Ex Parte 7,691,938 B2 et alDownload PDFPatent Trial and Appeal BoardSep 8, 201490012593 (P.T.A.B. Sep. 8, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/012,593 09/14/2012 7,691,938 B2 13877/13101R 2211 26646 7590 09/09/2014 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 09/09/2014 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 AKZO NOBEL COATINGS INTERNATIONAL B.V. Appellant __________ Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 Technology Center 3900 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 13-19 and 24. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on August 13, 2014. We AFFIRM. The subject matter on appeal is directed to an antifouling coating composition comprising a silyl ester copolymer and an ingredient having biocidal properties for aquatic organisms. Claim 13 is representative of the subject matter Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 2 on appeal and is reproduced below from the Claims Appendix of the Appeal Brief dated November 25, 2013 (“App. Br.”). 13. An antifouling coating composition, comprising a silyl ester copolymer and an ingredient having biocidal properties for aquatic organisms, wherein the composition has a VOC below 400 grams per liter and a viscosity of less than 10 poise at 25ºC, wherein more than 40 weight percent of the copolymer consists of building blocks having side chains with a silyl ester functionality, wherein the copolymer has a weight-average molecular weight of more than 1,500 and less than 20,000 g/mol, and wherein the viscosity is measured using a cone and plate viscometer in accordance with ASTM standard D 4287-00. App. Br., Claims App. 1 (emphasis omitted). The claims on appeal stand rejected as follows: (1) claims 13 and 24 under 35 U.S.C. § 103(a) as unpatentable over JP 208,1 as evidenced by the Mori Declaration,2 and further in view of the Admitted Prior Art;3 (2) claims 14-19 under 35 U.S.C. § 103(a) as unpatentable over JP 208, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art and Itoh;4 and (3) claims 13-19 and 24 under 35 U.S.C. § 103(a) as unpatentable over Nakamura,5 as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art. B. DISCUSSION 1 JP 2001-323208A dated November 22, 2001. In this Decision on Appeal, we refer to the English translation which is of record in the instant Reexamination. 2 Declaration of Kiyomi Mori dated August 5, 2011. 3 Column 2, lines 32-42 of US Patent 7,691,938 B2, issued April 6, 2010. 4 EP 0 802 243 A2, published October 22, 1997. 5 EP 0 775 733 A1, published May 28, 1997. Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 3 1. Rejections (1) and (2) The Examiner finds that JP 208 discloses an antifouling coating composition and directs our attention to Example 16. Ans. 2;6 see also JP 208, at 69 (Table 5). The Examiner finds that Example 16 is an antifouling coating composition having a VOC content of 392.4 g/L and a viscosity of 9 poise at 25ºC. Ans. 3. The Examiner finds that Example 16 comprises copolymer H which has more than 40 weight percent of building blocks having side chains with a silyl ester functionality and a weight-average molecular weight of about 20,925 g/mol. Ans. 2, 3. As to JP 208, the dispute in this appeal involves the viscosity of the antifouling coating composition of Example 16 and the weight-average molecular weight of copolymer H.7,8 See App. Br. 5-6. JP 208 is silent as to the viscosity of Example 16. The Examiner, however, relies on the Mori Declaration to establish that the viscosity of Example 16 is within the claimed range (i.e., “less than 10 poise at 25ºC”). The Mori Declaration states: The viscosity of the anti-fouling composition was calculated using D4287-00. The viscosity meter used was TVE-20H (made by Tooki Industry Co. Ltd), rotational speed 10 rpm. The value obtained was 9 poise at 25ºC. Mori Declaration ¶ 11 (emphasis added). 6 Examiner’s Answer dated December 20, 2013. 7 The Appellant does not direct us to any error in the Examiner’s findings that the antifouling coating composition of Example 16 has a VOC of 392.4 g/L or that more than 40 weight percent of copolymer H consists of building blocks having side chains with a silyl ester functionality. 8 At the oral hearing, counsel for Appellant indicated that viscosity is the most important issue. Transcript of August 13, 2014 oral hearing (“Tr.”), at 11, l. 21-12, l. 3. Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 4 Claim 13 recites that “the viscosity is measured using a cone and plate viscometer in accordance with ASTM standard D 4287-00.” App. Br., Claims App. (emphasis added). The Appellant directs our attention to the following disclosure in the 938 Patent: When a value is given for the viscosity of a copolymer solution or coating composition according to the present invention, reference is made to the high shear viscosity measured using a cone and plate viscometer in accordance with ASTM standard D 4287-00. 938 Patent, col. 2, ll. 60-64 (emphasis added). Based on this disclosure, the Appellant argues that “the viscosities as recited in independent claim 13 are high shear viscosities measured using a cone and plate viscometer in accordance with ASTM standard D 4287-00.” App. Br. 7 (emphasis added). The Appellant contends that the TVE-20H viscometer referred to in the Mori Declaration and used to measure the viscosity of Example 16 is incapable of measuring a high shear viscosity in accordance with ASTM standard D 4287-00. Therefore, the Appellant argues that the viscosity values reported in paragraph 11 of the Mori Declaration are not high shear viscosities as recited in claim 13. The Appellant relies on a Declaration of Alistair A. Finnie, Ph.D. dated March 22, 2013, for support. App. Br. 7-8; Evidence App. 1-4. The Appellant’s argument is supported by the record. Nonetheless, in response, the Examiner finds that “[p]aints in general are shear thinning. Therefore, a paint’s viscosity would be expected to decrease with increasing rate of shear stress. Shear thinning is a common property of polymer solutions.” Ans. 21. The Appellant does not contend that the Examiner’s finding is erroneous. Rather, the Appellant contends that “[t]he use of the words ‘in general’ . . . is an acknowledgement that not all paints/polymer solutions are shear thinning. Some Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 5 are ‘shear thickening.’” App. Br. 8. The Appellant then directs our attention to Exhibit 6 “[a]s evidence that silyl ester copolymer solutions are shear thickening.” App. Br. 8. According to the Appellant: The experimental report [in Exhibit 6] shows that a silyl ester copolymer solution of D28[9] (JP’857) has a low shear viscosity of 1.93 poise at 25ºC and a high shear viscosity of 2.5 poise at 25ºC. The silyl ester copolymer solution of JP’857 is actually shear thickening, i.e. an increase in shear results in an increase in viscosity. In this case the measured high shear viscosity of the silyl ester copolymer solution is approximately 30% higher than the measured low shear viscosity. App. Br. 8-9 (footnote omitted). Exhibit 6 does not disclose the low shear viscosity or the high shear viscosity of a silyl ester copolymer solution. Rather, Exhibit 6 discloses a single viscosity for an antifouling coating composition prepared with a silyl ester copolymer identified as “Copolymer II.”10 In particular, Exhibit 6 states: The viscosity of the anti-fouling composition was calculated using D4287-00. The viscosity meter used was TVE-20H (made by Tooki Industry Co. Ltd), rotational speed 10 rpm. The value obtained was 2.4 poise at 25ºC. Evidence App. 31. To the extent that a silyl ester copolymer solution of D28 is shear thickening, claim 13 recites the viscosity of an antifouling coating composition, 9 According to the Appellant, “‘D29’ mentioned at the top of the experimental report is a typographical error ‒ it should actually read ‘D28.’” App. Br. 8, n.4. 10 It appears that the antifouling coating composition described in Exhibit 6 was prepared with the silyl ester copolymer solution disclosed in the “experimental report” discussed on pages 8 to 9 of the Appeal Brief. This experimental report was filed in the instant Reexamination on August 26, 2013. Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 6 not the viscosity of a silyl ester copolymer solution. The Appellant contends that “[i]t could be predicted” that an antifouling coating composition containing a silyl ester copolymer solution may also be shear thickening. App. Br. 9. However, the Appellant has not directed us to any evidence of a shear thickening antifouling coating composition.11 Nonetheless, the Examiner finds that one of ordinary skill in the art would have been motivated to maintain the viscosity of the antifouling coating composition of Example 16 as close as possible to 9 poise at 25ºC “to prepare an antifouling coating composition that is suitable for coating on a vessel or underwater structure (see ¶ 0001 of JP ‘208).”12 Ans. 24-25. The Appellant does not direct us to any error in the Examiner’s finding. As for the molecular weight, the Examiner calculates the weight-average molecular weight of copolymer H to be about 20,925 g/mol based on the teaching in JP 208 that the number-average molecular weight of copolymer H is about 7,500 g/mol.13,14 Ans. 3; JP 208, at 67 (Table 3). The Examiner finds: 11 We note that the Appellant does not direct us to any evidence of the high shear viscosity of JP 208 Example 16 using a cone and plate viscometer in accordance with ASTM standard D 4287-00 as recited in claim 13. See Ans. 21 (“Patent Owner has proffered no evidence of measured viscosity according to ASTM D4287-00 for JP ‘208’s antifouling coating (paint) composition of Example 16.”). 12 To the extent that copolymer H in JP 208 Example 16 is shear thickening, at the oral hearing counsel for Appellant acknowledged that ingredients other than the silyl ester copolymer contribute to the overall viscosity of an antifouling coating composition. Tr. 10, ll. 1-3. 13 The Examiner finds that JP 208 does not expressly disclose that the molecular weight of copolymer H is number-average molecular weight. However, the Examiner finds that the only type of molecular weight discussed in JP 208 is number-average molecular weight. Thus, the Examiner finds that the molecular weight for copolymer H is a number-average molecular weight. Ans. 3. Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 7 The difference between copolymer H’s weight-average molecular weight of 20,925 and the claimed upper limit of less than 20,000 encompasses differences of such small amount that one of ordinary skill in the art would have reasonably expected no appreciable difference in performance in JP ‘208’s antifouling coating composition. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Ans. 4. The Appellant does not direct us to any evidence demonstrating that the Examiner’s finding is erroneous. Moreover, the Examiner finds that JP 208 “is not limited to the exemplified number-average molecular weight of about 7,500 g/mol” but rather discloses that the number-average molecular weight of the disclosed silyl ester copolymer can be as low as 5,000 g/mol. Ans. 4; JP 208, ¶ 47. Based on this disclosure in JP 208, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to slightly lower the number-average molecular of copolymer H15 with the “reasonable expectation of preparing a copolymer for use in JP ‘208’s antifouling coating composition.” Ans. 4. The Appellant argues: [T]he skilled artisan would know (based on common general knowledge as described in the specification of the ‘938 patent) that reducing the molecular weight of the copolymer would be expected to result in . . . problems in mechanical properties of the coating . . . . Therefore, there would have been no reasonable expectation from the 14 The Examiner finds that the polydispersity of copolymer H is 2.79 (Mori Declaration ¶ 8) and “[a] polydispersity of 2.79 for copolymer H means the weight-average molecular weight for copolymer H is 7,500 x 2.79 = about 20,925 g/mol.” Ans. 3. The Appellant does not direct us to any error in the Examiner’s calculation of the weight-average molecular weight of copolymer H. 15 The Examiner finds, and the Appellant does not dispute, that “[f]or a polydispersity of 2.79 and a number-average molecular [weight] of 5,000 g/mol, the weight average molecular weight would be 13,950.” Ans. 4. Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 8 disclosure of JP’208 that a coating composition containing a silyl ester copolymer having a lower weight average molecular weight (Mw less than 20,000) would also have good mechanical properties. App. Br. 11 (emphasis added). Significantly, the Appellant does not direct us to any portion of the 938 Patent that discloses the “common general knowledge” referred to above. Suffice it to say that JP 208 expressly discloses that the molecular weight of the silyl ester copolymer is “typically 5,000 to 100,000.” JP 208, ¶ 47. JP 208 also discloses that the antifouling coating composition has a variety of desirable properties, including moderate wear and excellent long-term antifouling performance. See JP 208, ¶¶ 6- 7; see also Ans. 29. Thus, one of ordinary skill in the art would have expected the antifouling coating composition of JP 208, which includes an antifouling coating composition comprising a silyl ester copolymer having a number-average molecular weight as low as 5,000, to have desirable antifouling properties. Finally, the Appellant generally argues that the coatings of the claimed invention “surprisingly possess mechanical properties just as good as coatings comprising silyl ester copolymers of a higher molecular weight.” App. Br. 6, 11. However, the Appellant does not direct us to any evidence demonstrating that the mechanical properties of the claimed coating would have been unexpected to one of ordinary skill in the art. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“unexpected results must be established by factual evidence”). For the reasons set forth above, the § 103(a) rejection of claim 13 based on JP 208, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art is sustained. The Appellant does not present arguments in support of the separate patentability of dependent claims 14-19, and 24. Therefore, the § 103(a) rejection of claim 24 based on JP 208, as evidenced by the Mori Declaration, and Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 9 further in view of the Admitted Prior Art and the § 103(a) rejection of claims 14-19 based on JP 208, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art and Itoh are sustained. 2. Rejection (3) The Examiner finds that Nakamura discloses an antifouling coating composition and directs our attention to composition M-10 which comprises copolymer S-3. Ans. 11; Nakamura 44. The difference between M-10 and the claimed antifouling coating composition is the viscosity. The Examiner finds that the viscosity of M-10 is 14 poise at 25ºC16 which is higher than the claimed viscosity (i.e., “less than 10 poise at 25ºC”). Ans. 14. Nonetheless, the Examiner concludes that one of ordinary skill in the art would have lowered the viscosity of antifouling coating composition M-10 to “facilitate application of the antifouling coating composition.” Ans. 15. The Appellant argues: [T]here is no general disclosure/guidance in Nakamura of what the viscosity of the coating composition should be. Nakamura fails to provide the skilled artisan with any reasonable expectation that it would be possible to make a coating composition comprising a silyl ester copolymer having a weight average molecular weight of less than 20,000, the coating composition having a high shear viscosity of less than 10 poise at 25ºC, a VOC of less than 400 g/L, as required in the invention of independent claim 13, while the coating still maintains its film forming ability and good mechanical properties. App. Br. 17. 16 The record on appeal supports the Appellant’s argument that this viscosity is not a high shear viscosity measured using a cone and plate viscometer in accordance with ASTM standard D 4287-00 as recited in claim 13. See App. Br. 13-14. Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 10 We recognize that a lower viscosity would be desirable to facilitate the application of Nakamura’s antifouling coating composition. However, the Examiner has failed to show that, at the lower viscosity recited in claim 13 (i.e., “less than 10 poise at 25ºC”), one of ordinary skill in the art would have expected the other properties of M-10 to remain within the ranges recited in claim 13. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). For this reason, the § 103(a) rejection of claims 13- 19 and 24 based on Nakamura, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art is not sustained. C. DECISION The Examiner’s decision to reject claims 13 and 24 under 35 U.S.C. § 103(a) as unpatentable over JP 208, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art is affirmed. The Examiner’s decision to reject claims 14-19 under 35 U.S.C. § 103(a) as unpatentable over JP 208, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art and Itoh is affirmed. The Examiner’s decision to reject claims 13-19 and 24 under 35 U.S.C. § 103(a) as unpatentable over Nakamura, as evidenced by the Mori Declaration, and further in view of the Admitted Prior Art is reversed. 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). AFFIRMED Appeal 2014-004555 Reexamination Control 90/012,593 Patent 7,691,938 B2 11 cc: Third Party Requester Gordon P. Klancnik Nixon & Vanderhye, P.C. 901 North Glebe Road 11th Floor Arlington, VA 22203 kmm Copy with citationCopy as parenthetical citation