Ex Parte DiCola et al

Patent Trial and Appeal Board

Jul 12, 2018

13840553 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/840,553 03/15/2013 Louisa D. DiCola
59272 7590 07/16/2018
SWIMCLLC
101 PROSPECT A VENUE N.W.
1100 MIDLAND BLDG. - LEGAL DEPARTMENT
CLEVELAND, OH 44115-1075
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.
16505 3119
EXAMINER
SASTRI, SATYA B
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
LEGAL_IP@SHERWIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUISA D. DICOLA and SHAILESH S. SHAH
Appeal2017-009061
Application 13/840,553 1
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejection of claims 1-12. Br. 10.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
SUBJECT MATTER
The subject matter on appeal concerns aqueous coating compositions.
Spec. ,r,r 2, 5.
1 Appellant is the Applicant, The Sherwin-Williams Company, which is also
identified as the real party in interest. Br. 4.
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Application 13/840,553
Independent claim 1 is illustrative of the appealed subject matter:
1. An aqueous coating composition comprising:
(i) a crosslinkable binder resin having latent crosslinking
functionality;
(ii) an effective crosslinking amount of a crosslinker for
the binder resin; and
(iii) a water reducible monomer modified alkyd having an
acid value less than about 30 and wherein the water reducible
monomer modified alkyd is obtained by a process which
comprises reacting:
Br. 63.
a. a polymer formed as the reaction product of
1. a mixture of compounds resulting from an
acidolysis of reaction of a polyalkyene
terephthalate or naphthalate with a member
of the group consisting of acid- and
anhydride-functional materials; and
2. an alcohol wherein the resulting reaction
product has an acid value ofless than 20; and
b. an ethylenically-unsaturated monomer suitable
for modifying the polymer to form a modified
polymer resin; and wherein said modified polymer
resin is then combined with water in the presence of
a base to form the water reducible monomer
modified alkyd.
STATEMENT OF THE CASE
The Examiner rejects claims 1-12 under 35 U.S.C. § I03(a) as
unpatentable over - individually- Ruhoff, 2 or Ley, 3 or Kriessmann, 4 or
Larsson, 5 each in view of Kayima. 6 Ans. 2.
2 Ruhoff et al., US 2007/0135567 Al, published June 14, 2007.
3 Ley et al., US 4,250,070, issued Feb. 10, 1981.
4 Kriessmann et al., US 6,515,042 B2, issued Feb. 4, 2003.
5 Larsson et al., US 4,256,809, issued Mar. 17, 1981.
6 Kayima et al., US 7,129,278 B2, issued Oct. 31, 2006.
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Application 13/840,553
Specifically, the Examiner finds that each of Ruhoff, Ley,
Kriessmann, and Larsson individually and separately discloses elements (i)
and (ii), and that Kayima discloses element (iii) of the claimed composition.
Ans. 2-5. 7 Appellant does not dispute, but rather agrees with, the
Examiner's findings regarding the disclosure of Ruhoff and Kayima. Br.
23-24 ("[t]he references disclose the elements of the present invention").
Appellant makes similar concessions regarding the disclosures of Ley,
Kriessmann, and Larsson. See Br. 34, 55 (regarding Ley and Larsson,
respectively, acknowledging "the cited prior art arguably teaches the
existence of some of the elements of the present invention"); id. at 44
(regarding Kriessmann, acknowledging "the cited prior art arguably teaches
the existence of some of the components or elements of the present
invention"). Appellant disagrees, however, with the Examiner's conclusion
(Ans. 5) that the skilled artisan would have found it obvious to combine the
teachings of Ruhoff and Kayima (Br. 11-29), Ley and Kayima (Br. 29-39),
Kriessmann and Kayima (Br. 39-50), and Larsson and Kayima (Br. 50-61).
OPINION
We have considered Appellant's arguments (Br. 11-61) and are
unpersuaded that Appellant has identified reversible error in the Examiner's
rejections. In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011). Therefore,
we sustain the obviousness rejections of claims 1-12 based on the findings
7 The Answer sets forth the Examiner's findings and conclusions included in
the Non-final Office Action dated June 29, 2016, which were also
incorporated by reference in the Final Office Action dated December 9,
2016. Final Act. 2.
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Application 13/840,553
of fact, conclusions of law, and rebuttals to arguments expressed by the
Examiner in the Final Action and in the Answer. We add the following.
The obviousness rejection based on the combination of Ruhoff and Kayima
Appellant spends considerable portions of the Appeal Brief focused
on alleged properties of the claimed composition vis-a-vis the properties of
the individual Ruhoff and Kayima compositions. Br. 14--19, 21-24, 26-28.
For several reasons, such arguments, without more, are insufficient to
overcome the Examiner's obviousness rejection of claims 1-12. First, one
cannot show non-obviousness by addressing the teachings of the references
separately. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Furthermore, as recognized by the Examiner (Ans. 8), the "discovery that a
claimed composition possesses a property not disclosed for the prior art
subject matter, does not by itself defeat a prima facie case." In re Dillon,
919 F.2d 688, 693 (Fed. Cir. 1990). See also Ex parte Obiaya, 227 USPQ
58, 60 (BPAI 1985) ("The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious."). Even further, as the Examiner correctly observes
(Final Act. 4; Ans. 14), Appellant provides the appeal record with no
evidence to support their arguments that the claimed compositions even
exhibit the alleged properties.
This brings us to the issue of burdens of proof before the Office.
While we agree with Appellant (Br. 1 7) that the Examiner bears the initial
burden of establishing a prima facie case of obviousness, we disagree that
the Examiner's obviousness conclusion in this particular case is lacking.
Rather, we determine that the Examiner's obviousness conclusion (Ans. 5) is
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Application 13/840,553
fully supported in the appeal record. Here, the Examiner has undisputed
factual support that the Ruhoff and Kayima references disclose recited
elements (i}-(iii) of the claimed composition. Ans. 2-3, 4. Despite
Appellant's contentions to the contrary (Br. 18-20, 22, 23, 25, 28), the
Examiner indeed provides a sound rationale why the skilled artisan would
have been motivated to use Kayima's alkyd dispersion as a secondary binder
in the aqueous composition of Ruhoff - i.e., to achieve "improved gloss
and adhesion properties compared to unmodified latex coatings." Ans. 5;
Kayima 1 :45--46. It is of no moment whether the Examiner's proffered
motivation aligns with that of Appellant. Rather,
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls .... [A]ny need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007) ( emphasis
added).
We are also left unpersuaded by Appellant's argument that Kayima
teaches away from alleged properties of the claimed invention, i.e.,
"optimum high shear and mid and low shear rate viscosities for package
stability and desirable application properties." Br. 24--25. Specifically,
Appellant points to disclosure in Kayima regarding the use of a "high sheer
mill or homogenizer" to "break the polymer particle[ s] down to a submicron
level," without which "the polymer will not disperse in water." Br. 24.
Appellant fails to explain, however, how the use of high shear during the
preparation of the dispersion teaches away from sheer properties of the
resultant composition - assuming that such properties are even exhibited by
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the claimed subject matter. 8 We furthermore emphasize that Appellant does
not challenge the Examiner's statement at page 9 of the Answer that "[i]t is
not clear how Kayima's high shear mixing procedure for preparing alkyd
dispersions precludes its use with Ruhoff's latexes," i.e., no Reply Brief has
been filed.
For these reasons, and those provided by the Examiner, we are of the
opinion that Appellant has failed to identify reversible error in the
Examiner's rejection of claims 1-12 based on the combined disclosures of
Ruhoff and Kayima. We, therefore, sustain the Examiner's rejection.
The remaining rejections
We have also considered Appellant's arguments against the remaining
rejections based on Ley and Kayima (Br. 29-39), Kriessmann and Kayima
(Br. 39-50), and Larsson and Kayima (Br. 50-61). We agree with the
Examiner's statement in the Answer that such arguments "are repetitive and
overlap substantially with those for [the] Ruhoff-Kayima combination which
have been addressed above." Ans. 12. We furthermore agree with the
Examiner's position that those arguments are unpersuasive to identify
reversible error in the rejections. Ans. 12-14. Moreover, we again observe
that Appellant fails to challenge the Examiner's positions set forth in the
Answer because no Reply Brief has been filed.
Therefore, for the reasons set forth in the Final Action, the Answer,
and above, we sustain each of the Examiner's additional separate rejections
8 Again, Appellant has failed to supply the appeal record with any evidence
regarding such properties.
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of claims 1-12 based on the combined disclosures of Ley and Kayima,
Kriessmann and Kayima, and Larsson and Kayima.
DECISION
The Examiner's final decision to reject claims 1-12 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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