11064394 (B.P.A.I. Aug. 17, 2010)

Ex Parte Reising

Board of Patent Appeals and InterferencesAug 17, 2010

11064394 (B.P.A.I. Aug. 17, 2010)

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. 11/064,394 02/23/2005 John C. Reising 2016A1 1748 7590 08/17/2010 PPG Industries, Inc. Intellectual Property Department One PPG Place Pittsburgh, PA 15272 EXAMINER KRUER, KEVIN R ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 08/17/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOHN C. REISING ____________________ Appeal 2010-004763 Application 11/064,394 Technology Center 1700 ____________________ Before CHARLES F. WARREN, TERRY J. OWENS, and CATHERINE Q. TIMM, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 I. STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1, 4, and 6-21 under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-004763 Application 11/064,394 2 We REVERSE. Appellant’s invention relates to metal and polymer substrates coated with a powder basecoat and topcoat as well as a process for coating the substrate. Claim 1 is illustrative: 1. A composite coated substrate comprising: (d) a substrate selected from the group consisting of metallic substrates, polymeric substrates and combinations thereof, wherein a surface of the substrate is essentially free of a primer coating; (e) a basecoat deposited upon the surface of the substrate, the basecoat being formed from a powder basecoating composition comprising: (i) at least one film-forming material comprising a thermosettable polyester and a curing agent; (ii) at least one reaction product of at least one cyclic carboxylic acid anhydride, at least one alkene and at least one reactant selected from the group consisting of primary amines, aliphatic polyamines, primary amino alcohols, alcohols, isocyanates and mixtures thereof, the copolymer having a number average molecular weight ranging from about 1,000 to about 20,000; and (iii) at least one flow control agent; and (f) a topcoat deposited from a liquid or powder slurry topcoating composition applied over the basecoat to provide a composite coated substrate. Appeal 2010-004763 Application 11/064,394 3 To reject claims 1, 4, 6-8, 11-16, and 19-21, the Examiner relies upon Anderson (US 6,593,417, issued Jul. 15, 2003) and Reising (US 6,715,196, issued Apr. 6, 2004) as evidence of obviousness. The Examiner further relies upon Lamers (US 6,624,276, issued Sep. 23, 2003) to reject dependent claims 9 and 10, and Panush (WO 84/01909, published May 24, 1984) to reject dependent claims 17 and 18. II. DISPOSITIVE ISSUE The issue is: Does the evidence as a whole support the Examiner’s finding of a suggestion based on the teachings of Anderson and Reising for coating the basecoat of Reising onto a substrate that is essentially free of a primer coating? We answer this question in the negative. III. DISCUSSION According to the Examiner, Anderson teaches a composite coated substrate including a metallic substrate, a basecoat, and a topcoat (Ans. 3). The Examiner finds that the substrate is free of a primer coating because Anderson is silent to the presence of such primer layers (Ans. 3-4). The Examiner acknowledges that Anderson does not describe the claimed basecoat composition (Ans. 4). But the Examiner concludes that it would have been obvious to one of ordinary skill in the art to use the basecoat of Reising as the basecoat of Anderson because the two basecoats are functionally equivalent (Ans. 4). Anderson describes coating a substrate with a polysiloxane-based basecoat and a topcoat (Anderson, col. 1, ll. 18-33). The coatings can be applied to virtually any substrate including metals and polymeric substrates Appeal 2010-004763 Application 11/064,394 4 (Anderson, col. 40, ll. 54-55). In embodiments where the substrate is for use in automobiles, Anderson provides a list of suitable metal substrates (col. 41, ll. 43-50), and does not specify that the metal surface must be primed. However, the examples use steel panels that have been primed (see, e.g., col. 54, l. 65 to col. 55, l. 2; col. 63, ll. 61-68; col. 66, ll. 24-26; col. 68, ll. 64-68; col. 76, ll. 22-24; col. 77, ll. 38-40; col. 83, ll. 64-67). Reising is directed to metal sheets coated with weldable primer and a powdered basecoat (Reising, col. 2, ll. 47-52). As pointed out by Appellant, Reising explicitly requires that the metal substrate be coated with the weldable primer (Br. 8; see also Reising, col. 2, ll. 47-52; col. 4, ll. 15-21; col. 5, ll. 37-38; Example B). All the claims require that the substrate surface be at least “essentially free of a primer coating.” We note that Appellant's Specification expressly defines a “conductive weldable primer” or “conductive weldable primer coating” to be the conductive, weldable coating described in Reising (Spec. 7 [0023]). The claims exclude the presence of primer coatings and, therefore, exclude the weldable primer of Reising. We cannot say that the Examiner has provided sufficient evidence supporting a conclusion that it would have been obvious to one of ordinary skill in the art at the time of the invention to apply the basecoat of Reising to a metal substrate that is essentially primer free. As a first matter, Anderson is directed to a basecoat of a completely different chemistry than that claimed. The question of whether or not Anderson teaches applying a polysiloxane basecoat to unprimed metal is not particularly relevant. As a second matter, while there is no dispute that Reising describes a polyester- Appeal 2010-004763 Application 11/064,394 5 type basecoat as claimed, Reising expressly requires a weldable primer between the substrate and the basecoat. The Examiner has provided no convincing reason why one of ordinary skill in the art would omit Reising’s weldable primer when applying Reising’s basecoat onto a metal substrate in contravention to the express teachings of the reference. IV. CONCLUSION As all the Examiner’s rejections depend on the flawed analysis discussed above, we cannot sustain any of the rejections. V. DECISION The decision of the Examiner is reversed. REVERSED cam PPG INDUSTRIES, INC. INTELLECTUAL PROPERTY DEPT. ONE PPG PLACE PITTSBURGH PA 15272