Baumgarten, Rudolf

Patent Trials and Appeals Board

Dec 27, 2019

14892767 - (D) (P.T.A.B. Dec. 27, 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.
14/892,767 11/20/2015 Rudolf Baumgarten 13009229EPA1/US 5464
24959 7590 12/27/2019
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
LISTVOYB, GREGORY
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
12/27/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RUDOLF BAUMGARTEN1
________________

Appeal 2019-003030
Application 14/892,767
Technology Center 1700
________________

Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
PPG Industrial Ohio, Inc. (“Baumgarten”) timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1–
4, 7–10, 13, and 14. We have jurisdiction. 35 U.S.C. § 6 (2012).
We reverse.

1 The applicant under 37 C.F.R. § 1.46 (Application Data Sheet,
filed 20 November 2015), and hence the appellant under 35 U.S.C. § 134, is
the real party in interest, identified as PPG Industrial Ohio, Inc. (Appeal
Brief filed 08 October 2018. (“Br.”)
2 Office Action mailed 8 May 2018 (“Final Rejection”; cited as “FR”).
Appeal 2019-003030
Application 14/892,767

2
OPINION
A. Introduction3
The subject matter on appeal relates to a coating composition said to
provide equivalent or improved alkali resistance, adhesion, flexibility, and
abrasion resistance performance to, for example, containers for beverages or
cosmetics, compared to prior art compositions comprising bisphenol-A.
(Spec. 2, ll. 16–19, see also Spec. 1, ll. 9–16, 34–36.) Such prior art
compositions are said to be objectionable due to “apparent negative health
effects of coatings comprising such compounds” (Id. at 1, l. 36–2, l. 1). The
inventive compositions are said to comprise a polymeric resin that can be
cross-linked (id. at 3, ll. 6–7) by reacting with a crosslinking agent, i.e., a
chemical compound having two or more crosslinking functional moieties
(id. at 7, ll. 20–27), in the presence of bismuth neodecanoate (id. at 11,
ll. 13–14), which, it is said, “may increase the rate of the crosslinking
reaction between a crosslinker and a polymeric film forming resin of the
present coating composition” (id. at ll. 24–26).
Claim 1 is representative and reads:
A coating composition comprising:
i) a polymeric film forming resin,
ii) a crosslinking agent suitable for crosslinking the
polymeric film forming resin i), and
iii) an additive comprising a bismuth carboxylic acid salt,

3 Application 14/892,767, Coating Composition, filed 20 November 2015 as
the national stage under 35 U.S.C. § 371 of PCT/EP2014/060242, filed
19 May 2014, claiming the benefit of EPO 13168513.3, filed 21 May 2013.
We refer to the “′767 Specification,” which we cite as “Spec.”
Appeal 2019-003030
Application 14/892,767

3
wherein the bismuth carboxylic acid salt comprises
bismuth neodecanoate and wherein
the crosslinking agent comprises one or more of
a hydroxyl substituted aromatic group containing agent,
an amino group containing agent,
an amine group containing agent,
a urea-formaldehyde agent or
an alkylated urea with imino functionality.
(Claims App., Br. 8; some formatting added.)
(It may be noted that the claims do not exclude the presence of
bisphenol-A.)
The Examiner maintains the following grounds of rejection4, 5:
A. Claims 1, 2,6 4, and 7–10 stand rejected under
35 U.S.C. § 102(a)(1) in view of Wakabayashi.7
A1. Claims 13 and 14 stand rejected under 35 U.S.C. § 103 in
view of the combined teachings of Wakabayashi and Wales.8

4 Examiner’s Answer mailed 19 February 2019 (“Ans.”).
5 Because this application was filed after 16 March 2013, the effective date
of the America Invents Act, we refer to the AIA version of the statute.
6 The Examiner does not include claim 3 in the statement of rejection
(Ans. 3 § (1)) and miscites the statue in the response to argument
(id. at § 2.1). Although moot for purposes of this Opinion (we assume,
without deciding, that the claims stand rejected as set forth in the Final
Rejection), appropriate clarification should be provided in the event of
further examination.
7 Katsuyu Wakabayashi et al., Curable composition, U.S. Patent
Application Publication 2005/0171315 A1 (2005).
8 Melinda Wales and C. Steven McDaniel, Polymeric coatings
incorporating bioactive enzymes for cleaning a surface, U.S. Patent
Application Publication 2011/0240064 A1 (2011).
Appeal 2019-003030
Application 14/892,767

4
B. Claims 1–4 and 7 stand rejected under 35 U.S.C. § 103 in
view of Flosbach.9
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Briefly, the Examiner finds that Wakabayashi discloses a
(meth)acrylate-based polymer with a methyl silicate crosslinking agent and
bismuth neodecanoate. (FR 2, 4th para., citing Wakabayashi claim 9,
Tables 6–7, and paragraphs [0036]–[0046], [0236].) The Examiner finds
that Wakabayashi prefers a metal carboxylate such as bismuth neodecanoate
that has a metal atom of more than 208 in atomic weight. (Id. at 5th para.,
citing Wakabayashi [0123].) The Examiner finds further that Wakabayashi
teaches that when an epoxy resin is added to the composition, an epoxy
curing agent is added as a matter of course. (Id. at 3, 1st full para., citing
Wakabayashi [0190].)
Our reviewing court has explained that, “unless a reference discloses
within the four corners of the document not only all of the limitations
claimed but also all of the limitations arranged or combined in the same way
as recited in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The court
explained further, “differences between the prior art reference and a claimed
invention, however slight, invoke the question of obviousness, not

9 Carmen Flosbach et al., Aqueous coating composition, U.S. Patent
Application Publication 2011/0151264 A1 (2011).
Appeal 2019-003030
Application 14/892,767

5
anticipation.” Id., citing with approval In re Arkley, 455 F.2d 586, 587–88
(CCPA 1972). In Arkley, the court explained that an anticipatory reference
“must clearly and unequivocally disclose the claimed compound or direct
those skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” 455 F.2d at 587.
In the present rejection, the Examples, including Comparative
Example 11, which uses bismuth neodecanoate, crosslink a silicon group
containing polyoxyalkylene-based polymer A-4 (described at
Wakabayashi [0208]–[0209]) by silanol condensation. The Examiner has
not come forward with evidence or argument demonstrating that, more likely
than not, there is a crosslinking agent within the scope of the claims, present
in the composition of Comparative Example 11. The Examiner’s reliance on
the possibility or suggestion that an epoxy resin and epoxy-crosslinking
agents might be added to such a composition as suggested by Wakabayashi
in paragraph [0190], introduces a degree of picking and choosing and
combining disclosures that, without substantially more justification than has
been advanced thus far by the Examiner, removes the rejection from the
realm of anticipation and places it in obviousness. We therefore reverse the
rejection for anticipation.
An obviousness rejection of independent claim 1 over Wakabayashi is
not before us, and we decline to exercise our discretion to enter a new
ground of rejection in this case. The Examiner clearly misapprehended the
teachings of Wakabayashi regarding the usefulness of compounds
containing metals having an atomic weight of greater than 208 (bismuth has
an atomic weight of 209; see any periodic table with atomic weights):
Appeal 2019-003030
Application 14/892,767

6
“[w]hen the atomic weight of the metal atom is larger than 208, no
satisfactory adhesion can be obtained.” (Wakabayashi [0118], emphasis
added.) To the extent that Comparative Example 1 may show adhesion by a
90 Degree hand peel test to glass of “A”—a matter not raised by the
Examiner or by Baumgarten in the briefing before us—it is clear that factual
matters best resolved in the first instance remain in this case. We decline to
undertake such an investigation in the first instance, as our primary role is
review, not examination.
The Examiner makes no findings regarding Wales that cure the
deficiencies of Wakabayashi. We therefore reverse the rejection of
claims 13 and 14 for obviousness.
The obviousness rejection in view of Flosbach fails because, although
as the Examiner finds, Flosbach does disclose the use of bismuth
carboxylates (Flosbach [0094]), the Examiner has not directed our attention
to any disclosure in Flosbach that bismuth neodecanoate, which is named in
independent claim 1—the only independent claim subject to this rejection—
is recommended as a crosslinking accelerant. Again, our primary function is
review, not examination in the first instance.
We reverse the rejection in view of Flosbach.

Appeal 2019-003030
Application 14/892,767

7
CONCLUSION
The Examiner’s rejections are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§  Reference(s)/Basis Affirmed Reversed
1–4, 7–10 102(a)(1) Wakabayashi 1–4, 7–10
13, 14 103 Wakabayashi and Wales 13, 14
1–4, 7 103 Flosbach 1–4, 7
Overall
Outcome
1–4, 7–10,
13, 14
REVERSED