Ex Parte Millero et al

Patent Trial and Appeal Board

Aug 8, 2016

13770273 (P.T.A.B. Aug. 8, 2016)

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.
13/770,273 02/19/2013 Edward R. Millero JR. 2057P1C3 9999
24959 7590 08/08/2016
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
FEELY, MICHAEL J
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
08/08/2016 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 EDWARD R. MILLERO, JR., JOHN R. SCHNEIDER,
CHENG-HUNG HUNG, and NOEL R. VANIER1
____________

Appeal 2015-003442
Application 13/770,273
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s maintained final rejection of claims 1–9 and 12.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1According to Appellants, the Real Party in Interest is PPG Industries Ohio,
Inc. Appeal Brief filed September 17, 2014 (“Br.”), 1.
2 The Examiner objects to claims 10 and 11 as being dependent on a rejected
base claim, but indicates that claims 10 and 11 would be allowable if
rewritten in independent form to include all of the limitations of the base and
intervening claims. Final Office Action entered May 20, 2014, (“Final
Act.”), 9.
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Application 13/770,273

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CLAIMED SUBJECT MATTER
Appellants’ claimed invention is generally directed to a coating
composition that include corrosion resisting particles. Spec. Abstract.
Claim 1 is illustrative:
1. A coating composition comprising:
(a) a thermosetting film-forming resin comprising epoxy
groups;
(b) particles comprising magnesium oxide and having an
average primary particle size of no more than 100 nanometers;
and
(c) a curing agent comprising amine and/or amide
groups, wherein the curing agent and epoxy groups crosslink at
ambient temperature.

Br. 5 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
Claims 1, 2, 5–9, and 12 over Ng et al. (US 6,667,360 B1, issued
December 23, 2003) and Wesp (US 3,578,548, issued May 11, 1971); and
Claims 3 and 4 over Ng, Wesp, and Yadav et al. (US 6,569,397 B1,
issued May 27, 2003).
DISCUSSION
Having carefully reviewed the Examiner’s rejections in light of
arguments advanced by Appellants in their Appeal Brief, we are not
persuaded that the Examiner has erred reversibly in concluding that claims
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1–9 and 12 are unpatentable for obviousness. We add the following for
emphasis.3
Rejection of claims 1, 2, 5–9, and 12 as obvious over Ng and Wesp
Appellants argue claims 1, 2, 5–9, and 12 as a group. Br. 2–4. We
find claim 1 representative. Claims 2, 5–9, and 12—subject to the same
ground of rejection—stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Ng discloses coating compositions that
comprise a thermosetting film-forming resin comprising epoxy groups,
particles having a size of 1–100 nm, and a curing agent that includes
aromatic amine groups. Ans. 2–3. The Examiner finds that Ng discloses
that suitable particles for use in the coating compositions include magnesium
oxide nanoparticles, and suitable curing agents include 1,3-phenylene-
diamine. Ans. 3–4. The Examiner acknowledges that Ng fails to explicitly
disclose that the curing agents used in the coating compositions crosslink
with epoxy groups at ambient temperatures. Ans. 4. To account for this
silence in Ng, the Examiner relies on Wesp’s disclosure that m-phenylene-
diamine (l, 3-phenylenediamine) cures (crosslinks) epoxy resins at room
temperature, thus, evidencing that the 1,3-phenylenediamine curing agent
disclosed in Ng would at least partially crosslink epoxy groups at ambient
temperature. Ans. 4, 8.
Appellants argue that 1,3-phenylenediamine “is an aromatic epoxy
that would be expected to cure slower than an aliphatic amine, and may not

3 We refer to the Final Office Action entered May 20, 2014, the Appeal
Brief filed September 17, 2014, and the Examiner’s Answer mailed
November 26, 2014 (“Ans.”).
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even cure at room temperature in a reasonable amount of time.” Br. 3.
Appellants further point out that Ng’s experimental examples describe using
1,3-phenylenediamine to cure an epoxy resin by heating to 75°C for 2.5
hours and then to 120°C for 2.5 hours and contend that this indicates that
1,3-phenylenediamine cannot cure epoxy resins at room temperature. Br. 3.
As the Examiner correctly finds, however, Wesp discloses that 1,3-
phenylenediamine is a “room temperature curing agent,” and Ng discloses
use of 1,3-phenylenediamine to cure an epoxy resin. Ans. 4; Wesp col. 8,
ll. 62–70; Ng col. 6, ll. 5–9. Further, the instant Specification defines a
“curing agent” as a material that promotes “cure” of composition
components, and defines “cure” as at least partial crosslinking of any
crosslinkable components of a composition. Spec. ¶ 91. Thus, claim 1 only
requires the curing agent and epoxy groups to partially crosslink—or to
crosslink to some degree—at ambient temperature. In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of
patent applications, “the 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.”).
Accordingly, the Examiner provides a reasonable factual basis for
determining that the 1,3-phenylenediamine curing agent disclosed in Ng
would at least partially crosslink epoxy groups at ambient temperature, as
recited in claim 1. In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a
compound and all of its properties are inseparable”); In re Spada, 911 F.2d
705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its
properties are inseparable); see also In re Kubin, 561 F.3d 1351, 1357 (Fed.
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Cir. 2009) (“Even if no prior art of record explicitly discusses the
[limitation], [applicants’] application itself instructs that [the limitation] is
not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed
invention].”).
Appellants do not direct us to any evidence demonstrating that 1,3-
phenylenediamine could not at least partially cure epoxy resins at ambient
temperature (Br. 2–4), and Appellants’ mere arguments to that effect cannot
take the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); see also In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). Therefore, we agree with the Examiner that the
combined disclosures of Ng and Wesp reasonably would have led one of
ordinary skill in the art to a coating composition comprising an epoxy resin
and a curing agent comprising amine groups in which the curing agent is
capable of at least partially crosslinking with the epoxy groups at ambient
temperature, as recited in claim 1.
Appellants further argue that Ng discloses an extensive list of particles
suitable for use in the coating compositions described in the reference, and
contend that while the list does include magnesium oxide particles, Ng does
not include any teaching or suggestion that would have led one of skill in the
art to select magnesium oxide nanoparticles from the list of suitable
particles. Br. 3.
Appellants’ argument is unpersuasive of error. As the Examiner
determines, one of ordinary skill in the art seeking to produce a coating
composition comprising an epoxy resin and an aromatic amine curing agent
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would have found it obvious to utilize any of the nanoparticles disclosed in
Ng as suitable for use in such a coating composition. Ans. 3–4. Ng’s
disclosures of a multitude of effective nanoparticles does not render any
particular nanoparticle less obvious, and Ng is available for all that it would
have taught to a person of ordinary skill in the art at the time of the
invention. Ng col. 3, l. 57–col. 4, l. 17. Merck & Co., Inc. v. Biocraft Labs,
874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference “discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985) (An obviousness rejection was affirmed in light of a prior art teaching
that “hydrated zeolites will work” in detergent formulations, even though
“the inventors selected the zeolites of the claims from among ‘thousands’ of
compounds.”).
Appellants further argue that Ng discloses incorporating filler
particles into a coating composition comprising an epoxy polymer resin to
improve the mechanical properties of the polymer, and does not teach or
suggest that magnesium oxide particles would impart corrosion resistance to
the coating composition. Br. 3–4. Appellants contend that one of ordinary
skill in the art seeking to impart corrosion resistance to a coating therefore
would not have had a reason—or would not have found it obvious—to select
magnesium oxide from the extensive list of suitable nanoparticles disclosed
in Ng. Id.
Appellants’ argument is without persuasive merit because it fails to
show error in the Examiner’s determination that one of ordinary skill in the
art at the time of the invention would have been led to a coating composition
comprising an epoxy resin, an aromatic amine curing agent, and the
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nanoparticles disclosed in Ng as suitable for use in such coating
compositions, including magnesium oxide nanoparticles. Ans. 9. It is of no
consequence that the motivation or reason to combine the references in the
prior art is not the same as that contemplated by Appellants, i.e., providing
corrosion resistance to the coating composition described in the
Specification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”);
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not
require that the references be combined for the reasons contemplated by the
inventor.”).
Accordingly, under these circumstances, it cannot be said that
Appellants have identified reversible error in the Examiner’s determination
that the preponderance of the evidence weighs in favor of obviousness of the
claimed subject matter within the meaning of 35 U.S.C. § 103(a). In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Therefore, we sustain the
rejection of claims 1, 2, 5–9, and 12 under § 103(a).
Rejection of claims 3 and 4 as obvious over Ng, Wesp, and Yadav
Appellants rely on their contentions that the Examiner erred in
rejecting the base claim, independent claim 1, from which these claims
depend, and argue that Yadav fails to remedy the deficiencies of Ng and
Wesp. Br. 4. Because we are unpersuaded of reversible error in the
Examiner’s rejection of claim 1, Appellants’ position as to this ground of
rejection is without merit. Accordingly, we sustain the rejection of claims 3
and 4 under 35 U.S.C. § 103(a).
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DECISION
In view of the foregoing, the Examiner’s rejection of claims 1–9 and
12 under 35 U.S.C. § 103(a) 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)(1).

AFFIRMED