Yokoyama, Ayumu et al.

Patent Trials and Appeals Board

Dec 30, 2019

14500562 - (D) (P.T.A.B. Dec. 30, 2019)

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.
14/500,562 09/29/2014 Ayumu Yokoyama 176.0058X1/
FA2012-US-CIP
3511
111787 7590 12/30/2019
LKGLOBAL (Axalta)
7010 E. Cochise Road
Scottsdale, AZ 85253
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
axalta@lkglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte AYUMU YOKOYAMA,
HENRY A. TRONCO JR., ERIC C. HOUZE, SHEAU-HWA MA,
KURT A. HANKERSON, JOSE ANTONIO GARCIA,
GARY W. NICKEL, DELSON JAYME TRINDADE,
MONIKA J. SIENKOWSKA, and JINGGUO SHEN
_______________
Appeal 2019–003903
Application 14/500,562
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification filed September 29, 2014
(“Spec.”) of Application 14/500,562 (“the ’562 Application”); the Final
Office Action dated May 23, 2018 (“Final Act.”); the Advisory Action dated
October 1, 2018 (“Advisory Act.”); the Appeal Brief filed October 30, 2018
(“Appeal Br.”); and the Examiner’s Answer dated February 19, 2019
(“Ans.”).
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Application 14/500,562

2
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6–9, 11, 12, and 14–16 of
Application 14/500,562. Appeal Br. 5. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’562 Application relates to curable coating compositions,
particularly those having a low volatile organic component (VOC) and a low
bake temperature. See Spec. ¶ 2. The ’562 Application describes that such
curable coating compositions are suitable for use in automotive original
equipment manufacturer (OEM) finish and refinish applications as primer
coats, basecoats, and clearcoats. Id. ¶¶ 2, 3. According to the Specification,
the curable coating compositions’ basecoat layer possesses improved
resistance to sagging when applied over a slanted or vertical substrate
surface. Id. ¶¶ 5, 52.
Claims 1 and 3 are representative of the ’562 Application’s claims and
are reproduced below from the Claims Appendix of the Appeal Brief with
key limitations italicized.
1. A multi-layer coating system comprising:
a curable base coat coating composition comprising:
a crosslinkable component comprising an acid
functional acrylic copolymer polymerized from a
monomer mixture comprising 2 percent to 12

2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Coatings Foreign IP Co. LLC as the real
party in interest. Appeal Br. 2.
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percent of one or more carboxylic acid group
containing monomers, percentages based on total
weight of the acid functional acrylic copolymer,
a crosslinking component; and
a control agent comprising a rheology component
chosen from an amorphous silica, a clay, or a
combination thereof, the rheology component
present in an amount of from about 0.1 to about 10
weight percent, and about 0.1 weight percent to
about 10 weight percent of polyurea, said
percentages based on total weight of the
crosslinkable and crosslinking components; and
a clear coat coating composition comprising an acrylic
copolymer component comprising one or more acrylic
polymers, wherein the clear coat coating composition
comprises primary hydroxyl and secondary hydroxyl
groups at a ratio of about 30:70 to about 80:20, and
wherein the clear coat coating composition overlies and
is in contact with the curable base coat coating
composition.
3. The multi-layer coating composition of claim 1, wherein
said rheology component is the amorphous silica.
Appeal Br. 9, 10 (emphases added).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Ma et al.
(“Ma”)
US 2006/0047051 A1 Mar. 2, 2006
Schellekens et al.
(“Schellekens”)
US 2006/0281862 A1 Dec. 14, 2006
Brinkhuis US 2008/0139755 A1 June 12, 2008
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REJECTION
On appeal, the Examiner maintains3 the following rejection under 35
U.S.C. § 103:4
1. Claims 1, 3, 4, 6–8, 9, 11, 12, and 14–16 over Ma, in view of
Brinkhuis, and further in view of Schellekens. Final Act. 5–7.
DISCUSSION
Appellant’s arguments focus on limitations recited in independent
claims 1 and 9 and dependent claim 3. Appeal Br. 5–8. We select claim 1
as representative of the independent claims. Claims 4, 6–8, 9, 11, 12, and
14–16 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 3
is discussed separately.
a. Claims 1, 4, 6–8, 9, 11, 12, and 14–16
The Examiner determines that claim 1 would have been obvious over
Ma in view of Brinkhuis, and further in view of Schellekens. Final Act. 5–7.
Specifically, the Examiner finds that Ma teaches or suggests every limitation
of the claimed curable base coat composition comprising an amorphous
silica control agent in the requisite amounts, except that Ma does not
disclose the use of polyurea as a control agent. Id. at 5–6.

3 Upon entering Appellant’s September 17, 2018 Amendment After Final,
the Examiner withdrew the rejections of claims 1, 3, 4, 6–9, 11, 12, and 14–
16 under: (i) 35 U.S.C. § 112(a) as failing to comply with the written
description requirement; and (ii) 35 U.S.C. § 112(b) as indefinite. Advisory
Act. 2, 3; Final Act. 2–4.
4 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
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The Examiner finds that Brinkhuis, like Ma, teaches that ingredients
may be added to confer the desired property of sag resistance to coating
compositions. Id. at 6. In particular, the Examiner finds that Brinkhuis
teaches the effective use of polyurea in amounts that overlap the claimed
range as an anti-sag control ingredient. Id. The Examiner determines that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have used Brinkhuis’s polyurea sag control agent in the
requisite amounts as Ma’s sag control agent in order to provide the desired
sag control effect. Id.
The Examiner finds that Ma is silent with respect to a specific clear
coat composition. Id. The Examiner, however, finds that Schellekens
teaches or suggests every component and limitation of the claimed clear
coating composition recited in claim 1. Id. The Examiner determines that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have used Schellekens’s clear coating composition “as the clear
coat generally called for in modified Ma in order to provide [Schellekens’s]
high gloss and car wash resistance.” Id.
Appellant argues, “Ma describes a coating with amorphous silica, but
Ma fails to describe the use of polyurea as an anti-sag component.” Appeal
Br. 6. According to Appellant, “Brinkhuis describes coatings with polyurea,
but Brinkhuis fails to describe the use of silica.” Id. Appellant argues,
“Schellekens describes a clear coat, but . . . Schellekens does not describe
the combination of an amorphous silica with a polyurea” as sag control
agents. Id.
Appellant’s arguments, however, are unpersuasive because one cannot
show non-obviousness by attacking references individually when the
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rejection is based on a combination of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See id. The Examiner adequately
demonstrates that each element of claim 1 is present in the combined
references.
A prima facie case of obviousness may be shown where, as here,
structural similarities exist between the claimed and prior art compositions
and reason or motivation exists to make the claimed composition. In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc) (“structural similarity
between claimed and prior art subject matter, proved by combining
references or otherwise, where the prior art gives reason or motivation to
make the claimed compositions, creates a prima facie case of obviousness”);
In re Best, 562 F.2d 1252, 1255–56 (Fed. Cir. 1977); In re Wilder, 429 F.2d
447, 450 (CCPA 1970).
Appellant may rebut the prima facie case of obviousness by showing
the prior art combination is deficient, no motivation exists to modify the
prior art as suggested by the Examiner, the presence of unexpected results
achieved by the claimed subject matter relative to the prior art, or other
objective evidence of non-obviousness. In re Mayne, 104 F.3d 1339, 1342
(Fed. Cir. 1997); In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997);
Dillon, 919 F.2d at 692–93. As discussed above, Appellant does not show
that Ma in view of Brinkhuis, and further in view of Schellekens, fails to
disclose or suggest the claim elements or that the references should not be
combined. For the reasons set forth below, Appellant’s attempt to
demonstrate unexpected results is likewise unsuccessful.
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Appellant “note[s] that an unexpected increase in sag control results
when amorphous silica is combined with polyurea.” Appeal Br. 6. As
evidence of this unexpected increase, Appellant points to Tables 4–7 in the
Specification, which are summarized as a table in the Appeal Brief. Id. (see
“Test data from [S]pecification”); see also Spec. 29–32.
Table 4 tested a Coating System of Comparative Example 4 having
0% sag control agent; Table 5 tested a Coating System of Comparative
Example 5 having 21% of a silica sag control agent; Table 6 tested a Coating
System of Comparative Example 6 having 38% of a polyurea sag control
agent; and Table 7 tested a Coating System of Example 1 of the Present
Invention having 29% of a sag control agent in the form of silica and
polyurea. Appeal Br. 6; see also Spec. 29–32. Test results are provided as
“DOI” values in which “[h]igher values for the [distinctness of image]
indicate better sag control.” Appeal Br. 6; see Spec. ¶ 73.
Appellant shows that silica and polyurea control agents individually
provided a DOI improvement calculated by Appellant to be 22% for silica in
Comparative Coating Example 5 (Table 5), and 30% for polyurea in
Comparative Coating Example 6 (Table 6) over Comparative Coating
Example 4 (Table 4), which had no sag control agent. Appeal Br. 7; id. 6
(see “Test data from [S]pecification”); Spec. 29–31. Appellant contrasts
these results with inventive Coating Example 1 (Table 7) in which the
combination of silica and polyurea sag control agents provided what
Appellant characterizes as “a significant unexpected benefit” in the form of a
60% DOI improvement over Comparative Coating Example 4 (Table 4).
Appeal Br. 8; id. 6 (see “Test data from [S]pecification”); Spec. 29, 32.
According to Appellant, the “60% improvement is significantly more than a
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22% or 30% improvement, even though about the same total amount of
rheological component was utilized.” Appeal Br. 7.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. Geisler, 116 F.3d
at 1469–70. Appellant’s arguments to that effect cannot take the place of
evidence. Id. at 1471; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Appellant’s evidence is not persuasive of unexpected results.
Unexpected results must be “commensurate in scope with the degree of
protection sought by the . . . [claims on appeal].” In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). Appellant’s results do not support the scope of
claim 1 at least because Appellant provides no evidence for compositions
containing clay or a combination of amorphous silica and clay. As
explained by the Examiner, the data presents testing of “a specific amount
and type (AEROSIL) of silica” and “a particular type and amount of
pol[y]urea.” Ans. 11. Each of these ingredients are critical to Appellant’s
showing of alleged unexpected results. Claim 1, however, recites each of
these anti-sag ingredients in a range of amounts that is much broader than
the single exemplified amount tested. Appeal Br. 9 (claim 1 recites “the
rheology component [such as “an amorphous silica”] present in an amount
of from about 0.1 to about 10 weight percent, and about 0.1 weight percent
to about 10 weight percent of polyurea.”).
Moreover, the allegedly unexpected result for inventive Coating
Example 1 with silica and polyurea over Comparative Coating Example 5
with silica alone may have occurred only because a larger total amount of
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anti-sag agent was used in the former, 29%, as compared to the latter, i.e.,
21%. Appeal Br. 6; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
(Fed. Cir. 1983) (“A nexus is required between the merits of the claimed
invention and the evidence offered, if that evidence is to be given substantial
weight enroute to conclusion on the obviousness issue.”). Appellant’s
alleged unexpected results, therefore, fail to meet the requirements to rebut
the Examiner’s prima facie case of obviousness.
On balance, the weight of the evidence of record supports the
Examiner’s conclusion of obviousness. Therefore, we sustain the
Examiner’s rejection of claim 1 over Ma in view of Brinkhuis, and further in
view of Schellekens. For the same reasons, we sustain the rejection of
claims 4, 6–9, 11, 12, and 14–16.
b. Claim 3
Claim 3 further limits claim 1 by requiring that the rheology
component in the claimed control agent is amorphous silica. Appeal Br. 9,
10. Claim 3, however, does not further limit silica to any particular particle
size or to any specific amount. Rather, claim 3 is directed to amorphous
silica present in an amount from about 0.1 to about 10 weight percent. Id.
For the reasons set forth above, Appellant’s results do not support the
scope of claim 3 because Appellant only tested a single specific amount and
type of silica. See Ans. 11. Therefore, we sustain the Examiner’s rejection
of claim 3 over Ma in view of Brinkhuis, and further in view of Schellekens.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis  Affirmed Reversed
1, 3, 4, 6–
9, 11, 12,
14–16
103 Ma, Brinkhuis,
Schellekens 
1, 3, 4, 6–9,
11, 12, 14–16

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)(iv).
AFFIRMED