Ex Parte Jennings et al

Board of Patent Appeals and Interferences

Sep 23, 2009

11065216 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT E. JENNINGS, BRUCE A. CONNELLY,
and JONATHAN T. MARTZ
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Appeal 2009-003494
Application 11/065,216
Technology Center 1700
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Decided: September 23, 2009
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent
Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2-5, 12-14, 16, 17, and 22, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).

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The Invention
The Appellants claim methods for coating a bare metal substrate,
refinishing a surface of an article comprising a bare metal substrate, and
improving chip resistance of a coated substrate, each method comprising
applying a specified polyester coating composition to the substrate.
Claim 14 is illustrative:
14. A method of coating a bare metal substrate comprising:

(a) applying a composition comprising a coating composition directly
to at least a portion of the bare metal substrate;

(b) coalescing the composition over the substrate in the form of a
substantially continuous film; and

(c) curing the composition;

wherein the coating composition comprises:

(a) a polyester comprising at least two reactive hydroxyl
groups, wherein the polyester comprises the reaction product of
reactants comprising:

(i) a polycarboxylic acid comprising more than two acid
groups per molecule, and
(ii) polytetramethylene glycol having a hydroxyl number
between 50 and 500 mg. KOH per gram;
the molar ratio of (ii) to (i) being at least 2.5 to 1;
(b) a material comprising at least two functional groups reactive
with the hydroxyl groups of the polyester; and
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(c) 0.1 to 5 percent by weight based on total resin solids weight
of a free acid.

The References
Rogers 4,918,156 Apr. 17, 1990
Goebel 6,350,809 B1 Feb. 26, 2002
Swarup 2003/0176592 A1 Sep. 18, 2003
Aikawa (as translated) JP 57-139155 Aug. 27, 1982
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 2-
5, 12-14, and 22 over Goebel in view of Aikawa and Rogers, and claims 16
and 17 over Goebel in view of Aikawa, Rogers, and Swarup.
OPINION
We reverse the Examiner’s rejections.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a coating composition having a
molar ratio of polytetramethylene glycol to polycarboxylic acid of at least
2.5:1?
Findings of Fact
Goebel discloses a water-borne basecoat comprising a water-dilutable
polyester that “can be prepared by conventional melt condensation of at least
one polycarboxylic acid (or anhydride) and at least one polyol as well as at
least one, preferably only one, macrodiol” (col. 2, ll. 13-21). The
polycarboxylic acid can be trimellitic acid (col. 2, ll. 25-30), which is one of
the Appellants’ polycarboxylic acids comprising more than two acid groups
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per molecule (Spec. ¶ 0017). The macrodiol preferably is
polytetrahydrofuran diol (col. 2, ll. 55-56), which is the Appellants’
polytetramethylene glycol. Polycarboxylic acids, polyols and macrodiol(s)
are used in the preparation of the water-dilutable polyester in quantity
proportions, such that a polyester with a weight average molecular mass of
5000 to 50000, preferably 10000 to 30000, an acid value of 10 to 50,
preferably 20 to 30 mg KOH/g, a hydroxyl value of 30 to 100, preferably 40
to 90 mg KOH/g, and an average hydroxyl-functionality of 2 to 3, preferably
2.3 to 2.8 is obtained, wherein the polyester consists of 5 to 25, preferably 8
to 20 wt-% of structural units –O-R-O- derived from one or more macrodiols
having a hydroxyl value of 25 to 120 mg KOH/g (col. 2, ll. 57-67).
Rogers discloses “a polyester resin which exhibits improved
processability during manufacture into biaxially-oriented polyester film”
(col. 1, ll. 6-8). The improved processability is obtained by adding to the
polyester (col. 2, ll. 1-23):
a copolyesterether comprising
(A) a dicarboxylic acid component consisting essentially of 1,4-
cyclohexanedicarboxylic acid having a trans isomer content of
at least 70%, and
(B) a glycol component consisting essentially of
(1) 1,4-cyclohexanedimethanol, and
(2) from about 15 to about 50 weight percent, based on
the weight of the polyesterether, of
polytetramethyleneether glycol having a molecular
weight of about 500 to about 1100,
(C) from about 0.1 to about 1.5 mole %, based on the mole [%]
of the acid or glycol component, of a branching agent having at
least three COOH or OH functional groups and from 3 to 60
carbon atoms,
said copolyesterether being present in said polyester resin in an
amount effective to reduce the occurrence of film splitting during the
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production of biaxially oriented film from said resin but not exceeding
7 weight percent, based upon the total weight of the polyester resin
and the copolyesterether.

The branching agent can be trimellitic acid (col. 3, ll. 43-44), which is one of
the Appellants’ polycarboxylic acids comprising more than two acid groups
per molecule (Spec. ¶ 0017).1
Analysis
The Examiner points out that the ratio of Rogers’
polytetramethyleneether glycol in Example II (9 mole%, col. 8, ll. 60-61) to
the about 0.1 to about 1.5 mole % trimellitic acid branching agent (col. 2,
ll. 14-17) is greater than 2.5:1, and argues that “[i]t would have been obvious
to one of ordinary skill in the art at the time of the invention to include in
Goebel the use of greater than 2.5:1 ratio of polyesterether glycol to
anhydride [of trimellitic acid], as taught by Rogers, in order to improve the
processability of the polyester composition” (Ans. 5). The Examiner argues
that “Goebel coats metal surfaces and said surfaces will bend, expand and
contract depending on processing conditions and uses of the coated product
and thusly the ductility of the coated film would be an important property in
Goebel” (Ans. 8).
The Appellants argue that “[i]mproved ‘processability’ of Rogers ‘156
relates to improvements within a melt-extruded free film, and these
improvements (e.g., film splitting, flex cracking, and/or melt strength) are

1 Aikawa and Swarup are not relied upon by the Examiner for any disclosure
that remedies the deficiency in Goebel and Rogers as to the above-stated
issue (Ans. 4, 6). We therefore do not further discuss Aikawa and Swarup.
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unrelated to a curable refinish coating composition applied to a bare metal
substrate” (Br. 8).
Even if, as argued by the Examiner (Ans. 8), Goebel’s film may bend,
expand or contract, the Examiner has not established that such bending,
expanding and contraction is anything like the expansion Rogers’ free
standing film undergoes when it is biaxially stretched. Thus, the Examiner
has not established that Rogers’ compositional components which reduce
film splits during biaxial stretching would have been considered by one of
ordinary skill in the art to be useful in Goebel’s coating composition.
Moreover, the Examiner relies upon the ratio of Rogers’
polytetramethyleneether glycol to the trimellitic acid branching agent as
providing the improved resistance to film splits (Ans. 5). Rogers, however,
does not disclose that it is that ratio that provides that benefit. Instead,
Rogers indicates that the improved resistance to film splits is provided by
adding to a polyester up to 7 wt% of a copolyesterether made from, in
addition to the polytetramethyleneether glycol and trimellitic acid branching
agent relied upon by the Examiner, 1,4-cyclohexanedicarboxylic acid and
1,4-cyclohexanedimethanol (col. 2, ll. 3-24).
Thus, the Examiner has not established that the applied references
would have provided one of ordinary skill in the art with an apparent reason
to combine their teachings in such a way as to arrive at the Appellants’
claimed invention. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed”).

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Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a coating composition having a
molar ratio of polytetramethylene glycol to polycarboxylic acid of at least
2.5:1.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 2-5, 12-14, and 22
over Goebel in view of Aikawa and Rogers, and claims 16 and 17 over
Goebel in view of Aikawa, Rogers, and Swarup are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

PL Initial:
sld

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