Ex Parte Kaleem et al

Patent Trial and Appeal Board

Aug 28, 2018

14114580 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/114,580
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
02/04/2014
08/28/2018
FIRST NAMED INVENTOR
Kareem Kaleem
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.
10007342USA1 4539
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
08/28/2018 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 KAREEM KALEEM
and YOUSSEF MOUSSA
Appeal2017-010821
Application 14/114,580 1
Technology Center 1700
Before: MICHAEL P. COLAIANNI, RAEL YNN P. GUEST,
and GEORGE C. BEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 22 and 26-29 under 35 U.S.C. § 103(a) as
unpatentable over Akatsuka2 in view of Martin3 and to reject claims 23-25
1 Appellants identify the real party in interest as PPG Industries Ohio, Inc.
Appellants' Appeal Brief 1, filed May 9, 2017 ("Br.").
2 JP2001-114862, published April 24, 2001, naming Akatsuka Yasumasa et
al. as inventors. An English language computer translation was made of
record by the Examiner, on August 12, 2016, and is cited to herein as
"Akatsuka."
3 U.S. Patent 4,164,487, issued August 14, 1979 to Patrick H. Martin
("Martin").
Appeal2017-010821
Application 14/114,580
under 35 U.S.C. § 103(a) as unpatentable over Akatsuka and Martin and
further in view of Kanai. 4 See generally Examiner's Final Office Action 4,
5, dated December 21, 2016 ("Final Act."); Examiner's Answer 3, 4, dated
June 21, 2017 ("Ans."). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention relates to food or beverage containers, which
are coated with a composition comprising a polyglycidyl ether of a 2,2'-
biphenol. Specification ("Spec.") ,r,r 2--4.
Sole independent claim 22 is exemplary of the subject matter on
appeal and is reproduced below:
22. A food or beverage container containing a coating
contacting the food or beverage in which the coating is the
cured reaction product of a chain-extended polyglycidyl ether
of 2,2'-biphenol, wherein the coating is substantially free of
bisphenol A and/or derivatives and/or residues thereof and
bisphenol F and/or derivatives and/or residues thereof.
Br. 7, Claim App 'x.
With respect to the first rejection, Appellants present arguments with
respect to all the rejected claims as a group (Br. 4--5), for which we select
independent claim 22 as representative. Appellants do not advance any
additional arguments for the second rejection. Instead, they assert claims
23-25 are patentable for the same reasons as independent claim 22 and
claims 26-29 dependent thereon. Br. 6. Thus, the issues presented for both
rejections are the same.
4 U.S. Patent 4,826,895, issued May 2, 1989 to Hiroshi Kanai et al.
("Kanai").
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Application 14/114,580
II. Akatsuka/Martin
The Examiner finds that Akatsuka suggests a heat resistant coating (in
the form of a laminate material, paint, or adhesive) comprising an epoxy
resin obtained by diglycidyl etherifying 2,2'-biphenol, wherein the
composition is free ofbisphenol A and bisphenol F. Final Act. 4; Ans. 3.
The Examiner finds that Akatsuka does not teach that the diglycidyl ether of
a 2,2'-biphenol is phosphate (as recited in dependent claim 27) or that the
coating is on a food or beverage container ( claim 1 ), such as a metal can ( as
recited in claims 28-29). Final Act. 4; Ans. 4. The Examiner finds that
Martin teaches that, when coating materials comprising polyether epoxide
resins are phosphated, the coating is particularly suited as a lining for
metallic food and beverage cans. Final Act. 4; Ans. 4. The Examiner
concludes that it would have been obvious to one having ordinary skill in the
art to have phosphated Akatsuka's composition, as called for in Martin,
because providing food and beverage cans with coatings having good heat
resistance would have been useful in such cans, which undergo a heat
sterilization process. Final Act. 5; Ans. 4.
Appellants argue, inter alia, that Martin teaches a large variety of
alternative bisphenols as potential replacements for bisphenol A and
bisphenol F and, thus, it would not have been obvious to select Akatsuka's
epoxy resin comprising the diglycidyl ether of a 2,2'-biphenol as such a
replacement. Br. 4. Appellants further argue that the heat resistance
properties of Akatsuka's epoxy resin for molding, cast, laminating, resists,
and optical materials would not have suggested using the resin for a food or
beverage container's interior coating as taught by Martin. Id. at 4--5.
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Appeal2017-010821
Application 14/114,580
In light of the Appellants' arguments and upon further review of the
record, Martin does not support the Examiner's finding that it would have
been obvious to use a diglycidyl ether of a 2,2'-biphenol as a lining for
metallic food and beverage cans. Martin teaches generally forming
polyether epoxides (E 1 epoxides) by reacting diglycidyl ether and bisphenols
and teaches "numerous "[ e ]xemplary bisphenols" (see Martin 11 :42) from
which a phosphated polyether epoxide resins may be prepared, Martin
exemplifies only one biphenol resin, namely a 4,4'-biphenol. Martin 11 :50-
54.
The Examiner has not identified any disclosure in Martin that teaches
or suggests that Akatsuka's diglycidyl ether of a 2,2'-biphenol would be
suitable for use in a food and beverage container. See generally id. at
11:42-13:60. Thus, any value ofphosphated polyether epoxide resins as
linings for food and beverage cans, as generally taught by Martin, cannot be
reasonably applied to Akatsuka's specific composition. Further, Martin
provides no discussion that the resins taught therein have similar heat
retention properties as the resin of Akatsuka's or that this property taught by
Akatsuka alone is a sufficient reason for the skilled artisan to have
considered using the resin in a food or beverage container. Thus, the
Examiner has not provided a sufficient reason supported by the evidence of
record as to why the skilled artisan would have used an epoxide resin
derived from Akatsuka's diglycidyl ether of a 2,2'-biphenol as a lining for
the food and beverage cans taught by Martin.
In view of the foregoing, we reverse the Examiner's rejection of
claims 22 and 26-29 under 35 U.S.C. § 103.
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Application 14/114,580
III. Akatsuka/Martin/Kanai
Although rejected and argued separately, Appellants have presented
no additional issues for our review over that which we have determined
above. See Br. 6. Because the separately rejected claim also depend on the
Examiner's combination of Akatsuka and Martin, we reverse the Examiner's
rejection of claims 23-25 under 35 U.S.C. § 103, for the foregoing reasons.
IV CONCLUSION
On the record before us and for the reasons discussed above, we do
not sustain the rejections maintained by the Examiner.
V. DECISION
We reverse the following Examiner's rejections:
claims 22 and 26-29 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Akatsuka in view of Martin and
claims 23-25 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Akatsuka and Martin and further in view of Kanai.
REVERSED
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