Ex Parte List et al

Patent Trial and Appeal Board

Sep 20, 2016

13113127 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/113, 127
24959 7590
PPG Industries, Inc,
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
05/23/2011
09/23/2016
FIRST NAMED INVENTOR
Michael List
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.
11007797Al 9021
EXAMINER
BLACKWELL, GWENDOLYN
ART UNIT PAPER NUMBER
1782
MAILDATE DELIVERY MODE
09/23/2016 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 MICHAEL LIST, YOUSSEF MOUSSA, and CLAUDIA KNOTTS
Appeal2015-003769
Application 13/113,127
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and A VEL YN M. ROSS,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal 1 under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 2, 4-27, 29, and 30, which constitute
of all of the claims pending in this application. 2 We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify PPG Industries Ohio, Inc. as the real party in interest
(App. Br. 1 ).
2 Appellants inadvertently include cancelled claim 28 as being among the
rejected and appealed claims (App. Br. l; see Amendment filed 10/29/2012).
Appeal2015-003769
Application 13/113,127
CLAIMED SUBJECT MATTER
Appellants' claimed invention is directed to a coating composition
that is disclosed as being useful to coating containers, such as food and
beverage containers, and an article comprising the coating composition
deposited on a substrate (Spec. i-fi-12-6; 48-50).
Claim 1 is illustrative and reproduced below:
1. A coating composition comprising:
(a) a polyether polyol having a hydroxyl functionality of 3
to 8, comprising a reaction product of a reaction mixture
comprising a saccharide and an alkylene oxide, and
(b) a reaction product comprising:
(i) a phosphorus acid, and
(ii) a polyepoxide and/or a polyester polyol.
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Carson
Sundararaman et al.
(''Sundararaman")
us 4,739,020
us 6, 159 ,549
Apr. 19, 1988
Dec. 12, 2000
Jin et al. ("Jin") US 2005/0064216 A 1 Mar. 24, 2005
Pawlik et al. ("Pawlik") US 2004/0086718 Al May 6, 2004
Cinoman et al. ("Cinoman") US 2007 /0260003 Al Nov. 8, 2007
Dinsch et al. ("Dinsch") US 2009/0005533Al Jan. 1, 2009
REJECTIONS
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Application 13/113,127
The Examiner maintains the following grounds of rejection:
1. Claims 1, 2, 4---6, 7, 9, 10, 13, 15-18, 20-22, 27, 29, and 30 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Sundararaman
in view of Carson, Jin, and Dinsch.
2. Claims 8, 11, 12, 14, and 19 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sundararaman in view of Carson, Jin,
Dinsch, and Pawlik.
3. Claims 23-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sundararaman in view of Carson, Jin, Dinsch, and
Cinoman.
4. Claims 1, 2, 4--11, 13, 15-18, 20-22, and 27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Carson in view of
Sundararaman, Jin, and Dinsch.
5. Claims 8, 11, 12, 14, and 19 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Carson in view of Sundararaman, Jin,
Dinsch, and Pawlik.
6. Claims 23-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carson in view of Sundararaman, Jin, Dinsch, and
Cinoman.
ANALYSIS
After a review of the opposing positions articulated by Appellants and
the Examiner and the evidence of obviousness adduced by the Examiner, we
determine that the Appellants' arguments are insufficient to identify
reversible error in the Examiner's obviousness rejections. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011).
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Application 13/113,127
Accordingly, we affirm the stated obviousness rejections for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner's Answer and in the Final Office Action. We offer the
following for emphasis.
Concerning Rejection 1, Appellants argue the rejected claims together
as a group.3 Accordingly, we select claim 1 as the representative claim on
which we focus in considering Appellants' arguments and deciding this
appeal as to Rejection 1.
Representative claim 1 requires a coating composition that comprises,
two ingredients: (a) a polyether polyol having a specified hydroxyl
functionality that can be made as a reaction product of a mixture including
saccharide and an alkylene oxide and (b) a reaction product of phosphorous
acid and polyepoxide and/or a polyester polyol without limitation as to the
amounts of these two components, as well as any other component(s) that
may be present, in the coating composition.
Appellants do not dispute the Examiner's determination that
Sundararaman teaches or suggests a coating composition used in the coil
coating industry that includes, inter alia, a component corresponding to
3 Appellants note that claims 29 and 30 recite further components and
weight percent of components that are generally contended as further
differentiating the latter claims over the applied prior art; however,
Appellants do not present a separate substantive argument articulating
why/how the features of claims 29 and 30 are separately nonobvious over
the applied prior art (App. Br. 5). Consequently, claims 29 and 30 are
properly grouped with claim 1 and stand or fall therewith as the purported
separate arguments pertaining thereto are skeletal. In particular, skeletal
arguments such as presented in the Appeal Brief here are not arguments in
support of the separate patentability of these claims. See In re Lovin, 652
F.3d 1349, 1356-57 (Fed. Cir. 2011).
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Application 13/113,127
component b of representative claim 1 (App. Br. 3-5; Final Act. 2). Nor do
Appellants dispute the Examiner's findings with respect to the teachings of
Carson with respect to the use of polyether polyol as a component in a
coating composition that further includes a phosphatized component, which
coating composition is used in the coil industry (Final Act. 2-3; see
generally App. Br.). Also, Appellants do not dispute the Examiner's
findings with respect to the teachings of Jin as to polyether polyols having a
hydroxyl functionality of between 2 and 8 wherein the preferred polyether
polyols include polyoxyethylene glycols and polypropylene glycols (Final.
Act. 3; Jin i-f 23; see generally App. Br.). Furthermore, Appellants do not
dispute the Examiner's finding that Dinsch teaches forming polyether
polyols by reaction between sucrose and polypropylene or polyethylene
oxide (Final. Act. 4; Dinsch i-fi-116, 20, and 25; see generally App. Br.).
Appellants focus their argument on the polyol component of the
representative claim 1 composition. Appellants argue that "[t]here is no
teaching or suggestion whatsoever, however, in the Sundararaman patent
that inclusion of a polyether polyol, or any other component would be
desirable" (App. Br. 3; Reply Br. 1). The Examiner, however, relies on
Carson for teachings and suggestions for the inclusion of a polyether polyol
component corresponding to the polyol component of the coating
composition of representative claim 1 in Sundararaman's coating
composition (Ans. 2--4, 12). 4
Appellants further contend that the Examiner's expressed rationale
lacks merit because Sundararaman's coating composition has suitable
4 Also, the Examiner relies on Jin and Dinsch for certain aspects of the
polyol (Final Act. 3--4).
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Application 13/113,127
flexibility, and its multi-layer coated substrate is characterized by excellent
fabricability, adhesiveness, abrasion and mar resistance, and resistance to
weathering as well as industrial pollutants (App. Br. 4; Reply Br. 1;
Sundararaman, col. 5, 1. 66 - col 6, 1. 57). Thus, it is Appellants' view that
there would be no incentive to add additional components to the coating of
Sundararaman (App. Br. 4).
Appellants' argument lacks persuasive merit because Sundararaman
teaches that many of the attributes mentioned by Appellants are obtained by
adding other components, such as an additional coating that can include
fluorocarbon polymer for attaining weatherability properties, etc.
(Sundararaman, col. 6, 11. 16-57). In this regard, one of ordinary skill in the
art would have been led to employ polyether polyol as an alternative and/or
additional coating component as another way of achieving good product
characteristics for Sundararaman's coating in light of the additional
teachings of Carson.
Additionally, Appellants argue that Dinsch represents non-analogous
art because Dinsch is directed to producing alcohols for another purpose,
such as polyurethane foam preparation (App. Br. 4). Moreover, Appellants
contend that Dinsch is not relevant or pertinent to the formation of a
polyether polyol for a coating (App. Br. 4--5).
Appellants' non-analogous art argument is not persuasive to establish
substantive error in the Examiner's rationale. In this regard, we concur with
the Examiner that Carson furnishes the rationale for using polyether polyol
in the coating of Sundararaman and Appellants argument fails to articulate
why Dinsch lacks pertinence as to teaching a general method for forming
such a polyether polyol, which prepared polyol can be subsequently
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Application 13/113,127
employed as a coating component as taught by Carson (Ans. 2--4 and 12-
13). In other words, Carson indicates that Dinsch's method of forming a
polyether polyol is reasonably pertinent to the problem with which the
inventor was concerned, i.e., the inventor interested in employing a
polyether polyol in a coating composition, from the perspective of one of
ordinary skill in the art. In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir.
2006)("The analogous-art test requires ... that a reference .. .is reasonably
pertinent to the problem with which the inventor was concerned in order to
rely on that reference as a basis for rejection. References are selected as
being reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art.")
Thus, Appellants' arguments fall short of demonstrating harmful error
in the Examiner's obviousness determination as to Rejection 1.
Appellants rely on the arguments made against Rejection 1 for the
Examiner's separate rejections (Rejection 2 and 3) as to certain dependent
claims and the separate rejections applying the same prior art against the
appealed claims albeit in a different order (Rejections 4--6) (App. Br. 5---6).
It follows that the latter arguments fail to expose reversible error in these
separate rejections.
Accordingly, we affirm the Examiner's stated obviousness rejections
for substantially the reasons set forth above and by the Examiner in the Final
Rejection and in the Answer.
CONCLUSION
The Examiner's decision to reject the appealed claims is affirmed.
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Application 13/113,127
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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