Ex Parte HALL

Board of Patent Appeals and Interferences

Aug 28, 2002

08765079 (B.P.A.I. Aug. 28, 2002)

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written for publication and is not binding precedent of the Board.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. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEPHEN A. HALL
_____________
Appeal No. 2001-0831
Application No. 08/765,079
______________
ON BRIEF
_______________
Before CAROFF, PAWLIKOWSKI, and NAGUMO, Administrative Patent
Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 14, 31-34, and 36-47. Subsequent to the
final rejection, appellant was permitted to cancel claim 41.
Additionally, appellant has indicated in his reply brief (page 3)
that the appeal is withdrawn as to claim 38. Accordingly, the
appeal is dismissed as to claim 38. Thus, the claims now before
us for consideration are 14, 31-34, 36-37, 39-40 and 42-47.
Appeal No. 2001-0831
Application No. 08/765,079
2
The claims on appeal relate to a powder coating composition
obtained by reacting a polyisocyanate with three distinct
alcoholic compounds.
Claim 14 is illustrative of the subject matter encompassed
by the appealed claims, and reads as follows:
14. A powder coating composition comprising a powdered
solid ethylenically unsaturated material having a melting
point from 60o to 120oC and an average particle size from 10
to 250 µm which can melt and reflow prior to curing obtained
by reacting in bulk in a molten state a polyisocyanate with
an at least stoichiometric amount of an alcoholic component
comprising: monohydric alcohol component with an ethylenic
unsaturation derived from acrylic acid or methacrylic acid;
saturated monohydric alcohol and a monomeric polyol, said
monomeric polyol being present in an amount not more than
50% of the stoichiometric amount of hydroxyl groups required
to react with the isocyanate groups of the polyisocyanate.
All of the appealed claims stand rejected for obviousness
under 35 U.S.C. § 103 based upon a combination of the following
two prior art references:
Meixner et al. (Meixner) 5,068,305 Nov. 26, 1991
Takayama et al. (Takayama) 5,382,619 Jan. 17, 1995

Based upon the record before us, we agree with the appellant
that the examiner has failed to establish a prima facie case of
obviousness against any of the claims at issue. Accordingly, we
shall reverse the examiner’s rejection.
In our opinion, there is no doubt that the powder coating
composition taught by Meixner satisfies all of the limitations
Appeal No. 2001-0831
Application No. 08/765,079
3
embodied in appellant’s broadest claim other than the limitation
requiring use of a saturated mono-ol as one of the three
alcoholic reactants involved in preparation of appellant’s
composition. Also, we are mindful that Takayama suggests using a
saturated mono-ol as one of two alcoholic reactants to produce
certain urethane compounds, and demonstrates (Table 3) that the
inclusion of a saturated mono-ol is instrumental in avoiding
generation of cracks when producing in-mold cured products.
That being said, we agree with the appellant that the
differences between the Meixner and Takayama compositions would
appear to be significant, with respect to both the compositions
themselves, e.g., powdery solid (Meixner) v. liquid resin
(Takayama), and their respective processing characteristics,
e.g., powder coating (Meixner) v. in-mold curing (Takayama).
Given such differences, in order to establish a nexus
between Meixner and Takayama, and thus a case for obviousness,
the examiner would have to provide evidence or a sound technical
explanation as to why those of ordinary skill in the art would
find the suggestions of Takayama reasonably pertinent to the
particular problems and conditions encountered in the field of
Appeal No. 2001-0831
Application No. 08/765,079
4
powder coating technology. Here, the examiner has failed to
provide the requisite evidence or explanation. Hence, we are
compelled to reverse the examiner’s rejection.
Because our reversal is based upon a failure to establish a
prima facie case of obviousness, we need not decide whether the
test results reported in the Williams Declaration of record
(appellant’s brief: Appendix B) constitute a dispositive showing
of unexpected results.
For the foregoing reasons, the decision of the examiner is
reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BEVERLY A. PAWLIKOWSKI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MARK NAGUMO )
Administrative Patent Judge )
MLC:hh
Appeal No. 2001-0831
Application No. 08/765,079
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MICHAEL B. FEIN, ESQ.
COZEN AND O’CONNOR
1900 MARKET ST.
PHILADELPHIA, PA 19103