PPG Industries Ohio, Inc.Download PDFPatent Trials and Appeals BoardMay 26, 202015100181 - (D) (P.T.A.B. May. 26, 2020) 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. 15/100,181 05/27/2016 Kam L. Lock 13009134EPA1/US 3901 24959 7590 05/26/2020 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER FITZHUGH, JULIUS ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 05/26/2020 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): ipdocket@ppg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte KAM L. LOCK and RICHARD WOODS _______________ Appeal 2019-004515 Application 15/100,181 Technology Center 1700 _______________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–10 and 12–19 of Application 15/100,181. Final Act. 1; Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 In our Decision, we refer to Specification filed May 27, 2016 (“Spec.”) of Application 15/100,181 (“the ’181 Application”); the Final Office Action dated May 1, 2018 (“Final Act.”); the Appeal Brief filed October 4, 2018 (“Appeal Br.”); the Examiner’s Answer dated March 18, 2019 (“Ans.”); and the Reply Brief filed May 17, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies PPG Industries Ohio, Inc. as the real party in interest. Appeal Br. 1. Appeal 2019-004515 Application 15/100,181 2 BACKGROUND The ’181 Application relates to coating compositions for use in food and/or beverage containers. Spec. 1:4–5. Epoxy resins conventionally used for these purposes contain bisphenol A (BPA) and/or derivatives thereof, which are perceived as harmful to human health. Spec. 1:13–17. Polyester resins, which do not contain BPA, are produced by the polycondensation reaction of polyols and polyacids. Id. at 1:21–22. Polyester resins having a desirable high glass transition temperature (Tg) have been synthesized from cyclic, polycyclic, and aromatic polyols, but many of these polyesters are not food compact compliant. Spec. 1:23–26. The Specification describes polyester resins synthesized from aliphatic polyols, such as polyethylene terephthalate (PET), for coating food and/or beverage containers. Spec. 1:26–28. Claim 1 is representative of the ’181 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A coating composition for a food and/or beverage container comprising a polyester material, wherein the polyester material comprises the reaction product of; (a) 1,2-propanediol, (b) terephthalic acid, and (c) a molecular weight increasing agent, wherein the polyester material has a number-average molecular weight (Mn) of at least 6,100 Da and a glass transition temperature (Tg) of at least 80 °C; wherein the molecular weight increasing agent (c) comprises a polyacid, a polyol or a combination thereof; wherein the polyacid comprises a diacid of general formula (I) Appeal 2019-004515 Application 15/100,181 3 formula (I) wherein each R independently represents hydrogen or an alkyl, alkenyl, alkynyl, or aryl group; n = 0 or 1; wherein X represents a bridging group selected from: an alkylene group; an alkenylene group; an alkynylene group; an arylene group; wherein the bridge between the –COOR groups is C1 or C2; and wherein the hydroxyl groups of the polyol are connected by a C1 to C3 alkylene group. Appeal Br. 8 (Claims App.) (emphases added). REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Weaver et al. (“Weaver”) US 4,749,774 June 7, 1988 Imaizumi et al. (“Imaizumi”) US 5,530,058 June 25, 1996 Mayr et al. (“Mayr”) US 2007/0054140 A1 Mar. 8, 2007 REJECTIONS On appeal, the Examiner maintains the following rejections under 35 U.S.C. § 103:3 1. Claims 1–3, 6–10, and 12–19 over Mayr (Final Act. 3–5); 2. Claim 4 over Mayr in view of Weaver (id. at 5–6); and 3. Claim 5 over Mayr in view of Weaver and Imaizumi (id. at 6–8). 3 Because this application was filed after the March 16, 2013, effective date of the America Invents Act, we refer to the AIA version of the statute. Appeal 2019-004515 Application 15/100,181 4 DISCUSSION Ground 1: Rejection of claims 1–3, 6–10, and 12–19 as obvious over Mayr The Examiner determines that claims 1–3, 6–10, and 12–19 would have been obvious over Mayr. Final Act. 3–5. Appellant argues the claims as a group based on limitations recited in claim 1. Appeal Br. 3–5. We select claim 1 as representative. Claims 2, 3, 6–10 and 12–19 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s argument for patentability of claim 1 asserts that Mayr would have failed to teach or motivate one of ordinary skill in the art to select the particular combination of monomer reactants. Appeal Br. 4. Appellant contends that, although Mayr discloses the claimed 1,2- propanediol, terephthalic acid, and “monomers that fall within the definition of a molecular weight increasing agent . . . , these are among a long list of possible polyacids and poylols [sic, polyols].” Id. That a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)); see also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant’s Appeal 2019-004515 Application 15/100,181 5 generic claims and [was] of a class of chemicals to be used for the same purpose as appellant’s additives”). In this case, Mayr discloses a polyester resin composition that functions as a protective coating for a food and beverage container. Mayr ¶¶ 1, 2. Each of the polyester material reactants of claim 1—1,2-propanediol, terephthalic acid, and a molecular weight increasing agent, i.e., trimethylolpropane—are disclosed or suggested in Mayr as monomers useful for forming the polymer composition. Id. ¶¶ 34, 41, 44, 46–47. Appellant contends that Mayr does not disclose that the resin reaction product of the claimed reactants would have resulted in a “polyester ha[ving] a number-average molecular weight (Mn) of at least 6,100 Da and a glass transition temperature (Tg) of at least 80°C.” Appeal Br. 4. “A prima facie case of obviousness typically exists when the ranges of the claimed composition overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (0.020–0.035% carbon) overlapped the claimed range (0.030–0.070% carbon)). Here, the Examiner finds that Mayr’s polyester exhibits a number average (Mn) of from about 1,000–7,500 Da and a glass transition temperature (Tg) of about 60 to less than about 100°C, which overlaps, and thus renders obvious, the (Mn) and (Tg) ranges recited in claim 1. Final Act. 3 (citing Mayr ¶ 39). Appellant has not shown that the claimed ranges are critical and thus does not overcome the obviousness of the claimed ranges. See In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997) (“When an applicant seeks to overcome a prima facie case of obviousness by showing Appeal 2019-004515 Application 15/100,181 6 improved performance in a range that is within or overlaps with a range disclosed in the prior art, the applicant must ‘show that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’” (quoting In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)) (alteration in original)). Appellant contends that Mayr does not disclose any specific monomers that are useful for increasing a polyester’s molecular weight. Appeal Br. 4. Appellant argues that Mayr fails to disclose a polyol molecular weight increasing agent having “a C1–C3 alkylene group between hydroxyl groups” or the requisite diacid. Id. at 5. We do not find Appellant’s arguments persuasive to show reversible error. As the Examiner finds, trimethylolpropane would have been capable of functioning as a “molecular increasing agent” because Mayr teaches that trimethylolpropane, along with 1,2-propanediol and terephthalic acid, are suitable for forming a polyester resin. See, e.g., Final Act. 3 (citing Mayr ¶¶ 46, 47); Ans. 10 (citing Mayr ¶¶ 41, 44, 47). Instant claim 3, furthermore, limits the polyol of claim 1 to comprise trimethylolpropane, glycerol, or a combination thereof. Appeal Br. 9 (Claims App.); see also 35 U.S.C. § 112(d) (requiring that “[a] claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers”). Therefore, the Examiner’s finding is reasonable that Mayr’s polyester resin incorporating trimethylolpropane would have possessed the C1 to C3 alkylene group between the polyol’s hydroxyl groups. Ans. 10; see In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical . . . the PTO can Appeal 2019-004515 Application 15/100,181 7 require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Claim 1, moreover, recites that “the molecular weight increasing agent (c) comprises a polyacid, a polyol or a combination thereof; wherein the polyacid comprises a diacid.” Appeal Br. 8 (Claims App.) (emphasis added). As Mayr’s trimethylolpropane is a polyol, we agree with the Examiner that a diacid is not required to meet the limitations. Ans. 11. Appellant’s Reply Brief contains new arguments (i.e., Appellant has described the unexpected results achieved by the claimed range of number- average molecular weight (Mn) and glass transition temperature (Tg) (Reply Br. 3)) which could have been, but were not presented in the Appeal Brief. Under regulations governing appeals to the Board, a new argument not timely presented in the Appeal 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 Appeal Brief. See 37 C.F.R. § 41.41(b)(2); see also Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the Reply Brief is considered waived); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”); 37 C.F.R. § 41.37. Because the record contains no such showing, we will not consider the new argument in the Reply Brief. For the reasons set forth supra, the Examiner’s observation in the Answer that “no evidence [of unexpected results] has been provided” was not an invitation to submit such evidence thereafter. Ans. 12. Appeal 2019-004515 Application 15/100,181 8 We sustain the rejection of claim 1 as obvious over Mayr. For the same reasons, we sustain the rejection of claims 2, 3, 6–10 and 12–19. Ground 2: Rejection of claim 4 as obvious over Mayr in view of Weaver The Examiner determines that claim 4 would have been obvious over Mayr in view of Weaver. Final Act. 5–6. The Examiner finds that Mayr does not teach that the molar ratio of polyester reactants (a):(b) ranges from 5:1 to 1:5. Id. at 6. The Examiner finds that Weaver’s “polyester is formulated from 50 mol.% of terephthalic acid . . . and 50 mol.% of ethylene glycol (i.e., 1,2- propanediol),” which is overlapped by the ratio recited in claim 4. Id. (citing Weaver 8:8–15). The Examiner finds that Weaver’s “polyester exhibits excellent clarity and good moisture and gas barrier properties.” Final Act. 6 (citing Weaver 9:42–46). The Examiner determines, inter alia, that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Mayr’s polyester by using Weaver’s molar percentages of terephthalic acid and ethylene glycol in order to make a polyester exhibiting excellent clarity, good moisture, and gas barrier properties. Final Act. 6. Appellant argues that the Examiner’s proposed combination with Mayr is improper because Weaver’s ethylene glycol (C2H6O2) is not the same as the claimed 1,2-propanediol (C3H8O2). Appeal Br. 6. In response, the Examiner argues Mayr discloses that ethylene glycol (1,2-ethanediol) and propylene glycol (1,2-propanediol) are diols. Ans. 11 (citing Mayr ¶ 47). The Examiner finds that Weaver discloses polyesters made from one or more diols and one or more dicarboxylic acids . . . . A preferred polyester of Weaver comprises 50 mol.% of terephthalic acid and 50 mol.% ethylene Appeal 2019-004515 Application 15/100,181 9 glycol . . . , As such, it would have been obvious to one of ordinary skill in the art to use the molar ratio taught in Weaver to form a polyester using 50 mol.% of terephthalic acid and 50 mol.% of a diol as noted in the rejection. Ans. 11 (citing Weaver 8:3–16; 8:57–65). For purposes of § 103, a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). The question under 35 U.S.C. § 103 is not merely what the references teach, but what they would have suggested to one of ordinary skill in the art at the time the invention was made. All disclosures of the prior art must be considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Although “the molar ratio of [polyester reactants] (a) [1,2- propanediol]:(b) [terephthalic acid],” as recited in claim 4, is not explicitly disclosed in either Mayr or Weaver, the prior art would have suggested the requisite molar ratio of these specific reactants. Appeal Br. 9 (Claims App.). Weaver explicitly teaches that a polyester may be prepared from terephthalic acid with dihydric alcohols, preferably “one or more of a mixture of propylene glycol” or “ethylene glycol.” Weaver 8:57–64 (emphasis added). As the Examiner reasons persuasively, Weaver provides a molar ratio of a diol and a carboxylic acid. Ans. 12. One of ordinary skill in the art at the time of the invention would have found it obvious that diols, such as propylene glycol or ethylene glycol, “can be used for forming a polyester composition” in order to “form a polyester exhibiting good thin-wall rigidity and excellent clarity.” Id. Appeal 2019-004515 Application 15/100,181 10 Therefore, Weaver’s recognition of suitable diols in recommended molar ratios with a suitable dicarboxylic acid would have suggested the disputed limitation recited in claim 4. Comparing Weaver’s disclosure with claim 4, we find that the claim encompasses the prior art. Appellant, furthermore, has not demonstrated any unexpected result from adjusting the claimed molar ratio. See Appeal Br. 5–6. We sustain the rejection of claim 4 as obvious over Mayr in view of Weaver. Ground 3: Rejection of claim 5 as obvious over Mayr in view of Weaver and Imaizumi The Examiner determines that claim 5 would have been obvious over Mayr in view of Weaver and Imaizumi. Final Act. 6–8. Appellant argues that “Imaizumi, like Weaver, teaches compositions for molding or making sheets from which packaging materials may be fabricated, and not polyester coatings for application to other packaging material.” Appeal Br. 6. Appellant concludes that one of ordinary skill in the art would not have been motivated to combine Mayr, Weaver, and Imaizumi as proposed by the Examiner. Id. “The analogous art inquiry is a factual one, requiring inquiry into the similarities of the problems and the closeness of the subject matter as viewed by a person of ordinary skill.” Scientific Plastic Products, Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). For the Examiner to rely upon a reference as a basis for an obviousness rejection of Appellant’s claims, the reference must either: (1) be in the field of the inventor’s endeavor; or (2) be reasonably pertinent to Appeal 2019-004515 Application 15/100,181 11 the particular problem with which the inventor was concerned. In re Kahn, 441 F.3d 977, 986‒87 (Fed. Cir. 2006). Mayr teaches a polyester protective coating composition for coating substrates useful in the field of packaging containers. Mayr ¶¶ 1, 2. Weaver discloses polymers, such as polyesters, suitable in the field of packaging beverages and foods. Weaver 1:13–19; 8:3–9. Imaizumi discloses polyester compositions for making sheets useful in the field of food container sheets, packaging sheets, etc. Imaizumi 1:9–18; 1:50–53; 3:63–65. The ’181 Application relates to coating compositions for use in food and/or beverage containers. Spec. 1:4–5. Therefore, the Examiner’s relied upon references, of Mayr, Weaver, and Imaizumi each pertain to analogous art within the field of Appellant’s endeavor. See also Ans. 13. We sustain the rejection of claim 5 as obvious over Mayr in view of Weaver and Imaizumi. Appeal 2019-004515 Application 15/100,181 12 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6–10, 12–19 103 Mayr 1–3, 6–10, 12–19 4 103 Mayr, Weaver 4 5 103 Mayr, Weaver, Imaizumi 5 Overall Outcome 1–10, 12–19 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 Copy with citationCopy as parenthetical citation