Ex Parte Gross et al

Board of Patent Appeals and Interferences

Jun 15, 2007

10415202 (B.P.A.I. Jun. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN K. STEVENS
____________

Appeal 2007-0158
Application 10/415,202
Technology Center 1700
____________

Decided: June 15, 2007
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-4,
6-9, 12, 13, and 15, the only claims pending in this application. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2006).
The invention relates to a coating material for producing primers for
protecting exposed surfaces, such as antistonechip primers for automobiles
(Specification 1). Claims 1 and 3 are illustrative of the invention and are
reproduced below:
Appeal 2007-0158
Application 10/415,202

1. An aqueous coating material comprising a binder comprising at least
one epoxy resin and a curing agent comprising at least one polyamine
wherein at least one of the at least one epoxy resin

(i) is present in a powder coating material, and

(ii) is present in fine dispersion in an aqueous dispersion
comprising the at least one polyamine.

3. An aqueous coating material comprising a multicomponent system
comprising

(A) a curing component comprising at least one polyamine-
containing aqueous dispersion or solution and solid epoxy resin
present in fine dispersion, and

(B) a binder component comprising at least one liquid epoxy resin-
containing aqueous dispersion.

The Examiner relies on the following prior art references to show
unpatentability:
Elmore US 4,315,044 Feb. 9, 1982
Günter US 4,555,412 Nov. 26, 1985
Sweet US 5,461,090 Oct. 24, 1995

Prof. Dr. Artur Goldschmidt and Dr. Hans Joachim Streitberger, Basics of
Coating Technology 243-46 (2003)

The Examiner made the following four grounds of rejection:
1. Claims 1, 2, 4, 6-9, 12, 13, and 15 under 35 U.S.C. § 102(b) as
anticipated by Sweet;
2. Claims 1, 2, 7-9, 13, and 15 under 35 U.S.C. § 102(b) as anticipated
by Gunter;
3. Claims 1, 2, 7-9, and 13 under 35 U.S.C. § 102(b) as anticipated by
Elmore; and
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Application 10/415,202

4. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Elmore.

ISSUES
I. The Examiner contends that prior art solid epoxy resins are
inherently in powder form and, therefore, meet the claim limitation of a
“powder coating material.” Appellant contends that the claimed powder
coating compositions are chemically and physically distinct from the prior
art solid epoxy resins. The issue before us is: Has Appellant provided
sufficient evidence to overcome the Examiner’s finding that Sweet, Gunter,
and Elmore inherently disclose powder coating materials?
For the reasons discussed below, we answer this question in the
affirmative.
II. The Examiner contends that Appellant’s aqueous coating material
would have been obvious in view of Elmore’s disclosure of a mixture
containing the same components. Appellant contends that the recitation of a
“multicomponent system” in claim 3 patentably distinguishes over Elmore.
The issue for us to decide is: Has Appellant shown that the claim language
should be narrowly construed as limited to a coating material in which the
curing component and binder component are physically separated?
For the reasons discussed below, we answer this question in the
negative.
RELEVANT FINDINGS OF FACT
Claim Construction
1) “A dispersion is a mixture of particles suspended in a liquid.”
Kirk‑Othmer Encyclopedia of Chemical Technology, Dispersions
(2003).
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Application 10/415,202

2) In a first preferred embodiment, the coating material of the
invention is a one-component system in which all reactive components,
i.e., the epoxy resins and the polyamines, are present alongside one
another. In this embodiment, it is preferable to use exclusively epoxy
resins which are solid at room temperature and/or epoxy resin powder
coating materials (Specification 3:32-38).
3) In a second preferred embodiment, the coating material of the
invention is a multicomponent system, in particular a two-component
system, comprising (A) at least one polyamine-containing aqueous
dispersion or solution as curing component and (B) at least one epoxy
resin-containing aqueous dispersion as a binder component, the solid
epoxy resin and/or the epoxy resin powder coating material being
present in fine dispersion in the curing component (A) (Specification
4:1-10).
4) “For the multicomponent systems of the invention, the curing
component (A) and the binder component (B) are not mixed with one
another until shortly before application” (Specification 11:1-4).
5) According to the Specification,
Irrespective of whether the coating material of the
invention is a one-component system or a multicomponent
system, it comprises, based on its solids, the solid epoxy resin
and/or the epoxy resin powder coating material in an amount
which corresponds preferably to from 2 to 30, more preferably
from 3 to 25, and in particular from 4 to 20% by weight of
epoxy resin as reactive component. Specification 4:15-22.

6) The Specification further provides that:
Where the solid epoxy resin is used alone, it is present in the
coating material of the invention in an amount of from 2 to 30,
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Appeal 2007-0158
Application 10/415,202

preferably from 3 to 25, and in particular from 4 to 20% by
weight, based in each case on the solids of the coating material.
Where the epoxy resin powder coating material is used
alone, it is present in the coating material of the invention
preferably in an amount of from 5 to 30, more preferably from
6 to 25, and in particular from 7 to 20% by weight, based in
each case on the solids of the coating material. Specification
4:23-33.

7) With respect to the epoxy resin powder coating material, the
Specification teaches that the material “comprises at least one epoxy
resin in an amount of at least 40, more preferably at least 45, and in
particular at least 50% by weight, based in each case on the powder
coating material” (Specification 4:35-38). According to the
Specification, “[s]uch an amount of epoxy resin ensures that sufficient
epoxy resin is introduced as a reactive component into the coating
material by the powder coating material” (Specification 5:1-4).
8) The Specification discloses an Example in which an inventive
two-component coating material was prepared by combining all curing
and binder components and dispersing the mixture. The coating material
was dispensed into a container and was said to show outstanding storage
stability (Specification, Example 1).
9) Goldschmidt discloses techniques for manufacturing powder
coatings. Goldschmidt teaches premixing the formulation ingredients,
which include resin, crosslinker, pigment, and additives, followed by
melting and homogenization in an extruder (Goldschmidt 243). Upon
exiting the extruder, the melt is cooled, then finely ground and
pulverized (Goldschmidt 244-245).
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Appeal 2007-0158
Application 10/415,202

Prior Art
10) Elmore discloses methods of preparing stable aqueous epoxy
dispersions (Abstract). The dispersions are prepared by admixing a
polyamine curing agent with a stable epoxy dispersion comprising a
water-immiscible monoepoxide reactive diluent in an aqueous epoxy
resin dispersion (see col. 4, ll. 22-59).
ANALYSIS AND CONCLUSIONS
I. Has Appellant provided sufficient evidence to overcome the
Examiner’s finding that Sweet, Gunter, and Elmore inherently disclose
powder coating materials?
The Examiner and Appellant agree that the applied prior art
disclosures are limited to aqueous compositions containing solid, particulate
epoxy resins (Answer 8, 10, and 11-12). Appellant contends that these
compositions are chemically (and physically) distinct from the claimed
composition in which the epoxy resin is present in a “powder coating
material” (Reply 2). The Examiner argues that the language “powder
coating material” fails to patentably distinguish over the prior art because
“there is nothing in this language that materially sets apart the materials used
in the instant invention from the materials used in the prior art” (Answer 9).
Thus, in order to determine whether the claims are anticipated, we must first
ascertain the scope and meaning of the term “powder coating material.”
During prosecution, claims are given their broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004). See also, Phillips v.
AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir.
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Appeal 2007-0158
Application 10/415,202

2005)(citing, inter alia, In re Nelson, 280 F.2d 172, 181, 126 USPQ 242,
251 (CCPA 1960) (“The descriptions in patents are not addressed to the
public generally, to lawyers or to judges, but, as section 112 says, to those
skilled in the art to which the invention pertains or with which it is most
nearly connected.”)). Appellant contends that one of ordinary skill in the art
would understand the term “powder coating material” as referring to a
“solid, particulated coating material having a plurality of components in
admixture in each particle” (Br. 4-5). By contrast, one of ordinary skill in
the art would understand the term “solid epoxy resin” as referring to
particles containing an epoxy resin and nothing more (Reply 2).
Appellant relies on the Specification as evidence that the terms
“powder coating materials” and “solid epoxy resins” clearly designate two
different types of materials. Appellant points out that the Specification
references separate publications for examples of suitable solid epoxy resins
and powder coating materials for use in the invention (Br. 2). See
Specification 5:13-6:3. Appellant also notes that the Specification states that
the epoxy resin powder coating material generally includes from 40 up to
80% by weight of epoxy resin and, therefore, necessarily includes materials
other than epoxy resin (Br. 2). See Findings of Fact 5, 6, and 7. Appellant
further relies on Goldschmidt as evidence that "powder coating" is a term of
the coating arts that refers to a mixture of coating materials that is
homogenized in a melt, then solidified and granulated (Br. 4) to produce
particles of the powder material, each of which includes epoxy resin as well
as other additives (see Reply 2-3).
We find Appellant’s arguments and evidence persuasive in
establishing that the claim term “powder coating material” is properly
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interpreted as a “solid, particulated coating material having a plurality of
components in admixture in each particle.” We further find that the facts and
reasons relied on by Appellant establish a chemical and physical difference
between the claimed “powder coating material” dispersion and the prior art
“solid epoxy resin” dispersions. Therefore, we conclude that the Examiner
has failed to establish a prima facie showing of anticipation. See In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir.
1999)(Anticipation under 35 U.S.C. § 102 requires that "each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference."). The rejections of the claims as
anticipated by Sweet, Gunter, and Elmore are reversed.
II. Has Appellant shown that the claim language should be narrowly
construed as limited to a coating material in which the curing component
and binder component are physically separated?
Appellant argues that “[c]laim 3 is patentable over the Elmore patent
because the Elmore patent fails to disclose or suggest a multicomponent
system (as that term is used in the present claim and specification) or a
system comprising both a solid epoxy dispersion in one component and a
liquid epoxy in a second component” (Br. 7).
The patentability analysis begins with the legal question “what is the
invention claimed?” See Panduit v. Dennison Mfg. Co., 774 F.2d 1082,
1093, 227 USPQ 337, 344 (Fed. Cir. 1985). In this case, the claimed
invention is directed to an aqueous coating material comprising two
components: a curing component and a binder component. The claim
language itself does not preclude the components from being mixed.
Moreover, contrary to Appellant’s contention, we see no basis in the
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Application 10/415,202

Specification for limiting the claimed invention to a coating material in
which components (A) and (B) are physically separated. For example, the
Specification discloses that “for the multicomponent systems of the
invention, the curing component (A) and the binder component (B) are not
mixed with one another until shortly before application” (Specification 11:1-
4). However, the Specification does not disclose that upon mixing
components (A) and (B), the aqueous coating material is no longer a “multi-
component system.” In fact, in Example 1 of the Specification, an inventive
two-component coating material is prepared by combining all curing and
binder components. As pointed out by the Examiner “[m]ost epoxy
compositions are capable of being one-component or multi-component.
Furthermore, two-component compositions essentially become one-
component systems at the time of application and curing. The separation of
these materials is merely a mechanism of controlling shelf-life” (Answer
13).
Accordingly, we find that Appellant has failed to establish that the
term “multi-component system” patentably distinguishes over the mixture of
materials disclosed in Elmore (see Finding of Fact 10.) The rejection of
claim 3 as obvious in view of Elmore is affirmed.
ORDER
The rejection of claims 1, 2, 4, 6-9, 12, 13, and 15 under 35 U.S.C.
§ 102(b) as anticipated by Sweet is reversed.
The rejection of claims 1, 2, 7-9, 13, and 15 under 35 U.S.C. § 102(b)
as anticipated by Gunter is reversed.
The rejection of claims 1, 2, 7-9, and 13 under 35 U.S.C. § 102(b) as
anticipated by Elmore is reversed; and
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Appeal 2007-0158
Application 10/415,202

The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Elmore 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)(1)(iv) (2006).
AFFIRMED-IN-PART

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