11587778 (B.P.A.I. Jun. 25, 2012)

Ex Parte Grevers et al

Board of Patent Appeals and InterferencesJun 25, 2012

11587778 (B.P.A.I. Jun. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/587,778 03/02/2007 Johan Justus Grevers 13877/20801 8379 26646 7590 06/25/2012 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER LACLAIR, DARCY D ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 06/25/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHAN JUSTUS GREVERS and JAN ZOER __________ Appeal 2011-002825 Application 11/587,778 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002825 Application 11/587,778 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-12. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ invention is said to be directed to a pigmented coating composition which is suitable for application to a strippable paint film for temporarily decorating a non-porous substrate (Spec. 1:5-7). Claim 1 is illustrative: 1. Aqueous paint composition comprising one or more pigments, a polyether binder having anionic stabilizing groups, and a second polyether having at least 20 wt. % of lipophilic parts, the mixing ratio of the first and second polyethers being at least 20 : 1. Appellants appeal the following rejections: 1. Claims 1-5 and 7-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhang (US 2002/0077377 A1 published June 20, 2002) in view of Müller (US 6,482,885 B1 issued Nov. 19, 2002). 2. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zhang in view of Müller and Floyd (US 5,326,808 issued July 5, 1994). ISSUE Did the Examiner reversibly err in concluding that it would have been obvious to use the chemistry used to form Müller’s polyurethane dispersion B to form the aliphatic polyurethane plasticizer of Zhang’s composition and so arrive at a subject matter of claim 1 that requires a second polyether having at least 20 wt. % of lipophilic parts? We decide this issue in the affirmative. Appeal 2011-002825 Application 11/587,778 3 FINDINGS OF FACT AND ANALYSES The Examiner’s rejection of claim 1 may be found on pages 3-6 of the Answer. The Examiner finds that Zhang teaches a strippable paint composition having all the features of claim 1, except for the anionic stabilizing groups and a second polyether having at least 20 wt.% of lipophilic parts (Ans. 3). The Examiner relies on Zhang’s plasticizer to teach the claimed second polyether. Id. The Examiner finds that Müller teaches using aqueous, anionic polyurethane dispersions which can be used as a strippable coating for the temporary protection of vehicles. Id. The Examiner finds that Müller teaches the polyurethane polyurea dispersion B is consistent with Zhang’s teaching regarding a low molecular weight plasticizer (id. at 5). The Examiner concludes that it would have been obvious “to incorporate the chemistry used for Muller’s two compounds in the resin and plasticizer polymers of Zhang, as they are consistent with Zhang’s requirements, and provide a useful peelable coating, which is consistent with Zhang’s aims.” Id. Appellants argue that one of ordinary skill in the art would not have used Müller’s hard, polyurethane dispersion B to modify Zhang’s plasticizer (App. Br. 7). Appellants contend that Müller’s hard polyurethane dispersion B is opposite of a plasticizer such that there is no reasonable expectation that Müller’s hard polyurethane dispersion B would have a plasticizing effect. Id. The preponderance of the evidence favors Appellants’ argument of nonobviousness. Appellants are correct that Müller teaches that the polyurethane dispersion B forms a coating having a “high hardness” and the Appeal 2011-002825 Application 11/587,778 4 goal of Müller is to form a polyurethane blend that forms a highly transparent and hard coating (Müller, col. 1, ll. 55-67; col. 2, ll. 15-20). A “plasticizer” is defined as “a low molecular weight polymer additive that enhances flexibility and workability and reduces stiffness and brittleness.” WILLIAM CALLISTER JR., MATERIALS SCIENCE AND ENGINEERING: AN INTRODUCTION 754 (1991). Adding flexibility and reducing stiffness are directly contrary to forming a material with high hardness as disclosed by Müller. Accordingly, we agree with Appellants that there is no reasonable expectation that using Müller’s chemistry that forms polyurethane dispersion B with high hardness to form Zhang’s plasticizer would have resulted in successfully producing a plasticizer as that term is conventionally understood. As correctly noted by Appellants, the Examiner never specifically addresses the hardness property of the material achieved by Müller’s chemistry used to form polyurethane dispersion B in the context of forming Zhang’s plasticizer (Reply Br. 3). On this record, we reverse the Examiner’s § 103 rejections over Zhang in view of Müller and Zhang in view of Müller and Floyd. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar