Ex Parte Dean et al

Board of Patent Appeals and Interferences

Jul 21, 2008

10910883 (B.P.A.I. Jul. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROY E. DEAN, MILDRED LISA PERRINE, ROBERT T.
POGUE, RON SCHOWENGERDT, DAVID HAGAPIAN, ALAN SMOCK
and INHO SONG

Appeal 2008-2499
Application 10/910,883
Technology Center 1700
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Decided: July 21, 2008
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Before CHUNG K. PAK, THOMAS A. WALTZ, and KAREN M.
HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 31, 33, 34, 36-49, 69 and 70. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-2499
Application 10/910,883

I. BACKGROUND
The invention relates to a wood finish coating composition. Claim 31
is illustrative:
31. A wood finish coating composition comprising a mixture of:
(a) 10 to 30 percent by weight of an acrylated epoxy
comprising an oligomer having a viscosity of less that 10,000
centipoise at 25°С;
(b) 35 to 65 percent by weight of at least one multi-functional
acrylate;
(c) 0.01 to 15 percent by weight of a photoinitiator;
(d) 10 to 30 percent by weight of an amine modified
(meth)acrylate;
(e) 0.01 to 5 percent by weight of a rheology modifier;
(f) 0.01 to 10 percent by weight of a surfactant; and
(g) 0.01 to 10 percent by weight of a ultraviolet light stabilizer,
wherein the percents by weight are based on the total weight of
the composition,
wherein the wood finish composition is substantially free of
monofunctional reactive diluents and exhibits a weight loss of less
than 4% as measured by ASTM D5403 Method A, and
wherein the wood finish coating composition is sprayable.

The Examiner relies upon the following prior art references in the
rejections of the appealed claims:
Dietz 6,353,068 Mar. 5, 2002
Rekowski 6,582,770 June 24, 2003

Cox, Dulany, and Valdes-Aquilera, Novel Low-Viscosity Acrylated Epoxy
Resins for Spray Application and Vacuum Coatings, Paint & Coatings
Industry, 60-64 (1999) (hereinafter “Cox”).

R.C.W. Zwanenburg, How to formulate UV-curing coatings, Cray Valley,
BP22, F-60550 Verneuil en Hallatte, France (hereinafter “Zwanenburg”). 1

1 This undated article was supplied by Appellants in an IDS filed in the
instant application on November 18, 2004. No question has been raised as
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Claims 31, 33, 34, 36-41 and 43-49 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Cox in view of Rekowski.
Claim 42 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cox in view of Rekowski further in view of Zwanenburg.
Claims 69 and 70 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox in view of Rekowski, further in view of Dietz.
Appellants do not argue any of the claims separately with any
reasonable specificity (Br. 3-8). Therefore, we select claims 31, 42, and 69
as representative of the different grounds of rejection set forth above to
decide the issue on appeal regarding all the claims.
ISSUE
The issue is whether Appellants have shown that the Examiner
reversibly erred in rejecting the appealed claims as being obvious to one of
ordinary skill in the art over the applied prior art within the meaning of 35
U.S.C. § 103; specifically, have Appellants established that the Examiner
reversibly erred because there is no motivation to modify the amount of
acrylated epoxy comprising an oligomer having a viscosity less than 10,000
centipoise at 25°C (hereinafter referred to as “the low viscosity acrylated
epoxy”) to be within the claimed range of 10 to 30 percent by weight as
required by independent claim 31.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
to its applicability as prior art; therefore, we assume that it is prior art to the
instant application.
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
It has been held that a prior art reference that discloses a range
encompassing a somewhat narrower claimed range is sufficient to establish a
prima facie case of obviousness. See In re Peterson, 315 F.3d 1325, 1330
(Fed. Circ. 2003). It has likewise been held that where the claimed ranges
overlap or lie inside ranges disclosed by the prior art, a prima facie case of
obviousness exists. See, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). It is well settled that when patentability is predicated upon a
change in a condition of a prior art composition, such as a change in
concentration or the like, the burden is on Appellants to establish with
objective evidence that the change is critical, i.e., it leads to a new
unexpected result. See In re Woodruff, 919 F.2d at 1578.

OPINION
Applying the preceding legal principles to the factual findings of the
record in this appeal, we determine that Appellants have not shown that the
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evidence fails to support the Examiner’s conclusion of obviousness. We
have thoroughly reviewed each of Appellants’ arguments and evidence for
patentability. We are in full 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 35 U.S.C. § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections under 35 U.S.C. §
103(a) for essentially those reasons expressed in the Answer and those set
out herein.
Appellants do not dispute the Examiner’s factual findings that the
combination of Cox and Rekowski teaches all of the claimed ingredients for
a sprayable wood finish coating composition in amounts that overlap the
claimed ranges. Rather, the Appellants’ main argument focuses on the
propriety of modifying the exemplified compositions in Cox to result in the
claimed 10 to 30 percent by weight of the low viscosity acrylated epoxy (Br.
5-7). Appellants contend that since the examples in Cox use 40 percent by
weight of the low viscosity acrylated epoxy, this teaches away from using
the claimed 10 to 30 percent by weight of the low viscosity acrylated epoxy.
We disagree, essentially for the same reasons well stated by the Examiner
(Ans. 4, 8).
A reference “teaches away” when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellants’ invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
That is clearly not the situation before us for the reasons discussed below.
It has also been held that disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure.
See, e.g., In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). We find that even
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though the specific examples of a wood finish composition in Cox each
contain 40 percent by weight of the low viscosity acrylated epoxy, Cox also
describes a broader range. Specifically, Cox teaches that “low-viscosity,
acrylated epoxy resins can be used at 20% or higher concentrations” (Cox, p.
61). The claimed range of “10 to 30 percent by weight” of low viscosity
acrylated epoxy clearly overlaps the disclosed range of “20% or higher
concentrations” described in Cox. This does not constitute a teaching away
from using less than 40 percent by weight; to the contrary, this establishes a
prima facie case of obviousness. In re Woodruff, 919 F.2d at 1578. Thus, a
preponderance of the evidence supports the Examiner’s finding that it would
have been obvious to form a wood finish coating with 10 to 30 percent by
weight of the low viscosity acrylated epoxy.
These teachings of Cox would have given the artisan a reasonable
expectation that the amount of epoxy resin would have been effective in the
claimed range of between 10 to 30 percent by weight, particularly within 20
to 30 percent by weight. See Pfizer, Inc. v. Apotex Inc, 480 F.3d 1348, 1364
(Fed. Cir. 2007) (the expectation of success need only be reasonable, not
absolute).
Appellants also contend there is no guidance on how one should
modify the amounts of the other ingredients in Cox if one uses 20% of the
low viscosity acrylated epoxy versus the exemplified 40% (Br. 7). We
disagree. One of ordinary skill in the art is also a person of ordinary
creativity, not an automaton. KSR, 127 S. Ct. at 1742. One of ordinary skill
in the art would have been led to employ workable or optimum amounts of
ingredients through routine experimentation to obtain the desired
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compositions suggested by Cox2. In re Aller, 220 F.2d 454, 456 (CCPA
1955).
Appellants further contend that the combination of Cox and
Rekowski fails to disclose or suggest any composition that “exhibits a
weight loss of less than 4% as measured by ASTM D5403 Method A” as
claimed (Br. 7). Appellants refer to the evidence that they have provided
that the formulations described in Cox do not exhibit this property3 (id.).
However, we agree with the Examiner that this evidence is not
persuasive of error in the Examiner’s rejection of the claims (Ans. 5-6, 9).
The evidence only establishes that formulations with 40% by weight of the
low viscosity acrylated epoxy in a particular composition do not exhibit the
claimed functionally defined weight loss property. However, as discussed
above, Cox also describes that 20% (or a higher concentration with an
example of 40%) of the low viscosity acrylated epoxy may be used. Thus,
we find that the desired additional weight loss property would have naturally
flowed from following the suggestion of Cox to use 20% by weight of the
low viscosity acrylated epoxy. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI
1985), aff’d mem., 795 F.2d 1017 (Fed. Cir. 1986) (holding that the

2 As the Examiner aptly pointed out, one of ordinary skill in the art would
have readily appreciated that at least two appropriate compositions would
have been to substitute 20% of the low viscosity acrylated epoxy (i.e., Eb
3211 or Eb 3212 of Cox) for the 20% high viscosity acrylated epoxy (i.e., Eb
3720) in the formulations of Tables 2 and 3 of Cox which used the high
viscosity acrylated epoxy (Ans. 4-5).
3Two Declarations under 37 CFR 1.132 were filed on April 26, 2006 (one
executed by Roy Dean and the other by Shawn Duffy) to establish that the
formulations of Cox that used 40% by weight of a low viscosity acrylated
epoxy did not exhibit the claimed weight loss property compared to a
formulation described in the instant application.
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recognition of another advantage flowing naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
difference would otherwise be obvious).
Having determined that prima facie obviousness has been established,
we must begin our consideration anew and consider any evidence of
obviousness against any evidence of non-obviousness. See In re Oetiker,
977 F. 2d 1443, 1445 (Fed. Cir. 1992). When the difference between a
claimed invention and the prior art is a claimed range, as here, the applicant
must show that the range is critical through unexpected results. See In re
Woodruff, 919 F.2d at 1578. The burden rests with Appellants to establish
that the results are unexpected, based on comparisons with the closest prior
art, and commensurate in scope with the claimed subject matter. See, e.g., In
re Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990).
We determine that Appellants have not met this burden. Indeed,
Appellants do not present any explicit arguments based on unexpected
results in the Appeal Brief4. However, to the extent that Appellants may
have relied upon the declarations under 37 CFR 1.132 filed on April 26,
2006 as evidence of unexpected results, this evidence is deficient as it is
clearly not commensurate in scope with representative claim 31. For
example, the only inventive example prepared is one that contains fourteen
(14) ingredients, compared to the seven (7) ingredients listed in claim 31.
Also, the claim defines broad ranges for the amounts of each ingredient. In

4 Appellants state in their Brief: “Where, as here, the Examiner does not
establish a prima facie case of obviousness, the applicant need not submit
any evidence of non-obviousness in rebuttal…” (Br. 3).
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contrast, the inventive example only exemplifies a single point within each
of the amounts encompassed by the representative claim.
These circumstances support our determination that the composition
defined by claim 31 would have been obvious to one with ordinary skill in
this art in view of the prior art applied by the Examiner.
For the foregoing reasons and those stated in the Answer, we agree
with the Examiner’s findings in support of obviousness for claim 31, as well
as for claims 33, 34, 36-41 and 43-49 which were not argued separately,
based on the combined teachings of Cox and Rekowski.
Since Appellants argue only that dependent claims 42, 69, and 70 are
patentable because each depends from claim 31 (Br. 7-8), we sustain the
rejections of these claims for the reasons provided above with respect to
claim 31.
Therefore, we sustain all of the rejections before us on appeal.

DECISION
In summary:
We sustain the § 103 rejection based on Cox in view of Rekowski of
claims 31, 33, 34, 36-41 and 43-49.
We sustain the § 103 rejection based on Cox, Rekowski, and
Zwanenburg of claim 42.
We sustain the § 103 rejection based on Cox, Rekowski, and Dietz of
claims 69-70.
The Examiner’s decision is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

tc

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