Ex Parte 8092876 et al

Patent Trial and Appeal Board

Sep 28, 2015

95001950 (P.T.A.B. Sep. 28, 2015)

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.
95/001,950 03/29/2012 8092876 3999-103 5809
117274 7590 09/28/2015
Turner Boyd LLP
702 Marshall Street
Suite 640
Redwood City, CA 94063
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/28/2015 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
____________

PPG Industries, Inc.
Requester

v.

Patent of Valspar Sourcing, Inc.
Patent Owner and Appellant
____________

Appeal 2015-001442
Reexamination, Control 95/001,950
Patent 8,092,876 B2
Technology Center 3900
____________

Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner Valspar Sourcing, Inc. (“Patent Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims
1-112.1 Third-Party Requester PPG Industries, Inc. (hereinafter
“Requester”) urges that the Examiner’s decision must be affirmed.2 We
have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a) (pre-AIA). We
reverse the Examiner’s decision to reject claims 1-112.

STATEMENT OF THE CASE
United States Patent 8,092,876 B2 (hereinafter the “’876 Patent”),
which is the subject of the current inter partes reexamination, issued on
January 10, 2012 from Application No. 12/505,236, and claims to be a
continuation-in-part of United States Patent 7,592,047 B2 (hereinafter the
“’047 Patent”), which is the subject of inter partes Reexamination Control
95/001,951 also on appeal at the Board. (Appeal No. 2015-000180) The
’047 Patent issued to O’Brien et al. from Application No. 11/253,161 on
September 22, 2009. We heard oral argument in both appeals from Patent
Owner and Requester on March 11, 2015, a transcript of which was entered
in the electronic record in both cases on April 15, 2015. A decision on
appeal in Appeal No. 2015-000180 is being mailed concurrently herewith.

1 See Patent Owner’s Appeal Brief 2, 4 (filed February 11, 2014)
(hereinafter “App. Br.”) Examiner’s Answer (mailed June 27, 2014)
(hereinafter “Ans.”); Right of Appeal Notice (mailed November 1, 2013)
(hereinafter “RAN.”).
2 See Requester’s Respondent Brief (filed March 11, 2014) (hereinafter
“Resp’t Br.”).
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The ’876 Patent relates a coating for a food or beverage can that
includes an emulsion polymerized latex polymer. (Col. 1, ll. 48-64.)
Claim 1, which is illustrative of the appealed subject matter, reads as
follows (with underlining showing subject matter added and bracketing
indicating subject matter deleted relative to the originally issued patent
claims):
1. An article comprising: a body portion or an end portion of a food or
beverage can comprising a metal substrate; and

a coating composition disposed [thereon] on an inside surface thereof,
wherein the coating composition includes an emulsion polymerized latex
polymer, and wherein the emulsion polymerized latex polymer:

(i) comprises a reaction product of an ethylenically unsaturated
monomer component polymerized in the presence of an aqueous dispersion
of a polymer salt, wherein the ethylenically unsaturated monomer
component includes at least one oxirane functional group-containing
monomer and wherein the ethylenically unsaturated monomer component
comprises a vinyl aromatic compound; and

(ii) is substantially free of bound bisphenol A and aromatic glycidyl
ether compounds.

(PO App. Br. 41 Claims App’x.)

Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1-9, 12-15, 17-105, 107, 109 and 111 are rejected under
35 U.S.C. § 103(a) over Christenson3 and Perez.4

3 US Patent 4,289,674 issued to Christenson et al. on 15 September 1981.
4 US Patent 5,714,539 issued to Perez et al. on 3 February 1998.
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II. Claim 10 is rejected under 35 U.S.C. § 103(a) over
Christenson, Perez and Chaing.5
III. Claims 11, 106, 108, 110 and 112 are rejected under 35 U.S.C.
§ 103(a) over Christenson and Perez and either Ranka ’6126 or
Ranka ’491.7
IV. Claims 1-9, 12-15, 17-105, 107, 109 and 111 are rejected under
35 U.S.C. § 103(a) over Baker8 and Perez.
V. Claim 16 is rejected under 35 U.S.C. § 103(a) over
Christenson, Perez and Wicks.9
VI. Claim 16 is rejected under 35 U.S.C. § 103(a) over Baker,
Perez, and Wicks.
In addition, Patent Owner relies on evidence as cited in the Evidence
Appendix to Patent Owner’s Appeal Brief. (App. Br. 58-63.)
Requester relies on evidence as cited in the Evidence Appendix to
Requester’s Respondent Brief. (Resp’t Br. 26-28.)

5 Wen-Yen Chaing and Chun-Shyurng Van, Preparation and Properties of
Liquid Crystalline Alkyd Resin with para-Hydroxybenzoic Acid Mesogenic
Side Chain, Journal of Applied Polymer Science, Vol. 46, 1279-1290
(1992).
6 US Patent 4,647,612 issued to Ranka et al. on 03 March 1987.
7 US Patent 4,692,491 issued to Ranka et al. on 08 September 1987.
8 US Patent 4,948,834 issued to Baker et al. on 14 August 1990.
9 Wicks et al., Organic Coatings: Science and Technology, Volume I: Film
Formation, Components, and Appearance, Chapter V: Latexes, p. 64, John
Wiley & Sons, 1992.
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Rejections I-III & V: Rejections based on Christenson and Perez
ISSUE
The Examiner found that Christenson discloses an aqueous resinous
dispersion and a method of coating the dispersion into the interior of can
containers. (RAN 6.) The Examiner found that Christenson fails to disclose
the emulsion polymerized latex polymer coating recited in the claims.
(RAN 6.) The Examiner found that Perez discloses coating a metal substrate
with an emulsion polymerized latex polymer falling within the composition
recited in the claims. (RAN 6-8.) The Examiner concluded that it would
have been obvious to have used the latex coating of Perez in the method and
article of Christenson, because Perez teaches that such coatings have a low
volatile organic content, good adhesion, and good resistance to water.
(RAN 9.)
Patent Owner contends that, inter alia, one of ordinary skill in the art
would not have a reasonable expectation of success of using Perez’s coating
in Christenson’s containers because the coating compositions of Perez would
not have been expected to possess the flexibility required to be used as a can
coating. (App. Br. 21.) As evidence in support of the flexibility
requirements in can coatings, Patent Owner points to the Declaration of Dr.
Larry B. Brandenburger (hereinafter the “Brandenburger Declaration”)
executed on August 23, 2012, and the experimental testing of compositions
described therein. (App. Br. 25-28, Ex. 3.)
Requester argues that the properties of the coating compositions of
Perez indicated by the Examiner, would have suggested their use as can
coatings. (Resp’t Br. 6, 8.) Requester contends that the claims do not set
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forth any flexibility requirements and as a result, Patent Owner’s emphasis
on such a requirement for can coatings is not relevant. (Resp’t Br. 8.)
Requester argues further that the comparative testing set forth in the
Brandenburger Declaration deserves no weight. (Resp’t Br. 14-17.)
Accordingly, the dispositive issue on appeal is: Would one of
ordinary skill in the art have found it obvious to have used the coatings of
Perez for coating the interior of cans as disclosed in Christenson?

FINDINGS OF FACT (“FF”)
1. Christenson discloses an aqueous resinous dispersion of acrylic
polymers used to coat metal containers such as cans. (Col. 1, ll.
10-20.)
2. Perez discloses an emulsion polymerization method, where the
resulting latex polymers that may be used in coatings. (Col. 1,
ll. 4-8.)
3. Perez discloses Examples 1-18, in which a CYMEL® 303, a
crosslinking agent, “was added to promote flow and
wet[t]ability of the substrate.” (Col. 11, ll. 11-17.)
4. In Example 18, Perez discloses a latex polymer having
excellent acid resistance and a glass transition temperature of
95 ºC. (Col. 10, ll. 63-67, col. 11, ll. 19-50; col. 12, ll. 1-23,
Table I.)
5. U.S. Patent No. 7,897,704 B2 to Masselin et al. states that
“there are particularly stringent and specific requirements of
coating compositions for can interiors which are different from
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those for other coatings” and further stating that “[f]lexibility
and adhesion are essential if the coating is to remain intact
during the can formation process . . . .” (App. Br., Ex. 26, col.
1, ll. 34-53.)
6. U.S. Patent No. 4,174,333 to Harman et al. discloses that can
coatings must meet stringent requirements including flexibility
to withstand processing of the container itself. (App. Br., Ex.
27, col. 1, ll. 20-27; see also, Ex. 28, col. 1, ll. 42-57.)
7. Dr. Brandenburger stated that among other things, coatings
used to coat the inside of a can must remain flexible after
curing, because subsequent denting will cause a can to deform
and cause the coating to flex such that if the coating is brittle, it
will crack. (Brandenburger Declaration, para. 6.)
8. Dr. Brandenburger stated that Example 18 of Perez was tested
to measure its flexibility, where Example 18 achieved the best
scores for blister, detergent, and acid resistance.
(Brandenburger Declaration, para. 10.)
9. Dr. Brandenburger stated that the experiments were performed
using 0%, 2.5%, and 5% Cymel® 303. (Brandenburger
Declaration, para. 11.)
10. Dr. Brandenburger measured the flexibility of the Perez
coatings used a 4T bend test. (Brandenburger Declaration,
paras. 14-16.)
11. Dr. Brandenburger stated that the examples produced in
accordance with Perez Example 18 showed cracking damage
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when subjected to a 4T bend test, indicating a lack of
flexibility. (Brandenburger Declaration, paras. 16-21.)
12. Dr. Good testified that Dr. Brandenburger “did not utilize an
industry-recognized procedure for evaluation of an interior can
coating.” (Resp’t Br., Ex. 13, Second Declaration of Raymond
H. Good. Ph.D., hereinafter “the Second Good Declaration,”
para. 9.)
13. Dr. Good testified that “the surface of the metal requires
excellent wetting to provide adhesion of the coating film,
because adhesion is very important when testing for
flexibility . . . While the Perez product synthesized by Valspar
apparently did not contain a wetting agent, Perez does teach its
use.” (Second Good Declaration, para. 9.)
14. According to the Painting and Coating Testing manual, in the
can coatings chapter, the T bend test is a common test for
flexibility for metal coatings, (App. Br., Ex. 37, 717, 722, 2nd
column.)
15. In a T-bend test, metal is bent back on itself several times, such
that each successive bend is less demanding on the coating
resulting in bends having a lower number, e.g., “0T” is more
demanding on the coating than bends with a higher number,
e.g., “4T.” (Brandenburger Declaration, para. 15; App. Br., Ex.
37, p. 551.)
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PRINCIPLES OF LAW
“Where claimed subject matter has been rejected as obvious in view
of a combination of prior art references, a proper analysis under § 103
requires, inter alia, consideration of two factors: (1) whether the prior art
would have suggested to those of ordinary skill in the art that they should
make the claimed composition or device, or carry out the claimed process;
and (2) whether the prior art would also have revealed that in so making or
carrying out, those of ordinary skill would have had a reasonable expectation
of success. Both the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant's disclosure.” In re
Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (citation omitted).
“The consistent criterion for determination of obviousness is whether
the prior art would have suggested to one of ordinary skill in the art that this
process should be carried out and would have a reasonable likelihood of
success, viewed in the light of the prior art. Both the suggestion and the
expectation of success must be founded in the prior art, not in the applicant's
disclosure.” In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988)
(citations omitted).
Expectation of success is assessed from the perspective of a person of
ordinary skill in the art, at the time the invention was made. See Life Techs.
Inc. v. Clontech Labs. Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000).

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ANALYSIS
After consideration of the arguments and evidence of record, we agree
with Patent Owner, that one of ordinary skill in the art would not have
looked to the coating compositions of Perez in coating cans as disclosed in
Christenson. Initially we observe that the claims of the ’876 Patent are
directed to a method of coating an inside surface of a can. Christenson is
directed to coating cans. (FF1.) Although we agree with Requester that the
claims of the ’876 Patent do not expressly call for flexibility, Patent Owner’s
argument that flexibility is a necessary characteristic of a coating
composition that is used to coat the interior of a can is well-supported by the
evidence of record. (FF5-FF7.)
Accordingly, we find the evidence submitted by Patent Owner
persuasive to support the position that one of ordinary skill in the art would
not have used the coatings of Perez in the method of Christenson.
Specifically, Dr. Brandenburger tested compositions made in accordance
with Example 18 of Perez containing varying amounts of Cymel® 303,
Example 18 of Perez producing the best results in terms of Blister
Resistance, Detergent Resistance, and Acid Resistance, and having a glass
transition temperature of 95 ºC. (FF4, FF8, FF9; Brandenburger
Declaration, para. 10.) Dr. Brandenburger stated a 4T bend test was
performed on each composition after coating on aluminum end stock.
(FF10-FF11; Brandenburger Declaration, paras. 11, 13, and 16.) Dr.
Brandenburger stated that after performing the 4T bend test, the coatings
according to Perez Example 18 showered cracking, indicating a lack of
flexibility. (FF11; Brandenburger Declaration, paras. 17, 19, and 20.)
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Based on those test results, Dr. Brandenburger concluded that the Perez
coatings would not be suitable for coating the interior of cans.
(Brandenburger Declaration, para. 21.)
We are not persuaded by Requester’s contentions that the tests
conducted at the direction of Dr. Brandenburger are insufficient to show that
the coating compositions disclosed in Perez would not have been used to
coat cans. Specifically, Dr. Brandenburger selected the coating composition
of Perez that exhibited the most favorable results for the compositions
according to Perez. (FF8.) Regarding Requester’s argument that Perez’s
compositions are not optimized for can coatings due to the alleged omission
of a wetting agent, Requester does not explain how this can be the case
given that the compositions tested include Cymel® 303, which is expressly
described in Perez as a wetting agent. (FF3.) As a result, we credit the
statements made in the Brandenburger Declaration over the statements made
in the Second Good Declaration.
We are also not persuaded by Requester’s argument that the 4T bend
test employed is not a recognized test for can coatings. FF12.) The T bend
test is expressly referred to in the prior art as a method for testing coatings
for cans. (FF14.) Further, to Requester’s contention that the T bend test is a
more rigorous test than other methods of testing coatings for cans, we
observe, as does Patent Owner, that the test relied on in the Brandenburger
Declaration is a 4T bend test. (FF11.) T bend tests are described as being
less severe as the number of bends increases. (FF15.) In the instant case,
the coatings of Perez were tested on metal that had been bent four times.
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(FF10, FF15.) Thus, the T bend test applied does not appear to be as severe
of a test as argued by Requester.
The results of the 4T bend tests described in the Brandenburger
Declaration show that the all of Perez’s compositions experienced cracking,
and as a result Dr. Brandenburger concluded that the compositions of Perez
would not be suitable as can coatings due to a lack of flexibility. (FF11; see
Brandenburger Declaration, para. 10.) Dr. Brandenburger refers to the Gen
VI coating as evidence of coatings meeting industry flexibility requirements.
(Brandenburger Declaration, para. 10.) Dr. Brandeburger provides side-by-
side comparisons as persuasive evidence that the flexibility of Perez’s
compositions is not suitable for can coatings when compared to Valspar’s
Gen VI coating. (Brandenburger Declaration, paras. 16-21.)
We observe also that Requester has submitted evidence from a
co-inventor of Perez stating generally that the coatings described in Perez
were used as inside coatings on beverage cans. (Resp’t Br., Ex. 14,
Declaration of Shanti Swarup executed on September 17, 2012, para. 3.)
However, insufficient detail is given as to the nature of the compositions
allegedly used in the beverage cans and whether those compositions include
the requirements of the compositions recited in the claims. Accordingly, we
do not find the Declaration of Shanti Swarup persuasive.
As a result, we reverse the Examiner’s decision to reject the claims as
obvious over Christenson in view of Perez.

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Rejection IV& VI: Rejections based on Baker in view of Perez
The Examiner similarly relies on the coating compositions disclosed
in Perez in order to modify the method of coating cans disclosed in Baker.
(RAN 15-16.) As a result, we reverse the rejections based on Baker and
Perez for similar reasons as discussed above.

CONCLUSION
On this record, the Examiner’s decisions to reject the claims based on
Christenson or Baker in view of Perez are reversed.

DECISION
The Examiner’s decision to reject claims 1-112 is reversed.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
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2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

REVERSED

PATENT OWNER:

Turner Boyd LLP
702 Marshall Street
Suite 640
Redwood City, CA 94063

THIRD-PARTY REQUESTER:

Rothwell Figg Ernst & Manbeck
607 14th Street, NW, Suite 800
Washington, DC 20005