Didier Labouche et al.

Patent Trials and Appeals Board

Jan 30, 2020

14273567 - (D) (P.T.A.B. Jan. 30, 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.
14/273,567 05/09/2014 Didier Labouche 12008605A1 7311
24959 7590 01/30/2020
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
FUNG, CHING-YIU
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
01/30/2020 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 DIDIER LABOUCHE, MARIE-NOELLE MAILLET, and
SIAMANTO ABRAMI

Appeal 2019-002483
Application 14/273,567
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL G. MCMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 1, 2, 5–15, 17–19, and 22–25.2 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—namely, “PRC-DeSoto International, Inc.” (Application
Data Sheet filed May 9, 2014 at 5). The Appellant identifies “PPG
Industries Ohio, Inc.” as the real party in interest (Appeal Brief filed October
9, 2018 (“Appeal Br.”) at 1).
2 See Appeal Br. 1–7; Reply Brief filed January 23, 2019 (“Reply Br.”) at
1–2; Non-Final Office Action entered July 11, 2018 (“Non-Final Act.”) at 5–
18; Examiner’s Answer entered December 3, 2018 (“Ans.”) at 4–24.
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I. BACKGROUND
The subject matter on appeal relates to: (i) a coating composition
comprising an epoxy-functional resin, a corrosion-resisting particle, and a
crosslinker having a first functionality that crosslinks with the epoxy
functionality and a second functionality that self-crosslinks; (ii) a method of
coating a substrate; and (iii) a coated substrate (Specification filed May 9,
2014 (“Spec.”) ¶¶ 1, 43, 48; Appeal Br. 8–9). The Specification describes
that, in certain embodiments, MgO (magnesium oxide) may be included in
the coating composition as corrosion-resisting particles (Spec. ¶¶ 9–11, 17).
The Specification describes other embodiments that include amino acid in
the coating composition to improve the coating’s corrosion resistance (id.
¶ 22).
Representative claims 1 and 6 are reproduced from the Claims
Appendix to the Appeal Brief, as follows:
1. A solvent-borne coating composition comprising:
(a) a first component comprising:
(i) an epoxy functional resin; and
(ii) a corrosion resisting particle comprises
MgO; and
(b) a second component comprising a crosslinker
having a first functionality that crosslinks with the epoxy
functionality of the first component and a second
functionality that self-crosslinks, and wherein the MgO
comprises 10 to 50 wt. % of the coating, with wt. % based
on total solids.
6. A coating composition comprising:
(a) a first component comprising:
(i) an epoxy functional resin; and
(ii) a corrosion resisting particle; and
(b) a second component comprising a crosslinker
having a first functionality that crosslinks with the epoxy
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functionality of the first component and a second
functionality that self-crosslinks, wherein the coating
further comprises an amino acid.
(Appeal Br. 8 (emphases added)).
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains three rejections under AIA 35
U.S.C. § 103, as follows:
A. Claims 1, 2, 5, 7–11, 14, 15, 17–19, 22, and 23 as unpatentable
over Van Ooij et al.3 (“Van Ooij”), Walters et al.4 (“Walters”),
and Harris;5
B. Claims 6, 24, and 25 as unpatentable over Van Ooij and
Honda;6 and
C. Claims 12 and 13 as unpatentable over Van Ooij, Abrami et al.7
(“Abrami”), and Dictionary.com.8
(Ans. 4–24; Non-Final Act. 5–18).
III. DISCUSSION
Grouping of Claims. For Rejections A and B, the Appellant argues
the claims subject to each rejection together (Appeal Br. 3–7). Therefore,

3 US 2008/0081120 A1, published April 3, 2008.
4 US 2012/0082843 A1, published April 5, 2012.
5 Daniel C. Harris, Materials for Infrared Windows and Domes: Properties
and Performance 114 (1999).
6 US 2013/0081612 A1, published April 4, 2013.
7 US 2012/0315466 A1, published December 13, 2012.
8 Dictionary.com, http://dictionary.com/browse/catalyst (last visited
December 6, 2016).
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the claims subject to Rejections A and B stand or fall with claim 1 and claim
6, respectively, which we select as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv). For Rejection C, the Appellant relies on the same
arguments offered against Rejection A (Appeal Br. 7). Therefore, our
discussion of Rejection A applies equally to Rejection C.
Rejections A and C. The Examiner finds that Van Ooij teaches a
superprimer coating composition that may be formulated to comprise a
water soluble or dispersible polymer such as an epoxy resin, nanoparticles
such as MgO, a bis-silane such as bis(trimethoxysilylpropyl) amine, and an
aqueous or non-aqueous solvent (Ans. 4–5; Non-Final Act. 5–6). Regarding
the amount of MgO nanoparticles, the Examiner finds that these
nanoparticles are added as pigments and that the calculated amount of such
pigments may be 0–19.5% (Ans. 6, 20; Non-Final Act. 7). The Examiner
finds that although Van Ooij does not disclose that the MgO nanoparticles
have corrosion inhibiting or resisting properties, the prior art pigment
nanoparticles are identical to the Appellant’s MgO particles and, therefore,
would be capable of functioning (i.e., inherently function) as corrosion
inhibiting or resisting nanoparticles (Ans. 5; Non-Final Act. 6).9
The Appellant contends that Van Ooij does not disclose or suggest
“solvent-borne” compositions as claimed (Appeal Br. 3). According to the
Appellant, “a solvent-borne composition [is defined in the Specification as]
one in which solvent is present in an amount greater than 50 percent of the
diluent” and that “it is clear that ‘solvent’ in this context refers to organic
solvents and not water” (id. at 4 (citing Spec. ¶¶ 30–31)). The Appellant

9 The Examiner does not rely on Walters and Harris in rejecting claim 1
(e.g., Ans. 4–7). Therefore, we need not discuss these references.
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argues that “[i]n Paragraph 13, Van Ooij describes his ‘superprimer’ and
indicates that the solvent can be aqueous or non-aqueous (i.e. waterborne or
solvent-borne), but there is no disclosure of use of magnesium oxide” (id.).
The Appellant argues that although Van Ooij’s paragraph 129 discloses
magnesium oxide, it “is only one of many pigments listed” and that
[s]hould the Office take the position that magnesium oxide is a
leachable inhibitor (even if Van Ooij did not recognize it as
such), then the teachings of Van Ooij are outside the scope of the
current claims [because] Van Ooij teaches use of such an
inhibitor in amounts of less than 5%[.]”
(Id. at 4–5). The Appellant urges that selections of certain components
disclosed in Van Ooij are required to arrive at the subject matter recited in
the current claims and the Appellant has “some indications that a waterborne
composition comprising magnesium oxide at the levels recited in [c]laim 1
would result in a destabilized aqueous resin dispersion that would
flocculate” (id. at 5).
For the reasons discussed below, the Appellant’s arguments fail to
identify reversible error in the Examiner’s rejection. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
Van Ooij describes an improved superprimer (i.e., coating)
composition for providing corrosion protection and increased adhesion
between substrates and a subsequent bonded material (Van Ooij ¶¶ 3–5).
Consistent with the Examiner’s findings (Ans. 4–5), Van Ooij discloses that
the superprimer composition comprises: (a) one or more bis-silanes (e.g.,
bis(trimethoxysilylpropyl) amine10); (b) a water dispersible or soluble

10 The Appellant describes bis(trimethoxysilylpropyl) amine as a suitable
crosslinker (Spec. ¶ 24; Appeal Br. 8 (claim 10)).
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polymer (e.g., an epoxy resin); and (c) an aqueous or non-aqueous solvent,
wherein at least one of the resin and the silane are crosslinked using a
crosslinking agent (id. Abstract; ¶¶ 5, 15, 17–18, 119, 128). According to
Van Ooij, a corrosion inhibitor such as zinc phosphate is added in an amount
between about 1–50% by weight (id. ¶¶ 12, 14). In addition, Van Ooij
teaches including additional components such as pigments, leachable
inhibitors, emulsifiers, surfactants, film builders, UV absorbers or reflectors,
thickeners, or toughening agents (id. ¶ 129). As a suitable pigment, Van
Ooij discloses MgO nanoparticles (id.).
Although we agree with the Appellant that “solvent-borne” in the
context of the claimed invention means that a non-aqueous solvent is the
primary diluent (Spec. ¶¶ 30–31), that does not establish reversible error in
the Examiner’s rejection because, as acknowledged by the Appellant
(Appeal Br. 4), Van Ooij teaches that either an aqueous or non-aqueous
solvent may be used (Van Ooij Abstract; ¶ 13).
Additionally, although some selections are required to arrive at the
subject matter recited in claim 1 in view of Van Ooij’s disclosure as whole,
we discern no reversible error in the Examiner’s obviousness analysis (see,
e.g., Ans. 19). See, e.g., Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
683 F.3d 1356, 1364–65 (Fed. Cir. 2012) (“strong case of obviousness”
exists where the combination of ingredients recited in the claims were based
on selections from a finite number of identified, predictable solutions);
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious.”).
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We also discern no persuasive merit in the Appellant’s argument that
the amount of MgO nanoparticles in Van Ooij is limited to less than 5% by
weight. Van Ooij limits the amounts of the leachable inhibitor to less than
5% by weight of the superprimer and additives other than the pigment to less
than 3% of the solids (Van Ooij ¶ 129). But, as the Examiner finds (Ans.
19), Van Ooij teaches that the MgO nanoparticles are pigments for which
Van Ooij does not place any particular limitation as to amounts that may be
used (Van Ooij ¶ 129). Here, the Examiner calculates suitable amounts for
the MgO nanoparticles as being 0–19.5% by weight based on Van Ooij’s
disclosure of amounts as to other components in the superprimer (Ans. 6;
Non-Final Act. 7). The Appellant does not refute these calculations (Appeal
Br. 3–5).
The Appellant’s argument that Van Ooij does not appreciate MgO’s
corrosion inhibiting property is also unpersuasive because it is well-settled
that a compound and its properties are inseparable. In re Dillon, 919 F.2d
688, 697 (Fed. Cir. 1990) (en banc) (“[A] compound and all of its properties
are inseparable.”) (citing In re Papesch, 315 F.2d 381, 391 (CCPA 1963)).
In this regard, the motivation or reason in the prior art to arrive at the
claimed invention (i.e., the reason for including MgO nanoparticles in Van
Ooij—i.e., pigmentation) need not be the same as that of the Inventors (i.e.,
corrosion inhibition). KSR Int’l Co. Teleflex Inc., 550 U.S. 398, 420 (2007)
(“The first error of the Court of Appeals in this case was to foreclose [an
obviousness] reasoning by holding that . . . patent examiners should look
only to the problem the patentee was trying to solve.”). “Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the [prior art] can provide a reason for
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combining the elements in the manner claimed.” Id.; accord In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason in the prior art
need not be the same as that of the inventor).
Thus, when MgO nanoparticles are added as pigments in accordance
with Van Ooij’s teachings, the nanoparticles’ inherent corrosion inhibiting
property would necessarily flow from following the prior art’s teachings. In
re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of
record explicitly discusses the ‘wherein the polypeptide binds CD48’ aspect
of claim 73, the Kubin–Goodwin application itself instructs that CD48
binding is not an additional requirement imposed by the claims on the NAIL
protein, but rather a property necessarily present in NAIL.”); Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”).
Lastly, the Appellant argues that it has “some indications that a
waterborne composition comprising magnesium oxide at the levels recited in
[c]laim 1 would result in a destabilized aqueous resin dispersion that would
flocculate” (Appeal Br. at 5). That argument is ineffective because the
Appellant does not direct us to objective evidence (e.g., a sworn declaration
attesting to comparative experiments) establishing any such “indications”
that may be probative in assessing nonobviousness over Van Ooij. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
For these reasons, we uphold the Examiner’s rejection as maintained
against claim 1. As a consequence, Rejections A and C are sustained.
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Rejection B. Claim 6 differs from claim 1 in that the claimed
corrosion resisting particle need not comprise MgO, but the coating
composition must comprise an amino acid (Appeal Br. 8).
To account for the amino acid limitation, the Examiner relies on
Honda, which was found to teach an amino acid in the form of a compound
having an imidazole ring including histidine as a corrosion inhibitor in a
protective coating layer containing an epoxy resin, wherein the protective
coating layer is part of a film mirror including a reflective layer (Ans. 12
(citing Honda Abstract; ¶¶ 93–95, 99, 102, 108, 114)).
The Appellant contends that Honda is directed to film mirrors for
reflecting sunlight in which a protective coating layer is one of a number of
different layers, and, therefore, “it is inaccurate to characterize Honda as
being directed to the coatings art” (Appeal Br. 6). According to the
Appellant, “Honda might teach a coating composition, [but] that coating
composition is only used in conjunction with [a] film mirror laminate” and,
therefore, “[o]ne skilled in the art of primer compositions would have had no
motivation whatsoever to look to the teachings of Honda to modify the
teachings of Van Ooij” (id.). The Appellant also argues that “Honda teaches
countless corrosion inhibitors, and there is no particular motivation provided
to one skilled in the art for selecting histidine from the laundry list of
inhibitors that Honda discloses” (id.).
We discern no persuasive merit in the Appellant’s arguments. Honda,
like Van Ooij, is concerned with providing a protective coating that includes
an epoxy resin and a corrosion inhibitor (Honda ¶¶ 93–95; Van Ooij ¶¶ 12,
129). Because Van Ooij’s composition teaches including a corrosion
inhibitor for a coating based on an epoxy resin, a person having ordinary
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skill in the art would have considered all prior art teachings, including
Honda, that are relevant to corrosion inhibition in a coating that is based on
epoxy resin. That person having ordinary skill in the art would have been
prompted to combine Van Ooij and Honda in the manner claimed by the
Inventors because the substitution of a corrosion inhibitor, as disclosed in
Van Ooij, with another known corrosion inhibitor, such as Honda’s amino
acid having an imidazole ring, would have been obvious as a matter of
“mere substitution of one element for another known in the field.” KSR, 550
U.S. at 416.
Lastly, the Appellant’s argument that “Honda teaches countless
corrosion inhibitors” (Appeal Br. 6) is ineffective to identify reversible error
in the Examiner’s rejection. Honda lists a limited number of classes of
compounds, including a compound having an imidazole ring with histidine
(Honda ¶¶ 102, 108). Again, “[t]hat the [reference] discloses a multitude of
effective combinations does not render any particular formulation less
obvious.” Merck, 874 F.2d at 807.
For these reasons, we uphold the Examiner’s rejection as maintained
against claim 6. Rejection B is sustained.

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IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § 
Reference(s)/ Basis Affirmed Reversed
1, 2, 5, 7–11, 14,
15, 17–19, 22, 23
103  Van Ooij, Walters,
Harris
1, 2, 5, 7–11,
14, 15, 17–19,
22, 23

6, 24, 25 103 Van Ooij, Honda 6, 24, 25
12, 13 103 Van Ooij, Abrami,
Dictionary.com
12, 13
Overall Outcome 1, 2, 5–15, 17–
19, 22–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED