12053822 (P.T.A.B. Jul. 23, 2013)

Ex Parte Ziegler et al

Patent Trial and Appeal BoardJul 23, 2013

12053822 (P.T.A.B. Jul. 23, 2013)

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. 12/053,822 03/24/2008 Michael J. Ziegler 2065P1 5020 24959 7590 07/24/2013 PPG INDUSTRIES INC INTELLECTUAL PROPERTY DEPT ONE PPG PLACE PITTSBURGH, PA 15272 EXAMINER BUTTNER, DAVID J ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 07/24/2013 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 MICHAEL J. ZIEGLER and WILLIAM H. RETSCH, JR. ____________ Appeal 2012-001248 Application 12/053,822 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and DEBORAH KATZ, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 10, 13-18, and 20- 22. We have jurisdiction under 35 U.S.C. § 6(b). Claim 10 is illustrative: 10. A method of using a waterborne coating composition comprising applying the composition to a substrate, wherein: (a) the coating composition comprises an aqueous dispersion comprising: (i) a polycarbonate-polyurethane polymer, and (ii) an acrylic polyol having a number average molecular weight of no more than 4,000 with the proviso that the acrylic polyol does not comprise units derived from an alkoxysilane group-containing vinyl monomer; and Appeal 2012-001248 Application 12/053,822 2 (iii) a material having functional groups reactive with the functional groups of the acrylic polyol and/or the polycarbonate- polyurethane polymer; and (b) the substrate comprises plastic and/or wood. The Examiner relies upon the following reference in the rejection of the appealed claims: Ziegler et al. (Ziegler) US 2007/0059530 A1 Mar. 15, 2007 Appellants’ claimed invention is directed to a method of using a waterborne coating composition. The coating composition comprises an aqueous dispersion comprising, inter alia, an acrylic polyol with the proviso that the acrylic polyol does not comprise units derived from an alkoxysilane group-containing vinyl monomer. Appealed claims 10, 13-18, and 10-22 stand rejected under 35 U.S.C. §102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Ziegler. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in full agreement with the Examiner that the claimed subject matter is unpatentable over the cited prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. The present application is a continuation-in-part of the Ziegler patent, and the sole issue on appeal is whether or not Ziegler is prior art to the present application, i.e., are Appellants entitled to the filing date of the Ziegler patented application. We agree with the Examiner that Appellants are not so entitled inasmuch as Ziegler does not provide descriptive support Appeal 2012-001248 Application 12/053,822 3 for the claim limitation “the proviso that the acrylic polyol does not comprise units derived from an alkoxysilane group-containing vinyl monomer.” We do not subscribe to Appellants’ position that Ziegler would reasonably convey to one of ordinary skill in the art the concept that Appellants had in their possession, as of the filing date of Ziegler, the claimed subject matter which defines a subgenus of vinyl monomers which do not include an alkoxysilane group. It is well settled that each case stands on its own set of specific facts and, unlike the facts underlying In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977), cited by Appellants, the presently claimed invention is not excluding species of a genus that are positively recited in the Ziegler patent. The original Ziegler disclosure gives no indication that acrylic polyols comprising units derived from an alkoxysilane group-containing vinyl monomer are part of the invention which Appellants are now attempting to retreat from and exclude. In our view, the Examiner has properly concluded that Appellants are now claiming a subgenus which lacks descriptive support in the Ziegler disclosure. A negative claim limitation by implication opens the claim to the inclusion of species that do not have original descriptive support. Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983), aff’d mem., 738 F.2d 453 (Fed Cir. 1984). Manifestly, Ziegler’s broad disclosure of “vinyl monomers” would not provide original descriptive support for a myriad of later claimed specific vinyl monomers that are not disclosed in the original Specification. Appeal 2012-001248 Application 12/053,822 4 In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (iv). AFFIRMED cam