Ex Parte Dean et al

Patent Trial and Appeal Board

Jun 14, 2013

11744452 (P.T.A.B. Jun. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/744,452 05/04/2007 Roy E. Dean 2205A1 8839
24959 7590 06/14/2013
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
VO, HAI
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
06/14/2013 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 ROY E. DEAN and ROBERT T. POGUE
____________

Appeal 2012-003514
Application 11/744,452
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 9, 10, 12, and 15-22. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants claim a multi-layer composite coating comprising a
colorant layer containing an aldimine or a ketimine and a UV cured clear
coat deposited over and contacting the colorant layer (claim 9).
A copy of sole independent claim 9, taken from the Claims Appendix
of the Appeal Brief, is set forth below:
Appeal 2012-003514
Application 11/744,452

2
9. In a substrate coated with a cured multi-layer
composite coating wherein the multi-layer composite coating
comprises:

(a) a colorant layer deposited from a coating
composition containing a colorant,

(b) a UV cured clear coat deposited from a UV-
curable clear coating composition deposited over and
contacting the colorant layer wherein the colorant layer also
contains an aldimine or a ketimine.

Under 35 U.S.C. § 103(a), the Examiner rejects independent claim 9
as unpatentable over Wismer (US 3,582,520, patented Jun. 1, 1971) in view
of Cai (US 5,591,807, patented Jan. 7, 1997) and rejects dependent claims
10, 12, 15, 19, 21, and 22 as unpatentable over these references alone or
further in view of other prior art.
Under 35 U.S.C. § 103(a), the Examiner rejects independent claim 9
as unpatentable over Wismer in view of Daly (US 2005/0136277 A1,
published Jun. 23, 2005) and rejects dependent claims 10, 12, and 15-22
(i.e., the remaining claims on appeal) as unpatentable over these references
alone or further in view of other prior art.
Concerning the rejections based on Wismer and Cai, the Examiner
finds that "[n]either Wismer nor Cai discloses a UV cured clearcoat" (Ans.
para. bridging 6-7) but determines that the claimed UV cured clear coat "is a
product-by-process limitation not as yet shown to produce a patentably
distinct article . . . [since] [t]he coating material of Wismer/Cai is identical to
Appeal 2012-003514
Application 11/744,452

3
or only slightly different than the claimed article" (id.). However,
Appellants argue that the clear coat material of Cai is not UV curable and is
different from their claimed clear coat material (App. Br. 3-4), and the
Examiner fails to provide any factually-based rationale for believing that
Cai's clear coat is the same as Appellants' claimed UV cured clear coat.
The § 103 rejections based on Wismer and Cai will not be sustained.
Concerning the rejections based on Wismer and Daly, the Examiner
concludes that it would have been obvious "to apply a [UV cured] clearcoat
of Daly on the pigmented coating of Wismer motivated by the desire to
provide a smooth coating which has a natural wood appearance and fully
penetrates and seals large pores in the wood" (Ans. 9). Appellants argue that
the Examiner's proposed combination of Wismer and Daly "based on
appearance and sealing considerations is speculation on the part of the
Examiner rather than a teaching originating from a logical combination of
the references themselves" (App. Br. para. bridging 5-6). In response to this
argument, the Examiner points out that the proffered motivation for
combining Wismer and Daly "is taken from paragraphs [0007] and [0008] of
Daly" (Ans. para. bridging 12-13, last sentence).
Significantly, the Examiner's point has not been disputed or even
addressed by Appellants in their Reply Brief. Based on the record before us,
we agree with the Examiner that one having ordinary skill in this art would
have combined Wismer and Daly in order to obtain the appearance and
sealing functions of Daly's clear coat as disclosed in paragraphs [0007] and
[0008].
We sustain, therefore, the § 103 rejections based on Wismer and Daly.
Appeal 2012-003514
Application 11/744,452

4
The decision of the Examiner is affirmed.
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

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