Ex Parte Jin et al

Patent Trial and Appeal Board

Dec 19, 2016

13816772 (P.T.A.B. Dec. 19, 2016)

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.
13/816,772 02/13/2013 Xin Jin 074785-502918 7493
132483 7590
POLSINELLI PC
c/o Blue Cube IP LLC
100 South Fourth Street
Suite 1000
St. Louis, MO 63102
12/21/2016 EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN JIN, RAY E. DRUMRIGHT,
BERNHARD KAINZ, JERRY E. WHITE,
and ROBERT E. HEFNER JR.
Appeal 2015-005685
Application 13/816,772
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 1, 2, and 9-24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision refers to Appellants’ Specification filed Feb. 13, 2013
(Spec.), Appellants’ Appeal Brief filed Nov. 3, 2014 (Br.), Appellants’
Supplemental Appeal Brief filed Dec. 16, 2014 (Supp. Br.), and the
Examiner’s Answer mailed Mar. 11, 2015 (Ans.).
2 Appellants identify the real party in interest as Dow Global Technologies.
Br. 2.
Appeal 2015-005685
Application 13/816,772
The claims on appeal are directed to curable coating compositions
comprising a poly epoxy ester resin and articles made thereof (see, e.g.,
claim 1). Appellants disclose that epoxy resins are widely used in
compositions for coating the interior and exterior surfaces of food and
beverage containers because the compositions provide excellent resistance to
chemicals, reasonable flexibility, resistance to hydrolysis, blush, and
corrosive food and beverages, good thermal stability, and inertness to taste
or odor changes. Spec. p. 1,11. 15—19. However, the bisphenol A based
epoxy resins commonly used in can coating compositions have limited
flexibility and toughness at room temperature. Spec. p. 1,11. 22—24. Retort
resistance is another desired property. Spec. p. 1,1. 29. In view of this,
Appellants disclose a coating having high flexibility, good retort resistance,
excellent adhesion before and after retorting processes, good organic solvent
resistance, and good visual blush appearance. Spec. p. 3,11. 13—16.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Supplemental
Appeal Brief with limitations at issue in the appeal italicized:
1. A curable coating composition comprising a poly epoxy
ester resin polymeric composition having the following chemical
structure:
where n is a number from 1 to about 3000; each m
independently has a value of 0 or 1; each R° is independently —H
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Application 13/816,772
or -CH3; each R1 is independently —H or a Ci to Ce alkylene
radical (saturated divalent aliphatic hydrocarbon radical); Ar is a
divalent aromatic fused —ring moiety selected from the group
consisting of a divalent naphthalene group, and a substituted
divalent naphthalene group, wherein the substitute groups are
selectedfrom the group consisting of an alkyl group, a cycloalkyl
group, an aryl group and an aralkyl group; and X is a
cycloalkylene group or a substituted cycloalkylene group,
wherein the substitute group is selected from the group
consisting of an alkyl group, a cycloalkyl group, an aryl group,
an aralkyl group, a halogen, a nitro, a blocked isocyanate, and an
alkyloxy group; the combination of cycloalkylene and alkylene
groups and the combination of alkylene and cycloalkylene
groups having a bridging moiety in between wherein the poly
epoxy ester resin polymeric composition comprises a reaction
product of (a) at least one cycloaliphatic diglycidyl ether
compound selected from the group consisting of a diglycidyl
ether of cis-1, 3-cyclohexanedimethanol, a diglycidyl ether of
trans-1, 3-cyclohexanedimethanol, a diglycidyl ether of cis-1,
4-cyclohexanedimethanol, a diglycidyl ether of trans-1,
4-cyclohexanedimethanol, a diglycidyl ether of 1,
1 '-cyclohexanedimethanol, and combinations thereof, and (b) at
least one aromatic fused-ring dicarboxylic acid.
Supp. Br. 3 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 1,2, and 9-24 under 35U.S.C. § 112, second paragraph,
as being indefinite;
(2) claims 1, 2, 9—15, and 18—24 under 35 U.S.C. § 103(a) as being
unpatentable over Marks3 in view of Evans;4 and
3 Marks et al., WO 2008/045884 Al, published Apr. 17, 2008 (“Marks”).
4 Evans et al., US 2007/0087146 Al, published Apr. 19, 2007 (“Evans”).
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Application 13/816,772
(3) claims 16 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Marks and Evans and further in view of Bariatinsky.5
OPINION
35 U.S.C. § 112, second paragraph, rejection
Claims 1, 2, and 9-24 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Specifically, the Examiner finds claim 1
recites “substituted groups” twice and two different Markush groups that
each refer to a substituted group. Ans. 2. The Examiner concludes it would
not be clear to one of ordinary skill in the art which of the substitute groups
each Markush group refers to. Id.
Appellants argue there is one Markush group for the “Ar” substituent
recited in claim 1 and another Markush group for the “X” substituent recited
in claim 1. Br. 4. Appellants’ arguments are persuasive. Claim 1 recites
that the poly epoxy ester resin of the curable coating composition has a
chemical structure including “Ar” as one substituent and “X” as another
substituent. Specifically, claim 1 recites:
Ar is a divalent aromatic fused —ring moiety selected from the
group consisting of a divalent naphthalene group, and a
substituted divalent naphthalene group, wherein the substitute
groups are selected from the group consisting of an alkyl group,
a cycloalkyl group, an aryl group and an aralkyl group; and X is
a cycloalkylene group or a substituted cycloalkylene group,
wherein the substitute group is selected from the group
consisting of an alkyl group, a cycloalkyl group, an aryl group,
an aralkyl group, a halogen, a nitro, a blocked isocyanate, and an
alkyloxy group
5 Bariatinsky et al., WO 2005/080517 Al, published Sept. 1, 2005
(“Bariatinsky”).
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Application 13/816,772
“A claim must be read in accordance with the precepts of English
grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). As shown
above, a semicolon separates the recitation of the substituent “Ar” and the
recitation of the substituent “X.” One of ordinary skill in the art would
understand that those recitations prior to the semicolon relate to the
substituent “Ar” and those occurring after the semicolon relate to the
substituent “X.” Therefore, the first Markush group (“the substitute groups
are selected from the group consisting of an alkyl group, a cycloalkyl group,
an aryl group and an aralkyl group”), which occurs prior to the semicolon,
relates to the substituent “Ar” and the second Markush group (“the substitute
group is selected from the group consisting of an alkyl group, a cycloalkyl
group, an aryl group, an aralkyl group, a halogen, a nitro, a blocked
isocyanate, and an alkyloxy group”), which occurs after the semicolon,
relates to the substituent “X.”
For these reasons, we do not sustain the § 112, second paragraph,
rejection of claims 1, 2, 9—15, and 18—24.
Rejection of claims 1, 2, 9—15, and 18—24 over Marks and Evans
Claims 1, 2, 9—15, and 18—24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marks in view of Evans. Appellants do not argue
claims 2, 9-15, and 18—24 separately from claim 1. Br. 4—7. Therefore, we
select claim 1 as representative to decide the issues on appeal.
The Examiner finds Marks discloses a coating including a poly epoxy
ester resin resulting from the reaction of an epoxy resin and a dicarboxylic
acid, with naphthalenedicarboxylic acid being a preferred carboxylic acid.
Ans. 2. The Examiner finds Marks does not disclose “a poly epoxy ester
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Application 13/816,772
resin wherein X is a cycloalkylene group or substituted cycloalkylene
group.” Ans. 3.
The Examiner finds Evans discloses a coating composition that is
substantially free of bisphenol A (BPA) or bisphenol A diglycidyl ether.
Ans. 3. Evans discloses the use of 1,4-cyclohexanedimethanol diglycidyl
ether as a BPA-free diepoxide. Ans. 3. The Examiner concludes it would
have been obvious to use the 1,4-cyclohexanedimethanol diglycidyl ether of
Evans as a reaction product for the formation of Marks’ poly epoxy resin
because Evans discloses BPA is perceived to be potentially harmful to
human health. Ans. 3. Thus, the poly epoxy resin of Marks, as modified by
Evans, would result from the reaction of at least one cycloaliphatic
diglycidyl ether compound (i.e., 1,4-cyclohexanedimethanol diglycidyl
ether) and at least one aromatic fused-ring dicarboxylic acid (i.e.,
naphthalenedicarboxylic acid). Ans. 4.
Appellants contend Marks discloses a process for preparing an epoxy
ester resin by reacting a low molecular weight epoxy resin and a
dicarboxylic acid but does not disclose the epoxy ester resin is a reaction
product of the two types of reactants recited in claim 1. Br. 5. Appellants
argue Evans discloses a coating composition made by reacting a diepoxide
with a dihydric phenol but does not disclose the epoxy ester resin is a
reaction product of the two types of reactants recited in claim 1. Br. 5—6.
These arguments are not persuasive of reversible error because the
arguments address the applied references individually and do not address the
Examiner’s rejection, which is over the combination of Marks and Evans.
As noted by Appellants, Marks discloses an epoxy ester resin made by
reacting a low molecular weight epoxy resin and a dicarboxylic acid. Marks
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Application 13/816,772
p. 3,11. 25—28. Marks discloses glycidyl polyethers of 2,2-bis(4-
hydroxyphenyl)propane (i.e., BP A) as preferred low molecular weight epoxy
resins and 2,6-napthalenedicarboxylic acid as an example of a carboxylic
acid. Marks p. 5,11. 29—32; p. 6,11. 7—18, 26—30. Therefore, the disclosure
of Marks supports the Examiner’s findings. We note Appellants’
Specification states napthalenedicarboxylic acid is an aromatic fused-ring
dicarboxylic acid. Spec. p. 4,11. 10-14.
Evans discloses a coating composition for surfaces of containers that
contact food. Evans 1 6. Evans discloses BPA is “perceived by some
people as being potentially harmful to human health.” Evans 14. In view of
this, Evans discloses composition embodiments substantially free of BPA
(2,2-bis(4-hydroxylphenyl)propane), such as embodiments using BPA-free
diepoxides (e.g., 1,4-cyclohexanedimethanol diglycidyl ether). Evans Ull,
42. Therefore, the disclosure of Evans supports the Examiner’s findings and
Appellants’ arguments do not direct us to a reversible error in the
Examiner’s rejection.
Appellants further assert Evans teaches away from the claimed
composition because Evans discloses a poly epoxy resin having a different
structure from that of claim 1. Br. 6. Appellants argue Marks teaches away
from the claimed composition because Marks uses BPA as a reactant. Br. 6.
“A reference does not teach away . . . if it. . . does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004))). Here, Appellants’ arguments direct us to possible differences
between claim 1 and the individual references applied in the rejection.
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Application 13/816,772
However, these arguments do not demonstrate that the applied references
“criticize, discredit, or otherwise discourage” one of ordinary skill in the art
from modifying Marks’s epoxy ester resin in view of Evans’ teaching of
using a BPA-ffee reactant, as set forth in the Examiner’s rejection of claim
1.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s rejection of claims 1, 2, 9-15, and 18—24
over the combination of Marks and Evans.
Rejection of claims 16 and 17 over Marks, Evans, and Bariatinsky
Claims 16 and 17, which depend from claim 1, are rejected under 35
U.S.C. § 103(a) as being unpatentable over Marks and Evans and further in
view of Bariatinsky.
For claims 16 and 17, Appellants contend Bariatinsky does not
disclose the reactants recited in claim 1 and that Bariatinsky teaches away
from the composition of claim 1 because Bariatinsky uses different reaction
products than those recited in claim 1. Br. 6—7. These arguments do not
direct us to a reversible error in the rejection of claim 1, which is rejected
over the combination of Marks and Evans. Moreover, the arguments do not
address the rejection of claims 16 and 17 over the combination Marks,
Evans, and Bariatinsky.
Therefore, we sustain the Examiner’s rejection of claims 16 and 17
over the combination of Marks, Evans, and Bariatinsky.
DECISION
On the record before us, we:
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Application 13/816,772
A. do not sustain the Examiner’s decision to reject claims 1, 2, and
9—24 under 35 U.S.C. § 112, second paragraph, as being indefinite;
B. sustain the Examiner’s decision to reject claims 1, 2, 9—15, and
18—24 under 35 U.S.C. § 103(a) as being unpatentable over Marks in view
of Evans; and
C. sustain the Examiner’s decision to reject claims 16 and 17
under 35 U.S.C. § 103(a) as being unpatentable over Marks and Evans and
further in view of Bariatinsky.
We affirm the decision of the Examiner to reject the claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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