Ex Parte LI et alDownload PDFPatent Trial and Appeal BoardNov 30, 201714184692 (P.T.A.B. Nov. 30, 2017) Copy Citation 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. 14/184,692 02/19/2014 Ronald Li 74143/P833 3561 23363 7590 12/04/2017 T ewis; Rnra Rnthcrerher Phrisitie T T P EXAMINER PO BOX 29001 Glendale, CA 91209-9001 TRAN, THAO T ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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): pto@lrrc.com pair_cph @ firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RONALD LI and ALEXANDER BIMANAND Appeal 2017-001641 Application 14/184,692 1 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and JANE E. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1—18 and 21—23. We have jurisdiction under 35 U.S.C. § 6. We reverse. Appellants’ invention relates generally to an abrasion resistant polyurethane coating composition that provides a Bayer abrasion resistance value of less than 1 % Haze after 600 cycles when coated to form a film with a thickness of 1 to 3 mils. (Spec. 13). The independent claims 1,18 and 22 1 According to Appellants, the real party in interest is PPG Industries Ohio, Inc. See App. Br. 1. Appeal 2017-001641 Application 14/184,692 are representative of the appealed subject matter. Representative claim 1 is reproduced below: 1. A coating composition comprising: a polyester diol; a di-isocyanate; and a fluorocarbon-based additive, wherein a 25 micron to 75 micron thick coating layer resulting from curing the coating composition has a Bayer abrasion resistance value of less than 1% Haze after 600 cycles. Claims Appendix to App. Br. Appellants (see App. Br., generally) request review of the following rejections: I. Claims 1—14 and 16 rejected under 35 U.S.C. § 102(b) as anticipated by Moncur et al. (US 6,001,923 issued Dec. 14, 1999). (Final Act. 6 - 7). II. Claims 15, 17—18, and 21—23 rejected 35 U.S.C. § 103(a) as unpatentable over Moncur. (Final Act. 7 — 8) The complete statement of the rejections on appeal appear in the Final Office Action. (Final Act. 6—8.) OPINION2 After consideration of the evidence in this appeal record in light of the respective positions advanced by the Examiner and Appellants, we 2 Our discussion applies to independent claims 1,18 and 22. 2 Appeal 2017-001641 Application 14/184,692 determine that Appellants have identified reversible error in the Examiner’s determination that the subject matter recited in claims 1—14 and 16 is anticipated by Moncur within the meaning of 35 U.S.C. § 102(b), and the subject matter recited in claims 15, 17—18, and 21—23 would have been obvious over Moncur to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse Rejection I and II. The Examiner found Moncur teaches a coating composition comprising a aliphatic poly-isocyanate, a non-fluorinated polyol and an aliphatic fluorinated hydroxyl-functional compound. (Final Act. 6). The Examiner recognized Moncur fails to disclose the value for Bayer abrasion resistance after 600 cycles as claimed, but contends that “since the coating composition of Moncur is the same as presently claimed, it would also have the same haze value under the same condition.” (Final Act. 6). Appellants argue the haze values reported in Moncur’s Tables I and II appear to be initial haze values and not the Bayer abrasion resistance value after 600 cycles. (App. Br. 4). Appellants also argue the compositions which include a polyurethane component and a fluorinated component listed in Table I have widely varying haze values and therefore do not support the Examiner’s inherency rationale. (App. Br. 6—7). Appellants further argue although the rejections over Bimanand3 has been withdrawn, this reference provides evidence that exposure to 600 cycles of the Bayer abrasion testing 3 US 2014/0093738 A1 published Apr. 3, 2014. 3 Appeal 2017-001641 Application 14/184,692 protocol would result in a significant increase in the haze value. (App. Br. 5). In response to Appellants’ arguments and evidence, the Examiner asserts that Moncur’s tables were not relied upon to meet the claimed invention. However, the Examiner states “since the coating composition of Moncur is the same as presently claimed, it would also have the same haze value under the same condition.” (Ans. 6). The Examiner further responds that Bimanand is not representative of the compositions in Moncur and “does not provide any evidence that the Bayer abrasion resistance value after 600 cycles of Moncur will not meet that claimed.” (Ans. 6). We agree with Appellants that the Examiner’s rejections of the independent claims 1,18 and 26 are not well-founded. An inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The Examiner has not pointed to a specific composition in Moncur that meets the requirements of the claimed invention. Rather, the Examiner relies upon Moncur’s generic teaching of a composition comprising (A) an aliphatic polyisocyanate; (B) a non-fluorinated polyol; and (C) an aliphatic fluorinated OH-fimctional compound that is a fluorinated alcohol, a fluorinated polyol, and mixtures thereof. (Final Act. 6; Ans. 7; citing Moncur col. 1,11. 10—17). The Examiner has not identified a teaching in Moncur that describes the Bayer abrasion resistance value after 600 cycles. The Examiner has not addressed the reason why Bimanand was cited by Appellants — to establish that exposure to 600 cycles of the Bayer abrasion testing protocol would result in a significant increase in the haze value. 4 Appeal 2017-001641 Application 14/184,692 Thus, the Examiner has not established that the disclosure of Moncur is sufficient to support anticipation of independent claims 1 and 22 or support a determination of obviousness of independent claim 18. Therefore, we reverse the appealed rejections. Accordingly, we reverse the Examiner’s decision to reject claims 1— 18 and 21—23 for the reasons presented by Appellants and given above. ORDER The anticipation rejection of claims 1—14 and 16 and obviousness rejection of claims 15, 17—18, and 21—23 are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation