Ex Parte Nienhaus et al

Patent Trial and Appeal Board

Oct 17, 2017

12667966 (P.T.A.B. Oct. 17, 2017)

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.
12/667,966 05/04/2010 Egbert Nienhaus BCM0065
(PAT0001381US01)
2373
48394 7590 10/19/2017
SFRVTT T A WHTTNFY T T C EXAMINER
33 WOOD AVE SOUTH
SUITE 830
LEONARD, MICHAEL L
ISELIN, NJ 08830 ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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
j escobar @ 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 EGBERT NIENHAUS, BERNHARD LETTMAN,
KLAUS-UDO REIZE, and JOSEF RADEMACHER
Appeal 2017-000413
Application 12/667,966
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., 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’
rejection of claims 1—5, 8, 13, and 17—24. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a spot blender composition. Claim 1 is
illustrative:
1. A spot blender composition for one- and two-component
clearcoat materials comprising
at least one di- or polyisocyanate compound in a
concentration of 2-30 wt%,
at least one organic solvent,
Appeal 2017-000413
Application 12/667,966
wherein the spot blender composition is binder free,
wherein said binder free spot blender composition is devoid of
a hydroxyl functional compound, and wherein film formation of
the spot blender does not occur until after the spot blender is
applied to one or more clearcoat materials.
The References
Duecoffre US 5,739,216 Apr. 14, 1998
Zander US 2003/0119979 A1 June 26, 2003
Stropp US 7,491,419 B2 Feb. 17,2009
The Rejections
The claims stand rejected as follows: claims 1—5, 8, 13, and 17—24
under 35U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, claims 1—5, 8, 13, and 24 under 35 U.S.C. § 103
over Duecoffre, claim 17 under 35 U.S.C. § 103 over Duecoffre in view of
Zander and claims 18—23 under 35 U.S.C. § 103 over Duecoffre in view of
Stropp.
OPINION
We affirm the rejection under 35 U.S.C. § 112, first paragraph, and
reverse the rejections under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 112, first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991)).
2
Appeal 2017-000413
Application 12/667,966
The Appellants’ independent claims (1 and 20) require that “film
formation of the spot blender does not occur until after the spot blender is
applied to one or more clearcoat materials.”
The Appellants argue that “[bjecause binders are not present in the
instant [spot blender] composition, it is simply not possible for the
compositions to undergo film formation until a curing step is carried out.
Thus, this is a feature that would inherently exist in the composition, and
would be readily apparent to a person of ordinary skill in the art, even if the
exact wording of the claims is not present in the specification” (Br. 7).
The Appellants appear to be correct that the claimed binderless di- or
polyisocyanate/organic solvent spot blender composition requires a curing
step to undergo film formation. It does not appear, however, that to undergo
film formation the binderless spot blender composition must be applied to
one or more clearcoat materials. It appears that formation of a spot blender
composition film can be effected by applying the composition to a material
other than a clearcoat material, such as a layer of polyol. Thus, the
Appellants have not established written descriptive support for the claim
requirement that film formation of the spot blender does not occur until after
the spot blender is applied to one or more clearcoat materials.
Accordingly, we affirm the rejection under 35U.S.C. § 112, first
paragraph.
3
Appeal 2017-000413
Application 12/667,966
Rejections under 35 U.S.C. § 103
We need address only the independent claims, i.e., claims 1 and 20.1
Those claims require a binder-free spot blender composition.2 To meet that
claim requirement the Examiner relies upon Duecoffre (Ans. 3, 4, 6).
Duecofffe discloses a binder composition (col. 1,11. 6—7; col. 1,1. 53 —
col. 2,1. 8).
The Examiner finds that “based on the instant specification, ‘binder-
free’ means free of hydroxyl-functional components” (Ans. 3).
The Appellants’ independent claims (1 and 20) recite that the
binder-free spot blender composition is devoid of a hydroxyl functional
compound, but the Examiner does not point out where the Appellants’
Specification indicates that a composition is binder free merely by virtue of
being devoid of a hydroxyl functional compound. To the contrary, the
Appellants’ Specification indicates that a binder-free composition is one
which lacks a component that cures to provide linking within a film
(Spec. 13:11 — 14:18).3 Thus, the Appellants’ Specification indicates that
because Duecoffre’s binder composition which, even when it contains no
hydroxyl functionality (col. 1,11. 66—67), cures to provide linking within a
1 The Examiner does not rely upon Zander or Stropp for any disclosure that
remedies the deficiency in Duecoffre as to the relevant limitation in claims 1
and 20 (Ans. 5—6).
2 In claim 20, “said binder free spot blender” lacks antecedent basis.
3 That meaning of “binder free” is consistent with the ordinary meaning of
“binder”, which is “[a] liquid component of paint that solidifies as it dries
and thereby serves to bind the pigment particles and develop adhesion to a
surface”. McGraw-Hill Dictionary of Scientific and Technical Terms 225
(McGraw-Hill, 5th ed. 1994). See also, Hackh ’s Chemical Dictionary 97
(McGraw-Hill, 4th ed. 1972) (“binder. A material used to hold solid
substances together; as, bitumen”).
4
Appeal 2017-000413
Application 12/667,966
film (col. 2,11. 9—16), it is not binder free as that term is used by the
Appellants.
The Examiner finds that “Duecoffre refers to the compositions as
binders OR coatings, therefore, the term binder is not present in the coating
composition of Duecoffre (Column 11, line 43)” (Ans. 3) and “the term
binder is an optional definition of the composition” (Ans. 7).
Duecoffre’s coating composition contains the binder composition
(col. 12,1. 42). Thus, because the binder composition is not binder free, the
coating composition is not binder free.
For the above reasons we reverse the rejections under
35U.S.C. § 103.
DECISION/ORDER
The rejection of claims 1—5, 8, 13, and 17—24 under 35 U.S.C. § 112,
first paragraph, is affirmed. The rejections under 35 U.S.C. § 103 of
claims 1—5, 8, 13, and 24 over Duecoffre, claim 17 over Duecoffre in view
of Zander, and claims 18—23 over Duecoffre in view of Stropp are reversed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
5