Ex parte Gottis

Board of Patent Appeals and Interferences

Jan 17, 2002

09298572 (B.P.A.I. Jan. 17, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PHILIPPE-GUILHAUME GOTTIS
_____________
Appeal No. 2001-0008
Application 09/298,572
______________
ON BRIEF
_____________
Before WILLIAM SMITH, Administrative Patent Judge, McKELVEY,
Senior Administrative Patent Judge, and POTEATE,
Administrative Patent Judge.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C.
§ 134 from the examiner's final rejection of claims 1-3, 5 and
Appeal No. 2001-0008
Application 09/298,572
2
6, which are all of the claims pending in the application.
Claim 4 is cancelled.
Claim 1 is illustrative of the subject matter on
appeal and is reproduced below:
1. An improved powder coating composition suitable
for use in automotive lacquer, which is free of carboxyl-
functional polyesters, comprising a binder consisting of one
or more than one poly(meth)acrylic resin having free carboxyl
groups and, as hardener for the poly(meth)acrylic resin, one
or more than one epoxy resin having a molecular weight of up
to 1500, wherein the epoxy resin is a cycloaliphatic
polyglycidyl polycarboxylate or mixtures thereof, the
cycloaliphatic polyglycidyl polycarboxylate being selected
from the group consisting of diglycidyl hexahydro- phthalate,
diglycidyl hexahydroterephthalate, triglycidyl 1,2,4-
cyclohexanetricarboxylate and triglycidyl 1,3,5-
cyclohexanetri- carboxylate, wherein the coating
composition flows and cures at temperatures in the range of
about 100EC to about 150EC to a smooth form.
The references relied upon by the examiner are:
Mizumura et al. (Mizumura) 4,255,553 Mar. 10,
1981
Cotting et al. (Cotting) 5,294,683 Mar. 15,
1994
Japan Synthetic Chemical
Industry Co., Ltd. 53-140395 Dec. 7,
1978
(Japanese Kokai)
Grounds of Rejection
Appeal No. 2001-0008
Application 09/298,572
3
In the Examiner's Answer (Paper No. 13), the
examiner withdrew Great Britain Patent No. 1,542,709 from the
obviousness-type double patenting and 35 U.S.C. § 103
rejections on the basis that it did not further add to the
teachings of Cotting. In addition, since the close of the
briefing period, copending Application No. 09/016,619 issued
as U.S. Patent No. 6,265,487 on July 24, 2001, thereby
converting the provisional obviousness-type double patenting
rejection to an actual rejection. Thus, the claims currently
stand rejected as follows:
1. Claims 1-3 and 6 are rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-5 of U.S. Patent
No. 6,265,487 in view of Cotting; and
2. Claims 1-3, 5 and 6 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Mizumura and the Japanese
patent in view of Cotting.
Appeal No. 2001-0008
Application 09/298,572
We note that in the amendment mailed January 6, 20001
(Paper No. 9, page 2) Appellant stated that a terminal
disclaimer would be timely filed upon the Examiner's
acknowledgment that the present application was otherwise in
condition for allowance.
4
Appellant has failed to present arguments traversing
the double patenting rejection. Therefore, this rejection is
affirmed.1
For the reasons discussed below, the rejection of
the claims under 35 U.S.C. § 103(a) is reversed.
Background
Powder coating compositions are resinous materials
which primarily consist of a binder and a hardener. The
binder component is generally a compound having carboxyl
groups such as a polyester or acrylic resin. The claims in
the present application are directed to a powder coating
composition in which the binder consists of one or more than
one poly(meth)acrylic resin having free carboxyl groups. The
claims further require that the composition is free of
carboxyl-functional polyesters.
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The hardener component in conventional powder
coating compositions is typically a compound having epoxy
groups. Claim 1 specifies that the hardener component is
one or more than one epoxy resin with a molecular weight of up
to 1500. Claim 1 further requires that the epoxy resin is a
cycloaliphatic polyglycidyl polycarboxylate or a mixture
thereof and that the cyclo- aliphatic polyglycidyl
polycarboxylate is selected from the group consisting of
diglycidyl hexahydrophthalate, diglycidyl hexa-
hydroterephthalate, triglycidyl 1,2,4-
cyclohexanetricarboxylate
and triglycidyl 1,3,5-cyclohexanetricarboxylate. According to
the inventor, the claimed powder coating compositions harden
quickly and completely and have good flow properties at low
temperatures comparative to prior art coating compositions.
(Specification, page 1.) Claim 1 requires that “the coating
composition flows and cures at temperatures in the range of
about 100EC to about 150EC to a smooth form.” In contrast,
conventional prior art powder coatings are typically used at
temperatures above 160EC because of poor flow characteristics
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at lower temperatures which result in an orange peel effect.
Id.
Discussion
The initial burden of presenting a prima facie case
of obviousness rests on the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). To
establish a prima facie case of obviousness, there must be:
1. some suggestion or motivation to modify a
reference or combine reference teachings;
2. a reasonable expectation of success; and
3. a teaching or suggestion of all of the claim
limitations in the prior art reference or combined references.
See, generally, Manual of Patent Examining Procedure (MPEP)
§§ 2142-2143.
The wording of the Examiner’s rejection is ambiguous
and we find it unclear as to precisely how the references are
combined. Therefore, we interpret the Examiner’s rejection
based on what we consider the strongest arguments against
patentability given the teachings of the cited references,
Appeal No. 2001-0008
Application 09/298,572
Paper No. 13, mailed July 21, 2000.2
Paper No. 12, received June 29, 2000.3
Paper No. 14, received September 21, 2000.4
7
namely, Mizumura in view of Cotting or the Japanese patent in
view of Cotting. We reference the Examiner’s Answer for the2
Examiner’s reasoning in support of the rejections and
Appellant’s Brief and Reply Brief for Appellant’s arguments3 4
in favor of patentability
Mizumura teaches a powder coating composition
containing (a) a compound having at least two epoxy groups in
the molecule, (b) a polyester or acrylic resin having a
molecular weight of 1,000 to 7,000 and an acid value of not
less than 20 having at least two carboxyl groups, and (c) a
specific quaternary nitrogen-containing compound as catalyst
for a reaction of
the epoxy and carboxyl groups. (Brief on Appeal, page 6.)
Mizumura states that “[t]he main object of the present
invention is to provide a powder coating composition which can
be thermoset at a low temperature and form a paint film having
excellent surface smoothness.” (Mizumura, column 2, lines 10-
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13.) Mizumura utilizes a minimum temperature of 180EC for
curing. (See col. 8, l. 30-34.)
The Japanese patent discloses a process for
preparation of acrylic resins which are suitable for use in
powder coating compositions. The Japanese patent utilizes
standard epoxy
compounds such as triglycidyl isocyanurate as hardeners. (Page
7.) No indication of curing temperature is given other than
in the examples wherein the compositions are cured at 180EC.
(See pages 9-15.)
Cotting is directed to formulating polyglycidyl
compounds which may be used in powder coating compositions to
replace triglycidyl isocyanurate without essential changes in
the other components of the compositions or production of the
finishes. (Col. 10, l. 36-45.) Cotting states that the powder
coating compositions are cured at a temperature of not less
than 100EC and preferably at a temperature of 150-250EC.
(Col. 11, l. 43-45.)
According to the Examiner:
It would have been obvious to employ the
diglycidyl hexahydroterephthalate disclosed
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in Mizumura et al and Cotting et al in the
curing of the carboxyl groups-containing
acrylic resin of Mizumura et al and the
Japanese patent in order to 1) eliminate
the toxicity endemic to the more commonly
utilized triglycidyl isocyanurate (Cotting
et al, col. 10, lines 36-45) and 2) use a
polyglycidyl compound in solid form without
resorting to complicated and expensive
purification operations to produce a solid
polyglycidyl compound for powder coatings
(Cotting et al, col. 1, lines 36-45).
. . . .
It would have been obvious to conduct
the curing of the powder coatings of
Mizumura et al and the Japanese patent at a
temperature of as low as 100EC as per
Cotting et al in order to reduce the energy
expenditure required of a higher curing
temperature.
(Examiner’s Answer, page 5.)
Where an obviousness determination is based on a
combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the
combination.” In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,
1278 (Fed. Cir. 1987). The motivation for one of ordinary
skill in the art to have combined the references need not be
the same as that of the inventor. See In re Dillon, 919 F.2d
688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc) cert.
Appeal No. 2001-0008
Application 09/298,572
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denied, 500 U.S. 904 (1991). Fine, 837 F.2d at 1075, 5 USPQ2d
at 1599 (citations omitted). However, “[o]ne cannot use
hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed
invention.” In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596,
1600 (Fed. Cir. 1988).
Although we find tenuous the Examiner’s reasoning
for picking and choosing amongst the numerous components
disclosed in the cited references, even assuming, arguendo,
that the references were properly combined, the Examiner has
failed to
establish a prima facie case of obviousness. The Examiner has
not provided any support for his conclusion that the coating
composition obtained by his proposed combination would flow
and cure at temperatures in the range of about 100EC to 150EC
to a smooth form as required by the present claims.
Both Mizumura and the Japanese patent disclose
coating compositions which are curable at 180EC. Cotting
teaches that powder coating compositions may be cured at
temperatures as low as 100EC, but indicates that temperatures
Appeal No. 2001-0008
Application 09/298,572
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of 150EC to 250EC are preferred. Mizumura teaches that it is
known in the art to lower curing temperatures by accelerating
the thermo-setting reaction rate. However, Mizumura notes
that “fluidity of the composition in a molten state is reduced
and it becomes difficult to form a smooth film.” (Mizumura,
col. 1, l. 26-31.) The Examiner opines that it would have
been obvious to have cured the powder coatings of Mizumura and
the Japanese patent at a temperature of as low as 100EC as per
Cotting in order to reduce the energy expenditure required at
a higher temperatures. See supra, p.7. Given the teachings of
the references to the contrary and the Examiner’s failure to
provide support for his position, we find that the Examiner’s
obviousness determination can only be based upon improper
hindsight reasoning. See W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir.
1983)(it is error to find obviousness where references
“diverge from and teach away from the invention at hand ”).
“To imbue one of ordinary skill in the art with knowledge of
the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to
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fall victim to the insidious effect of a hindsight syndrome
wherein that which only the inventor taught is used against
its teacher.” W. L. Gore, 721 F.2d at 1553, 220 USPQ at 312-
13.
Because we reverse for failure to establish a prima
facie case of obviousness, we need not reach the issue of
whether Appellant's experimental evidence provides a
comparison with the closest prior art. See Fine, 837 F.2d at
1076, 5 USPQ2d at 1600.
Time Period for Response
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
Appeal No. 2001-0008
Application 09/298,572
13
FRED E. McKELVEY ) APPEALS
AND
Senior Administrative Patent Judge )
INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LP:psb
Appeal No. 2001-0008
Application 09/298,572
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