3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Jan 26, 2021

2020001990 (P.T.A.B. Jan. 26, 2021)

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.
15/586,074 05/03/2017 Feng Bai 62043US011 9698
32692 7590 01/26/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
01/26/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG BAI, RACHAEL A.T. GOULD, and
MARK T. ANDERSON
Appeal 2020-001990
Application 15/586,074
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents:
Specification filed May 3, 2017 (“Spec.”); Final Office Action mailed
January 18, 2019 (“Final Act.”); Appeal Brief filed September 16, 2019
(“Appeal Br.”); and Examiner’s Answer mailed October 15, 2019 (“Ans.”).
Appeal 2020-001990
Application 15/586,074

2
STATEMENT OF THE CASE2
Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the
Examiner’s decision to reject claims 1–2, 4, and 6–8. Appeal Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The Specification states the invention relates to a coated article having
a photocatalytic coating formed thereon. Spec. 1. Claim 1, reproduced
below, is illustrative of the claimed subject matter (Appeal Br., Claims
Appendix 11):
1. A coated article, comprising:
a roofing granule having an external surface and a coating
on the external surface of the article, wherein the coating is
formed from a composition comprising crystalline anatase TiO2
photocatalytic particles and an alkali metal silicate binder,
wherein the alkali metal silicate binder further comprises an
alkoxysilane, wherein the alkoxysilane comprises
tetraethoxysilane, and wherein the composition has a solid
weight percentage of crystalline anatase TiO2 of about 30% to
about 80% and a solid weight percentage of tetraethoxysilane of
more than about 10%.

2 Although not listed in the “Related Appeals and Interferences” section of
the Appeal Brief, the Examiner points out that the current Application is a
continuation of 12/519,850, now abandoned, in which the Board affirmed
the Examiner’s rejections, which were based on similar rejections of similar
claims as the subject of the present appeal. Ans. 11; Appeal Br. 2; Decision
on Appeal in 12/519,850 (Appeal No. 2015-000105) dated June 27, 2016.
3 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as 3M Company
(formerly known as Minnesota Mining Manufacturing Company) and its
affiliate 3M Innovative Properties Company. Appeal Br. 2.
Appeal 2020-001990
Application 15/586,074

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Jacobs US 6,569,520 B1 May 27, 2003
Anderson US 2005/0142329 A1 June 30, 2005
Ohwaki US 2006/0264525 A1 Nov. 23, 2006

REJECTIONS
1. Claims 1–2, 4, 6–8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobs and Ohwaki. Final Act. 2–5.
2. Claims 1–2, 4, 6–8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson, Ohwaki, and Jacobs. Final Act.
6–14.
OPINION
Rejection 1
Appellant does not present separate arguments with respect to the
claims subject to this rejection. See Appeal Br. 3–7. We select claim 1 as
representative for disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv)
(2019).

The Examiner’s Rejection
In rejecting claim 1 as unpatentable over Jacobs and Ohwaki, the
Examiner found Jacobs discloses roofing granules coated with a coating
composition including a silicate binder and a plurality of photocatalytic
particles, where the photocatalytic particles include nanocrystalline anatase
titanium oxide. Final Act. 2–3. The Examiner found Jacobs fails to disclose
Appeal 2020-001990
Application 15/586,074

4
that the alkali metal silicate binder further comprises tetraethoxysilane as
recited in claim 1. Id. at 3. The Examiner found Ohwaki discloses a
composition including a photocatalytic material, a titanium compound, and
an organosilane hydrolysate. Id. The Examiner found Ohwaki discloses the
organosilane includes tetraethoxysilane, which is added in amounts of
5 wt. % or above, preferably 10 wt. % or above, and more preferably
20 wt. % or above. Id. The Examiner found Ohwaki discloses that
including tetraethoxysilane in the photocatalytic composition imparts higher
durability properties, and prevents the coating film from becoming brittle or
chalking. Id. at 4. The Examiner also found that Ohwaki discloses
including photolytic particles in an amount of 25–80 wt. % provides
photocatalytic action and avoids chalking. Id.
The Examiner determined it would have been obvious to include
tetraethoxysilane in an amount greater than 10 wt. % and to include
photocatalytic particles in an amount of 25–80 wt. % as disclosed in Ohwaki
in the coating composition of Jacobs in order to provide higher durability
properties and to avoid forming a coating film that is brittle and suffers
chalking, while exerting photocatalytic action. Id.

Appellant’s Arguments
Appellant argues that although Ohwaki discloses tetraethoxysilane,
Ohwaki prefers trialkoxysilanes and dialkoxysilanes. Appeal Br. 4.
Appellant contends that there is little overlap in the main element materials
of Jacobs and Ohwaki, the processing temperatures of each reference only
overlap in a small range, and Jacobs’s coating is directed to a UV radiation
environment whereas Ohwaki’s coating is directed to a visible light
Appeal 2020-001990
Application 15/586,074

5
environment. Id. at 4–5. Appellant argues Ohwaki’s disclosure as to the
durability of silane-based binders is with respect to organic binders, and
because Jacobs already discloses its composition, including an alkali silicate
binder, is durable, one of ordinary skill in the art would have no reason to
add the silane-based binders of Ohwaki to Jacobs, particularly given the
differences between the compositions thereof. Id. at 5, 7. Appellant argues
the Examiner has not provided a sufficient reason to add tetraethoxysilane
disclosed in Ohwaki to Jacobs. Id. at 6. Appellant contends Ohwaki
discloses problems when using hydrolysable silanes as silane-based binders,
such that in the absence of the particular components of the photocatalytic
coating compositions disclosed therein, Ohwaki teaches away from using
silane-based binders with fine metal oxide photocatalysts. Id. at 7. In this
regard, Appellant contends a proposed modification cannot render the prior
art unsatisfactory for its intended purpose. Id. Appellant argues that
Ohwaki not only discloses that brittleness and chalking can be due to the
amount of silane compound being lower than the disclosed range for the
particular formulation, but also discloses chalkiness can occur if the
photocatalytic material is above the desired range. Id.

Issue
Did the Examiner err in determining that it would have been obvious
to have added tetraethoxysilane as disclosed in Ohwaki to the photocatalytic
composition of Jacobs?

Appeal 2020-001990
Application 15/586,074

6
Discussion
We are not persuaded by Appellant’s arguments. Initially, it is well
settled that prior art references are not limited to the preferred embodiments
disclosed therein. Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“[I]n a section 103 inquiry, ‛the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))).
Although Ohwaki discloses a preference for trialkoxysilanes and
dialkoxysilanes (Ohwaki ¶ 83), Ohwaki expressly discloses
tetraethoxysilane a suitable organosilane (Ohwaki ¶ 77) for use in the
composition. As a result, we are not persuaded by Appellant’s argument
that because Ohwaki exhibits a preference for trialkoxysilanes and
dialkoxysilanes, it would not have been obvious to use tetraethoxysilane as
determined by the Examiner.
Regarding Appellant’s arguments that one of ordinary skill in the art
would not have combined Jacobs and Ohwaki, as the Examiner points out,
both Jacobs and Ohwaki disclose photocatalytic coating compositions.
Ans. 11; Jacobs, col. 1, ll. 8–11; Ohwaki ¶ 1. Thus, although Appellant
argues the compositions of each of the references have materials that either
do not overlap, or that overlap in a small range, Appellant does not provide a
persuasive argument that such differences would have meant one of ordinary
skill in the art would not have combined Jacobs and Ohwaki as set forth by
the Examiner. In this regard, we are not persuaded by Appellant’s attempt to
distinguish the environments of Jacobs and Ohwaki. Appeal Br. 4. Jacobs
and Ohwaki are not limiting in this regard, rather, both tout the use of the
Appeal 2020-001990
Application 15/586,074

7
photocatalytic coating compositions disclosed therein in different
applications. Jacobs, col. 6, ll. 28–36; Ohwaki ¶¶ 167–174, 202.
In addition, we are not persuaded by Appellant’s argument that there
would not be a reason to add silane-based binders disclosed in Ohwaki to
Jacobs, because Ohwaki discloses higher durability of silane-based binders
in relation to organic binders, and Jacobs discloses that its coating is durable.
Jacobs discloses generally “[t]he resulting coated substrates of the present
invention exhibit a durable coating containing the photocatalytic particles.”
Jacobs, col. 5, ll. 49–51. Although it is true that Ohwaki discloses silane-
based binders provide higher durability compared to organic binders,
Ohwaki also discloses that if silane compound (c), which may be
tetraethoxysilane, is not present in sufficient amounts, the resulting coating
film becomes brittle and suffers chalking. Ohwaki ¶¶ 4, 78, 92. Thus, even
if we accept Appellant’s apparent argument that the silicate binders of
Jacobs impart a level of durability to the coating, it is within the level of one
of ordinary skill in the art to combine two known binder materials known to
be useful in coating materials containing photocatalytic materials with the
reasonable expectation of obtaining a coating material with the combined
benefits of each of the binders.
Appellant has not provided sufficient support for the position that
introducing a tetraethoxysilane such as disclosed in Ohwaki into the coating
of Jacobs would have an unknown effect that would prevent one of ordinary
skill in the art from making the combination. Indeed, Jacobs discloses the
addition of other components including aluminosilicates, pigments,
dispersants, as well as zinc oxides and borates. Jacobs, col. 3, l. 57 – col. 4,
l. 39. In view of these disclosures, Appellant has not set forth sufficient
Appeal 2020-001990
Application 15/586,074

8
support for the position that the photocatalytic coating compositions of
Jacobs would not accommodate the tetraethoxysilane of Ohwaki.
We are also not persuaded by Appellant’s arguments that Ohwaki
teaches away from the use of silane-based binders with fine metal oxide
photocatalysts in compositions other than those disclosed therein. That is, as
discussed above, Ohwaki specifically discloses the benefits of the silane-
based binders disclosed therein such that one of ordinary skill in the art
would have reasonably expected the benefits of using such binder would be
obtained in other similar compositions. In KSR, the Supreme Court
explained, “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421.
In addition, Ohwaki discloses the disadvantages associated with
hydrolyzable silane as silane-based binder material and fine metal oxide
particles arise because the hydrolyzable silane is polymerized in the
presence of the fine metal oxide particles (Ohwaki ¶¶ 6,7), whereas Jacobs
discloses the binder is first mixed with water prior to addition of the
photocatalytic particles (Jacobs, col. 4, ll. 40–50). Thus, Appellant has not
provided sufficient evidence that the photocatalytic particles would
aggregate as disclosed in Ohwaki as a result of the method disclosed in
Jacobs.
Last, Appellant’s argument that chalkiness can also occur if the
photocatalytic material is present in amounts above its desired range (Appeal
Appeal 2020-001990
Application 15/586,074

9
Br. 7 (citing Ohwaki ¶ 39)) is not persuasive, as this is part of the
Examiner’s rationale for including photocatalytic particles in the amounts
recited in claim 1. Final Act. 4.

Rejection 2
Discussion
In rejecting claims 1, 2, 4, and 6–8 as obvious over Anderson,
Ohwaki, and Jacobs, in addition to relying on Ohwaki and Jacobs, the
Examiner relied on Anderson for also disclosing roofing granules coated
with titanium dioxide and sodium silicate. Final Act. 6–9.
Appellant argues “Anderson is somewhat similar to Jacobs” and relies
on essentially the same arguments with respect to Jacobs and Ohwaki as set
forth for Rejection 1. Appeal Br. 8–10.
As such, we affirm the Examiner’s rejection for similar reasons as
discussed above for Rejection 1.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–2, 4, 6–8 103(a) Jacobs, Ohwaki 1–2, 4, 6–8
1–2, 4, 6–8 103(a) Anderson, Ohwaki,
Jacobs
1–2, 4, 6–8
Overall
Outcome
1–2, 4, 6–8

FINALITY AND RESPONSE
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