Ex Parte Moravek et al

Patent Trial and Appeal Board

May 4, 2018

13655823 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/655,823
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
10/19/2012
05/04/2018
FIRST NAMED INVENTOR
Scott J. Moravek
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.
10007446Al 2768
EXAMINER
WALTERS JR, ROBERTS
ART UNIT PAPER NUMBER
1717
MAILDATE DELIVERY MODE
05/04/2018 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 SCOTT J. MORAVEK and LAWRENCE G. ANDERSON
Appeal2017-008026
Application 13/655,823
Technology Center 1700
Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-10 under 35 U.S.C. § 103(a) as
obvious over Anderson3 in view of Chung4 . We have jurisdiction under
35 U.S.C. § 6(b).
1 In explaining our Decision, we cite to the Specification of October 19,
2012 (Spec.), the Final Office Action of May 23, 2016 (Final Act.), the
Appeal Brief of November 10, 2016 (Appeal Br.), the Examiner's Answer of
March 8, 2017 (Ans.), and the Reply Brief of May 8, 2017 (Reply Br.).
2 Appellant is the Applicant, PPG Industries Ohio, Inc., which, according to
the Brief, is the real party in interest. Appeal Br. 2.
3 Anderson et al., US 6,610,777 Bl, issued Aug. 26, 2003.
4 Chung, US 4,478,876, issued Oct. 23, 1984.
Appeal2017-008026
Application 13/655,823
We REVERSE.
The claims are directed to a curable film-forming composition useful
for forming cured coatings with an initial 85° gloss of less than 30 and an
increase in 85° gloss of no more than 10 gloss units when subjected to WET
ABRASION TEST METHOD ONE (claim 1) or WET ABRASION TEST
METHOD TWO (claim 10). The Specification identifies the tests as the
Amtec-Kistler Car Wash Test DIN 55668, run at 10 cycles (METHOD
ONE) and that same test run at 40 cycles (METHOD TWO). Spec. i-f 101.
According to the Specification, cured coatings having an initial 85°
gloss measurement of less than 30 are "low gloss" coatings. Spec. i-f 93.
Low gloss or matte finishes are useful on camouflage aircraft. Spec. i-f 3.
The low gloss finish has a rough surface that diffusely reflects visible light.
Id. The problem is that the rough surface is difficult to clean and often
requires scrubbing that can increase gloss. Id. Appellant seeks a coating
that can be repeatedly cleaned with detergents and abrasives without
increasing the reflectance (glossiness) of the coating. Spec. i-f 4. To meet
this need, Appellant has developed a curable film-forming composition that
cures into a coating that, when subjected to either of the two wet abrasion
tests, increases in 85 ° gloss no more than 10 gloss units. Spec. i-f 101. The
key to achieving the desired low gloss coating is the use of protonated silica
particles having an average particle size of 2 to 20 microns. Spec. i-f 58.
Claim 1 is illustrative:
1. A curable film-forming composition comprising:
(a) a polymeric binder comprising:
(i) a polysiloxane having reactive functional
groups and in which is dispersed protonated silica
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Application 13/655,823
particles having an average particle size of 2 to 20
microns, wherein the polysiloxane is present in the
polymeric binder in an amount of at least 10 percent by
weight based on the total weight of solids in the
polymeric binder; and
(ii) optionally at least one additional polymeric
resin different from the polysiloxane (i), having reactive
functional groups; and
(b) a curing agent containing functional groups that are
reactive with the reactive functional groups of (i), (ii), or both;
wherein after application of the curable film-forming
composition to a substrate as a coating and after curing to yield
a cured coating, the cured coating demonstrates an initial 85°
gloss of less than 30 and an increase in 85° gloss of no more
than 10 gloss units when subjected to WET ABRASION TEST
METHOD ONE.
Appeal Br. 12 (Claims Appendix). Claim 10 requires subjecting the cured
coating to WET ABRASION TEST METHOD TWO instead of METHOD
ONE.
OPINION
The first issue we encounter is an issue of claim interpretation. The
Examiner gives the last wherein clauses of independent claims 1 and 10 no
patentable weight because "they are recitations of the properties of a cured
coating resulting from application and curing of the claimed composition,
and as such are not directly relevant to the claimed composition." Final
Act. 5.
We determine that the Examiner improperly discounted the limiting
effect of the wherein clauses of claims 1and10. The wherein clauses are
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Application 13/655,823
limiting in so far as they require that the curable compositions be capable of
forming a cured coating with the gloss properties recited. Thus, the curable
composition must have all the attributes that allow it to be capable of curing
to form the low gloss coating with the low gloss and low gloss retention
properties of claims 1 and 10. Appellant's Specification provides some
evidence that a key attribute resulting in the low gloss of the claims and
ability to retain the low gloss after the abrasion tests is the large particle size,
i.e., 2 to 20 microns, of the protonated silica particles recited in claims 1 and
10. Spec. ,-r 58.
The second issue concerns the Examiner's findings regarding the
Anderson reference. The Examiner finds that Anderson teaches silica
particles having an average particle size overlapping the 2 to 20 micron
range of claims 1and10. Final Act. 5 (citing Anderson col. 29, 11. 25-31).
This is not exactly what Anderson teaches.
Anderson teaches a very broad particle range that is not specific to
silica. Column 29, lines 25-31 of Anderson refers to particles generally and
discloses a very broad range of less than 100 microns followed by average
particle ranges for much smaller particles such as, for instance, 1 to less than
1000 nanometers, 1 to 100 nanometers, 5 to 50 nanometers, and 5 to
25 nanometers. Anderson col. 29, 11. 25--47. Specifically, Anderson makes
a very sweeping statement that "the present invention is directed to any
composition as previously described wherein the particles have an average
particle size of less than 100 microns." Anderson col. 29, 11. 28-30.
Anderson's list of potential particles is also broad and sweeping: It
includes polymeric and nonpolymeric inorganic materials, polymeric and
nonpolymeric organic materials, composite materials, and mixtures of
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Application 13/655,823
varying shapes such as spheres, cubic, platy or acicular. Anderson col. 30,
11. 8--41.
As found by the Examiner, Anderson teaches including silica
particles, but does not teach the particle size. Final Act. 5 (citing Anderson
examples 1 and 2, cols. 45--47). The film-forming compositions 1 and 2 of
the examples cited by the Examiner include colloidal silica. Anderson
col. 45, 11. 29--58; col. 46, 11. 42-58.
According to Anderson, when using inorganic oxides such as colloidal
silica in a transparent topcoat, particles should not seriously interfere with
the optical properties of the composition. Anderson col. 31, 11. 25-39.
Anderson also describes using sols that can be a wide variety of small-
particle, colloidal silica having an average particle size in ranges such as
identified above. Anderson col. 35, 11. 27-31. Anderson does not identify
which of the ranges described earlier in the patent are relevant, but describes
using dispersions of small particle colloidal silica that are colorless.
Anderson col. 35, 11. 43-53.
Chung states that colloidal silica is a dispersion of submicron-sized
silica particles. Chung col. 7, 11. 61-65. Thus, the ordinary artisan would
have understood Anderson to be referring to submicron-sized silica when
referring to colloidal silica.
Anderson teaches curable compositions for forming glossy cured
coatings for, e.g., automotive vehicles, that are resistant to scratching and
retain their gloss. Anderson col. 3, 11. 8-15; col. 4, 11. 18-22; col. 5, 11.
56----67; col. 43, 11. 42---64. Anderson's cured coating has an initial 20° gloss
of greater than 40, which Anderson says is a high gloss composition.
Anderson col. 44, 11. 16-24. Contrary to Appellant's invention, Anderson
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Application 13/655,823
seeks a high gloss coating rather than a low gloss coating. And Appellant
distinguishes the 2 to 20 micron silica particles they use from silica particles
conventionally used in coating applications, which are typically
nanoparticles. Spec. i-f 58.
Anderson and Chung would have suggested to one of ordinary skill in
the art the use of small silica particles in their curable coatings as these
coating are formulated to obtain high gloss rather than low gloss coatings.
Thus, a preponderance of the evidence supports Appellant's argument
(Appeal Br. 10) that the ordinary artisan following the teachings of
Anderson and Chung would have selected a silica of average particle size
less than 1 micron, a size outside the range of the claims.
Thus, Appellant has identified a reversible error in the Examiner's
conclusion of obviousness.
In summary:
1-10 § 103(a)
Summar
CONCLUSION
Anderson,
Chung
DECISION
The Examiner's decision is reversed.
REVERSED
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