Ex Parte Tang et al

Patent Trial and Appeal Board

Mar 18, 2013

10895739 (P.T.A.B. Mar. 18, 2013)

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.
10/895,739 07/21/2004 INV001Robert H. Tang 1871A1 9623
7590 03/18/2013
PPG Industries, Inc.
Intellectual Property Department
One PPG Place
Pittsburgh, PA 15272
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
03/18/2013 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 ROBERT H. TANG,
ALAN E. WANG, YINGCHAO C. ZHANG,
and LOUIS J. NEHMSMANN
____________

Appeal 2011-009975
Application 10/895,739
Technology Center 1700
____________

Before RICHARD E. SCHAFER, CATHERINE Q. TIMM, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
On April 12, 2010, the Examiner finally rejected claims 1-6, 8-11, and
14 of Application 10/895,739 under 35 U.S.C. § 103(a) as obvious.
Appellants seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM, designating a portion of
our affirmance a NEW GROUND OF REJECTION.
Appeal 2011-009975
Application 10/895,739
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BACKGROUND
The ’739 application describes coating compositions that are alleged
to be particularly useful in coating glass and other ceramic substrates. Spec.
¶¶ [0002], [0003], [0008], [0009].
Claim 1 is the only independent claim in the ’739 application and is
reproduced below:
1. A curable decorative coating composition comprising at
least
one curable organic binder,
a colorant, and
a plurality of spacer particles
having an average particle diameter of at least 1
micron that are rigid at or below a first temperature
and
that soften at a second temperature at or below the
temperature at which the binder cures,
wherein
the spacer particles
comprise 5 to 50 wt. % of the composition and
have an average particle diameter approximately
the same as a thickness of an uncured coating layer
that is deposited on a substrate from the curable
composition.
(App. Br. Claims App’x 1 (paragraphing and indentation added)).
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REJECTIONS
1. The Examiner finally rejected claims 1-6, 8-10, and 14 under 35
U.S.C. § 103(a) as obvious over U.S. Patent No. 4,957,801
(“Maranci,” issued Sept. 18, 1990) in view of U.S. Patent No.
5,268,223 (“Qureshi,” issued Dec. 7, 1993) (Final Rejection
(“FR”) 4 (April 12, 2010)).
2. The Examiner finally rejected claim 11 under 35 U.S.C. § 103(a)
as obvious over Maranci in view of Qureshi and further in view of
U.S. Patent No. 4,533,715 (“Lee,” issued Aug. 6, 1985) (FR 5).
DISCUSSION
Rejection 1. Appellants argue the rejected claims as a group. We
select claim 1 as representative of this group of claims, and the other claims
in the group stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Appellants advance three arguments against the rejection of claims 1-
6, 8-10, and 14 as obvious over the combination of Maranci and Qureshi:
(1) that Maranci is not analogous art to the claimed invention, (2) that the
Examiner has not identified any teaching, suggestion, or motivation to
combine Maranci and Qureshi to arrive at the claimed invention, and (3) that
the Examiner erred in concluding that claim 1 would have been obvious to a
person of ordinary skill in the art at the time of the invention in view of the
combination of Maranci and Qureshi (App. Br. 3-4). For the reasons set
forth below, we do not find Appellants’ arguments persuasive.
First, we find that, contrary to Appellants’ assertion, Maranci is from
a technical field that is analogous to that of the claimed invention.
Appellants argue that Maranci is not analogous to the claimed
invention (App. Br. 3). The Examiner has not provided any explanation or
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4
logical basis for such a finding, which is necessary before Maranci may be
used as a part of an obviousness rejection. Rather than explaining why a
person of ordinary skill in the art would look to Maranci’s description, the
Examiner argues that the technical field to which a particular reference
belongs is irrelevant when the claims in question are directed to a
composition of matter (Ans. 8).
The Examiner misapprehends the law. While it is true that the
technical field to which a reference belongs is not relevant when a rejection
is being made pursuant to § 102, see, e.g., In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997) (“the question whether a reference is analogous art
is irrelevant to whether that reference anticipates”), the ’739 application’s
claims were rejected as obvious. Before a reference can be used to support a
rejection under § 103, the Examiner must determine whether it is available
for that purpose. “A reference qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the claimed
invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
Rather than reversing and sending the application back to the
Examiner so that Appellants’ argument be addressed on its merits, we find
that Maranci is, in fact, from an analogous art to the claimed invention.
Because we are making a new factual finding, we designate this as a new
ground of rejection under 37 C.F.R. § 41.50(b). See In re Stepan, 660 F.3d
1341, 1345 (Fed. Cir. 2011) (making and relying on factual findings and
reasoning not used by the Examiner creates a new ground of rejection).
As discussed above, a reference must be from an analogous art to be
available for use in a § 103(a) rejection. Klein, 647 F.3d at 1348. A reference
is from an analogous art if it either (1) is in Appellants’ field of endeavor or
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(2) is reasonably pertinent to the particular problem with which Appellants
were concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
In this case, we determine that Maranci qualifies as analogous art
under the first prong of the analogous art test.
We begin by identifying Appellants’ field of endeavor. To do so, we
must consider the “explanations of the invention’s subject matter in the
patent application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979); In re Deminski, 796 F.2d
436, 442 (Fed. Cir. 1992)). Appellants argue that their invention is in the
field of “decorative coating compositions” (App. Br. 4). We disagree. After
reviewing the Specification and claims in the ’739 application, we conclude
that Appellants field of endeavor is curable coating compositions. Although
we base this finding on our review of the Specification and claims of the
application in their entirety, we wish to emphasize the following points.
First, despite Appellants’ assertion that their field of endeavor is decorative
coating compositions, their claims are not so limited. The only reference to
decorative coating compositions is in claim 1’s preamble. In this case, the
Examiner determined that the preamble was not limiting (Ans. 5), and
Appellants have not challenged this claim construction on Appeal. Second,
we note that Appellants’ Specification states that “[t]he present invention is
directed to curable compositions . . . . Methods for coating ceramic
substrates using one or more curable compositions are also within the
present invention.” Spec. ¶ [0008]. Thus, even if Appellants’ claims were
limited by the preamble language, a finding that the field of endeavor is
broader than the literal scope of the claims would be consistent with the
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evidence. See Wood, 599 F.2d at 1036 (using statements in specification to
define a field of endeavor broader than literal scope of claims).
Next, we determine whether Maranci is from the same field of
endeavor as Appellants’ claimed invention. Maranci describes improved
composite materials having a discrete resin layer containing thermoplastic
beads between layers of fiber-reinforced thermosetting resin layer and
methods for making such composite materials. Maranci Abstract. These
composite materials are alleged to have improved impact resistance and
other advantageous properties. Id. at col. 2, ll. 8-10.
Appellants argue that Maranci is not analogous art because it is
related to fiber reinforced composite materials (App. Br. 3). While it is true
that Maranci describes the creation of laminated fiber reinforced composites,
Maranci describes an improved process for making such composites by
coating a prepreg with a curable coating composition comprising
thermoplastic particles and a curable resin and then laminating a plurality of
the coated prepregs. E.g., Maranci col. 2, ll. 1-10; col. 8, l. 52-col. 9, l. 2.
Maranci’s field of endeavor thus encompasses curable coating compositions,
which is the same as Appellants’ field of endeavor. Accordingly, we find
that Maranci is analogous art and is available for use in a § 103(a) rejection.
Second, the Examiner found that Maranci described every element of
claim 1 except for the inclusion of a colorant (Ans. 4). The Examiner relied
upon Qureshi as describing the incorporation of a colorant into an epoxy
resin used in fiber reinforced laminates (id.). Appellants argue that a person
of ordinary skill in the art would not have been motivated to add Qureshi’s
colorant to Maranci’s curable resin composition because Maranci’s resin
would be present only between the layers of the laminated composite and,
thus, would not be visible in the finished product (App. Br. 3-4). The
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Examiner, however, explained that a person of ordinary skill in the art would
have added a colorant to Maranci’s resin composition because Maranci
describes the use of the composition to create the prepregs themselves (Ans.
10). Because the prepregs form the outer layers of the laminate, the colored
resin can be seen in laminates created from prepregs created with a colored
resin. The Examiner did not err in finding that the prior art suggested a
reason to combine Maranci and Qureshi.
Third, Appellants argue that the combination of Maranci and Qureshi
“would not read upon the presently claimed invention,” which they
repeatedly describe as a “curable decorative coating composition” (id. at 4).
However, as discussed above, Claim 1 is not limited to such compositions
because the Examiner concluded that the recitation of that intended use in
the preamble was not limiting (Ans. 5). Appellants have not challenged this
claim construction. Claim 1, therefore, is directed to a composition of matter
that is described or suggested by the combination of Maranci and Qureshi.
We affirm the Examiner’s conclusion that claim 1 is unpatentably obvious in
view of these references.
Rejection 2. Appellants also ask us to reverse the Examiner’s
rejection of claim 11 as obvious over the combination of Maranci, Qureshi,
and Lee (e.g., App. Br. 2 (identifying claim 11 as appealed in “Status of
Claims” section); 5 (asking for reversal of the rejection of claim 11)). We
affirm this rejection.
We note that Appellants did not identify the rejection of claim 11 as
one of the “Grounds of Rejection To Be Reviewed On Appeal” (App. Br. 2).
Although Appellants technically have not presented this ground of rejection
for our review, see 37 C.F.R. §§ 41.37(c)(1)(vi) (2010), the portions of the
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Brief mentioned above provide evidence that Appellants were intending to
appeal the rejection of claim 11.
That being said, Appellants have not presented any substantive
arguments in support of reversal of this rejection. They merely seek reversal
of the rejection because claim 11 depends from claim 1 (App. Br. 5). Based
upon this statement, we infer that Appellants intended to reassert their
arguments regarding the alleged defects in the combination of Maranci and
Qureshi against the combination of Maranci, Qureshi, and Lee. As we have
already explained why those arguments are not persuasive, we also affirm
the rejection of claim 11. Because our affirmance of this rejection
incorporates our analysis of Maranci’s availability for use in a § 103(a)
rejection, we also designate this affirmance as a new ground of rejection
under 37 C.F.R. § 41.50(b).
CONCLUSION
For the reasons set forth above, we affirm the rejections claims 1-6, 8-
10, and 14 as obvious over the combination of Maranci and Qureshi. We
also affirm the rejection of claim 11 as obvious over Maranci, Qureshi, and
Lee. Because our reasoning with regard to the question of whether or not
Maranci is analogous art differs from the Examiner’s, we designate our
affirmance as involving new grounds of rejection.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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, NEW GROUND OF REJECTION
ENTERED UNDER 37 C.F.R. § 41.50(b)

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