Ex Parte Breidenstein et al

Patent Trial and Appeal Board

Aug 23, 2016

12661855 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/661,855 03/25/2010
27624 7590
AKZO NOBEL INC
AkzoNobel Legal Group
525 W. Van Buren
Chicago, IL 60607
08/25/2016
FIRST NAMED INVENTOR
Jason Paul Breidenstein
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.
ARH ll017US 5823
EXAMINER
LEE,DORISL
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
ipani.patent@akzonobel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON PAUL BREIDENSTEIN, DOUGLAS S. CINOMAN,
PAUL R. HORINKA and EDWARD G. NICHOLL
Appeal2015-004393
Application 12/661,855
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-3, 11, 15, 17, 19-21, and 25-27. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants' invention is best illustrated by independent claim 1,
reproduced below (emphasis added to identify key limitation in dispute):
Appeal2015-004393
Application 12/661,855
1. A powder composition comprising an epoxy resin
based on bisphenol A, a polyhydroxyl functional phenolic
curing agent having a HEW of about 200 to about 500, and at
least one corrosion-inhibiting pigment selected from the group
consisting of molybdates, chromates, metal phosphides, silicates
and phosphates.
The Examiner maintains the rejection of claims 1-3, 11, 15, 17, 19-21
and 25-27 under 35 U.S.C. § 103(a) as unpatentable over Grubb (US
6,677,032 Bl, issued January 13, 2004) and Robitaille (US 3,874,883,
issued April 1, 1975). Ans. 24; App. Br. 4.
Appellants do not argue any claim separate from the other. See
Appeal Brief, generally. Accordingly, we select independent claim 1 as
representative of the claimed subject matter before us on appeal. Claims 2,
3, 11, 15, 17, 19-21 and 25-27 stand or fall with claim 1.
OPINION
We have reviewed each of Appellants; arguments for patentability.
However, we are in agreement with the Examiner that the subject matter of
claim 1 is unpatentable. Accordingly, we sustain the Examiner's prior art
rejection for the reasons explained in the Answer, and we add the following
primarily for emphasis.
Independent claim 1 is directed to a powder composition suitable for
powder coating that requires at least one corrosion-inhibiting pigment
selected from the group consisting of molybdates, chromates, metal
phosphides, silicates and phosphates.
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Appeal2015-004393
Application 12/661,855
We refer to the Examiner's Answer for a statement of the rejection
under appeal. Ans. 2--4. 1
Appellants argue Grubb' s powder coating is loaded with zinc dust to
inhibit corrosion in the coated substrate and, thus, does not disclose a
corrosion inhibiting pigment. App. Br. 7-8; Grubb col. 2, 11. 9-15.
Appellants further argue the prior art, as represented by the PCI article (The
Role of Additives in Powder Coatings, Paint & Coatings Industry Magazine,
Nov. 6, 2003, available at http://www.pcimag.com/articles/the-role-of-
additives-in-powder-coatings), teaches the use of molybdates and other ionic
compounds are ineffective in powder coatings. App. Br. 8-9; PCI Article, 4
(Corrosion Resistance Section). Thus, Appellants argue a skilled person
would have no reasonable expectation that the combination of Grubb and
Robitaille would be successful in achieving the powder compositions recited
in the pending claims. App. Br. 9.
We are unpersuaded by these arguments and agree with the
Examiner's determination that the combined teachings of Grubb and
Robitaille would have led one skilled in the art to the powder composition
described in the subject matter of independent claim 1. The Examiner found
Grubb teaches a powder composition for use in corrosion resistant coatings
comprising a pigment that differs from the claimed invention in that Grubb
does not disclose the use of a corrosion inhibiting pigment. Ans. 2-3; Grubb
col. 2, 11. 15-20, col. 5, 11. 1-20, col. 7, 11. 1-15. To overcome this
1 We refer to the Examiner's Answer for a statement of the rejection on
appeal. Appellants have not indicated in the Reply Brief dated March 2,
2015 that the rejection reproduced in the Examiner's Answer is not
reflective of the rejection presented in prior office actions. See Reply Brief,
generally.
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Appeal2015-004393
Application 12/661,855
deficiency, the Examiner relies on Robitaille as teaching molybdate based
corrosion inhibiting pigments as known components for protective coatings.
Ans. 3; Robitaille Abstract, col. 3, 11. 4--11, 25-32, col. 4, 11. 16-24. Both
references are directed to coating steel surfaces. Grubb col. 1, 11. 6-9;
Robitaille col. 11, 11. 11-13. Thus, the Examiner provided a reasonable basis
for one skilled in the art to use the molybdate pigment of Robitaille as the
pigment in the protective coating powdered composition of Grubb. Ans. 3.
While Appellants argue Grubb uses a coating loaded with zinc dust to
provide corrosion resistance (App. Br. 7-8; Grubb col. 2, 11. 9-15), "[i]t is
prima facie obvious to combine two compositions each of which is taught by
the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose." In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). In addition, while Appellants
argue that the prior art noted above discourages the use of molybdates in
powder coatings, Robitaille suggests their use in powder coating
compositions. App. Br. 8-9; PCI Article, 4 (which also discusses
advantages of "inorganic fillers having good chemical resistance, improve
the general chemical resistance of powder coatings by reducing moisture
vapor transmission and ionic mobility"); Robitaille col. 7, 11. 2, 16-20.
Appellants additionally argue the claimed powder coating
compositions exhibit a high level of corrosion resistance without relying on
the zinc-loaded formulations disclosed by Grubb. App. Br. 10. According
to Appellants, Examples 1 and 2 in the Specification demonstrate powder
coatings employing as little as 5% of a zinc phosphate corrosion-inhibiting
pigment provided acceptable levels of corrosion protection as a comparative
powder coating including 66% of zinc dust. App. Br. 10; Spec. 10-13.
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Appeal2015-004393
Application 12/661,855
Appellants further rely on additional data presented in the Declaration under
37 C.F.R. § 1.132 by Co-Inventor Edward G. Nicholl (Declaration)2. App.
Br. 10-11; Deel. Tables 4, 5.
With respect to the showing proffered by Examples 1 and 2 in the
Specification, all inventive compositions tested are limited to using a zinc
phosphate as the corrosion inhibiting pigment. Spec. 10-13. The
Declaration also includes testing of compositions comprising other corrosion
inhibiting pigments that are not molybdates. Deel. i-fi-1 4--7 (Tables 4, 5).
However, given that the basis for the rejection is a molybdate corrosion
inhibiting pigment (Ans. 3-4), Appellants have not adequately explained
how a showing focused primarily on pigments that are not molybdates
relates to the molybdate pigment of Robitaille.
Table 5 of the Declaration additionally presents data on two sample
compositions comprising molybdate pigments. Deel. i1 5. It is not clear that
this data provides a comparison against the closest prior art; Robitaille in this
case. Moreover, Declarant states that the molybdate pigments show
acceptable corrosion creep back performance. Deel. i1 7. That is, Declarant
does not state that the corrosion creepback performance is unexpected.
Appellants also have not adequately explained why the limited number of
pigments tested in the combined showing, including the two sample
compositions comprising molybdate pigments, are representative of the
entire scope of pigments encompassed by claim 1.
2 The Declaration was submitted to the record on November 19, 2013 and
entered by the Examiner in the Final Action dated January 27, 2014.
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Appeal2015-004393
Application 12/661,855
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims. Thus, Appellants have not provided any persuasive
reasoning or credible evidence why one of ordinary skill in the art would not
have predictably used a Robitaille's corrosion inhibiting pigment in the
powder coating of Grubb.
Therefore, we affirm the Examiner's rejection of claims 1-3, 11, 15,
17, 19-21, and 25-27 under 35 U.S.C. § 103(a) for the reasons presented by
the Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 1-3, 11, 15, 17, 19-21,
and 25-27 under 35 U.S.C. § 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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