Ex Parte CAI

Board of Patent Appeals and Interferences

Apr 28, 2004

08448019 (B.P.A.I. Apr. 28, 2004)

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is not binding precedent of the Board.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. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RUBING CAI
_____________
Appeal No. 2004-1062
Application No. 08/448,019
______________
ON BRIEF
_______________
Before KIMLIN, KRATZ and PAWLIKOWSKI, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-4,
7-11 and 14. Claim 5 has been allowed by the examiner.
A copy of illustrative claim 1 is appended to this decision.
The examiner relies upon the following references as
evidence of obviousness:
Druetzler 4,619,955 Oct. 28, 1986
Aoki et al. (Aoki) 5,087,661 Feb. 11, 1992
Zwiener et al. (Zwiener) 5,126,170 Jun. 30, 1992
Appeal No. 2004-1062
Application No. 08/448,019
2
Appellant’s claimed invention is directed to a coating
composition comprising an imine of the recited formula, a
polyisocyanate, a polyaspartic ester, and an isocyanate
functional urethane. The composition is substantially free of
hydroxyl groups. According to appellant, the coating composition
of the present invention has an extended pot life, excellent
cure, and “provides coatings having impact resistance” (page 3 of
principal brief, first sentence).
Appealed claims 1-4, 7-11 and 14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Aoki and Zwiener in
view of Druetzler.
Appellant submits at page 3 of the principal brief that “all
of the rejected claims should stand or fall together.”
We have thoroughly reviewed each of appellant’s arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will
sustain the examiner’s rejections for the reasons set forth in
the answer, which we incorporate herein, and we add the following
primarily for emphasis.
Appeal No. 2004-1062
Application No. 08/448,019
3
Appellant does not dispute the examiner’s factual
determination that Aoki discloses curable polyurethane
compositions comprising an imine which falls within the claimed
formula, a polyisocyanate, and a polyurethane prepolymer having
two or more isocyanate groups. The composition of Aoki does not
comprise the claimed polyaspartic ester. However, as explained
by the examiner, Zwiener teaches the use of such polyaspartic
esters in polyurethane coatings similar to those of Aoki.
Appellant does not dispute the examiner’s finding that the
suitable polyisocyanates of Zwiener that “are disclosed in column
2, lines 34-51 are essentially identical to those disclosed in
Aoki et al.” (page 5 of answer, third paragraph). Appellant also
does not contest the examiner’s finding that “[t]he polyaspartic
esters [of Zwiener] are also within the range of the instantly
claimed polyaspartic esters” (id.) Consequently, as a result of
the collective teachings of Aoki and Zwiener, we concur with the
examiner that it would have been obvious for one of ordinary
skill in the art to formulate a polyurethane coating containing
polyisocyanates, polyurethane prepolymers and a combination of
curatives comprising the imines of Aoki and the polyaspartic
Appeal No. 2004-1062
Application No. 08/448,019
4
esters of Zwiener. As properly noted by the examiner, it is a
matter of obviousness for one of ordinary skill in the art to
combine the components taught by the prior art to be useful for
the same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ
1069, 1072 (CCPA 1980).
The examiner also appreciates that neither Aoki nor Zwiener
teaches the specific claimed isocyanate functional urethane.
However, appellant does not take issue with the examiner’s legal
conclusion that it would have been obvious for one of ordinary
skill in the art to employ the specific isocyanate functional
urethane of Druetzler in the coatings of Aoki and Zwiener for the
purpose of obtaining flexible coatings (see page 7 of answer).
Appellant contends that “the Examiner has ignored the fact
that Aoki discloses a moisture curable coating composition in
which there is an excess of free isocyanate groups to react with
atmospheric moisture after the coating composition is applied to
the object to be coated” (page 5 of principal brief, first
paragraph). However, we, like the examiner, do not understand
the relevancy of this argument inasmuch as appellant has failed
to explain how Aoki’s teaching of a moisture curable compo-
Appeal No. 2004-1062
Application No. 08/448,019
5
sition militates against the obviousness of coating compositions
within the scope of claim 1 on appeal. We observe that appealed
claim 1 does not define the composition as not moisture curable.
Appellant also presents the argument that “the imine
disclosed by Aoki is limited to aldimines formed from aromatic
aldehydes” (id.). However, R1 and R2 of the claimed formula can
be an aryl group and appellant has not disputed the examiner’s
finding that the imines disclosed by Aoki are within the scope of
the appealed claims. Hence, appellant’s contention that “Aoki
teaches away from the use of aldimines other than those formed
from aromatic aldehydes, and in particular, from those formed
from aliphatic aldehydes” (id.) is not germane to the claimed
subject matter on appeal.
Appellant also maintains that “Zwiener’s disclosure is
limited to the use of polyaspartic esters with polyhydroxyl
compounds as the optional isocyanate-reactive component”, whereas
the claimed composition is “substantially free of hydroxyl
groups” (page 5 of principal brief, second paragraph). However,
as acknowledged by appellant, Zwiener’s use of polyhydroxyl
compounds is optional. Consequently, Zwiener fairly teaches
compositions that are substantially free of hydroxyl groups.
Appeal No. 2004-1062
Application No. 08/448,019
6
As a final point, we note that appellant bases no arguments
upon objective evidence of nonobviousness, such as unexpected
results, which would serve to rebut the inference of obviousness
established by the examiner.
In conclusion, based on the foregoing, and the reasons
well-stated by the examiner, the examiner's decision rejecting
the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
EAK/vsh
Appeal No. 2004-1062
Application No. 08/448,019
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HEIDI A. BOEHLEFELD
THE SHERWIN WILLIAMS COMPANY
101 PROSPECT AVENUE NW
1100 MIDLAND BLDG. LEGAL DEPARTMENT
CLEVELAND, OH 44115-1075
Appeal No. 2004-1062
Application No. 08/448,019
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APPENDIX
Claim 1
1. A coating composition comprising:
(i) 1-40 percent by weight of an imine having the structure
wherein n is 0 to 30,
R1 and R2 are selected from the group consisting of
hydrogen, alkyl, aryl, cycloaliphatic, and substituted
alkyl, aryl, and cycloaliphatic groups; and R1 and R2
may be the same or different; and
R3 is selected from the group consisting of aliphatic,
aromatic, arylaliphatic, and cycloaliphatic groups and
which may also contain 0, N, S, or Si;
(ii) 15-55 percent by weight of a polyisocyanate having an
average of at least two isocyanate groups per molecule;
(iii) 1-50 percent by weight of at least one polyaspartic
ester;
Appeal No. 2004-1062
Application No. 08/448,019
9
(iv) 1-20 percent by weight of an isocyanate functional
urethane comprising the reaction product of:
(a) an aliphatic polyisocyanate having an average
of at least 2.1 isocyanate groups per molecule and
selected from the group consisting of biurets and
isocyanurates of linear aliphatic diisocyanates;
and
(b) at least one monofunctional alcohol having a
molecular weight less than about 500 and which is
selected from the group consisting of:
wherein n is from 1 to about 10; R, is an
aliphatic radical of 1 to about 12 carbons; R2 is
H or CH3; R3 and R4 are independently aliphatic of
1 to about 12 carbons or H; R5 is an aliphatic
radical of 1 to about 8 carbons or nothing; X is
Appeal No. 2004-1062
Application No. 08/448,019
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and R6 is an aliphatic radical of 1 to about 12
carbons, and
(c) at least one diol having the formula:
wherein R7 is H or CH3 and y is from 1 to about
40; wherein the total NCO/OH equivalents ratio is
greater than 1.0 and the ratio of OH equivalents
from (b) to OH equivalents from (c) ranges from
0.3:1 to 2.0:1; and
wherein (ii) is different from (iv) and the
coating composition is substantially free of
hydroxyl groups.