Ex Parte Lockhart et al

Patent Trial and Appeal Board

Dec 6, 2016

12920840 (P.T.A.B. Dec. 6, 2016)

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.
12/920,840 11/03/2010 Aaron A. Lockhart PO9097US/MD07-55-US 8671
157 7590
Covestro LLC
1 Covestro Circle
PITTSBURGH, PA 15205
12/08/2016 EXAMINER
MEEKS, TIMOTHY HOWARD
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
veronica.thompson@covestro.com
US-IPR@covestro.com
laura.finnell @ covestro. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON A. LOCKHART, ROBERT A. WADE,
MICHAEL J. DVORCHAK, and CLIFFORD M. BRIDGES
Appeal 2015-004298
Application 12/920,840
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a process for coating a wood substrate. Claim 1
is illustrative:
1. A process for coating a wood substrate, comprising applying an
aqueous coating composition to the substrate, wherein the substrate
comprises a previously-installed floor, and subjecting the coated floor
to radiation having a wavelength of only 320 nm to 450 nm for a time
sufficient to cure the composition, wherein the aqueous coating
composition comprises:
Appeal 2015-004298
Application! 2/920,840
A) a polyurethane dispersion, the polyurethane being a reaction
product of components comprising:
a) from about 25 to about 89.8% by weight of one or more
acrylate polymers containing hydroxyl groups and having
an OH number of from about 40 to about 240,
b) from 0.1 to about 20% by weight of one or more
compounds containing i) one and/or two functional
groups reactive towards isocyanate groups and ii) groups
which are cationic and/or anionic and/or have a
dispersant action due to ether groups content,
c) from about 10 to about 50% by weight of one or more di-
and/or polyisocyanates,
d) from 0 to about 30% by weight of a di-and/or polyol
having a number average molecular weight of up to about
5000, an OH functionality of from 1.2 to 2.2, containing
no groups which are cationic or anionic, containing an
insufficient amount of ether groups to have a dispersant
action, and containing no ethylenically unsaturated
groups and
e) from about 0.1 to about 10% by weight of one or more
di- and/or polyamines having a number average
molecular weight of from about 31 to about 1000,
wherein the percents by weight are based on the total amount of
components a) through e) and total 100%,
B) from about 0.1 to about 10% by weight of one or more photo
initiators, wherein the % by weight of component B) is based on the
weight of component A), and
C) from about 20 to about 60% by weight of water or a mixture of
water and solvent, wherein the % by weight of component C) is based
on the solids content of component A).
The References
Gaven US 6,207,118 B1 Mar. 27, 2001
Weikard US 6,521,702 B1 Feb. 18,2003
Dvorchak US 2005/0238815 A1 Oct. 27, 2005
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Application! 2/920,840
Beck1 DE 33 04 098 A1 Aug. 25, 1988
Mischke (abstract) DE 40 40 290 A1 July 2, 1992
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, and 4—8 over Gaven in view of Dvorchak, claims 1, 2, 4—6, and 9—11 over
Weikard in view of Dvorchak, claims 1, 2, and 4—13 over Gaven in view of
Weikard and Dvorchak, claim 3 over Gaven in view of Dvorchak, and Beck
and over Weikard in view of Dvorchak and Mischke, and claims 7, 8, 12,
and 13 over Weikard in view of Dvorchak, and Gaven.
OPINION
The Appellants argue the claims in the following groups: 1) claims 1—
8, 12, and 13, and 2) claims 9—11 (Br. 6—12). Although claims 8 and 13 are
addressed under a separate heading, the Appellants do not provide a
substantive argument as to the separate patentability of those claims (Br. 11—
12). We therefore limit our discussion to one claim in each group, i.e.,
claims 1 and 9. The other claims in each group stand or fall with the claim
we address. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
Rejection over Gaven in view of Dvorchak
Gaven discloses “mobile devices which are uniquely adapted to cure
substrate coatings in areas which are inaccessible, such as floor comers,
walls, overhangs, edges and ceilings” (col. 1,11. 8—11). Gaven teaches that
ultraviolet curable coatings are “particularly well suited for use upon floors
since they have the desirable characteristics of abrasion resistance, water and
1 The Examiner relies upon US 5,096,938, issued Mar. 17, 1992, as an
English language equivalent of Beck (Ans. 14).
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Appeal 2015-004298
Application! 2/920,840
chemical resistance, high gloss and so on, while likewise providing a durable
coating that will require little care and upkeep” (col. 1,11. 28—32) and that
“[a] conventional linear ultraviolet lamp is typically mounted on the front of
a carriage and will instantly cure the coating as the carriage is moved over
the coating” (col. 1,11. 40-43). Gaven’s devices provide to an ultraviolet
vapor lamp source an electrical current which may “be automatically altered
in correlation with the speed of the operation of the carriage unit in order to
maintain a constant curing level” (col. 3,11. 16—20). “A typical 15 amp,
110 volt circuit will permit about 1500 watts of lamp energy to be emitted”
(col. 3,11. 42-44). “[A] user may simultaneously coat a surface and cure
that same surface completely” (col. 4,11. 58—59).
Dvorchak discloses an aqueous polyurethane dispersion coating
composition which can be applied to wood and cured using radiation having
a preferred wavelength of about 320 nm to about 450 nm for a time as short
as 0.1 second (Abstract; || 5—27, 73). It is undisputed that Dvorchak’s
composition would have suggested, to one of ordinary skill in the art, the
composition recited in the Appellants’ claim 1.
The Appellants’ sole argument regarding the rejection over Gaven in
view of Dvorchak is that Gaven is nonanalogous art (Br. 6—8). The test of
whether a reference is from an analogous art is first, whether it is within the
field of the inventor’s endeavor, and second, if it is not, whether it is
reasonably pertinent to the particular problem with which the inventor was
involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). A reference
is reasonably pertinent if, even though it may be in a different field of
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
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Application! 2/920,840
considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). The Appellants assert that their “field of endeavor is using a
coating composition with an aqueous polyurethane dispersion to coat a
previously installed floor and curing the composition using only UV-A
radiation” (Br. 6) and that the problem addressed is identifying “an aqueous
composition that could be used in a process for coating a previously installed
floor and curing the composition using only UV-A radiation” (Br. 7). The
Appellants assert that “[t]he problem was solved by identification of a
composition with a rapid curing rate that made it possible to use a ‘walk-
behind’ lamp, which allows the operator to apply the coating composition to
the wood floor on-site (i.e., previously installed) and walk behind the lamp,
curing the coating and immediately walking on the cured surface as the
operator moves across the floor” {id.) and that “[tjhere is no factual reason
why Gaven, which is directed to a mobile curing device, would have
commended itself to the attention of a resin developer or formulator, in
attempting to address such a problem” {id.).
The Appellants too narrowly set forth their field of endeavor and what
is reasonably pertinent to the problem addressed. The Appellants’ field of
endeavor is ultraviolet radiation curable coating compositions (Spec. 2:9—
12). Gaven’s “invention relates to curing substrate coatings using ultraviolet
radiation” (col. 1,11. 6—7) and, therefore, is within that field of endeavor.
The problem addressed by the Appellants is safe and rapid coating
composition curing (Spec. 2:9—12). Gaven, which discloses a device with
which “a user may simultaneously coat a surface and cure that same surface
completely” using ultraviolet light (col. 4,11. 53—59), is reasonably pertinent
to that problem. Hence, Gaven is analogous art.
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Application! 2/920,840
Rejections over Weikard in view of Dvorchak and over
Gaven in view of Weikard and Dvorchak
Weikard “relates to aqueous polyurethane emulsions that cure under
the influence of high energy radiation and to their use as coating
compositions, especially for coating wood and furniture” (col. 1,11. 7—10;
col. 1,1. 47 — col. 2,1. 7). The emulsions are “especially suitable for primary
coats, e.g. in the multilayer lacquering of prefabricated parquet flooring”
(col. 5,11. 25-28).
The Appellants assert that Weikard’s prefabricated parquet flooring to
which Weikard’s coating is to be applied (col. 5,11. 25—28) is not a
previously installed floor as required by the Appellants’ claim 1 (Br. 8—9).
The Examiner finds that “prefabricated parquet flooring is also sold to
consumers as uncoated flooring” (Ans. 21). Because that finding is
reasonable and the Appellants have not challenged it, we accept it as fact.
See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). Also, Weikard’s
claim 17 indicates that the disclosure applies to wood substrates generally.
The Appellants argue that because Dvorchak’s coating composition
contains a polyester made from castor oil fatty acid (19), “the compositions
disclosed in Dvorchak take a relatively long time to develop the hardness
and chemical resistance needed and, as a result, they would not be desirable
for use in an on-site application, i.e., application to a previously installed
wood floor” (Br. 9).
That argument is not well taken because it is merely unsupported
attorney argument, and arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, the argument is inconsistent with Dvorchak’s disclosure that the
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Application12/920,840
coating composition can cure in as little as 0.1 second (173). Furthermore,
Dvorchak and the Appellants provide similar disclosures that the coating can
be baked before the UV radiation is applied (Dvorchak || 72—73;
Appellants’ Spec. 11:9—27).
Claim 9
Claim 9, which depends from claim 1, recites optional additional
composition components.
The Appellants appear to assert that one of ordinary skill in the art
would not have had a reasonable expectation of success in using those
optional components in Dvorchak’s composition (Br. 10—11).
That assertion is not well taken because each of those optional
components is disclosed by Dvorchak (| 71).
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1,2, and 4—8 over
Gaven in view of Dvorchak, claims 1, 2, 4—6, and 9—11 over Weikard in
view of Dvorchak, claims 1, 2, and 4—13 over Gaven in view of Weikard and
Dvorchak, claim 3 over Gaven in view of Dvorchak and Beck and over
Weikard in view of Dvorchak and Mischke, and claims 7, 8, 12, and 13 over
Weikard in view of Dvorchak and Gaven are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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