Ex Parte December et al

Patent Trial and Appeal Board

May 9, 2016

12606704 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/606,704 10/27/2009
80600 7590 05/11/2016
Quinn Law Group, PLLC
39555 Orchard Hill Pl., Ste. 520
Novi, MI 48375
FIRST NAMED INVENTOR
Timothy S. December
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PF-62690 I BASF1019 3246
EXAMINER
LEONG, NATHAN T
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
05/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
monika.hollad@basf.com
ems@quinnlawgroup.com
US Docketing@quinnlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY S. DECEMBER and DANIEL R. W ALDON 1
Appeal2014-008551
Application 12/606,704
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 9-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to coating processes for applying
industrial and automotive coatings such as paint. Spec. i-f 1; Claim 9. Claim
9 is reproduced below from page 15 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is BASF Coatings
GmbH. App. Br. 1.
Appeal2014-008551
Application 12/606,704
9. A method of coating, in a paint shop, automotive vehicle bodies
or parts with select compositions from a compact coating system
including a UV-blocking coating composition, a basecoat
composition, a clearcoat composition, and a monocoat topcoat
composition, the method comprising
applying in the paint shop of an automotive coating process the
UV-blocking coating composition, the basecoat coating
composition, and the clearcoat coating composition to a first
vehicle body or part and applying in the paint shop the UV-
blocking coating composition and the monocoat topcoat coating
composition to a second vehicle body or part,
wherein the monocoat coating composition and the clearcoat
coating composition are in [sic] applied in a same spraybooth,
further wherein each of the UV-blocking coating composition,
the basecoat coating composition, and the monocoat coating
composition comprises from about 0.1 to about 70% by weight,
based on total binder weight, of a first binder resin so as to
prevent incompatibility defects and each of the monocoat coating
composition and the clearcoat coating composition comprises
from about 0.1 to about 50% by weight, based on total binder
weight, of a second binder resin so as to prevent incompatibility
defects, wherein the first binder resin is the same for each of the
UV-blocking, basecoat, and monocoat coating compositions, the
second binder resin is the same for the monocoat and clear
coating compositions, and the first binder resin and the second
binder resin are different from one another.
REJECTIONS ON APPEAL
1. Claims 9-12 stand rejected under 35 U.S.C. § 112, i-f 2, as
indefinite.
2. Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Menovcik et al. (US 2006/0121205 Al, published June 8,
2006) in view of Anderson et al. (US 7,053,149 B2, issued May 30, 2006),
further in view of Falcoff et al. (US 5,462,601, issued Oct. 31, 1995).
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Application 12/606,704
ANALYSIS
Rejection 1
The Examiner concludes that the claims on appeal are indefinite due
to the phrase "so as to prevent incompatibility defects," which is recited in
claim 9. Ans. 2-3, 7. In support of the rejection, the Examiner finds that
"this phrase is unclear because it is unknown what incompatibility defects
are claimed and prevented. . . . Incompatibility between what materials?
What step exactly prevents the incompatibility defects? What materials lead
to incompatibility defects?" Id. at 2.
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). "[D]efiniteness of the language
employed must be analyzed-not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In a
litigation context, the Supreme Court has held that 35 U.S.C. § 112, i-f 2
"require[s] that a patent's claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the scope of the
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2123 (2014). Accordingly, during prosecution, the
inquiry made by the Examiner is focused upon whether the claims set out
and circumscribe a particular subject matter with a reasonable degree of
clarity and particularity. See, e.g., MPEP 2173.02.
We agree with the Appellants that the term "so as to prevent
incompatibility defects" is sufficiently clear to a person of ordinary skill in
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Application 12/606,704
the art so as to comply with§ 112, if 2. As the Appellants point out, if 5 of
the Specification describes the various layers of the compact coating system
and teaches that certain of the layers share binder resins. Paragraph 5
teaches that "the shared resins provide necessary compatibility for spray
application of a plurality of coating compositions .... " Paragraph 9
describes "cratering or other defects due to incompatibility." Those
paragraphs appear to provide answers to several of the Examiner's
questions; i.e., the use of shared resins prevents incompatibility defects, such
as cratering, between different layers of the coating. The fact that claim 9
broadly recites "incompatibility defects" rather than reciting specific defects
(e.g., cratering, delamination) does not render it indefinite, as knowledge of
incompatibility defects appears to be within the ordinary level of skill in the
art. In re Miller, 441F.2d689, 693 (CCPA 1971) ("[B]readth is not to be
equated with indefiniteness ... . ");see also Fowler Deel. if 2
("Incompatibility defects are well-known in the field of automotive
coatings."). The Examiner's analysis provides no basis to doubt Mr.
Fowler's assertion.
On this record, in light of both the Specification's explanation in if 5
(which the Examiner does not address despite the Appellants' express
reliance on it, see App. Br. 7) and the knowledge of a person having
ordinary skill in the art, we are not persuaded that a preponderance of the
evidence supports the Examiner's rejection under 35 U.S.C. § 112, if 2. We
therefore reverse the rejection.
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Application 12/606,704
Rejection 2
The Appellants do not argue the claims separately, so the claims stand
or fall together. See 37 C.F.R. § 41.37(c)(l)(iv). We select claim 9 as
representative of the rejected claims.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejection. Accordingly, we sustain the rejection for reasons set forth by the
Examiner in the Answer. See generally Ans. 3---6, 7-10. We add the
following for emphasis and completeness.
The Examiner finds that Menovcik teaches a method of painting
vehicles comprising applying a UV-blocking coat, a basecoat, and a
clearcoat, and that Menovcik further teaches that the UV-blocking coat and
the basecoat may contain the same binder resins if desired. Ans. 4. The
Examiner concludes that "it would have been obvious ... to have selected
acrylic resin to use in the UV-blocking composition and basecoat, as well as
epoxy resin ... for use in the clearcoat, since Menovcik teaches that these
resins are effective for use in their respective coating layers." Id.
Concerning the claimed concentrations of the binder resins, the
Examiner finds that Menovcik teaches that the basecoat and clearcoat
"should have non-volatiles (i.e., binders ... ) of between 48-52% ... and
52-54%," respectively. Id. The Examiner explains that Menovcik's "non-
volatiles" also include, for example, pigments, and that Menovcik provides
"guidelines as to the concentration of pigment to binder ratio" that would
result in binder concentrations that fall within the broad ranges of0.1to70%
and 0.1 to 50% recited by claim 1. Id.
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Concerning the monocoat layer, the Examiner finds that "it is well-
known in the art that a monocoat is a coating that serves the same purpose as
a basecoat/clearcoat combination," that "Andersen teaches a method of
applying either a basecoat/topcoat or a monocoat onto automobile surfaces,"
and that Andersen teaches a basecoat (which would be used to form a
monocoat) that includes both "acrylic resin and epoxy resin within the
claimed mass ranges." Id. at 4--5. The Examiner concludes that "it would
have been obvious to have applied the coating composition of Andersen as a
single monocoat in the process of Menovcik," and that, because "[n]either
Menovcik nor Anderson teach any incompatibility in the coating steps or
between the two resins ... the process is interpreted to be performed so as to
prevent incompatibility defects." Id. at 5.
Concerning use of the same spray booth for both the monocoat and
the clearcoat, the Examiner finds that Falcoff "teaches a process of spraying
panels with paints ... wherein the spray booth contains an array of nozzles
to spray both a basecoat and a clearcoat ... in the same spray booth." The
Examiner concludes that "[i]t would have been obvious ... to therefore
spray the monocoat and clearcoat in the same booth, as desired, instead of
separate booths so as to minimize capital costs of an additional application
booth, as Menovcik teaches is most efficient." Id.
The Appellants presents several arguments in opposition to the
Examiner's rejection, which we address in tum below:
1. The Appellants argue that "the combined references shows [sic]
only that one could apply both a basecoat coating and a clearcoat coating to
a sample panel in an enclosed spray chamber." App. Br. 10. As set forth
above, however, the Examiner makes specific findings as to how the
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combined references would have motivated a person of ordinary skill in the
art to achieve a method of coating including each element of claim 9, not
limited to only a basecoat and a clearcoat. That Falcoff does not expressly
teach a spray booth that includes a clearcoat and a monocoat is not
dispositive. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)
("[T]he [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ."); In re Keller, 642 F.2d 413, 426 (CCPA 1981)
("[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.").
2. Relying on the declaration of Christopher Fowler, the Appellants
argue that Falcoff concerns a batch process for preparing test panels, which
is not relevant "to a paint shop where the process is not a batch process but
part of an assembly line." App. Br. 10. The Appellants further argue that "it
would not be possible to incorporate the Falcoffbatch process into an
automotive coating process in a paint shop for coating vehicle bodies and
parts," and that "[i]t would not be possible to change an automotive paint
shop coating process into a batch process." Id. at 10-11.
We are not persuaded by those arguments, even in view of the Fowler
Declaration, which we have fully considered and given some weight. See
Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (factfinder has
discretion to give more weight to one item of evidence over another unless
no reasonable trier of fact could have done so). Falcoff, like the claimed
invention, concerns spray coating processes using spray booths and spray
guns. E.g., Falcoff at 2:40-61. As the Examiner finds, "Falcoff clearly
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teaches [batch process] testing steps in order to prepare for an actual,
production line to spray final products." Ans. 8; Falcoff at 1: 14--16 ("Spray
machines are well known in the paint industry for spraying objects along
assembly lines."). Contrary to the Appellants' arguments, the Examiner
does not propose bodily incorporation of Falcoff s spray booths into
Menovcik's painting system; the Examiner relies on Falcoff to show that it
was known in the art to spray multiple different coating layers within a
single spray booth with different nozzles. See Ans. 8. The Appellants have
provided no basis to conclude that modification of Menovcik as taught by
Falco ff (i.e., addition of nozzles to a spray booth to spray multiple different
coats within the same booth) would have been beyond the ordinary level of
skill in the art. The arguments presented by the Appellants do not persuade
us of reversible error in the Examiner's reliance on Falcoff. See Keller, 642
F.2d at 426 ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
3. The Appellants argue that the Examiner's rejection "does not show
that the prior art either discloses or makes obvious a method as claimed in
which the monocoat coating composition shares a first binder resin with the
UV-blocking and basecoat coating compositions used in the process and a
second, different binder resin with the clearcoat coating composition." App.
Br. 11. Specifically, they argue that "[t]he Office has not shown why ... the
very same binder resin should be used in any combination of the coating
layers, or, if used, why it should be used in any particular amount." Id.
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We are not persuaded by those arguments. Menovcik teaches that the
UV-blocking coat may include binder resins such as acrylics and epoxies,
i-f 22, that the basecoat may include binder resins such as acrylics and
epoxies, i-f 31, and that the clearcoat may include binder resins such as
acrylics and epoxies, i-f 33. Indeed, Menovcik's teachings concerning the
binder resins that may be used in the UV-blocking coat, the basecoat, and
the clearcoat are very similar to the Specification's teachings concerning
those coats. Compare, e.g., Menovcik i-f 31 (basecoat) with Spec. i-f 47
(basecoat) and Menovcik i-f 33 ( clearcoat) with Spec. i-f 61 ( clearcoat). In
light ofMenovcik's teachings, it would have been obvious to use an acrylic,
an epoxy, or both an acrylic and an epoxy, in any individual layer or
combination of layers, including an acrylic in two layers (UV-blocking coat
and basecoat) and an epoxy in one layer ( clearcoat ), as proposed by the
Examiner. See Ans. 4; cf also Merck & Co. v. Biocraft Labs., 874 F.2d 804,
807 (Fed. Cir.19 89) ("That the [prior art] patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious.").
Anderson teaches a basecoat (which the Examiner finds is for use in a
monocoat, Ans. 5) that includes an acrylic resin and an epoxy resin.
Anderson Col. 66 (Example 24B). Knowledge that compatibility among
coating layers is critical to coating/painting processes would have been well
within the level of ordinary skill in the art, and a person of ordinary skill
likewise would have understood that a resin would be compatible with itself.
Cf Fowler Deel. i-f 2 ("Incompatibility defects are well-known in the field of
automotive coatings."). Thus, we agree with the Examiner that, in adding
the monocoat of Andersen to the multicoat system of Menovcik, a person of
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ordinary skill in the art, through the use of only ordinary creativity, would
have been motivated to use the acrylic and epoxy taught by Anderson in the
layers ofMenovcik. See KSR, 550 U.S. at 418-19 ("[T]he [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.").
We likewise agree with the Examiner that it would have been obvious to use
Anderson's specific acrylic (a known acrylic for use in automotive paints) in
the UV-blocking coat and basecoat, and Anderson's specific epoxy (a
known epoxy for use in automotive paints) in the clearcoat. Cf Merck, 87 4
F.2d at 807.
With respect to "why [the binder resin] should be used in any
particular amount," App. Br. 11, 12, the Examiner makes specific findings
as to how both Menovcik, see Ans. 4, and Anderson, see id. at 5, lead to the
claimed amounts. The Appellants arguments do not identify reversible error
in those findings. Cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(explaining that, even if the examiner had failed to make a prima facie case,
the Board would not have erred in framing the issue as one of reversible
error because "it has long been the Board's practice to require an applicant
to identify the alleged error in the examiner's rejections" (citing Ex parte
Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential))).
4. The Appellants argue that, in Anderson, "[t]here is no indication
that a monocoat would share a same resin with a basecoat." App. Br. 12.
The Appellants do not dispute the Examiner's findings that "it is well-
known in the art that a monocoat is a coating that serves the same purpose as
a basecoat/clearcoat combination," that "Andersen teaches a method of
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applying either a basecoat/topcoat or a monocoat onto automobile surfaces,"
and that Andersen teaches a basecoat that includes both "acrylic resin and
epoxy resin within the claimed mass ranges." Ans. 4--5. Nor do the
Appellants persuasively contest the Examiner's finding that a person of
ordinary skill in the art would have been motivated to use the basecoat of
Example 24B as part of a monocoat, id., which would necessarily result in a
monocoat that includes the resins of that basecoat. In view of those findings,
we agree with the Examiner that a person of ordinary skill in the art
reasonably would have inferred from Anderson that a monocoat would
include the resins of the basecoat from which the monocoat is formulated.
See KSR, 550 U.S. at 418-19.
5. The Appellants argue that "the Examiner has not shown it obvious
to include the first and second binder resins in the various coating
compositions as claimed 'so as to prevent incompatibility defects."' App.
Br. 13. As explained above, however, knowledge of compatibility issues in
coating layers would have been well within the ordinary level of skill in the
art, and a person of ordinary skill likewise would have understood that a
resin would be compatible with itself. As set forth above, the combination
of binder resins recited by claim 9 would have been obvious in view of the
prior art, and the Appellants provide no explanation as to why that
combination of resins would not prevent incompatibility defects, given that
it is the same as the claimed combination. Ans. 10 ("The method of the
prior art teaches all the claimed limitations . . . . As such, the method of the
prior art would have prevented any incompatibility defects as claimed.").
The Appellants' argument that the prior art does not expressly discuss
compatibility defects provides no basis to reject the Examiner's findings.
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CONCLUSION
We REVERSE the Examiner's rejection of claims 9-12 under 35
U.S.C. § 112, ii 2.
We AFFIRM the Examiner's rejection of claims 9-12 under 35
U.S.C. § 103(a).
Because the rejection of every claim on appeal is affirmed under one
of the Examiner's stated grounds of rejection, we AFFIRM Examiner's
rejection of claims 9-12.
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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