BASF Coatings GmbH

Patent Trials and Appeals Board

Sep 29, 2020

15277095 - (D) (P.T.A.B. Sep. 29, 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.
15/277,095 09/27/2016 Karl-Heinz Grosse Brinkhaus BCM0054CT
PAT0001457US02
9508
48394 7590 09/29/2020
SERVILLA WHITNEY LLC
33 WOOD AVE SOUTH
SUITE 830
ISELIN, NJ 08830
EXAMINER
MAYEKAR, KISHOR
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
docket@dsiplaw.com
hservilla@dsiplaw.com
lmurphy@dsiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL-HEINZ GROSSE BRINHAUS, MARGRET NEUMANN,
OLIVER JOHANNPOETTER, and PETER LUX
Appeal 2019-006794
Application 15/277,095
Technology Center 1700
Before TERRY J. OWENS, JEFFREY R. SNAY, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, 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 1–8, 10, 11, 13, 14, and 16. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 BASF
Coatings GmbH. Appeal Br. 3.
Appeal 2019-006794
Application 15/277,095

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to “cathodically
depositable electrocoat materials comprising bismuth compounds.” Spec.
1:11–14. Appellant describes one object of the invention as discovery of
electrocoat materials comprising bismuth compounds with baking
temperatures that are as low as possible. Id. at 2:29–32. Independent claims
1 and 11 are the independent claims on appeal. Claim 1 is illustrative, and
we reproduce it below with emphasis added to certain key recitations:
1. A cathodically depositable electrocoat material produced
by a process comprising mixing and homogenizing:
at least one binder,
at least one crosslinking agent, and
a bismuth nitrate crosslinking catalyst consisting of a
water-insoluble basic bismuth nitrate,
wherein the water-insoluble basic bismuth nitrate is
the only metal nitrate and the only crosslinking catalyst in the
cathodically depositable electrocoat material and the
cathodically depositable electrocoat material has a same or
similar degree of crosslinking as an electrocoat material which
contains a bismuth subsalicylate crosslinking catalyst at a
baking temperature which is at least 5-10° lower than the
electrocoat material which contains the bismuth subsalicylate
crosslinking catalyst.
Appeal Br. 16 (Claims App.) (emphasis added). Claim 11 similarly recites a
water-insoluable basic bismuth nitrate “wherein the water-insoluble basic

2 In this Decision, we refer to the Final Office Action dated February 5, 2019
(“Final Act.”), the Appeal Brief filed July 2, 2019 (“Appeal Br.”), the
Examiner’s Answer dated August 19, 2019 (“Ans.”), and the Reply Brief
filed September 18, 2019 (“Reply Br.”).
Appeal 2019-006794
Application 15/277,095

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bismuth nitrate is the only metal nitrate and the only crosslinking catalyst in
the cathodically depositable electrocoat material.” Id. at 17.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Lehmann et al.
(“Lehmann”)
US 7,211,182 B2 May 1, 2007
Kojima et al.
(“Kojima”)
US 2007/0089996 A1 Apr. 26, 2007

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1–8 and 10 under 35 U.S.C. § 102(b) as anticipated by or,
alternatively, under 35 U.S.C. § 103(a) as obvious over Lehmann.
Ans. 3.
B. Claims 11, 13, 14, and 16 under 35 U.S.C. § 103(a) as obvious over
Lehmann in view of Kojima. Id. at 5.

OPINION
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. The
Examiner rejects claim 1 as either anticipated by Lehmann or obvious over
Lehmann. Ans. 3. The Examiner rejects claim 11 as obvious over Lehmann
in view of Kojima. For both rejections, the Examiner relies on Lehmann as
teaching use of the claims’ recited “water insoluble” metal nitrate as the only
metal nitrate. Ans. 3, 5 (citing Lehmann).
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Appellant argues that Lehmann, read as a whole, teaches use of at
least one water-soluble metal nitrate (in contrast to Appellant’s claims which
require use of only water-insoluble metal nitrate in the electrocoat material).
Appeal Br. 10–11. The preponderance of the evidence supports the
Appellant’s position.
The Lehmann patent emphasizes use of at least one water-soluble
metal nitrate including, for example, in its abstract and in its only
independent claim. Lehmann Abstract (“the CED coating composition used
contains at least one water-soluble metal nitrate”), 2:24–40 (summary of
invention states composition “contains at least one water-soluble metal
nitrate”), 3:55–56 (“[t]he metal nitrates are selected from among the water-
soluble nitrates”), 7:25–9:37 (no example makes use of water-insoluble
Bi5O(OH)9(NO3)4), 9:39–10:13 (claim 1 recites “wherein the CED coating
composition used contains at least one water-soluble metal nitrate”).
Lehmann explains advantages of water-soluble metal nitrates. Id. at 2:14–20
(identifying “simpler handling” as an advantage). Lehmann teaches adding
metal nitrate “in the form of an aqueous solution” to an aqueous phase. Id. at
5:51–62.
To support that Lehmann teaches water-insoluble nitrate, the
Examiner emphasizes Lehmann’s identification of basic Bi5O(OH)9(NO3)4
as an available metal nitrate. Ans. 6–7. The Examiner finds that
Bi5O9OH)9(NO3)4 is water-insoluble, and Appellant does not dispute the
water-insolubility of this particular metal nitrate. The paragraph of Lehmann
that identifies Bi5O(OH)9(NO3)4 states in full:
The metal nitrates are selected from among the water-
soluble nitrates of metals from the group consisting of metals of
atomic numbers 20 to 83, wherein chromium, arsenic, rubidium,
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ruthenium, rhodium, palladium, cadmium, antimony, caesium,
osmium, iridium, platinum, mercury, thallium and lead are excepted.
The term “metal nitrate” used in the present description and in the
claims should not be understood exclusively to denote a simple metal
nitrate salt comprising metal cations and nitrate anions, but also
includes compounds such as, for example, metal oxynitrates or nitrate
compounds with counter-cations containing the relevant metal.
Preferred nitrates are those of titanium, vanadium, iron, zinc, yttrium,
zirconium, tin, cerium, neodymium or bismuth, in particular of
yttrium, neodymium or bismuth, especially of bismuth. Examples of
bismuth nitrates are Bi(NO3)3 and Bi5O(OH)9(NO3)4.
Lehmann 3:55–4:3 (emphases added). Although the last sentence of this
paragraph supports the Examiner’s position, this statement is outweighed by
the remainder of Lehmann (including, for example, the first sentence of the
paragraph). Because Lehmann, as a whole, so strongly emphasizes use of a
water-soluble nitrate, we agree with Appellant that a person of skill in the art
would not have understood the last sentence of this paragraph as teaching or
suggesting use of water-insoluble Bi5O(OH)9(NO3)4 as a sole metal nitrate in
the Lehmann composition. See, e.g., Reply Br. 2–3.
The Examiner’s treatment of dependent claims and use of the Kojima
reference does not cure the error identified above. We, therefore, do not
sustain the Examiner’s rejections.

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Application 15/277,095

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10 102(b) or
103(a)
Lehmann 1–8, 10
11, 13, 14,
16
103(a) Lehmann, Kojima 11, 13, 14,
16
Overall
Outcome
1–8, 10,
11, 13, 14,
16

REVERSED