SWINC LLC

Patent Trials and Appeals Board

May 18, 2020

2019005844 (P.T.A.B. May. 18, 2020)

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.
13/651,796 10/15/2012 Richard H. Evans 4918.110US02 7983
145378 7590 05/18/2020
Patterson Thuente Pedersen, P.A.
80 South Eighth Street
4800 IDS Center
Minneapolis, MN 55402
EXAMINER
PATTERSON, MARC A
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
cleveland@ptslaw.com
efsuspto@ptslaw.com
rahmlow@ptslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD H. EVANS, JEFFREY NIEDERST,
ROBERT M. O’BRIEN, BENOIT PROUVOST, KEVIN ROMAGNOLI,
GRANT SCHUTTE, PAUL STENSON, and TOM VAN KUREN

Appeal 2019-005844
Application 13/651,796
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL G. McMANUS, and
MERRELL C. CASHION JR., Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–3, 5–20, 25, 27–29, 31–37, and 40–
45. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as The Sherwin-
Williams Company. Appeal Brief dated Feb. 8, 2019 (“Appeal Br.”) 4.
Appeal 2019-005844
Application 13/651,796

2
CLAIMED SUBJECT MATTER

The present application relates generally to packaging containers such
as metal food and beverage cans. Specification filed Oct. 15, 2012 (“Spec.”)
¶ 2. Coatings are applied to the interior of such containers to prevent contact
between the food and metal. Id. ¶ 3. The Specification teaches that such
coatings should be safe for food contact, not adversely affect the taste of the
packaged food or beverage product, have excellent adhesion to the substrate,
and resist staining and other degradation over long periods of time. Id.
Certain coatings conventionally used for this purpose incorporate bisphenol
A (BPA). Id. ¶ 4. The Specification teaches that there is, however, “a desire
by some to reduce or eliminate certain BPA-based compounds commonly
used to formulate food-contact epoxy coatings.” Id.
The Specification teaches a coating composition having a polyether
polymer that does not include any structural unit derived from BPA. Spec. ¶
7. The Specification further teaches that the polymer preferably includes
one or more segments having the following formula (Formula I):
-O-Ar-(Rn-Ar)n-O-.
Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An article comprising:
a metal substrate of a food or beverage can or a portion
thereof; and
a coating applied on at least a portion of a surface of the metal
substrate, wherein the coating is an interior food-contact
coating formed from a coating composition comprising:
a film-forming amount of a polyether polymer having:
Appeal 2019-005844
Application 13/651,796

3
a plurality of pendant secondary hydroxyl groups attached
to backbone carbon atoms;
one or more segment of the following Formula I:
-O-Ar-(Rn-Ar)n-O-
wherein:
each Ar is independently an aryl or heteroaryl group,
each n is 1,
R includes at least one cyclic group, and
the two oxygen atoms are each ether oxygen; and
a glass transition temperature (Tg) of at least 70°C; and
wherein the coating composition is at least substantially free
of bisphenol A and the diglycidyl ether of bisphenol A.
Appeal Br. 37 (Claims App.).

REFERENCES
The Examiner relies upon the following prior art:

Name Reference Date
Plettner US 3,888,812 June 10, 1975
Marx US 5,264,503 Nov. 23, 1993
Kuboki et al. (“Kuboki”) US 6,043,333 Mar. 28, 2000
Kumabe et al.
(“Kumabe”)
US 6,201,070 B1 Mar. 13, 2001
DeGraaf CA 2,280,409 Feb. 16, 2001
Harada et al. (“Harada”) JP 2002097409A Apr. 2, 2002
Reynolds et al.
(“Reynolds”)
WO 2009/089145 A1 July 16, 2009

Appeal 2019-005844
Application 13/651,796

4
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 5, 6, 12, 16–20, 27–29, 34, 43, and 45 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Reynolds as evidenced by Harada and Kumabe. Final Action
dated Aug. 15, 2018 (“Final Act.”) 3–5.
2. Claims 2, 3, 13–15, and 42 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Reynolds, as
evidenced by Kumabe and Harada, in view of Plettner. Id. at
5–6.
3. Claims 7, 8, 35–37, 40, and 41 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Reynolds, as
evidenced by Kumabe, in view of Harada. Id. at 6–7.
4. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Reynolds, as evidenced by Kumabe, in
view of Harada and further in view of Plettner. Id. at 7–8.
5. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Reynolds, as evidenced by Kumabe,
in view of Harada and further in view of Plettner and Kuboki.
Id. at 8–9.
6. Claims 11 and 19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Reynolds, as evidenced
by Harada and Kumabe, in view of DeGraaf. Id. at 9–10.
7. Claims 25 and 44 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Reynolds in view of
Marx. Id. at 10–11.
Appeal 2019-005844
Application 13/651,796

5
8. Claims 31–33 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Reynolds in view of Marx and
further in view of Plettner. Id. at 11–12.
DISCUSSION
Rejection 1. The Examiner rejects claims 1, 5, 6, 12, 16–20, 27–29,
34, 43, and 45 as obvious over Reynolds, as evidenced by Harada and
Kumabe. Id. at 3–5.
In support of the rejection, the Examiner finds that Reynolds teaches
“an epoxy resin (paragraph 0012) that comprises a cycloaliphatic epoxy
resin and Bisphenol F epoxy resin cured by anhydride (paragraph 0014) and
optionally diethyltriamine [sic] (paragraph 0053).” Final Act. 3. The
Examiner further finds that “the Bisphenol F epoxy is diglycidyl ether of
Bisphenol F (paragraph 0040), therefore having the claimed segment
Formula I when cured, when ‘Ar’ is Bisphenol F minus its two hydroxyl
groups, and also having a plurality of pendant secondary hydroxyl groups.”
Id.
In the Answer, the Examiner describes the curing of Bisphenol F
epoxy with diethylenetriamine as follows:

Appeal 2019-005844
Application 13/651,796

6
Examiner’s Answer dated May 31, 2019 (“Answer”) 15. The Examiner
finds that “curing of an epoxy by an amine occurs by reaction between the
amine group and the epoxy group to form a hydroxyl group.” Id.
The Examiner additionally identifies the R group of Formula I as
follows:

Answer 16.
The Examiner further finds that Harada teaches that Bisphenol F
epoxy resin is known in the art to be used as a coating on the interior surface
of food containers. Final Act. 4. The Examiner additionally finds that
Kumabe teaches that cycloaliphatic epoxy resins are known to be used in
forming a coating on the interior surface of a food container. Id.
Appellant organizes its arguments regarding Rejection 1 by groups.
Appeal Br. 10–20. Appellant initially presents arguments regarding claims
1, 5, 12, 16, 17, 19, 20, 29, and 43 (Group I). Id. at 10–15. We consider
these arguments below.

Claims 1, 5, 12, 16, 17, 19, 20, 29, and 43
Appellant asserts error on several bases. Appeal Br. 10–20. First,
Appellant argues that Reynolds has not been shown to teach Formula I as
claimed. Id. at 10–13. The Appellant further argues that Reynolds has not
been shown to teach the claimed plurality of pendant secondary hydroxyl
Appeal 2019-005844
Application 13/651,796

7
groups attached to backbone carbon atoms. Id. These arguments are largely
superseded by, and not responsive to, the Examiner’s showing in the Answer
of the curing of Bisphenol F epoxy with diethylenetriamine, above.
Accordingly, Appellant has not shown error in this regard.
Second, Appellant argues that a person of ordinary skill in the art
would not have looked to the teachings of Reynolds because the Reynolds
composition may “fail to satisfy (or consistently satisfy) the above-
mentioned 50 parts per million extractables requirement,[2] especially if
anything went wrong on the can coating and curing line.” Appeal Br. 13.
Appellant, however, does not direct us to evidence of record suggesting that
Reynolds’ composition would not satisfy such requirement. Accordingly,
this argument is not factually supported. See Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2009) (rejecting a
nonobviousness position that was “merely attorney argument lacking
evidentiary support”).
Third, Appellant argues that the Examiner fails to establish that a
person of ordinary skill in the art would have had reason to use the resins of
Reynolds in making a coating for a can intended to contain food or
beverage. Appeal Br. 14–15. In the Final rejection, the Examiner finds that
Harada teaches that Bisphenol F epoxy resin is nontoxic with regard to
beverages. Final Act. 4. Harada states that it teaches a coating composition
that “contains certain carboxyl group-containing polyester resin(s) (A)[, and]
. . . certain novolac type epoxy resin and/or bisphenol F type epoxy resin (B)

2 Appellant refers to requirements imposed by FDA regulation 37 C.F.R.
§ 175.300(c). Appeal Br. 7.
Appeal 2019-005844
Application 13/651,796

8
and a certain curing catalyst.” Harada, Abstract. Harada’s coating is taught
to be “suitable for coating interior surfaces of cans, particularly food cans.”
Id. The Examiner further finds that Kumabe teaches that cycloaliphatic
epoxy is nontoxic with regard to food containers. Final Act. 4 (citing
Kumabe col. 1:15–27). Thus, the Examiner correctly finds that the
components of the Examiner’s proposed combination are known to be
suitable for use in food containers. Id.; see also Answer 16.
Appellant argues that the composition taught by Harada is a polyester
rather than a polyether polymer and, therefore, different from the
composition of Reynolds. Appeal Br. 14. Appellant further argues that,
while the composition of Kumabe is taught to be known for use in the
making of food containers, “Kumabe has not been shown to have discussed
or measured toxicity.” Id. at 14–15. These arguments are not persuasive. In
combining the teachings of the prior art, one of ordinary skill in the art need
only have had “a reasonable expectation of success.” Procter & Gamble Co.
v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009). Accordingly,
in this instance, one need only to have had a reasonable expectation of
success that the proposed combination would yield a coating suitable for use
as “an interior food-contact coating.” The Examiner has set forth a reasoned
basis why one would have expected success and Appellant has not shown
error in this regard.
In its Reply Brief, Appellant argues that Reynolds’ disclosure is broad
and the Examiner has not shown “a proper basis for selecting DETA . . .
while also selecting a bisphenol F epoxy resin and also preparing a coating
composition that contains a polyether polymer having Appellants’ recited
segments.” Reply Brief dated July 31, 2019 (“Reply Br.”) 6–7. This is not
Appeal 2019-005844
Application 13/651,796

9
persuasive. Reynolds teaches the use of an epoxy resin and that such epoxy
resin may be used in combination with an additional hardener or curing
agent. Reynolds ¶¶ 12, 51. Reynolds further teaches that the epoxy resin
may be bisphenol F based epoxy resin and the additional curing agent may
be diethylenetriamine. Id. ¶¶ 12, 54. That these reactants are disclosed
along with similar compounds does not limit Reynolds’ disclosure. See
Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious.”).

Claim 6
Appellant additionally argues that the Examiner has not shown that
the cited references teach the requirements of claim 6 (Group 2). Appeal Br.
15–16. Claim 6 depends from claim 1 and further requires that “aryl or
heteroaryl groups constitute at least 20 weight percent of the polyether
polymer.” Id. at 38 (Claims App.). In the Final Rejection, the Examiner
makes findings regarding claim 1 and further finds that, “[w]ith regard to
Claim 6, aryl groups would therefore constitute at least 20 weight percent of
the polymer relative to the weight of the polymer.” Final Act. 4.
Appellant argues, in part, that due to “the non-aryl groups within
BPFDGE and due to Reynolds’ cycloaliphatic ingredients, the aryl or
heteroaryl group content of such hypothetical composition would be below
20 weight percent. The aryl or heteroaryl group content in Reynolds’ above-
mentioned Table 1 sample formulations would likewise be well below 20
weight percent.” Appeal Br. 16.
Appeal 2019-005844
Application 13/651,796

10
The Examiner does not respond directly to this argument. See
Answer, generally. The Examiner’s determinations regarding cured
BPFDGE may be seen as generally relevant, but do not address the
Appellant’s argument Reynolds’ cycloaliphatic ingredients. That is, the
Examiner has made findings that permit one to calculate the molecular
weight of the aryl groups of the reaction product of bisphenol F and
diethylenetriamine (Answer 15–16), but not the polyether polymer as a
whole.
Accordingly, we determine that Appellant has shown error in this
regard.

Claim 18
Appellant additionally argues that the Examiner has not shown that
the cited references teach the requirements of claim 18 (Group 3). Appeal
Br. 17. Claim 18 depends from claim 1 and further requires that “the
polyether polymer is free of ester linkages.” Appeal Br. 39 (Claims App.).
Appellant argues that “the reaction between an epoxy group and an
anhydride produces glycidyl ester linkages. Consequently Reynolds’ cured
resins will always include ester linkages.” Id. at 17.
In the Answer, the Examiner finds that “anhydride is not required as a
curing agent by Reynolds et al, because, the disclosure of anhydride by
Reynolds et al is in a family of embodiments, as disclosed in paragraph
0012. Alternative embodiments are therefore disclosed that are not cured by
anhydride.” Answer 17. This is supported by Reynolds.
Reynolds teaches that “[h]ardeners used in the curable compositions
may include, for examples [sic], cycloaliphatic anhydrides.” Reynolds ¶ 12;
Appeal 2019-005844
Application 13/651,796

11
see also id. ¶ 46 (“Curable compositions disclosed herein may include one or
more cycloaliphatic anhydride hardeners.”) (emphasis added). Reynolds
subsequently teaches, in a portion of its specification titled “ADDITIONAL
HARDENER/CURING AGENTS,” that “curing agents may include primary
and secondary polyamines . . . . For example, polyfunctional amines may
include aliphatic amine compounds such as diethylene triamine.” Id. ¶ 54
(emphasis added). The Examiner finds that the use of diethylenetriamine as
a curing agent would lead to a compound that lacks any ester linkage.
Answer 16.
In its Reply Brief, Appellant argues that “Reynolds consistently
requires . . . that one or more cycloaliphatic hardeners be employed.” Reply
Br. 14–15. Reynolds, however, appears to permit the use of other hardeners
and curing agents. Accordingly, we determine that Appellant has not shown
error in this regard.

Claim 27
Appellant additionally argues that the Examiner has not shown that
the cited references teach the requirements of claim 27 (Group 4). Appeal
Br. 17–18. Claim 27 depends from claim 1 and further requires that “R has
a molecular weight of less than 500.” Id. at 40 (Claims App.). Appellant
argues that the Final Rejection provides an inadequate explanation as to why
the “R” group would have had a molecular weight below 500. Id. at 18.
The Appellant further argues that the Examiner has not adequately identified
the “R” group of the claim. Id. Accordingly, Appellant argues, the
Examiner has failed to establish a prima facie case of obviousness.
Appeal 2019-005844
Application 13/651,796

12
These arguments are largely superseded by the Answer. See Answer
15–16. Appellant does not substantively address this aspect of the Answer
in its Reply. Accordingly, we determine that Appellant has failed to show
error in this regard.

Claim 28
Appellant additionally argues that the Examiner has not shown that
the cited references teach the requirements of claim 28 (Group 5). Appeal
Br. 18–19. Claim 28 depends (indirectly) from claim 1 and further requires
that “R has a molecular weight of greater than 75, and wherein segments of
Formula I constitute at least 30 weight percent of the polymer.” Id. at 40
(Claims App.). In the Final Rejection, the Examiner makes findings
regarding claim 1, discussed above, and further determines that “R would
therefore have a molecular weight of greater than 75, and the segment of the
formula would constitute at least 30 weight percent of the polymer.” Final
Act. 3, 5.
Appellant argues that this is inadequate to establish a prima facie case
of obviousness. Appeal Br. 18–19. The Examiner does not substantively
respond to the Appellant’s argument regarding segments of Formula I
constituting at least 30 weight percent of the polymer. See Answer,
generally. The Examiner’s determinations regarding cured BPFDGE may
be seen as generally relevant, but do not address the relative weight percent
of all polymer components. Accordingly, we determine that Appellant has
shown error in this regard.

Appeal 2019-005844
Application 13/651,796

13
Claims 34 and 45
Appellant additionally argues that the rejection of claims 34 and 45
(Group 6) should be reversed. Appeal Br. 19–20. Appellant relies on
“reasons like those discussed above for Group 1” in asserting error. Id. As
we have not found such arguments to be persuasive, we determine that
Appellant has not shown error with regard to the rejection of claims 34 and
45.

Rejection 2. The Examiner rejects claims 2, 3, 13–15, and 42 as
obvious over Reynolds as evidenced by Kumabe and Harada, in view of
Plettner. Appeal Br. 20–24.
In support of the rejection, the Examiner finds that Reynolds teaches
that one may include an additional epoxy resin in the resin composition of
Rejection 1. Final Act. 5. Reynolds teaches “[a]dditional epoxy resins may
be used to tailor the properties of the resulting thermoset resins as desired.”
Reynolds ¶ 48.
The Examiner further finds that Plettner teaches a coating that is a
reaction product of a polyepoxide and a phenol. Final Act. 5. More
specifically, the Examiner determines that Plettner teaches an epoxy-ether of
resorcinol or 1, 1-di (4-hydroxyphenyl)-cyclohexane “for the purpose of
obtaining a coating that is smooth and firm.” Id. The Examiner determines
that it would have been obvious for one of ordinary skill in the art “to
provide a polymer that is a reaction product of a polyepoxide comprising
resorcinol diglycidyl ether and a phenol comprising a 1, 1-di (4-
hydroxyphenyl)-cyclohexane . . . in order to obtain a coating that is firm and
smooth as taught by Plettner.” Id. at 5–6. The Examiner further determines
Appeal 2019-005844
Application 13/651,796

14
that this reaction product is taught to have a glass transition temperature
falling between 70 and 150°C. Id.; Spec. 16 (Table 1).
Appellant organizes the claims in two groups for purposes of
argument. Appeal Br. 20–24. We consider the arguments in sequence.

Claims 2, 3, and 42
Appellant argues that the Examiner errs in rejecting claims 2, 3, and
42 (Group 7). Appeal Br. 21–24. Claim 2 depends from claim 1 and further
requires that “the polyether polymer has a Tg of from 70 to 150°C.” Id. at
37 (Claims App.). Claim 3 also depends from claim 1 and further requires
that “the polyether polymer has a Tg of from 80 to 110°C.” Id. Claim 42
depends from claim 34 and further requires that “the polyether polymer has
a Tg of from 70 to 150°C.” Id. at 43 (Claims App.).
The term “the polyether polymer,” as used in claims 2 and 3, refers
back to the “polyether polymer” of claim 1 that is required to have pendant
secondary hydroxyl groups and segments of Formula I. Id. at 37 (Claims
App.). The term “the polyether polymer,” as used in claim 42, refers back to
the “polyether polymer” of claim 34 that “has a backbone that includes: (i)
segments of the following Formula I.” Id. at 41 (Claims App.).
The Examiner’s rejection is predicated on the reaction product of
resorcinol diglycidyl ether and 1, 1-di (4-hydroxyphenyl)-cyclohexane
exhibiting a particular glass transition temperature. Final Act. 5–6. The
Examiner determines that this is supported by the Specification which
teaches that such a polyether polymer would have a glass transition
temperature of 74 or 80°C. Spec. 16 (Table 1).
Appeal 2019-005844
Application 13/651,796

15
The claims, however, require that the same polyether polymer that
includes a segment of Formula I (as required by the independent claims) also
exhibit the specified glass transition temperature (as required by the
dependent claims). In rejecting independent claims 1 and 34, the Examiner
relies on the reaction product of bisphenol F diglycidyl ether and diethylene
triamine. Answer 15–16. Thus, the rejection is predicated upon a single
polymer including segments of Formula I and segments of the reaction
product of resorcinol diglycidyl ether and 1, 1-di (4-hydroxyphenyl)-
cyclohexane. The Examiner, however, has not shown that such polymer
would have the claimed glass transition temperature. Table 1 does not
provide data for such a polymer.
To the extent that the Examiner relies on two separate polymer chains,
one satisfying the Formula I limitation and one satisfying the Tg limitation,
the rejection is flawed because the claims as written require the same
polymer to meet each limitation.
Accordingly, we determine that Appellant has shown error in this
regard.

Claims 13–15
Appellant argues that the Examiner errs in rejecting claims 13–15.
Appeal Br. 20–24. Appellant argues that the Examiner has not shown an
adequate basis as to why a person of ordinary skill in the art would have
combined the teachings of Reynolds with those of Plettner and arrived at the
polymer of the Examiner’s hypothetical combination. Id. Appellant argues,
inter alia, that the Examiner “does not explain how or why” a person of
ordinary skill in the art would have selected resorcinol diglycidyl ether and a
Appeal 2019-005844
Application 13/651,796

16
phenol comprising a 1, 1-di (4-hydroxyphenyl)-cyclohexane from among the
teachings of Plettner. Id. at 22–23 (emphasis omitted). Appellant argues
that this reaction product “is nowhere shown or suggested in Plettner.” Id.
In particular, Appellant argues as follows:
Plettner does not say that resorcinol and 1, 1-bis-(4-
hydroxyphenyl)-cyclohexane may or should be used in their
polyhydric phenol form or that they (or a diepoxide thereof)
should be reacted with one another; instead, each is merely one
among 22 listed polyhydric phenols that would be used in their
epoxidized form as “epoxy-ethers of polyhydric phenols”.

Id. (emphasis added).
In the Answer, the Examiner responds as follows:
because an epoxy - ether with a polyhydric phenol is taught by
Plettner, and 1, 1-bis-(4-hydroxylphenyl) - cyclohexane is
disclosed as a polyhydric phenol, it would have been obvious
for one of ordinary skill in the art to select 1, 1-bis-(4-
hydroxylphenyl) - cyclohexane and to provide for reaction of 1,
1-bis-(4-hydroxylphenyl) - cyclohexane with the epoxides
taught by Plettner.

Answer 16–17.
We find Appellant’s argument persuasive. The Examiner does not
direct us to any clear teaching of the use of resorcinol and 1, 1-bis-(4-
hydroxyphenyl)-cyclohexane in their polyhydric phenol form. The portion
of Plettner cited by the Examiner appears to concern polyepoxides. See
Plettner col. 3:3–46.
Further, in rejecting a claim, an Examiner must provide “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here,
Appeal 2019-005844
Application 13/651,796

17
the Examiner’s findings in the Final Rejection and Answer are conclusory
and lack sufficient articulated reasoning as to why one of skill in the art
would have been led to provide for the reaction of 1, 1-bis-(4-hydroxyl
phenyl) - cyclohexane with resorcinol diglycidyl ether as posited in the Final
Rejection.
Accordingly, Appellant has shown error on this basis.

Rejection 3. The Examiner rejects claims 7, 8, 35–37, 40, and 41 as
obvious over Reynolds as evidenced by Kumabe in view of Harada. Final
Act. 6–7.
In support of the rejection, the Examiner finds that Reynolds teaches a
polyether polymer that is a reaction product of a polyepoxide and a phenol
because “Reynolds et al disclose that the epoxy resin is cured by a phenolic -
terminated epoxy resin (paragraph 0051).” Id. at 6.
The Examiner further finds that, while Reynolds fails to disclose a
phenol that is a polyhydric phenol, “it would have been obvious for one of
ordinary skill in the art to provide a polyhydric phenol, as the disclosed
epoxy resin comprises a polyhydric phenol.” Id.
As above, Appellant organizes the claims in two groups for purposes
of argument. Appeal Br. 25–27. We consider the arguments in sequence.

Claims 7, 8, 35, and 37
Appellant argues that the rejection of claims 7, 8, 35, and 37 (Group
9) should be reversed. Appeal Br. 25–27. Claims 7 and 8 each require that
“the polyether polymer is a reaction product of ingredients including a
polyepoxide and a polyhydric phenol.” Id. at 38 (Claims App.). Similarly,
Appeal 2019-005844
Application 13/651,796

18
claims 35 and 37 each require, inter alia, that “the polyether polymer is a
reaction product of ingredients including a diepoxide and a dihydric phenol.”
Id. at 42–43.
In the Final Action, the Examiner finds that “Reynolds et al fail to
disclose a phenol that is a polyhydric phenol. However, it would have been
obvious for one of ordinary skill in the art to provide a polyhydric phenol, as
the disclosed epoxy resin comprises a polyhydric phenol.” Final Act. 6.
Appellant argues that this finding “is not further explained and does not
make sense.” Appeal Br. 26.
An Examiner must provide more than conclusory statements to
support an obviousness argument. “[T]here must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418. Here, the Examiner seems merely to
state that the reference teaches a first claimed reactant that has a structure
similar to the second claimed reactant. Without more, this is inadequate to
support the conclusion of obviousness.

Claims 40 and 41
Appellant argues that claims 40 and 41 were rejected in error. Appeal
Br. 26–27. These claims each depend from claim 35. As we have found
Appellant’s argument regarding claim 35 to be persuasive, we determine that
Appellant has shown error with regard to the rejections of claims 40 and 41.

Rejections 4 and 5. The Examiner rejects claim 9 as obvious over
Reynolds as evidenced by Kumabe in view of Harada and further in view of
Plettner. Final Act. 7–8. The Examiner rejects claim 10 as obvious over
Appeal 2019-005844
Application 13/651,796

19
Reynolds as evidenced by Kumabe in view of Harada and Plettner further in
view of Kuboki. Id. at 8–9.
The Examiner relies on Plettner as teaching “a reaction product of a
polyepoxide and a phenol, because it is an epoxy-ether of resorcinol or 1, 1-
di (4-hydroxyphenyl) - cyclohexane (column 3, lines 3–33) for the purpose
of obtaining a coating that is smooth and firm (column 2, lines 26–35).” Id.
at 8. As discussed above, the Examiner has not made an adequate showing
as to why one of skill in the art would have made the stated combination.
Accordingly, we determine that Appellant has shown error in this regard.

Rejection 6. The Examiner rejects claims 11 and 19 as obvious over
Reynolds as evidenced by Kumabe as evidenced by Harada and Kumabe in
view of DeGraaf. Final Act. 9–10.
Claim 11 depends from claim 1 and further requires that “the
polyether polymer has a number average molecular weight of at least 2,000.”
Appeal Br. 38 (Claims App.). Claim 19 also depends from claim 1 and
additionally requires that “the coating composition includes a liquid carrier
and comprises a water-based system.” Id. at 39 (Claims App.).
In support of the rejection of claims 11 and 19, the Examiner finds as
follows:
DeGraff [sic] teaches a molecular weight of between
2,000 and 20,000 (page 7, lines 1-2) for epoxy resin (page 7,
lines I - 2) for the purpose of obtaining a coating for use in
sanitary compositions (page 7, line 12).

It therefore would have been obvious for one of ordinary
skill in the art to provide for a molecular weight of between
2,000 and 20,000 in order to obtain a coating for use in sanitary
compositions as taught by DeGraff [sic].
Appeal 2019-005844
Application 13/651,796

20

Final Act. 9.
On appeal, Appellant argues that DeGraaf does not supply any
teaching that would compensate for the deficiencies it has identified with
regard to the rejection of claim 1. Appeal Br. 32. Appellant further argues
that the “Examiner has not shown that DeGraaf discloses or suggests a
polyether polymer having at least one segment of Formula I as recited in
claim 1, or that a PHOSITA would have modified the resin of Reynolds
based on DeGraaf to produce a resin having claim l’s Formula I segment.”
Id.
As discussed above, we have not found Appellant’s arguments
regarding claim 1 to be persuasive. Appellant’s additional arguments are not
directly responsive to the rejection of claims 11 and 19 because the
Examiner relies on Reynolds, not DeGraaf, as teaching the segment
including Formula I. Accordingly, we determine that Appellant has not
shown error in the rejection.

Rejection 7. The Examiner rejects claims 25 and 44 as obvious over
Reynolds in view of Marx. Final Act. 10–11.
Claim 25 is an independent claim and claim 44 depends therefrom.
Appeal Br. 40, 43 (Claims App.). Claim 25 requires that “the polyether
polymer is a reaction product of ingredients including a dihydric phenol and
a diepoxide.” Id. at 40.
The Examiner finds that Reynolds teaches “a thermoset resin
(paragraph 0015) that is an epoxy resin (paragraph 0012) that comprises a
cycloaliphatic epoxy resin and Bisphenol F epoxy resin cured by anhydride
Appeal 2019-005844
Application 13/651,796

21
(paragraph 0014) and optionally also diethylenetriamine (paragraph 0053).”
Final Act. 10. The Examiner further finds that Marx teaches an epoxy
curing agent “that is a phenolic-terminated epoxy resin (column 4, lines 9 –
16) that is a reaction product of a diepoxide and a dihydric phenol.” Id. The
Examiner determines that one of skill in the art would have had reason “to
provide for a reaction product of a diepoxide and a dihydric phenol and a
number average molecular weight of 1,000 to 50,000 in order to obtain
excellent impact resistance as taught by Marx.” Id. at 11.
Appellant argues that the Examiner has not shown that one of skill in
the art would have had reason to modify the resin of Reynolds with the
teachings of Marx “for at least the reason that no such problems are reported
by Reynolds that would prompt consideration of Marx.” Appeal Br. 34.
Appellant further directs us to Reynolds’ teaching that certain “toughening
agents” may be used. Id. Appellant argues that one of skill in the art would
have used the toughening agents of Reynolds if there were a need to improve
its impact resistance.
Whether one of skill in the art would have had reason to seek to
improve the impact resistance of the composition of Reynolds with the
curing agent of Marx is substantially a factual question. As persons of
scientific competence in the fields in which they work, examiners are
responsible for making findings, informed by their scientific knowledge,
regarding the cited prior art references. In re Berg, 320 F.3d 1310, 1315
(Fed. Cir. 2003). Absent a showing of error, the Board may rely on such
findings. In re Cree, Inc., 818 F.3d 694, 698 n.2 (Fed. Cir. 2016). Here,
Appellant has indicated its disagreement with the Examiner’s findings but
Appeal 2019-005844
Application 13/651,796

22
has not shown specific error therein. Accordingly, we do not find that the
Examiner has been shown to have committed harmful error.

Rejection 8. The Examiner rejects claims 31–33 as obvious over
Reynolds in view of Marx and further in view of Plettner. Final Act. 11–12.
Claim 31 depends from claim 25 and further requires that “the
polyether polymer has a Tg of from 80 to 110°C.” Appeal Br. 41 (Claims
App.). Claims 32 and 33 also depend from claim 25 and each require that
“the polyether polymer has a Tg of from 70 to 150°C.” Id.
The Examiner finds that one of skill in the art would have had reason
“to provide a polymer that is a reaction product of a polyepoxide comprising
resorcinol diglycidyl ether and a phenol comprising a 1, 1-di (4-
hydroxyphenyl)-cyclohexane, as stated in Table 1 of the instant
specification, in order to obtain a coating that is firm and smooth as taught
by Plettner.” Final Act. 12. The Examiner concludes that “[t]he claimed
glass transition temperature would therefore be obtained.” Id.
This finding is not well-supported. Table 1 of the Specification
supplies data regarding the glass transition temperature of the reaction
product of resorcinol diglycidyl ether and 1, 1-di(4-hydroxyphenyl)-
cyclohexane. Spec. ¶ 67 (Table 1). The Examiner, however, proposes a
more complex polymer in the statement of rejection. The Specification does
not provide the glass transition temperature of the polymer proposed by the
Examiner as teaching the claimed compositions.
Accordingly, we determine that Appellant has shown error in this
regard.

Appeal 2019-005844
Application 13/651,796

23
CONCLUSION

For the reasons set forth in the Final Action, the Examiner’s Answer,
and above, the Examiner’s rejections of claims 1, 5, 11, 12, 16–20, 25, 27,
29, 34, and 43–45 are affirmed. The Examiner’s rejections of claims 2, 3, 6–
10, 13–15, 28, 31–33, 35, 37, and 40–42 are reversed.
Any contention as to which Appellant has not stated its allegation of
error with citation to the statutes, regulations, authorities, and parts of the
Record relied on fails to comply with Board rules and is insufficient to
present an issue for appeal. See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2019-005844
Application 13/651,796

24
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 6, 12,
16–20, 27–
29, 34, 43,
45
103(a) Reynolds, Harada,
Kumabe
1, 5, 12, 16–
20, 27, 29,
34, 43, 45
6, 28
2, 3, 13–15,
42
103(a) Reynolds,
Kumabe, Harada,
Plettner
2, 3, 13–15,
42
7, 8, 35–37,
40, 41
103(a) Reynolds,
Kumabe, Harada
7, 8, 35–37,
40, 41
9 103(a) Reynolds,
Kumabe, Harada,
Plettner
9
10 103(a) Reynolds,
Kumabe, Harada,
Plettner, Kuboki
10
11, 19 103(a) Reynolds, Harada,
Kumabe, DeGraaf
11, 19
25, 44 103(a) Reynolds, Marx 25, 44
31–33 103(a) Reynolds, Marx,
Plettner
31–33
Overall
Outcome
1, 5, 11, 12,
16–20, 25,
27, 29, 34,
43–45
2, 3, 6–10,
13–15, 28,
31–33, 35–
37, 40–42

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 IN PART