Ex Parte Swarup et al

Patent Trials and Appeals Board

Mar 25, 2019

13780628 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/780,628
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
02/28/2013
03/26/2019
FIRST NAMED INVENTOR
Shanti Swarup
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.
12008401A2 3797
EXAMINER
WALTERS JR, ROBERTS
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
03/26/2019 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 SHANTI SWARUP, XIANGLING XU,
RICHARD J. SADVARY, and ANTHONY M. CHASSER
Appeal2017-006244
Application 13/780,628
Technology Center 1700
Before MICHELLE N. ANKENBRAND, CHRISTOPHER L. OGDEN, and
JANEE. INGLESE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 16-223 in the above-identified application. We
have authority under 35 U.S.C. § 6(b). We affirm.
1 The appeal record includes the following: Specification, Feb. 28, 2013
("Spec."); Non-final Office Action, June 21, 2016 ("Action"); Appeal Brief
Sept. 23, 2016 ("Appeal Br."); Examiner's Answer, Jan. 12, 2017
("Answer"); Reply Brief, Mar. 7, 2017 ("Reply Br.").
2 Appellant is the Applicant, PPG Industries Ohio, Inc., which is also the real
party in interest according to Appellant. Appeal Br. 2.
3 The Examiner has withdrawn pending claims 1-15 from examination.
Action 2.
Appeal2017-006244
Application 13/780,628
BACKGROUND
Appellant's invention relates to an automotive surface coating. See
Spec. ,r 1. It provides "a basecoat composition," applied prior to a clearcoat,
"that cures through the dehydration step resulting in a high degree of cure
before the clearcoat is applied." Id. ,r,r 2-5.
Independent claim 16, which we reproduce below, is representative:
16. An aqueous thermosetting coating composition comprising:
(a) a continuous phase comprising water, and
(b) a dispersed phase comprising:
(i) pigments;
(ii) polymeric particles containing carboxylic acid
functionality prepared from the polymerization of a
mixture of ethylenically unsaturated compounds including
ethylenically unsaturated monomers comprising from:
(A) 2 to 30 percent by weight of a multi-ethylenically
unsaturated monomer,
the percentage by weight being based on total weight of
the ethylenically unsaturated monomers; and
(iii) a polycarbodiimide; wherein, upon curing to form a cured
coating, the cured coating farmed from the aqueous
thermosetting coating composition demonstrates a glass
transition temperature less than 25 °C.
Appeal Br. 12 (emphasis of key phrase added). The claim is directed to
"[a]n aqueous thermosetting coating composition" that includes "a
continuous phase comprising water, and ... a dispersed phase." Id. The
dispersed phase includes pigments, polymeric particles, and a
polycarbodiimide. Id. The polymeric particles "contain[] carboxylic acid
functionality" 4 and are prepared by polymerizing a mixture of ethylenically
unsaturated monomers, of which 2-30% (by weight) are multi-ethylenically
4 The Specification defines carboxylic acid functionality as "carboxylic acid
as well as salts thereof." Spec. ,r 39.
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Application 13/780,628
unsaturated monomers. Id. According to the Specification, this
concentration range of multi-ethylenically unsaturated monomers provides a
composition with a beneficial degree of crosslinking. See Spec. ,r 23.
The Specification states that the recited composition "provide[ s] for
low glass transition temperatures (T g) in the cured basecoat layers, which is
desirable because of road stone and chip resistance. T gS less than 25 °C[] are
desirable." Spec. ,r 24. Accordingly, claim 16 recites "wherein, upon curing
to form a cured coating, the cured coating formed from the aqueous
thermosetting coating composition demonstrates a glass transition
temperature less than 25 °C." Appeal Br. 12.
Claims 17-22 depend directly or indirectly from claim 16. See id. at
12-13. In particular, claim 21 adds to claim 16 a nearly identical limitation
as to the glass transition temperature: "[ t ]he composition of claim 16 in
which a film of the polymeric particles has a Tg less than 25°C."5 Id. at 13.
The Examiner rejects claims 16-22 under 35 U.S.C. § 103 as being
unpatentable over Ambrose6 in view of Faler. 7 Action 5---6. Appellant
presents arguments regarding claims 16-20 and 21 as a group, and
separately addresses claim 21. See Appeal Br. 5-10. Therefore, under
37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to the rejection of
5 Because the Examiner's rationale for rejecting claims 16 and 21 is equally
applicable to both claims, we need not address to what extent, if at all,
dependent claim 21 further limits the scope of claim 16 under 3 5 U.S. C.
§ 112, paragraph 4.
6 Ambrose et al., WO 2009/120559 Al (published Oct. 1, 2009)
("Ambrose").
7 Faler et al., US 2003/0220446 Al (published Nov. 27, 2003) ("Faler").
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Application 13/780,628
independent claim 16 and dependent claim 21. Claims 2-20 and 22 fall with
claim 1.
DISCUSSION
This appeal challenges ( 1) the Examiner's rationale for combining
Ambrose with Faler, and (2) the Examiner's treatment of the "glass
transition temperature" (T g) limitations claims 16 and 21 recite. We address
these issues below.
Rationale for Combining Ambrose with Faler
Ambrose discloses "water-based coating compositions containing ...
polycarbodiimides and ... the use of such water-based coating compositions
to coat various substrates [including] leather, artificial leather and fibrous
substrates." Ambrose ,r 1. The Examiner finds that Ambrose teaches the use
of polymeric particles with carboxylic acid functionality prepared from a
mixture of ethylenically unsaturated compounds. Action 5 ( citing Ambrose
,r 55). Although acknowledging Ambrose does not teach that 2-30% of the
monomers are multi-ethylenically unsaturated, the Examiner finds that
Ambrose does not limit the degree in which the polymeric particles contain
carboxylic acid functionality. Id. at 6 ( citing Ambrose ,r 46). The Examiner
also finds that Faler teaches particles containing carboxylic acid
functionality, prepared from an amount of multi-ethylenically unsaturated
monomer within a range overlapping the range recited in claim 16.
Jd.(citing Faler ,r 158). The Examiner then determines that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Ambrose's composition by
utilizing Faler's polymeric particles for the generic resin con-
taining carboxylic acid functionality. One would have been
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Application 13/780,628
motivated to make this modification as Faler teaches that the in-
clusion of these types of particles can improve smoothness,
flow and leveling of coating films.
Id. (citing Faler ,r 144).
Appellant argues that the Examiner's rationale for combining
Ambrose with Faler "is unfounded and illogical." Appeal Br. 7. According
to Appellant, Ambrose teaches applying its compositions to leather, textiles,
and other porous substrates; however, "waterborne coatings applied thereto
would be readily absorbed, such that smoothness, flow and leveling of the
compositions would be unnecessary and unimportant." Id. In particular,
Appellant argues that the beneficial "flow" property, that Faler mentions,
refers to flow after application, which would be irrelevant to an absorbent,
porous substrate. Id. at 8. Consequently, Appellant argues that "[t]he
Examiner is suggesting to solve a problem in Ambrose et al. that does not
exist." Id.
This argument is not persuasive of reversible error. As the Examiner
points out in the Answer, Ambrose teaches depositing a layer of O .1-3 mils
(2.54--16.2 µm). Answer 4 (citing Ambrose ,r 77). This is not consistent
with Appellant's contention that the water-based composition is simply
absorbed into the material such that the smoothness, flow, and leveling
properties of the coating composition are irrelevant.
Appellant also argues that the "physical and industrial contexts" of
Ambrose and Faler are so different that "[ o ]ne skilled in the art would not
expect any given film-forming composition to have the same rheological
(flow) properties when being applied to the flexible, porous textile substrates
of Ambrose as when being applied to the rigid and nonporous automotive
substrates of Faler." Reply Br. 5. This is unpersuasive of reversible error,
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Application 13/780,628
because the Examiner's rejection does not rely on the theory that a person of
ordinary skill in the art would have expected flow properties to be the same
on a flexible substrate as they are on an automotive surface. Rather, the
Examiner simply determines that "one would have been motivated to utilize
Faler's particles in Ambrose's composition for improving leveling, flow and
smoothness of the resulting coatings." Answer 4--5.
Glass Transition Temperature Limitations
Claim 16 recites "wherein, upon curing to form a cured coating, the
cured coating formed from the aqueous thermosetting coating composition
demonstrates a glass transition temperature [T g] less than 25 °C." Appeal
Br. 12. Similarly, claim 21 recites "[t]he composition of claim 16 in which a
film of the polymeric particles has a Tg less than 25°C." Id. at 13.
The Examiner finds that the T g limitation is a result of processing
steps, and "is directed towards the properties of a product that is different
than the claimed composition. "8 Action 5. According to the Examiner, "the
claims are composition claims," and they are "limited and defined by the
components of the composition." Id. at 6. Because "Faler teaches
essentially identical polymeric particles ... , the Examiner contends that
inherently the polymeric particles would provide a film with the claimed
glass transition temperature." Id. 9
8 Appellant does not appear to dispute this. Moreover, in earlier prosecution,
Appellant amended the claim to clarify that "it is only after curing that the
composition demonstrates the recited properties." After-Final Amendment
Submitted Under 37 C.F.R. 1.116 at 7, Feb. 9, 2016.
9 The Examiner also finds that the T g limitation "will be a result of process
steps that are undefined as to how the composition is processed and cured."
Action 5. Thus, the Examiner determines that "the property holds no
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Application 13/780,628
Appellant acknowledges that "[g]lass transition temperature is an
inherent physical property of the material." Appeal Br. 9. Appellant further
states that the recited T g "is dictated and defined by the components of the
composition," and "[t]he monomers used in the composition of the present
invention are selected so that the cured coating demonstrates a glass
transition temperature less than 25 °C." Id. Nevertheless, Appellant argues
that "[t]here is no teaching or suggestion in either reference to do so." Id.
We do not find this argument persuasive of reversible error. An
inherent property, dictated and defined by an otherwise obvious composition,
does not itself impart patentability to the composition. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) ("The discovery of a new property or use of a
previously known composition, even when that property and use are
unobvious from the prior art, can not impart patentability to claims to the
known composition.").
The Examiner has shown, persuasively, that the combined teachings of
Ambrose and Faler teach a range of compositions that overlap that of the
recited aqueous dispersion. Thus, the Examiner has established a prima facie
case of obviousness, and is entitled to presume that the prior art composition
( after curing or forming a film) has the same inherent properties as the
claimed composition. See E.I. DuPont de Nemours & Co. v. Synvina C. V.,
904 F.3d 996 (Fed. Cir. 2018) ("[A]primafacie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
patentable weight in regards to examination of the coating composition."
Id.; see also Answer 5. Because we affirm based on the Examiner's
inherency rationale, we need not address whether or not the T g limitations of
claims 16 and 21 have patentable weight.
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Application 13/780,628
disclosed in the prior art." (quoting In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003))); In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where
... the claimed and prior art products are identical or substantially identical
... , the PTO can require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of his claimed
product.").
Appellant fails to direct our attention to any record evidence that
Ambrose's aqueous composition, in view of the modifications that Faler
teaches, would not inherently possess the recited T g property upon curing, or
upon its use in forming a film. Therefore, Appellant does not rebut the
Examiner's prima facie case of obviousness.
For the above reasons, the preponderance of the evidence supports the
Examiner's conclusion of obviousness, and Appellant has not shown
reversible error. We therefore affirm the rejection of claims 16-22.
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), 41.50(±)
(2016).
AFFIRMED
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