Ex Parte Oravitz et al

Board of Patent Appeals and Interferences

Aug 21, 2012

11246466 (B.P.A.I. Aug. 21, 2012)

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.
11/246,466 10/07/2005 Jeffrey Oravitz 2069A1 5501
7590 08/22/2012
PPG Industries, Inc.
Law Department
One PPG Place
Pittsburgh, PA 15272
EXAMINER
RIPA, BRYAN D
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
08/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY ORAVITZ, WILLIAM A. ESSARY,
MICHAEL J. ZIEGLER, and RONALD R. AMBROSE
____________

Appeal 2011-004935
Application 11/246,466
Technology Center 1700
____________

Before HUBERT C. LORIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004935
Application 11/246,466

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-4, 6, and 8-17. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

Claim 1 is illustrative of the claimed subject matter:
1. A method for electro coating a substantially uncoated
surface of a full panel easy-open end comprising electrodepositing on the
end an electrodepositable coating, wherein the coating comprises acrylic and
a phenolic crosslinker, and the crosslinker comprises at least 30 weight
percent of the coating, with weight percent based on total solids weight.

The Examiner maintains, and the Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) claims 1-4, 6, 8-11 and 14 as unpatentable over Landauer (U.S.
Patent 3,847,786 issued November 12, 1974) with evidence from Cudzik in
combination with Ambrose (U.S. 2004/0132895 A1 published July 8, 2004),
with evidence from Seiler (U.S. Patent 4,303,488, issued December 1,
1981);
2) claims 12 and 13 as unpatentable over the combined prior art of
Landauer and Ambrose “as applied to claims 1, 10 and 11”1 (App. Br. 2;
Ans. 10), further in in view of Patel (U.S. Patent 4,751,256 issued June 14,
1988); and
3) claims 15 and 16 as unpatentable over the combined prior art of

1 We interpret this rejection as including the evidence from Cudzik and
Seiler as these references were included in the rejection of claims 1, 10 and
11.
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Application 11/246,466

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Landauer and Ambrose “as applied to claim 14”2 (App. Br. 2; Ans. 11),
further in in view of Schultz; and
4) claim 17 as unpatentable over the combined prior art of Landauer
and Ambrose “as applied to claim 14”3 (App. Br. 3; Ans. 12), further in view
of Jenkins.
ANALYSIS
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
After thorough review of the respective positions provided by
Appellants and the Examiner, we AFFIRM the § 103(a) rejections on appeal
for essentially the reasons presented by the Examiner, including the
Response to Argument section (Ans., mailed Nov. 9, 2010). We add the
following primarily for emphasis.
Appellants’ main argument that the claimed method is nonobvious
because the applied prior art does not disclose or suggest the minimum
amounts of phenolic crosslinker of “at least 30% weight percent” required
by claim 1, or “at least 50 weight percent” as required by claim 8, or “at
least 60 weight percent” as recited in claim 9 (App. Br. 3-5) is unavailing as
it fails to consider the prior art as a whole. The law is replete with cases in
which the difference between the claimed invention and the prior art is some

2 We interpret this rejection as including the evidence from Cudzik and
Seiler as these references were included in the rejection of claim 14.
3 We interpret this rejection as including the evidence from Cudzik and
Seiler as these references were included in the rejection of claim 14.
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range or other variable within the claims. It is well settled that, generally
speaking, it would have been obvious for an artisan with ordinary skill to
develop workable or even optimum ranges for result-effective parameters. In
re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990); In re Boesch, 617 F.2d
272, 276 (CCPA 1980). These cases have consistently held that the
Appellants must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants have not provided any credible evidence or persuasive
technical reasoning to refute the Examiner’s reasonable determination that
the amount of crosslinker was a known result effective variable, as shown in
Ambrose and further evidenced by Seiler (e.g., Ans. 6; 17; generally App.
Br. Reply Br.).
Notably, as pointed out by the Examiner, the amount of nitrogen (or
phenolic) crossslinker in Seiler “ordinarily . . . rang[es] from 5% to 50%”,
with the “exact amount dictated primarily by the final properties desired”
and “can be determined by one skilled in the art” (Seiler, col. 11; ll. 52-57;
e.g., Answer 17). Ambrose similarly may use a phenolic crosslinker (e.g.,
Ans. 5, Ambrose, para. [0026]).
The Examiner’s determination that the amounts and principles
discussed with respect to the nitrogen crosslinker of Seiler apply similarly to
the use of the alternative phenolic crosslinker discussed in Seiler (Seiler, col.
11, ll. 5-10), as also used in Ambrose, is also reasonable.
Since the Examiner has established a reasonable basis to conclude
that the claimed invention would have been obvious, as here, the burden
shifts to the Appellants to rebut the prima facie case by providing evidence
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of unexpected results, based on comparisons with the closest prior art and
commensurate in scope with the claimed subject matter, or a showing that
the prior art teaches away from the claimed invention in any material
respect. See e.g., In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003);
and In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
Appellants’ mere conclusory statement in the Reply Brief that they
have discovered “unique results” when using the recited weight percentages
of phenolic crosslinker (Reply Br. 2) falls far short of meeting this burden.
See also, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007)
(“any superior property must be unexpected to be considered as evidence of
non-obviousness.”).
We also determine that a preponderance of the evidence of record
supports the Examiner’s rejection of separately argued claim 4 (which
recites that the coating is epoxy free), as well as the Examiner’s rejections
listed as 2 to 4 above. Appellants’ arguments with respect to dependent
claim 4, and rejections 2 to 4 are not persuasive for the reasons articulated
by the Examiner (Ans. 17- 20).
Accordingly, we affirm all of the § 103 rejections on appeal.
We affirm the Examiner’s decision to reject all of the pending claims.
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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