Ex Parte Calle et alDownload PDFPatent Trial and Appeal BoardMay 8, 201712792238 (P.T.A.B. May. 8, 2017) Copy Citation 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. 12/792,238 06/02/2010 Luz M. Calle KSC-12723-DIV 4325 25190 7590 05/08/2017 NASA JOHN F. KENNEDY SPACE CENTER MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL ATTN: PATENT COUNSEL KENNEDY SPACE CENTER, EL 32899 EXAMINER SEIDLECK, JAMES J ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 05/08/2017 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 LUZ M. CALLE and WENYAN LI1 Appeal 2016-001535 Application 12/792,238 Technology Center 1700 Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and DEBRA L. DENNETT, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—14 under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and designate our affirmance of the rejections of claims 1—3, 5—7, and 12—14 as new grounds of rejection and enter a new ground of rejection of claims 1—12, and 14 pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellants identify the real party in interest as the United States of America as represented by the Administrator of the National Aeronautics and Space Administration. Appellants’ Appeal Brief 3, filed March 6, 2015 (hereinafter “App. Br.”). Appeal 2016-001535 Application 12/792,238 Appellants’ invention is a coating for metals and metal alloys that provides corrosion detection and/or reduction. Specification (“Spec.”) 3— 4. The invention teaches a coating vehicle having dispersed therein microcapsules encapsulating a corrosion indicator. Id. f 6. The microcapsules are made from a prepolymer and a cross-linking agent having one or more ester or thioester groups that are broken down under basic pH conditions that often form in the presence of corrosion in a metal or metal alloy, e.g., the formation of rust is a cathodic reaction that produces a basic condition. Id. ]Hf 13—14. The Specification further describes that “a trauma, such as a scratch, an impact, etc.” can also break the microcapsules “to release corrosion inhibitor that acts to reduce the likelihood of the exposed metal of corroding.” Id. 16—17. Claim 1 is exemplary of all the claims on appeal and is reproduced below: 1. A coating comprising: a coating vehicle; and microcapsules dispersed in the coating vehicle, said microcapsules comprising shells encapsulating at least an indicator for indicating the presence of corrosion; said microcapsule shells formed of a material that breaks down in the presence of an alkaline condition naturally occurring in the presence of corrosion, thereby releasing at least the indicator. App. Br. 42, Claim App’x. The Examiner maintains, and the Appellants appeal the following rejections. 2 Appeal 2016-001535 Application 12/792,238 1. Claims 1—12 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Guilbert2 in view of Van Koppenhagen.3 2. Claims 1—3, 5—7, 12, and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kumar4 in view of Van Koppenhagen. 3. Claims 1—12 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sarangapani5 in view of Weston.6 4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Guilbert in view of Van Koppenhagen and Frankel.7 5. Claims 2 and 13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kumar in view of Van Koppenhagen and Frankel. 6. Claims 1—14 are provisionally rejected on the non-statutory doctrine of obviousness-type double patenting over claims 2—6, 8, and 13 ofU.S. Application 13/542,155 (the “’155 application”). 2 U.S. Patent 6,075,072, issued June 13, 2000 to Curtis R. Guilbert et al. 3 U.S. Application Publication 2002/0004059 Al, published January 10, 2002 and naming Juanita Elena Van Koppenhagen et al. as inventors. 4 Ashok Kumar, et al., “Smart Coatings,” U.S. Army Engineer Research Development Center (ERDC), Construction Engineering Research Laboratory (CERL), 23rd Army Science Conference, Orlando FL, Dec. 2002. 5 U.S. Patent 7,192,993 Bl, issued March 20, 2007 to Srinivasan Sarangapani et al. 6 U.S. Patent 6,716,526 B2, issued April 6, 2004 to Rachel Clare Weston et al. 7 U.S. Application Publication 2003/0068824 Al, published April 10, 2003 and naming Gerald S. Frankel et al. as inventors. 3 Appeal 2016-001535 Application 12/792,238 7. Claims 1—14 are provisionally rejected on the non-statutory doctrine of obviousness-type double patenting over claims 2—6, 8, and 13 of U.S. Application 13/354,576 (the “’576 application”). Appellants do not present substantive arguments for any claims on appeal, including separately rejected claims 2 and 13. See App. Br. 40. Accordingly, all claims stand or fall with representative claim 1. Unless otherwise indicated, we adopt the Examiner’s findings in the Answer as our own and add any additional findings of fact appearing below for emphasis. II. Discussion Guilbert in view of Van Koppenhagen All the claims stand rejected as obvious over Guilbert and Van Koppenhagen, either alone or further in view of Frankel. The Examiner finds that Guilbert teaches a coating that includes microcapsules that encapsulate, among other things, a marker dye (i.e., indicator), which is capable of indicating corrosion. Final Rej. 4; Ans. 2. Guilbert describes that the materials are encapsulated in a urea-melamine- formaldehyde microcapsule, which bursts upon mechanical shearing contact therewith to release the encapsulated materials. Final Rej. 5; Ans. 3 (citing Guilbert, col. 5,11. 34-47). The Examiner acknowledges that Guilbert does not teach that the urea-formaldehyde microcapsules are a material that breaks down in the presence of an alkaline condition. Final Rej. 5; Ans. 3. Van Koppenhagen teaches that urea-formaldehyde or melamine- formaldehyde microcapsules comprising one or more ester or thioester crosslinking agents, which are cleaved under basic conditions. Van Koppenhagen || 8—9. Appellants’ Specification teaches identical 4 Appeal 2016-001535 Application 12/792,238 crosslinking to provide the identical function of cleaving under basic conditions. See Spec. 113. The Examiner contends that “the microcapsule shell composition taught by Guilbert is substantially the same as that of the instant capsule shell and thus the properties appellant discloses and/or claims, i.e. sensitivity of the shell to high pH, are necessarily present.” Ans. 3. We agree with Appellants that the Examiner has failed to establish the identity suggested. Guilbert specifically teaches a process for manufacturing a urea-melamine- formaldehyde microcapsule that includes 25% glutaric dialdehyde as a cross-linking agent. Guilbert, col. 9,1. 9. Appellants’ Specification expressly states that the cross-linking agent provides the pH-dependent cleaving, namely by the use of “one or more ester or thioester groups that are broken down under basic conditions.” Spec. 113. Glutaric dialdehyde is not an ester or thioester containing cross-linking agent, and the Examiner has provided no scientific basis or reasoning to support a finding that the specifically described urea-melamine-formaldehyde microcapsules of Guilbert are substantially the same as those taught by Appellants’ invention and necessarily or inherently break down in the presence of an alkaline condition. The Examiner additionally reasoned that, because it was known in the art that atmospheric corrosion is an oxygen reduction reaction, which raises pH, a fact not disputed by Appellants (see Final Rej. 10; Ans. 14—15), “it would have been obvious to one of ordinary skill in the art to apply the alkaline-sensitive release microcapsule shell composition of Van Koppenhagen to corrosion protective microcapsules of Guilbert et al. in 5 Appeal 2016-001535 Application 12/792,238 order to trigger or initiate breakdown of the capsule wall by corrosion at a metal surface.” Final Rej. 5; see also Ans. 4. Guilbert has exemplified one specific urea-melamine-formaldehyde microcapsule composition. Although the Examiner has established that it was known that corrosion causes an alkaline condition, the Examiner has not explained why this fact would have suggested that the skilled artisan use a different microcapsule than that taught by Guilbert, i.e., why the skilled artisan would have used the ester or thioester cross-linker of Van Koppenhagen instead of the glutaric dialdehyde cross-linker of Guilbert. We agree with Appellants that “[ajbsent Appellant’s own Specification, there is no recognition in the art of record that the alkaline conditions resulting from corrosion could be exploited to release encapsulated corrosion indicators, corrosion inhibitors or film-forming compounds, nor is there any evidence of a desire to do so.” Reply Br. 3. The mere fact that corrosion is alkaline is not a sufficient reason for a skilled artisan to replace the microcapsule taught by Guilbert that is otherwise well suited for its intended purpose. Accordingly, we do not sustain the Examiner’s rejections based on Guilbert in combination with Van Koppenhagen. Sarangapani in view of Weston The Examiner finds that Sarangapani teaches a coating comprising microcapsules containing a corrosion inhibitor and an indicator. Final Rej. 7; Ans. 7. Sarangapani teaches using UF microcapsules having a diameter 6 Appeal 2016-001535 Application 12/792,238 of 63 to 150 microns but, unlike Guilbert, does not describe any particular microcapsule formulation. Id. (see Sarangapani, col. 7,1. 39 to col. 8,1. 16). The Examiner finds that Weston teaches a microcapsules that breaks down under alkaline conditions, and specifically suggests that the microcapsules contain “pigments, dyes, colorants” or “corrosion inhibitors.” Weston, col. 5,11. 46—50, col. 6,11. 29—34. Weston specifically teaches that its microcapsules are a substitute for known melamine-formaldehyde resin microcapsules which suffer from lack of durability at elevated temperatures and reduces the risk of formaldehyde evolving at these elevated temperatures. Id., col. 1,11. 47—62. Specifically, the microcapsules of Weston will remain intact at temperatures in excess of 200°C for 15 minutes or more. Id., col. 7,11. 62—67. While Weston is particularly directed to microcapsules that will withstand the high temperatures reached in textile spinning processes, Weston also identifies the suitability of the microcapsules for use in coatings. Id., col. 1,11. 1—15; col. 8,11. 6—8. As with the rejection discussed above, the Examiner contends that “the capsule shell composition of Sarangapani is substantially the same as the presently claimed microcapsules, therefore, it is reasonable to believe that the properties appellant discloses and/or claims (i.e. sensitivity of the shell to high pH) are necessarily present.” Ans. 8. We agree with Appellants that the Examiner has failed to establish the identity suggested. Sarangapani does not teach using an ester or thioester as a cross-liking agent, which provides the pH-dependent cleaving. See Spec. 113. The Examiner has provided no scientific basis or reasoning to support a finding that the specifically described urea-formaldehyde microcapsules genus taught by Sarangapani are substantially the same as those taught by Appellants’ 7 Appeal 2016-001535 Application 12/792,238 invention and necessarily or inherently break down in the presence of an alkaline condition. The Examiner further reasoned that, because it was known in the art that atmospheric corrosion is an oxygen reduction reaction, which raises pH, a fact not disputed by Appellants (see Final Rej. 10; Ans. 14—15), “it would have been obvious to one of ordinary skill in the art to apply the alkaline- sensitive microcapsule shell composition of Weston to corrosion protective microcapsules of Sarangapani et al. in order to trigger or initiate breakdown of the capsule wall by corrosion at a metal surface.” Final Rej. 8; see also Ans. 9. As discussed below, Sarangapani’s teaching would have suggested the use of any urea-formaldehyde microcapsule, known in the art, to encapsulate the corrosion inhibitor and/or indicator. However, as with the combination above, the Examiner has not explained why the skilled artisan would have used a non-urea-formaldehyde microcapsule in the coating of Sarangapani. The mere fact that corrosion is alkaline is not a reason to replace the UF microcapsule taught by Sarangapani that is well suited for its intended purpose. There is no suggestion in Weston that the methacrylic acid polymer microcapsule will break down upon mechanical stress as does the urea-formaldehyde microcapsules. To the contrary, we find that the microcapsules of Weston are more robust than urea-formaldehyde microcapsules and “do not release the core material even when exposed to the harsh conditions, for instance high temperature, high pressures and shearing conditions.” Weston, col. 2,11. 9-13. Accordingly, we do not 8 Appeal 2016-001535 Application 12/792,238 sustain the Examiner’s rejections based on Sarangapani in combination with Weston. New Grounds of Rejection Kumar in view of Van Koppenhagen The Examiner finds that Kumar, like Guilbert and Sarangapani, teaches a coating that includes microcapsules that encapsulate, among other things, a marker dye (i.e., indicator), capable of indicating corrosion. Final Rej. 6; Ans. 5. Unlike Guilbert, however, Kumar generally states that “[d]ue to its stability in many of the commonly used paint solvents, urea formaldehyde (UF) was found to be the best shell material for containing the functional compounds for healing the paint coating film, for corrosion protection, for indicator dye marking, or for lead dust suppression.” Kumar, page 2, | spanning cols. 1—2. Kumar’s silence regarding any particular UF microcapsule formulation would have suggested to the skilled artisan that any commercially available or known UF microcapsule would have been suitable, provided that the microcapsule is within the 60 to 150 micron diameter size range which Kumar describes as the “optimal size.” Id. Thus, Kumar, unlike Guilbert, suggests that any UF formulation would have equally suitable for use in its coating. Van Koppenhagen teaches one such type of UF microcapsule, with a preferred size range from about 1 micron to about 100 microns (Van Koppenhagen | 63), which also has the added benefit of being sensitive to an alkaline pH. Accordingly, it would have been obvious for the skilled artisan to use the UF microcapsule formulation of Van Koppenhagen, or any such UF microcapsule formulation known in the art, because Kumar 9 Appeal 2016-001535 Application 12/792,238 suggests that all known UF microcapsules are interchangeably useful for its purpose, i.e., are stable in paints and will adequately break with mechanical stress. Appellants argue that “[b]y modifying the microcapsules of these primary references to release their contents in the absence of mechanical damage would be detrimental to their intended purpose as their healing compounds may then not be available to respond to any subsequent mechanical damage.” App. Br. 20—21. As discussed above, however, Kumar suggests that UF microcapsule formulation of Van Koppenhagen, like all UF microcapsule formulations, would break down in response to mechanical damage. Further, the Van Koppenhagen UF microcapsule formulation would also break down in response to alkaline pH. Kumar does not teach away from this additional property. Appellants further contend that Van Koppenhagen is non-analogous art because the Examiner admits that it is in a separate field of endeavor and because it is not reasonably pertinent to the problem facing the inventor. Reply Br. 2. However, the prior art suggests that both Kumar and Van Koppenhagen are in the same field of endeavor, namely the field of UF microcapsule applications. For example, Sarangapani, along with Guilbert and Kumar, is directed to a paint coating comprising a UF microcapsules which include corrosion inhibitors, film forming agents, and an indicator. Yet Sarangapani recognizes that microcapsules were known not only in the coating art but also “have been used in a variety of applications, from the pharmaceutical industry (delivery of drugs) to the textile industry (providing protective wear for HAZMAT workers).” Sarangapani, col. 1,1. 48 to col. 2, 1. 23. Thus, Sarangapani acknowledges the relation between alternative 10 Appeal 2016-001535 Application 12/792,238 known microcapsules applications, particularly known applications for UF microcapsules. Thus, one of ordinary skill in the art having the general teaching of Kumar of UF microcapsules would look to any known UF microcapsule application at the time of invention, as any such UF microcapsules would have been useful in the application described by Kumar. Moreover, we disagree with Appellants premise that Van Koppenhagen is limited in its teaching to a microcapsule for pest control applications. Van Koppenhagen’s preferred use is for an agricultural pesticide, but the invention as a whole is directed to a “Base-triggered Release Microcapsules.” Van Koppenhagen, title. Van Koppenhagen specifically teaches additional applications beyond pesticides including non pesticide agricultural chemicals and “materials outside the agricultural field such as detergent powders.” Id. 12; see also id. 1 5 (“Microencapsulated formulations for quick release are known in a number of other applications, such as the printing and xerography industries, in which materials such as inks, pigments, toner particles, etc., are microencapsulated and released quickly upon application of physical force or heat.”). Again, it is emphasized that the reason to use the microcapsules of Van Koppenhagen in the coatings of Kumar is evinced in the teachings of Kumar that suggest any UF microcapsules of appropriate size will be effective. Accordingly, we sustain the Examiner’s rejections of claims 1—3, 5—7, and 12—14 based on Kumar in view of Van Koppenhagen either alone or further in view of 11 Appeal 2016-001535 Application 12/792,238 Frankel. However, because the thrust of the rejection has changed, we designate our affirmance of these rejections as new grounds. Sarangapani in view of Van Koppenhagen As with Kumar, Sarangapani, in providing no teaching of any particular UF microcapsules, suggests the use of any UF microcapsules known in the art at the time of the invention having a size of preferably 63 to 150 microns (Sarangapani, col. 5,11. 51—55) would have been suitable for use in its coating, including the UF microcapsules described in Van Koppenhagen. Sarangapani goes farther and specifically teaches that microcapsules of other industries are within the scope of suitable UF microcapsules. Id., col. 1,1. 48 to col. 2,1. 23. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the appropriately sized UF microcapsules taught by Van Koppenhagen as the microcapsules added to the coating of Sarangapani because Kumar indicates that an UF microcapsule of a particular size would have been suitable for use in its coating. Further, the additional benefit of a pH sensitivity for the UF microcapsules would be further useful in any coating applications within the scope of Sarangapani where such additional property would be desirable because Sarangapani does not teach away from this additional property. Adopting the Examiner’s findings regarding the teachings of Sarangapani and Van Koppenhagen, we enter a new ground of 12 Appeal 2016-001535 Application 12/792,238 rejection of claims 1—12 and 14 under 35 U.S.C. 103(a) as being unpatentable over Sarangapani in view of Van Koppenhagen. Double Patenting Rejections Appellants argue that the rejection based on the ’576 application is merely provisional as the ’576 application has not issued into a patent. App. Br. 28. In fact, the ’576 application issued on August 18, 2015 as U.S. Patent 9,108,178. As prosecution of the ’576 application proceeded, claims 2—6 and 8 were amended, at least by amendments made to claim 1 and claim 13 was withdrawn. Because the Examiner has not provided substantive rejections of the claims of U.S. Patent 9,108,178 as they currently stand, we decline to reach the merits of the double patenting rejection based on the ’576 application. Similarly, the ’155 application issued on October 14, 2014 as U.S. Patent 8,859,288 (the “’288 patent”). However, claims 1—35 of the ’155 application issues without any amendments made to the claims. Thus, the Examiner’s provisional rejection based on claims 2—6, 8, and 13 of the ’155 application is consistent with a non-provisional rejection based on claims 2— 6, 8, and 13 of the ’288 patent. Moreover, Appellants have acknowledged the issuance of the ’288 patent and have presented arguments on the merits of the maintained rejection. See App. Br. 28—31. Thus, it is appropriate to address the merits of the now non-provisional rejection maintained by the Examiner. Appellants argue that the claims of the ’288 patent are directed to a method of forming microcapsules, which is a “wholly unrelated concept[]” to a coating comprising microcapsules. App. Br. 29. Appellants further 13 Appeal 2016-001535 Application 12/792,238 argue that the claims of the ’288 patent do not teach a coating vehicle or an active agent encapsulated in a shell, but rather an active material dispersed in a polymer matrix. Id. The Examiner states that the copending claims are drawn to pH-Sensitive microparticles with matrix-dispersed active agent of one or more corrosion indicators or corrosion inhibitors. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use corrosion-indicating composition of T55 copending application to arrive at the corrosion-detecting coating composition of the instant invention. Ans. 13. We agree with the Appellants’ arguments. In a double patenting rejection, the prior patent does not quality as prior art, and therefore, the patented disclosure, i.e., the patent’s specification, may not be used as prior art. In re Vogel, 422 F.2d 438, 441 (CCPA 1970) (“In considering the [obvious variation] question, the patent disclosure may not be used as prior art.”); see also In re Sarett, 327 F.2d 1005, 1013, 140 USPQ 474, 481 (CCPA1964) (“We are not here concerned with what one skilled in the art would be aware [of] from reading the claims but with what inventions the claims define.”). The claims the Examiner relied upon, claims 2—6, 8, and 13 are directed only to a method of manufacturing microcapsules. Similar microcapsules are taught by Van Koppenhagen. However, the Examiner has provided no reason why the skilled artisan having only a method of making microcapsules would have made a coating comprising said microcapsules, as recited in the claims of the present invention, without the guidance provided either by the present invention or the specification of the ’288 patent. Thus, 14 Appeal 2016-001535 Application 12/792,238 we do not sustain the Examiner’s obviousness-type double patenting rejection based on the ’288 patent. IV. CONCLUSION On the record before us and for the reasons discussed above, we reverse the following rejections: Claims 1—12 and 14 rejected under 35 U.S.C. 103(a) as being unpatentable over Guilbert in view of Van Koppenhagen. Claims 1—12 and 14 rejected under 35 U.S.C. 103(a) as being unpatentable over Sarangapani in view of Weston. Claim 13 rejected under 35 U.S.C. § 103(a) as being unpatentable over Guilbert in view of Van Koppenhagen and Frankel. Claims 1—14 provisionally rejected on the non-statutory doctrine of obviousness-type double patenting over claims 2—6, 8, and 13 of the ’155 application, i.e., the ’288 patent. We sustain the following rejections, but designate each of them as a new ground of rejection: Claims 1—3, 5—7, 12, and 14 rejected under 35 U.S.C. 103(a) as being unpatentable over Kumar in view of Van Koppenhagen. Claims 2 and 13 rejected under 35 U.S.C. 103(a) as being unpatentable over Kumar in view of Van Koppenhagen and Frankel. We enter the following new ground of rejection: Claims 1—12 and 14 rejected under 35 U.S.C. 103(a) as being unpatentable over Sarangapani in view of Van Koppenhagen. 15 Appeal 2016-001535 Application 12/792,238 We decline to address the following ground of rejection: Claims 1—14 provisionally rejected on the non-statutory doctrine of obviousness-type double patenting over claims 2—6, 8, and 13 of the ’576 application, now U.S. Patent 9,108,178. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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-IN-PART; 37 C.F.R, $ 41.50(b) 16 Copy with citationCopy as parenthetical citation