Ex Parte Donaldson et alDownload PDFPatent Trial and Appeal BoardJan 23, 201814179786 (P.T.A.B. Jan. 23, 2018) Copy Citation 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. 14/179,786 02/13/2014 Susan F. Donaldson 12008320A1 8145 24959 7590 01/23/2018 PPG Industries, Inc. IP Law Group One PPG Place EXAMINER REDDY, KARUNA P 39th Floor Pittsburgh, PA 15272 ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 01/23/2018 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 SUSAN F. DONALDSON and ANTHONY M. CHASSER Appeal 2017-004610 Application 14/179,786 Technology Center 1700 Before TERRY J. OWENS, DONNA M. PRAISS, and CHRISTOPHER C. KENNEDY, 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’ rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a non-aqueous dispersion, a coating composition comprising the dispersion, and a coating method comprising applying the coating composition. Claim 1 is illustrative: 1. A non-aqueous dispersion comprising the dispersion polymerization reaction product of an ethylenically unsaturated monomer and a nonlinear, random, acrylic polymer stabilizer, wherein the polymerization reaction product comprises cyclic carbonate functionality. Appeal 2017-004610 Application 14/179,786 The References Donaldson US 2012/0165430 A1 June 28,2012 Dean C. Webster, Cyclic carbonate functional polymers and their applications, 47 Progress in Organic Coatings 77—86 (2003). The Rejection Claims 1—17 stand rejected under 35 U.S.C. § 103 over Donaldson in view of Webster. OPINION We affirm the rejection. The Appellants argue the claims as a group (App. Br. 2-4). We therefore limit our discussion to one claim, i.e., claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). Donaldson discloses “a non-aqueous dispersion comprising the dispersion polymerization reaction product of an ethylenically unsaturated monomer and a nonlinear, random acrylic stabilizer, wherein the polymerization reaction product comprises epoxy functionality” (| 2). The non-aqueous dispersion can be included in a coating composition which can contain a crosslinking agent which can be an amine, and the polymerization reaction product can have sufficiently little epoxy functionality that the non-aqueous dispersion and/or the coating composition is/are substantially epoxy free flflf 4, 29, 45, 47). Webster discloses that reacting epoxy groups with carbon dioxide readily converts them to cyclic carbonate groups and that polymers containing epoxy groups and/or cyclic carbonate groups are useful in 2 Appeal 2017-004610 Application 14/179,786 thermoset coating compositions (pp. 77, 81, 83, 84).1 Webster reports that in amine-cured systems, 1) cyclic carbonate groups speed gel formation and provide good coating gloss, hardness and solvent resistance, 2) combinations of epoxy groups and cyclic carbonate groups improve tensile strength, elongation at break, impact resistance, flexibility2 and adhesion, lower viscosity, shorten gel time and lower peak exotherm during curing, and 3) combinations of anhydride groups and cyclic carbonate groups improve coating curing speed (pp. 83, 84). The Appellants argue that Webster teaches that cyclic carbonate groups are highly polar (p. 77) and Donaldson teaches that polar materials make non-aqueous dispersions unstable (13) and that, therefore, “one skilled in the art, upon reading Webster, would not know if it would be at all possible to prepare non-aqueous dispersions having cyclic carbonate functionality” (App. Br. 3). Donaldson discloses (13): Typically, non-aqueous dispersions are prepared by the free radical addition polymerization of ethylenically unsaturated monomers in a hydrocarbon rich dispersing medium. The polymerization is carried out in the presence of a steric stabilizer, a portion of which is soluble in the dispersing medium and a portion of which is associated with the dispersed phase; the dispersed phase is insoluble in the dispersing medium. . . . The portion of the steric stabilizer that is soluble in the dispersing medium is typically aliphatic polyester such as poly( 12-hydroxysteric acid). . . . The non-aqueous dispersions 1 The Appellants state that “the cyclic carbonate functionality may be added to the polymerization reaction product by reacting epoxy functionality on the intermediate polymerization reaction product with carbon dioxide” (Spec. 120). 2 Coating flexibility is a property desired by Donaldson (| 44). 3 Appeal 2017-004610 Application 14/179,786 can become unstable if polar solvents are added, because the stabilizing segment becomes less soluble as the polarity of the continuous phase increases. That disclosure does not pertain to a stability effect of dispersed phase polymer polar functional groups but, rather, pertains to the effect polar solvent added to the hydrocarbon-rich dispersing medium has on the compatibility between the dispersing medium and the stabilizer portion that is soluble in the dispersing medium. The Appellants assert that “[although Webster might enhance properties in a formulation containing solution or bulk polymers, there is no prediction that enhanced properties would have translated to a non-aqueous dispersion” (App. Br. 3), and “[although the non-aqueous dispersion of both Donaldson and the present invention can be used in a thermoset coating, the teaching of thermoset coatings does not provide motivation for the combination with Webster” (Reply Br. 1—2). Webster’s disclosed thermoset coating composition benefits are provided by cyclic carbonate groups, not by any particular polymerization method (pp. 83, 84). Thus, Webster would have provided one of ordinary skill in the art with a reasonable expectation of success in converting some or all of Donaldson’s epoxy groups to cyclic carbonate groups by Webster’s disclosed method i.e., reacting the epoxy groups with carbon dioxide (pp. 77, 78, 81), to obtain Webster’s disclosed benefits of those groups in Donaldson’s thermoset coating compositions. In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success .... For obviousness under § 103, all that is required is a reasonable expectation of success”). 4 Appeal 2017-004610 Application 14/179,786 For the above reasons we are not persuaded of reversible error in the rejection. DECISION/ORDER The rejection of claims 1—17 under 35 U.S.C. § 103 over Donaldson in view of Webster is 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 5 Copy with citationCopy as parenthetical citation