Ex Parte Fenn et al

Patent Trial and Appeal Board

Jan 31, 2018

13467078 (P.T.A.B. Jan. 31, 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.
13/467,078 05/09/2012 David R. Fenn 08006221A1 8151
24959 7590 01/31/2018
PPG Industries, Inc.
IP Law Group
One PPG Place
EXAMINER
NELSON, MICHAEL B
39th Floor
Pittsburgh, PA 15272
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
01/31/2018 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 DAVID R. FENN,
JACKIE L. KULFAN, and ANTHONY M. CHASSER
Appeal 2017-004668
Application 13/467,078
Technology Center 1700
Before TERRY J. OWENS, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Final Office Action mailed February 1,
2016 (“Final Act.”), the Appeal Brief filed August 2, 2016 (“Appeal Br.”),
the Examiner’s Answer mailed November 23, 2016 (“Ans.”), and the Reply
Brief filed January 23, 2017 (“Reply Br.”).
2 Appellants identify the real party in interest as PPG Industries Ohio, Inc.
Appeal Br. 3.
Appeal 2017-004668
Application 13/467,078
The subject matter of the claims on appeal relates to a coating
composition comprising a reaction product of: (a) an epoxy-functional
backbone resin having free hydroxyl groups and (b) a lactide. Spec. 14.
Claim 1, reproduced below from the Claims Appendix of the Appeal Brief,
is illustrative of the claims on appeal.
1. A cured thermoset coating formed from a coating
composition comprising a crosslinker and a reaction product
prepared from a mixture of reactants comprising:
(a) an epoxy-functional backbone resin having free
hydroxyl groups; and
(b) a lactide.
Appeal Br. 21 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection I: Claims 1—19, and 21 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Pack et al. (US 2010/0152362 Al, published June 17,
2010) (“Pack”), and Kulfan et al. (US 2010/0055467 Al, published March 4,
2010) (“Kulfan”), with evidence from Armour et al. (US 3,169,936, issued
February 16, 1965) (“Armour”) and Hayashi et al. (US 2003/0099770 Al,
published May 29, 2003) (“Hayashi”) (Final Act. 3—7); and
Rejection II: Claim 20 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Pack, Kulfan, and Chau et al. (US 2011/0281125 Al,
published Nov. 17, 2011) (“Chau”), with evidence from Armour and
Hayashi (Final Act. 7—8).
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Appeal 2017-004668
Application 13/467,078
DISCUSSION
Rejection I
Appellants argue the claims subject to the first-stated ground of
rejection as a group. Appeal Br. 9—19. Thus, we select claim 1 as
representative of the rejected claims, and the remaining claims subject to the
first ground of rejection will stand or fall with claim 1. See 37 C.F.R.
§41.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Final Office Action and Answer. We add the following.
The Examiner finds that Pack teaches a copolymer (reaction product)
that includes an epoxy segment and a lactide segment. Final Act. 3 (citing
Pack || 32—38). The epoxy segment is disclosed as including free hydroxyl
groups that polymerize with the lactide rings by opening the rings. Final
Act. 3 (citing Pack || 46—50). The Examiner finds that because the epoxy is
disclosed as including hydroxyl units that open the lactide rings, the lactide
groups would be pendent groups on the epoxy groups. Final Act. 3 (citing
Pack 146); see Armour 1 (exemplifying a bisphenol A epoxy structure,
which shows that the lactide groups would be pendant on the epoxy
backbone). In other words, the hydroxyl groups are unreacted before
reacting with the lactide and therefore are not part of the main epoxy
backbone chain. Id.
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Appeal 2017-004668
Application 13/467,078
As to the crosslinker of claim 1, the Examiner finds that Kulfan,
which is also directed to polylactide based compositions, i.e., a composition
including the reaction product of a lactide with a polymer having hydroxyl
groups, discloses that it was known to add crosslinkers, such as
polyisocyanate, to a polylactide composition that includes other resins—
e.g., acrylic resins—to make a thermosetting composition suitable for
coating (and curing), on various substrates. Final Act. 4 (citing Kulfan || 9,
13, 18, 36, 37). The Examiner finds that Kulfan discloses that the
crosslinker reacts with the lactide/hydroxyl reaction product and optionally
also the additional resin component. Final Act. 4 (citing Kulfan || 13, 18,
19).
The Examiner determines that one of ordinary skill in the art would
have included a crosslinker (e.g., polyisocyanate) and additional resins (e.g.,
acrylic resins and resins that crosslink with the crosslinker), as taught by
Kulfan, in Pack’s composition to make the composition thermosetting for
coating and then curing on various substrates. Final Act. 4.
Appellants argue that one of ordinary skill in the art would not have
found it obvious to modify Pack to include a crosslinker and form a cured
thermoset coating. Appeal Br. 9. Specifically, Appellants argue:
Because Pack only describes thermoplastic based compositions
that are used to prepare improved molded articles, one of
ordinary skill in the art would not have considered using the
copolymer and compositions of Pack to form a cured thermoset
coating and would have had no motivation to look to the
teachings of Kulfan.
Id. at 12.
Appellants’ argument is not persuasive of reversible error because it
fails to address the reasoning provided by Kulfan, and relied upon by the
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Appeal 2017-004668
Application 13/467,078
Examiner, for converting Pack’s composition into a thermoset coating by
adding the crosslinking agent. Final Act. 4; Kulfan || 13, 17, 18, 37.
Additionally, although Appellants’ argument focuses on Pack’s discussion
of molded articles, this is merely one embodiment, albeit a preferred one, for
its copolymer. Pack 129; see Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)) (“‘[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.’”).
Appellants’ argument that Kulfan does not disclose a polylactide is
not well-taken. Appeal Br. 14—15. The Examiner relies on Pack, not
Kulfan, for claim 1 ’s polylactide reaction product. Final Act. 3 (citing Pack
32, 33, 38). Nevertheless, Kulfan, like Pack, discloses a reaction product
of a polyol and a lactide. Kulfan 14. Further, on this record, Appellants
have not established that one of ordinary skill in the art would interpret
Kulfan’s reaction product as “a lactide modified biobased polyol that
contains relatively short polylactide segments” as discussed in the
Declaration under 37 C.F.R. § 1.132 executed by David R. Fenn on
December 17, 2014 (hereinafter “the Fenn Declaration”) (Deck | 6), rather
than as a polymer that includes repeating lactide units (i.e., a polylactide).
Appellants argue that if Kulfan’s crosslinker was added to Pack’s
composition, the resulting cured thermoset coating would be unsatisfactory
for forming a molded product, which according to Appellants is “the
intended purpose described in Pack.” Appeal Br. 15. Appellants also argue
that there is no motivation or suggestion to apply Pack’s composition on a
substrate to form a cured thermoset coating. Id. at 17.
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Appeal 2017-004668
Application 13/467,078
Appellants’ arguments are not persuasive of reversible error.
Appellants’ arguments again focus on Pack’s disclosure of forming a
molded article from its polylactic acid resin composition. However, as
discussed above, a molded article is but one use for Pack’s composition.
Both Pack and Kulfan disclose polylactide based compositions.
Pack 11 11, 32—33; Kulfan Abstract, 19. Kulfan discloses that it was known
to add a crosslinker to make its composition thermosetting. Kulfan 113.
Kulfan teaches that its thermosetting composition is suitable as a coating on
any substrate, and provides a reason to use Pack’s modified coating, which
predictably includes a crosslinker as disclosed in Kulfan, as a cured
thermoset coating on a substrate. Kulfan H 13, 37. On this record,
Appellants have not identified any error in the Examiner’s reasoning for
modifying Pack based on Kulfan, and coating and curing Pack’s modified
thermoset composition on a substrate.
Appellants’ argument that Armour and Hayashi do not cure the
deficiencies of Pack and Kulfan are not persuasive of reversible error
because for the reasons discussed above, we discern no deficiencies in Pack
and Kulfan, or the Examiner’s reasoning for their combination.
In sum, on the totality of the appeal record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of the evidence weighs most heavily in favor of obviousness
of the subject matter recited in claims 1—19 and 21 within the meaning of
35 U.S.C. § 103(a). Thus, we sustain the rejection of claims 1—19 and 21.
Rejection II
Claim 20 depends from claim 1, and requires that “the substrate
comprises poly(hydroxyalkanoate).”
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Appeal 2017-004668
Application 13/467,078
The Examiner relies on the same findings regarding Pack, Kulfan,
Armour, and Hayashi as with claim 1 discussed above. Kulfan discloses
applying its thermosetting coatings to any substrate, for example, industrial
substrates, such as metallic, non-metallic, polymeric, and plastic substrates
as well as biodegradable substrates, such as poly(lactic acid). Kulfan 137.
The Examiner finds that Chau teaches biodegradable substrates, such as
poly(lactic acid) and poly(hydroxyalkanoate). Chau 129. In view of the
teachings of Kulfan and Chau, the Examiner determines that one of ordinary
skill in the art would have been led to coat Pack’s cured thermoset resin, as
modified by Kulfan, on a biodegradable substrate, such as Chau’s
poly(hydroxyalkanoate) biodegradable material, with a reasonable
expectation of success. Final Act. 7—8. Appellants have not identified, nor
do we discern any error in the Examiner’s findings and reasoning. Thus, we
sustain the rejection under 35 U.S.C. § 103(a) of claim 20.
DECISION
For the above reasons, the rejections of claims 1—21 are 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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