Ex Parte Koike et al

Board of Patent Appeals and Interferences

Mar 11, 2009

11144011 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUYUKI KOIKE and SHOJIRO KUWAHARA
____________

Appeal 2009-0391
Application 11/144,011
Technology Center 1700
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Decided:1 March 11, 2009
____________

Before CHUNG K. PAK, PETER F. KRATZ, and LINDA M. GAUDETTE,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 16-21. We have jurisdiction pursuant to
35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0391
Application 11/144,011

STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a method of producing a
powdery coating material wherein a curing agent and a specified alcohol
solvent are added to a particularized curable acrylic resin at a kneading step,
wherein the kneading step and an alcohol solvent vapor removal step are
conducted such that an average contact time between the curable acrylic
resin and the added alcohol solvent is five minutes or less. The curable
acrylic resin is required to have a number average molecular weight and a
glass transition temperature within specified ranges. Also, the curable
acrylic resin is limited by the recitation of monomers used in preparing
same. Claim 16 is illustrative and reproduced below:
16. A method of producing a powdery coating material by using: a
curable acrylic resin (A) having a number average molecular
weight of from 2,000 to 20,000 and a glass transition temperature of from 30
to 90°C obtained by polymerizing a starting monomer containing from 15 to
50 mol% of an unsaturated compound which contains at least a glycidyl
group and/or a methylglycidyl group, and from 20 to 50 mol% of methyl
methacrylate in a polymerization solvent selected from the group consisting
of toluene, xylene and an alcohol solvent having a boiling point under
normal pressure of from 70 to 120°C such that when the toluene of the
xylene is used as the polymerization solvent, said solvent is vapor-removed
prior to being kneaded with the curable acrylic resin (A), a curing agent (B)
and the alcohol solvent (D);
the curing agent (B) capable of being reacted with the glycidyl group
or the methylglycidyl group consisting [of] the curable acrylic resin (A); and
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Application 11/144,011
the alcohol solvent (D) having a boiling point under normal pressure
of from 64 to 120°
wherein, the alcohol solvent (D) is used in an amount of from 25 to
200 parts by weight per 100 parts by weight of the curing agent (B);
said method comprising:
(I) the curable acrylic resin (A) and curing agent (B) are continuously
fed to a kneading step while side-feeding the solvent (D) to said kneading
step to continuously knead them together so that at least the effect of
homogeneous kneading enhances at 50 to 130°C, or (II) the curable acrylic
resin (A) is continuously fed to the kneading step while side-feeding, to said
kneading step, a curing agent solution obtained by dissolving the curing
agent (B) in the alcohol solvent (D) to continuously knead them together so
that at least the effect of homogeneous kneading enhances at 50 to 130°C;
the alcohol solvent (D) is continuously vapor-removed under a
reduced pressure at 50 to 130°C in a vapor-removing step; and said kneading
and said vapor-removing of the alcohol solvent (D) are executed at
such rates that an average contact time between the curable acrylic resin (A)
and the alcohol solvent (D) is not longer than 5 minutes,
wherein the powdery coating material is obtained by pulverizing a
mixture of the curing agent (B) and the curable acrylic resin (A) obtained by
removing the alcohol solvent (D) therefrom.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Iwasawa 4,011,381 Mar. 8, 1977

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Application 11/144,011
The Examiner maintains the following rejection:
Claims 16-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iwasawa.
Given that all of the commonly rejected appealed claims are argued
together and include the limitations of claim 16, the sole independent claim
on appeal, we shall focus on claim 16 as a representative claim in deciding
this appeal. A dispositive issue that is raised by the arguments set forth in
the Appeal Brief and the contrary position espoused by the Examiner in the
Answer is set forth below.

ISSUE
Have Appellants established reversible error in the stated rejection by
asserting that the Examiner has failed to meet the burden to establish that the
claimed process would have been prima facie obviousness, to one of
ordinary skill in the art at the time of the invention, based on the Examiner’s
proposed change in order of the steps employed in Iwasawa’s process?

SUMMARY DISPOSITION
We answer the above-identified question in the positive and we
reverse the Examiner’s obviousness rejection.

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
establishing the non-patentability of the claimed subject matter. In re
Oetiker, 977 F.2d 1443, 1445, (Fed. Cir. 1992). In order to establish a prima
facie case of obviousness, the Examiner must show that the claimed subject
matter, including each and every limitation, is taught or suggested by the
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applied prior art, or would have been otherwise obvious therefrom based on
the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988)).
As stated in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007),
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness’.” Id. at
1741, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

FINDINGS OF FACT
Iwasawa discloses, inter alia, Example 1, wherein a solid mass of a
curable resin (mixture of specified copolymer and particular pigment after
toluene solvent separation) is kneaded with a cross-linking agent (azelaic
acid) in a heated kneader operation, cooled, and then pulverized to obtain a
powder coating material (col. 8, ll. 13-45). The Abstract of the Iwasawa
Patent and the remaining Examples are in general accord with the method
steps of Example 1 of Iwasawa in providing for mixing or kneading of a
solid mixture of cross-linking agent with a previously made mixture of
copolymer and pigment.
In this regard, the Examiner has found that:
Iwasawa et al. (abstract; col. 5, line 32-50) disclose a
process for preparing a thermosetting powder coating
composition a curable acrylic resin comprising 15% of glycidyl
methacrylate, 45% of methyl methacrylate. Further the said
curable resin is prepared in the presence of toluene under reflux
at 109 to 112 °C (boiling point). The number average molecular
weight of the resin is 8,000. However, the process of Iwasawa
et al. (col. 8, line 13-45) clearly involve removing the toluene
solvent from the polymer first and then kneading the copolymer
having 0.3% of volatiles with a crosslinking agent (azelaic
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acid). Further, Iwasawa et al. (col. 8, line 67 to col. 10, line 2)
also indicate that the kneaded materials are pulverized into fine
powder to obtain a powder coating composition.
Ans. 5.

The Examiner states “[t]he difference between Iwasawa et al. and
claims 16-21 is that Iwasawa et al. involve the removal of the solvent prior
to the addition of curing agent while the invention of claims 16-21 involves
removing the solvent after the addition of a curing agent” (Id.).
The Examiner further states that:
Because the process of Iwasawa et al. and the process as
claimed involve the preparation of substantially identical
powder coating compositions, the examiner has a reasonable
basis to believe that the claimed difference in step
rearrangement is considered obvious in view of that it would
have been obvious to one of ordinary skill in art to apply
"routine optimization experimentation" to rearrange the
processing steps of Iwasawa et al. to obtain the invention as
claimed, motivated by some expectation of success of obtaining
a powder coating composition.

ANALYSIS
Here, the Examiner predicates the asserted obviousness rationale for
the claimed subject matter on the notion that a mere change in the order of
steps from those taught by Iwasawa would have been obvious since the
claimed and Iwasawa final coating compositions are substantially identical.
However, the Examiner has not explained how and why one of ordinary skill
in the art would have reasonably expected that a reordering of the steps
taught by Iwasawa would somehow result in producing Iwasawa’s coating
composition. Nor has the Examiner explained how a reordering of the steps
taught by Iwasawa would result in the claimed step of feeding alcohol
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solvent and curable acrylic resin separately to a kneading step (the alcohol
solvent is side fed alone or together with the added curing agent) while
conducting the kneading step and a vapor removal of the so introduced
alcohol solvent in a manner corresponding to Appellants’ claim 16
requirements based on the teachings of Iwasawa.
As correctly noted by Appellants, for example, the Examiner has not
marshaled evidence which establishes that introducing an added alcohol
solvent to a kneading (mixing) step, as required by the appealed claims,
would result by a mere reordering of the process steps taught by Iwasawa
(App. Br. 22-29). This is especially so given that Iwasawa teaches that the
kneading step takes place as a solids mixing step (col. 4, ll. 39-44) and the
Examiner has not furnished a persuasive rationale as to why one of ordinary
skill in the art would be led to introduce alcohol solvent to the kneader of
Iwasawa, much less in a manner that requires separate introduction of the
alcohol solvent and the curable resin feed with the contact time proviso, as
herein claimed.
Rather, the Examiner provides mere conclusory statements without
the required articulated reasoning and rational underpinning, such as a
detailed explanation of relevant supporting evidence. Hence, the Examiner’s
argument is not effective for establishing a prima facie case of obviousness
of the Appellants’ claimed invention. Thus, the Examiner has not furnished
a sustainable basis or rationale for the stated obviousness rejection.

CONCLUSION
Appellants have established reversible error in the stated rejection by
establishing that the Examiner has failed to show that a process
corresponding to the claimed process would have been prima facie obvious
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to one of ordinary skill in the art at the time of the invention based on the
Examiner’s conclusively proposed change in order of steps modification of
Iwasawa’s process.
ORDER
The decision of the Examiner to reject claims 16-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Iwasawa is reversed.

REVERSED

tc

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