12742558 (P.T.A.B. Dec. 26, 2018)

Ex Parte Fletcher

Patent Trial and Appeal BoardDec 26, 2018

12742558 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/742,558 09/01/2010 30634 7590 12/26/2018 GRACEGMBH 7500 GRACE DRIVE COLUMBIA, MD 21044 FIRST NAMED INVENTOR Timothy Edward Fletcher 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. W9728-0l 6783 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 12/26/2018 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 TIMOTHY EDWARD FLETCHR Appeal2017-010010 1 Application 12/742,558 Technology Center 1700 Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and JANE INGLESE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies W.R. Grace & Co.-Conn., as the real party in interest (App. Br. 3). Appeal2017-010010 Application 12/742,558 Appellant appeals under 35 U.S.C. Â§ 134 the Examiner's Final rejection of claims 1-3, 6, 7, 10, 12-14, 17-20, 22, and 32--4 7. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We REVERSE. Appellant's invention is directed to dispersions of particles including anti-corrosive submicron particles and coatings made therefrom. (Spec. ,r 1 (see also claim 1)). Claim 1 below is illustrative: 1. A dispersion of surface modified inorganic particles comprising: (a) fluid comprising (i) water and (ii) a complexing agent comprising acidic or basic materials, and (b) particles dispersed throughout said fluid, said particles consisting of surface modified inorganic particles having an average particle diameter of less than about 10 microns, wherein each surface modified inorganic particle consists of (i) an inorganic particle having a particle surface and (ii) polyvalent metal ions along said particle surface, said polyvalent metal ions having replaced protons of hydroxyl groups along said particle surface. (App. Br. 38, Claims App.). 2 Appeal2017-010010 Application 12/742,558 Appellant appeals the following rejections: 1. Claims 1-3, 6, 7, 10, 12-14, 17-20, 22-34, 37, 38, and 42 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hintze-Bruning (insert cite) in view of JP 2003-286589 (JP 2003-286589 A; pub. Oct.IO, 2003 as translated, hereinafter "JP '589") (Final Act. 2--4). 2. Claims 1-3, 6, 7, 10, 12-14, 17-20, 22, 32-34, 36--40, 42--44, 46, and 47 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hintze- Bruning et al. (US 2005/0065269 Al; pub. Mar. 24, 2005, hereinafter "Hintze-Bruning") in view of JP 53-7550 (JP-53007550 A; pub. Jan. 24, 1978 as translated, hereinafter "JP '550") (Final Act. 4--5) .. 3. Claims 1-3, 6, 7, 10, 12-14, 17-20, 22, 32--42, and 44--47 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hintze-Bruning in view of Hwa et al. (US 4,649,025; iss. Mar. 10, 1987, hereinafter "Hwa") (Final Act. 5---6). FINDINGS OF FACT & ANALYSIS Appellants argue that there is no reason to combine JP '589's, JP '550's or Hwa's water-based anticorrosive compositions for corrosion protection within aqueous systems with Hintze-Brunings curable coating compositions for coils of steel or aluminum sheets (App. Br. 12, 21, and 31 ). Appellant argues that Hintze-Bruning' s coating composition is cured onto a steel or aluminum sheet surface and is not designed to be used in aqueous systems, such as cooling towers (App. Br. 16). Appellants contend that even though Hintze-Bruning teaches that the composition may be used to form curable coatings along a surface of internal combustion engines, radiators or 3 Appeal2017-010010 Application 12/742,558 heat exchangers, Hintze-Bruning' s coating composition is not designed to be used in aqueous systems such as water treatment systems (App. Br. 21, 32). The Examiner finds that Hintze-Bruning teaches a coating slurry comprising water and a corrosion inhibiting mixture that includes silica modified by calcium (Final Act. 2-3). The Examiner finds that the secondary references (i.e., JP '589, JP '550, and Hwa) would have provided the motivation for combining phosphoric acid and other complexing agents with Hintze-Bruning's composition (Final Act. 3-5; see also Ans. 2, 4, and 6). The Examiner finds that Hintze-Bruning teaches that the composition can be formulated on the basis of organic solvents or aqueous media to provide protection to metals (Ans. 3, 4, and 6). Hintze-Bruning discloses an anti-corrosive mixture and coatings that contain the anti-corrosive mixture (Hintze-Bruning, ,r 1 ). Hintze-Bruning teaches using the coating to protect coils of steel or aluminum sheeting (Hintze-Bruning ,r 2). Hintze-Bruning teaches that the anti-corrosive mixture is composed of three components Al, A2, and A3, with an optional component A4 (id. ,r,r 6-14, and 35). The anticorrosive mixture may be used by itself to protect coils of steel or aluminum or it may be blended with a coating (id. ,r,r 39-40). The mixture may be blended with organic solvent coatings or aqueous media coatings (id. ,r 40). The coatings are formed on the coils of steel or aluminum sheets and may be cured (id. ,r 41 ). In contrast, JP '5 89 teaches forming a water soluble complex that emits phosphoric acid ion in an aqueous solution to maintain the proper quantity of ions in the solution (JP '589, ,r,r 16, 22, and 27). JP '589 teaches using the water soluble complex in water systems where a metal part is exposed to an aqueous solution and tends to corrode (id. ,r 2). A corrosion 4 Appeal2017-010010 Application 12/742,558 inhibitor is added to the aqueous solution to prevent corrosion by reacting the metal ion with a corrosion inhibitor to form an insoluble compound on the metal (id. ,r,r 2-3). JP '550 teaches an anti-corrosive for sealed cooling water systems such as the cooling system of an internal combustion engine (Translation 1 ). JP '550 teaches adding the anti-corrosive components are added to a water system (Translation 2). Hwa teaches placing the anti-corrosives in aqueous solutions to prevent metal corrosion (Hwa col. 4, 11. 30-35, 51-56). Hwa teaches that the anti-corrosive compound is added usually to radiator coolant, water treatment hydraulic liquid, antifreeze, heat transfer medium, and petroleum well treatment (id. at col. 1, 11. 65-68, col. 2, 1. 1). Hwa teaches that the compounds are blended with any well-known scale inhibitors or dispersants (id. at col. 1, 11. 11-18). Each of JP '589, JP '550, and Hwa teaches placing an anticorrosive mixture or compound that is soluble in an aqueous solution or liquid that contacts a metal surface. The anticorrosive then protects the metal from corrosion by its interaction with the metal. In contrast, Hintze-Bruning teaches that the anticorrosive forms a positive coating that may be cured on a metal surface (i.e., a steel or aluminum sheet) which provides corrosion protection. Although the Examiner determines that it would have been obvious to use various compounds from JP '589, JP '550 or Hwa in Hintze- Bruning' s anti corrosive coating composition, the Examiner does not explain how such a combination would have been made in light of JP '589's, JP '550's and Hwa's compositions that are dissolved in the aqueous fluid contained within a metal vessel or compartment whereas Hintze-Bruning 5 Appeal2017-010010 Application 12/742,558 forms a curable coating composition. The Examiner finds that Hintze- Bruning discloses using aqueous media to form the coating, but that is in the context of using water as a solvent in the coating composition for the deposition of the coating on the steel or aluminum sheet (Hintze-Bruning ,r 40). The aqueous media does not remain in liquid form after the coating is formed as would seem to be required by JP '589, JP '550 and Hwa (See Hintze-Bruning ,r 91 ). The Examiner has not established that a person of ordinary skill in the art would have had a reasonable expectation of success in using JP '589's, JP '550's or Hwa's compounds that dissolve in the solution contained in the vessel and interact with the metal of the vessel to protect it with Hintze-Bruning' s curable coating that is applied to a steel or aluminum sheet to form a discrete coating. The Examiner does not specifically address Appellants' arguments drawn to lack of reasonable expectation of success given the different anticorrosive techniques of the applied prior art. On this record, we reverse the Examiner's 35 U.S.C. Â§ 103 rejections of claims 1-3 as listed above. DECISION The Examiner's decision is reversed. ORDER REVERSED 6