Ex Parte Kiefer-Liptak et al

Patent Trial and Appeal Board

Nov 20, 2014

12781083 (P.T.A.B. Nov. 20, 2014)

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.
12/781,083 05/17/2010 Laura Kiefer-Liptak 1787A1D2 2061
24959 7590 11/21/2014
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
EGWIM, KELECHI CHIDI
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
11/21/2014 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 LAURA KIEFER-LIPTAK, JOHN M. DUDIK,
RONALD R. AMBROSE, KEVIN C. OLSON,
and PADMANABHAN SUNDARARAMAN
____________

Appeal 2013-001165
Application 12/781,083
Technology Center 1700
____________

Before CHARLES F. WARREN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-15, 17, and 18 under 35 U.S.C. § 102(b) as
anticipated by Zuckert (GB 1,424,266, published Feb. 11, 1976). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
Appeal 2013-001165
Application 12/781,083

2
We AFFIRM.
The sole independent claim 1 is illustrative (emphasis added):
1. A composition suitable for coating foods cans
comprising:
(a) a hydroxy terminated polyester;
(b) an acrylic copolymer;
(c) a crosslinker; and
(d) a solvent,
wherein the polyester and acrylic copolymer are blended
together, and the acrylic copolymer does not have pendant
hydroxy groups.
Appellants only present arguments directed to independent claim 1
(Br. 3, 4). Accordingly, all of the claims stand or fall together.
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner’s finding that the claimed subject matter of
representative claim 1 is anticipated within the meaning of § 102 in view of
the applied prior art of Zuckert. Accordingly, we will sustain all of the
Examiner’s rejection for essentially those reasons expressed in the Answer,
including the Examiner’s Response to Argument section, and we add the
following primarily for emphasis.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
Appeal 2013-001165
Application 12/781,083

3
(Fed. Cir. 2007) “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
The only limitation in dispute is whether Zuckert’s alkyd component
encompasses “a polyester” as recited in claim 1 (Br. 3, 4). The Examiner
explains that an alkyd is a polyester, as even evidenced by Appellants’
Exhibit A “Kirk-Othmer Encyclopedia of Chemical Technology” (Ans. 4).
Appellants do not specifically dispute that an alkyd is a polyester, but rather
argue that one of skill in the art would have “understood . . . that the present
polyesters do not encompass alkyd resins” based on their Specification
paragraphs [0008] through [0013] (Br. 3) and the statement in Kirk-Othmer
that “in the coatings field the term polyester is reserved for ‘oil-free
polyesters.’” This argument is not persuasive of reversible error. As
pointed out by the Examiner, Appellants’ Specification states that the
polyester component is “usually” prepared with “aliphatic or aromatic
dibasic acids and diols, although the invention is not so limited” (Spec. para
[0008]; Ans. 4). Zuckert states his invention is “suitable for use as a vehicle
in coating compositions” (Zuckert e.g., p. 1:9-11; Ans. 3). On this record,
Appellants do not sufficiently dispute the Examiner’s position that
Appellants’ “disclosure does not exclude alkyds from the useful types of
polyesters in appellant’s invention” (Ans. 4).
Thus, a preponderance of the evidence supports the Examiner’s
position (Ans. generally). Notably, Appellants have not directed our
attention to any persuasive reasoning or credible evidence to establish that
the Examiner’s interpretation is unreasonable, nor to any portion of the
Appeal 2013-001165
Application 12/781,083

4
Specification that limits the definition of “polyester” to exclude the type of
polyester found in Zuckert as pointed out by the Examiner.
Accordingly, we affirm the Examiner’s anticipation rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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