Ex Parte Lavalaye et al

Patent Trial and Appeal Board

Sep 14, 2018

14380293 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/380,293 08/21/2014 Jorn Lavalaye
48394 7590 09/18/2018
SERVILLA WHITNEY LLC
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
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.
BCM0019
(PAT0001647US02)
1080
EXAMINER
TRAN,THAOT
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@dsiplaw.com
jescobar@dsiplaw.com
lmurphy@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORN LAV ALA YE, CARMEN KUNSZT, and
NORBERT LOW
Appeal2017-009401
Application 14/3 80,293
Technology Center 1700
Before RAEL YNN P. GUEST, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In our Decision we refer to the Substitute Specification filed August 21,
2014 ("Spec."), the Final Office Action appealed from dated September 14,
2016 ("Final Act."), the Appeal Brief filed February 14, 2017 ("Appeal
Br."), the Examiner's Answer dated May 2, 2017 ("Ans.") and the Reply
Brief filed June 22, 2017 ("Reply Br.").
2 Appellant is Applicant, BASF Coatings GmbH, which according to the
Appeal Brief, is also the real party in interest. Appeal Br. 3.
Appeal2017-009401
Application 14/380,293
STATEMENT OF THE CASE
The subject matter on appeal relates to a pigmented coating material
and a process for producing a multi-coat paint system using the pigmented
coating material. Spec. 1. In particular, "[ t ]he present invention relates to
pigmented coating materials comprising specific solvents." Id. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A solvent-based pigmented coating composition
compnsmg
(A) at least one binder comprising at least one acrylate
polymer, polyurethane polymer, or polyester,
(B) at least one crosslinking agent selected from the group
of blocked polyisocyanates and amino resins,
( C) at least one pigment, and
(D) at least one organic solvent selected from the group of
alkyl acetates or alkyl monoglycol ethers, wherein alkyl is n-
pentyl or n-hexyl, wherein the solids content of the coating
composition is at least 35% by weight.
Claims Appendix in Support of Brief on Appeal, filed March 15, 2017
("Claims App'x") 2.
REJECTIONS
The Examiner maintains the following rejections:
A. Claim 1-19 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Low3 in view of December. 4 Final Act.
2.
B. Claim 1-19 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over December in view of Low. Id. at 4.
3 Low et al., US 2012/0034468 Al, published February 9, 2012 ("Low").
4 December et al., US 2011/0097482 Al, published April 28, 2011
("December").
2
Appeal2017-009401
Application 14/380,293
Appellant seeks our review of Rejections A and B. See generally
Appeal Br. Appellant argues rejections A and B separately, and argue
claims 1-19 together and then claims 18 and 19 separately. See id. 9, 11.
However, because we affirm Rejection Bas applied to claims 1-17, we need
not address the Examiner's alternate Rejection A with respect to these
claims. Therefore, consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1 (Rejection B)
and 18 (Rejections A and B), and all other claims stand or fall together with
claims 1 ( claims 2-1 7) and 18 ( claim 19).
OPINION
Rejection B- Obviousness (claims 1-19)
1. Claim 1
The Examiner rejects claims 1-19 as unpatentable over December (as
the primary reference) in view of Low. Final Act. 4. The Examiner finds
that December describes all aspects of the claims, including the organic
solvent recited in the claims, except that December fails to disclose the
claimed solids content of at least 35% by weight of the basecoat
composition. But, the Examiner finds that Low describes a similar basecoat
composition having a solids content of at least 35 wt%. Id. at 5. The
Examiner reasons that the skilled artisan would have modified the basecoat
of December to include the solids concentration of Low "in order to have a
coating composition with improved sag control properties." Id. The
Examiner explains that "it is well known that sag is caused by excess flow
and that sagging can be reduced or prevented by raising the viscosity and
that thicker coatings are less likely to sag." Ans. 9-10. Because December
3
Appeal2017-009401
Application 14/380,293
describes a coating having "good flow and high solids," the Examiner
determines that improved sag properties are the natural consequence of the
basecoat of December. Id. at 10. And, the Examiner also explains that
"Low discloses that a composition having a high solids content would have a
low solvent content that provides better environmental protection; and a high
solids content also provides good flow and maintains high consistency of
color (paragraphs 0005 and 0025)." Id.
Appellant argues that the Examiner's motivation to combine
December and Low must fail because neither December nor Low "attribute[]
solids content to sag control properties." Appeal Br. 13. As a result, "there
is no technical basis with a rational underpinning to combine the references
in this way." Id. Appellant further asserts that the Examiner has provided
no evidence that "sag control" is well known or that "thicker coatings are
less likely to sag." Reply Br. 3.
We agree with Appellant that the Examiner's reason to combine
December and Low because of a desire to control sag is not supported by the
record. "[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
However, sag control was not the Examiner's sole basis for
combining the teachings of December and Low. Rather, the Examiner
additionally determined that the skilled artisan would have had reason to
make the proposed combination because compositions having high solids
concentrations are known to "provide[] better environmental protection" in
4
Appeal2017-009401
Application 14/380,293
addition to providing for good flow and maintenance of high consistency of
color. Ans. 10; see also e.g., Low ,r 5 ("[fJor reasons of environmental
protection, furthermore, there is a need to provide coating compositions
having a lower and lower solvent content and hence a higher and higher
solids content") and ,r 25 ("the advantages achieved by means of the known
high-solids basecoat and clearcoat materials ... such as good flow, low bit
count, and high consistency of hue"). Appellant does not address nor
dispute these additional findings and conclusions by the Examiner and
therefore, Appellant's argument fails to identify a reversible error in the
Examiner's rejection.
Appellant also urges that the use of the particular organic solvents
claimed yields unexpected results in that a thinner basecoat material may be
used yet still maintain a desirable coating surface when a clearcoat is
applied. Appeal Br. 11, 14. In particular, Appellant states that "[t]he
'addition of an organic solvent selected from the group of the alkyl acetates
or alkyl glycol ethers with alkyl= n-pentyl or n-hexyl' resulted in the
formation of multicoat paint systems having leveling (CF value) that is
significantly better than those systems without these specific solvents
added." Id. at 11.
Appellant's argument does not convince us of reversible error by the
Examiner. The burden rests with Appellant to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of the
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080
5
Appeal2017-009401
Application 14/380,293
(CCPA 1972) ("the burden of showing unexpected results rests on he who
asserts them").
Here, Appellant provides comparative and inventive results for
multicoat paint systems holding all variables constant except for the organic
solvent used. Spec. 41--44, Tables 1-3. The inventive paint systems
correspond to examples F-6, F-7, F-10, and F-11, each using one of the four
solvents enumerated in claim 1. Id. As reflected in experimental data,
Appellant's evidence shows improved results are obtained when using the
claimed solvents, including hexyl acetate ( corresponding to multicoat system
F-7) when compared to multicoat systems not using the claimed solvents.
See Spec. 41 (Table 1), 44 (Table 3). While Appellant's evidence of
nonobviousness speaks to the criticality of the particular solvent systems
employed, hexyl acetate, the solvent used in example F-7, is expressly
taught by December. December ,r 49. Appellant's showing does not
compare the inventive paint system examples to the paint system of the
closest prior art (December). Thus, Appellant's showing is insufficient
evidence of nonobviousness with respect to December.
The data relied upon by Appellant also provides no comparison data
for solids content outside of the range recited in the claim. Nor does the
evidence support a finding that the good coating property resulting from a
high solids content, as recited in the claims, would have been an unexpected
property, since Low teaches good flow, low bit count, and consistency of
hue (i.e., good coating properties) when using a high solids content.
Accordingly, Appellant's evidence is not probative and is insufficient to
rebut the prima facie case of obviousness established by the Examiner as
applied to claims 1-17. We address claims 18 and 19 separately below.
6
Appeal2017-009401
Application 14/380,293
2. Claims 18 and 19
Claims 18 and 19 depend from independent claims 1 and 1 7
respectively and require that "the at least one organic solvent is n-pentyl
acetate, n-pentyl glycol, or n-hexyl glycol." Claims App'x 4. Appellant
contends that the Examiner "fails to point to any location in December or
Low regarding the use of n-pentyl acetate, n-pentyl glycol, or n-hexyl glycol
in their compositions," and therefore has failed to establish a prima facie
case of obviousness. Appeal Br. 13.
On this record, we agree with Appellant. To satisfy its initial burden
of production, the Examiner must "notify the applicant ... [by] stating the
reasons for such rejection, or objection or requirement, together with such
information and references as may be useful in judging the propriety of
continuing the prosecution of his application." 35 U.S.C. § 312; see also In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (same). Here, in rejecting
claims 18 and 19, the Examiner makes no additional findings, relevant to the
particular organic solvents claimed----other than the single solvent discussed
for claim 1 (i.e., hexyl acetate) and not recited in claims 18 and 19. See
Final Act. 4---6. As Appellant notes (Appeal Br. 13), nowhere in the
Examiner's rejection of claims 1 through 19 does the Examiner make any
finding that either of December or Low teaches use of n-pentyl acetate, n-
pentyl glycol, or n-hexyl glycol in their compositions as required by claims
18 and 19. As a result, the Examiner has failed to establish a prima facie
case of obviousness.
Therefore, we cannot sustain the Examiner's rejection of claims 18
and 19. Because Rejection A, as applied to claims 18 and 19, is similarly
7
Appeal2017-009401
Application 14/380,293
flawed (see e.g., Final Act. 2--4; Appeal Br. 11 ), we also cannot sustain
Rejection A as applied to claims 18 and 19.
CONCLUSION
Appellant failed to identify a reversible error in the Examiner's
rejection of claims 1-17 under 35 U.S.C. § 103(a) as unpatentable over
December in view of Low.
Appellant identified a reversible error in the Examiner's rejection of
claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable over December
in view of Low (as well as Low in view of December).
DECISION
For the above reasons, the Examiner's rejection of claims 1-17 is
affirmed. The Examiner's rejection of claims 18 and 19 is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
8