Ex Parte Bremser et al

Board of Patent Appeals and Interferences

Jan 8, 2009

10220164 (B.P.A.I. Jan. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WOLFGANG BREMSER,
KARL-HEINZ GROSSE-BRINKHAUS and EGON WEGNER
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Appeal 2008-2996
Application 10/220,164
Technology Center 1700
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Decided: January 8, 2009
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Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2, and 6-16, the
only claims pending in the Application. (App. Br. 2, ¶ III.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-2996
Application 10/220,164

Claim 1 is illustrative of the invention and is reproduced below:
1. A process for producing multicoat paint systems on electroconductive
substrates by a wet-on-wet technique, comprising
(I) depositing a cathodically depositable electrocoat material on an
electroconductive substrate to form an electrocoat film,
(II) applying directly to the electrocoat film at least one coating
material curable thermally or both thermally and with actinic
radiation so as to form a film of the at least one coating
material, and then
(III) jointly curing the electrocoat film and the film of the at least
one coating material,
wherein the cathodically depositable electrocoat material comprises an
aqueous dispersion prepared by
(1) polymerizing one or more ethylenically unsaturated monomers
comprising at least 70% by weight of styrene, based on the total
weight of the one or more ethylenically unsaturated monomers
in
(2) an aqueous solution of an at least partly protonated epoxy-
amine adduct,
(3) the epoxy-amine adduct being obtained by reacting
(A) at least one glycidyl ether of a polyphenol, containing on
average at least one epoxide group per molecule,
(B) at least one polyglycidyl ether of a polyol, containing an
average more than 1.0 epoxide group per molecule, and
(C) at least one compound containing a primary amino group
in the molecule,
to give the epoxy-amine adduct that is free from epoxide groups,
components (A) and (B) being used in an equivalents ratio of from 1.0:0.5 to
1.0:8.0, and using from 0.3 and 0.7 mol of component (C) per equivalent of
epoxide groups of (A) and (B).

The Examiner relies on the following prior art references to show
unpatentability:
Springer 4,007,102 Feb. 8, 1997
Erne 5,869,198 Feb. 9, 1999
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Application 10/220,164

Bremser 6,201,043 B1 Mar. 13, 2001
Reiter 6,254,751 B1 Jul. 3, 2001
Bremser WO 98/07794 A2 Sep. 26, 2001
Appellants request review of the following grounds of rejection:
1. claims 1, 2, 6-9, 11, and 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Springer in view of WO 98/07794 (“Bremser”)1;
2. claims 1, 2, 6-9, 11, and 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Erne in view of Bremser; and
3. claims 1, 2, 6-10, 12, and 14-16 under 35 U.S.C. § 103(a) as
unpatentable over Reiter in view of Bremser.
The Examiner relies on each of the primary references (i.e., Springer,
Erne, and Reiter) for a disclosure of the invention as recited in claim 1 with
the exception of the specifically claimed aqueous dispersion used to form the
cathodically depositable electrocoat material. (Ans. 3, 5, 6.) The Examiner
finds, and Appellants concede (Br. 6:1), that Bremser discloses an aqueous
dispersion which is the same as Appellants’ claimed aqueous dispersion.
(Br. 6:1.)
Appellants argue that one of ordinary skill in the art would not have
had a reasonable expectation of success in using Bremser’s dispersion in the
Springer, Erne, and Reiter processes. Appellants thus contend that the
Examiner’s proposed motivation to combine the references is based on
improper hindsight reasoning. (See generally, Br. 4-20.)

1 All citations to “Bremser” are to U.S. 6,201,043, the English language
equivalent (see Ans. 3, 4, and 6).
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Application 10/220,164

Appellants do not present separate arguments as to any particular
claim, or group of claims. Accordingly, we decide all three grounds of
rejection on the basis of independent claim 1.
ISSUES
Based on the contentions of the Examiner and Appellants, the first
issue presented for our review with respect to each ground of rejection is:
Have Appellants shown that the Examiner reversibly erred in
determining that one of ordinary skill in the art would have been motivated
to use Bremser’s composition in the processes for producing multicoat paint
systems disclosed in the primary reference (i.e., either Springer, Erne, or
Reiter)?
We answer this question in the negative as to each ground of
rejection.
Appellants also rely on examples in the Specification as evidence of
unexpected results. (Br. 20-21.) Therefore, taking into account the
comparative examples in the Specification we also consider a second issue:
Have Appellants shown that the evidence of non-obviousness
outweighs the Examiner’s evidence of obviousness?
We also answer this question in the negative as to each ground of
rejection.

FINDINGS OF FACT (“FF”)
1. Bremser discloses aqueous dispersions and “their use for preparing
electrophoretically depositable coating materials.” (Col. 1, ll. 7-12.)
2. According to Bremser, “[e]lectrodeposition coating is used in
particular for priming motor vehicle bodywork parts, and is generally
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Application 10/220,164

operated cathodically.” (Col. 1, ll. 30-32.) Bremser teaches that
“[t]he coat film is in general composed of three components: the resin
component, which comes from the binder dispersion; the grinding
resin component, from the pigment paste; and the pigments.” (Col. 2,
8-12.)
3. According to Bremser, coating materials prepared using the inventive
dispersion adhere well to substrates as well as to top coat films. (Col.
3, ll. 23-25.) Bremser further states that use of the inventive
dispersion with conventional pigments pastes does not have an
adverse effect, and may even improve properties of the coat film, such
as corrosion protection for the substrate. (See col. 3, ll. 31-40.)
4. Bremser discloses that both the inventive dispersion and coating
materials prepared from the dispersion are “very stable,” even “when
comparatively large amounts of a novel dispersion are added to the
electrodeposition coating material.” (Col. 3, ll. 19-23.)
5. Springer discloses “an improved method of electrodepositing a water-
soluble or water dispersible coating resin onto a conductive surface.”
(Col. 1, ll. 11-13.) Springer explains that an advantage of
electrocoating is that “a second or top coat can be applied over the
electrocoated film without curing the electrocoated film and then both
coats can be cured in one baking operation.” (Col. 1, ll. 32-36.)
According to Springer, “[t]he process of the invention provides for
substantially improved product quality, particularly cured coating
adhesion and corrosion resistance.” (Col. 4, ll. 29-32.)
6. Springer’s method includes a step of “electrodepositing a resinous
film on [a] continuous aluminum sheet or strip” (col. 4, ll. 25-26)
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which has been “treat[ed] in an acidic aqueous solution containing
hexavalent chromium, phosphate and preferably fluoride to form an
amorphous chromium phosphate type conversion coating” (col. 4, ll.
19-22). According to Springer, the electrodepositing step “comprises
subjecting the continuous sheet, usually as an anode, to electrolysis in
an aqueous bath containing about 5-30% by weight of polyelectrolyte
resin.” (Col. 4, ll. 34-37.) Appellants concede “Springer implies that
either anodic or cathodic electrocoating can be employed.” (Br. 5.)
7. Erne discloses “a process for the production of multi-layer coatings,
particularly motor vehicle coatings.” (Col. 1, ll. 55-57.) According to
the process, an electrophoretically depositable aqueous coating
medium is deposited on a substrate, followed by application of a
second coating layer “wet-into-wet to the first coating layer.” (Col. 1,
l. 65-col. 2, l. 4.) The two layers are stoved jointly. (Col. 2, ll. 5-6.)
8. Erne states that “anodically or cathodically depositable electro-dip
lacquers (EDLs) which are known in the art, and which are subject to
no particular restriction, can be used for the production of the first
coating layer, namely a primer coat.” (Col. 2, ll. 35-39.)
9. In col. 3, ll. 6-25, Erne lists “Examples of basic resins” (l. 8) which
can be used in the cathodic dip lacquers.
10. Reiter discloses “a process for the multilayer coating of substrates
with a primer coat of electrodeposition coating material and with a
topcoat of powder coating material.” (Col. 1, ll. 6-9.)
11. “Reiter discloses that ‘it is possible to use all liquid coating materials
which are known in the art’ (Col. 2, lines 57-58).” (Br. 16.)
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12. In col. 2, ll. 60-64, Reiter lists some “customary” (l. 59) or “possible”
(l. 60) electrodeposition coating materials.
PRINCIPLES OF LAW
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). See also DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense”).
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988)(citations omitted). “Obviousness does not require absolute
predictability.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.Cir.1986).
“Case law requires that a nexus be established between the merits of
the claimed invention and the evidence proffered on secondary
considerations, if the evidence on secondary considerations is to be given
substantial weight in the calculus of obviousness/nonobviousness.” Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed.
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Cir. 1985). See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (“[O]bjective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.”).
ANALYSIS
Appellants argue that one of ordinary skill in the art would not have
had a reasonable expectation of success in using Bremser’s composition in
the coating processes of the primary references because the coating art is
unpredictable, and Bremser’s coating composition is not a known equivalent
to the electrocoating compositions of Springer (Br. 7), Erne (Br. 11), and
Reiter (Br. 18). Appellants specifically contend that: Springer is silent with
regard to cathodic coating conditions and compositions (Br. 5-7; but see FF
6); Bremser’s coating composition is not listed among the cathodic coatings
identified as suitable for use in Erne’s process (Br. 13-14 (citing Erne, col. 3,
ll. 6-25); but see FF 9); and the claimed (i.e., Bremer’s) composition is not
specifically included in Reiter’s list of suitable cathodic coatings (Br. 19
(citing Reiter, col. 2, ll. 60-64); but see FF 12).
We have considered Appellants’ arguments, but are not persuaded that
the Examiner reversibly erred in concluding that the claimed invention
would have been obvious to one of ordinary skill in the art in view of the
combined teachings of Bremser and any one of Springer, Erne, and Reiter.
Appellants’ arguments have been fully addressed by the Examiner’s
“Response to Argument” (Ans. 7-12.) However, because Appellants’
arguments appear to be based on a misapprehension of the legal standard for
an obviousness determination, we provide the following observations for the
sake of completeness.
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The relevant case law clearly states that an obviousness analysis
properly takes into account common knowledge and common sense.
Moreover, obviousness requires only a reasonable expectation of success,
not absolute predictability.
Although the primary references do not explicitly identify Bremser’s
composition as suitable for use in their processes2, Appellants have not
persuasively refuted the Examiner’s determination that the ordinary artisan
would have nonetheless been motivated to use Bremser’s composition
because of its disclosed advantages, such as good adherence to substrates
and top coat films (FF 3, 4) in electrodeposition coating processes for
priming motor vehicle bodywork parts (FF 1, 2). (Ans. 9, 11, 12 (also
noting expectation of reduced capital and operating costs).) Likewise,
Appellants have not explained why it would not have been within the level
of skill of the ordinary artisan to have made any necessary modifications to
the explicitly disclosed processes of the primary references so as to enable
the use of Bremser’s cathodic coating composition.
Appellants also argue that test data provided in the Specification
establishes that the claimed process provides unexpectedly superior results.
(Br. 20.) The Specification compares multicoat paint systems produced
using Appellants’ aqueous dispersion with multicoat paint system produced
using other types of aqueous dispersions. Thus, as pointed out by the
Examiner (Ans. 12), the test data does not establish unexpected results when
compared to the closest prior art; i.e., there is no comparison with a

2 See FF 6, 8, 11 (primary references suggesting that any known
electrodeposition coating materials may be utilized).
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Application 10/220,164

multicoat paint system produced by the processes of the primary references
using Bremser’s aqueous dispersion.
CONCLUSION
Appellants have not identified reversible error in the Examiner’s
rejections of: claims 1, 2, 6-9, 11, and 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Springer in view of WO 98/07794 (“Bremser”); claims 1,
2, 6-9, 11, and 13-16 under 35 U.S.C. § 103(a) as unpatentable over Erne in
view of Bremser; and claims 1, 2, 6-10, 12, and 14-16 under 35 U.S.C. §
103(a) as unpatentable over Reiter in view of Bremser.
The decision of the Examiner rejecting claims 1, 2, and 6-16 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)(1)(iv).
AFFIRMED

tc

MARY E. GOLOTA
CANTOR COLBURN LLP
201 W. BIG BEAVER ROAD
SUITE 1101
TROY, MI 48084

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