Ex Parte Hickl et al

Patent Trial and Appeal Board

Jun 20, 2018

12994941 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/994,941 01/06/2011 Markus Hickl
141081 7590 06/20/2018
MCDONNELL BOEHNEN HULBERT & BERGH OFF LLP/ AkzoNobel
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
17-329-WO-US 6930
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
MAIL DATE DELIVERY MODE
06/20/2018 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 MARKUS HICKL and ALEXANDRA STEFFENS
Appeal2016-007984
Application 12/994 ,941
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek review under 35 U.S.C. § 134 from the Examiner's
maintained rejection under 35 U.S.C. § 103(a) of claims 1, 4, 5, 8, 9, and
11-13. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to a method of
coating coils that includes applying an aqueous primer coating composition,
1 Appellants identify BASF Coatings GmbH as the real party in interest.
Appeal Br. 3.
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Application 12/994,941
drying the film formed from the primer coating, applying a topcoat film, and
jointly curing the primer coating film and the topcoat film. Specification
filed November 29, 2010 ("Spec."), Abstract.
Claim I-the sole independent claim-is representative.
1. A method of coating a metal coil, comprising:
(1) applying an aqueous primer coating composition (B)
to at least one metal surface of the coil to form an
integrated pretreatment film, the aqueous primer
coating composition (B) comprising:
at least one crosslinkable binder system (BM)
comprising one or more components or
constituents,
at least one filler component (BF),
at least one corrosion control component (BK), and
volatile constituents (BL), wherein the aqueous
primer coating composition (B) comprises
an organic solvent content of not more than
5% by weight, based on the volatile
constituents (BL) of the coating
composition (B),
(2) drying the integrated pretreatment film formed from
the primer coating composition (B) at a peak metal
temperature (PMT) between 40 and I20°C,
(3) applying a topcoat film (D) to the integrated
pretreatment film dried as per step (2), and
(4) jointly curing the films of coating composition (B)
and topcoat (D) at a peak metal temperature (PMT)
between 150 and 260°C,
wherein the drying of step (2) of the method is carried
out at a peak metal temperature (PMT) below a
DMA onset temperature for reaction of the
crosslinkable constituents of the binder system
(BM), and
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wherein the binder system (BM) comprises at least one
water-soluble or water-dispersible binder based on
polyesters and/or polyurethanes; and
wherein the at least one water-soluble or water-
dispersible binder based on polyesters and/or
polyurethanes is an aqueous dispersion having a
residual organic solvent content of not more than 1
% by weight, based on the volatile constituents of
the dispersion.
Appeal Brief filed January 4, 2016 ("Appeal Br."), 25.
REJECTIONS
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
Claims 1, 4, 5, 8, 9, and 11-13 over Gonzalez2 and Laskin3;
Claims 1, 4, 5, 8, 9, and 11-13 over Gonzalez, Laskin, and Kohli4;
Claims 1, 4, 5, 8, and 13 over Gessner5 and Laskin;
Claim 9 over Gessner, Laskin, and Kohli; and
Claims 11 and 12 over Gessner, Laskin, and Gonzalez.
DISCUSSION6
On this record, having reviewed the maintained grounds of rejection
set forth by the Examiner, Appellants' arguments, and the Examiner's
2 Gonzalez et al., WO 2006/08879 Al, published August 17, 2006; the
Examiner relies on US 2008/0260959 Al, published October 23, 2008, as an
English language equivalent, which use is not disputed.
3 Laskin et al., US 4,103,050, issued July 25, 1978.
4 Kohli et al., US 2003/0116269 Al, published June 26, 2003.
5 Gessner et al., US 6,437, 036 Bl, issued August 20, 2002.
6 In this discussion, we refer to the Specification, the Final Office Action
dated June 1, 2015 ("Final Act."), the Advisory Action dated September 16,
2015 ("Adv. Act."), the Appeal Brief, and the Examiner's Answer dated
June 16, 2016 ("Ans.").
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Application 12/994,941
response, we are persuaded of reversible error in the rejection of the claims
over Gonzalez and Laskin alone, but are unpersuaded of reversible error in
the rejection of the claims over Gonzalez, Laskin, and Kohli, over Gessner
and Laskin, over Gessner, Laskin, and Kohli, and over Gessner, Laskin, and
Gonzalez.
For any ground of rejection, "the [E]xaminer bears the initial
burden ... of presenting a prima facie case of unpatentability." In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We consider the record to
determine whether Appellant has identified reversible error in the
Examiner's rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("it has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections").
Gonzalez and Laskin - Claims 1, 4, 5, 8, 9, and 11-13
The Examiner relies on Laskin as essentially disclosing a method
according to claim 1, but for "fail[ing] to disclose the organic solvent as a
volatile component" and in the amounts set forth in the claim, and as to the
temperature ranges for drying and for curing. Ans. 2--4. As to the recited
drying and curing temperature ranges, the Examiner relies on the overlap
between Laskin's disclosed temperature ranges and those claimed in
determining these are prima facie obvious. Id. at 3--4.
As to the amount of organic solvent included in the primer coating
composition, the Examiner relies on Gonzalez as "disclos[ing] mixing water
with less than 20% organic solvent mixed with water" and concludes that,
"taking the references collectively, it would have been obvious to have
include[ d] a small amount of organic solvent to reap the benefits as outlined
by [Gonzalez]." Id. at 3 (citing Gonzalez ,r,r 201-207). The Examiner's
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reasoning is that "where the claimed ranges 'overlap or lie' inside ranges
disclosed by prior art[,] a prima facie case of obviousness exists." Id. The
Examiner further determines that "the disclosure in [paragraph] 205 that the
solvent is a solvent/water mixture that is at least 80% by weight water
suggests a result effectiveness of the amount of organic solvent" and that
"the amount of each solvent in the solvent mixture is a result effective
variable due to the discussion at [paragraph] 206 of Gonzalez and its
suggestion to one of ordinary skill in the art." Id. at 14; see also Advisory
Act. 3. The Examiner cites, in particular, "the statement 'the amount of the
solvents is selected by the skilled worker in accordance with the desired
properties of the formulation and with the desired application method."'
Ans. 14 ( quoting Gonzalez ,r 206).
As to the residual amount of organic solvent, the Examiner relies on
"Laskin [as] disclos[ing] removing the residual solvent through distilling ...
result[ing] in a residual solvent range as claimed." Id. at 3. In Laskin's
Example 1, cited by the Examiner, methylethylketone (MEK) is used as a
solvent during formation of a polyester-polyurethane polymer is removed by
distillation following addition of 2-butoxy ethanol- I solvent, "leaving a 67%
weight solids dispersion of the polyester-polyurethane." Laskin, col. 4,
11. 50-68. The Examiner disregards the 2-butoxy ethanol-I solvent
remaining in the dispersion in reasoning that the "residual organic solvent"
level of "not more than 1 %" is met. Ans. 12-13.
Appellants contest the Examiner's determination that the cited prior
art, including Gonzalez's disclosure of less than 20% organic solvent with
water, renders obvious the recited "organic solvent content of not more than
5%" (Appeal Br. 11, 12), that Gonzalez's paragraphs 205 and 206 establish
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that the organic solvent content is a result effective variable (id. at 11-12),
and the Examiner's understanding of the phrase "residual organic solvent"
that allows the finding that Laskin's removal ofMEK solvent meets the
limitation of "not more than 1 %" without regard to the added 2-butoxy
ethanol-I solvent (id. at 9-11).
Appellants' contentions highlight deficiencies in the Examiner's
rejection, particularly as to the residual organic solvent of not more than 1 %.
First, we find wholly unreasonable the interpretation that the phrase
"residual organic solvent" fails to exclude the addition of any amount of a
further organic solvent. Turning then to the disclosed use of an
encompassing range of 20% or less organic solvent itself rendering the use
of not more than 1 % organic solvent obvious or that it is established that the
amount of organic solvent is a result effective variable, on this record, we
find neither of the Examiner's positions well-founded. While "[s]electing a
narrow range from within a somewhat broader range disclosed in a prior art
reference is no less obvious than identifying a range that simply overlaps a
disclosed range," In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003),
the disclosed range of 0-20% relied on is not merely "somewhat broader"
and may be so broad that it fails to render the narrower range prima facie
obvious, a possibility recognized in Peterson, id. at 1330, n.1, and argued by
Appellants (Appeal Br. 12), which argument is not squarely addressed by the
Examiner (see generally Final Act.; Advisory Act.; Ans.). As to organic
solvent content being a result effective variable, we find the cited portions of
Gonzalez and the Examiner's reasoning, which fails to identify any
particular result in referring to reciting generally "desired properties of the
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formulation and with the desired application method," insufficient. Ans. 14;
see also Advisory Act. 3.
For the reasons set forth above, we reverse the rejection of claims 1, 4,
5, 8, 9, and 11-13 over the combination of Gonzalez and Laskin.
We tum next to Appellants' further arguments as to unexpected
results (Appeal Br. 15), raised in response to the rejection over Gonzalez and
Laskin, but also relied on in response to the Examiner's rejection in further
view of Kohli (id. at 17).
Appellants contend unexpected results support the patentability of the
claims, identifying the results as "significantly higher solvent resistance,
drastically improved corrosion resistance, improved T-bend behavior, and
improved tape test performance." Id. at 15 (citing Spec. 36, Table 1).
Appellants argue that the single example disclosed is sufficient support
because "the claims identify a specific class of binders, water-soluble or
water-dispersible binder based on polyesters and/or polyurethanes, and a
specific application - coating of metal coils." Id.
The proffered results are inadequate to rebut a prima facie case. To
establish patentability, Appellants must show that the claimed invention
imparts unexpected results and that the unexpected results are reasonably
commensurate with the scope of protection sought by the claim on appeal.
In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants direct us to no basis for the results being unexpected. See
generally Appeal Br. Further, the contention that the single example
disclosed is sufficient support is not sufficient to bear Appellants' burden.
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In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument ... cannot take the place of evidence.").
Appellants also provide separate arguments as to claims 8 and 9,
which we have considered, but find unpersuasive of reversible error. 7
Claim 8 requires that "the aqueous primer coating composition further
comprises at least one crosslinker (V) having a residual solvent content of
less than 1.0% by weight, based on the volatile constituents of the
crosslinker (V)." Appeal Br. 26. Appellants do not contest that the
Examiner relies on Laskin's inclusion ofHMMM as the crosslinker and that
the Examiner reasons "such would have less than 1 % residual solvent." Id.
at 13 ( quoting July 18, 2013, Final Office Action, 5---6 (incorporated by
reference into Final Office Action, see Final Act. 6)) see also Ans. 4--5. As
further explained by the Examiner, "[t]he crosslinker (HMMM) itself cannot
have a residual organic solvent" and, thus, the crosslinker "does not have a
residuary organic solvent within the range as claimed." Ans. 16.
Appellants' arguments fail to rebut the Examiner's position that HMMM
itself, as a compound, would have no residual solvent and, thus, necessarily
meets the recited limitation of "having a residual solvent content of less than
1.0% by weight, based on the volatile constituents of the crosslinker."
Claim 9 requires that the "corrosion control component (BK)
comprises at least one combination of organic and inorganic corrosion
inhibitors" and that these "hav[ e] residual solvent contents of less than 1 %
by weight based on the volatile constituents of the corrosion control
7 These arguments are relied on by Appellants only as to the rejection over
Gonzalez and Laskin, nonetheless, we address them at our discretion as we
would have likewise found them unpersuasive as to the rejection over
Gonzalez, Laskin, and Kohli.
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components." Appeal Br. 26. The Examiner relies on Laskin as disclosing
any number of corrosion components, and on Gonzalez as disclosing both
organic and inorganic corrosion components, and determines that "using a
combination would have been obvious ... to reap the benefit of increasing
or adjusting the corrosion protection of the primer." Ans. 5 (citing Gonzalez
,r,r 198-200); see also id. at 17-18; Gonzalez, Abstract. As to these included
"organic and inorganic corrosion inhibitors" having less than 1 % by weight
residual solvent contents, the Examiner again relies on the cited prior art,
particularly Laskin, "disclos[ing] the pigments [i.e., the corrosion inhibitors]
alone and [determining] such would have less than 1 % residual solvent." Id.
at 5. Laskin discloses the use of "corrosion-inhibiting pigment." Laskin,
Abstract; see also id. at col. 3, 11. 45-52. Gonzalez discloses organic
corrosion inhibitors, including in formulations that are solvent-free, which
reasonably indicates the disclosed organic corrosion preventatives do not
themselves include solvent. Gonzalez ,r 201. Gonzalez further discloses
that "inorganic corrosion preventatives" can also be included with its
disclosed organic corrosion preventative. Id. ,r 200; see also Appeal Br. 14.
Appellants argue, inter alia, that "[i]t is not established by [the] Office
that there is an expectation of success of adding organic corrosion
preventatives to Laskin in light of Laskin's synergistic compositions using
only inorganic pigments" and also that "[ n ]either Laskin nor Gonzalez
provides a teaching or suggestion of a combination of organic and inorganic
corrosion inhibitors, ... having residual solvent contents of less than 1 % by
weight, based on the volatile constituents of the corrosion control
components." Appeal Br. 14. Appellants further argue that "Gonzalez
provides no guidance as to the desirability of such a combination." Id. at 15.
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Appellants' argument as to addition of an organic pigment to Laskin's
synergistic composition is unpersuasive of reversible error because Gonzalez
teaches the use of inorganic and organic corrosion inhibitors, which
Appellants do not contest, and the claims do not require any synergistic
effect. As such, the arguments fail both because they do not address the
rejection as set forth by the Examiner and because they are grounded on
characteristics that are not claim limitations. As to the residual solvent
content, the arguments fail for the same reasons set forth above as to residual
solvent content in the crosslinker, that is, the Examiner has reasonably
determined that the corrosion inhibitor compounds do not themselves
include solvent and, thus, meet the claim limitation of no more than 1 %
residual solvent, as calculated on any basis.
Gonzalez, Laskin, and Kohli- Claims 1, 4, 5, 8, 9, and 11-13
The Examiner remedies the deficiency as to the rejection over
Gonzalez and Laskin alone in relying on Kohli as teaching that the amount
of organic solvents is a result effective variable. Ans. 6. The Examiner
relies on Kohli, which relates to aqueous primer compositions for metallic
substrates, for disclosing primers with low organic solvent content (1-5% or
less), disclosing that organic solvents are undesirable and unnecessary, and
that using less than 1-5% organic solvent provides environmental benefits.
Id. ( citing Kohli, Abstract, ,r 100).
Appellants do not contest that Kohli discloses a primer that contains
"little or no volatile organic solvent" (Appeal Br. 16 ( citing Kohli ,r 3) ), but
contends that it "refers to a primer composition whose binder is an epoxy
[0087-92] and has no disclosure of ... binder based on polyesters
and/polyurethanes having a residual organic solvent content of not more
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than 1 % by weight" and that it "also fails to identify residual organic solvent
content as a results-effective variable for the purposes of producing coatings
on metal coils that exhibit very good level and overcoatability" (id. at 17).
As highlighted by the Examiner, Kohli does disclose the use of
polyesters and/or polyurethanes, and is not limited to epoxy compositions.
Ans. 20 ( citing Kohli ,r 45); see also Advisory Act. 4; Kohli ,r 28 ( discussing
the use of both epoxy and unsaturated polyester resins as the thermosetting
resin in primer compositions). Appellants' argument fails to address the
broad disclosure of Kohli, relied on by the Examiner, in its narrow focus on
an exemplary embodiment and is, thus, unpersuasive of reversible error.
See, e.g., In re Lamberti, 545 F.2d F.2d 747, 750 (CCPA 1976) (A
reference's disclosure is not limited to its preferred embodiments, but is
available for all that it discloses and suggests to one of ordinary skill in the
art.).
Appellants proffer no cogent argument that the organic solvent
content is not taught by Kohli to be a result effective variable, but only that
it is not identified as such for "producing coatings on metal coils that exhibit
very good level and overcoatability." Appeal Br. 17. On this record,
obtaining the relied on environmental benefit when using low amounts of
organic solvent in the process, as set forth by the Examiner, however, is
sufficient to establish organic solvent content is a result effective variable.
See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A
recognition in the prior art that a property [ or a result] is affected by the
variable is sufficient to find the variable result-effective."). The contended
"very good level and overcoatability" are not claim limitations. The desired
results in varying the result-effective variable, similarly, need not be the
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same as those sought by the inventors, so long as they also lead to the
claimed subject matter. Cf Alcon Research, Ltd. v. Apotex Inc., 687 F.3d
1362, 1368 (Fed. Cir. 2012) ("We have repeatedly held that the motivation
to modify a prior art reference to arrive at the claimed invention need not be
the same motivation that the patentee had.").
For the reasons above, we are unpersuaded of error in the Examiner's
rejection of claims 1, 4, 5, 8, 9, and 11-13 over the combination of
Gonzalez, Laskin, and Kohli.
Gessner and Laskin - Claims 1, 4, 5, 8, and 13
The Examiner relies on Gessner in the main as disclosing the method
of claim 1. Gessner is directed to "a thermosetting aqueous primer
composition." Gessner, Abstract. As to step (1 ), Gessner is cited as
disclosing a method of applying an aqueous primer coating composition
comprising a polyurethane based cross linking component, a filler
component, a corrosion control component, and volatile constituents,
wherein the organic solvent content is not more than 5% by weight. Ans. 7
(citing Gessner, col. 7, 1. 50-col. 8, 1. 56, col. 9, 1. 63---col. 10, 1. 33 (Example
1)). As to "step (2) drying the integrated pretreatment film formed from the
primer coating composition ... , (3) applying a topcoat film ... to the
[ dried] integrated pretreatment film ... , and ( 4) jointly curing the films of
coating composition ... and topcoat," the Examiner relies Gessner, column
9, lines 30-38. Id.
As to the organic solvent content, the Examiner relies on, inter alia,
Gessner' s disclosure of "reducing the volatile organic amount in the primer
[composition] to be less than 5% by weight ... or using a solvent free or
substantially solvent free dispersion" (id. at 8 (citing Gessner, col. 7, 1. 58-
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col. 8, 1. 56)). The Examiner concludes that "one of ordinary skill in the art
at the time of the invention would have found it obvious to have provided
both a primer and polyurethane dispersion with a [ volatile organic content]
as claimed to reap the benefits of reduction of [ volatile organic content] as
outlined by Gessner." Id.
As to the drying temperature, the Examiner relies on Gessner
disclosing flashing at less than the curing temperature, citing column 9, lines
39-50, and "flashing the primer and top coat without curing and thus drying
at a peak metal temperature below the onset of curing would have been
obvious." Ans. 7. The Examiner further determines that "the drying
temperature is a result effective variable, directly affecting the drying and
with the proviso that curing does not take place" and that one of ordinary
skill in the art would have "determine[ d] the drying temperature through
routine experimentation to effectively flash but prevent curing." Id. at 7-8.
The Examiner further relies on Laskin for its disclosure of "drying at 200°F
or less" and determines that "using this temperature range would have been
obvious" as the disclosed range overlaps that claimed. Id. at 9 (citing
Laskin, col. 4, 11. 23-24).
As to the curing temperature, the Examiner relies on Gessner as
disclosing curing by use of heating, including at 180°C, and determines the
range of claim 1 prima facie obvious on the basis of an overlapping range.
Id. The Examiner further relies on Laskin for its disclosure of curing "at a
peak metal temperature of (PMT) 360-470°F" and on the basis that "the
curing temperature is a known result effective variable, directly affecting the
curing." Id.
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Appellants contend the Examiner erred in his reliance on Gessner, in
combining the teachings of Gessner and Laskin, and in determining that the
temperatures for drying and curing are result effective variables (Appeal Br.
18-20), but we do not find these contentions persuasive of reversible error,
including for reasons set forth by the Examiner (Ans. 22-24).
Appellants' arguments as to Gessner focus on the "drying of step
(2) ... [being] carried out at a peak metal temperature (PMT) below a DMA
onset temperature for reaction of the crosslinkable constituents of the binder
system." Claim 1. Appellants contend that Gessner' s flash drying
conditions, "at ambient or elevated temperatures, are ... above the glass
transition temperatures of its polymeric ingredients" because Gessner' s
inventive coating "includes: a polyurethane polymer having a glass
transition temperature of 0° C or less and an acrylic polymer having a glass
transition temperature that is at least about 20°C higher than ... [that] of
polyurethane resin." Appeal Br. 19. On this basis, Appellants contend that
"Gessner fails to teach or suggest a peak metal temperature (PMT) being
below a DMA onset temperature for reaction of the crosslinkable
constituents of the binder system." Id.
Regardless of the glass transition temperatures of the polyurethane
resin and acrylic polymer used in Gessner, as set forth by the Examiner,
"Gessner discloses flashing less than the curing temperature (i.e. peak metal
temperature below the DMA onset of the reaction of the constituent binder
system)" (Ans. 22 (citing Gessner, col. 9, 11. 30-38)) and Appellants provide
neither evidence nor persuasive argument that the observed glass transition,
relied on in the argument as a DMA, results from "reaction of the
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crosslinkable constituents of the binder system" ( claim 1) (see generally
Appeal Br.).
Appellants' argument that the combination is improper is grounded on
Laskin and Gessner being "directed to the coating of metal coils" and to
"finish coating of metal substrates for the exterior of automobiles,"
respectively. Appeal Br. 19--20. Appellants contend that "[p ]eak metal
temperature is of no interest in Gessner" and that "one skilled in the art
starting with the aqueous chip-resistant primers and methods of drying and
curing of Gessner would not look to ... Laskin for information about
suitable drying and curing conditions relative to a peak metal temperature."
Id. at 20. Appellants further contend "there would be no technical basis to
operate at a temperature less than the glass transition temperatures of the
polyurethane and acrylic polymer of Gessner, which would require cooling
below 20° C, which is not practical." Id.
As explained by the Examiner, however, Gessner's teachings are not
limited to coating exterior automotive substrates, but also extend more
generally to coating metal. Ans. 23 (citing Gessner, col. 8, 11. 4--10).
Appellants also proffer no cogent argument why Gessner's teachings are not
applicable to coating a metal coil, particularly in having failed to explain
why a chip-resistant primer would not also be of interest for a metal coil. As
to peak metal temperature, there is likewise no cogent argument supported
with evidence that one of ordinary skill in the art would not look to Laskin
for its teaching as to drying and curing temperatures, including its teaching
as to peak metal temperatures. See, e.g., In re Pearson, 494 F.2d at 1405
("Attorney's argument ... cannot take the place of evidence."). As to
Gessner "requir[ing] cooling below 20° C" and to whether it is "practical"
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(Appeal Br. 20), the argument is also unpersuasive because it is grounded on
the glass transition temperatures as "the DMA onset of the reaction of the
crosslinkable constituents of the binder system" ( claim 1 ), which, as
explained above, is not sufficiently supported on this record.
As to the drying and curing temperatures being result effective
variables, Appellants contend that Gessner "would not set its processing
conditions with respect to peak metal temperature and therefore would not
optimize drying and curing conditions with respect to peak metal
temperature" and that "the drying and curing temperatures of Laskin with
respect to peak metal temperatures and the coating of coils is not informative
of the application of coatings to fabricated metal substrates according to
Gessner." Appeal Br. 20.
Appellants' arguments are unpersuasive of reversible error. Having
failed to establish the Examiner erred in combining Gessner and Laskin, as
discussed above, Appellants lack any cogent argument that the combination,
including Laskin, does not teach that the peak metal temperature is a result
effective variable. See generally id. As explained by our reviewing court,
"[a] recognition in the prior art that a property [or a result] is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
For the reasons above, we are unpersuaded of error in the Examiner's
rejection of claims 1, 4, 5, 8, and 13 over the combination of Gessner and
Laskin.
Gessner, Laskin, and Kohli - Claim 9
As discussed above, claim 9 requires that the "corrosion control
component (BK) comprises at least one combination of organic and
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inorganic corrosion inhibitors" and that these "hav[ e] residual solvent
contents of less than 1 % by weight, based on the volatile constituents of the
corrosion control components." Appeal Br. 26. The Examiner relies on
Gessner as "disclos[ing] any number of corrosion [ control] components" and
Kohli as "disclos[ing] including organic and inorganic corrosion [ control]
components ([paragraphs] 0103-0104)" and determines that "using a
combination would have been obvious in view of Kohli to reap the benefit of
increasing or adjusting the corrosion protection of the primer." Ans. 10. As
to the residual solvent content, the Examiner relies on, inter alia, Gessner as
disclosing the corrosion protection components as a compound that would
have less than 1 % residual solvent, as these do not have a residuary organic
solvent content. Id. at 10, 25.
Appellants contend that the Examiner erred in concluding that "using
a combination [ of organic and inorganic corrosion control components]
would have been obvious." Appeal Br. 21-22 (citing Final Act. 11).
Appellants argue that "[t]here is no reason for one skilled in the art starting
with Gessner to look to Kohli for suggestions of corrosion inhibitors, let
alone determining from Kohli that a combination a both organic and
inorganic inhbitors ... having residual solvent contents of less than 1 % by
weight is desired." Id. at 21-22.
On this record, we are not persuaded of reversible error because
Appellants fail to address the Examiner's factual findings and reasoning
with any cogent argument as to any error that is supported by evidence. The
aims of Gessner and Kohli contended by Appellants are not manifestly
contrary to their combination, and Appellants provide no further reason why
one of skill would not look to Kohli. Id. As to residual solvent content,
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Appellants' argument fails to address that the Examiner's determination that
the corrosion protection components, disclosed as compounds, would have
less than 1 % residual solvent, because compounds do not have a residuary
organic solvent content. Ans. 10, 25.
For the reasons above, we are unpersuaded of error in the Examiner's
rejection of claim 9 over the combination of Gessner, Laskin, and Kohli.
Gessner, Laskin, and Gonzalez - Claims 11 and 12
Claim 11 is directed to the method by which the aqueous primer
coating composition is applied-"by a forward roller coating process ( co-
directional transfer) or by a reverse roller coating process (counter-
directional transfer)"-and claim 12 adds further limitations as to the
characteristics of these processes. The Examiner finds Gessner (col. 9, 11. 1-
5) and Laskin disclose roll coating, and relies on Gonzalez (i1i1217-225) as
disclosing the particulars of the claims. Ans. 11. The Examiner determines
that "using this known coating technique would have been obvious as
providing predictable and successful results." Id.
Appellants argue that "the coating techniques for coating metal coils
according to Laskin ( and Gonzalez []) are not directly applicable for the
techniques used to coat metal substrates/objects of Gessner, which prefers
spray techniques likely because the metal substrates/objects of Gessner have
contours." Appeal Br. 23.
We find the argument without persuasive merit because it is not
disputed that Gessner does, in fact, teach roll coating (id. ( quoting Gessner,
col. 9, 11. 1-8) ), and, regardless of what process Gessner prefers for its
contoured substrates/objects, it is not disputed that Gonzalez and Laskin are
directed to metal coils (id. at 8, 9), and that both disclose roll coating an
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Application 12/994,941
aqueous primer for a metal coil (id. at 9; see also Ans. 27). As explained by
the Examiner, examples and preferred embodiments do not constitute a
teaching away from a broader disclosure and a reference may be relied upon
for all that it reasonably suggests to one of ordinary skill in the art. Ans. 27.
For the reasons above, we are unpersuaded of error in the Examiner's
rejection of claims 11 and 12 over the combination of Gessner, Laskin, and
Gonzalez.
DECISION
The rejection of claims 1, 4, 5, 8, 9, and 11-13 over Gonzalez and
Laskin is REVERSED.
The rejection of claims 1, 4, 5, 8, 9, and 11-13 over Gonzalez, Laskin,
and Kohli is AFFIRMED.
The rejection of claims 1, 4, 5, 8, and 13 over Gessner and Laskin is
AFFIRMED.
The rejection of claim 9 over Gessner, Laskin, and Kohli is
AFFIRMED.
The rejection of claims 11 and 12 over Gessner, Laskin, and Gonzalez
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)(l)(iv).
AFFIRMED
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