The Boeing Company

Patent Trials and Appeals Board

Jul 13, 2020

14571272 - (D) (P.T.A.B. Jul. 13, 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.
14/571,272 12/15/2014 Patrick J. Kinlen 12-1853-US-NP 7348
120226 7590 07/13/2020
Patterson & Sheridan - The Boeing Company
c/o Patterson & Sheridan, LLP
24 GREENWAY PLAZA, SUITE 1600
Houston, TX 77046
EXAMINER
GATES, BRADFORD M
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
07/13/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. KINLEN, MELISSA D. CREMER,
EILEEN K. JACKSON, and OFER ALVES
Appeal 2019-003668
Application 14/571,272
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 7–17, 19, 25–35, and 37–50. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Boeing
Company. Appeal Br. 3.
Appeal 2019-003668
Application 14/571,272
2
CLAIMED SUBJECT MATTER
The claims are directed to a corrosion inhibiting formulation or
reaction product thereof (see, e.g., claims 1, 42, and 46), a substrate coating
comprising the formulation or reaction product (see, e.g., claim 19), a
method of applying the corrosion inhibitor to a substrate (see, e.g., claim
37), and a panel comprising the corrosion inhibiting formulation or reaction
product disposed on the surface of the panel (see, e.g., claims 40, 44, and
48). All of the claims require the formulation or reaction product thereof
consist of polyvinyl butyral resin, Brønsted acid, and thio-containing
corrosion inhibitor. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A corrosion inhibiting formulation, or reaction product
thereof, consisting of:
(a) at least one polyvinyl butyral resin;
(b) at least one Brønsted acid; and
(c) at least one thio-containing corrosion inhibitor.
Appeal Br. 18 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sinko US 2008/0258114 A1 Oct. 23, 2008
Hayes US 2008/0317962 A1 Dec. 25, 2008
Fruge US 2010/0314585 A1 Dec. 16, 2010

REJECTIONS
The Examiner maintains the following rejections.
Claims 1, 9–15, 19, 27–33, and 37–49 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Hayes in view of Fruge. Final Act. 5.
Appeal 2019-003668
Application 14/571,272
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Claims 7, 8, 16, 17, 25, 26, 34, 35, and 50 are rejected under
35 U.S.C. § 103 as being unpatentable over Hayes and Fruge, further in view
of Sinko. Final Act. 11.
OPINION
Appellant does not argue any claim apart from the others and the
issues are the same for both rejections. Appeal Br. 7–16. We select claim 1
as representative for resolving the issues on appeal.
All of the claims require a formulation, or a reaction product of a
formulation, that consists of polyvinyl butyral resin, Brønsted acid, and thio-
containing corrosion inhibitor (see, e.g., claim 1), or those ingredients and a
solvent (see, e.g., claims 42 and 46).
There is no dispute that Hayes teaches or suggests a corrosion
resistant coating composition with a binder polymer, a thio-containing
corrosion inhibitor, and a Brønsted acid (phosphonic acid). Compare Final
Act. 5, with Appeal Br. 7–16. Hayes discloses that the binder can be any
polymer, but does not specifically identify polyvinyl butyral resin in its list
of examples. Hayes ¶ 39. The Examiner concludes that it would have been
obvious to the ordinary artisan to select polyvinyl butyral resin based on the
teachings of Fruge. Final Act. 5.
Appellant contends that both Hayes and Fruge teach away from the
formulation and that Appellant has provided data showing unexpected
results. Appeal Br. 7–16; Reply Br. 2–6.
Teaching Away by Hayes
There is no dispute that Hayes teaches a coating composition that
includes a polymer binder, Brønsted acid, and thio-containing corrosion
inhibitor. Compare Final Act. 5; Ans. 12, with Appeal Br. 7–9. Appellant’s
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Application 14/571,272
4
teaching away argument focuses on the morphology of Hayes’s coating
composition. Appeal Br. 8–9; Reply Br. 4. Hayes’s binder and corrosion-
responsive agent are in “separate domains.” Hayes ¶ 29. According to
Hayes, “[t]his coating has demonstrated significantly improved corrosion
protection compared with a coating having the same components in a well-
mixed formulation.” Hayes ¶ 29. Hayes’s separate domains may be separate
coating layers as shown in Figure 1A or separate domains that are discrete
but touching or overlapping within a single layer as shown in Figure 1B.
Hayes ¶¶ 68–69. Appellant contends Hayes teaches away from a well-mixed
formulation. Appeal Br. 9. According to Appellant, “a coating having
‘separate domains’ is not a formulation” as recited by claim 1. Reply Br. 4.
The Examiner finds that claim 1 does not exclude the heterogeneous
formulation of Hayes. Ans. 12. We agree. Although we agree with Appellant
that a formulation can be formed, for example, by mixing the components of
the formulation in a mixer” (Reply Br. 4, citing Present Application ¶¶ 99–
1002), Appellant provides no persuasive evidence that the mere word
“formulation” is limited to compositions mixed in a mixer.
Claim 1 uses the term “formulation” without any limitation on the
degree of mixing. The examples provided in the Specification do not limit
the claim to homogeneous mixtures, nor does the ordinary and accustomed
meaning of “formulation.” Formulations can be heterogeneous. A
“formulation” is merely “[a] material or mixture prepared according to a
particular formula.” See www.lexico.com/en/definition/formulation.

2 It appears Appellant is citing paragraphs 99 and 100 of Pre-Grant
Publication 2016/0168,724 A1, which correspond to paragraphs 104 and 105
of the original Specification filed December 15, 2014.
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Application 14/571,272
5
Teaching Away by Fruge
The Examiner relies on Fruge as evidence that urethane, which is
taught by Hayes as an example binder, and polyvinyl butyral are
functionally equivalent binders for use in anticorrosive coatings. Final
Act. 5.
Appellant contends that Fruge “teaches away from a corrosion
inhibiting formulation having an acid.” Appeal Br. 10.
We disagree. Fruge teaches incorporating an anticorrosion
composition in “conventional coating binders.” Fruge ¶ 30. Fruge lists both
polyurethane and polyvinyl butyral in the list of suitable binders. Fruge ¶ 31.
Fruge provides evidence that polyvinyl butyral was a known conventional
binder for binding anticorrosion compositions. Moreover, as pointed out by
the Examiner, Fruge’s samples include acid and, thus, Fruge does not teach
away from adding acid. Ans. 13; Fruge ¶¶ 47–51.
Unexpected Results
Appellant contends that Appellant’s formulation provides
unexpectedly “better corrosion inhibitor efficiency than compositions
without the acid and/or without the inhibitor.” Appeal Br. 11, citing Present
Application ¶¶ 58–653 and Table 6. Specifically, Appellant points to
Experiments 1 and 2 of Table 6. Appeal Br. 13. According to Appellant,
Experiment 1 (of Table 6) demonstrates that polyvinyl butyral (without acid,
i.e., with “no catalyst”') provides an inhibitor efficiency of 0%, and adding
thio-containing corrosion inhibitor Vanlube 829 actually reduces the
inhibitor efficiency of the formulation to -17.3%. However, Experiment 2

3 It appears Appellant is citing paragraphs 58–65 of Pre-Grant Publication
2016/0168,724 A1, which correspond to paragraphs 63–71 of the original
Specification filed December 15, 2014.
Appeal 2019-003668
Application 14/571,272
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(of Table 6) demonstrates that adding acid to the polyvinyl butyral-Vanlube
829 formulation increases the inhibitor efficiency to 29.9%. Appellant states
that these results are contrary to what would have been expected at the time
the present application was filed based on the disclosures of Hayes, which
requires separate domains, and Fruge, which Appellant argues teaches that
acids hinder corrosion inhibition properties. Id.
The Examiner determines that the results are not commensurate in
scope with the claims because the tests are limited to only one Brønsted acid
at a single acid concentration and only two thio-containing corrosion
inhibitors at only two concentrations whereas the claim encompasses all
Brønsted acids and thio-containing inhibitors at any concentrations.
Ans. 13–14.
Appellant responds that the Examiner has provided no evidence
showing that the compounds and concentrations tested are not representative
of the class of compounds and concentrations encompassed by the claim.
Reply Br. 3.
Appellant’s response is not persuasive because the burden is not on
the Examiner to show unexpected results; the burden rests on Appellant. In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[T]he burden of showing
unexpected results rests on he who asserts them”).
“[O]bjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support.’” In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)). Although Appellant need not test every
embodiment within the scope of the claim, there must be some evidence
supporting an extension of the results to match the scope of the claim. For
instance, evidence of a correlation or a trend in the data. See, e.g., In re
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Application 14/571,272
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Cescon, 474 F.2d 1331, 1334 (CCPA 1973) (concluding that, although not
every compound within the scope of the claims was tested, the evidence of
secondary considerations was sufficient where evidence showed a
correlation and there was no factual basis to expect the compounds to
behave differently in different environments).
Appellant’s bald assertion that “[t]hese results are consistent at
different amounts and types of thio-containing corrosion inhibitors” is not
enough. Arguments of counsel cannot take the place of evidence. In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978).
CONCLUSION
The Examiner’s decision to reject claims 1, 7–17, 19, 25–35, and 37–
50 is AFFIRMED.
DECISION SUMMARY
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 9–15, 19,
27–33, 37–
49
103 Hayes, Fruge 1, 9–15, 19,
27–33, 37–
49

7, 8, 16, 17,
25, 26, 34,
35, 50
103 Hayes, Fruge,
Sinko
7, 8, 16, 17,
25, 26, 34,
35, 50

Overall
Outcome
1, 7–17, 19,
25–35, 37–
50

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED