Ex Parte Niederst et alDownload PDFPatent Trial and Appeal BoardMay 26, 201613048051 (P.T.A.B. May. 26, 2016) Copy Citation 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. 13/048,051 03/15/2011 Ken W. Niederst 09006671A1 7952 24959 7590 05/26/2016 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER DOLLINGER, MICHAEL M ART UNIT PAPER NUMBER 1766 MAIL DATE DELIVERY MODE 05/26/2016 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 KEN W. NIEDERST, GREGORY J. MCCOLLUM, MICHAEL A. ZALICH, and VENKATESHWARLU ____________ Appeal 2014-003602 Application 13/048,051 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal the Examiner’s final rejection of claims 14–25. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify PPG Industries Ohio, Inc. as the Real Party in Interest. App. Br. 1. Appeal 2014-003602 Application 13/048,051 2 The Claimed Invention Appellants’ disclosure relates to a thermosetting composition comprising (1) a resinous binder having hydroxyl groups and carboxylic ester groups, and (2) phosphotungstic acid. Abstract. Claim 14 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 6): 14. A thermosetting coating composition comprising: (a) a resinous binder having hydroxyl groups and carboxylic ester groups, said resinous binder curable through transesterification, and, (b) a catalyst for transesterification selected from phosphotungstic acid. The References The Examiner relies on the following prior art in rejecting the claims on appeal: Verdol et al., US 3,390,105 June 25, 1968 (hereinafter “Verdol”) Paumard US 5,827,939 Oct. 27, 1998 Niederst et al., US 2012/0237705 A1 Sept. 20, 2012 (hereinafter “Application No. 13/048062”) The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 14–19, 22, 24, and 25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Verdol. 2. Claim 23 stands rejected under 35 U.S.C. § 102(b) as being anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over Verdol. Appeal 2014-003602 Application 13/048,051 3 3. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious over Verdol. 4. Claims 14–19 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–4 and 6–11 of co-pending Application No. 13/048062. OPINION2 Rejection 1 Appellants do not present separate arguments for any of the claims in response to Rejection 1. We select claim 14 as representative, and the remaining claims stand or fall with claim 14. The Examiner finds that Verdol discloses the claimed invention, including all the limitations of claim 14. Ans. 3, 4 (citing Verdol, col. 4, ll. 4–46, col. 16, ll. 5–44, and Example X). Appellants argue that the Examiner’s rejection should be reversed because “Verdol does not disclose phosphotungstic acid as a transesterification catalyst as claimed.” App. Br. 3. We are not persuaded by Appellants’ arguments. To serve as an anticipatory reference, “the reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Based on the record before us, the Examiner’s finding that Verdol discloses all of the limitations of 2 We affirm the Examiner’s Rejections 1, 2, and 3 for the reasons set forth in the Answer, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. Appeal 2014-003602 Application 13/048,051 4 Appellants’ claimed invention is well-supported by the evidence. Verdol, col. 4, ll. 4–46, col. 16, ll. 5–44, and Example X. In particular, as the Examiner found (Ans. 3), and contrary to Appellants’ argument, Verdol does disclose phosphotungstic acid as a catalyst as claimed. Verdol, col. 22, ll. 13-16 and Example X. Indeed, as found by the Examiner (Ans. 6), phosphotungstic acid “is present in the Verdol composition in the claimed amount when the composition underdoes transesterification and was known in the art as “a transesterification catalyst.” Paumard, Abstract, col. 2, ll. 7– 17. We discern no reversible error in the Examiner’s analysis and factual findings in this regard. Moreover, we agree with the Examiner (Ans. 6) that the phrase “[f]or transesterification,” as recited in claim 14, is an intended use recitation, and thus, does not serve to distinguish Appellants’ claimed composition from the prior art. In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974). Also, as noted by the Examiner (Ans. 6), Appellants have not given a sufficient reason why the phosphotungstic acid would not have been expected to act as a transesterification catalyst in Verdol’s disclosed composition. Accordingly, we affirm the Examiner’s rejection of claims 14–19, 22, 24, and 25 under 35 U.S.C. § 103(a) as being anticipated by Verdol. Rejection 2 For this rejection, the Examiner finds that claim 23 is anticipated by Verdol under 35 U.S.C. § 102(b) or, in the alternative, claim 23 is obvious over Verdol under 35 U.S.C. § 103(a). Ans. 4, 5. Appellants argue that the Examiner’s rejection should be reversed because “the phosphotungstic acid in Example 10 is not functioning as a transesterification catalyst but [as] a catalyst for decomposition of tertiary Appeal 2014-003602 Application 13/048,051 5 alkoxy groups” and because the Examiner’s finding “that the Verdol compositions could be applied as a coating and cured is pure speculation.” App. Br. 4. We are not persuaded by this argument because Verdol’s teachings are not limited to the disclosures in its examples. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure of specific working examples.”). Moreover, Appellants do not provide an adequate technical explanation or direct us to sufficient evidence in the record to support the argument. Attorney argument cannot take the place of evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ conclusory assertions that the phosphotungstic acid is “not functioning as a transesterification catalyst” and that the Examiner’s findings are “pure speculation,” without more, are insufficient to establish reversible error in the Examiner’s obviousness conclusion and findings (Ans. 4, 5) regarding the patentability of claim 23—which, in contrast, are well-supported by the evidence and based on sound technical reasoning. Verdol, col. 4, ll. 4–46, col. 6, ll. 55–57, col. 16, ll. 5–44, Example X, and Example IX. In addition, we agree with the Examiner (Ans. 6, 7) that the claim term “coating” is an intended use limitation and that Appellants have failed to give an adequate reason why the composition of Verdol could not have been applied as a coating. In re Pearson, 494 F.2d at 1403. Appeal 2014-003602 Application 13/048,051 6 Accordingly, we affirm the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Verdol.3 Rejection 3 Appellants do not present a separate argument for claim 20 or 21 in response to Rejection 3. Accordingly, we select claim 20 as representative, and claim 21 stands or falls with claim 20. Appellants argue that this rejection should be reversed because Verdol does not teach or suggest “combining two or more polymeric materials, each of which contain hydroxyl groups and in which the composition undergoes a transesterification cure.” App. Br. 4 (citing Verdol, col. 13, l. 75–col. 15, l. 2). We do find this argument persuasive because Appellants do not provide an adequate technical explanation or direct us to sufficient evidence in the record to support it. In re De Blauwe, 736 F.2d at 705. Moreover, the Examiner’s findings and obviousness conclusion (Ans. 5) regarding the patentability of the claims are well-supported by the evidence and based on sound technical reasoning. Verdol, col. 22, ll. 70–75, col. 9, l. 10, col. 16, ll. 5–20. Appellants’ argument is insufficient to establish reversible error or adequately rebut the Examiner’s analysis and findings in this regard. Accordingly, we affirm the Examiner’s rejection of claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Verdol. 3 Because we affirm the Examiner’s Rejection 2 under 35 U.S.C. § 103(a), we need not address the Examiner’s “alternative” findings and conclusion under 35 U.S.C. § 102(b) that claim 23 is anticipated by Verdol. Appeal 2014-003602 Application 13/048,051 7 Rejection 4 With respect to the Examiner’s rejection for obviousness-type double patenting (Final Act. 4), Appellants offer no substantive arguments on the merits. In fact, Appellants do not address or mention the rejection at all in the Appeal Brief. Nonetheless, because the reference that forms the basis of the Examiner’s rejection, i.e., Application No. 13/048062, was abandoned on April 28, 2015, we declare this rejection moot. DECISION/ORDER The Examiner’s Rejections 1, 2, and 3 of claims 14–25 are affirmed. The Examiner’s Rejection 4 is declared moot. 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 Copy with citationCopy as parenthetical citation