Ex Parte Bowman et al

Patent Trial and Appeal Board

Aug 7, 2013

11840292 (P.T.A.B. Aug. 7, 2013)

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.
11/840,292 08/17/2007 Mark P. Bowman 064616A1 1055
24959 7590 08/08/2013
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
WALTERS JR, ROBERT S
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
08/08/2013 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 MARK P. BOWMAN,1
Stephen J. Thomas, and David N. Walters
________________

Appeal 2012-005651
Application 11/840,292
Technology Center 1700
________________

Before CHUNG K. PAK, MARK NAGUMO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Mark P. Bowman, Stephen J. Thomas, and David N. Walters
(“Bowman”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection2 of claims 1-22. We have jurisdiction under 35 U.S.C. § 6.
We affirm.

1 The real party in interest is listed as PPG Industries Ohio, Inc. (Appeal
Brief, filed 1 September 2011 (“Br.”), 1.)
2 Office action mailed 22 June 2011 (“Final Rejection”; cited as “FR”).
Appeal 2012-005651
Application 11/840,292

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OPINION
A. Introduction3
The subject matter on appeal relates to processes of forming
multilayer coatings on substrates, such as automobile body parts. The
multilayer coatings comprise a basecoat layer formed on the substrate and a
clear topcoat layer formed on the basecoat. The topcoats are radiation-
curable at ambient temperature, and are said to provide strong clear coatings
that do not need curing in the 150°C-200°C ovens used for original
equipment manufacturing. (Spec. 1 [0002].)
Representative Claim 1 reads:
A process for forming a multilayer coating on a substrate
comprising:
(a) forming a basecoat layer on the substrate;
(b) forming a clear topcoat layer on the basecoat layer by
depositing a radiation curable topcoat composition onto the
basecoat layer in which the topcoat composition comprises:
(i) a polyene comprising polyurethane (meth)acrylate or
polyester (meth)acrylate,
(ii) a polythiol; and
(c) exposing the topcoat composition to radiation to cure the
topcoat.
(Claims App., Br. 7.)

3 Application 11/840,292, Process for forming multilayer coating with
radiation curable polyene/polythiol coating compositions,
filed 17 August 2007. The specification is referred to as the
“292 Specification,” and is cited as “Spec.”
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Application 11/840,292

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The Examiner maintains the following grounds of rejection:4
A. Claims 1, 4-19, 21 and 22 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Kehr5 and Howard.6
A1. Claim 2 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Kehr, Howard, and Weber.7
A2. Claim 3 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Kehr, Howard, and Hager.8
A3. Claim 20 stands rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Kehr, Howard, and Giuliano.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Bowman does not present substantively distinct
arguments for any of the rejected claims. Accordingly, all claims stand or
fall with claim 1.

4 Examiner’s Answer mailed 23 November 2011 (“Ans.”). The Examiner
has withdrawn a rejection for lack of written description. (Ans. 4.)
5 Clifton L. Kehr and Walter R. Wszolek, Polyene/polythiol paint vehicle,
U.S. Patent 3,898,349 (1975).
6 Dennis D. Howard, Frederick H. Sexsmith, Radiation-curable
compositions, U.S. Patent 4,425,472 (1984).
7 Charles H. Weber and John E. Pickard, Laminated aluminum article and
method, U.S. Patent 3,748,190 (1973).
8 Harold E. Hager et al., Chromate-free protective coatings, U.S.
Patent 6,077,885 (2000).
9 James T. Giuliano, Novel process and article for preparing artificial nails,
U.S. Patent 4,682,612 (1987).
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Application 11/840,292

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Bowman’s principal argument is that the Examiner has misconstrued
the meaning of the term “basecoat.” The proper meaning of the term, in
Bowman’s view, is “a color coat requiring a clearcoat.” (Br. 4, 3d full para.)
As evidentiary support, Bowman cites “Auto Restoration 101,”10 which,
according to Bowman, “defines basecoats and clearcloats in a way those
skilled in the art would construe such terms.” Bowman concludes that the
gelatin sealer described by Kehr in Example 11 and interpreted by the
Examiner as a basecoat for the subsequently applied uv-cured topcoat would
not have been construed as a basecoat by persons skilled in the art.11
During examination, the PTO applies the broadest reasonable
interpretation of terms used in the claims, “taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). It is improper, however, to
import limitations from the specification into the claims. Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Bowman’s argument that the Auto Restoration 101 definitions reflect
the understanding of persons having ordinary skill in the art is not supported
by the evidence offered. The section in which the terms are defined is titled
“Automotive Body and Paint Terminology.” (Evid. App. 1.) Bowman does

10 Copy provided in the Evidence Appendix. A full website address is not
provided.
11 Bowman does not dispute the Examiner’s conclusion that it would have
been obvious to use the (meth)acrylates described by Howard as the
polyenes described by Kehr.
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Application 11/840,292

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not indicate, nor is it apparent, where Auto Restoration 101 conveys a
broader context for the definitions it provides. Attorney argument is not a
credible substitute for evidence of what the artisan knows or thinks. We
therefore decline to credit this argument.
Here, as the Examiner finds, the claims do not provide a definition of
the term “basecoat.” Nor do the claims recite a context of use for the
claimed process. Similarly, the 292 Specification teaches that “[a]utomotive
coatings typically comprise a colored basecoat and a clear topcoat.”
(Spec. [0002].) Here, the presence of the adjective “colored” modifying the
term “basecoat” indicates that the term, at least potentially, can refer to
uncolored coats. The adverb “typically” further reinforces the conclusion
that the term “basecoat” has a more general meaning than a “colored
basecoat.” The Specification also teaches that “[e]xamples of basecoats are
those conventionally used in the auto refinish business and include
physically drying or chemically crosslinking binder vehicles. The basecoats
contain organic and/or inorganic color- and/or effect-imparting pigments.”
(Id. at 6 [0026].) This passage expressly provides examples of basecoats as
used in the auto refinish business, not a general definition of the term. As
we found supra, the claim does not limit the claimed process to refinishing
automobile body parts, so there is no basis to import the definition, even if
accepted as authoritative regarding automobile parts, provided by Auto
Restoration 101 into the appealed claims.
Moreover, the Examiner finds that Kehr teaches that substrates may
be primed with a basecoat. (FR 5, ll. 7-9 and at 6, ll. 3-5, both citing Kehr
col. 10, lines 61-64; Ans. 6, ll. 7-9 and at 7, ll. 3-5.) Specifically, Kehr
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Application 11/840,292

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teaches that “[t]he use of primer coats or top coats of varying structure and
composition is permissible without departing from the spirit of this
invention.” (Kehr, col. 10, ll. 61-64.) The Examiner finds that “alternative
definitions” for the term “basecoat” include “a first coat of a surfacing
material, as paint.” (Ans. 9, ll. 3-4.) Although the Examiner does not cite a
particular dictionary, Webster’s Third New Int’l Dictionary (unabridged)
provides the consistent definition of “priming 1b(2)” for the term “base
coat,” and “the material used in priming a surface” as the relevant definition
of the term “priming.”
The weight of the evidence supports the Examiner’s holding that the
term “basecoat” as used in the claims is broad enough to read on the gelatin
sealer. As our reviewing court has said, “[w]e decline to attempt to
harmonize the applicants’ interpretation with the application and prior art.
Such an approach puts the burden in the wrong place. It is the applicants’
burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112
¶ 2 (“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention.”).” Morris, 127 F.3d at 1056; cf. Hoganas AB v.
Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) (if the patentee, “who
was responsible for drafting and prosecuting the patent, intended something
different, it could have prevented this result through clearer drafting.”).
We conclude that harmful error has not been demonstrated in the
Examiner’s findings of fact or conclusions of law.
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Application 11/840,292

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C. Order
We affirm the rejection of claims 1-20.
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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