim 12 was withdrawn prior to the appeal). Appeal 2017-000924 Application 13/140,088 BACKGROUND Appellants’ invention “relates to compositions with self-cleaning properties,” and particularly “coatings or paints comprising particles coated with a catalytically active composition.” Spec.3 1:4-6. Representative claim 1, the sole independent claim, is as follows: 1. A self-cleaning coating composition comprising a binder and micro-sized particles coated with a photocatalytic layer, wherein the micro-sized particles are hollow or solid beads, or any combination/ratio of hollow and solid beads, wherein the beads comprise one or more material(s) selected from the group consisting of ceramic material(s); polymeric material(s); cermet material(s); metallic material(s); pigmented material(s); light absorbing and light reflecting material(s); and a combination thereof, wherein said photocatalytic layer is covalently bound to said particles after adsorbed water is evaporated from particle surfaces, wherein the photocatalytic layer comprises TiCh in the crystal form of anatase; and wherein the coating composition comprises less than 0.1 percent free anatase particles derived/released from the micro-sized beads, determined as weight/weight of released anatase/total amount of anatase. Appeal Br. 15 (emphasis of key limitation added). The Examiner maintains the following grounds of rejection: 1. Claims 1-6 and 8—114 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shibahara,5 as evidenced by Takahashi6 and Benmami.7 See Final Action 7-10. 3 Specification, June 16, 2011 [hereinafter Spec.]. 4 The Examiner originally included claim 12 in this rejection, see Final Action 7, but the Examiner withdrew this rejection, see Answer 6. 5 Shibahara et al., JP 2005-199261 A (published July 28, 2005). 6 Takahashi et al., US 2005/0228112 Al (published Oct. 13, 2005). 7 Benmami et al, Supported Nanometric Titanium Oxide Sols as a New Efficient Photocatalyst, 109 J. Phys. Chem. B 19766, 2005. 2 Appeal 2017-000924 Application 13/140,088 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Shibahara in view of Kimura,8 as evidenced by Takahashi, and Benmami. See id. at 10-11. In the Appeal Brief, Appellants argue claims 1-6 and 8-11 as a group, and separately argue claim 7. See Appeal Br. 11-13. Consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2016), we limit our discussion to independent claim 1 and dependent claim 7. Claims 2-6 and 8-11 stand or fall with claim 1. DISCUSSION The Examiner finds that Shibahara discloses a coating composition comprising micro-sized coated urethane or glass particles with a photocatalytic layer comprising Ti02, as recited in claim 1. Final Action 7. The Examiner finds that Shibahara discloses that the Ti02 coating “is done by a sol gel process onto the particle surface, thus forming a covalent bond.” Id. (citing Shibahara]} 11). The Examiner interprets the recitation “wherein said photocatalytic layer is covalently bound to said particles after adsorbed water is evaporated from particle surfaces,” see Appeal Br. 15, as a product-by process limitation. Final Action 8. According to the Examiner, “the particles coated with a photocatalytic layer disclosed by Shibahara appears to be the same or similar to the claimed product since Shibahara discloses that the coating of Ti02 is done by a sol gel process onto the particle surface, thus forming a covalent bond.” Id. (citing Shibahara ]} 11). The Examiner cites Benmami 8 Kimura et al., US 6,110,528 (issued Aug. 29, 2000). 3 Appeal 2017-000924 Application 13/140,088 as evidence that the Shibahara method forms covalent bonds on the bead surfaces even in the presence of water. See id. (citing Benmami 19771). In light of the evidence of covalent bonds at the bead surfaces, the Examiner finds that Appellants have not provided any persuasive evidence of a nonobvious structural difference between Shibahara and the claimed invention. See id. Appellants argue that Shibahara does not teach that the photocatalytic layer is bound to the particles after the removal of adsorbed water. See Appeal Br. 12. Appellants also argue that due to the high reactivity of these titanium precursors with water, all of the precursor will have reacted with water before the glass beads are dispersed in the solution, and after all of the precursor has already reacted with water, the titanium precursor cannot re act with OH groups on the glass bead surface and thereby form a covalent bond. Id. These arguments are not persuasive of reversible error in the Examiner’s rejection. Because the requirement of binding the photocatalytic layer after removing adsorbed water has to do with the order of processing steps, this limitation is a product-by-process limitation under its broadest reasonable interpretation. See In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (“[Djuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.”). In a product-by-process claim, “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.” In re Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985). 4 Appeal 2017-000924 Application 13/140,088 For the above reasons, the Examiner has persuasively shown that the structure in Shibahara is not patentably distinct from the product formed by the process limitation in claim 1. Appellants’ arguments in the Appeal Brief to the contrary are not persuasive, because they constitute merely attorney argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). In the Reply Brief, Appellants raise a new argument by pointing to Example 1 and Example 2 in the Specification as allegedly showing that a covalent bond does not form in the presence of adsorbed water when the surface is glass. See Reply Br. 4-5. Appellants have waived this argument, because it was not raised in the Appeal Brief, is not responsive to an argument raised in the Answer, and Appellants have not shown good cause why we should consider the argument without the Examiner having an opportunity to respond. See 37 C.F.R. § 41.41(b)(2); cf. McBride v. MerrellDow andPharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (“Considering an argument advanced for the first time in a reply brief... is not only unfair to an appellee but also entails the risk of an improvident or ill-advised opinion on the legal issues tendered.” (internal citations omitted)). For the above reasons, the preponderance of the evidence on this record supports the Examiner’s rejection of claim 1 over Shibahara. Thus, we affirm the Examiner’s rejection of claims 1-6 and 8-11. Claim 7 depends from claim 1 and further recites, “wherein more than 99% by weight of the TiCE in the photocatalytic layer is in the catalytic active form of anatase.” Appeal Br. 16. The Examiner finds that “Kimura discloses that the titanium dioxide in the crystalline form of anatase exhibits 5 Appeal 2017-000924 Application 13/140,088 higher photocatalytic activity than rutile” (another crystalline form of TiCh). Final Action 11 (citing Kimura 4:57-60). Thus, the Examiner determines that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify the percentage of TiCh in the anatase form through routine experimentation to more than 99% anatase.” Id. Appellants argue that neither Shibahara nor Kimura teaches that more than 99% of the TiCE should be anatase. Appeal Br. 13. Appellants also argue that “the two references use different processes for coating particles with titanium dioxide, and the amount of anatase produced in the method of one may not be achievable using the process of the other.” Id.; see also Reply Br. 6. These arguments are not persuasive of reversible error. The test for obviousness is not whether the features of Kimura may be incorporated into Shibahara; rather, “the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). As the Examiner explains in the Answer, “Kimura is relied upon for disclosing that it is known in the art that the titanium oxide in the crystalline form of anatase exhibits higher photocatalytic activity than rutile.” Answer 8. Moreover, the Examiner correctly points out that “the purpose of the composition is providing a photocatalytic active material.” Id. at 9 (citing Shibahara 3—4; Kimura 1:7—20). Thus, we agree with the Examiner that a person of ordinary skill in the art at the time of the invention would have recognized the concentration of anatase as a result-effective variable. Appellants have not pointed to any persuasive evidence that optimizing the anatase concentration would have been beyond the ordinary skill in the art. 6 Appeal 2017-000924 Application 13/140,088 For the above reasons, the preponderance of the evidence on this record supports the Examiner’s rejection of claim 7. Therefore, we affirm the Examiner’s rejection of claim 7. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016). AFFIRMED 7 Copy with citationCopy as parenthetical citation