Ex Parte Feola et al

Patent Trial and Appeal Board

Nov 10, 2016

13003949 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/003,949 01119/2011
123223 7590 11/15/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Roland Feola
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.
211811-0005-US (287659) 3279
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
11/15/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND FEOLA and
LEILA KHAT AI 1
Appeal2015-006854
Application 13/003 ,949
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, 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 2, 13, and 14. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to aqueous coating binders
"preferably used to formulate corrosion protection coatings for metals, and
to formulate sealers for wood." E.g., Spec. 1:1, 23-24; Claim 2. Claim 2 is
reproduced below from page 9 (Appendix A) of the Appeal Brief:
1 According to the Appellants, the real party in interest is Allnex Austria
GmbH, f/k/a Cytec Austria GmbH. App. Br. 2.
Appeal2015-006854
Application 13/003,949
2. Aqueous binder mixtures comprising mass fractions of
- from 50 % to 96 % of a chain-extended epoxy amine adduct A
obtained from a process comprising the reaction of an epoxy
resin Al having at least one epoxide group per molecule with
an aliphatic amine A2 having at least one primary or secondary
amino group per molecule to form an epoxy amine adduct Al2,
neutralising at least partly the epoxy amine adduct A 12 by
addition of acid, transferring the neutralised epoxy amine
adduct A 12n into an aqueous phase under stirring, heating the
aqueous mixture and adding thereto a further epoxy resin A3
having at least two epoxide groups per molecule, the quantity
of A3 being chosen such that the number of reactive hydroxyl
and amino groups in A12 is equal to, or greater than, the
number of epoxide groups in A3;
- from 2 % to 30 % of a carboxy functional polyester B that
contains a limited amount of aromatic constituents in a mass
fraction of up to 15 % and has an acid number of from 4 mg/ g
to 50 mg/g, and
- from 2 % to 30 % of a crosslinker C selected from the group
consisting of aminoplast resins, phenol resols, triazine tris-
alkvl carbamates. and mixtures of such crosslinkirn.! a2:ents.
el / '-''-' /
with the proviso that the sum of the mass fractions of
components A, Band C is always 100 %.
ANALYSIS
Claims 2, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Garn et al. (US 2006/0084726 Al, published Apr. 20,
2006) in view of Paar et al. (US 6,653,370 B2, issued Nov. 25, 2003), as
evidenced by Wismer et al. (US 4,419,467, issued Dec. 6, 1983). The
Appellants argue the claims as a group, focusing on limitations that appear
in claim 2. See App. Br. 4--7. Accordingly, we limit our discussion to claim
2. Claims 13 and 14 will stand or fall with claim 2.
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Application 13/003,949
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 affirm the rejection for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final Act.
2--4; Ans. 2-8.
The Examiner finds that Garn teaches a composition comprising each
element of claim 2 except that Garn does not explicitly teach (1) "the
amounts of the epoxy resin and the crosslinker," (2) "the claimed species of
crosslinker," or (3) "the specific epoxy amine adduct claimed." Ans. 3--4.
Concerning (1) and (2), the Examiner finds that Wismer, which is
incorporated by reference in Garn, 2 teaches an aminoplast resin crosslinker,
and further "teaches the amount of epoxy amine adduct as being 60 to 95 %
and the amount of aminoplast resin as being 5 to 40%." Id. at 3.
Concerning (3), the Examiner finds that Paar teaches a chain-extended
epoxy amine adduct that falls within the scope of claim 2. Id. at 4. The
Examiner finds that Gam's epoxy amine adduct is also a chain-extended
epoxy amine adduct, and that it would have been obvious to substitute the
adduct of Paar for the adduct of Garn "to provide a coating with good
chemical resistance, stability and corrosion resistance." Id.
2 The Appellants acknowledge that "Garn includes a citation to epoxy amine
adducts of Wismer and incorporates Wismer by reference." App. Br. 4; see
also Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
(Fed. Cir. 2000) ("Incorporation by reference provides a method for
integrating material from various documents into a host document ... by
citing such material in a manner that makes clear that the material is
effectively part of the host document as if it were explicitly contained
therein.").
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Application 13/003,949
The Appellants first argue that it would not have been obvious to
substitute Paar's adduct for Gam's adduct. See App. Br. 4; Reply Br. 3.
They assert that "[ t ]he epoxy amine resins of Garn and Wismer are not
chain-extended epoxy amine adducts and thus they differ from those
described by Paar and those required by the present claims." Id. at 5. In the
Reply Brief, the Appellants further argue that Paar does not explicitly
disclose the use of its chain-extended epoxy amine adducts in electrocoating
applications. See Reply Br. 2-3.
Those arguments are not persuasive of reversible error in the
Examiner's rejection. Contrary to the Appellants' assertion that Gam's
epoxy amine resins are not chain-extended, the Examiner finds that Garn
states that they are. See Ans. 5. That finding is supported by Garn. See,
e.g., Garn iii! 3, 62. Even if Gam's resins were not chain-extended, however,
the Appellants fail to persuasively explain why that would have been
significant to a person of ordinary skill in the art, particularly given that
Garn and Paar appear to disclose the use of epoxy amine adducts for similar
purposes. The combination proposed by the Examiner is simply the
substitution of one known epoxy amine adduct for another. Such
substitutions typically do not result in nonobvious subject matter. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results."); see also id. at 416 ("[W]hen
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result."). The Appellants
provide no persuasive basis to conclude otherwise in this case.
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Application 13/003,949
The Appellants also argue that, because Paar "suggests that no further
curing agents are needed," a person of ordinary skill in the art "would not
have had reason to apply the cationic epoxy amine adducts of Paar into
compositions of Garn that comprise crosslinkers." Id.
That argument is not persuasive. As the Examiner explains, the
rejection proposes the simple substitution of Paar's epoxy amine adduct into
Gam's composition, which already includes a crosslinker. Ans. 5-6. Paar
does not teach away from the use of a crosslinker; it merely states that the
epoxy amine adduct "may be formulated without additional curatives." Paar
at Abstract; Ans. 6; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) ("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . . . ").
The Appellants argue that "none of the references provide sufficient
reason or motivation to replace the main crosslinker of Garn with the
aminoplast resin of Wismer." App. Br. 5. More specifically, the Appellants
suggest that Gam's incorporation by reference of Wismer applies only to
Wismer's adducts, and not to Wismer's crosslinkers. See id. They suggest
that, because Garn teaches isocyanate curing agents, and not aminoplast
resin curing agents, it would not have been obvious to use Wismer's
aminoplast resins with Garn. See id. at 5---6.
Even if Gam's reference to Wismer were primarily concerned with
Wismer's epoxy amine adduct, rather than Wismer's crosslinkers, that
argument would not establish reversible error in the Examiner's rejection.
The references as a whole make clear that both isocyanates and aminoplast
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Application 13/003,949
resins are suitable crosslinking agents for epoxy amine adducts. Cf Belden
Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (reference must
be considered for everything it teaches). Wismer expressly indicates that
isocyanates and aminoplast resins are known alternative curing agents. See,
e.g., Wismer at 6:45--48 ("Examples of suitable curing agents are aminoplast
resins, capped isocyanates and phenolic resins .... "). The Appellants
provide no persuasive basis to conclude that it would not have been obvious
to use a known crosslinking agent with a known epoxy amine adduct. See
Garn i-f 48. We agree with the Examiner that it would have been obvious to
use Wismer's crosslinking agent in the composition of Garn as modified by
Wismer and Paar. See KSR, 550 U.S. at 416-21.
The Appellants also argue that unexpected results support a
conclusion of nonobviousness. See App. Br. 6. That argument is not
persuasive because, as the Examiner explains, see Ans. 7-8, the comparison
relied on by the Appellants is not to the closest prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art."). Nor have the
Appellants shown that the alleged unexpected results are commensurate in
scope to the claims. See In re Greenfield, 571F.2d1185, 1189 (CCPA
1978) ("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."') (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)).
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We further note that the Appellants' argument focuses on whether the
results are an improvement over the prior art but fails to explain why a
person of ordinary skill in the art would have considered those results to be
unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[I]t is
not enough to show that results are obtained which differ from those
obtained in the prior art: that difference must be shown to be an unexpected
difference.").
On this record, we are not persuaded that unexpected results rebut the
prima facie case of obviousness set forth by the Examiner.
For those reasons, we affirm the Examiner's rejection of claim 2.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 2, 13, and 14.
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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