Ex Parte Bai et alDownload PDFPatent Trial and Appeal BoardJun 23, 201612519850 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/519,850 06/27/2011 32692 7590 06/27/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Feng Bai 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 62043US005 6178 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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 MARKT. GOULD Appeal2015-000105 Application 12/519,850 Technology Center 1700 Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and WESLEY B. DERRICK, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal 1 under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 4---6, 9-16, and 20. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a coating containing titanium dioxide photocatalytic particles and alkali metal silicate binder, 1 Appellants identify the real party in interest as the "3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota" (Br. 2). Appeal2015-000105 Application 12/519,850 such as sodium silicate, and which binder further includes tetraethoxysilane (TEOS). A coated article, including a roofing granule having Appellants' coating is also claimed. Claim 1 is illustrative and reproduced below: 1. A coated article, comprising: an article having an external surface and a coating on the external surface of the article, wherein the coating is formed from a composition comprising between 30 weight% and 80 weight% crystalline anatase Ti02 photocatalytic particles and a sodium silicate binder, wherein the sodium silicate binder further comprises tetraethoxysilane, and wherein the article is selected from the group consisting of a roofing granule and a tile. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Jacobs Anderson Ohwaki US 6,569,520 Bl US 2005/0142329 Al US 2006/0264525 Al May 27, 2003 Jun.30,2005 Nov. 23, 2006 The Examiner maintains the following grounds of rejection: Claims 1, 4---6, 9-16, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jacobs in view of Ohwaki. Claims 1, 4, 9, 11- 14, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Anderson in view of Ohwaki. Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Anderson in view of Ohwaki and Jacobs. After a careful review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness applied by the Examiner, we determine that the Appellants' arguments are insufficient to 2 Appeal2015-000105 Application 12/519,850 identify reversible error in any of the Examiner's obviousness rejections. Jn re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the findings of fact and the reasons set forth by the Examiner in the Examiner's Answer and in the Final Office Action. We offer the following for emphasis. Concerning the Examiner's rejection of claims 1, 4---6, 9-16, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Jacobs in view of Ohwaki, Appellants argue the rejected claims together as a group. Accordingly, we select claim 1 as the representative claim on which we decide this appeal as to this ground of rejection. Appellants argue that the Examiner's proposed combination of Jacobs and Ohwaki lacks merit because Ohwaki is directed to coatings including silanes and photocatalytic material, which coatings are suitable for an indoor environment whereas Jacobs describes a coating with an alkali metal silicate binder said to be useful in an outdoor environment for a roofing granule; hence, there would have been no logical reason for one of ordinary skill in the art to make a modification of the coating material of Jacobs to further include the silane (TEOS) of Ohwaki as a further binder material in Jacobs in addition to the alkali metal silicate binder of Jacobs (Br. 5-7). Appellants' arguments do not expose reversible error in the Examiner's determination that it would have been obvious for one of ordinary skill in the art to add the TEOS of Ohwaki to the coating material of Jacobs for the purposes of providing an additional binder material for the coating layer of Jacobs for the reasons set forth by the Examiner (Final Office Act. 6, 21-22; Ans. 3-5; Jacobs, col. 1, 1. 55 to col. 2, 1. 9; col. 2, 1. 3 Appeal2015-000105 Application 12/519,850 50- col. 3, 1. 1. 2). We observe that Jacobs is not limited to a coating material that is only useful in an outdoor environment as seemingly argued by Appellants; rather, Jacobs teaches that the coated granules can be used in both interior and exterior products (col. 6, 11. 28-36). Moreover, Ohwaki teaches that the coating product containing silane binder can be employed in a wide variety of applications, including on brick and mortar substrates (i-fi-f 165-174, 202). In this regard, the TEOS (silane) binder of Ohwaki is an ethyl silicate binder2 and Jacobs teaches that silicate binders are useful in its coating composition (Jacobs, col. 1, 62-65). It would have been well within the ordinary skill of the art to combine two known binder materials that are known to be useful in coating materials containing photocatalytic materials as the binder for Jacobs' coating with the reasonable expectation of obtaining a coating material with the combined benefits of each of the binders. Therefore, Appellants' arguments that are premised on the coating material of Jacobs and the coating material of Ohwaki having different requirements; that is, Jacobs being directed to an outdoor application whereas Ohwaki being directed to indoor utilities, are based on a faulty premise given the disclosures of the applied prior art discussed above and are unavailing for showing harmful error in the Examiner's obviousness rejection. Furthermore Appellants' argument that the Specification evinces significantly improved and unexpected durability characteristics for coating compositions having the claimed combination of binder materials lacks 2 TEOS is an ethyl silicate (see Ohwaki i1 90). 4 Appeal2015-000105 Application 12/519,850 persuasive merit for the reasons set forth by the Examiner (Ans. 6). In this regard, representative claim 1 does not require any particular amount of sodium silicate binder and/or tetraethoxysilane (TEOS). Consequently, the results reported in the Specification are not commensurate in scope with the claims as pointed out by the Examiner (Ans. 6). In addition, Appellants acknowledge that the test results reported are merely illustrative and not predictive (Spec. p. 11, 11. 8-10). As such the Specification evidence does not outweigh the evidence of obviousness presented by the Examiner. It follows that, on this appeal record, we sustain the Examiner's first stated obviousness rejection. Appellants rely on substantially the same arguments as made against the Examiner's first stated rejection in arguing against the second and third rejections of the Examiner (Br. 7-8). 3 Therefore, we shall likewise sustain the latter rejections. CONCLUSION The Examiner's decision to reject the appealed claims is affirmed. 3 In the second and third obviousness rejections, the Examiner relies on a different primary reference (Anderson); however, Appellants do not furnish a particularized challenge to the Examiner's findings as to the teachings of Anderson and conclusively indicate a reliance on substantially the same argument Appellant makes in traversing the Examiner's first stated rejection. 5 Appeal2015-000105 Application 12/519,850 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 6 Copy with citationCopy as parenthetical citation