Ex Parte Kloeckner et al

Board of Patent Appeals and Interferences

Jan 29, 2007

10634330 (B.P.A.I. Jan. 29, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARALD KLOECKNER, GUENTER BERSCHEL,
WOLFGANG STRICKER, ANDREW DUDA,
and UDO HELLMANN
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Appeal 2007-0416
Application 10/634,330
Technology Center 1700
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Decided: January 29, 2007
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Before KIMLIN, WARREN, and GAUDETTE, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 2-6 and 8-18.
Claim 2 is illustrative:
2. Method for painting plastic substrates, comprising the steps:
1. applying a base coat layer consisting of a colour-and/or effect-
imparting base coat directly to the plastic substrate,
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2. evaporating and/or curing the base coat layer thus obtained,
3. applying a clear coat layer consisting of a transparent clear coat to
the base coat layer obtained,
4. curing the clear coat layer obtained, optionally together with the
base coat, wherein the applied colour- and/or effect-imparting base
coat comprises
A) 30 to 90% by weight of a conventional base coat composition,
comprising
Aa) at least one binder selected from the group consisting of
polyurethane, acrylated polyurethane, polyacrylate, polyester,
acrylated polyester and alkyd resins and any combinations
thereof,
Ab) at least one colour and/or effect pigment,
Ac) at least one organic solvent and/or water and
Ad) optionally conventional paint additives and
B) 10 to 70% by weight of an adhesion-promoting composition B),
comprising
Ba) at least one ethylene vinyl acetate copolymer,
Bb) at least one chlorinated rubber,
Bc) at least one chlorinated polyolefin and
Bd) optionally organic solvents and/or water and conventional
paint additives,
wherein the sum of the portions of components A) and B) makes up 100%
by weight;
wherein in step (1) of applying the base coat layer consisting of a colour-
and/or effect-imparting coating composition consists of applying a colour-
and/or effect-imparting coating composition containing the adhesion-
promoting composition B) directly to the plastic substrate and subsequently
applying a layer of a colour-and/or effect-imparting coating composition
which does not contain the adhesion-promoting composition B).
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The Examiner relies upon the following references as evidence of
obviousness:
Heaps 4,517,327 May 14, 1985
Corcoran 5,279,862 Jan. 18, 1994
Hellmann 5,412,000 May 2, 1995
Ozawa 5,492,963 Feb. 20, 1996
Shiraishi 6,670,414 B2 Dec. 30, 2003
Appellants’ claimed invention is directed to a method for painting
plastic substrates comprising applying a base coat layer directly to the plastic
substrate, curing the base coat layer, applying a clear coat layer to the base
coat layer, and curing the clear coat layer. The base coat layer comprises
one of the recited binders, a colour-and/or effect pigment, a solvent, and an
adhesion-promoting composition comprising an ethylene vinyl acetate
copolymer, a chlorinated rubber, and a chlorinated polyolefin. The base coat
layer is applied in two stages: first, the base coat comprising the adhesion-
promoting composition is applied, followed by “a layer of a colour-and/or
effect-imparting coating composition which does not contain the adhesion-
promoting composition.”
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 2-8, 10-15, 17, and 18 over Hellmann in view of Ozawa
and Shiraishi;
(b) claims 3, 12-15, 17, and 18 over Shiraishi in view of Ozawa;
(c) claims 2, 4-8, 10, and 11 over Shiraishi in view of Ozawa and
Hellmann; and
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(d) claims 9 and 16 over the combination of Hellmann, Ozawa, and
Shiraishi further in view of Heaps and Corcoran.
Appellants do not present separate arguments for any of the claims in
the separately rejected groups of claims. Accordingly, the separately
rejected groups of claims stand or fall together.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer.
We consider first the rejection of claims 2-8, 10-15, 17, and 18 over
Hellmann in view of Ozawa and Shiraishi. Hellmann, like Appellants,
discloses a method of painting plastic substrates, such as automobile parts,
by applying to the substrate a first layer comprising a binder and the
presently claimed color or pigment, solvent, conventional paint additive,
ethylene vinyl acetate copolymer and a chlorinated polyolefin. Much is
made of the fact by Appellants that Hellmann refers to its initial layer as a
primer layer, and not as a base coat layer, and Appellants contend that there
is a basic difference in the art between a primer layer and a base coat layer.
However, having viewed the evidence presented by Appellants and the
Examiner on this point, we are persuaded that the terms are used
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interchangeably in the art. For instance, Shiraishi discloses that the same
composition can be used as a base paint or a primer resin (see col. 5,
ll. 53-54 and 64), and the Examiner properly points out that Scopazzi
teaches that the coating composition can contain a pigment and serve as a
base coat or a primer.
In any event, more significant than whether Hellmann’s coating is
labeled a primer or a base coat layer is the fact that Hellmann teaches
coating an initial layer on a plastic substrate, such as an automobile part, that
comprises a composition that contains all the recited components, with the
exception of the recited binder and chlorinated rubber. While Hellmann
discloses an epoxy binder, and Appellants amended the appealed claims to
exclude an epoxy binder, it can hardly be gainsaid that the recited binders
are conventional binders in base coat and primer layers. Indeed, claim 2
recites the base coat composition comprising the specified binders as
“conventional,” and Shiraishi evidences that the recited binders, such as
alkyd resin, acrylic resin, polyester resin, polyurethane resin, etc. are
equivalent to epoxy resin in a base paint or primer composition.
Accordingly, we are convinced that it would have been obvious for one of
ordinary skill in the art to include one of the conventional claimed binders in
the composition of Hellmann.
Also, while Hellmann discloses a chlorinated polyolefin, but not in
conjunction with a chlorinated rubber, the Examiner accurately sets forth
that chlorinated polyolefins are equivalent to or greater than traditional
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chlorinated rubber in providing excellent film-forming properties and
adhesional affinity for substrates (see Ozawa at col. 10, ll. 22-25).
Accordingly, we fully concur with the Examiner that one of ordinary skill in
the art would have found it obvious to incorporate the claimed chlorinated
rubber in combination with the chlorinated polyolefin of Hellmann with the
reasonable expectation of obtaining equivalent or superior film-forming
adhesive properties.
Appellants contend that the “[e]poxy resins [of Hellmann] cannot be
used as topcoats or base coats since these resins are readily degraded by UV
light [whereas] Applicants’ claims are directed to the use of only binder
components that are stable to UV light exposure and weathering” (principal
Br. 12, second para.). However, Appellants do not present objective
evidence to factually support this assertion, which seems to conflict with
Appellants’ specification disclosing the use of epoxy resins in the base coat
layer (see Specification 6, 12-13).
Appellants also maintain that “primers do not contain the pigments
that are required to provide the desired color to the painted plastic part”
(principal Br. 12, last para.). However, this seems to be in conflict with the
definition of “primer” set forth at page 10 of the principal Brief, namely, as
“First complete coat of paint of a painting system applied to a surface.” In
any event, for the reasons set forth above, we find no patentable distinction
between the so-called base coat layer of Appellants and the primer of
Hellmann.
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We will also sustain the Examiner’s § 103 rejection of claims 3,
12-15, 17, and 18 over Shiraishi in view of Ozawa. The composition of
Shiraishi can be used as a base paint on a plastic substrate and comprises the
presently claimed composition comprising a binder resin, ethylene vinyl
acetate copolymer, chlorinated polyolefin, pigments, solvents, and paint
auxiliaries. Although Shiraishi does not teach the inclusion of the claimed
chlorinated rubber, we agree with the Examiner that Ozawa evidences the
obviousness of adding a chlorinated rubber to the Shiraishi composition.
Since Shiraishi teaches that the composition can be used as a base paint, we
are convinced that it would have been obvious for one of ordinary skill in
the art to add an additional paint layer on the base paint of Shiraishi, as is
well-known in the art and evidenced by Hellmann. Appellants maintain that
Shiraishi does not show or suggest the claimed method wherein “the first
basecoat contains the adhesion promoting composition of ethylene vinyl
acetate copolymer, chlorinated rubber and chlorinated polyolefin and the
second layer is identical to the first layer but does not contain the adhesion
promoting composition” (principal Br. 14-15). However, Appellants’
argument is not commensurate in scope with the claim language on appeal.
The claims do not require that the second layer is identical to the first layer
with the exception of the adhesion promoting composition. For instance,
claim 2 simply recites “subsequently applying a layer of a colour-and/or
effect-imparting coating composition which does not contain the adhesion-
promoting composition B).” The claimed second layer may comprise any
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color coating composition, which may be different than the color
composition of the first layer, and, furthermore, the second layer may also
contain an adhesion-promoting composition different than the claimed B)
composition.
For the reasons set forth by the Examiner and those given above, we
will also sustain the Examiner’s § 103 rejection of claims 2, 4-8, 10, and 11
over Shiraishi in view of Ozawa and Hellmann, as well as the § 103
rejection of claims 9 and 16 over the additional teachings of Heaps and
Corcoran. We note that Appellants do not present a separate substantive
argument with respect to the rejection of claims 9 and 16.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the prima facie case of obviousness established by the
Examiner.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2004).
AFFIRMED

clj

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