Ex Parte McLachlan et al

Patent Trial and Appeal Board

Jun 12, 2018

13699479 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/699,479 02/05/2013 Fiona McLachlan
141081 7590 06/12/2018
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.
16-871-WO-US 7026
EXAMINER
PARVIN!, PEGAH
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
06/12/2018 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 FIONA MCLACHLAN, PAUL JOHN
CHRISTOPHER SASADA, and ALBAN
ELROY RICHARDSON
Appeal2017-008289
Application 13/699,479
Technology Center 1700
Before TERRY J. OWENS, RAEL YNN P. GUEST, and
JANEE. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 24--39. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an aqueous liquid colorant composition.
Claim 24 is illustrative:
24. An aqueous liquid colorant composition having a volatile
organic content up to 50 g/1 and suitable for coloring aqueous or
solvent-borne architectural coatings and base paints, the
composition comprising, based on the total weight of the
composition:
Appeal2017-008289
Application 13/699,479
i) from 2 to 22% of a non-volatile organic liquid having a
vapor pressure up to 1.3 N/m2 at 25°C;
ii) from 2 to 13% of a stabilizing agent;
iii) from 4 to 77% of a color pigment;
iv) from 0.1 to 8% of a rheology modifying clay; and
v) from 4 to 17% of an extender;
wherein the ratio of the combined weight of iii)+ iv)+ v): the
combined weight ofi) + ii) is from 0.8 to 2.75:1, and
the combined weight of the non-volatile organic liquid i) and
the stabilizing agent ii) is no greater than 28%.
Tamai
Elsamanoudi
Brandenburger
The References
us 4,062,789
us 5,340,394
WO 00/22050 Al
The Rejections
Dec. 13, 1977
Aug.23, 1994
Apr. 20, 2000
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 24--38 over Brandenburger in view of Elsamanoudi and claim 39 over
Brandenburger in view of Elsamanoudi and Tamai.
OPINION
We affirm the rejections.
Although an additional reference is applied in the rejection of
dependent claim 39, the Appellants argue the claims as a group (App. Br. 2-
6). We therefore limit our discussion to one claim, i.e., claim 24, which is
the sole independent claim. Claims 25-39 stand or fall with that claim. See
37 C.F.R. § 4I.37(c)(l)(iv) (2012).
Brandenburger discloses "a universal tinting concentrate that may be
used with organic solvent-based and latex or emulsion aqueous-based paints
and coatings" (p. 3, 11. 25-27) and "may be used to make paints with
extremely low levels of volatile organic compounds" (p. 4, 11. 4--5).
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Application 13/699,479
Brandenburger exemplifies in Example 5 an aqueous-based tinting
concentrate comprising PEG 300 (polyethylene glycol, which corresponds to
the Appellants' non-volatile organic liquid having a vapor pressure up to
1.3 N/m2 at 25QC (Spec. 3 :31 - 4: 18) and is present in an amount
(4.96 wt%) 1 within the Appellants' 2-22 wt% range), phosphate ester
surfactant (which corresponds to the Appellants' stabilizing agent
(Spec. 5:20-30) and is present in an amount (3.98 wt%) within the
Appellants' 2-13 wt% range), phthalo blue PB-15:2 (which corresponds to
the Appellants' color pigment and is present in an amount (9.2 wt%) within
the Appellants' 4--77 wt% range), and thickener ( which can be bentonite
clay corresponding to the Appellants' rheology modifying clay (Spec. 7:27 -
8:3) and is present in an amount (0.90 wt%) within the Appellants' 0.1-
8 wt% range). The combined weight percent of the PEG 300 and
surfactant (8.96 wt%) is within the Appellants' range of no greater than
28 wt%. The ratio of the combined weight of the phthalo blue PB-15:2 and
thickener ( 10 .1 wt%) ( with no contribution to the combined weight from an
extender) to the combined weight of PEG 300 and surfactant (8.96 wt%)
is 1.13, which is within the Appellants' range of 0.8 to 2.75: 1.
Brandenburger indicates that a latex or emulsion paint containing the
aqueous-based tinting concentrate can contain an extender (p. 6, 11. 18-28),
but does not disclose the amount of the extender or disclose adding the
extender to the latex or emulsion paint as a component of the aqueous-based
tinting concentrate. However, Elsamanoudi discloses an aqueous-based
zero-volatile-organic-compound tinting concentrate which is for tinting latex
1 Brandenburger's 49.6 wt% PEG 300 is a typographical error, as indicated
by dividing the PEG 300 amount (50.1 g) by the total amount (1005.23 g).
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Application 13/699,479
and other consumer pigmented paints and, for providing a desired pigment
volume content, can contain a non-opacifying extender pigment in an
amount of about 5-50 wt% on a dry solids weight basis ( col. 1, 11. 9-14;
col. 7, 11. 8-30), and Brandenburger discloses that the aqueous-based tinting
concentrate can contain additional pigment (p. 4, 11. 26-33). Use of 5 wt%
extender pigment in Brandenburger' s Example 5 's aqueous-based tinting
concentrate would provide a ratio of the combined weight of the phthalo
blue PB-15 :2, thickener and extender ( 15 .1 wt%) to the combined weight of
PEG 300 and surfactant (8.96 wt%) of 1.69, which is within the Appellants'
range of 0.8 to 2.75: 1.
The Appellants assert that "neither Elsamanoudi nor Brandenburger
provide[s] any reason why the ordinary artisan would have added extenders
to Brandenburger's composition" (App. Br. 3) and "the ordinary artisan
would have been reticent to incur the additional cost and effort of adding
another component like an extender without a predictable advantage in
doing so" (id.).
Brandenburg's disclosure that extenders were known additives in
aqueous-based latex paint (p.1, 11. 12-14) indicates that extenders had known
benefits. One of ordinary skill in the art, through no more than ordinary
creativity, would have included extenders in Brandenburger's aqueous-based
latex paint to achieve those benefits and, in view of Elsamanoudi's
disclosure of the suitability of adding aqueous-based latex paint extenders as
a component of an aqueous-based tinting concentrate (col. 7, 11. 21-30),
would have added Brandenburger's aqueous-based latex paint extenders in
the form of an additive to Brandenburger' s aqueous-based tinting
concentrate. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in
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Application 13/699,479
making an obviousness determination one "can take account of the
inferences and creative steps that a person of ordinary skill in the art would
emp 1 oy").
The Appellants point out (Reply Br. 3) that Elsamanoudi discloses
( col. 1, 1. 63 - col. 2, 1. 1 ):
The effect of concentrated pigment colorants on the paint base
can be considerable including paint viscosity changes, drying
problems, and water sensitivity problems, which are problems
frequently attributed to interaction of the ethylene glycol in the
concentrated pigmented colorants and the base paint.
Based upon that disclosure the Appellants argue (Reply Br. 3):
Elsamanoudi warns that a colorant can significantly affect the
base paint. So, the ordinary artisan would understand that the
fillers or extender pigments Elsamanoudi lists at col. 7, 11. 8-15,
may work well in Elsamanoudi's alkyl-glycoside-comprising
compositions, but whether they would work well in other
compositions is not predictable. The ordinary artisan would
have understood this and construed the omission of extenders
from Brandenburger' s description of optional additional
components as being significant and likely purposeful.
Elsamanoudi avoids the problems attributed to interaction of ethylene
glycol with base paint by using polyethylene glycol having a molecular
weight preferably between 300 and 600, such as PEG 300, instead of
ethylene glycol (col. 2, 1. 67- col. 3, 1. 13; col. 4, 11. 4--32). The function of
the alkyl polyglycoside is not to avoid the problems caused by ethylene
glycol but, rather, is to stably disperse color and extender pigments at
pigment volume concentrations above about 20% (col. 3, 11. 45-55). Thus,
Elsamanoudi would have indicated to one of ordinary skill in the art that the
extender pigments would be suitable in Brandenburger's Example S's
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PEG-300-containing aqueous-based tinting concentrate. Moreover, in view
ofElsamanoudi's disclosure that the extenders are inert (col. 7, 11. 8-12), one
of ordinary skill in the art would not have expected them, when included in
Brandenburger' s Example 5 's aqueous-based tinting concentrate, to react
with base paint.
The Appellants assert that their Specification's Examples 1--4 show
that the claimed composition provides the unexpected advantages of not
blocking tinting machine nozzles and forming a dried coating having good
hardness and water spot resistance (App. Br. 5---6; Reply Br. 4).
That assertion is not well taken because the Appellants have not
provided a side-by-side comparison, commensurate in scope with the claims,
of the claimed invention with the closest prior art and explained why the
results would have been unexpected by one of ordinary skill in the art. See
In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In
re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972).
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION
The rejections under 35 U.S.C. § 103 of claims 24--38 over
Brandenburger in view of Elsamanoudi and claim 30 over Brandenburger in
view of Elsamanoudi and Tamai are affirmed.
The Examiner's decision is affirmed.
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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
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