Ex Parte Moussa et alDownload PDFPatent Trial and Appeal BoardSep 16, 201613113126 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/113, 126 24959 7590 PPG Industries, Inc, IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 05/23/2011 09/19/2016 FIRST NAMED INVENTOR Youssef Moussa 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. 10007181Al 9014 EXAMINER BLACKWELL, GWENDOLYN ART UNIT PAPER NUMBER 1782 MAILDATE DELIVERY MODE 09/19/2016 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 YOUSSEF MOUSSA, CLAUDIA KNOTTS, and MICHAEL LIST Appeal2015-004325 Application 13/113,126 Technology Center 1700 Before LINDA M. GAUDETTE, MICHELLE N. ANKENBRAND, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-004325 Application 13/113,126 Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision2 twice rejecting claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. The invention relates to compositions that are useful for coating containers, such as food and beverage containers. Specification filed May 23, 2011 ("Spec.") i-f 1. According to the Specification, known coating compositions for food and beverage containers are often based on epoxy resins that are polyglycidyl ethers of bisphenol A ("BP A") or derivatives thereof, e.g., diglycidyl ethers of BP A ("BADGE"). Id. i-f 3. Due to a perception that these compounds are harmful to human health, there is a desire to eliminate the use thereof in coatings for food and beverage containers. Id. The inventors are said to have discovered a coating composition that it is substantially free of BP A and derivatives thereof, yet provides excellent adhesion to the substrate to which it is applied. Id. i-fi-1 4--7. Of the appealed claims, claims 1 and 8 are independent, and read as follows: 1. A coating composition comprising: (a) a resinous binder, (b) up to 10 percent by weight based on weight of resin solids in the coating composition of a reaction product compnsmg: (i) a phosphorus acid, and (ii) polyglycidyl ether of cyclohexane dimethanol. 8. A coating composition comprising: (a) a resinous binder comprising: (i) an acrylic polymer having reactive functional groups, (ii) an aminoplast crosslinker having functional groups reactive with the functional groups of (i), 1 Appellants identify the real party in interest as PPG Industries Ohio, Inc. Appeal Brief filed September 17, 2014 ("App. Br."), 1. 2 Non-Final Office Action mailed May 8, 2014 ("Non-Final Act."). 2 Appeal2015-004325 Application 13/113,126 (b) 0.5 to 5 percent by weight based on weight of resin solids in the coating composition of a reaction product compnsmg: (i) phosphoric acid, and (ii) cyclohexane dimethanol diglycidyl ether. Claims 2-7 and 11-17 depend from claim 1, and claims 9 and 10 depend from claim 8. The Examiner maintains the following grounds of rejection under 35 U.S.C. § 103(a)3: 1. claims 1-7, 11, 16, and 17 as unpatentable over Sundararaman et al. (US 6,159,549, issued December 12, 2000 ("Sundararaman")), alone, or in view of Pawlik et al. (US 2004/0086718 Al, published May 6, 2004 ("Pawlik")); and 2. claims 8-10 and 12-15 as unpatentable over Sundararaman in view of Pawlik, and further in view ofCinoman et al. (US 2007/0260003 Al, published November 8, 2007 ("Cinoman")). 4 3 The Examiner has withdrawn the provisional obviousness-type double patenting rejection of claims 1-17 (see Non-Final Act. 2-3). Examiner's Answer mailed February 4, 2015 ("Ans."), 9. 4 The Examiner makes a second ground of rejection of claims 8-10 and 12-15 based on the same combination of references and based on the same reasoning. Compare Non-Final Act. 5-7, with id. at 8-11. The Examiner includes claims 4 and 6 in this second ground of rejection, but does not rely on Cinoman for a teaching or suggestion of any claim 4 or claim 6 limitations. See id. at 8-9. Rather, the Examiner's reasoning is identical to that stated in rejecting claims 4 and 6 over the combination of Sundararaman and Pawlik. Compare id. at 4, with id. at 9. Accordingly, we dismiss this ground of rejection as it appears to be duplicative of above-listed grounds of rejection 1 and 2. Cf The Manual of Patent Examining Procedure (MPEP) § 706.02, p. 700-20 (8th ed. rev. 9, Aug. 2012) (noting that merely cumulative rejections should be avoided). 3 Appeal2015-004325 Application 13/113,126 Rejection of claims 1-7, 11, 16, and 17 as unpatentable over Sundararaman, alone, or in view of Pawlik The Examiner finds Sundararaman discloses a coating composition comprising a polyester-based resin component (Non-Final Act. 4, 7 (citing Sundararaman 2:4--24)) and "about 1-25% by weight" (Sundararaman 3:21-23) of an epoxy component that is "the product of a phosphoric acid ... and a glycidylether[] of aliphatic diols or polyols" (Non-Final Act. 4, 7 (citing Sundararaman 3:52-62)). The Examiner finds Sundararaman teaches the use of "any suitable aromatic or cycloaliphatic epoxy resin ... known to those skilled in the art after reading th[ e] specification" (Sundararaman 3 :44--46), but does not disclose "polyglycidyl ether of cyclohexane dimethanol" explicitly. Non-Final Act. 4, 7. The Examiner finds, however, that Sundararaman discloses cyclohexane dimethanol is a suitable polyol for use in preparing the polyester-based resin component and, therefore, one of ordinary skill in the art would have utilized "the glycidyl ether of cyclohexane dimethanol" for the epoxy component. Id. at 7. The Examiner finds, in the alternative, that one of ordinary skill in the art would have been motivated to look to the prior art for a suitable epoxy resin for use in Sundararaman's coating composition, and would have been motivated to select polyglycidyl ether of cyclohexane dimethanol based on Pawlik's successful use thereof in a phosphatized coating composition. Id. at 4 (citing Pawlik i-fi-1 7-8). Appellants argue both Sundararaman and Pawlik "cite a laundry list of cycloaliphatic alcohols that can be used in their invention," but provide no direction to select the specifically claimed polyol as opposed to any other suitable epoxy resin. App. Br. 5; see also id. at 7-8; Reply Brief filed February 26, 2015 ("Reply Br."), 1. Appellants argue one of ordinary skill in the art would not have been motivated to look to Pawlik given Sundararaman's teaching that suitable 4 Appeal2015-004325 Application 13/113,126 epoxy components are apparent to the ordinary artisan after reading Sundararaman's specification. App. Br. 3 (citing Sundararaman 3:44--46). Appellants also argue the phosphatized epoxy in Pawlik's composition serves as the main film former rather than as an adhesion promoter as in the claimed composition. Id. at 4. Appellants thus contend Pawlik uses much higher amounts of phosphatized polyglycidyl ether of cyclohexane dimethanol, and fails to teach or suggest that the use of this compound in the amounts claimed would impart suitable adhesion to the coating. Id. Appellants rely on the Declaration of Youssef Moussa (id., Evidence Appendix ("Moussa Deel.")) in support of their arguments. Id. at 5---6. Mr. Moussa is a named inventor in the present application. Mr. Moussa testified that although "the reaction of cycloaliphatic epoxies with phosphoric acid is similar to the reaction of BP A epoxies and phosphoric acid[,] the resulting products ... differ significantly in their final chemical structures." Moussa Deel. i-f 3. Mr. Moussa further testified that because of these differences, "one skilled in the art would have expected significant differences in the performance of coatings made from these products. It was very surprising, therefore, that the performance of the two coatings was the same." Id. Mr. Moussa testified that the ordinary artisan would not have been motived to look to Pawlik, which teaches phosphatized epoxy as the film former, for an adhesion promoter. Id. i-f 4. Mr. Moussa also testified that one of ordinary skill in the art would not have understood from Pawlik that a compound containing polyglycidyl ether of cyclohexane dimethanol in the amounts claimed would provide the adhesion or performance results obtained with the claimed coating composition because Pawlik's adhesion testing was performed under a different, and less stringent set of conditions than typically used in the packaging industry. Id. 5 Appeal2015-004325 Application 13/113,126 Appellants cite to the Examples in the Specification as evidence of a surprising and unexpected discovery that a coating composition containing polyglycidyl ether of cyclohexane dimethanol, as claimed, is comparable in performance in packaging-related testing to similar coatings comprising BP A/BADGE. App. Br. 4--5. The Specification describes comparison testing of three clear varnish compositions containing the same ingredients and amounts thereof with the exception of the ether component. According to the Specification, the Example 1 composition, containing 1,4-cyclohexane dimethanol diglycidyl ether, performed as well as the Example 2 composition, containing bisphenol A diglycidyl ether, when applied as a coating to an aluminum beverage can and subjected to boiling water adhesion testing and detergent adhesion testing (i.e., there was no adhesion loss). See Spec. i-fi-141--48. Example C, which did not contain an ether component, showed 40% and 90% adhesion loss, respectively, in the same tests. See id. i-fi-1 46--48. In response to Appellants' arguments, the Examiner contends Sundararaman "teaches that even though there are significant differences between epoxies, ... cycloaliphatic and aromatic epoxies have a similar result when used in their coating composition." Ans. 10. The Examiner's position is supported by Sundararaman's disclosure at column 3, lines 44--57. The Examiner further asserts that Pawlik is relied on solely to teach that phosphatized polyglycidyl ether of cyclohexane dimethanol is a known epoxy resin in the coating art, and is not relied on for a disclosure of suitable concentrations thereof in a coating composition. Id. at 11. Appellants have not shown error in this finding with respect to Pawlik, nor have Appellants argued convincingly that the ordinary artisan would not have been motivated to select "polyglycidyl ether of cyclohexane dimethanol out of the myriad of aromatic or cycloaliphatic epoxy resins alluded to by ... Pawlik" (Reply 6 Appeal2015-004325 Application 13/113,126 1 ), given Pawlik' s identification of cyclohexane dim ethanol as a specific example of a suitable polyhydric alcohol for use in forming a polyglycidyl ether of polyhydric alcohol that improves adhesion to a metal substrate (Pawlik i-fi-1 6-8 ("An example of a suitable cycloaliphatic alcohol is cyclohexanedimethanol.")). See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007) (explaining that an obviousness rejection predicated on selection of one or more components from numerous possible choices may be appropriate if the prior art provides direction as to which of many possible choices is likely to be successful). With respect to the Examiner's reliance on Sundararaman, alone, we are persuaded by Appellants' argument that Sundararaman' s disclosure of cyclohexane dimethanol as a suitable polyhydric alcohol for use in forming the polyester resin component of Sundararaman' s coating does not provide the requisite guidance to the ordinary artisan to select cyclohexane dimethanol for use in forming the phosphatized epoxy resin. Turning to the Moussa Declaration and Specification Examples, we agree with the Examiner's finding that this evidence is not persuasive of nonobviousness. See Ans. 9-10. As noted by the Examiner, the Specification Examples show that a coating composition containing the claimed cycloaliphatic epoxy resin provides adhesion equal to that of a coating composition containing BADGE, but fail to show that the claimed coating composition provides an unexpected, superior result as compared to a coating composition containing a different cycloaliphatic epoxy resin in the claimed amounts. See id. at 10. We have considered Mr. Moussa's testimony that the claimed invention provides unexpected results and that an ordinary artisan would not have been motivated to look to Pawlik for a suitable cycloaliphatic epoxy resin, but accord little weight to this testimony because it is 7 Appeal2015-004325 Application 13/113,126 (1) the opinion of one of the named inventors, ( 2) unsupported by evidence, and (3) does not address the Examiner's findings that Sundararaman column 3, lines 44--46 suggest that "cycloaliphatic and aromatic epoxies have a similar result when used in [Sundararaman's] coating composition." Ans. 10; see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting the Board is entitled to weigh declarations expressing opinions as to fact and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations); In re Bulina, 362 F.2d 555, 559 (CCPA 1966) ("[A]n affidavit by an applicant or co-applicant as to the advantages of his invention is less persuasive than one made by a disinterested person."). In sum, we are persuaded of reversible error in the Examiner's rejection of claims 1-7, 11, 16, and 17 as unpatentable over Sundararaman, alone, and, therefore, reverse this ground of rejection. We agree with the Examiner that a preponderance of the evidence, taking into account Appellants' evidence of unexpected results, weighs in favor of obviousness of claims 1-7, 11, 16, and 17 over the combination of Sundararaman and Pawlik. We affirm this ground of rejection. Rejection of claims 8-10 and 12-15 as unpatentable over Sundararaman in view of Pawlik and Cinoman Unlike independent claim 1, independent claim 8 specifies that the resinous binder comprises an acrylic polymer. As noted above, claims 9 and 10 depend from claim 8, and claims 12-15 depend from claim 1 via their dependence on claim 11. Claim 11 recites a coated article comprising a substrate having a coating comprising the composition of claim 1 deposited thereon. Claim 12 recites that the claim 11 substrate comprises a container. 8 Appeal2015-004325 Application 13/113,126 With respect to claims 8-10, the Examiner finds Sundararaman and Pawlik are silent regarding the use of an acrylic polymer in their coating materials. Non- Final Act. 5. The Examiner finds "Cinoman teach[ es] that it is known in the art to add binder resins including polyesters and acrylics to phosphatized coating materials." Id. The Examiner further finds one of ordinary skill in the art would have been motivated to modify Sundararaman's coating composition by either replacing the polyester resin with, or simply adding, Cinoman's acrylic polymer based on "the successful practice of the invention of Cinoman." Id. Appellants argue the Examiner has not explained sufficiently the motivation for modifying Sundararaman's composition to include an acrylic polymer, noting Sundararaman does not teach or suggest the use of any type of resin other than a polyester resin. See App. Br. 6-7. With respect to claims 12-15, the Examiner finds Sundararaman teaches applying the disclosed coating composition as a protective coating to metals, but does not specify containers. Non-Final Act. 6. The Examiner finds Cinoman teaches applying phosphatized coating materials to a metal, as well as cans or bottles, as a corrosion resistant coating. Id. The Examiner determines it would have been obvious to apply Sundararaman's coating to a container as recited in claims 12 and 13 because "this is merely using a known substance for a known purpose," and that it would have been obvious to apply the coating composition to the exterior of the container as recited in claims 145 and 15 because the composition prevents corrosion. Id. 5 We note that claim 14, which depends from claim 11, is in improper dependent form because claim 11 does not provide antecedent basis for the recitation: "the container." 9 Appeal2015-004325 Application 13/113,126 Appellants argue the Examiner's obviousness determination as to claims 12- 15 is not supported by Sundararaman's disclosure. See App. Br. 7. Specifically, Appellants note that Sundararaman is "directed to coatings for structural building components, for which durability to weather conditions is particularly desired," and "[t]here is no teaching or suggestion in Sundararaman that those coatings are suitable for packaging." Id. The Examiner's response to Appellants' arguments in support of patentability of claims 8-10 and 12-15 is limited to a statement that Cinoman is a teaching reference that "teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention." Ans. 12. "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); see also In re Vaidyanathan, 381 Fed. App'x. 985, 994 (Fed. Cir. 2010) (non-precedential) ("KSR did not free the PTO's examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion."). We have considered the respective positions of the Examiner and Appellants, and agree with the Appellants that the Examiner has not provided the requisite articulated reasoning with some rational underpinning in finding the ordinary artisan would have been motivated to modify Sundararaman in view of Cinoman. Rather, it appears the Examiner has simply identified where each of the 10 Appeal2015-004325 Application 13/113,126 claim elements was known independently in the prior art, and then relied on improper hindsight reasoning in determining it would have been obvious to combine these elements in the manner claimed. See KSR, 550 U.S. at 421. Accordingly, we reverse the rejection of claims 8-10 and 12-15 over the combination of Sundararaman, Pawlik, and Cinoman. Conclusion The Examiner's decision to reject claims 1-7, 11, 16, and 17 is AFFIRMED. The Examiner's decision to reject claims 8-10 and 12-15 is REVERSED. 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-IN-PART 11 Copy with citationCopy as parenthetical citation