Ex Parte Jennings et al

Patent Trial and Appeal Board

Mar 13, 2014

13152534 (P.T.A.B. Mar. 13, 2014)

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.
13/152,534 06/03/2011 Robert E. Jennings 1951C1 7082
24959 7590 03/14/2014
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
JACKSON, MONIQUE R
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/14/2014 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 ROBERT E. JENNINGS,1
James A. Claar, Eldon L. Decker, and Noel R. Vanier
________________

Appeal 2012-010015
Application 13/152,534
Technology Center 1700
________________

Before PETER F. KRATZ, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Robert E. Jennings, James A. Claar, Eldon L. Decker, and
Noel R. Vanier (“PPG”) timely appeal under 35 U.S.C. § 134(a) from the
Final Rejection2 of claims 1-10 and 12-16. We have jurisdiction.
35 U.S.C. § 6. We affirm.

1 The real party in interest is listed as PPG Industries Ohio, lnc. (“PPG”).
(Appeal Brief, filed 2 April 2012 (“Br.”), 1.)
2 Office action mailed 14 March 2012 (“Final Rejection”; cited as “FR”).
Appeal 2012-010015
Application 13/152,534

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OPINION
A. Introduction3
The subject matter on appeal relates to multilayer “color-plus-clear”
coating compositions for articles such as automobiles. (Spec. 1 [0003].)
Examples of such coatings include tri-coat systems, which comprise, in
order from the substrate, a base color coat, a “color-imparting non-hiding
layer,” and a clear coat. (Id. at 1-2 [0004].) According to
the 534 Specification, the color-imparting non-hiding layer can provide a
color enhancing (“candied”) or a contrasting color effect, such as “orange
metallic.” (Id. at 2 [0005].) The organic dyes used in prior art color
imparting non-hiding layers, however, are said to have poorer color fastness
than pigments (inorganic colorants), or potential heavy-metal toxicity, or
migration of the dyes to the surface. (Id. at 2-3 [0008].)
The inventors disclose that these problems may be avoided by
providing a color-imparting non-hiding color layer made from
nanoparticulate pigments having a particle size less than 150 nm.
(Id. at 7 [0025]-[0026].) Such nanoparticulate pigments are said to provide
protective coating compositions having a maximum haze of 10%.
(Id. at 6 [0023].)4

3 Application 13/152,534, Coated articles and multi-layer coatings,
filed 3 June 2011 as a continuation of 10/876,291, filed 24 June 2004, now
U.S. Patent 7,981,505. The specification is referred to as the
“534 Specification,” and is cited as “Spec.”
4 An exemplary discussion of values (understood to include the modifier
“about”), ranges (understood to include the endpoints), and definitions of
Appeal 2012-010015
Application 13/152,534

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Representative Claim 1 reads:
A multilayer coating comprising:
(a) a color-imparting, non-hiding coating layer
deposited from a protective coating composition
comprising
an aqueous dispersion comprising color-imparting
pigments having an average primary particle size
less than 150 nanometers
stably dispersed in aqueous medium in admixture
with one or more polymers, and
(b) a clear coat layer deposited over at least a portion of the
color imparting, non-hiding layer.
(Claims App., Br. 4; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following new ground of rejection:5
Claims 1-10 and 12-16 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Kasari6 and any of Yukinobu,7
Kobayashi,8 Komoto,9 or Panush.10

key terms may be found in the Specification at page 4 [0015] to
page 6 [0022].
5 Examiner’s Answer mailed 11 June 2012 (“Ans.”).
6 Akira Kasari et al., Method for forming multi-layer metallic coating film,
U.S. Patent 6,165,621 (2000).
7 Masaya Yukinobu and Yukiko Suekane, U.S. Patent Application
Publication 2003/0180511 A1 (2003).
8 Mitsuaki Kobayashi and Naoyuki Toriumi, U.S. Patent Application
Publication 2005/0272843 A1 (2005).
9 Keiji Komoto et al., U.S. Patent 6,022,919 (2000).
10 Sol Panush, U.S. Patent 4,753,829 (1988).
Appeal 2012-010015
Application 13/152,534

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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we note the Examiner entered a new ground of rejection,
replacing the official notice taken in the Final Rejection that “pigment
particle size is a result-effective variable affecting the smoothness, haze, and
light transparency of a coating” (FR 3, ll. 19-21) with the additional citations
to the prior art in the Examiner’s Answer. The Examiner makes specific
findings regarding the teachings of nanoparticles having a diameter of less
than 150 nm and the effect on coating properties for each reference. (Ans. 3,
l. 22, to 5, l. 3.) The Examiner concludes that it would have been obvious to
“utilize routine experimentation to determine the optimum particle size of
the pigment particles utilized in the coating composition (B) taught by
Kasari . . . ”. (Ans. 5, ll. 5-7.)
PPG, in response to the Examiner’s findings, urges that none of the
references teaches a pigment having the required size, and that each
reference does not teach a color-imparting, non-hiding layer. (Reply11 2-3.)
As PPG does not raise arguments for the separate patentability of any claim,
all claims stand or fall together. 37 C.F.R. § 41.37(c)(1)(iv) (2012),12

11 Reply filed 26 June 2012 (“Reply”).
12 Current Rule 37 C.F.R. § 41.37(c)(1)(iv) replaces former rule
37 C.F.R. § 41.37(c)(1)(vii)(2011). Rules of Practice Before the Board of
Patent Appeals and Interferences in Ex Parte Appeals, Final Rule, 76 Fed.
Reg. 72270, 72297 (22 November 2011). This Final Rule is “effective for
all appeals in which a notice of appeal is filed on or after January 23, 2012.”
(Id. at 72270.)
Appeal 2012-010015
Application 13/152,534

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PPG’s arguments are not persuasive. PPG does not dispute the
Examiner’s particular findings regarding each reference, including the
principal reference Kasari. The Examiner has not, as we understand it,
found that the secondary references teach color-imparting pigments having a
primary particle size. Rather, the Examiner finds that the secondary
references teach that optical characteristics, such as haze, of coatings may be
minimized by using particles having a diameter less than 150 nm. The
Examiner holds that it would have been obvious to use pigment particles in
that size range to avoid haze in the aqueous coating composition taught by
Kasari. PPG has failed to show harmful error in the Examiner’s reasoning
that the combined teachings of the references would have been obvious.
See, e.g., In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)
(“The test for obviousness is not . . . that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”) (Citations omitted.)
PPG has not raised arguments for patentability based on so-called
secondary considerations such as unexpected results.
C. Order
We affirm the rejection of claims 1-10 and 12-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
Appeal 2012-010015
Application 13/152,534

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