Ex Parte Bai et al

Patent Trial and Appeal Board

Jun 23, 2016

12519850 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/519,850 06/27/2011
32692 7590 06/27/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Feng Bai
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.
62043US005 6178
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG BAI, RACHAEL A.T. GOULD, and MARKT. GOULD
Appeal2015-000105
Application 12/519,850
Technology Center 1700
Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal 1 under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 4---6, 9-16, and 20. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a coating containing
titanium dioxide photocatalytic particles and alkali metal silicate binder,
1 Appellants identify the real party in interest as the "3M Company
(formerly known as Minnesota Mining and Manufacturing Company) of St.
Paul, Minnesota and its affiliate 3M Innovative Properties Company of St.
Paul, Minnesota" (Br. 2).
Appeal2015-000105
Application 12/519,850
such as sodium silicate, and which binder further includes tetraethoxysilane
(TEOS). A coated article, including a roofing granule having Appellants'
coating is also claimed.
Claim 1 is illustrative and reproduced below:
1. A coated article, comprising:
an article having an external surface and a coating on the external
surface of the article, wherein the coating is formed from a composition
comprising between 30 weight% and 80 weight% crystalline anatase Ti02
photocatalytic particles and a sodium silicate binder, wherein the sodium
silicate binder further comprises tetraethoxysilane, and wherein the article is
selected from the group consisting of a roofing granule and a tile.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Jacobs
Anderson
Ohwaki
US 6,569,520 Bl
US 2005/0142329 Al
US 2006/0264525 Al
May 27, 2003
Jun.30,2005
Nov. 23, 2006
The Examiner maintains the following grounds of rejection:
Claims 1, 4---6, 9-16, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jacobs in view of Ohwaki. Claims 1, 4, 9, 11-
14, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Anderson in view of Ohwaki. Claims 6 and 16 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Anderson in view of Ohwaki and
Jacobs.
After a careful review of the opposing positions articulated by
Appellants and the Examiner and the evidence of obviousness applied by the
Examiner, we determine that the Appellants' arguments are insufficient to
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Application 12/519,850
identify reversible error in any of the Examiner's obviousness rejections. Jn
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for
substantially the findings of fact and the reasons set forth by the Examiner in
the Examiner's Answer and in the Final Office Action. We offer the
following for emphasis.
Concerning the Examiner's rejection of claims 1, 4---6, 9-16, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Jacobs in view of
Ohwaki, Appellants argue the rejected claims together as a group.
Accordingly, we select claim 1 as the representative claim on which we
decide this appeal as to this ground of rejection.
Appellants argue that the Examiner's proposed combination of Jacobs
and Ohwaki lacks merit because Ohwaki is directed to coatings including
silanes and photocatalytic material, which coatings are suitable for an indoor
environment whereas Jacobs describes a coating with an alkali metal silicate
binder said to be useful in an outdoor environment for a roofing granule;
hence, there would have been no logical reason for one of ordinary skill in
the art to make a modification of the coating material of Jacobs to further
include the silane (TEOS) of Ohwaki as a further binder material in Jacobs
in addition to the alkali metal silicate binder of Jacobs (Br. 5-7).
Appellants' arguments do not expose reversible error in the
Examiner's determination that it would have been obvious for one of
ordinary skill in the art to add the TEOS of Ohwaki to the coating material
of Jacobs for the purposes of providing an additional binder material for the
coating layer of Jacobs for the reasons set forth by the Examiner (Final
Office Act. 6, 21-22; Ans. 3-5; Jacobs, col. 1, 1. 55 to col. 2, 1. 9; col. 2, 1.
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Application 12/519,850
50- col. 3, 1. 1. 2). We observe that Jacobs is not limited to a coating
material that is only useful in an outdoor environment as seemingly argued
by Appellants; rather, Jacobs teaches that the coated granules can be used in
both interior and exterior products (col. 6, 11. 28-36). Moreover, Ohwaki
teaches that the coating product containing silane binder can be employed in
a wide variety of applications, including on brick and mortar substrates
(i-fi-f 165-174, 202). In this regard, the TEOS (silane) binder of Ohwaki is an
ethyl silicate binder2 and Jacobs teaches that silicate binders are useful in its
coating composition (Jacobs, col. 1, 62-65). It would have been well within
the ordinary skill of the art to combine two known binder materials that are
known to be useful in coating materials containing photocatalytic materials
as the binder for Jacobs' coating with the reasonable expectation of
obtaining a coating material with the combined benefits of each of the
binders.
Therefore, Appellants' arguments that are premised on the coating
material of Jacobs and the coating material of Ohwaki having different
requirements; that is, Jacobs being directed to an outdoor application
whereas Ohwaki being directed to indoor utilities, are based on a faulty
premise given the disclosures of the applied prior art discussed above and
are unavailing for showing harmful error in the Examiner's obviousness
rejection.
Furthermore Appellants' argument that the Specification evinces
significantly improved and unexpected durability characteristics for coating
compositions having the claimed combination of binder materials lacks
2 TEOS is an ethyl silicate (see Ohwaki i1 90).
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Application 12/519,850
persuasive merit for the reasons set forth by the Examiner (Ans. 6). In this
regard, representative claim 1 does not require any particular amount of
sodium silicate binder and/or tetraethoxysilane (TEOS). Consequently, the
results reported in the Specification are not commensurate in scope with the
claims as pointed out by the Examiner (Ans. 6). In addition, Appellants
acknowledge that the test results reported are merely illustrative and not
predictive (Spec. p. 11, 11. 8-10). As such the Specification evidence does
not outweigh the evidence of obviousness presented by the Examiner.
It follows that, on this appeal record, we sustain the Examiner's first
stated obviousness rejection.
Appellants rely on substantially the same arguments as made against
the Examiner's first stated rejection in arguing against the second and third
rejections of the Examiner (Br. 7-8). 3
Therefore, we shall likewise sustain the latter rejections.
CONCLUSION
The Examiner's decision to reject the appealed claims is affirmed.
3 In the second and third obviousness rejections, the Examiner relies on a
different primary reference (Anderson); however, Appellants do not furnish
a particularized challenge to the Examiner's findings as to the teachings of
Anderson and conclusively indicate a reliance on substantially the same
argument Appellant makes in traversing the Examiner's first stated rejection.
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Application 12/519,850
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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