Ex Parte Bao et al

Patent Trial and Appeal Board

Oct 18, 2018

14171799 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/171,799
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
02/04/2014
10/18/2018
FIRST NAMED INVENTOR
Hanzhen Bao
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.
12008942Al 7135
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
10/18/2018 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 HANZHEN BAO and YOUSSEF MOUSSA
Appeal2018-000878
Application 14/171, 799
Technology Center 1700
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4 and 6-18. 2 (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant/ Applicant is PPG Industries Ohio, Inc., which is identified as the
real party in interest. (Appeal Brief filed June 6, 2017, hereinafter "Appeal
Br.," 1.)
2 Claims 19-24 have been withdrawn from consideration. (Final Rejection
dated January 19, 2017, hereinafter "Final Act.," 1.) Claim 5 has been
cancelled. (Appeal Br. 1.)
Appeal2018-000878
Application 14/1 71,799
THE INVENTION
Appellant states that the invention relates to aqueous dispersions of
graft acrylic polymers containing both a hydrophobic portion and a
hydrophilic portion, and the use of such dispersions in container coatings,
such as metal cans. (Spec. ,r,r 1, 2.)
Claim 1, the only independent claim on appeal, as reproduced from
the Claims Appendix, is representative:
1. An article comprising a body portion or an end portion of
a food or beverage can and a coating composition disposed
thereon wherein the coating composition comprises the reaction
product of:
(a) a hydrophobic vinyl addition polymer containing
pendant or terminal ethylenically unsaturated
groups,
(b) a mixture of vinyl monomers including a vinyl
monomer containing carboxylic acid groups;
the reaction product containing active hydrogen groups, having
an acid value of 40 to 200 and being at least partially
neutralized with a base and dispersed in aqueous medium; the
aqueous dispersion being substantially free of bisphenol A and
derivatives thereof.
(Appeal Br. Claims Appendix 8.)
REJECTIONS
The Examiner rejected claims under 35 U.S.C. § 103 as follows:
1. Claims 1--4, 6-8, 11, 13, 17, and 18 as obvious overFryd
(US 3,644,584, issued February 22, 1972, "Fryd") in view of
Rademacher et al. (US 2011/0288232 Al, published November 24,
2011 "Rademacher")·
' '
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Application 14/1 71,799
2. Claims 9, 10, and 12 as obvious over Fryd, Rademacher, and
O'Brien et al. (US 7,189,787 B2, issued March 13, 2007,
"O'Brien"); and
3. Claims 14--16 as obvious over Fryd, Rademacher, and Li et al.
(WO 2013/092539 Al, published June 27, 2013, "Li").
(Final Act. 4--8; Examiner's Answer dated August 23, 2017, hereinafter
"Ans.," 3-8.)
ISSUE
The Examiner found that Fryd discloses a coating for cans including a
graft copolymer including monomers encompassed within the limitations of
claim 1. 3 (Ans. 3--4.) The Examiner found that Fryd does not specifically
mention an acid value as recited in claim 1, but that the acid value would
depend on the amount of monomers containing acid groups, such that it
would have been obvious to adjust the amount of monomers containing acid
groups and acid value depending on the end use of the composition. (Id.)
The Examiner also found that Fryd does not disclose that the polymer is at
least partially neutralized as recited in claim 1. (Ans. 4.) The Examiner
found that Rademacher discloses latex emulsions as coating compositions
for cans comprising acrylic copolymers wherein the emulsion is reacted with
a neutralizer. (Id.) The Examiner determined that it would have been
obvious to have neutralized the copolymers of Fryd as disclosed by
Rademacher "to disperse/invert the emulsion to provide a more well
3 We limit our discussion to claim 1, a discussion of which is sufficient for
disposition of this appeal.
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Appeal2018-000878
Application 14/1 71,799
dispersed coating and because it is well known in the art to do so and doing
so amounts to nothing more than using a known technique in a known
environment to accomplish an entirely expected result." (Ans. 4.) The
Examiner further clarified that "it would have been obvious to use the
copolymers of Fryd in an emulsion as disclosed by Rademacher and
neutralize the emulsion as disclosed by Rademacher in order to form a
coating composition for cans, to disperse/invert the emulsion to provide a
more well dispersed coating." (Ans. 8.)
Appellant contends that the Examiner's reasoning is based on
speculation without any technical support and is contrary to the opinion of
one of ordinary skill in the art. (Appeal Br. 4.) Appellant relies on the
Declaration filed under 37 C.F.R. § 1.132 of Dr. Gregory J. McCollum,
executed on November 8, 2016 ("McCollum Declaration") to support the
position that one of ordinary skill in the art would not have believed that the
copolymers disclosed in Fryd could be neutralized and dispersed in water.
(Id.)
The dispositive issue in this appeal is: Did the Examiner err in
concluding that it would have been obvious to have formulated a coating
composition having a reaction product containing active hydrogen groups as
recited in claim 1, where the coating composition is dispersed in aqueous
medium and at least partially neutralized with base in view of Fryd and
Rademacher?
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Application 14/1 71,799
DISCUSSION
Rejection 1
We agree with Appellant that the Examiner has not provided
sufficient reasoning to support the position that it would have been obvious
to neutralize Fryd's copolymers with a base and to disperse Fryd's
copolymers in water as required by claim 1. (Appeal Br. 4; McCollum Deel.
i-f 18.) See KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
Although Fryd discloses graft copolymers that are used as can
coatings, Fryd discloses such graft copolymers are prepared and used in an
organic liquid. (Fryd, col. 1, 11. 20-22, 58-70.) As discussed above, the
Examiner relied on Rademacher for dispersing the graft copolymer in Fryd
in water to form an aqueous dispersion and for neutralizing the graft
copolymer. However, Rademacher, while also being directed to can
coatings, discloses preparing a latex emulsion by mixing an ethylenically
unsaturated component and a stabilizer comprising a strong acid.
(Rademacher ,r,r 13, 24, 29.) Rademacher discloses that the latex emulsion
is reacted with a neutralizer in amounts of neutralizer "based on the amount
of acid to be neutralized in the system." (Rademacher ,r,r 39, 40.) In other
words, Rademacher discloses the presence of a strong acid stabilizer during
the polymerization reaction, and the addition of neutralizer to neutralize the
acid in the system, and not to at least partially neutralize any active
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Application 14/1 71,799
hydrogen present in the polymer as recited in the claims. (See
McCollum Deel. ,r 19.)
Thus, given the different methodologies disclosed in Fryd and
Rademacher discussed above for the preparation of the can coating
compositions, the Examiner's position that using Fryd's copolymer in an
emulsion would result in a "more well dispersed coating" does not provide
sufficient rational underpinnings for arriving at the at least partially
neutralized polymer reaction product dispersed in an aqueous medium as
required in claim 1. Therefore, we agree with Appellant that the Examiner's
rationale for combining Fryd and Rademacher to arrive at the coating
composition recited in the claims is not sufficiently supported by the record.
Rejections 2 and 3
Rejections 2 and 3, which additionally cite O'Brien and Li for
limitations of certain dependent claims, do not remedy the deficiencies of
the combination of Fryd and Rademacher discussed above.
DECISION
We reverse the Examiner's decision rejecting claims 1--4 and 6-18.
REVERSED
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