Ex Parte Haines

Patent Trial and Appeal Board

Jan 5, 2018

13744208 (P.T.A.B. Jan. 5, 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.
13/744,208 01/17/2013 Jay A. Haines 029319-0702 5623
15034 7590 01/08/2018
Wilson Elser Moskowitz Edelman & Dicker LLP
150 East 42nd Street
New York, NY 10017
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
01/08/2018 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 JAY A. HAINES
Appeal 2016-008217
Application 13/744,208
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1-4, 6, 7, and 21-27. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision refers to the Specification (Spec.) filed January 17, 2013, the
Examiner’s Final Office Action (Final Act.) dated October 1, 2014,
Appellant’s Appeal Brief (Appeal Br.) filed January 19, 2016, the
Examiner’s Answer (Ans.) dated June 29, 2016, and Appellant’s Reply Brief
(Reply Br.) filed August 29, 2016.
2 Appellant is the Applicant, Textured Coatings of America, Inc., which,
according to the Brief, is the real party in interest. Appeal Br. 1.
Appeal 2016-008217
Application 13/744,208
STATEMENT OF THE CASE
The claimed invention relates to a marine coating
comprising a first layer including polyvinylidene fluoride (PVDF)
and/or fluoro ethylene-alkyl vinyl ether (FEVE) with a heat
reflective metal oxide pigment, and a second polyurethane layer,
wherein the pigment includes one or more pigments having a
corundum-hematite crystal lattice, a spinel crystal lattice, or a
nickel titanate rutile structure. Claim 1. The Inventor discloses
that fluorinated resin coating systems are well known in the art
and include PVDF and FEVE systems. Spec. Tf 69. Likewise, the
Inventor discloses that polyurethane coatings are well known in
the art. Id. 70. Additionally, the Inventor discloses that metal
oxide pigments having corundum-hematite crystal lattice or spinel
crystal lattice are well known in the art. Id. 39, 40. The
Inventor also appears to disclose that metal oxide pigments
having nickel titanate rutile structure were also known in the art.
Id. 1 58.
As to a marine coating, the Inventor discloses that
embodiments having a heat reflective metal oxide pigment system
that includes a polyurethane layer may be used for “marine
applications on boats, ships, structures that are intended to be in
or around marine environments, such as docks and the like,
especially (but not only) for marine applications and embodiments
in which the substrate for the coating is metal.” Id. Tf 19. The
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Application 13/744,208
Inventor further describes that “the metal substrate may be
present in hulls, exterior walls, deck and/or fixtures of a boat or a
ship; or . . . present in or on a building, shed or structure in a
marine environment (such as near water).” Id. Tf 79.
Sole independent claim 1, reproduced below from the Claims
Appendix to the Appeal Brief, is illustrative of the subject matter
on appeal.
1. A marine coating comprising:
(1) a first layer comprising (a) one or more selected
from polyvinylidene fluoride (PVDF) and
fluoroethylene-alkyl vinyl ether (FEVE) and (b) a heat
reflective metal oxide pigment; and
(2) a second polyurethane layer;
wherein said heat reflective metal oxide pigment
comprises one or more pigments selected from the group
consisting of a pigment having a corundum-hematite
crystal lattice structure, a pigment having a spinel
crystal lattice structure and a pigment having a nickel
titanate rutile structure.
REJECTIONS
The Examiner maintains, and Appellants request our review
of, the following grounds of rejection under 35 U.S.C. § 103(a):
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1. Claims 1-4, 6, 7, and 24 as unpatentable over Nishida3
in view of Han4 and Haines5 (Final Act. 2-3); and
2. Claims 1, 21-23, and 25-27 as unpatentable over
Wood6 in view of Haines (Final Act. 4-5).
ANALYSIS
After review of the opposing positions articulated by
Appellant and the Examiner and the evidence of obviousness
adduced by the Examiner in light of the countervailing
Declaration evidence proffered by Appellant, we determine that
the Appellant’s arguments and evidence are insufficient to
outweigh the evidence of obviousness marshalled by the
Examiner. Thus, Appellant has not identified reversible error in
the Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011). Accordingly, we affirm the stated
obviousness rejections for substantially the fact findings and the
reasons set forth by the Examiner in the Final Office Action and
3 Nishida et al., US 2009/0029176 Al, published January 29, 2009
(“Nishida”).
4 Han et al., US 2003/0158327 Al, published August 21, 2003 (“Han”).
5 Haines, US 2005/0215685 Al, published September 29, 2005.
6 Wood et al., US 2010/0233461 Al, published September 16, 2010
(“Wood”).
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the Examiner’s Answer, which we adopt as our own. We offer the
following for emphasis.
Rejection 1: Obviousness over Nishida in view of Han and Haines
Appellant argues only claims 1 and 24 separately.7
Accordingly, claims 2-4, 6, and 7 stand or fall with claim 1.
Claim l8
The Examiner finds Nishida discloses a heat shield sheet
comprising PVDF and a metal oxide powder filler, wherein the
heat shield sheet may be used as an exterior material of a ship.
Final Act. 3. Though the Examiner acknowledges Nishida fails to
disclose a polyurethane layer or the metal oxides having the
recited crystal structure of claim 1, the Examiner finds Han
teaches a polyurethane layer that can be applied to a boat in order
to protect the surface from weathering, chemical and corrosion
attack and Haines teaches an infrared-reflective wall paint with
7 Appellant also argues claims 21—23. Appeal Br. 10. However, none of
these claims are included in this rejection. Therefore, these arguments are
moot.
8 In the Reply Brief, Appellant presents a new argument not raised in the
Appeal Brief attempting to distinguish between Nishida’s heat shield sheet
and the marine coating of claim 1. Reply Br. 3^4. Under regulations
governing appeals to the Board, any new argument not timely presented in
the Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473,
1476-77 (BPAI 2010) (informative). See 37 C.F.R. § 41.41(b)(2).
Appellants have provided this record with no such showing. Accordingly,
we will not consider this new argument in the Reply Brief.
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infrared-reflective pigments having corundum-hematite
crystalline structure. Id. at 4. The Examiner concludes that it
would have been obvious to apply a polyurethane layer to
Nishida’s heat shield sheet in order to provide protection from
weathering, chemical and corrosion attack in view of Han and use
pigments having corundum-hematite crystalline structure to
reflect infrared radiation in view of Haines. Id.
Appellant argues that the Examiner’s obviousness rejection
is based on impermissible hindsight because the Examiner fails to
identify any reference that discloses, teaches or suggests any
marine coating that has a first layer comprising PVDF and/or
FEVE with a heat reflective pigment and a second polyurethane
layer. Appeal Br. 9-10. Appellant contends that the Examiner’s
obviousness conclusion lacks support or rationale as to why these
two specific layers would be needed to achieve the goal alleged by
the Examiner, i.e. to provide protection from weathering, chemical
and corrosion attack. Id. at 10. Appellant further argues that,
because those of ordinary skill in the art understand both PVDF
and polyurethane layers are both used for resistance to harsh
environmental conditions, ordinary artisans would consider the
use of both types of layers in one coating to be redundant. Id. at
11 (citing each of the Declarations of Michael Sand under 37
C.F.R. § 1.132 filed November 7, 2013 and July 15, 2014 (Dec. 1
and Dec. 2)). According to Appellant, due to the redundancy of
these two materials, the ordinary artisan would be motivated
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against the extra cost and effort in using both material layers in
one coating “as it would not have been expected to confer any
additional advantage.” Id.
Appellant’s arguments are not persuasive of reversible error
in the Examiner’s rejection. Obviousness under 35 U.S.C. § 103
must be based on evidence in the prior art, and a proper rejection
must explain how that evidence would have taught, suggested, or
motivated the modifications necessary to overcome the differences
between the prior art and the claimed invention. To proceed
without adequate evidence and explanation is to fall into the trap
of prohibited hindsight. However, “[a]ny judgment on obviousness
is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is
proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Moreover, one cannot show nonobviousness by attacking
references individually when the rejection is based on a
combination of references. In re Keller, 642 F.2d 413, 425 (CCPA
1981). Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the
prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). “The combination of familiar elements
according to known methods is likely to be obvious when it does no
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more than yield predictable results.” KSR Int’l Co. v. Tele flex Inc.,
550 U.S. 398, 416 (2007).
Here, Appellant fails to establish that the Examiner’s
findings and explanation are not supported in the applied prior
art, or that the Examiner’s conclusion of obviousness includes
knowledge not available in the prior art but on knowledge gleaned
from Appellant’s disclosure. Nor has Appellant shown error in the
Examiner’s reasoning for combining the respective teachings of
the prior art. Indeed, the Examiner notes, given Nishida’s
purpose is a coating to prevent temperature increase whereas
Han’s purpose is a coating that protects an underlying surface
from weathering, chemical, and corrosion attack, “Han is not
considered redundant to the heat shield of Nishida.” Ans. 3.
“[A]ny need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). In addition, even were
PVDF and polyurethane layers known to be useful for the same
purpose, e.g., resistance to harsh environmental conditions, the
combination of such materials would nonetheless still be prima
facie obvious in order to achieve this same purpose. In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie
obvious to combine two compositions each of which is taught by
the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose. . .
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. [T]he idea of combining them flows logically from their having
been individually taught in the prior art.”)
As to Appellant’s argument that redundancy motivates
against, i.e., teaches away from, the combination due to the extra
cost and effort involved in applying the two material layers
without any additional advantage, we note that this argument
relies on the Sand Declarations, paragraphs 9 and 10. Appeal Br.
11. The second Sand Declaration states that those skilled in the
art would consider using both PVDF and polyurethane coatings
“to be redundant, and therefore would be motivated against the
extra cost and effort (labor) in making a coating that has both
layer types.” Dec. 2, 10. However, Declarant fails to provide
any factual evidence or persuasive technical reasoning in support
of this statement, i.e., no cost basis has been provided for either
materials nor has Declarant evaluated the cost of a coating having
the two material layers versus a coating of the same thickness
having only a single material layers. Also, as we earlier indicated,
the Examiner reasonably finds that these two materials are not
redundant. Thus, Appellant’s argument that redundancy
motivates the combination is not persuasive of reversible error.
Appellant further argues that even if the ordinary artisan
was motivated to combine the teachings of Nishida, Han, and
Haines, there would not have been a reasonable expectation of
success in such a combination. Appeal Br. 12. In support of this
argument, Appellant again relies on the Sand Declarations for
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explaining that those of skill in the art would expect problems
with the ability of a polyurethane topcoat to adhere to a PVDF or
FEVE bottom coat. Id. (citing Dec. 1 TH[9, 10 and Dec. 2 ]f]f 9, 10).
In particular, Appellant contends that, given that the prior art
fails to teach any coating having a PVDF or FEVE bottom coat
with a polyurethane top coat, the prior art cannot overcome the
unpredictability of successfully adhering a polyurethane layer to a
PVDF or FEVE bottom coat. Id. On the other hand, Appellant
urges the claimed invention achieved surprising and unexpected
success with regard to the quality and robustness of the claimed
two-layer coating system. Id. As evidence of such success,
Appellant directs attention to the Sand Declarations which set
forth that the results with regard to the quality of such a coating
on a tugboat in New Orleans for over year. Id. (citing Dec. 1 THf 8,
9 and Dec. 2 ]f]f 8, 12, 14). Appellant asserts such results are
surprising and overcome any doubt that a polyurethane coating
can successfully remain adhered to a PVDF bottom coat for long
periods of time in abusive environments. Id.
Appellant’s argument and evidence is not persuasive of
either unexpected results or reversible error. With regard to the
Sand Declarations, we note the fact that no anticipatory teaching
in the prior art exists (Dec. 1 If 7; see also, Dec. 2 ]f 7) alone is
insufficient to support a conclusion that the claimed invention
would have been surprising and, therefore, unobvious. Likewise,
the fact that Declarant, an expert in the relevant field, is not
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aware of any use of a PVDF or FEVE coating specifically for a
marine environment (Dec. 1 8) is of little probative value
because this statement fails to indicate any reason why such
coatings have not been used in marine environments. In addition,
we note that the prior art specifically recites ships as possible
substrates for receiving a PVDF coating. Nishida 2 and 65-67.
Moreover, Declarant’s conclusion that those skilled in the art
would be motivated against using both PVDF and polyurethane
layers in a coating because they overlap in functionality (Dec. 1 Tf
9) is not persuasive, for the reasons discussed above, and is
contrary to case law. See Kerkhoven, 626 F.2d at 850.
Declarant further states that “coatings that include PVDF or
FEVE result in a non-adhesive surface.” Dec. 1 ^ 10; see also, Dec.
2 10. Declarant, therefore, concludes that “those in the art
would have expected that a polyurethane coating would not
successfully adhere to a PVDF or FEVE-based bottom coat.” Id.
Declarant states that Appellant’s successful application of these
two materials runs counter to “industry expectation.” Id.
However, Declarant fails to direct our attention to any
evidentiary support or persuasive technical reasoning that the
ordinary artisan would not only have expected a PVDF- or FEVE-
based coating to result in a non-adhesive surface, but also that
polyurethane would not successfully adhere to such a surface. Nor
does Declarant direct our attention to any evidence corroborating
any “industry expectation.” See Ashland Oil, Inc. v. Delta Resins
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& Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of
factual support for expert opinion going to factual determinations .
. . may render the testimony of little probative value in a validity
determination.”).
As such, we find the Sand Declarations lack sufficient
factual corroboration to bear the necessary evidentiary weight. In
re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”).
Claim 24
Claim 24 depends from claim 1, and further requires the
first layer has a concentration of the heat reflective metal oxide
pigment of between about 0.1-6 wt%. The Examiner finds that
though Nishida teaches a heat shield comprising a resin such as
PVDF and a metal oxide filler, Nishida fails to teach the amount
of the metal oxide filler in the heat shield. Ans. 2-3. However,
the Examiner finds Haines teaches an infrared reflective wall
paint with infrared reflective metal oxide pigments. Id. at 3.
Appellant asserts that Nishida’s heat shield relies on a far
less effective powdery filler at a concentration of 10—60 mass%.
Appeal Br. 10. Appellant further urges that the Examiner fails to
explain why the skilled artisan would substitute Nishida’s fine
powdery filler with a heat reflective metal oxide pigments, on
what basis the skilled artisan would select the claimed amount of
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such pigments, or whether they would work in Nishida’s heat
shield. Id.
These arguments fail to persuade us of reversible error in
the Examiner’s rejection of claim 24. We note Nishida teaches a
heat shield having a high reflectance in the near-infrared region
to prevent temperature increase of an exterior material of a
structure. Nishida 7, 10. We further note Haines teaches an
infrared reflective coating using heat reflective metal oxide
pigments. Haines ^ 18, 24. In addition, the Examiner finds
Haines also teaches that such pigments with a corundum
hematite crystalline structure, when used in coating compositions,
provide lower energy absorption. Ans. 4 (citing Haines ^ 16, 18).
Haines teaches using approximately 0.1 to 10 % of the pigments in
the coating formulation. Id.; Haines Tf 52.
Since Haines’ heat reflective metal oxide pigments are
disclosed to be infrared reflective and provide lower energy
absorption, one of ordinary skill in the art would have substituted
these pigments for Nishida’s metal oxide powder filler with a
reasonable expectation of improved infrared reflection in the
resulting coating. In addition, the ordinary artisan would have
used the amount of these pigments taught within Haines for
achieving the desired infrared reflection. Finally, though
Appellant questions whether Haines’ heat reflective metal oxide
pigments would work in Nishida, Appellant fails to provide any
basis for questioning the proposed combination either through
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persuasive technical reasoning or an evidentiary showing. To the
contrary, the fact that both Nishida and Haines use metal oxide
particles in infrared reflective coatings provides a reasonable basis
to believe that using Haines’ pigments in Nishida would work
with a reasonable expectation of success.
Rejection 2: Obviousness over Wood in view of Haines
Appellant does not argue the claims separately.9
Accordingly, claims 21-23 and 25-27 stand or fall with claim 1.
The Examiner finds Wood discloses a multi-layered coating
composition having high total solar reflectance and including a
basecoat comprising PVDF and metal oxide pigments, and a thin
top, weatherable layer containing one or more colored pigments
and a polymer matrix such as polyurethane. Final Act. 4. The
Examiner also finds Haines discloses an infrared-reflective wall
paint with infrared-reflective pigments having corundum-
hematite crystalline structure. Id. Therefore, the Examiner
concludes that it would have been obvious to have used infrared-
reflective pigments having corundum-hematite crystalline
structure as the metal oxide pigments of Wood. Id.
Appellant argues that Wood fails to support combining
PVDF and polyurethane layers in a coating because both these
9 Appellant also argues claims 21—23. Appeal Br. 10. However, none of
these claims are included in this rejection. Therefore, these arguments are
moot.
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materials are disclosed “in boiler plate lists of many possible
components for various layers.” Appeal Br. 13. Appellant notes
that Wood “does not describe, disclose or contemplate to
specifically combine a PVDF bottom coat layer with a
polyurethane top coat layer and certainly provides no examples of
any coatings where such layers were successfully combined.” Id.
This argument is not persuasive of reversible error. We note
that this rejection is one of obviousness under § 103, rather than
anticipation under § 102. Moreover, the fact that Wood teaches a
multitude of possible, effective combinations of topcoat and
underlayer polymers does not render any particular combination,
including the claimed combination of PVDF bottom layer and
polyurethane top layer, less obvious, especially where the claimed
coating is used for the same purpose disclosed in Wood. Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see
also, In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the disclosure of the prior art was “huge,
but it undeniably include [d] at least some of the compounds
recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant's
additives”); In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)
(“Where a skilled artisan merely pursues ‘known options’ from a
‘finite number of identified, predictable solutions,’ obviousness
under § 103 arises.” (quoting KSR Int7. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007)).
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Appellant also argues that Wood is silent with regard to the
use of a marine coating. Appeal Br. 13. However, the Examiner
finds that Wood discloses that the coating composition can be used
to coat roofs and wall of buildings, including those located near
water. Ans. 6-7 (finding Wood teaches the coating is weather and
water resistant.) Wood supports the Examiner’s finding. Wood ^
4 (“This multi-layered composition can be used to coat roofs and
walls of buildings”); Tf 19 (“the multi-layer composition provides
other benefits, such as increased weatherability, and improved
barrier properties and water resistance.”) We note Appellant
teaches that the substrate to which the coating of the claims may
be applied “may be present in or on a building, shed or structure
in a marine environment (such as near water).” Spec. ^ 79.
Accordingly, Appellant’s argument is not persuasive of reversible
error.
Appellant next argues that Haines fails to remedy
deficiencies of Wood as relied upon by the Examiner. Appeal Br.
14. In particular, Appellant contends that the Examiner’s
conclusion of obviousness lacks “any objective reasoning or
explanation.” Id. Appellant urges that “Haines merely discloses
an infrared reflective wall paint with infrared reflective pigments
having a corundum-hematite crystalline structure.” Id. Appellant
also asserts that Haines makes no reference to either a marine
coating, or to the combination of PVDF or FEVE and
polyurethane. Id.
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These arguments are also not persuasive of reversible error.
We note Wood teaches a coating composition having a high solar
reflectance to help keep buildings cooler, and prefers pigments
designed for higher solar reflectance. Wood 3, 11. We further
note Haines teaches an infrared reflective coating using heat
reflective metal oxide pigments. Haines 18, 24. In addition,
the Examiner finds Haines also teaches that such pigments with a
corundum hematite crystalline structure, when used in coating
compositions, provide lower energy absorption. Ans. 4 (citing
Haines ^ 16, 18). Since Haines’ heat reflective metal oxide
pigments are disclosed to be infrared reflective and provide lower
energy absorption, one of ordinary skill in the art would have
substituted these pigments for Wood’s metal oxide pigments with
a reasonable expectation of improved infrared reflection in the
resulting coating.
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Affirmed Reversed
1-4, 6, 7,
and 24
§ 103(a) Nishida, Han,
Haines
1-4, 6, 7,
24
1, 21-23,
and 25-27
§ 103(a) Wood, Haines 1, 21-23,
25-27
Summary 1-4, 6, 7,
21-27
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TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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