BASF Coatings GmbH

Patent Trials and Appeals Board

Jun 23, 2020

14420067 - (D) (P.T.A.B. Jun. 23, 2020)

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.
14/420,067 02/06/2015 Bernhard Steinmetz 514550US 2557
22850 7590 06/23/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
TSCHEN, FRANCISCO W
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERNHARD STEINMETZ, MATTHIAS SCHAD, and
PEGGY JANKOWSKI
____________

Appeal 2019-005524
Application 14/420,067
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1–5, 16, and 18–21.1 A hearing was
held on May 13, 2020, a transcript of which will be made of record in due
course. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies BASF COATINGS GMBH as the real party in
interest. Appeal Br. 1.
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BACKGROUND
The invention relates to a method for producing a multicoat paint
system. Spec. 1. According to the Specification, use of a specified ether
component reduces occurrence of pinholes in the multicoat system. Id.
Claim 1 reads as follows:
Claim 1: A method for producing a multicoat color
and/or effect paint system, the method comprising:
(1) applying a pigmented aqueous basecoat material to a
substrate,
(2) forming a polymer film from the basecoat material
applied in stage (1),
(3) applying a clearcoat material to the resulting polymer
film, and subsequently
(4) curing the polymer film together with the clearcoat
film,
wherein, in stage (1), a pigmented aqueous basecoat
material is used which comprises at least one ether compound
of the structural formula (I)

wherein R1 is a Cx alkyl radical, R2 is a Cy alkylene radical and
R3 is a Cz alkyl radical, n is 0 to 5, wherein x + n · y + z = 18 to
24, and the sum total of the weight percentage fractions, based
on the total weight of the aqueous basecoat material applied in
stage (1), of all of the ether compounds of structural formula (I)
is 0.1 % to 5% by weight, and the basecoat material forms a
polymer film having an increased pinholing limit and/or a
reduced number of pinholes.

Appeal Br. 47 (Claims Appendix).
Claim 20 essentially is the same as claim 1 except that n in formula (I)
is zero. Each remaining claim on appeal depends from claim 1 or 20.
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REJECTIONS
I. Claims 1–5, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baugh,2 VammarD10,3 Brenke,4 and Hoy.5
II. Claims 18, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sapper,6 Brenke, and VammarD10.
III. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sapper, Brenke, VammarD10, Lamers,7 and Fieberg.8

OPINION
Rejection I: obviousness over Baugh and VammarD10
With regard to the Examiner’s Rejection I, Appellant separately
argues claims 1, 5, and 20. See Appeal Br. 6–24, 43–45. Claims 2–4 and 16
stand or fall with claim 1. Separately argued claims are separately addressed
below.
Claim 1
With regard to claim 1 and relevant to Appellant’s arguments on
appeal, the Examiner finds Baugh discloses a multicoat paint system having
a pigmented basecoat composition that includes an ether co-solvent. Final
Act. 2. The Examiner also finds that VammarD10 was known at the time of

2 US 2003/0060560 A1, published March 27, 2003.
3 ExxonMobil Chemical, ExxonMobil Supported Uses – Use Mapping for
Vammar TM D10, dated October 2009.
4 US 5,993,911, issued November 30, 1999.
5 US 4,677,168, issued June 30, 1987.
6 US 2006/0014857 A1, published January 19, 2006.
7 US 2008/0070040 A1, published March 20, 2008.
8 WO 2011/075718 A1, published June 23, 2011.
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the invention for use as an ether co-solvent in paint coatings. Id. at 3. The
Examiner determines one of ordinary skill in the art would have had a reason
to use VammarD10 as a known ether co-solvent in Baugh’s basecoat. Id.
The Examiner finds Brenke teaches a compositional range of 1–20 wt.% for
an ether co-solvent in coatings to reduce pinholing. Id.
Appellant argues that Brenke provides polyalkylene glycol dialkyl
ethers having 3 to 10 units, and for that reason does not teach or suggest
adding an ether co-solvent having less than 3 ethylene oxide and/or
propylene oxide units as recited in Appellant’s claims 5 and 18 to 21.
Appeal Br. 8. Appellant’s argument is not persuasive. Claim 1 does not
require use of an ether co-solvent having less than 3 units. See claim 1 (“n is
0 to 5”). Appellant acknowledges that Brenke would have provided a reason
to use an ether co-solvent within the recited formula (I) with n being at least
3. Id. at 12 (“Brenke reasonably would have taught one skilled in the art to
add 1 to 20 wt.% of a dialkyl ether of formula (I) . . . wherein n is at least
3.”). Moreover, there is no dispute that the material identified as
VammarD10 meets the structural definition of formula (I) in claim 1. See
Spec. 17 (identifying Vammar D10 as an “Inventive ether compound”);
Decl. 2 (stating that the ether compound identified in the Specification
“include[s] all the required components and meet[s] all the required
properties of Claims 1 and 20”).
Appellant also argues that “Brenke does not appear to provide a single
example of a basecoat composition comprising 1 to 20 wt.% of a
polyalkylene glycol dialkyl ether of formula (I).” Appeal Br. 9. However,
Appellant does not present persuasive evidence or explanation as to why
Brenke’s lack of an anticipatory example negates the collective teachings of
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the prior art relied upon in support of the Examiner’s obviousness
determination.
Appellant contends that experimental data presented in the
Specification and in the Steinmetz Declaration shows that including 1.5 parts
by weight of VammarD10 in a basecoat composition yields unexpected
reduction of pinholing, bubbles, swelling, and steam jet deterioration. Id. at
10–13.
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellant. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied-
upon results must be commensurate in scope with the claims. See In re
Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one
(or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of [the CCPA] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is
well settled that unexpected results must be established by factual evidence.
‘Mere argument or conclusory statements in the specification does not
suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting
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In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
Here, Appellant relies on Table 2 of the Specification, which reports a
decreased formation of pinholes in a single sample containing 1.5 wt.%
VammarD10 relative to a sample containing no ether component. Appeal
Br. 12–13; Spec. 18. See also Reply Br. 8–10. Appellant also points to the
Steinmetz Declaration, which compares bubble, swelling, and steam jet
assessment properties for three samples having VammarD10 at 0 wt.%, 1.5
wt.% and 6 wt.%, respectively. Appeal Br. 12–13; Decl. 5. Thus,
Appellant’s evidence concerns three compositional data points with regard
to ether concentration, only one of which is within the range recited in claim
1.
The Examiner finds Appellant’s evidence not commensurate in scope
with the claims and insufficient to demonstrate that the reported results
would have been unexpected. Ans. 5. We agree. Claim 1 encompasses any
pigmented curable aqueous basecoat material, any curable clearcoat
material, and a range of materials encompassed by formula (I). Appellant’s
showing presents data concerning only a single composition, at different
VammarD10 concentrations. Appellant does not point us to persuasive
evidence to show that any results reported in the Specification or the
Declaration would reasonably have been expected to be representative of
other basecoat materials, clearcoat materials, and ethers within formula (I).
Likewise, Appellant does not point us to persuasive evidence to show that a
single ether concentration within the claimed range would reasonably have
been expected to be representative of the entire range. Nor does Appellant
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point us to persuasive evidence that any of the reported results purportedly
attributable to VammarD10 concentration would have been unexpected. To
the contrary, Appellant acknowledges that “Brenke teaches that the addition
of 1 to 20 wt.% of a polyalkylene glycol dialkyl ether improves pinholing
resistance.” Appeal Br. 11. Appellant’s reported properties of swelling,
bubble formation and steam jet assessment are not discussed in the
Specification. Moreover, Appellant’s data for these properties appear to
show no swelling, no bubbles, and no deterioration under steam jet
assessment for sample I1 which included VammarD10 at a concentration
within the range recited in claim 1 and sample I1 which did not include
VammarD10. See Decl. 5, 6.
Having considered the totality of the evidence presented, including
Appellant’s argument and data relied upon to show unexpected results, we
are not persuaded of reversible error in the Examiner’s obviousness
determination.
Rejection I as applied to claim 1 is sustained.

Claims 5 and 20
Claims 5 recites that n in formula (I) is 0 to 2, and claim 20 recites
that n is 0. Appellant contends that Brenke discloses ether co-solvents
corresponding to fomula (I) where n is 3 to 10. Appeal Br. 43 (“In Brenke’s
polyalkylene glycol dialkyl ether co-solvents corresponding to formula (I) of
claim 1, n is 3 to 10.”). See also Reply Br. 5–7. However, the Examiner
relies on VammarD10 as evidence of a known ether co-solvent suitable for
use in Baugh. Final Act. 3 (determining “it would have been obvious for
someone of ordinary skill in the art to look at suitable ether co-solvents such
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as VammarTM D10 and use it in the composition of Baugh because it is
known as suitable for paint compositions”). Appellant does not dispute that
VammarD10 satisfies formula (I) as is recited in either claim 5 or 20.
For the foregoing reasons, Rejection I as applied to each of claims 5
and 20 also is sustained.

Rejection II: obviousness of claims 18, 20, and 21
With regard to the Examiner’s rejection of claims 18, 20, and 21 over
Sapper, Brenke, and VammarD10, Appellant presents the same arguments as
are presented in connection with Rejection I. See Appeal Br. 13–14.
Accordingly, we sustain Rejection II for the reasons given above in
connection with Rejection I.

Rejection III: obviousness of claim 19
Claim 19 requires that the recited basecoat includes a polyester and
polyurethane (meth) acrylate having specified molecular weight. Appellant
argues the Examiner applied impermissible hindsight in picking and
choosing these materials from those listed in the prior art. Appeal Br. 42–
43. The Examiner finds Lamers teaches that the recited polystyrene
polymers “provide for good physical properties such as adhesion, solvent
resistance and appearance.” Final Act. 7. The Examiner additionally finds
Fieberg teaches that the recited polyurethane (meth) acrylate produces
coating compositions having long term stability. Id. Appellant does not
challenge these findings. The Examiner’s identification of a reason to
provide the selected materials is contrary to Appellant’s allegation of
impermissible hindsight.
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Rejection III also is sustained.

CONCLUSION
The Examiner’s decision rejecting claims 1–5, 16, and 18–21 is
affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 16, 20 103(a) Baugh,
VammarD10,
Brenke, Hoy
1–5, 16,
20

18, 20, 21 103(a) Sapper, Brenke,
VammarD10
18, 20, 21
19 103(a) Sapper, Brenke,
VammarD10,
Lamers, Fieberg
19
Overall
outcome
1–5, 16,
18–21

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