Ex Parte Barkac et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11113682 (B.P.A.I. Jan. 18, 2012)

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.
11/113,682 04/25/2005 Karen A. Barkac 1646P1 8424
7590 01/18/2012
PPG INDUSTRIES, INC.
Intellectual Property Department
One PPG Place
Pittsburgh, PA 15272
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
01/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN A. BARKAC, ANTHONY M. CHASSER,
ROY E. DEAN, MILDRED LISA PERRINE,
DEIRDRE D. RAGAN, KAREN S. RECHENBERG,
and JOHN R. SCHNEIDER
____________

Appeal 2010-003852
Application 11/113,682
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

Opinion for the Board entered by PAK, Administrative Patent Judge.

Concurring opinion entered by SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1 through 24, all of the pending claims in the above-
identified application.1 We have jurisdiction under 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed April 10, 2009, 4; Reply Brief (“Reply
Br.”) filed September 16, 2009, 2; and Examiner’s Answer (“Ans.”) filed
July 16, 2009, 2.
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Application 11/113,682

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STATEMENT OF THE CASE
The subject matter on appeal is directed to a coating formed from a
composition comprising a curable film-forming resin and a plurality of
particles dispersed in the resin, wherein the difference between the refractive
index of the resin and the refractive index of the particles ranges from 1 to
1.5 and wherein the particles have a hardness sufficient to impart greater mar
and/or scratch resistance to the coating as compared to a coating where no
particles are present. (See claim 1 and Spec. 2, para. 0006.) The curable
film-forming resin is defined as including “a polymer having at least one
type of reactive functional group and a curing agent having functional
groups reactive with the functional group of the polymer.” (Spec. 3, paras.
00014 and 00015.) The subject matter on current appeal is different from
that considered in the Decision dated July 31, 2007 on a related appeal,
Appeal No. 2007-1223 (Application 10/007,149) in, among other things, the
type of film-forming resins employed and the refractive index value
difference involved. (Compare claim 1 on appeal with claim 1previously
considered in Appeal No. 2007-1223.)
Details of the appealed subject matter are recited in illustrative claim
1 reproduced from the Claims Appendix to the Appeal Brief as shown
below:
1. A coating formed from a composition comprising:
a curable film-forming resin; and
a plurality of particles evenly dispersed in the coating when it is cured
and having an average particle size between 0.1 and 50 microns dispersed in

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Application 11/113,682

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said resin, wherein the particles have a hardness sufficient to impart greater
mar and/or scratch resistance to the coating as compared to a coating where
no particles are present, and
wherein the difference between the refractive index of the resin and
the refractive index of the particles ranges from 1 to 1.5.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at pages 2 and 3 of the
Answer:
Novak US 4,356,037 Oct. 26, 1982
Thometzek US 5,348,914 Sep. 20, 1994
Takahashi EP 0 737 567 A1 Oct. 16, 1996
Christie US 6,203,906 B1 Mar. 20, 2001
Wehelie US 6,255,027 B1 Jul. 3, 2001

Appellants seek review of the following grounds of rejection set forth
in the Answer:
1. Claims 1, 2, and 6 through 19 under 35 U.S.C. § 102(e) as
anticipated by the disclosure of Wehelie;
2. Claims 1 through 3 and 7 through 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Takahashi and
Wehelie;
3. Claims 4 through 6 and 9 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Takahashi, Wehelie, and
Thometzek;
4. Claims 4 through 6, 10, and 21 through 24 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of
Takahashi, Wehelie, and Novak;
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5. Claims 1, 2, and 4 through 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Christie and
Wehelie;
6. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Christie, Wehelie, and Takahashi; and
7. Claims 10 and 21 through 24 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Christie, Wehelie,
and Novak. (See App. Br. 7 and Reply Br. 3.)

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS AND CONCLUSION
I. REJECTION (1)
The dispositive question raised by the Examiner and Appellants is:
Has the Examiner demonstrated that Wehelie describes, inter alia, the
curable film-forming resin of the coating recited in the claims on appeal
within the meaning of 35 U.S.C. § 102(e)? On this record, we answer this
question in the negative.
As indicated supra, the Specification defines the claimed curable film-
forming resin as including “a polymer having at least one type of reactive
functional group and a curing agent having functional groups reactive with
the functional group of the polymer” (emphasis added). See Philips v. AWH
Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (“[T]he specification
is ‘the single best guide to the meaning of a disputed term,’ and that the
specification ‘acts as a dictionary when it expressly defines terms used in the
claims or when it defines term by implication.’”) Yet, the Examiner has not
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demonstrated that Wehelie teaches such curable film-forming resin2. (See
Ans. 3-4 and 10, App. Br. 9 and Reply Br. 5,)
It follows that the Examiner has not demonstrated that Wehelie
describes the curable film-forming resin of the coating recited in the claims
on appeal within the meaning of 35 U.S.C. § 102(e).
II. REJECTIONS (2), (3), AND (4)
The dispositive question raised by the Examiner and Appellants is:
Has the Examiner demonstrated that one of ordinary skill in the art would
have been led to select an appropriate curable resin and appropriate spherical
particles to provide the claimed refractive index difference in the coating
composition taught by Takashashi in view of the teachings of Wehelie to
arrive at the claimed invention? On this record, we answer this question in
the negative.
It is not disputed that Takahashi teaches a coating composition
comprising a binder comprising a curable film-forming resin and spherical
particles having an average particle diameter of 3 to 50 microns to impart
high abrasion resistance to the resulting coating. (Compare Ans. 4-5 with
App. Br. 13-17 and Reply Br. 5-7.) It is also undisputed that Takahashi does
not teach or recognize the importance of retaining the claimed refractive
difference between the curable resin and the particles used in its coating
composition for forming a decorative material useful as laminates on paper
or plastic sheets and films. (Compare App. Br. 13-17 and Reply Br. 5-7
with Ans. 4-5 and 12-13.)

2 It is interesting that our colleague does not distinguish the resin used as a
thermoplastic material from the curable resin used as a thermosetting
material contrary to paragraphs 00014 and 00015 of the Specification.
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To remedy the above deficiency, the Examiner relies on the disclosure
of Wehelie. However, Wehelie, unlike Takahashi, is directed to
photoreceptors useful in electrostatographic printing machines. (See App.
Br. 14 and Weheli, col. 1, ll. 5-7.) Wehelie teaches employing a binder and
light scattering particles comprising a core (made of an organic or inorganic
material overcoated with a coating in a charge blocking layer of the
photoreceptors to reduce “a print quality defect known as the ‘plywood
effect’ or the ‘interference fringe effect.’” (See col. 1, ll. 10-15 and col. 5, ll.
20-67.) For such a purpose, Wehelie teaches (col. 5, l. 65 to col. 6, l. 1) that:
The coating of the light scattering particles may be any material
wherein the difference between the coating and the binder
refractive index values is greater than the difference between
the core and the binder refractive index values.

The Examiner has not demonstrated that the refractive index relationship of
the type required by Wehelie is relevant to or suggestive of the claimed
refractive index difference between the curable resin binder and the particles
used in the coating composition of the type taught by Takahashi. Nor has
the Examiner demonstrated that the use of particular light scattering particles
having a certain reflective index relationship in the charge blocking layer of
Wehelie’s photoreceptor to avoid printing defects in printing machines is
relevant or analogous to forming the decorative material of the type taught
by Takahashi.3
Thus, one this record, we are constrained to agree with Appellants that
the Examiner has demonstrated that one of ordinary skill in the art would

3 The Examiner has not relied on Tometzek, and Novak to remedy the above
deficiency. (See Ans. 5-7.)
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have been led to select an appropriate curable resin and appropriate spherical
particles to provide the claimed refractive index difference in the coating
composition taught by Takashashi to arrive at the claimed invention within
the meaning of 35 U.S. C. § 103.
III. REJECTIONS (5), (6), AND (7)
The dispositive question raised by the Examiner and Appellants is:
Has the Examiner demonstrated that one of ordinary skill in the art would
have been led to select an appropriate curable resin and appropriate particles
to provide the claimed refractive index difference in the coating composition
taught by Christie in view of the teachings of Wehelie to arrive at the
claimed invention? On this record, we answer this question in the negative
as well.
It is undisputed that Christie teaches shaped products and coating
films (e.g., paints) formed from abrasion resistant polymer formulations
comprising a thermosetting polymer, a filler material, and an abrasion
resistant additive such as silicon carbide or alumina. (Compare Ans. 7 with
App. Br. 23-28 and Reply Br. 7-9.) It is also undisputed that Christie does
not teach or recognize the importance of retaining the claimed refractive
index difference between the thermosetting (curable) resin and the particles
used in its coating or paint formulations. (Compare Ans. 7-8 with App. Br.
23-28 and Reply Br. 7-9.)
To remedy the above deficiency, the Examiner again relies on the
disclosure of Wehelie. However, Wehelie, unlike Christie, is directed to
photoreceptors useful in electrostatographic printing machines as indicated
supra. As also indicated supra, Wehelie teaches employing a binder and
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light scattering particles comprising a core (made of an organic or inorganic
material overcoated with a coating in a charge blocking layer of the
photoreceptors to reduce “a print quality defect known as the ‘plywood
effect’ or the ‘interference fringe effect.’” As correctly indicated by
Appellants at pages 23 through 28 of the Appeal Brief, the Examiner has not
demonstrated that the use of particular light scattering particles having a
particular reflective index relationship in the charge blocking layer of
Wehelie’s photoreceptor to avoid printing defects in printing machines is
relevant or analogous to forming the coating or painting formulations taught
by Christie.4
Thus, one this record, we are also constrained to agree with
Appellants that the Examiner has not demonstrated that one of ordinary skill
in the art would have been led to select an appropriate curable resin and
appropriate particles to provide the claimed refractive index difference
between the curable (thermosetting) resin and particles in the coating or
paint composition taught by Christie to arrive at the claimed invention
within the meaning of 35 U.S. C. § 103.
.
ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting the claims on
appeal under 35 U.S.C. § 103(a) is REVERSED.

4 The Examiner has not relied on Takahashi and Novak to remedy the above
deficiency. (See Ans. 8-9.)
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REVERSED

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SMITH, Administrative Patent Judge, concurring.
I write separately because I do not agree with my colleagues’ narrow
interpretation of the “curable film-forming resin” required by claimed
subject matter. The claims on appeal are not limited to the thermoset
compositions as relied upon by my colleagues. According to Appellants, the
subject matter on appeal is directed to a coating formed from a composition
comprising a curable film-forming resin and a plurality of particles dispersed
in the resin. (Br. 6). Appellants have not presented arguments that rely
upon the narrow interpretation of the claimed subject matter presented by
my colleagues. Moreover, the Specification specifically states:
Any resin that forms a film can be used according to the present
methods, absent compatibility problems. For example, resins suitable
for both powder and liquid coating compositions can be employed.
The powder and/or click with compositions can be thermoplastic
work thermosetting compositions.
Spec. [00013]-[000 14].

The § 102(e) rejection over Wehelie

I agree with Appellants that Wehelie does not describe a composition
comprising a curable film-forming resin and a plurality of particles dispersed
in the resin as required by the subject matter of the appealed claims. (Br. 8-
12). The Examiner has failed to establish that the photoreceptors
compositions of Wehelie are the same as the coating composition required
by the appealed subject matter.

The § 103(a) rejections overt the combination of Takahashi and Wehelie

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I agree with Appellants (Br. 13-17) that one skilled in the art would
not be motivated to control the light scattering effects of paints and
decorative materials based on a reading of either Takahashi or Wehelie.
Takahashi describes decorative materials comprising particles that provide
abrasion resistance. Wehelie is drawn to a photoreceptor, useful for an
electrostatographic printing machine, comprising particles having a
particular refractive index relationship to a resin in order to minimize a print
quality defect. The Examiner has not demonstrated that the refractive index
relationship of the type required by Wehelie is relevant to particles that
provide abrasion resistance of the type taught by Takahashi.

The § 103(a) rejections over the combination of Christie and Wehelie

I agree with Appellants (Br. 23-28) that the Examiner has not
demonstrated that the use of particular light scattering particles having a
particular reflective index relationship in the photoreceptor of Wehelie is
relevant or analogous to forming the coating or painting formulations taught
by Christie. Christie teaches shaped products and coating films formed from
abrasion resistant polymer formulations. The Examiner has not
demonstrated that the refractive index relationship of the type required by
Wehelie is relevant to the abrasion resistant polymer formulations of the
type taught by Christie.

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