Ex Parte Deogon et al

Patent Trial and Appeal Board

Jan 24, 2018

13980267 (P.T.A.B. Jan. 24, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/980,267 10/07/2013 Malkit Singh Deogon 16-1181-WO-US 8645
141081 7590 01/25/2018
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP/AkzoNobel
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
BROOKS, KREGG T
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
01/25/2018 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 MALKIT SINGH DEOGON and
MANMOHAN SINGH DEOGON
________________

Appeal 2017-005059
Application 13/980,267
Technology Center 1700
________________

Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
SHELDON M. McGEE, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5 and 7–20. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an intumescent coating composition and a
method for coating a substrate with the composition to improve the
substrate’s fire resistance. Claim 1 is illustrative:
1. An intumescent coating composition comprising:
10 – 25 wt.% of a polysulfide or a mixture of
polysulfides,
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2 – 20 wt.% of an epoxy resin or a mixture of epoxy
resins,
2 – 20 wt.% of a compound selected from the group
consisting of compounds having a secondary and/or a tertiary
amine group, and compounds having an amide group,
1 – 10 wt.% of a polysiloxane or a mixture of
polysiloxanes, and
0.5 – 10 wt.% of fibers or a mixture of fibers,
wherein the wt.% is relative to the weight of the
composition after evaporation of any solvent that is present in
the composition.

The References
Feldman (Feldman ’178) US 3,849,178 Nov. 19, 1974
Feldman (Feldman ’846) US 5,372,846 Dec. 13, 1994
Wade WO 2010/054984 A1 May 20, 2010
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3–5, and 7–20 over Feldman ’846 in view of Wade and claim 2 over
Feldman ’846 in view of Wade and Feldman ’178.
OPINION
We affirm the rejections.
The Appellants argue the claims as a group (App. Br. 2–6). Although
an additional reference is applied in the rejection of claim 2, the Appellants
do not separately argue that claim (App. Br. 6). We therefore limit our
discussion to one claim, i.e., claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(2012).
Feldman ’846 discloses an intumescent coating composition
comprising 22 wt% polysulfide, 22 wt% epoxy resin, 10 wt% melamine and
2 wt% glass fibers (where the weight percentages are based upon the
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composition before addition of a coordination complex component) (col. 9,
ll. 10–19).
Wade discloses “an intumescent composition which gives a hard foam
layer which may negate the use of fibres” (p. 2, ll. 10–11) by “having a
silicon-containing resin present in the composition, preferably in
combination with an organic resin” (p. 2, ll. 12–13). The composition
comprises 1) a binder containing a resin having a polysiloxane chain or
polysiloxane chain precursor and an optional organic resin, where the
polysilicon chain or precursor and/or the organic resin has at least one type
of pendant and/or terminal functional group selected from a list including
epoxy and the organic resin/polysiloxane ratio preferably is 1:10 to 10:1,
more preferably 1:5 to 5:1, 2) a compound capable of reacting with or
catalyzing reaction between the functional groups, 3) 1–20 wt%, most
preferably 3–7 wt%, of a spumific which can be a melamine, 4) a
char-forming adjunct, and 5) optional fibers (p. 2, ll. 15–28; p. 7, ll. 26–29;
p. 8, ll. 25–26; p. 16, ll. 5–7; p. 19, ll. 8–10). Wade teaches that “[i]n a fire,
the binder is pyrolysed, resulting in an insulating foam layer of a
silicon-containing char” (p. 2, ll. 30–31), and Wade believes that “the
presence of silicon in the char increases the hardness of the char and also
increases the efficiency of the char by means of higher residual matter to
obtain insulative properties” (p. 2, l. 31 – p. 3, l. 2).
The Appellants argue that “[t]he present obviousness rejection must
fail because it does not identify in the prior art a reason for the ordinary
artisan to have combined Wade’s teachings concerning polysiloxane in
Feldman’s composition” (App. Br. 3).
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Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
A reason which would have been apparent to one of ordinary skill in
the art for including polysiloxane in Feldman ’846’s composition is to obtain
the benefit of polysiloxane indicated by Wade, i.e., increased char hardness
and increased efficiency of the char due to higher residual matter providing
insulative properties (p. 2, l. 31 – p. 3, l. 2).
The Appellants argue, in reliance upon the Declaration of Robin
Wade, that “the intumescent compositions of the Examples of Wade contain
between about 20% up to about 30% by weight of polysiloxane resin and
from about 18% up to about 22% of an epoxy resin. Thus, Wade teaches
compositions in which the combined amount of epoxy and polysiloxane is
about 38 – 52 wt.%” (App. Br. 4) whereas “Feldman’s compositions contain
about 15 – 20% epoxy (see Wade Declaration, par. 10)” (id.), so “[t]here is
no clear basis in the combination of Wade and Feldman of how one would
substitute Wade’s 38 – 52 wt.% of epoxy and polysiloxane for Feldman’s 15
– 20 wt.% epoxy” (id.).
Wade is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Instead, all disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961, 965 (CCPA 1966). A reason which would have been apparent to one of
ordinary skill in the art to use Wade’s polysiloxane in a 10:1 to 1:10 epoxy
resin/polysiloxane ratio in Feldman ’846’s composition is to obtain the
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above-stated benefits of polysiloxane disclosed by Wade. Amounts of
epoxy resin within Feldman ’846’s 15–20 wt.% range in combination with
polysiloxane in Wade’s 10:1 to 1:10 epoxy resin/polysiloxane ratio include
amounts of epoxy resin and polysiloxane within the Appellants’ claim 1’s
ranges.
The Appellants argue that because some of Wade’s tests show that
fibers in the composition undesirably reduce the coating’s char strength and
time to reach 400 ºC (whereas other tests show that fibers desirably increase
those properties) (Tables 1–3), “[t]he ordinary artisan would not have
accepted the additional cost and complexity of including fibers in an
epoxy/polysiloxane intumescent composition and simultaneously assumed
the risk that fibers in an epoxy/polysiloxane intumescent composition would
diminish the functional properties of the composition if the use of fibers
could be avoided” (App. Br. 5).
Feldman ’846 discloses that “[t]he matrix may be strengthened with
fibers, inorganic cloth, wire mesh, or otherwise” (col. 4, ll. 63–64) and “[t]he
fibers may constitute as little as one percent of the matrix or as much as
seventy percent” (col. 4, ll. 64–66). Wade discloses that fibers preferably
are omitted from the composition but can be present in the composition at
low loading (p. 19, ll. 8–10; p. 27, ll. 4–8). Wade’s test results would have
suggested, to one of ordinary skill in the art, including fibers in
Feldman ’846’s composition modified to contain Wade’s polysiloxane when
the fibers improve the char strength and/or time to reach 400 ºC of a coating
made from the modified composition.
For the above reasons we are not persuaded of reversible error in the
rejections.
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DECISION/ORDER
The rejections under 35 U.S.C. § 103(a) of claims 1, 3–5, and 7–20
over Feldman ’846 in view of Wade and claim 2 over Feldman ’846 in view
of Wade and Feldman ’178 are affirmed.
It is ordered that the Examiner’s decision 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