Ex Parte Lach et al

Board of Patent Appeals and Interferences

Jun 23, 2004

09972253 (B.P.A.I. Jun. 23, 2004)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CHRISTIAN LACH and ROLAND BAUMSTARK

Appeal No. 2004-1348
Application No. 09/972,253

ON BRIEF

Before KIMLIN, GARRIS and JEFFREY T. SMITH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-11.
Claim 1 is illustrative:
1. A water-based, pigmented coating composition essentially
free from volatile organic compounds and comprising
i) an aqueous binder formulation as component I, with a
minimum film formation temperature MFFT
5°C, based
on an aqueous polymer dispersion of one or more
polymers P composed of
from 90 to 99.9% by weight of at least two different monomer
varieties A1 and A2, the monomer A1 being selected from
the C2-C12 alkyl esters of acrylic acid and the monomer
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Application No. 09/972,253
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A2 being selected from the C1-C12 alkyl esters of
methacrylic acid;
from 0 to < l% by weight of monomers B, selected from mono-
ethylenically unsaturated monocarboxylic acids having 3
to 6 carbon atoms;
from 0 to 0.5% by weight of monomers C, selected from mono-
ethylenically unsaturated dicarboxylic acids having 4
to 6 carbon atoms and ethylenically unsaturated
sulfonic acids;
from 0 to 2% by weight of monomers D, selected from the
amides of monoethylenically unsaturated monocarboxylic
acids having 3 to 6 carbon atoms;
from 0 to 5% by weight of monomers E, selected from the C2-
C4 hydroxyalkyl esters of monoethylenically unsaturated
monocarboxylic acids having 3 to 6 carbon atoms
(monomers E1) and the esters of monoethylenically
unsaturated monocarboxylic acids having 3 to 6 carbon
atoms with poly(C2-C3 alkylene oxides) (monomers E2),
and
from 0 to 5% by weight of monomers F, selected from
monoethylenically unsaturated monomers having a urea
group and monoethylenically unsaturated monomers having
an acetylacetoxy group (CH3C(O)CH2C(O)-O-group),
all proportions of the monomers being based on the overall
amount of the monomers A to F;
the overall amount of the monomers B and C being less than
1% by weight; and
the sum of the amount of the monomers B, C, D, E and F being
from 0.1 to 10% by weight
ii) at least one inorganic particulate pigment as component
II,
iii) if desired, inorganic particulate fillers as component
III, and
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Application No. 09/972,253
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iv) the auxiliaries typical of coating compositions,
the coating composition containing less than 0.05% by
weight, based on the polymer P, of photoinitiators and being
characterized by a pigment volume concentration (PVC) of
more than 20% by volume.
In the rejection of the appealed claims, the examiner relies
upon the following reference:
Zhao et al. (Zhao) 6,376,570 B1 Apr. 23, 2002
Appellants' claimed invention is directed to a water-based,
pigmented coating composition comprising, inter alia, less than
0.05% by weight of photoinitiators.
Appealed claims 1-11 stand rejected under 35 U.S.C. § 102(e)
as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Zhao.
Appellants submit at page 3 of the principal brief that "the
rejected claims stand or fall together." Accordingly, all the
appealed claims stand or fall together with claim 1.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that the examiner's rejection is well-founded to the extent that
it is based upon 35 U.S.C. § 102(e). Accordingly, we will
sustain the examiner's § 102 rejection but reverse the examiner's
rejection under 35 U.S.C. § 103.
Appeal No. 2004-1348
Application No. 09/972,253
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The sole issue on appeal regarding the § 102 rejection is
whether or not Zhao describes the claimed amount of photo-
initiator in the disclosed water-based, pigmented coating
composition that is essentially free from volatile organic
compounds, i.e., an amount "less than 0.05% by weight." Although
Zhao discloses that the object of the invention is achieved by
including less than 0.3% by weight of photoinitiator (column 2,
fourth paragraph), appellants contend that when the reference is
read as a whole it does not describe an amount less than 0.05%,
as claimed. Appellants emphasize Zhao's disclosed range of 0.05
to < 3% by weight (column 2, line 54). According to appellants,
since the claimed amount of photoinitiator cannot be considered
to touch or overlap with Zhao's disclosed range, "the subject
matter of appellants' Claim 1 cannot be regarded as being
anticipated by the teaching of Zhao et al." (page 6 of Brief,
first paragraph).
Manifestly, appellants are on sound footing in stating that
Zhao must be considered in its entirety in determining whether a
description of the claimed invention is found therein. It is our
view, however, that when the entirety of Zhao is taken into
consideration, a description of the claimed amount of
photoinitiator is present in the reference. As appreciated by
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Application No. 09/972,253
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appellants, Zhao discloses that "[t]he amount of photoinitiator
used is preferably more than 0.05% by weight" (column 4, lines
48-49), and it is our opinion that this disclosure fairly
describes non-preferred embodiments wherein the amount of
photoinitiator is less than 0.05% by weight. Our view is further
buttressed by the reference disclosure at column 9, lines 11
et seq., wherein the amount of photoinitiator is described as
"approximately" from 0.05 to less than 0.3% by weight. As a
result, we find, as a matter of fact, that Zhao describes a
photoinitiator content of approximately 0.05% by weight, which
includes slightly less than 0.05%. Since slightly less than
0.05% by weight falls within the claimed range, Zhao describes
the claimed amount of photoinitiator within the meaning of § 102.
As for the examiner's § 103 rejection, for the reasons set
forth in appellants' Supplemental Reply Brief of December 19, 2003,
the examiner's rejection is not appropriate. Appellants have
stated on the record that the present application and the Zhao
patent were, at the time the present invention was disclosed and
claimed in the instant application, made, owned by, or subject to
an obligation of assignment to BASF AKTIENGESELLSCHAFT. Appellants
have properly referenced the pertinent sections of the MPEP in
support of their position.
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Application No. 09/972,253
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In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
ECK:clm
Appeal No. 2004-1348
Application No. 09/972,253
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