Ex Parte Brandenburger et al

Patent Trial and Appeal Board

Aug 31, 2016

13837616 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/837,616 03/15/2013
26813 7590 08/31/2016
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
FIRST NAMED INVENTOR
LARRY B. BRANDENBURGER
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.
287.00020123 4593
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
MAILDATE DELIVERY MODE
08/31/2016 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 LARRY R. BRANDENBURGER, BRUCE SICKLESTEEL,
and MARY JANE HIBBEN
Appeal2015-000843
Application 13/837,616
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal the Examiner's final rejection of claims 21--40.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Valspar Sourcing, Inc. as the Real Party in Interest.
App. Br. 3.
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Application 13/837,616
The Claimed Invention
Appellants' disclosure relates to coating compositions containing
coalescents and a latex polymer, wherein the coalescent has a volatile
organic content ("VOC") of less than about 50% and is dispersible in the
coating composition. Abstract; Spec. 2, 11. 12-21. Claim 21 is
representative of the claims on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief (App. Br. 25):
21. A low-VOC paint, comprising:
a latex polymer comprising a surfactant and polymer
particles emulsified or suspended in an aqueous medium,
wherein the polymer particles comprise a homopolymer or
copolymer including at least one of an acrylate or a methacrylate;
a pigment; and
a coalescent having the formula:
R1----(C(O}-O}-R2
wherein:
R1 is an aromatic group having 3 to 24 carbon atoms: and
R2 is a hydrocarbyl moiety having 3 to 24 carbon atoms;
with the proviso that R1 and R2 together do not include
any aliphatic unsaturated carbon-carbon bonds;
wherein the coalescent has a volatile organic content of no
greater than 50 wt-%; and
wherein the total voe in the paint is no greater than 15
grams per 100 grams polymer solids.
The References
The Examiner relies on the following references in rejecting the
claims on appeal:
Hazan et al.,
(hereinafter "Hazan")
us 5,162,426 Nov. 10, 1992
Razavi US 5,629,365 May 13, 1997
Brandenburger et al., US 6,762,230 B2 July 13, 2004
(hereinafter "Brandenburger '230")
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Brandenburger et al., US 7,812,079 B2 Oct. 12, 2010
(hereinafter "Brandenburger '079")
Brandenburger et al., US 8,110,624 B2 Feb. 7, 2012
(hereinafter "Brandenburger '624")
Brandenburger et al., US 8,440,752 B2 May 14, 2013
(hereinafter "Brandenburger '7 5 2 ")
Smith EP 0113435 A2 July 18, 1984
Hawley's Condensed Chemical Dictionary (14th ed. 2002)
(hereinafter "Hawley").
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 21-27 and 29-40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Razavi as evidenced by
Hawley.
2. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Razavi as evidenced by Hawley, as applied to claims 21-
27 and 29-40, in view of Hazan and further in view of Smith.
3. Claims 21--40 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1-36
of Brandenburger '624 in view of Smith.
4. Claims 21--40 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1--47
of Brandenburger '079 in view of Smith.
5. Claims 21--40 stand rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 1--45
of Brandenburger '230 in view of Smith.
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6. Claims 21--40 stand rejected on the ground of non-statutory
obviousness-type double patenting as unpatentable over claims 1--40 of
Brandenburger '752.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the Answer, which we adopt as our
own. Nevertheless, we highlight and address specific findings and
arguments for emphasis as follows.
Rejection 1
Initially, we note that Appellants argue claims 21-27 and 29--40 as a
group. We select claim 21 as representative of this group, and the remaining
claims stand or fall with claim 21. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Razavi suggests all of the limitations of claim
21 and would have rendered claim 21 obvious. Ans. 2-6. The Examiner
finds that Razavi discloses a coating composition containing "aqueous
latices," i.e., a latex polymer containing surfactants which are emulsified or
suspended in an aqueous medium, wherein the polymer particles comprise a
homopolymer or copolymer including at least one of an acrylate or a
methacrylate. Id. at 2 (citing Razavi, col. 3, 11. 23--40, col. 2, 11. 40--45). The
Examiner finds further that Razavi discloses the coating composition having
both "coalescents" and "pigments" as recited in claim 21. Id. at 2, 3 (citing
Razavi, col. 2, 11. 10-15, col. 4, 11. 61---67, col. 5, 11. 1-26, 26-32.
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In particular, the Examiner finds that Razavi explicitly discloses
coalescents, e.g., "dioctyl adipate," "benzyl octyl adipate," and "diethylene
glycol dibenzoate," which fall within the scope and would have been
"expected to have the properties of the instantly claimed coalescents,"
including the claimed volatile organic content. Ans. 3-5 (citing Razavi, col.
5, 11. 9-15, 11-12, 23-26, col. 4, 11. 15-29). The Examiner also finds that
Razavi teaches the "avoidance of volatile organic solvents," i.e., "low-VOC"
solvents and suggests coating compositions having small amounts of
coalescent, including "down to O" weight percent. Id. at 5 (citing Razavi,
Abstract, col. 3, 11. 23-25, col. 4, 11. 26-29; col. 12, 11. 50-60).
Based on the above findings, the Examiner concludes that it would
have been obvious to a person having ordinary skill in the art at the time of
the invention "to make compositions falling within the scope of those of the
instant claims because ... [it] would have been expected to give
compositions with lowered film forming temperatures and the other
properties contributed by the plasticizers and coalescents discussed by
Razavi." Ans. 5.
Appellants argue that the Examiner's rejection of claim 21 should be
reversed because the "Examiner failed to establish a prima facie case of
obviousness." App. Br. 13. In particular, Appellants argue that "the
Examiner failed to provide an articulated reason why a person having
ordinary skill would alter Razavi to make a low-VOC, pigment-containing
paint" and that "none of the cited [references] would have provided a person
having ordinary skill in the art a motivation to make a low-VOC paint." Id.
Appellants also argue that the Examiner "failed to articulate why a person
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having ordinary skill in the art would have used Razavi to make a visually
opaque pigment-containing paint." Id. at 15.
We do not find Appellants' arguments persuasive. Based on the
record before us and considering Razavi's teachings as a whole, the
Examiner's finding (Ans. 2---6) that Razavi suggests all of claim 21 's
limitations, including a low-voe paint, and obviousness analysis are
supported by a preponderance of the evidence and based on sound technical
reasoning. Razavi, Abstract, col. 2, 11. 10-15, 40-45, col. 3, 11. 23--40, col. 4,
11. 15-29, 61-67, col. 5, 11. 1-32, col. 12, 11. 50---60.
Contrary to what Appellants argue, the Examiner does provide a
reasonable basis and identifies sufficient evidence in the record (Ans. 5, 24)
to evince why one of ordinary skill would have been motivated to apply
Razavi' s teachings to arrive at Appellants' claimed invention. See Razavi,
col. 3, 11. 23-25 (explaining that "the use of aqueous latices ... provides an
environmental advantage, e.g. the avoidance of volatile organic solvents"),
col. 5, 11. 26-32 (disclosing that "[t]he latices of this invention can be
enhanced by ... pigments or dyes"); Ans. 5 (explaining that coating
compositions with lowered film forming temperatures would have been
expected); cf also KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)
(explaining that any need or problem known in the art can provide a
motivation for combining the elements in the manner claimed). Appellants
fail to direct us to adequate evidence or provide an adequate technical
explanation to show why the Examiner's factual findings and articulated
reasoning lack a rational underpinning or are otherwise based on some other
reversible error.
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Appellants argue that the Examiner's rejection should be reversed
because "adding pigments to Razavi to form a paint would have rendered
Razavi unsatisfactory for its purpose." App. Br. 13.
We are not persuaded by this argument because Appellants do not
identify or direct us to adequate evidence to support it. Attorney argument is
not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, as the Examiner found (Ans. 25), Razavi explicitly teaches using
pigments in its coating composition. Razavi, col. 5, 11. 27-32. Appellants'
conclusory assertions that "the pigment could itself block the UV light and
[that] there would be no need for the special polymer to perform that
function" (App. Br. 17), without more, are insufficient to establish that
adding pigments to Razavi to form a paint would have frustrated the purpose
of Razavi.
Appellants' argument that "Razavi teaches away from the low-VOC
paint claimed" (App. Br. 13) is unpersuasive because Appellants do not
identify sufficient evidence to support it, and we will not read into Razavi a
teaching away where no such language exists. Cf DyStar Textilfarben
GmbH v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellants' conclusory assertions that "Razavi does not teach how to avoid
the volatile organic solvents used in conventional latex coatings" and
"provides no clear teaching that one may avoid volatile compounds" (App.
Br. 17, 18), without more, are insufficient to establish that the reference
teaches away from the claimed invention. De Blauwe, 736 F.2d at 705.
Moreover, we find that Appellants do not identify any teaching in
Razavi which discourages one of ordinary skill in the art from using or
formulating a low-VOC paint, as claimed. In re Fulton, 391F.3d1195,
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1201 (finding that there is no teaching away where the prior art's disclosure
"does not criticize, discredit, or otherwise discourage the solution claimed").
We do not find Appellants' argument that the Examiner "failed to
articulate why a person having ordinary skill in the art would have used
Razavi to make a visually opaque pigment-containing paint" persuasive
because, as the Examiner correctly points outs (Ans. 29), claim 21 does not
recite or require "a visually opaque pigment-containing paint," as
Appellants' argument suggests. See In re Van Geuns, 988 F.2d 1181 (Fed.
Cir. 1993).
Accordingly, we affirm the Examiner's rejection of claims 21-27 and
29--40 under 35 U.S.C. § 103(a) as unpatentable over the Razavi as
evidenced by Hawley.
Rejection 2
Claim 28 depends indirectly from claim 21 and adds the limitation
"wherein the paint contains sufficient Ti02 pigment to be substantially
visually opaque when applied at a thickness of 3 mils (0.0762 mm) and
dried." App. Br. 26 (Claims App'x). The Examiner finds that the
combination of Razavi, Hazan, and Smith suggests all of the limitations of
claim 28 and would have rendered claim 28 obvious. Ans. 12-14.
Appellants argue that the Examiner's rejection of claim 28 should be
reversed because "Claim 28 is not obvious over the cited [references] for ...
the reasons presented with respect to claim 21." App. Br. 21. We do not
find this argument persuasive for the same reasons discussed above for
affirming the Examiner's rejection of claim 21.
Appellants further argue that: ( 1) "the portions of Hazan that the
Examiner cited do not teach making a 'substantially visually opaque
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coating"'; (2) "the Examiner's combination would entirely frustrate the
intended purposes of Razavi"; and (3) because "Hazan teaches solvent-based
coatings, ... a person having ordinary skill in the art would not have a
reasonable expectation of success in aqueous-based paints." App. Br. 21,
22.
We do not find these arguments persuasive. Based on the record
before us, the Examiner's finding that the combination of Razavi, Hazan,
and Smith suggests all of claim 28's limitations, including that the paint
contains sufficient Ti02 pigment to be substantially visually opaque is
supported by a preponderance of the evidence and based on sound technical
reasoning. Razavi, Abstract, col. 2, 11. 10-15, 40-45, col. 3, 11. 23--40, col. 4,
11. 15-29, 61-67, col. 5, 11. 1-32, col. 12, 11. 50-60; Hazan, Abstract, col. 10,
11. 59---63; Smith, Abstract.
Appellants' argument that the portions of Hazan that the Examiner
cited do not teach making a substantially visually opaque coating is
misplaced because the Examiner does not rely solely on Hazan's teachings
for disclosing this limitation. Rather, as set forth at pages 13 and 14 of the
Answer, the Examiner finds and explains that because the claimed amounts
of titanium dioxide "are [amounts] conventionally used in white paints," it
would have been known and reasonably expected by ordinary skilled
artisans that the paint would have been "substantially visually opaque when
applied at a thickness of 3 mils." Cf KSR, 550 U.S. at 416 ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results."). Appellants'
argument, without more, is insufficient to rebut or otherwise establish
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reversible error in the Examiner's factual findings and analysis in this
regard.
Appellants' argument that "the Examiner's combination would
entirely frustrate the intended purposes of Razavi" is unpersuasive for the
same reasons discussed above with respect to claim 21.
We are unpersuaded by Appellants' argument that "a person having
ordinary skill in the art would not have a reasonable expectation of success
in aqueous-based paints" because it is based on Hazan's teachings
individually and does not consider the combined teachings of the references
as a whole. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references."). As noted by
the Examiner (Ans. 17), Appellants' argument in this regard "considers only
[Hazan] alone and not the full scope of the rejection, which clearly includes
the teachings of Razavi," including Razavi's explicit teachings regarding the
use of pigments in aqueous-based coating compositions. Razavi, col. 2, 11.
10-15, 40-45, col. 3, 11. 23--40, col. 4, 11. 61---67, col. 5, 11. 1-32.
Moreover, Appellants' conclusory assertion that "[i]gnoring the
differences between solvent-based and aqueous-based paints is dismissive of
the technology involved in making aqueous-based low-VOC paints" (App.
Br. 22), without more, is insufficient to establish reversible error in the
Examiner's factual findings in this regard. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner's rejection of claim 28 under
35 U.S.C. § 103(a) as unpatentable over the combination of Razavi, Hazan,
and Smith.
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Rejections 3. 4. 5. and 6
With respect to the Examiner's rejections for obviousness-type double
patenting, i.e., Rejections 3, 4, 5, and 6 stated above, the Appellants offer no
substantive argument on the merits in the Appeal Brief.
Accordingly, because the Examiner's Rejections 3, 4, 5, and 6 have
not been withdrawn and the Appellants offer no substantive argument on the
merits, we summarily affirm the rejections. Cf Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008); Exparte Frye, 2010 WL 889747, *4 (BPAI
2010) ("If an appellant fails to present arguments on a particular issue - or,
more broadly, on a particular rejection - the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.")
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
DECISION/ORDER
The Examiner's rejections of claims 21--40 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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
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