Ex Parte Chilla et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10950616 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARC CHILLA, MICHAEL GEORGIADIS, VOLKER KEGEL,
and GUNTER RICHTER
____________________

Appeal 2009-011029
Application 10/950,616
Technology Center 1700
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Decided: April 30, 2010
____________________

Before: MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 2 through 9, 11, 13, 15, 17 and 19, which
are all of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
Appeal 2009-011029
Application 10/950,616
STATEMENT OF THE CASE
The subject matter on appeal is directed to a process for the
production of multi-layer coatings in metallic color shades. Claim 2 is
illustrative:
2. A process for the production of multi-layer coatings in metallic
color shades, comprising the successive steps:
(1) applying a 10 to 30 µm thick base coat layer to a
substrate provided with an EDC primer,
(2) applying a clear coat layer onto the base coat layer,
(3) jointly curing the base coat and clear coat layers,
wherein the base coat layer is applied in a first layer and
in a second layer;

the first layer comprises a modified water-borne metallic base
coat produced by mixing an unmodified water-borne metallic
base coat with an admixture component and the second layer
comprises the unmodified water-borne metallic base coat,

wherein the unmodified water-born metallic base coat has a
solids content of 15 to 30 wt.% and has a ratio by weight of
pigment content to resin solids content of 0.3:1 to 0.45:1,

wherein the pigment content consists 90 to 100% by weight of
at least one non-leafing aluminum pigment with a platelet
thickness of over 100 to 500 nm and 0 to 10% by weight of at
least one pigment different from aluminum pigments,

wherein the pigment(s) different from aluminum pigments are
selected by nature and quantity in such a way that the multi-
layer coating obtained on the conclusion of process step (3)
exhibits a brightness L* (according to CIEL*a*b*, DIN 6174),
measured at an illumination angle of 45 degrees to the
perpendicular and an observation angle of 15 degrees to the
specular, of at least 80 units and

wherein at least 50% by weight of the non-leafing aluminum
pigment(s) are selected from the group consisting of non-
leafing aluminum pigments passivated by chromating, non-
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Application 10/950,616
leafing aluminum pigments coated with a silicon-oxygen
network and combinations thereof;

whereby the base coat layer has a UV transmission of less than
0.1% in the wavelength range from 290 to 380 nm and of less
than 0.5% in the wavelength range from 380 to 400 nm.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:

Schlaak US 5,976,343 Nov. 2, 1999
Falcoff US 4,403,866 Sep. 13, 1983

A. Kiehl & K. Greiwe, Encapsulated Aluminum Pigments, “Progress in
Organic Coatings” 179-183 (1999).

As evidence of patentability of the claimed subject matter, Appellants
rely on a Declaration under 37 C.F.R. § 1.132 executed by Marc Chilla on
May 30, 2006, and entered into the record on Jun. 21, 2006 (hereinafter
"Chilla Declaration").
Appellants appeal the Examiner's rejection of claims 2-9, 11, 13, 15,
17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Schlaak, Kiehl,
and Falcoff.
We address the rejection with respect to claim 2 only as argued by
Appellants. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner reversibly err in determining that it would have been
obvious to employ Kiehl's chromated or silicon-oxygen network-
encapsulated aluminum pigment as Schlaak's aluminum pigment within
meaning of § 103? We decide this issue in the negative.
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PRINCIPLE OF LAW
When assessing whether a claimed invention would have been
obvious, a court must ask “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
ANALYSIS AND CONCLUSION
Appellants argue that the Examiner has relied upon impermissible
hindsight because "[t]he Examiner finds the present invention obvious over
Schlaak, Kiehl, and Falcoff only because he has reviewed the present
application." (App. Br. 7). In addition, Appellants argue that
Not only is Schlaak silent as to the specific type of aluminum
pigments (passivated) and the proportion of the aluminum pigments
[i.e., "at least 50% by weight of the non-leafing aluminum
pigment(s)” as required by claim 2], it also does not disclose the
combination of aluminum pigments with (1) the solids content, (2) the
ratio by weight of pigment content to resins solids content, and (3) the
composition of the pigment content as required by Appellants' Claim
2 process. Only when these three requirements of Appellants' Claim 2
process are met in combination is it possible to have a low UV
transmission when producing multilayer coatings in light metallic
color shades, and only then do these multilayer coatings have the
required technological properties.

(App. Br. 8).
These arguments, however, fail to address the Examiner's stated
findings and determinations that the teachings of the applied prior art
references as a whole, would have suggested the claimed subject matter.
Appellants do not specifically dispute the Examiner's determination
(Ans. 4) that Schlaak, the primary reference, teaches, inter alia, the first and
second layers of the base coat layers, where the second layer has the claimed
solids content and claimed ratio of the pigment content to resins solids
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content required by claim 2. Nor do Appellants specifically dispute the
Examiner's finding (Ans. 6) that "the disclosure of Schlaak is inclusive of
the aluminum pigment’s being the only pigment present (i.e., 100% by
weight)." (Br. 5-11).
While Schlaak does not explicitly state that its aluminum pigment is a
non-leafing aluminum pigment passivated by chromating or a non-leafing
aluminum pigment coated with a silicon-oxygen network as required by
claim 2, Appellants do not specifically dispute the Examiner's finding (Ans.
5) that
Kiehl teaches aluminum pigments encapsulated (i.e., coated) with a
silicon-oxygen [i.e., silica] network. Encapsulating the aluminum
pigments advantageously reduces/eliminates reaction with and
oxidation (i.e., corrosion) by water, making such encapsulated
pigments better suited for incorporation and long-term stability in
water-based coatings (abstract and section 2). Kiehl also teaches that
such pigments may also be chromated for the same purpose (abstract
and section 2).

Thus, we agree with the Examiner's determination that it would have
been obvious to employ Kiehl's chromated or silicon-oxygen network-
encapsulated aluminum pigment as Schlaak's aluminum pigment thereby
"improving . . . [its] long-term stability in the water-based coating." (Ans. 5-
6.)
Moreover, we determine that it would have been obvious to use
Kiehl's chromated or silicon-oxygen network-encapsulated aluminum
pigment as Schlaak's aluminum pigment because such is nothing more than
the predictable use of a prior art element (i.e., chromated or silicon-oxygen
network-encapsulated aluminum pigment) according to its established
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function (i.e., to, inter alia, improve the pigment's long-term stability in the
water-based coating). KSR, 550 U.S. at 417.
In addition, Appellants cite to Examples 1 through 5 and Table 3 of
Example 6 in their Specification to show that
It is not possible . . . to [have] UV transmission reduction if the wrong
aluminum pigments are selected. If unclaimed aluminum pigments
[e.g., having a pigment content of less than 90% of a non-leafing
aluminum pigment or having a pigment content to solids content ratio
outside of the claimed ratio] are selected, the coating loses the
necessary technological properties [i.e., the UV transmission required
by claim 2].

(App. Br. 9).
In addition, Appellants cite to the Chilla Declaration as evidence to
support their argument that the Kiehl's teaching of 3% aluminum is limited
to use in only a gas stability test. (App. Br. 10). Specifically, Appellants
argue that
Kiehl's use of this 3% aluminum pigment, is specifically related to the
gassing stability test. High amounts of aluminum pigment are
commonly used for gassing stability tests because such measure
allows for clear and reproducible gassing stability test results as
higher aluminum pigment produces higher amounts of hydrogen gas,
which facilitates detection. However, in the context of actual
coatings, water-borne base coats of prior art have uses less than 3%
aluminum pigments. Raising the aluminum pigment content in these
coatings results in poor technological properties of the coatings, for
example, poor stone chip resistance, poor adhesion and poor humidity
resistance.

(App. Br. 10).
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These arguments and evidence, however, fail to address and thus fail
to show reversible error in the Examiner's stated reasons1 for arriving at the
claimed invention.
For example, with respect to Appellants' arguments and evidence that
claimed UV transmissions requires having the claimed aluminum pigments
and their amounts, in reference to our above discussion, Appellants do not
specifically dispute the Examiner’s reason to combine the Schlaak and Kiehl
to arrive at the claimed aluminum pigments and their amounts. Thus, as
correctly stated by the Examiner, “[s]ince the cited prior art teaches
Appellant's claimed coating materials and method, it is the Examiner's
position that the coating thereof inherently possesses these properties [i.e.,
the claimed UV transmissions].” (Ans. 7).
In addition, with respect to Appellants' arguments and evidence
relating to Kiehl's teaching of 3% aluminum, the Examiner does not rely on
Kiehl to teach the amount of aluminum pigment. Instead, as stated above,

1 Appellants do not specifically dispute the Examiner's determination that
Falcoff teaches . . . in a pigmented coating composition (i.e., paint),
any desired L* value may be achieved by selecting the proper amount
of colorants, binder, and optional ingredients according to well-known
principles (2:48-3:40 and 5:30-35). This disclosure clearly indicates
that L* is a result-effective variable, the optimization of which is well-
within the level of skill of one of ordinary skill in the art. . . . [I]t
would have been further obvious to one of ordinary skill in the art to
modify the process of Schlaak in view of Kiehl so as to optimize the
L* by routine experimentation according to known principles.

(Compare Ans. 7 with Br. 5-11). Thus, Appellants do not specifically
dispute the Examiner’s stated rejection for combining Schlaak, Falcoff, and
Kiehl.

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the Examiner relies on Schlaak to teach the claimed amount of aluminum
pigment and relies on Kiehl to teach non-leafing aluminum pigments
passivated by chromating or coated with a silicon-oxygen network.
Since Appellants do not specifically dispute these findings or the
Examiner's reason for combining Schlaak and Kiehl, Appellants' arguments
and evidence are unpersuasive of reversible error.
Thus, it follows that the Examiner did not reversibly err in
determining that it would have been obvious to employ Kiehl's chromated or
silicon-oxygen network-encapsulated aluminum pigment as Schlaak's
aluminum pigment within meaning of § 103.

ORDER
The Examiner's § 103 rejection is sustained. Accordingly, the
decision of the Examiner is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2009).
AFFIRMED

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