Ex Parte Most et al

Patent Trials and Appeals Board

May 24, 2019

14062928 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/062,928
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
10/25/2013
05/24/2019
FIRST NAMED INVENTOR
Christopher L. Most
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.
13009195Al 9504
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
05/24/2019 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 CHRISTOPHER L. MOST and ROBERT Mc VAY
Appeal2018-006534
Application 14/062,928
Technology Center 1700
Before KAREN M. HASTINGS, RAEL YNN P. GUEST, and
JAMES C. HOUSEL, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1---6 and 8-13 under 35 U.S.C.
§ 103(a) as unpatentable based on at least the combined prior art of Mc Vay
(US 7,475,786 B2, issued Jan. 13, 2009) and Coates Brothers & Company
(GB 1,120,738, published July 24, 1968) ("Coates"). 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
1 Appellant is the applicant, PPG Industries Ohio, Inc., which is also stated
to be the real party in interest (see Appeal Br. 1 ).
2 The rejection of claim 9 includes additional prior art ( e.g., Ans. 6). A
discussion of this rejection is unnecessary in the disposition of this appeal.
Appeal 2018-006534
Application 14/062,928
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight key limitation in dispute):
1. An aqueous-based coating composition comprising:
(A) a resinous phase of
(i) 20 to 35 percent by weight of an at least
partially neutralized acid functional polymer containing
reactive functional groups,
(ii) 40 to 60 percent by weight of a phenolic
compound and an aldehyde or the reaction product
thereof,
(iii) 2.5 to 10 percent by weight of a hydroxy-
terminated polybutadiene; the resinous phase dispersed
m
(B) aqueous medium.
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
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Appeal 2018-006534
Application 14/062,928
We need to address only independent claim 1 which recites an
aqueous based coating composition having "2.5 to 10 percent by weight of a
hydroxyl-terminated polybutadiene."
The Examiner admits that Mc Vay does not explicitly teach or suggest
this feature; and relies upon the use of an epoxidized polybutadiene in the
adhesive cement in Coates ( disclosed as useful for bonding the seams of
metal cans), reasoning that Coates' adhesive cement is "a polymeric internal
coating for a metallic can, which is the identical field of invention of
Mc Vay" (Ans. 7). Appellant argues that the explanation provided in the
declaration of Dr. McCollum3 establishes that the hydroxyl groups in Coates
are not terminal, as recited in claim 1 (Appeal Br. 4; Reply Br. 2). Appellant
further argues that there is no reason one would have used the polybutadiene
component of the adhesive cement of Coates in the polymeric coating for
cans of Mc Vay, which is applied to the interior of food and beverage
containing metal cans to prevent the contents from contacting the metal
surface of the container (Appeal Br. 3, 4). Appellant also contends that there
is no reason to use a polybutadiene component in the recited amount since it
is used at levels of 40 to 60 percent by weight in the adhesive cement of
Coates (Appeal Br. 4; Reply Br. 2).
A preponderance of the evidence supports Appellant's position that
the Examiner has not pointed to any evidence to adequately establish that the
applied prior art teaches or suggests the required amount of a hydroxyl-
terminated polybutadiene in the polymeric coating of Mc Vay. The
Examiner's position that the amount would have been achieved through
3 Declaration of Dr. Gregory J. McCollum dated October 18, 2016.
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Appeal 2018-006534
Application 14/062,928
routine optimization because Coates teaches its cement has an improved
shelf life is not well founded (Ans. 9, 10). As pointed out by Appellant, the
shelf life of an adhesive cement before its use is not comparable to the shelf
life of an internal can coating such as Mc Vay (Reply Br. 2, 3). Furthermore,
although Coates merely exemplifies use of 40 to 60 percent by weight
polybutadiene in its adhesive cement, the Examiner has not provided
adequate evidence that one of ordinary skill in the art would have considered
an amount as low as 2.5 to 10 percent by weight to be suitable for McVay's
purpose or any other purpose. See In re Sebek, 465 F.2d 904, 907 (CCPA
1972) (where the prior art indicates that an optimum should be sought within
a range, the determination of optimum values outside that range may not be
obvious).
In light of these circumstances, the Examiner has not shown that each
and every limitation of the claim is either described or suggested by the prior
art or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F .2d 1011, 1017 (CCP A 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art.").
It further appears that the proposed modification of Mc Vay based on
Coates would be based on improper hindsight reconstruction. The fact
finder must be aware "of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning." KSR, 550 U.S. at 421
(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
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Appeal 2018-006534
Application 14/062,928
"temptation to read into the prior art the teachings of the invention in
issue")).
The Examiner does not rely upon any of the other references to cure
these deficiencies. Accordingly, we reverse the § 103 rejections on appeal.
ORDER
It is ordered that the Examiner's decision is reversed.
REVERSED
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