Ex Parte Aibara

Board of Patent Appeals and Interferences

May 29, 2008

10238309 (B.P.A.I. May. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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KAZUHIKO AIBARA,
APPELLANT

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Appeal 2008-2939
Application 10/238,3091
Technology Center 1700
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Decided: May 29, 2008
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Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed 10 September 2002, titled Road Marking Aqueous
Coating Composition. The real party in interest is listed as Rohm and
Haas Co. (Appeal Brief filed 9 February 2007 ("Br."), at 3.)

2008-2939
Application 10/238,309

A. Introduction
Kazuhiko Aibara (“Aibara”) appeals from the final rejection of claims
1-5 under 35 U.S.C. § 103(a). Claim 6 has been withdrawn from
consideration and is not before us. We have jurisdiction under 35 U.S.C. §
6. We AFFIRM.
The claimed subject matter relates to a composition said to be useful
for marking roads, particularly because it is said to dry quickly and to be
resistant to yellowing. The critical ingredient is said to be zinc phosphate or
calcium zinc phosphate.
Claim 1 is representative and reads:
An aqueous coating composition comprising
a binder polymer prepared by aqueous emulsion
polymerization,
a polyfunctional amine polymerized from one or more
monomers, and
at least one pigment selected from the group consisting of
zinc phosphate and calcium zinc phosphate.
(Br., Claims App. at 11.)
The Examiner has maintained2 the rejection of claims 1-5 under 35
U.S.C. § 103(a) in view of the combined teachings of Komoto3 and Yano4.

2 Examiner’s Answer mailed 15 June 2007 (“Ans.”) at 3. A rejection for
new matter has been withdrawn. (Ans. 2.)
3 Keiji Komoto et al., Coating Composition, Process for Preparing coating
Composition and Process for Preparing Dispersing Component of Inorganic
Oxide Sol, U.,S. Patent 6,022,919 (8 February 2000).
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According to Aibara the claims stand or fall with claim 1. (Br. 6.)
We shall therefore restrict our attention to claim 1. 37 C.F.R. §
41.37(c)(1)(vii).
B. Discussion
The Examiner finds that Komoto describes aqueous coating
compositions that meet all the limitations of claim 1 but for the disclosure of
zinc phosphate or calcium zinc phosphate as a component of the
composition. (Ans. 4-6.) The Examiner finds further that Yano describes
polymeric coating compositions comprising pigments that comprise a body
pigment, a color pigment, and a corrosion inhibitive pigment. (Ans. 6, ¶¶
11-12.) Examples of the corrosion inhibitive pigment include zinc
phosphate and calcium zinc phosphate. (Ans. 7, ¶ 12; see Yano 4:36-50,
esp. l. 46.) The Examiner reasons that the substitution of the conventional
pigments taught by Yano for the conventional pigments taught by Komoto
would have been obvious to the ordinary worker in the art. (Ans. 7, ¶ 13.)
Aibara objects only that there is no suggestion in either reference to
combine particular teachings of one with the other. (Br. 6.) Aibara does not
explain further why the two references are incompatible.
We are not persuaded. The substitution of recognized equivalents is a
classic basis for a conclusion of prima facie obviousness. See, e.g.,
Hotchkiss v. Greenwood, 52 U.S. 248 (1850).
4 Mitsuyoshi Yano et al., Coating Composition for Preparing Back Coating
Film of Mirror, U.S. Patent 5,519,542 (21 May 1996).
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Aibara, however, argues that Example 2 in the Specification provides
evidence of unexpected results that support a conclusion of nonobviousness.
(Br. 6-7.) Example 2 reports that replacing 0.5 pigment volume
concentration (“pvc”: Spec 18:24-25) of calcium carbonate out of 53.7 pvc
calcium carbonate with 0.5 pvc of zinc phosphate or calcium zinc phosphate
(titanium dioxide is also present as a pigment) in a coating composition
results in a two-fold improvement in drying time (8 minutes versus 16
minutes) and an improvement in yellowing properties (delta E of 0.7 versus
a delta E of 2.6. (Spec. 23-24.) A delta E result below 1 is said to be
acceptable (Spec. 22:21.). Aibara argues that neither Komoto nor Yano
suggests that pigment selection may have an effect on the properties of
yellowing or dry time. (Br. 7.) Aibara concludes that the prima facie case
of obviousness has been rebutted. (Id.)
The Examiner maintains that the showings do not demonstrate the
presence of the required polyfunctional amine in Example 2. (Ans. 8.) In
particular, the Examiner criticizes the absence of identification of the type of
polyamine used in Example 2. (Id.)
On review of the record, including the Office Action mailed 16
November 2004 (rejection over Schlarb) and the response filed 5 January
2005 (introducing the polyfunctional amine limitation to the claims and
pointing out that Schlarb does not teach that component), we understand the
Examiner to be arguing that there is no credible evidence that “a
polyfunctional amine polymerized from one or more monomers,” now
required by claim 1, is present in the coating composition described in
Example 2. (Br. 8.) We note that, after the final rejection, Aibara submitted
a declaration under 37 C.F.R. § 1.132 by Dr. Donald C. Schall on 31 March
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2006; but the Examiner refused to enter that document into the record
because it was not timely filed. (Br. 8.) We decline Aibara’s invitation to
consider evidence not entered into the record by the Examiner. (Id.)
Efficient prosecution of applications for patent requires the timely
submission of evidence, and we will not countenance an end-run around
matters in the Examiner’s jurisdiction. 5 We conclude that Aibara has not
come forward with credible evidence that the composition of Example 2, on
which Aibara relies as evidence of unexpected results, is within the scope of
the claimed subject matter on appeal. As patentability may not be based on
elements not present in the claims, In re Self, 671 F.2d 1344, 1348 (CCPA
1982), we conclude that Aibara has failed to prove unexpected results based
on Example 2.
Moreover, the Examiner found that Aibara has failed to present
evidence of unexpected results commensurate with the scope of the subject
matter from which they seek to exclude the public. (Ans. 9.) In particular,
the Examiner found that the single composition based on the single binder

5 We note that although the Examiner summarized the declaration (Ans. 8),
the Examiner did not comment on the merits of the declaration as evidence
of unexpected results. The Examiner’s silence in this regard is proper, as the
evidence is not of record. To the extent that it might be argued that the
Examiner has in fact considered the Schall declaration and that our refusal to
consider it elevates form over substance, we note that Dr. Schall testifies that
he “can verify that they [binder aqueous emulsions Fastrack 3247 and
Fastrack 53] contain a polyfunctional amine.” (Schall Declaration 2, ¶ 4.)
As already noted, however, the claims require the presence of “a
polyfunctional amine polymerized from one or more monomers.” Thus,
Dr. Schall’s declaration fails to establish that the polyamine present in the
aqueous emulsion binder resin is within the scope of the claimed subject
matter.
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resin used in Example 2 was not representative of the full scope of the
claimed coating compositions.
Initially, we reject Aibara’s suggestion that the examiner has the
burden of showing that the evidence offered in support of unexpected results
“would not hold for other compositions within the pending claims.” (Br. 7.)
It has long been the law that, “[a]fter a prima facie case of obviousness has
been established, the burden of going forward shifts to the applicant.” In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). It is then “incumbent upon
appellants to submit clear and convincing evidence to support their
allegation of unexpected property.” In re Heyna, 360 F.2d 222, 228 (CCPA
1966) (citation omitted). That showing of unexpected results must be
commensurate in scope with the claimed range. In re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003) (citations omitted).
In this case, the scope of the claimed subject matter is vast,
encompassing compositions comprising an aqueous emulsion binder
polymer, a polyfunctional amine polymerized from one or more monomers,
and zinc phosphate or calcium zinc phosphate pigment. There are minimal
limitations as to the identity of the polymeric components, and minimal
limitations as to the relative amounts of any of the components. The
showing of unexpected results is limited to Example 2, which exemplifies a
single, unidentified acrylic emulsion polymer, an unidentified polyamine,
the function of which does not appear to be stated clearly, and small
amounts of the zinc pigments. The disclosed allegedly unexpected
properties, namely, rapid drying and less yellowing, would seem likely to be
sensitive to the identities and relative quantities of all the components of the
coating composition. For example, the porosity of the coating would likely
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affect the rate of drying and the degree of penetration by iron compounds, as
likely would the polarity of the composition. Yet Aibara has not explained
why the single Example 2 would be fairly representative of the entire class
of compositions covered by the claims, assuming arguendo, that the
polyamine of Example 2 is within the scope of the claims.
On the present record, we conclude that Aibara has not come forward
with evidence of unexpected results commensurate in scope with the
claimed subject matter. Accordingly, we find that Aibara has not shown
reversible error in the Examiner’s conclusion that the claimed subject matter
is obvious in view of the combined teachings of Komoto and Yano.
C. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 1-5 under 35 U.S.C. §
103(a) in view of the combined teachings of Komoto and Yano is
AFFIRMED; and
FURTHER ORDERED that 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

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rvb

ROHM AND HASS COMPANY
PATENT DEPARTMENT
100 INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19106-2399

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