Ex Parte Molaire

Patent Trial and Appeal Board

May 31, 2013

10887968 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/887,968 07/09/2004 Michel F. Molaire 81799/LPK 4679
1333 7590 05/31/2013
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
05/31/2013 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 MICHEL F. MOLAIRE
____________

Appeal 2011-012535
Application 10/887,968
Technology Center 1700
____________

Before RICHARD E. SCHAFER, ANDREW H. METZ and
TERRY J. OWENS, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012535
Application 10/887,968

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STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1 through 3, 5 through 8, 11 through 17, 19 and 29
through 32. Claims 20 through 28, the only other claims remaining in the
application, are claims directed to a previously non-elected invention
pursuant to a requirement for restriction in which election of the subject
matter of claims 1 through 19 and 29 through 32 was made without
traverse1. Accordingly, claims 20 through 28 stand withdrawn from
consideration and form no issue in this appeal. 37 C.F.R. § 1.142(b). We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

THE INVENTION
Claim 1 is believed to be adequately representative of the appealed
subject matter and is reproduced below for a more facile understanding of
the claimed invention.
1. An aqueous composition for dip coating an article, with a coating
comprising at least one metal oxide, the aqueous composition
comprising:

a) a dispersion of at least one finely-divided particulate metal
oxide in water or alcohol, the dispersion containing at least
about 15 weight percent metal oxide and being present in the
composition in an amount sufficient to produce a metal
oxide content in the final coating from about 40 to about 80
weight percent;

1 Claims 4, 9, 10 and 18 were canceled during the prosecution and form no
issue in this appeal.
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b) a latex polymer composition comprising a latex polymer
aqueous dispersion in an amount to produce a latex polymer
content from about 15 to about 59.5 weight percent in the
coating;
c) a water soluble, non-ionic, non-associative viscosity
enhancer, effective at increasing the viscosity of the
composition, in an amount from about 0.5 weight percent to
less than about 10 weight percent of the coating; and
d) water miscible, volatile solvent in an amount equal to from
about 35 to about 60 weight percent of water in the
composition.

The references of record which are being relied on by the Examiner as
evidence of obviousness are:
Gilchrist 3,093,603 June 11, 1963
Levy et al. (Levy) 3,653,894 Apr. 04, 1972
Verhille et al. (Verhille) 3,708,290 Jan. 02, 1973
Kato et al. (Kato) 4,502,984 Mar. 05, 1985
THE REJECTIONS
Claims 1 through 3, 6 through 8, 11 through 17, 19 and 29 through 32
stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed
subject matter would have been obvious at the time Appellant made his
invention from the disclosure of Verhille considered with Gilchrist and
Levy.
Claims 1 through 3, 5 through 8, 11 through 17, 19 and 29 through 32
stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed
subject matter would have been obvious at the time Appellant made his
invention from the disclosure of Verhille considered with Gilchrist, Levy
and Kato.
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Application 10/887,968

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OPINION
Except for dependent claims 15, 16 and 19, Appellant has chosen to
make no argument concerning the separate patentability of any dependent
claim. Appellant has also chosen to limit his discussion of the alleged error
committed by the Examiner in rejecting Appellant’s claims to the rejection
of claim 1. Accordingly, except for addressing Appellant’s arguments with
respect to claims 15, 16 and 19, we shall limit our review to the rejection of
and patentability under 35 U.S.C. § 103 of claim 1.
The issue before us, whether the claimed subject matter would have
been obvious in the sense of the statute to the hypothetical person of
ordinary skill in the art from the cited and applied prior art at the time
appellant made his invention, is a question of law. The ultimate legal
conclusion of obviousness is based on the underlying facts in each specific
case including the scope and content of the prior art, the differences between
the claimed invention and the prior art and the level of ordinary skill in the
relevant art.
We find Verhille to be evidence that at the time Appellant made his
invention dip coating compositions (column 6, lines 5 through 7) useful for
coating articles and comprising a finely divided dispersion of a particulate
metal oxide such as titanium oxide (column 5, lines 23 through 27) in
combination with a latex polymer (column 5, lines 43 through 46) and
hydroxyl ethyl cellulose (column 5, lines 32 through 43) were known in the
art. The compositions disclosed by Verhille are prepared in an “aqueous
medium”, that is, in water or a liquid composition containing sufficient
water to dissolve the various components and include mixtures of water and
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water-miscible solvents such as ethanol (column 4, lines 49 through 56). The
coating prepared from the compositions of Verhille contain a metal oxide
content of from 60 to 95 percent by weight, an amount which overlaps
Appellant’s claimed amount of 40 to 80 weight percent.
Because the aqueous coating compositions described by Verhille yield
coatings with finely divided metal oxide contents which substantially
overlap the amounts claimed by Appellant and because Appellant concedes
that Verhille discloses compositions which disclose the various individual
components of the claimed composition (Brief 6, lines 17 and 18), a
concession with which we agree, we conclude that the Examiner has made
out a prima facie case of obviousness for the composition of claim 1 based
on the disclosure of Verhille considered alone.
Appellant argues that the Examiner erred in relying on Verhille to
reject the claimed composition because Verhille discloses other components
for their composition that are not required by the claimed composition and
because Verhille does not disclose or exemplify the specific components
claimed in claim 1 in the amounts or proportions required by the claim.
Appellant’s arguments ignore the language of claim 1, ignore the level of
skill in the art and lack a factual foundation in Appellant’s disclosure.
Claim 1 is directed to a composition “comprising” 4 (four) recited
components. It is beyond dispute that Verhille discloses an aqueous
composition that includes each of the 4 (four) components recited in claim 1
and also that such compositions are useful for dip coating. By using the
transitional phrase “comprising” Appellant’s claims do not exclude from the
composition of claim 1 any other components disclosed as useful in
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Verhille’s aqueous dip coating composition. Component b) in claim 1 is
described only as a “latex polymer aqueous dispersion” and neither recites
nor requires any specific latex polymer let alone the specific latex polymers
described on page 5, [0021] of the Specification. Similarly, component c) is
defined only as a “water soluble, non-ionic, non-associative viscosity
enhancer” and is not limited to any of the suitable viscosity enhancers
described on page 6, [0028] of the Specification as “hydroxy ethyl cellulose
. . . , starch and xantham gum.”
Appellant’s argument that Verhille does not disclose the claimed
amounts for each components in the composition ignores what the language
of claim 1 actually requires. Claim 1 does not describe how much
dispersion, latex, viscosity enhancer or water miscible solvent is present in
the aqueous dip coating composition. Rather, claim 1 recites how much of
each component is present in the final coating, per se. In other words,
claim 1 claims the amount of each component in the coating not how much
of each component is present in the composition which yields the amounts in
the coating. Appellant does not disclose in his Specification how much of
any component is added to the composition expressed as a weight percent of
composition. Rather, Appellant’s Specification suggests only that the
amounts can be determined by measuring the viscosity of the composition to
achieve a viscosity of from 5 to about 100 centipoises (cps) at 25°C and that
the viscosity can be varied as desired to achieve a desired thickness and that
such variations “are clearly within the skill of those in the art.” Spec. 9
[0042].
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Thus, we find that the hypothetical person of ordinary skill in the art,
possessed with the disclosure in Verhille for a dip coating composition
comprising the same 4 (four) components required by claim 1, described by
Verhille as useful for dip coating “articles” and used to prepare final
coatings having from 40 to 80 weight percent finely divided metal oxide,
would have been motivated to prepare coatings having the claimed content
of components in the final coating. We also find the hypothetical person
would have had the ability to prepare compositions having the claimed
content for each component in the final coating as recited in claim 1.
Appellant’s arguments concerning the amounts of each component
present in the composition of claim 1 vis-à-vis the composition disclosed by
Verhille fails to consider the prior art as it would have been considered by a
person having ordinary skill in the art at the time Appellant made his
invention. The preparation of a composition by selection of ingredients
known in the art to be useful for preparing aqueous dip coating compositions
with subsequent mixing of the ingredients to form an aqueous dip coating
composition is shown by each of the references relied on by the Examiner to
be well within the skill of the routineer in the coating composition art.
Claims 15 and 16 are directed to a particular viscosity enhancer,
hydroxy ethyl cellulose, having a weight average molecular weight below
500,000 (claim 15), specifically, one having a weight average molecular
weight of 90,000. Claims 15 and 16 are directed to the embodiment of
Appellant’s Example 1 which utilizes a commercially available hydroxy
ethyl cellulose from Aldrich Chemicals. The prior art on which the
Examiner has relied establishes that hydroxy ethyl cellulose was known as a
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thickener, protective colloid, film-forming binder or suspending agent for
aqueous compositions at the time Appellant made his invention. We find
that the hypothetical person of ordinary skill in the art had the requisite skill
and motivation to select hydroxy ethyl cellulose from commercially
available ones useful for aqueous coating compositions for the same purpose
as Appellant based on their known utility in the art.
Similarly, we find that compounding the 4 (four) known ingredients
shown by Verhille to be useful for preparing aqueous dip coating
compositions to achieve a particular viscosity suitable for a dip coating
composition is the epitome of the exercise of ordinary skill by the routineer
in this art. This conclusion is supported by the fact that Verhille teaches
coating compositions useful for preparing coatings having a metal oxide
content in the final coating which include the claimed metal oxide content
for the final coating. Indeed, as we have noted above, Appellant concedes
that varying the viscosity of the composition to achieve the desired thickness
is “clearly within the skill of those in the art.” Moreover, the lack of
exemplification in Verhille of any particular composition does not lessen the
express disclosure therein of the components required by claim 1 and that
such components may be combined to form an aqueous dip coating
composition.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

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