2020002021 (P.T.A.B. Feb. 5, 2021)

Covestro LLC

Patent Trials and Appeals BoardFeb 5, 2021

2020002021 (P.T.A.B. Feb. 5, 2021)

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. 15/626,267 06/19/2017 Robert A. Wade COV172012/MD16-46 1022 157 7590 02/05/2021 Covestro LLC 1 Covestro Circle PITTSBURGH, PA 15205 EXAMINER SHOSHO, CALLIE E ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 02/05/2021 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): US-IPR@covestro.com laura.finnell@covestro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT A. WADE, CHARLES A. GAMBINO, and TIMOTHY PIKE1 ____________ Appeal 2020-002021 Application 15/626,267 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and SHELDON M. MCGEE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4–8, 11–19, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to coating compositions that comprise polyaspartates and acrylate-containing compounds. E.g., 1 The word “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Covestro LLC. Appeal Br. 3. Appeal 2020-002021 Application 15/626,267 2 Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from page 14 (Claims Appendix) of the Appeal Brief: 1. A coating composition comprising: 1% to 99% of a blend of two or more aspartic ester functional amines; 1% to 99% of an acrylate-containing compound; 10% to 70% of one or more polyisocyanates, and 0.1% to 5% of a photoin[it]iator comprising a 50/50 mixture of bis(2,4,6-trimethylbenzoyl)-phenylphosphineoxide and 2-hydroxy-2-methyl-1-phenyl-propan-1-one; wherein the coating composition is 100% solids and wherein the coating composition has a maximum viscosity of no more than 600 cps at one hour. ANALYSIS Claims 1, 4–8, 11–19, and 21 stand rejected under 35 U.S.C. § 103 as unpatentable over Kendi (US 2009/0197092 A1, published Aug. 6, 2009) and Bushendorf (US 2006/0052523 A1, published Mar. 9, 2006). The Appellant “admit[s] Claims 1, 4–8, 11–19, and 21 stand or fall together.” Appeal Br. 9. We select claim 1 as representative of the claims on appeal, and the remaining claims will stand or fall with claim 1. The Examiner finds that Kendi teaches a coating composition that falls within the scope of claim 1 except that Kendi’s photoinitiator is not the specific photoinitiator recited by claim 1, i.e., “a 50/50 mixture of bis(2,4,6- trimethylbenzoyl)-phenylphosphineoxide and 2-hydroxy-2-methyl-1-phenyl- propan-1-one.” Ans. 3–4. The Examiner finds that Bushendorf discloses a coating composition in which the photoinitiator is the photoinitiator recited by claim 1, and that Bushendorf teaches that its photoinitiator is interchangeable with a photoinitiator taught by Kendi. Id. at 4. The Appeal 2020-002021 Application 15/626,267 3 Examiner determines that it would have been obvious to use Bushendorf’s photoinitiator in the composition of Kendi “to improve [the] photopolymerization rate of the composition,” and because Bushendorf’s photoinitiator is a known substitute for Kendi’s photoinitiator. Id. As to the properties recited by the “wherein” clause of claim 1, the Examiner finds that, “since the coating composition of the references is the same as the presently claimed composition, it would also have the same” properties. Id. The Appellant does not dispute the Examiner’s findings concerning Kendi and Bushendorf. See Appeal Br. 12. The Appellant argues that Kendi “fail[s] to recognize” one of the problems addressed by the application on appeal, i.e., “the appearance of zipper lines in coatings caused by UV-curing equipment.” Id. That argument is not persuasive of error in the rejection because it fails to contest the Examiner’s determination that the prior art teaches or suggests a composition that falls within the scope of claim 1. That the prior art may not recognize one of the problems identified by the Specification (zipper lines) does not indicate error in the rejection because it is well established that “the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). We affirm the Examiner’s rejection. Appeal 2020-002021 Application 15/626,267 4 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 4–8, 11– 19, 21 103 Kendi, Bushendorf 1, 4–8, 11– 19, 21 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