Ex Parte Ambrose et al

Patent Trial and Appeal Board

Jun 29, 2016

13735353 (P.T.A.B. Jun. 29, 2016)

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.
13/735,353 01/07/2013 Ronald R. Ambrose 075380A2C1 2552
24959 7590 06/29/2016
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
VO, HAI
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
06/29/2016 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 RONALD R. AMBROSE, ANTHONY M. CHASSER,
MARY ANN M. FUHRY, HOGYING ZHOU,
GREGORY J. MCCOLLUM and IRINA G. SCHWENDEMAN
____________

Appeal 2014–009667
Application 13/735,353
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS and
N. WHITNEY WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-009667
Application 13/735,353

2
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final decision rejecting claims 1–3, and 5–12.1 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A compressible coated substrate comprising a
substrate coated at least in part with a waterborne coating
composition comprising:
a. at least one base neutralized active hydrogen
containing film-forming resin; and
b. a water dispersible carbodiimide crosslinker
capable of reacting with the film-forming resin to form a
crosslinked film wherein the water dispersible carbodiimide
is a water dispersible oligomeric carbodiimide and/or a
water dispersible polymeric carbodiimide, the water
dispersible carbodiimide crosslinker comprises
carbodiimide linkages, urethane linkages and terminal urea-
linked polyether groups; and
c. a water dispersible polyisocyanate.

The Examiner relies on the following prior art references as evidence
of unpatentability:

Dai et al. US 2005/0049358 A1 Mar. 3, 2005
(hereinafter “Dai”)
Hesselmans et al. US 2006/0106189 A1 May 18, 2006
(hereinafter “Hesselmans”)
Rearick et al. US 2006/0141228 A1 June 29, 2006

1 Claim 4 was cancelled in the Amendment After Final Rejection (mailed
March 13, 2014). This Amendment After Final Rejection was entered by
the Examiner as indicated in the Advisory Action mailed March 21, 2014.
Appeal 2014-009667
Application 13/735,353

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(hereinafter “Rearick”)

Claims 1–3 and 5–12 are rejected under pre-AIA 35 U.S.C. §103(a) as
being unpatentable over Rearick in view of Hesselmans and Dai.2
ANALYSIS
We REVERSE the rejection for the reasons provided by Appellants in
the record, and add the following.
At issue in this appeal is whether the applied art suggests the claimed
subject matter, particularly with regard to claimed component c (as shown in
claim 1, supra).
Appellants argue that none of the applied references teaches
component c, the water dispersible polyisocyanate, for the reasons presented
on pages 3–5 of the Appeal Brief.
In reply to Appellants’ stated position, the Examiner states:
The [E]xaminer directs Appellants’ attention to paragraphs 33, 42, 58-
60 of Rearick. The polyurethane resin coating includes
polyisocyanate which is a crosslinked in an amount within the claimed
range (paragraph 53). Further, the polyurethane resin coating
comprises a polyisocyanate and a polyol with a mixing ratio of at least
3:1. The unreacted polyisocyanate bonds into the substrate surface so
as to provide improved surface adhesion between the coating and the
substrate (paragraph 42). The [E]xaminer notes that the polyurethane
resin coating is formed from a polyurethane dispersion comprising a
polyol, a polyisocyanate, a polyisocyanate crosslinker and water
(paragraphs 32, 53 and 58-60). Therefore, it is not seen that the

2 On page 2 of the Answer, the Examiner listed claims 1–12 as being
rejected in this rejection. Because claim 4 is cancelled (see footnote 1,
supra), claim 4 is not included in this rejection.
Appeal 2014-009667
Application 13/735,353

4
unreacted polyisocyanate, the polyisocyanate crosslinker taken
individually would not be water-dispersible.
Ans. 4–5.
In reply, Appellants argue:
[t]he Examiner thinks otherwise and relies on the above-mentioned
paragraphs [of Rearick] to support his position. Paragraph [0032] of
Rearick discloses that the base neutralized active hydrogen containing
film-forming polymer mentioned in (a) above can be a polyurethane
resin. Paragraph [0033] merely indicates the amount of the
polyurethane resin the coating composition and its molecular weight
and hydroxyl value.
As mentioned in [Appellants’] Appeal Brief, Rearick discloses both
organic solvent-based and aqueous-based compositions. Paragraphs
[0058]-[0060] is a specific example in Rearick directed to aqueous-
based compositions. In paragraph [0058], an NCO group containing
prepolymer is prepared. In paragraph [0059], the prepolymer is chain
extended in water with adipic acid dihydrazide and neutralized with
dimethyl ethanolamine. The paragraph indicates no evidence of
isocyanate and there is no reason to believe there is any. In paragraph
[0060], the solids content of the polyurethane dispersion is mentioned.
However, at this point in time, all that is disclosed is the base
neutralized active hydrogen containing film-forming resin as set forth
in element (a) above. There is no water dispersible carbodiimide nor
is there any water dispersible polyisocyanate.
Going on to paragraph [0061] of Rearick, the final coating
composition is prepared in which the polyurethane dispersion is
mixed with the water dispersible carbodiimide crosslinker comparable
to element (b) above. However, there is no disclosure of third
component, that is, the water dispersible polyisocyanate as required
by applicants' claims.
Reply Br. 1–2.
We are convinced by Appellants’ argument (reproduced above). The
Examiner’s position that “it is not seen” that the unreacted polyisocyanate
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Application 13/735,353

5
and the polyisocyanate crosslinker, taken individually, would not be water-
dispersible, without directing us to evidence in the record in support thereof,
lacks adequate evidentiary support. On the other hand, Appellants have
directed us to facts in the record that supports their stated position. In other
words, the preponderance of the evidence of record supports Appellants’
stated position.
We thus reverse the rejection (the Examiner does not rely upon the
other applied references to cure the stated deficiencies of Rearick).

DECISION
The rejection is REVERSED.

REVERSED