Ex Parte Swarup et alDownload PDFPatent Trials and Appeals BoardMar 25, 201913780628 - (D) (P.T.A.B. Mar. 25, 2019) Copy Citation 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 Appeal Br. 2. 3 The Examiner has withdrawn pending claims 1-15 from examination.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. 2 Appeal2017-006244 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"). 3 Appeal2017-006244 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 4 Appeal2017-006244 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, 5 Appeal2017-006244 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 6 Appeal2017-006244 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. 7 Appeal2017-006244 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 8 Copy with citationCopy as parenthetical citation