Ex Parte Allen et al

Patent Trial and Appeal Board

Sep 28, 2016

12702453 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121702,453 02/09/2010
157 7590 09/30/2016
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
FIRST NAMED INVENTOR
Kathy J. Allen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BMS092053/P09156US 2119
EXAMINER
SERGENT, RABON A
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
veronica. thompson@covestro.com
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 KATHY J. ALLEN, KURT E. BEST, and
JEANETTE J. EASTMAN
Appeal2015-004151
Application 12/702,453
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 11through17. 1 We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellants' invention is generally directed to a method of coating a
substrate comprising applying a coating composition to a substrate and
allowing the composition to cure. App. Br. 4. The coating composition
comprises a mixture of different OH-functional acrylic dispersions and one
or more polyisocyanates, and the coating has a 60Q gloss of 50 or less. Id.
1 Final Office Action entered August 14, 2014 ("Final Act.").
Appeal2015-004151
Application 12/702,453
Claim 11 illustrates the subject matter on appeal and is reproduced below:
11. A method of coating a substrate, comprising:
(1) applying a coating composition to a substrate; and
(2) allowing the composition to cure,
wherein the coating composition comprises a waterborne
polyurethane dispersion comprising the reaction product of:
(A) a mixture of different OH-functional acrylic
dispersions comprising one or more OH-functional
acrylic dispersions prepared by subjecting one or
more vinyl monomer mixtures comprising:
(a) OH-free (meth)acrylic esters and/or
vinylaromatics,
(b) hydroxy-functional vinyl monomers or
hydroxy-functional ( meth )acry lie
esters,
(c) ionic and/or potentially ionic monomers
capable of free radical
copolymerization, and
( d) optionally further monomers, other than
the compounds of components (a}-
( c ); capable of free-radical
co po 1 ymerization
to free-radical polymerization in the
presence of
( e) compounds of the formula
q
R1. ·+·JJ..0 "''> .. ·
0
H
in which
R 1 is an aliphatic, araliphatic or aromatic
radical having 1 to 18 carbon atoms,
R2 is Hor CH3,
R3, R 4 are identical or different aliphatic
radicals having 1 to 7 carbon atoms and
n is 1 to 4,
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Appeal2015-004151
Application 12/702,453
and subsequently dispersing the resultant
copolymer, before or after addition of a
neutralizing agent, in water; and
(B) one or more polyisocyanates obtained by the
reaction of aliphatic, cycloaliphatic, araliphatic
and/or aromatic polyisocyanates with 2-
( cyclohexylamino )-ethanesulfonic acid and/or 3-
( cyclohexylamino )propanesulfonic acid, and
wherein the coating is cleanable, has a root mean square
surface roughness of between 10 and 300 nm, and a 60° gloss
of 50 or less.
App. Br. 12-13 (Claims Appendix).
Appellants (see generally App. Br.) request review of the Examiner's
fmal rejection of claims 11-17 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement, maintained by the Examiner in
the Answer entered February 13, 2015 ("Ans.").
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejection of claims 11-17 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. We add the following for emphasis.
Claims 11-152
The Examiner finds that the gloss values recited in claim 11 are
derived from the specific formulations exemplified in Appellants'
Specification. Final Act. 2. The Examiner finds that the exemplified
2 Appellants argue claims 11-15 together. See generally App. Br.
Therefore, we select claim 11 as representative of this group of claims, and
claims 12-15 will stand or fall with claim 11.
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Appeal2015-004151
Application 12/702,453
formulations are insufficient to establish that Appellants were in possession
of the full scope of the claimed compositions possessing the recited gloss
values, and are only adequate to establish possession of compositions having
the recited gloss values that correspond to the exemplified formulations. Id.
Appellants argue that their Specification "explains that controlling the
gloss of the coatings can be accomplished by varying the ratio of hydroxyl
functional resins." App. Br. 7. Appellants further assert that Figure 1
illustrates this phenomenon by showing 60Q gloss values that vary depending
on the ratio of two hydroxyl functional dispersions used, including showing
that for at least 45% of hydroxyl functional dispersion C, a 60°gloss of 40
was observed, which falls within the range of 50 or less recited in claim 11.
App. Br. 7-9. Appellants contend that Figure 1, when read in combination
with the disclosure in the Specification that gloss can be controlled by
varying the ratio of two hydroxyl functional resins, illustrates that
Appellants had possession of the subject matter of claim 11 at the time of
filing, including the recited range of 60° gloss values. App. Br. 8.
However, we find Appellants' arguments lacking in persuasive merit
because the Specification does not provide a disclosure sufficient to allow
one of ordinary skill in the art to determine the composition of the
formulations used to generate the gloss values illustrated in Figure 1, thus
making it impossible for one of ordinary skill in the art to ascertain whether
the those formulations fall within the scope of the coating compositions
recited in claim 11.
The Y-axis of Figure 1 represents gloss and the X-axis of Figure 1
represents the "[p]ercent of Hydroxyl Functional Dispersion C Replacing
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Appeal2015-004151
Application 12/702,453
Hydroxyl Functional Dispersion Bin Guide Formulation." Fig. 1. The
Figure shows three lines depicting 20Q, 60Q, and 85Q gloss values. Id.
The Specification indicates that four waterborne formulations were
prepared to explore differences in film properties, and the formulations are
described in Table 1. Spec. 16, 11. 12-14. As Appellants point out, the
Specification further indicates that the gloss of the coatings can be controlled
by varying the ratio of two hydroxyl functional resins as shown in Figure 1,
and the Specification states that an example of this is that "formulation 3
represents the left most points on the graph while Formulation 2 is
represented by samples on the right side with 60 degree gloss less than 10."
Spec. 16, 11. 14--18. Table 1 indicates that Formulation 2 contains 30% by
weight Bayhydrol® XP 2542 and 70% by weight Bayhydrol® XP 2546 as the
polyol component and HDI Trimer 2 as the isocyanate component, while
Formulation 3 contains Bayhydrol® XP 2542 as the polyol component and
HDI Trimer 2 as the isocyanate component. Spec. 17 (Table 1 ). The
Specification indicates that Bayhydrol® XP 2542 is an "aqueous, hydroxy-
functional acrylic resin," Bayhydrol® XP 2546 is an "anionic hydroxyl-
functional polyacrylic dispersion," and HDI Trimer 2 is a "CAPS-modified
biuret- and isocyanurate-group containing polyisocyanate based on HDI [1,6-
diisocyanatohexane]." Spec. 15, 11. 10-14, 22-24.
We find no disclosure in the Specification describing the composition
of "Hydroxyl Functional Dispersion B" and "Hydroxyl Functional
Dispersion C" listed in the X axis of Figure 1. In addition, although the
Specification indicates that Formulation 3 represents the left most points in
Figure 1 and Formulation 2 represents the samples on the right side of
Figure 1, the data point on the right side of Figure 1 represents 100% of
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Appeal2015-004151
Application 12/702,453
Hydroxyl Functional Dispersion C replacing Hydroxyl Functional
Dispersion B, whereas Fornmlation 2 contains a mixture of two polyols. If
we were to assume that Hydroxyl Functional Dispersion B corresponds to
the polyol component of Formulation 3, and Hydroxyl Functional dispersion
C corresponds to the polyol component of Formulation 2, it is unclear how
to reconcile the composition of Formula 2 containing a mixture of 3 0%
Bayhydrol® XP 2542 and 70% Bayhydrol® XP 2546 with the sample on
right of Figure 1 that contains 100% Hydroxyl Functional dispersion C. In
other words, Table 1 indicates that Formulation 2 contains a 30%/70%
mixture of two pol yo ls, while the rightmost point of Figure 1 represents a
sample containing 100% of Hydroxyl Functional dispersion C, so it is
unclear how the 30%/70% polyol mixture used in Formulation 2 could
correspond to Hydroxyl Functional Dispersion C. 3 Appellants do not direct
us to any disclosure in the Specification identifying the composition of the
formulations used to generate the data presented in Figure 1. See generally
App. Br. Therefore, one of ordinary skill in the art would be unable to
determine whether the Formulations used to generate the gloss values
depicted in Figure 1 correspond to the coating compositions recited in claim
11.
Accordingly, the relied-upon disclosures are insufficient to demonstrate that
the inventors were in possession of the coating compositions recited in claim
3 In the Answer, the Examiner attempts to reconcile Figure 1 with the relied-
upon disclosure in the Specification, but at best the Examiner speculates in
doing so because nothing in the Specification indicates the composition of
the Formulations used to generate the gloss data presented in Figure 1. Ans.
3--4.
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Appeal2015-004151
Application 12/702,453
11 having 60Q gloss of 50 or less at the time of filing. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-1564 (Fed. Cir. 1991) (To fulfill with
written description requirement "the applicant must ... convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention. The invention is, for purposes
of the 'written description' inquiry, whatever is now claimed."); see also
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326-1327 (Fed. Cir.
2000) ("As Ruschig[, 379 F.2d 990, 994--95 (CCPA1967)] makes clear, one
cannot disclose a in the original application, and then later pick a r
out of the forest and say here is my invention. In order to satisfy the written
descrl"pt1"on requ1"rement the h~·i?;" ,,,'.-n-t·c· d'""''.,~;,,,~- d';" -:.--;nod ·'i1"" •q;-., i·n n,.-_,, ' '-·' ~ ~-'--'~-·'-·· "-'--'-~-'"-'- ~\.. '-"':- '-~'~ ~ \...·,.· ~-~ ~ ~~ ... .:-_) ~-~ ~, •. ~-K-'--'--'-'-··'-·" (.'-.'- '-·~ ~'-~-~ ... '-'-·· .... ~ ... '-~·'-
We therefore sustain the Examiner's rejection of claims 11-15 for
failing to comply with the written description requirement.
Claim 16
Claim 16 depends from claim 11 and recites that the 60Q gloss is 40 or
less. Appellants present essentially the same arguments for claim 16 as they
present for claim 11, and rely on the same portions of the Specification and
Figure 1 in support of their arguments. App. Br. 9-10. However, as
discussed above, Appellants do not direct us to any disclosure in the
Specification that would allow one of ordinary skill in the art to determine
the composition of the formulations used to generate the gloss values
illustrated in Figure 1, and one of ordinary skill would therefore be unable to
ascertain whether the those formulations fall within the scope of the coating
compositions recited in claim 16. Accordingly, Appellants do not
demonstrate that they were in possession of the coating compositions recited
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Appeal2015-004151
Application 12/702,453
in claim 16 having 60Q gloss of 40 or less at the time of filing, and we
therefore sustain the Examiner's rejection of claim 16 for failing to comply
with the written description requirement.
Claim 17
Claim 1 7 depends from claim 11 and recites that the 60Q gloss is less
than 10. Appellants argue that the Specification explicitly recites this range
of gloss values by stating that "Formulation 2 is represented by samples on
the right side [of Figure 1] with 60 degree gloss less than 10," and
Appellants contend that the Specification thus explicitly conveys that
Appellants were in possession of the subject matter of claim 1 7 at the time
of filing. App. Br. 10. However, as discussed above, we find no disclosure
in the Specification describing the composition of "Hydroxyl Functional
Dispersion B," used in the sample on the right side of Figure 1, and
Appellants do not direct us to any disclosure in the Specification identifying
the composition of this formulation. Accordingly, one of ordinary skill in
the art would be unable to determine whether the formulation containing
"Hydroxyl Functional Dispersion B" used to generate the gloss value
depicted on the right side of Figure 1 corresponds to the coating
compositions recited in claim 17.
Therefore, Appellants do not demonstrate that the inventors were in
possession of the coating compositions recited in claim 1 7 having 60Q gloss
of less than 10 at the time of filing, and we therefore sustain the Examiner's
rejection of claim 17 for failing to comply with the written description
requirement.
ORDER
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Appeal2015-004151
Application 12/702,453
For the reasons set forth above and in the Answer, the Examiner's
rejection of claims 11-17 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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