2019006794 (P.T.A.B. Sep. 29, 2020)

BASF Coatings GmbH

Patent Trials and Appeals BoardSep 29, 2020

2019006794 (P.T.A.B. Sep. 29, 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. 15/277,095 09/27/2016 Karl-Heinz Grosse Brinkhaus BCM0054CT PAT0001457US02 9508 48394 7590 09/29/2020 SERVILLA WHITNEY LLC 33 WOOD AVE SOUTH SUITE 830 ISELIN, NJ 08830 EXAMINER MAYEKAR, KISHOR ART UNIT PAPER NUMBER 1795 NOTIFICATION DATE DELIVERY MODE 09/29/2020 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): docket@dsiplaw.com hservilla@dsiplaw.com lmurphy@dsiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARL-HEINZ GROSSE BRINHAUS, MARGRET NEUMANN, OLIVER JOHANNPOETTER, and PETER LUX Appeal 2019-006794 Application 15/277,095 Technology Center 1700 Before TERRY J. OWENS, JEFFREY R. SNAY, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8, 10, 11, 13, 14, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as BASF Coatings GmbH. Appeal Br. 3. Appeal 2019-006794 Application 15/277,095 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to “cathodically depositable electrocoat materials comprising bismuth compounds.” Spec. 1:11–14. Appellant describes one object of the invention as discovery of electrocoat materials comprising bismuth compounds with baking temperatures that are as low as possible. Id. at 2:29–32. Independent claims 1 and 11 are the independent claims on appeal. Claim 1 is illustrative, and we reproduce it below with emphasis added to certain key recitations: 1. A cathodically depositable electrocoat material produced by a process comprising mixing and homogenizing: at least one binder, at least one crosslinking agent, and a bismuth nitrate crosslinking catalyst consisting of a water-insoluble basic bismuth nitrate, wherein the water-insoluble basic bismuth nitrate is the only metal nitrate and the only crosslinking catalyst in the cathodically depositable electrocoat material and the cathodically depositable electrocoat material has a same or similar degree of crosslinking as an electrocoat material which contains a bismuth subsalicylate crosslinking catalyst at a baking temperature which is at least 5-10° lower than the electrocoat material which contains the bismuth subsalicylate crosslinking catalyst. Appeal Br. 16 (Claims App.) (emphasis added). Claim 11 similarly recites a water-insoluable basic bismuth nitrate “wherein the water-insoluble basic 2 In this Decision, we refer to the Final Office Action dated February 5, 2019 (“Final Act.”), the Appeal Brief filed July 2, 2019 (“Appeal Br.”), the Examiner’s Answer dated August 19, 2019 (“Ans.”), and the Reply Brief filed September 18, 2019 (“Reply Br.”). Appeal 2019-006794 Application 15/277,095 3 bismuth nitrate is the only metal nitrate and the only crosslinking catalyst in the cathodically depositable electrocoat material.” Id. at 17. REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Lehmann et al. (“Lehmann”) US 7,211,182 B2 May 1, 2007 Kojima et al. (“Kojima”) US 2007/0089996 A1 Apr. 26, 2007 REJECTIONS The Examiner maintains the following rejections on appeal: A. Claims 1–8 and 10 under 35 U.S.C. § 102(b) as anticipated by or, alternatively, under 35 U.S.C. § 103(a) as obvious over Lehmann. Ans. 3. B. Claims 11, 13, 14, and 16 under 35 U.S.C. § 103(a) as obvious over Lehmann in view of Kojima. Id. at 5. OPINION To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. The Examiner rejects claim 1 as either anticipated by Lehmann or obvious over Lehmann. Ans. 3. The Examiner rejects claim 11 as obvious over Lehmann in view of Kojima. For both rejections, the Examiner relies on Lehmann as teaching use of the claims’ recited “water insoluble” metal nitrate as the only metal nitrate. Ans. 3, 5 (citing Lehmann). Appeal 2019-006794 Application 15/277,095 4 Appellant argues that Lehmann, read as a whole, teaches use of at least one water-soluble metal nitrate (in contrast to Appellant’s claims which require use of only water-insoluble metal nitrate in the electrocoat material). Appeal Br. 10–11. The preponderance of the evidence supports the Appellant’s position. The Lehmann patent emphasizes use of at least one water-soluble metal nitrate including, for example, in its abstract and in its only independent claim. Lehmann Abstract (“the CED coating composition used contains at least one water-soluble metal nitrate”), 2:24–40 (summary of invention states composition “contains at least one water-soluble metal nitrate”), 3:55–56 (“[t]he metal nitrates are selected from among the water- soluble nitrates”), 7:25–9:37 (no example makes use of water-insoluble Bi5O(OH)9(NO3)4), 9:39–10:13 (claim 1 recites “wherein the CED coating composition used contains at least one water-soluble metal nitrate”). Lehmann explains advantages of water-soluble metal nitrates. Id. at 2:14–20 (identifying “simpler handling” as an advantage). Lehmann teaches adding metal nitrate “in the form of an aqueous solution” to an aqueous phase. Id. at 5:51–62. To support that Lehmann teaches water-insoluble nitrate, the Examiner emphasizes Lehmann’s identification of basic Bi5O(OH)9(NO3)4 as an available metal nitrate. Ans. 6–7. The Examiner finds that Bi5O9OH)9(NO3)4 is water-insoluble, and Appellant does not dispute the water-insolubility of this particular metal nitrate. The paragraph of Lehmann that identifies Bi5O(OH)9(NO3)4 states in full: The metal nitrates are selected from among the water- soluble nitrates of metals from the group consisting of metals of atomic numbers 20 to 83, wherein chromium, arsenic, rubidium, Appeal 2019-006794 Application 15/277,095 5 ruthenium, rhodium, palladium, cadmium, antimony, caesium, osmium, iridium, platinum, mercury, thallium and lead are excepted. The term “metal nitrate” used in the present description and in the claims should not be understood exclusively to denote a simple metal nitrate salt comprising metal cations and nitrate anions, but also includes compounds such as, for example, metal oxynitrates or nitrate compounds with counter-cations containing the relevant metal. Preferred nitrates are those of titanium, vanadium, iron, zinc, yttrium, zirconium, tin, cerium, neodymium or bismuth, in particular of yttrium, neodymium or bismuth, especially of bismuth. Examples of bismuth nitrates are Bi(NO3)3 and Bi5O(OH)9(NO3)4. Lehmann 3:55–4:3 (emphases added). Although the last sentence of this paragraph supports the Examiner’s position, this statement is outweighed by the remainder of Lehmann (including, for example, the first sentence of the paragraph). Because Lehmann, as a whole, so strongly emphasizes use of a water-soluble nitrate, we agree with Appellant that a person of skill in the art would not have understood the last sentence of this paragraph as teaching or suggesting use of water-insoluble Bi5O(OH)9(NO3)4 as a sole metal nitrate in the Lehmann composition. See, e.g., Reply Br. 2–3. The Examiner’s treatment of dependent claims and use of the Kojima reference does not cure the error identified above. We, therefore, do not sustain the Examiner’s rejections. Appeal 2019-006794 Application 15/277,095 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 10 102(b) or 103(a) Lehmann 1–8, 10 11, 13, 14, 16 103(a) Lehmann, Kojima 11, 13, 14, 16 Overall Outcome 1–8, 10, 11, 13, 14, 16 REVERSED