Ex Parte Fuhry et al

Patent Trial and Appeal Board

Mar 23, 2016

13101366 (P.T.A.B. Mar. 23, 2016)

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.
13/101,366 05/05/2011 Mary Ann M. Fuhry 10007493A1 4854
24959 7590 03/23/2016
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
CHEN, VIVIAN
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/23/2016 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 MARY ANN FUHRY, JOHN M. DUDIK,
and CHRISTOPHER P. KURTZ
____________

Appeal 2014-007599
Application 13/101,366
Technology Center 1700
____________
Before PETER F. KRATZ, GEORGE C. BEST, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal the Examiner’s final rejection of claims 1–4 and
6–20. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.

1 Appellants identify PPG Industries Ohio, Inc. as the real party in interest.
Br. 1.
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Application 13/101,366
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The Claimed Invention
Appellants’ disclosure relates to (1) a non-aqueous dispersion
comprising a dispersion polymerization reaction product of an ethylenically
unsaturated monomer and a polyester stabilizer, and an organic solvent, and
(2) use of the disclosed non-aqueous dispersion in coatings. Spec. ¶ 1;
Abstract. Independent claim 1 is representative of the claims on appeal and
is reproduced below from the Claims Appendix to the Appeal Brief (Br. 6):
1. A non-aqueous dispersion comprising a) the dispersion
polymerization reaction product of an ethylenically unsaturated
monomer and a polyester stabilizer, and b) an organic solvent,
wherein the ethylenically unsaturated monomer is substantially
free of amine-functional monomers.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Babjak et al., US 6,344,502 B1 Feb. 5, 2002
(hereinafter “Babjak”)

Ambrose et al., US 2004/0132895 A1 July 8, 2004
(hereinafter “Ambrose”)

Cooke et al., US 8,142,858 B2 Mar. 27, 2012
(hereinafter “Cooke”)
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The Rejections
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1–4 and 6–20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ambrose.
2. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ambrose as applied to claim 14, and in further view of
Cooke.
OPINION3
1. Rejection of Claims 1–4 and 6–20 under 35 U.S.C. § 103(a)
over Ambrose
Appellants argue claims 1–4 and 6–20 as a group. We, therefore,
select claim 1 as representative of this group, and the remaining claims stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013). The Examiner
finds that Ambrose teaches all of claim 1’s limitations. Ans. 2–4.
The Examiner finds Ambrose discloses a coating composition
comprising the reaction product of an ethylenically unsaturated monomer
(e.g., (meth)acrylic acid, (meth)acrylates, etc.) and a polyester, wherein the
polyester and monomer are dispersed in and react in an organic (i.e., non-
aqueous) solvent, wherein the polyester is treated and/or selected to provide

2 The Examiner has withdrawn the rejection of claims 11 and 12 under
35 U.S.C. § 112, second paragraph, as indefinite, and the rejection of claims
1–4, 6–14, and 16–18 under 35 U.S.C. § 103(a) as unpatentable over Babjak.
Adv. Act. 2, 4. Appellants cancelled claim 5. App. Br. 6.
3 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.
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Application 13/101,366
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compatibility with the ethylenically unsaturated components in order to
prevent phase separation of the polyester and acrylic components. Ans. 2
(citing Ambrose ¶¶ 8, 16–17, 20, 22, 23).
The Examiner further finds that Ambrose teaches that “[a]mine-
functional monomers are not required” in its coating composition and that
the “coating composition further contains additives (e.g., pigments, waxes,
etc.).” Ans. 2. The Examiner also finds that because Ambrose’s coating
compositions contain additives (e.g., waxes, pigments such as titanium
dioxide, silica, etc.), which are typically insoluble in the disclosed organic
solvents, the disclosed coating compositions constitute “non-aqueous
dispersions,” as recited in claim 1. Id. at 3–4. Additionally, the Examiner
finds Ambrose teaches that “the coating composition is bisphenol A free and
is suitable for coating substrates to form packaging materials (e.g., metal
cans, etc.).” Adv. Act. 3 (citing Ambrose ¶¶ 9, 30–34).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time the invention to use bisphenol A-free
coating compositions as disclosed in Ambrose to produce coated packaging
materials for food applications. Ans. 3.
Appellants argue that “Ambrose does not teach a dispersion
comprising particles of any size dispersed in a continuous phase” because
Ambrose does not explicitly use the “word ‘particle’” and because the “word
‘dispersion’ occurs only in the examples when referencing a particular wax
dispersion.” App. Br. 2.
We are not persuaded by Appellants’ arguments. That Ambrose does
not explicitly use the term “particle” is unpersuasive because in comparing a
prior art reference to the claimed invention, the important comparison is of
the substance of the claim, under its broadest reasonable interpretation in
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light of the Specification, and the substance of the relied-upon disclosure in
the prior art reference. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)
(holding that a reference does not have to satisfy an ipsissimis verbis test to
disclose a claimed element).
Moreover, as the Examiner found (Ans. 6), although Ambrose does
not explicitly use the term “particle,” the presence of particles in the
disclosed coating compositions is implicitly taught by Ambrose in light of
its teaching that the disclosed coating composition allows for the presence of
conventional additives such as pigments. Ambrose ¶ 28. In particular, as
the Examiner further found (Ans. 6), pigments would have been generally
understood by those skilled in the art to refer to colorants which are
insoluble in the medium (e.g., liquid solvent) in which they are contained
and typically in particulate or colloidal form. See Ambrose ¶¶ 27 (disclosing
“suitable” solvents), 28 (disclosing “conventional additives such as
pigments”), 29 (referring to certain coating composition components as
“Solids” and explaining that these solids would have been understood by
those skilled in the art to include “other additives and the like”). As the
Examiner also found (Ans. 6) and Appellants do not challenge, it would
have been known in the art that pigments typically used in coating
applications include inorganic pigments (e.g., titanium dioxide, silica, zinc
oxide, calcium carbonate, carbon black, etc.) which are particulate in form
and insoluble in most conventional coating solvents. We discern no
reversible error in the Examiner’s findings in this regard.
Appellants’ argument that Ambrose uses the term “dispersion” only
when referring to certain examples is unpersuasive because Ambrose’s
teachings are not limited to the disclosures in its examples. See In re Mills,
470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the
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disclosure of specific working examples.”). Appellants’ argument is also
unpersuasive because, as noted by the Examiner (Ans. 7), it is based on
limitations (i.e., dispersed polymer particles) that do not appear in the claim.
See In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
Additionally, as the Examiner found (Ans. 2), Ambrose does teach a
“non-aqueous dispersion,” inasmuch as claimed by Appellants. Ambrose
¶¶ 8, 16–17, 20, 22, 23, 27–30. As noted by the Examiner (Ans. 7), the
claims, as presently drafted, do not require that the dispersed phase in the
claimed dispersion be composed solely of the polymerization reaction
product or any type of polymeric material. Indeed, as further noted by the
Examiner (id.), claim 1 requires only that the recited polymerization product
be present in the claimed non-aqueous dispersion. In fact, none of the
claims specify the form of the dispersed phase or which particles in the
composition constitute the dispersed phase. The claims also do not preclude
an insoluble particle (i.e., a pigment) dispersed in a non-aqueous liquid
phase from being the dispersed phase, as the Examiner found Ambrose
teaches.
Considering the teachings of the prior art and claim 1’s limitations
under the broadest reasonable interpretation in light of the Specification, we
discern no reversible error in the Examiner’s finding that Ambrose discloses
a “non-aqueous dispersion,” as recited in the claim.
Appellants argue that Ambrose fails to teach the claimed dispersion
because “the word ‘polymerization’ appears only in the context of
‘copolymerization’ of an acrylic and polyester.” App. Br. 2. This argument
is not well-taken because, as discussed above, a reference does not have to
satisfy an “ipsissimis verbis test” to teach a claimed element. In re Gleave,
560 F.3d at 1334. Moreover, for the reasons previously discussed above, the
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Examiner’s finding that Ambrose teaches all the limitations of claim 1,
including the “non-aqueous dispersion” limitation, is supported by sufficient
evidence and based on sound technical reasoning. Ambrose ¶¶ 8, 16–17, 20,
22, 23, and 27–30. Appellants’ argument, without more, is insufficient to
establish reversible error in the Examiner’s obviousness analysis and
findings in this regard.
Appellants argue that the Examiner “fails to make a prima facie case
of obviousness” because the “Examiner has provided no evidence
whatsoever that a dispersion polymerization reaction is occurring.” App. Br.
2–3.
We do not find this argument persuasive. As the Examiner found
(Ans. 9), the use of the term “dispersion polymerization” in claim 1 is a
product-by-process limitation and thus, is not further limiting insofar as the
structure of the claimed product. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir.
1985). Accordingly, the patentability of Appellants’ claimed product does
not depend on its method of production, i.e., via dispersion polymerization,
as Appellants argue. Instead, as the Examiner found (Ans. 2–4), because
Ambrose teaches all the limitations of the claimed product, the burden shifts
to Appellants to show an unobvious difference between the claimed product
and the prior art product. In re Marosi, 710 F.2d 798, 802 (Fed. Cir. 1993).
Appellants, however, have failed to meet their burden. As noted by
the Examiner (Ans. 10), Appellants do not identify evidence sufficient to
show that the dispersion polymerization of the ethylenically unsaturated
monomer and polyester stabilizer, as claimed, results in a materially
different product from polymerization by other known polymerization
methods (e.g., solution polymerization, etc.) disclosed in the prior art.
Appellants’ argument that the “Examiner has provided no evidence
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whatsoever that a dispersion polymerization reaction is occurring” (App. Br.
2–3), without more, is insufficient to rebut the Examiner’s findings in this
regard.
Appellants argue Ambrose also fails to teach the claimed dispersion
because “Ambrose teaches a solution” and a “graft copolymer in a solution
is not a discrete particle dispersed in a separate continuous phase.” App. Br.
3. Appellants further argue that Ambrose fails to disclose a dispersion
because it “teaches that the polyester and acrylic copolymer may be
combined together in a coating without phase separation.” Id.
We are not persuaded by these arguments. Appellants’ arguments are
misplaced. As the Examiner found (Ans. 11) and contrary to Appellants’
argument, Ambrose teaches that the polymerization between the acrylic
component and the polyester component takes place within a liquid medium
and that some of the ungrafted polyester component and ungrafted acrylic
component remains in the liquid medium. Ambrose ¶¶ 22, 23. There is no
specific statement or teaching in Ambrose that the residual, ungrafted
components are or must remain fully dissolved in solution, as Appellants’
argument suggests.
Moreover, as the Examiner points outs (Ans. 7) and previously
discussed above, the claims do not require that the dispersed phase of the
claimed non-aqueous dispersion consist solely of the recited polymerization
reaction product (i.e., grafted or ungrafted copolymer). As the Examiner
found (id. at 2, 6, 7), Ambrose’s coating compositions are disclosed as the
claimed non-aqueous dispersions due to the presence of insoluble
components (e.g., pigments in particle form) dispersed in a continuous non-
aqueous liquid phase. Ambrose ¶¶ 8, 16–17, 20, 22, 23, and 27–30. In light
of Ambrose’s teachings and the Examiner’s findings in this regard,
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Appellants’ arguments regarding whether Ambrose teaches a solution and
whether a graft copolymer is completely dissolved in the organic solvents
disclosed in the Ambrose’s coating compositions are of no moment because
they do not sufficiently address the Examiner’s rejection. Additionally, the
portions of Ambrose that Appellants identify in the Appeal Brief (i.e.,
Ambrose ¶¶ 18, 22) as support for these arguments are unpersuasive and
insufficient to establish reversible error in the Examiner’s findings in this
regard.
Appellants argue Ambrose does not teach all of claim 1’s limitations
because “there is no teaching or suggestion whatsoever that the polyester of
Ambrose is a stabilizer.” App. Br. 3.
We do not find this argument persuasive. As noted by the Examiner
(Ans. 15), the claims do not recite what property or characteristic or state is
being stabilized by the polyester. Indeed, as further noted by the Examiner
(id.), the claims require only that the polyester provide some type of
stabilizing function. Considering the term “stabilizer” under the broadest
reasonable interpretation in light of the Specification and Ambrose’s
disclosure regarding the function and role of the polyester component in its
coating composition, we discern no reversible error in the Examiner’s
rationale and finding (id. at 2, 14–17) that Ambrose teaches claim 1’s
“polyester stabilizer” limitation. As the Examiner found (Ans. 16), Ambrose
teaches that a particular type of polyester can be used in the coating
compositions to prevent incompatibility between certain of the coating
compositions’ components. Ambrose ¶¶ 14–16, 18, and 20, 22. As the
Examiner further found (Ans. 16), Ambrose also teaches that because the
polyester component may be functionalized and/or modified in order to
provide compatibility between the polyester and the acrylic components of
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the coating composition, it provides a stabilizing function to the
composition. Ambrose ¶¶ 18–22. Appellants do not identify sufficient
evidence to adequately rebut the Examiner’s analysis and findings in this
regard.
Appellants’ argument that “one skilled in the art will understand what
is meant by the term ‘non-aqueous dispersion’ and ‘stabilizer’ in the context
of a non-aqueous dispersion” (Reply Br. 2), without more, is insufficient to
establish reversible error in the Examiner’s finding that Ambrose teaches
claim 1’s “polyester stabilizer” limitation.
Accordingly, we affirm the Examiner’s rejection of claims 1–4 and 6–
20 under 35 U.S.C. § 103(a) as unpatentable over Ambrose.
2. Rejection of Claims 15 and 16 under 35 U.S.C. § 103(a)
over Ambrose as applied to Claim 14, and in further view of
Cooke
Appellants argue claims 15 and 16 as a group. Accordingly, we select
claim 15 as representative of this group, and claim 16 stands or falls with
claim 15. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Claim 15 depends from claim
14 and adds the limitation: “wherein the crosslinker comprises phenolic.”
App. Br. 7.
The Examiner finds that Ambrose as applied to claim 14 teaches all
the limitations of claim 15, except “wherein the crosslinker comprises
phenolic.” Ans. 5. The Examiner relies on Cooke for teaching that
limitation. Id. In particular, the Examiner finds Cooke teaches that it was
“well known in the art to use crosslinkers (e.g., phenolic resin) in typical
amounts of 5−30 wt% in bisphenol A-free polyester-based coatings for
metal containers in order to provide durability and chemical resistance.” Id.
(citing Cooke, col. 8, l. 17–col. 9, l. 32).
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The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time the invention “to use effective amounts of
known phenolic crosslinkers as disclosed in [Cooke] in the coatings of
[Ambrose] in order to obtain food-safe coatings with the desired flexibility
and durability required for a given end-use.” Ans. 5.
Appellants argue that the Examiner’s rejection of claim 15 based on
the combination of Ambrose and Cooke should be reversed because “Cooke
does not overcome the shortcomings of Ambrose.” App. Br. 4–5. In
particular, Appellants argue that Cooke “fails to teach the formation of a
dispersion polymerization reaction product as presently claimed.” Id. at 5.
We do not find this argument persuasive because Appellants fail to
identify sufficient evidence or provide an adequate technical explanation to
support it, and attorney argument cannot take the place of evidence. See In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ argument
regarding Cooke’s teaching is also misplaced because, as discussed above,
the Examiner does not rely on Cooke for teaching “the formation of a
dispersion polymerization reaction product,” as Appellants’ argument
suggests.
Moreover, the Examiner’s findings regarding the combined teachings
Ambrose and Cooke and rationale for why one of ordinary skill would
combine the teachings of these references to arrive at Appellants’ claimed
invention are well-supported by the record and based on sound technical
reasoning. Ambrose ¶¶ 8, 16–17, 20, 22, 23; Cooke, col. 8, l. 17–col. 9, l.
32. Appellants’ argument, without more, is insufficient to establish
reversible error in the Examiner’s findings and conclusion in this regard.
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Accordingly, we affirm the Examiner’s rejection of claims 15 and 16
under 35 U.S.C. § 103(a) as unpatentable over the combination of Ambrose
and Cooke.
DECISION/ORDER
The Examiner’s rejections of claims 1–4 and 6–20 under 35 U.S.C.
§ 103(a) 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