Ex parte BORS et al.

Board of Patent Appeals and Interferences

Feb 28, 2001

08272438 (B.P.A.I. Feb. 28, 2001)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 21

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL A. BORS, ANN R. HERMES,
JOSEPH M. ROKOWSKI and DAVID G. SPEECE
__________

Appeal No. 1998-3205
Application No. 08/272,438
__________

ON BRIEF
__________

Before WINTERS, ROBINSON and MILLS, Administrative Patent Judges.

WINTERS, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s

final rejection of claims 6-10. Claims 1-5 and 11, which are the only other claims
remaining in the application, stand withdrawn from further consideration by the
examiner as directed to a non-elected invention.

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Application No. 08/272,438

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REPRESENTATIVE CLAIM
Claim 6, which is illustrative of the subject matter on appeal, reads as
follows:
6. A method for improving the gloss retention on exposure to light of a dried
coating formed from a coalescent-free aqueous coating composition comprising
forming said coalescent-free coating composition, said composition
comprising an aqueous emulsion-polymerized polymeric binder having a glass
transition temperature from about –35 ºC to about +25 ºC, said binder comprising
from about 2% to about 20%, by weight based on the weight of said polymeric
binder, of at least one copolymerized ethylenically-unsaturated active methylene
monomer [emphasis added];
applying said coating composition to a substrate;
drying said coating composition; and
exposing said coating composition to light.

THE REFERENCES
The references relied on by the examiner are:
Bernard 5,278,227 Jan. 11, 1994
(filed October 21, 1992)

Bors et al. (Bors) 5,296,530 Mar. 22, 1994
(filed July 28, 1992)

Smith 3,554,987 Jan. 12, 1971

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THE REJECTIONS
Claims 6-10 stand rejected under 35 U.S.C. § 102(a) or (b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103 as unpatentable over Bors, Smith or
Bernard.1
On consideration of the record, we reverse each of these rejections.
DISCUSSION
As stated in In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990), “[r]ejection for anticipation or lack of novelty requires, as the first step in
the inquiry, that all the elements of the claimed invention be described in a single
reference.” Here, the examiner has not established that Bors describes a
“coalescent-free” coating composition as recited in claim 6. Nor has the examiner
established that Bors describes a coating composition comprising “an aqueous
emulsion-polymerized polymeric binder having a glass
transition temperature from about -35ºC to about +25ºC.”

1 As the case is briefed before us, the prior art references have been relied on
under 35 U.S.C. § 102(a) or (b). Smith constitutes prior art under 35 U.S.C.
§ 102(b). Bernard and Bors do not appear to constitute prior art within the meaning
of 35 U.S.C. § 102(a) or 35 U.S.C. § 102 (b). However, these references do
appear to constitute prior art under 35 U.S.C. § 102(e). Appellants have not
disputed the examiner’s position that all of the references are prior art to appellants’
invention.

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Furthermore, with regard to the § 103 aspect of the rejection, the examiner
has not explained how a person of ordinary skill would have been led from “here to
there,” i.e., from the composition of Bors to the “coalescent-free” coating
composition of appellants comprising “an aqueous emulsion-polymerized polymeric
binder having a glass transition temperature from about -35ºC to about +25ºC.”
Therefore, the examiner has failed to establish that Bors constitutes sufficient
evidence to support a conclusion of obviousness under 35 U.S.C. § 103. In fact,
based on our review of the Bors patent in its entirety, we find that Bors teaches
away from a “coalescent-free” coating composition as that term is defined in
appellants’ specification, page 4, third full paragraph. Bors states that “useful
emulsion polymers will generally have Tg s under 60ºC, since these polymers, with
sufficient coalescent, will form good quality films at ambient temperatures” (col. 5,
lines 59-62). The working examples of Bors disclose coating compositions having
relatively high amounts of coalescent.
Likewise, the examiner has not established that Smith describes or suggests
appellants’ “coalescent-free” coating composition comprising “an

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aqueous emulsion-polymerized polymeric binder having a glass transition
temperature from about -35ºC to about +25ºC.”
We are mindful that when the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the burden of persuasion
shifts and applicant has the burden of showing that they are not. In re Spada, 911
F.2d at 708, 15 USPQ2d at 1658; In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433 (CCPA 1977). On this record, however, the examiner has not established
a sound basis to justify shifting the burden to appellants to demonstrate that the
compositions of Bors or Smith are not the same or substantially the same as that of
appellants. It is not enough, as the examiner seems to believe, that the prior art
discloses an aqueous emulsion-polymerized polymeric binder containing an
amount, by weight, of at least one copolymerized ethylenically-unsaturated active
methylene monomer, which embraces the amount recited in appellants’ claims. On
this record, appellants alone disclose a method for improving the gloss retention on
exposure to light of a dried coating formed from a coalescent-free aqueous coating
composition containing an

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aqueous emulsion-polymerized polymeric binder having a glass transition
temperature from about -35ºC to about +25ºC.
We reverse the examiner’s rejection to the extent that it is predicated on
Bors or Smith.
Turning now to the Bernard reference, we find that Bernard neither discloses
nor suggests a method for improving gloss retention on exposure to light of a dried
coating formed from a coalescent-free aqueous coating composition. On the
contrary, Bernard is drawn to an entirely different field of endeavor, i.e., providing
inherently tacky, emulsion pressure-sensitive adhesive polymers. Furthermore, we
agree with appellants that Bernard would not have suggested a polymeric
composition comprising a polymer having from about 2% to about 20%, by weight
based on the weight of the polymer, of at least one copolymerized ethylenically-
unsaturated active methylene monomer as recited in the appealed claims (see
Appeal Brief, page 9). Accordingly, Bernard does not constitute sufficient evidence
to support a finding of anticipation or a conclusion of obviousness of claims 6-10;
we reverse the examiner’s rejection to the extent that it is predicated on Bernard.

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The examiner’s decision rejecting claims 6-10 is reversed.
REVERSED

SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DOUGLAS W. ROBINSON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
DEMETRA J. MILLS )
Administrative Patent Judge )

Appeal No. 1998-3205
Application No. 08/272,438

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RONALD D. BAKULE
ROHM & HAAS CO.
INDEPENDENCE MALL WEST
PHILADELPHIA, PA 19105

SDW/jlb