Ex Parte Jhaveri

Patent Trial and Appeal Board

Aug 30, 2018

14168495 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/168,495 01/30/2014 Sarav B. Jhaveri
22850 7590 09/04/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PF-75941/ BASF1041 7612
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/04/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARA VB. JHA VERI
Appeal2017-001505
Application 14/168,49 51
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, and 4--10. 2 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellant and real party in interest is BASF Coatings GmbH. See
App. Br. 3.
2 Claims 11-20 are withdrawn from consideration. See Final Act. 1.
Appeal2017-001505
Application 14/168,495
The appealed invention generally relates to thermosetting coating
compositions containing carbamate-functional copolymers. (Spec. ,II).
Independent claim 1 is representative of the appealed subject matter and is
reproduced below:
1. A coating composition, comprising:
(a) an amphiphilic carbamate-functional copolymer having:
(i) monomer units having carbamate groups, wherein the (i)
monomer units having carbamate groups are present in the
amphiphilic carbamate-functional copolymer in an amount of
from about 5 parts by weight to about 7 5 parts by weight based
on 100 parts by weight of the amphiphilic carbamate-functional
copolymer; and
(ii) monomer units having C4 to C24 hydrocarbyl groups,
wherein the (ii) monomer units having C4 to C24 hydrocarbyl
groups are present in the amphiphilic carbamate-functional
copolymer in an amount of from about 16 parts by weight to
about 70 parts by weight based on 100 parts by weight of the
amphiphilic carbamate-functional copolymer;
wherein a sum of the parts by weight of (i) monomer units
having carbamate groups and the parts by weight of (ii)
monomer units having C4 to C24 hydrocarbyl groups is at least
about 50 parts by weight based on 100 parts by weight of the
amphiphilic carbamate-functional copolymer; and
(b) an aminoplast curing agent reactive with the amphiphilic
carbamate-functional copo 1 ymer;
wherein a weight ratio of the amphiphilic carbamate-functional
copolymer to the aminoplast curing agent is from 60:40 to
75:25.
Claims Appendix to App. Br.
2
Appeal2017-001505
Application 14/168,495
Appellants (see App. Br., generally) request review of the following
rejections:
I. Claims 1, 2, and 4--10 are rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Mayo (US 5,593,785).
II. Claims 1, 2, and 4--10 rejected 35 U.S.C. § 103(a) as obvious
over Mayo.
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 3-7.)
OPINI0N3
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine
that Appellant has not identified reversible error in the Examiner's rejections
of claims 1, 2, and 4--10.
Appellants argue the claimed invention is not anticipated because
Mayo requires a second resinous material to comprise repeating monomer
units having a plurality of repeating ester groups in the backbone. However,
claim 1 requires the amphiphilic carbamate-function copolymer to contain
monomer units having C4 to C24 hydrocarbyl groups. (App. Br. 6).
Appellant also argues all of Mayo's examples require the use of a monomer
that contains an ester group or a cyclic structure - both of which are not a
3 Appellant's arguments are directed to independent claim 1. (App. Br. 5-
9). Appellant does not provide separate arguments addressing the dependent
claims 2 and 4--10. We limit our discussion to independent claim 1 which we
select as representative of the rejected claims.
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Appeal2017-001505
Application 14/168,495
"C4 to C24 hydrocarbyl group" as required by claim 1. (App. Br. 6).
Appellant relies on the same arguments when addressing the rejection under
§103. (App. Br. 6-9). Appellant argues the claimed invention is not
obvious because Mayo does not teach the amphiphilic carbamate-function
copolymer to contain monomer units having C4 to C24 hydrocarbyl groups as
required by claim 1. (App. Br. 8). Appellant has not disputed the
Examiner's determination that Mayo discloses the ratio of carbamate
copolymer to curing agent ranging from 60:40. (App. Br. 9).
Appellant's arguments are not persuasive of reversible error. The
Examiner found Mayo discloses a coating composition comprising a
carbamate-based acrylic polymer ( amphiphilic carbamate functional
copolymer), a polyester and aminoplast crosslinking agent (abstract) which
is the curing agent required by claim 1. (Final Act. 3). The Examiner found
Mayo example 1 describes the incorporation of pendant carbamate groups
into an acrylic polymer by reaction of a hydroxyl-functional acrylic polymer
with a low molecular weight alkyl carbamate. (Final Act. 3; col. 3, 11. 31-
35, Example A). The Examiner found Mayo example 7 describes a clear
film forming composition comprising acrylic copolymer to aminoplast in the
60:40 ratio. (Final Act. 3; col. 12, 11. 30-67).
Appellant has not refuted the Examiner's position that the claim
language- monomer units having C4 to C24 hydrocarbyl groups- does not
preclude the monomer from containing groups other than C and H. (Ans. 6).
The Examiner correctly recognized that Appellant's claim 9 recites the (ii)
monomer units having C4 to C24 hydrocarbyl groups are methacrylate
monomer units. Furthermore, Specification paragraph 1 7 discloses "at least
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Appeal2017-001505
Application 14/168,495
a portion, and up to all, of the monomer units (b) with C4 to C24 hydrocarbyl
groups are methacrylate monomer units."
For the foregoing reasons and those presented by the Examiner, we
sustain the rejections of claims 1, 2, and 4--10.
DECISION
The rejections of claims 1, 2, and 4--10 as unpatentable Mayo are
affirmed.
AFFIRMED
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