Ex Parte White et al

Board of Patent Appeals and Interferences

Jun 30, 2009

11481553 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIELA WHITE, HEATHER L EISAMAN, and
JOHN R. SCHNEIDER
____________

Appeal 2009-002515
Application 11/481,553
Technology Center 1700
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Decided:1 June 30, 2009
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Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002515
Application 11/481,553

Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 31-46. Pending claims 47-50 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6.2
We AFFIRM
Appellants’ invention relates to a coating composition that provides
improved mar and/or scratch resistance. (Spec. 4). Claim 31 is illustrative:
31. A powder coating composition comprising a film forming
resin comprising a polymer formed from reactants comprising:
(a) a monomer comprising:
i) a particle having a functional group, and
ii) a modifying group reacted with the functional group of the
particle, wherein the modifying group has at least one
ethylenically unsaturated moiety; and
(b) at least one additional monomer comprising a functional
group that is polymerizable with the ethylenically unsaturated
moiety of the monomer of component (a).
The following rejection is presented for our review:
Claims 31-46 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of a Kansai, Unexamined Japanese
Application 61133277A, published June 20, 1986, and Okazaki, U.S.
Patent No. 6,228,981 B1, issued May 8, 2001.

2 In this decision we have considered Appellants arguments presented in
the Appeal Brief, filed February 26, 2008.
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Appeal 2009-002515
Application 11/481,553

ISSUE
The issue presented for review is: Have Appellants shown
reversible error in the Examiner’s conclusion that it would have been
obvious to a person of ordinary skill in the art in view of the teachings of
Kansai and Okazaki to form a powder coating composition from the
aqueous dispersion coating of Kansai.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will sustain the
Examiner’s rejections.
FINDINGS OF FACT

The Examiner found that Kansai describes an aqueous emulsion of
an acrylic copolymer, colloidal silica, methacryloxypropyl
trimethoxysilane, and styrene. The Examiner found that these elements
correspond to components (a) and (b) as required by claim 31. (Ans. 3;
Kansai, pp. 4-6, abstract). The Examiner found that Kansai did not
disclose the formation of a powder coating composition from the above
components. (Ans. 3). The Examiner found that Okazaki was evidence
that it was known by persons of ordinary skill in the art to form powder
coated competitions from aqueous dispersions. (Ans. 3). Okazaki
discloses the powder coating is formulated by subjecting the aqueous
dispersion to dehydration treatment. (Okazaki, col. 8, ll. 26-31). The
Examiner concluded that the desire to obtain a coating with low volatile
organic content and reduce air emissions during application would have
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Application 11/481,553

provided the motivation to a person of ordinary skill in the art to form a
powder coating composition from the aqueous emulsion of Kansai.
(Examiner’ Official Notice, Ans. 4, and Specification, p. 1, ll. 24-27).

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
is obvious, the question to be asked is whether the improvement of the
claim is more than the predictable use of prior art elements according to
their established functions. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
341(2007). The analysis need not seek out precise teachings directed to
the specific subject matter of the claim, for it is proper to take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ. Id. at 417-418.
Where the rejection is based on a combination of references, the test
for obviousness is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d
413, 425 (CCPA 1981).

ANALYSIS
Appellants do not present separate arguments for claims 31-46.
(Br. 3). Accordingly, in assessing Appellant’s arguments, we will limit our
discussion to independent claim 31.
Appellants have not argued that the Examiner's findings and official
notice are in error. Rather, Appellants contend that Kansai discloses the
solids content and viscosity range are critical features of a coating
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Application 11/481,553

composition required to solve the problem of forming a thin rustproof film
on plated wire. (App. Br. 5). Appellants state “[s]uch a modification
would take the solids fraction concentration and viscosity of the Kansai
composition well outside Kansai’s stated critical ranges. Indeed, according
to Kansai, to make such a modification would render the coating
composition described therein unsatisfactory for its intended purpose-to
form a thin (2-10 µm) rustproof film on plated wire.” (App. Br. 6).
Appellants’ arguments are unavailing for reasons set forth by the
Examiner (Ans. 5-6). The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants failed
to explain why a person of ordinary skill in the art would not have
reasonably expected that the aqueous dispersions of Kansai would have
been unsuitable for the dehydration techniques of Okazaki in view of the
combined teachings of the references. Appellants also have not asserted
that powder coatings comprising an acrylic copolymer, colloidal silica,
methacryloxypropyl trimethoxysilane, and styrene, Kansai’s required
components, would have been unsuitable for forming a thin rustproof film
on plated wire. Appellants further have not established unexpected results
for and co-extensive in scope with the claimed subject matter over the
combined teachings of the references to rebut the Examiner’s rejection.
See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On appeal
to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
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Application 11/481,553

facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
Conclusions of Law
For the above stated reasons, Appellants have failed to show
reversible error in the Examiner’s conclusion that that it would have been
obvious to a person of ordinary skill in the art in view of the teachings of
Kansai and Okazaki to form a powder coating composition from the
aqueous dispersion coating as required by claim 31.
ORDER
The rejections of claims 31-46 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)(v).
AFFIRMED

tc

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