13735312 (P.T.A.B. Feb. 20, 2015)

Ex Parte Ambrose et al

Patent Trial and Appeal BoardFeb 20, 2015

13735312 (P.T.A.B. Feb. 20, 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. 13/735,312 01/07/2013 Ronald R. Ambrose 075380A1C1 4011 24959 7590 02/20/2015 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER LEONARD, MICHAEL L ART UNIT PAPER NUMBER 1763 MAIL DATE DELIVERY MODE 02/20/2015 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 ____________________ Ex parte PPG INDUSTRIES OHIO, INC. ____________________ Appeal 2015-002686 Application 13/735,312 Technology Center 1700 ____________________ Before FRED E. McKELVEY, BEVERLY A. FRANKLIN and KAREN M. HASTINGS, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Statement of the Case PPG Industries Ohio, Inc. (“PPG”), the real party in interest (Brief (“Br.”), 1 page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 23 June 2 2014. 3 We have jurisdiction under 35 U.S.C. § 134(a). 4 The application on appeal was filed in the USPTO on 7 January 2013. 5 The application is said to be a continuation of application 12/056,306, filed 6 27 March 2008 (now abandoned). 7 The application has been published as U.S. Patent Application Publication 8 2013/0122765 A1 (16 May 2013). 9 Appeal 2015-002686 Application 13/735,312 2 The Examiner relies on the following evidence. 1 Tye U.S. Patent 6,063,890 16 May 2000 Dai et al. “Dai” U.S. Patent Application Publication 2005/0049358 A11 3 March. 2005 Hesselmans et al. “Hesselmans” U.S. Patent Application Publication 2006/0106189 A12 18 May 2006 Rearick et al. “Rearick” U.S. Patent Application Publication 2006/0141234 A1 29 June 2006 Appellant does not contest the prior art status of the Examiner’s evidence. 2 We have considered the following document cited in the Specification 3 (page 9, ¶ 30) to aid in our understanding of the technology involved: 4 Wagner et al. α,ω-diisocyanatocarbodiimdes, -Polycarbodiimides, and Their Derivatives, 20 ANGEW. CHEM. INT. ED. ENGL 819–830 1981 1 A continuation of the published application matured into U.S. Patent 7,772,307 (20 August 2010). 2 Now U.S. Patent 7,439,316 (21 October 2008). Appeal 2015-002686 Application 13/735,312 3 Related Appeals 1 Ex parte Ambrose, Appeal No. 2011-009842 (PTAB Oct. 31, 2012) (Judges 2 Kratz, Gaudette, and Best) held that polycarbodiimides having the structure set out 3 in claim 1 here on appeal are unpatentable under 35 U.S.C. § 103(a) over the prior 4 art. 5 Ex parte Ambrose, Appeal No. 2013-004685 (PTAB Feb. 20, 2015) (Judges 6 McKelvey, Franklin, and Hastings) holds that thermosetting water-based 7 compositions comprising the polycarbodiimide having the structure set out in 8 claim 1 here on appeal are unpatentable under 35 U.S.C. § 103(a) over the prior 9 art. 10 Claims on Appeal 11 Claims 1–12 are on appeal. Br., page 1; Answer, page 2. 12 Claim 1, which we reproduce from the Claim Appendix of the Appeal Brief 13 (page 8 (some paragraphing added)), reads: 14 Claim 1 15 A compressible substrate [e.g., leather—Specification, 16 page 4, ¶ 9] coated at least in part with a thermosetting water-17 based composition comprising a polycarbodiimide modified for 18 hydrophilicity and a carboxyl-group containing resin, wherein 19 the polycarbodiimide has the following structure selected from 20 (a) or (b): 21 Appeal 2015-002686 Application 13/735,312 4 where e is an integer of from 2 to 20; 1 f and g are each at least 1, and f+g is an integer up to 20; 2 E is a radical selected from 3 where 4 R2 and R3 are hydrocarbon radicals; 5 R4 is hydrogen or a hydrocarbon radical; 6 Y is a radical of the structure: 7 where 8 R is C1 to C4 alkyl; 9 a is 5 to 50 and 10 b is 0 to 35, 11 and when b is present the mole ratio of a to b is at least 1:1; 12 Appeal 2015-002686 Application 13/735,312 5 R1 is hydrogen or a hydrocarbon radical and 1 D is a divalent linking group or a chemical bond and 2 Y is derived from a polyether amine having a molecular 3 weight greater than 500.[3] 4 The Rejections 5 In the Answer, the Examiner maintained a final rejection of claims 1–12 as 6 being unpatentable under 35 U.S.C. § 103(a) over Rearick, Hesselmans, Dai, and 7 Tye. Answer, page 2. 8 In the Appeal Brief Appellant does not argue the separate patentability of 9 claims 2–12 apart from claim 1. Accordingly, we decide the appeal on the basis of 10 claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2012). 11 Analysis 12 As claim 1 reveals, the invention involves a compressible substrate, such as 13 leather, coated at least in part with the thermosetting water-based composition 14 which we hold unpatentable over Hesselmans and Dai in Appeal No. 2013-004685. 15 The issue is whether one skilled in the art would have found it obvious to 16 use the Hesselmans polycarbodiimide modified with the Dai chain terminator to 17 coat a substrate. 18 Hesselmans teaches one skilled in the art that a composition prepared from a 19 polycarbodiimide having a chain terminator (different from the chain terminator of 20 Dai) in combination with a cross-linker for a carboxylic group-containing resin is 21 useful for coating a substrate, for example leather. Hesselmans, ¶ 12. Hesselmans 22 3 We understand molecular weight to mean number average molecular weight. Specification, ¶ 33, line 4. Appeal 2015-002686 Application 13/735,312 6 teaching in this respect is consistent with Appellant’s statement that “[w]ater-based 1 coating composition based on carboxylic acid group-containing polymers and 2 polycarbodiimide crosslinking agents are known for such applications” 3 (Specification, ¶ 5, i.e., coating leather (Specification, ¶ 4).) 4 Rearick also teaches that it is known to coat compressible substrates, 5 including athletic shoes (see Appellant’s claim 12), with aqueous polyurethane 6 compositions. Rearick, ¶¶ 34-36. 7 Basically, the Examiner held that it would have been obvious to use a Dai 8 chain terminator to modify Hesselmans polycarbodiimide to make a coating for 9 compressible substrates. We agree. Hesselmans teaches that its chain terminator 10 polycarbodiimides are useful for coating leather. As we note in Appeal No. 11 2013-004685, one skilled in the art would have appreciated the advantages of 12 substituting the Dai chain terminator for the Hesselmans terminator. Having 13 recognized that advantage, one skilled in the art would also have recognized that 14 the Dai chain-terminated Hesselmans carbodiimide would be useful for the 15 purposes set out in Hesselmans. 16 Appellant suggests that Rearick “gives no hint on the structure of the 17 polycarbodiimide.” Br., page 5. We assume that Appellant refers to Rearick’s 18 discussion on carbodiimide cross-linkers. Rearick, ¶ 30. The significant teaching 19 in the record for using polycarbodiimide cross-linked acid resins as coatings for 20 leather appears in Hesselmans and paragraphs 4–5 of Appellant’s Specification. 21 Rearick reveals that the athletic shoes are also known to have been coated. We do 22 not see why it is necessary for Rearick to describe a particular carbodiimide given 23 that Hesselmans (and Appellant’s Specification) establish that those skilled in the 24 Appeal 2015-002686 Application 13/735,312 7 art would have known that carbodiimide cross-linked acid resins are useful for 1 coating leather. 2 According to Appellant, “Hesselmans . . . [does not] disclose coating 3 compositions on compressible substrates . . . .” Br., page 6, last paragraph; see 4 also Br., page 5 (“Hesselmans offers no hint on using his polycarbodiimides over 5 compressible substrates.”). Paragraph 12 of Hesselmans provides the answer to 6 Appellant’s argument. 7 Appellant argues that Dai’s teaching that its chain terminators have 8 increased mechanical properties, such as adhesion, would not “be relevant to 9 compressible substrates coated with polycarbodiimide compositions as presently 10 claimed.” Br., page 6, first and second full paragraphs. This argument is 11 somewhat curious in view of Applicant’s statement that “[t]he resinous binder 12 should provide adhesion . . . .” Specification, page 1, last line. 13 Appellant asks: “how would one skilled in the art know how to pick and 14 choose from the chain terminators disclosed in Dai and select those that would 15 meet the instant claims?” Br., page 6, second full paragraph. Earlier in the Brief, 16 Appellant observed that “[s]ome of the polyether amines disclosed by Dai meet the 17 structure of Y in the instant claims and others do not.” Br., page 5, first full 18 paragraph, last sentence. Insofar as we can tell, Appellant did not ask a similar 19 question in the Brief in Appeal No. 2013-004685. 20 The relevant disclosure appears in paragraphs 22–23 of Dai, where there is 21 an expression of a preference for polyether monoamines or polyether diamines. 22 Examples of both are set out in paragraph 23. Hesselmans also teaches that the 23 mono- and diamine-polyethoxy/polypropoxy hydrophilic groups are useful for 24 Appeal 2015-002686 Application 13/735,312 8 making compositions useful as coatings. Hesselmans, ¶ 11:4–5. Appellant limits 1 it chain terminators to polyether monoamines. Specification, page 9, ¶ 33. To the 2 extent that one skilled in the art would have wanted to take advantage of Dai’s 3 teachings, there are two realistic choices: monoamines or diamines. Trying both 4 would have been within the skill of the art. KSR Int’l Co. v. Teleflex Inc.., 550 5 U.S. 398, 421 (2007). Moreover, it is apparent that the prior art does not indicate 6 that monoamines, but not diamines, will function for Dai’s and Hesselmans’ 7 purpose—both are said to be useful. Accordingly, one skilled in the art, absent 8 some unexpected result, should be free to use both choices. It therefore becomes 9 apparent that it is Appellant’s inventors, not the Examiner, who picked and choose 10 among prior art options and restricted the invention to prior art monoamines. 11 Decision 12 Upon consideration of the appeal, and for the reasons given herein, it is 13 ORDERED that the decision of the Examiner rejecting all the claims 14 on appeal is affirmed. 15 FURTHER ORDERED that no time period for taking any subsequent 16 action in connection with this appeal may be extended under 37 C.F.R. 17 § 1.136(a)(1)(iv). 18 AFFIRMED 19 20 bar 21