Ex Parte Stoffel et al

Patent Trials and Appeals Board

Jul 1, 2019

14717473 - (D) (P.T.A.B. Jul. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/717,473
111787 7590
LKGLOBAL (Axalta)
7010 E. Cochise Road
Scottsdale, AZ 85253
05/20/2015
07/03/2019
FIRST NAMED INVENTOR
Petra Stoffel
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.
l76.0451USD1(FA1944USDIV) 6495
EXAMINER
RODRIGUEZ, MICHAEL P
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
07/03/2019 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):
axalta@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETRA STOFFEL and MARCUS BRUNNER
Appeal2018-008142
Application 14/717,473
Technology Center 1700
Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "Axalta Coating Systems IP Co.
LLC." Appeal Brief of May 7, 2018 ("Br."), 3.
2 Final Office Action of November 3, 2017 ("Final Act."). In this opinion,
we also refer to the Examiner's Answer of June 11, 2018 ("Ans.") and the
Reply Brief of August 13, 2018 ("Reply Br.").
Appeal2018-008142
Application 14/717,473
CLAIMED SUBJECT MATTER
The claims are directed to a non-aqueous solvent composition and its
use as barrier liquid applicable to an industrial mass production coating line.
Spec. 1 : 15-1 7. 3 Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of operating a coating installation of an
industrial mass production coating line, wherein the method
compnses:
providing the coating installation comprising a release
valve for a non-aqueous hardener component; and
filling the coating installation downstream of the non-
aqueous hardener release valve with a non-aqueous solvent
composition comprising:
0 to 10 wt.% ofN-alkyl pyrrolidone,
0 to 5 wt.% of dimethyl sulfoxide,
10 to 50 wt.% of y-butyrolactone,
10 to 50 wt.% of at least one monoalcohol,
10 to 60 wt.% of at least one organic solvent inert
towards isocyanate groups, other than y-butyrolactone, other
than N-alkyl pyrrolidone, and consisting of carbon, hydrogen,
and oxygen and, optionally, nitrogen, and
0 to 10 wt.% of at least one additive.
Br. 15 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Ogasawara
Piestert
Kocher
US 4,993,353 Feb. 19, 1991
US 5,264,486 Nov. 23, 1993
US 2006/0189234 Al Aug. 24, 2006
3 Application No. 14/717,473 filed May 20, 2015 ("Specification" or
"Spec.").
2
Appeal2018-008142
Application 14/717,473
Eckert
Herre
US 2007/0254149 Al Nov. 1, 2007
EP 1543883 Al June 22, 2005
REJECTIONS
Claims 1-3, 7-13, and 15 are rejected underpre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Herre, in view of Kocher and Eckert.
Final Act. 2.
Claims 4, 5, and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Herre in view of Kocher, Eckert, and Ogasawara.
Final Act. 5.
Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Herre in view of Kocher, Eckert, and Piestert. Final
Act. 7.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in 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")). After having
considered the evidence presented in this Appeal and each of Appellants
contentions, we are not persuaded that Appellants have identified reversible
error, and we affirm the Examiner's§ 103 rejections for the reasons
expressed in the Final Office Action and the Answer. We add the following
primarily for emphasis.
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Appeal2018-008142
Application 14/717,473
"Appellants do not dispute the Examiner's interpretation of the
teachings of Herre, Kocher, and Eckert." Br. 11. The sole issue on appeal
is, therefore, whether the Examiner has provided an articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness in rejecting claim 1.4
The Examiner explains that while Herre does not teach the specific
anhydrous solvent composition used in the prior art coating process, "Herre
teaches that the detergent is employed as a flushing agent and barrier for
downstream moisture, and that the composition should be solvent-borne and
matched to the curing agent of the coating applied by the coating
installation." Final Act. 8 ( citing Herre ,i 24 ); see Herre ,i 24 (providing the
use of "an additional detergent, based on solvent-borne and/or is matched to
the curing agent, and therefore not react with the hardener"). Based on
Eckert' s undisputed teaching of "the use of polyurethane polymeric
compositions in automotive coating operations" which is an application
specifically identified in Herre, the Examiner determines that "it would have
been obvious to use a solvent compatible with the curing agent of such
coatings as instructed by Herre." Final Act. 8. Based on Kocher's
undisputed teaching of a composition (identical to that recited in claim 1) as
a suitable solvent in polyurethane coating applications, the Examiner
determined that Kocher' s composition "would have thus been expected to be
operable and effective for flushing the lines in Herre in cases where
4 Appellants do not present separate arguments for the remaining claims and
they therefore stand or fall with claim 1. See Br. 9-13; see also 37 C.F.R.
§ 41.37(c)(l)(iv)(2013).
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Appeal2018-008142
Application 14/717,473
automotive painting operations using the polyurethane compositions of
Eckert are conducted." Id.
Appellants argue that the Examiner reversibly erred in combining the
references because "Herre is primarily concerned with inhibiting or
preventing the reaction between the hardener and moisture, as opposed to
solvating the resulting polyurea that would be formed from such reaction"
whereas Kocher "does not speak at all to the usefulness of such a solvent as
a barrier liquid within the application of Herre, where the desire is to
actually inhibit reaction of the hardener and moisture." Br. 11, 12. We are
not persuaded that we should ignore Herre' s teachings as a whole, including
the undisputed teaching of using a detergent matched to the curing agent in
the coating process. See Herre ,-J 24. The inquiry here is not what Herre's
primary concern - as argued by Appellants - might be. Rather, "the question
is whether there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the combination, not
whether there is something in the prior art as a whole to suggest that the
combination is the most desirable combination available." In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004) (citation and emphasis omitted).
In addition, Appellants' argument that the Examiner's rationale does
not "account for why a person of skill in the art would employ the non-
aqueous solvent of Kocher in the context of Herre given the completely
different concerns" (Br. 12) ( emphasis omitted) is unpersuasive. Here again,
this argument does not address the Examiner's rationale in its entirety. The
Examiner's rationale for modifying Herre's coating for automotive
application with the solvent based on y-butyrolactone taught by Kocher is
based on Eckert's teaching to use abrasion-resistant polyurethane coatings in
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Appeal2018-008142
Application 14/717,473
automotive painting operations. Final Act. 3. Appellants' argument does
not address Eckert, 5 therefore, the argument does not persuade us of
reversible error in the Examiner's rationale.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). In this case,
Appellants argue that the method recited in claim 1 produces unexpected
results illustrated by Example 3 and Table 1 of the Specification. Br. 12.
Among other reasons, the Examiner points out that the data shown in the
Specification is not commensurate in scope with claim 1 because claim 1 is
not limited to the specific polyisocyanate compositions used in the
Specification. Ans. 10. Appellants do not dispute that the data cited in
5 For the first time on appeal, Appellants raise various arguments in the
Reply Brief. Compare Reply Br. 2-4 (for example, arguing against the
Examiner's statement that "it would have been obvious to use a solvent
compatible with the curing agent ( of Eckert) as instructed by Herre. The
compositions taught by Kocher would have thus been expected to be
operable and effective for flushing the lines of Herre in cases where
automotive painting operations using the polyurethane compositions of
Eckert are conducted") ( emphasis omitted), with Final Act. 8 (providing the
statement quoted in the Reply Brief to which the arguments are directed).
The Examiner has not had an opportunity to consider these arguments.
Appellants offer no explanation as to why they could not have been raised in
the opening brief. We therefore decline to consider them. See Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); Exparte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.").
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Application 14/717,473
support of the unexpected results argument is not commensurate in scope
with claim 1. Reply Br. 5 ( arguing only that "there is no explanation for the
disparate results that were achieved with the claimed solvent as compared to
conventional solvent, and such findings must be considered"). "The
evidence presented to rebut a prima facie case of obviousness must be
commensurate in scope with the claims to which it pertains." In re Dill, 604
F.2d 1356, 1361 (CCPA 1979). We are, therefore, not persuaded that the
Examiner reversibly erred in evaluating the data in support of the
unexpected results argument.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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