Ex Parte Clark et al

Board of Patent Appeals and Interferences

Mar 31, 2004

10043762 (B.P.A.I. Mar. 31, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 13

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte PATRICK ALBERT CLARK and KRISTIN WEIDEMAIER

____________

Appeal No. 2004-0977
Application No. 10/043,762

____________

ON BRIEF
____________

Before GARRIS, JEFFREY T. SMITH and PAWLIKOWSKI, Administrative
Patent Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 1-8.
Appeal No. 2004-0977
Application No. 10/043,762

2
Claim 1 is representative of the subject matter on appeal
and is set forth below:
1. A method for predicting the outdoor
durability of a first coating relative to the outdoor
durability of at least one other of a set of coatings,
all of said coatings having been formed from aqueous
coating compositions comprising a thermoplastic
emulsion polymer, said method comprising exposing said
set of coatings to the same ambient outdoor conditions
for the same period of time, subjecting said exposed
coatings to a chemiluminescence test, and comparing
the result of said chemiluminescence test performed on
said first coating to the corresponding result for at
least one other of said set of coatings.

The examiner relies upon the following references as
evidence of unpatentability:
Okazaki et al. (Okazaki) 3,891,451 Jun. 24, 1975
Dudler, et al., “Use of Chemiluminescence to the Study of
Photostability of Automotive Coatings”, Polymer Degradation and
Stability, No. 60 (1998), pp. 35-365.

Claims 1-8 stand rejected under 35 U.S.C. § 103 as being
obvious over Okazaki in view of Dudler.
On page 5 of the brief, appellants state that the claims
stand or fall together. We therefore consider claim 1 in this
appeal. 37 CFR § 1.192(c)(7) and (8)(2003).

OPINION
For the reasons set forth in the answer, and below, we
affirm the rejection.
We refer to pages 3-5 of the answer regarding the
examiner’s position in this rejection.
Beginning on page 5 of the brief, appellants argue that
Okazaki fails to teach or suggest the use or need for any
alternative test, and merely compares related samples within a
Appeal No. 2004-0977
Application No. 10/043,762

3
set, and does not teach or suggest predicting the outdoor
durability of a first coating relative to the known outdoor
durability of at least one other set of coatings.
On page 6 of the brief, appellants argue that their method
is a method of predicting outdoor durability [emphasis added].
Appellants argue that Okazaki in view of Dudler does not teach
or suggest measuring the chemiluminescence of a coating in order
to predict the outdoor durability of a first coating relative to
the known outdoor durability of at least one other of a set of
teachings.
First, with regard to the claimed phrase of “predicting the
outdoor durability” [emphasis added], we refer to the examiner’s
comments made on pages 6-7 of the answer, which we incorporate
as our own. Here, the examiner correctly points out that the
specification shows that appellants are only comparing the
results of chemiluminescence testing, and making a conclusion
based on the results from such testing, regarding which coating
will last longer. In this context, the examiner interprets the
claimed phrase for “predicting the outdoor durability”, as such.
We agree. We note that it is a long-standing legal principal
that, during examination proceedings, claims are to be given
their broadest reasonable interpretation consistent with the
specification. In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d
1664, 1667 (Fed. Cir. 2000). Hence we are not convinced by
appellants’ apparent emphasis on the word “predicting” in the
claimed phrase “predicting the outdoor durability” as having a
different meaning other than conducting tests on different
coatings and comparing the results, and based upon such results,
making a conclusion on which coating is more durable than the
other.
Appeal No. 2004-0977
Application No. 10/043,762

4
With regard to appellants’ argument that the applied art
does not suggest predicting the outdoor durability of a first
coating relative to at least one other set of coatings, we find
that claim 1 recites “a method for predicting the outdoor
durability of a first coating relative to the outdoor durability
of at least one other of a set of coatings.” Brief, pages 5-6.
Again, all that is required is a method of conducting tests on
different coatings and comparing the results of such tests with
each other. As pointed on pages 5-6 of the answer, the examiner
clearly explains how Okazaki teaches the concept of conducting
tests on different coatings and comparing the results of such
tests with each other. Hence, this aspect of the claimed
invention is suggested by Okazaki.
Finally, appellants argue that Dudler “merely discloses
that the use of chemiluminescence can be executed on samples
exposed for varying times in different artificial weather
instruments,” and that Dudler does not teach that
chemiluminescence scanning can be used to predict the outdoor
durability of a coating. Brief, page 6. Appellants state that,
to the contrary, Dudler states that extrapolation is not yet
achievable, and refers to the Abstract of Dudler.
On pages 8-9 of the answer, the examiner rebuts and states
that extrapolation is not what is being claimed. We agree for
the reasons discussed above regarding the word “predicting”. We
reiterate that what is claimed is a method that involves
conducting chemiluminescence tests on different coatings and
making a comparison of the results in order to determine outdoor
durability of such coatings as compared with each other.
As pointed by the examiner on page 9, Dudler teaches aging
organic coatings, analyzing aged coatings using
chemiluminescence testing, and comparing the results to
Appeal No. 2004-0977
Application No. 10/043,762

5
previously aged coatings to conclude how the coatings compare
with each other. We are, therefore, not convinced by
appellants’ arguments regarding extrapolation.
In view of the above, we determine that the combination of
Okazaki in view of Dudler sets forth a prima facie case as
discussed by the examiner in the answer. We, therefore, affirm
the rejection.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
JEFFREY T. SMITH ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
Appeal No. 2004-0977
Application No. 10/043,762

6
DR. RONALD D. BAKULE
ROHM AND HAAS COMPANY
100 INDEPENTENT MALL WEST
PHILADELPHIA, PA 19106