Ex Parte SHI et al

Patent Trial and Appeal Board

Jan 16, 2018

13838501 (P.T.A.B. Jan. 16, 2018)

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.
13/838,501 03/15/2013 JINZHEN SHI MASB0107PUS 9360
101011 7590 01/18/2018
Brooks Kushman P.C. / Masco Corporation
1000 Town Center, 22nd Floor
Southfield, MI 48075
EXAMINER
JOHNSTON, BRIEANN R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
01/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINZHEN SHI, MING-REN TARNG, JIGUI LI,
SHUXUE ZHOU, LIMIN WU, and LING YANG
Appeal 2017-003793
Application 13/838,501
Technology Center 1700
Before JEFFREY T. SMITH, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our Opinion, we refer to the Specification filed March 15, 2013
(“Spec.”); the Final Action mailed December 30, 2015 (“Final Act.”); the
Appeal Br. filed July 28, 2016 (“Appeal Br.”); the Examiner’s Answer
mailed November 3, 2016 (“Ans.”); and the Reply Brief filed January 3,
2017 (“Reply Br.”).
Appeal 2017-003793
Application 13/838,501
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—4, 7—15, and 18—26.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal relates to hydrophilic coatings with
improved stain resistance, water repellency, and resistance to dirt adherence.
Spec. 1 5. Claim 1, reproduced below with the disputed limitations
italicized, is illustrative of the claimed subject matter:
1. A composition for forming a hydrophilic coating
comprising:
water in an amount from about 0 to 95 percent of the
total weight of the composition;
an organic binder having an average particle size
greater than 10 nm and less than 60 nm, the organic binder
being selected from the group consisting of acrylics,
polyurethane dispersions, solution polymers, styrene acrylate
dispersions, urethane-acrylic hybrid dispersions, aliphatic
polyurethane dispersions, acrylic dispersions, and combinations
thereof;
an inorganic binder having an average particle size from
about 1 to about 40 nm wherein the inorganic binder is selected
from the group consisting of colloidal silicas, silica sols,
silicates, and combinations thereof and
an inorganic photocatalyst that catalyzes an oxidation-
reduction reaction, the photocatalyst including a photocatalytic
metal oxide having an average particle size from about 1 to
about 50 nm.
2 Appellant is Behr Process Corporation, the applicant and real party in
interest. BIB Data Sheet, Appeal Br. 2.
3 Appellant amended the claims to cancel claims 5, 6, 16, and 17, and add
claims 22—26 with the Request for Continued Examination filed March 10,
2015.
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Application 13/838,501
Appeal Br. Claims App’x 1.
REFERENCES
The Examiner relies on the follow prior art in rejecting the claims on
appeal:
Mizutani et al. US 5,780,530 July 14, 1998
(“Mizutani”)
Niguma et al. US 2009/0286068 Al Nov. 19, 2009
(“Niguma”)
Tomita et al. JP 2010-0187674 Jan. 28, 2010
(“Tomita”)
REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C. § 103(a): (1) claims 1—4, 6—15, and 18—22 over
Tomita in view of Mizutani;5 and (2) claims 1—4, 7—8, 10, 12—15, 18—21, and
23—26 over Niguma. Final Act. 2—8; Appeal Br. 3—8.
OPINION
Obviousness rejection over Tomita in view of Mizutani
Appellant argues claims 1—4, 7—15, and 18—22 as a group. Appeal Br.
3—6. We select claim 1 as representative of the group. 37 C.F.R. §
41.37(c)(i)(iv).
4 Appellant does not challenge the Examiner’s use of a machine translation
of Tomita, thus waives any objection to its evidentiary value. See In re
Orbital Tech. Corp., 603 Fed. Appx. 924, 930 (Fed. Cir. 2015) (Appellant
waived claims it might have had related to machine translation by pursuing
appeal on that record.).
5 The Examiner included claim 17 in the rejection, although claim 17 was
cancelled previously and the cancellation was entered by the Examiner.
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Application 13/838,501
The Examiner finds that Tomita teaches a coating composition
comprising a polyhydroxy siloxane solution, an aqueous organic binder, and
an inorganic photocatalyst. Final Act. 2—3. The Examiner finds that Tomita
teaches the polyhydroxy siloxane solution is a condensation product of, e.g.,
MKC silicate MS51. Id. at 3. The Examiner finds that Tomita does not
teach the particle size of the silicate condensate. Id. However, the Examiner
finds that Mizutani teaches coating compositions comprising a
hydrolysate/polycondensate of tetramethoxysilane, such as MKC silicate
MS51. Id. The Examiner finds that Mizutani teaches that MCK silicate
MS51 has an inertial radius of less than 10 nm. Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have used a
polycondensate of MKC methyl silicate MS51 in Tomita where the particle
size is 10 nm or less, as Mizutani teaches this particle size is known in this
type of composition. Id.
Appellant argues that the combination of Tomita and Mizutani fails to
disclose an inorganic binder with an average particle size from about 1 to
about 40 nm, selected from the group consisting of colloidal silicas, silica
sols, silicate, and combinations thereof. Appeal Br. 4. Appellant argues that
Tomita teaches a composition comprising a polyhydroxy siloxane, which is
a condensation product of MKC silicate. Id. Appellant further argues that
Tomita’s polyhydroxy siloxane is not a “colloidal silica, silica sol, or
silicate,” as required by claim 1. Id. Appellant contends that, because
Tomita requires a polycondensate of an inorganic binder silicate—and not a
silicate itself—Tomita does not teach using a silicate in its coating
composition. Id. Appellant argues that Mizutani also teaches using a
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Application 13/838,501
polycondensate of a silicate, but not a silicate. Id. Appellant also argues
that Mizutani teaches that the particle size of the polycondensate of silicate,
but not of the silicate, is 10 nm or less. Id. at 5.
Appellant also contends that Mizutani cannot be combined with
Tomita because Mizutani teaches a thermosetting resin or coating, which is
not compatible with Tomita’s coatings. Id.
The Examiner responds that in the Specification Appellant neither
provides an explicit definition of “silicate” nor discloses specific silicates
which can be used as inorganic binders. Ans. 9. The Examiner points out
that the broadest reasonable interpretation of the claim term in light of the
specification is to be used. Id. at 8. The Examiner finds that Tomita refers
to component (A) as an inorganic matrix and discloses “(A) to include
commercially available products such as ‘MCK silicate MS51’.” Id. The
Examiner does not provide the broadest reasonable interpretation of
“silicate” in light of the Specification, but implies that the term encompasses
polycondensates made from silicates. Id. at 9.
Appellant replies that Tomita’s polyhydroxy siloxane is not a
colloidal silica, silica sol, or silicate. Reply Br. 1.
Tomita states that the condensate can be prepared using MKC
silicates, but not that MKC silicates (as opposed to polyhydroxy siloxanes
made using MKC silicates) may be a component of the inorganic matrix.
Tomita 132.
We agree with Appellant that the Examiner’s rejection of claim 1 is
not well-founded. Tomita’s polycondensates made from silicates are neither
inorganic nor “colloidal silicas, silica sols, silicates, [or] combinations
thereof.” We reverse the Examiner’s decision to reject claim 1 over Tomita
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Application 13/838,501
in view of Mizutani. For the same reasons, we likewise reverse the rejection
of claims 2-4, 7—15, and 18—22.
Obviousness rejection over Niguma
Appellant argues claims 1—4, 7, 8, 10, 12—15, 18—21, and 23—26 as a
group. Appeal Br. 6—8. We select claim 1 as representative of the group.
37C.F.R. §41.37(c)(i)(iv).
The Examiner finds that Niguma teaches polymer emulsion particle
(B-l) is prepared using acrylic monomers, and thus meets the “organic
binder being selected from . . . acrylics . . . acrylic dispersions” required by
claim 1. Final Act. 7. The Examiner finds that butyl acrylate and acrylic
acid make up 25% of the polymer emulsion particles and the final polymers
therefore can be described as acrylics or acrylic dispersions. Id. at 9.
Appellant argues that Niguma fails to disclose claim 1 ’s required
“organic binder selected from the group consisting of acrylics, polyurethane
dispersions, solution polymers, styrene acrylate dispersions, urethane-acrylic
hybrid dispersions, aliphatic polyurethane dispersions, acrylic dispersions,
and combinations thereof.” Appeal Br. 7. Appellant contends that
Niguma’s polymer emulsion particle is a hydrolyzed silicon compound
obtained by polymerizing the silicon compound and the amide-group-
containing vinyl monomer in the presence of water and an emulsifier. Id.
(citing Niguma H 25, 79). Appellant argues that the polymer component in
Niguma includes significant amounts of phenyltrimethoxysilane, 3-
methacryloxypropyltrimethoxysilane, diethylacrylamide, and a reactive
emulsifier. Id. (citing Niguma 213—214). According to Appellant, the
acrylic monomers in Niguma are not polymerizing in the reactor; rather,
silicon compounds are hydrolyzing. Id. at 8. Appellant contends that the
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resulting final polymer after the silicon compound is hydrolyzed would not
be defined as an acrylic or acrylic dispersion. Id.
The Examiner responds that Niguma exemplifies the organic binder as
a polymer emulsion prepared from 86 g butyl acrylate, 133 g
phenyltrimethoxysilane, 1.3 g 3-methacryloxypropyltrimethoxysilane, 137 g
diethyl acrylamide, and 3 g acrylic acid. Ans. 10. The Examiner finds that
Appellant does not provide an explicit definition of acrylic, solution
polymers or acrylic dispersion, or disclose specific examples of possible
acrylics, solution polymers or acrylic dispersions which can be used. Id.
The Examiner finds that “[bjutyl acrylate, 3-methacryloxypropyltri-
methoxysilane, diethyl acrylamide and acrylic acid all possess acrylic
functionalities, hence the organic polymer emulsion of Niguma can be
considered an acrylic.” Id. at 10—11. The Examiner finds that Appellant
does not exclude copolymers of acrylic monomer with other, non-acrylic
monomers. Id. at 11. The Examiner further finds that the emulsion in
Niguma are polymers dispersed in solution, which also meets the claimed
“solution polymers.” Id.
Appellant replies that one of ordinary skill in the art would not
categorize Niguma’s polymer emulsion as an acrylic or acrylic dispersion.
Reply Br. 2. However, it is well settled that arguments of counsel cannot
take the place of factually supported objective evidence. See, e.g., In re
Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
Appellant has not shown that the Examiner reversibly errs in rejecting
claim 1 over Niguma. Although Appellant’s use of “consisting of’ in
describing the organic binder of the claims is close-ended, the specified
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Application 13/838,501
group contains some broad terms, such as “acrylics, . . . solution polymers,
[and] acrylic dispersions.” Appeal Br. Claims App’x 1. The Examiner
supports identification of Niguma’s organic polymer emulsion as
encompassed by these broad terms.
We sustain the rejection of claim 1. Appellant has not separately
argued for patentability of claims 2-4, 7, 8, 10, 12—15, 18—21, and 23—26,
therefore we sustain the rejection of these claims as well.
DECISION
The rejection of claims 1—4, 7, 8, 10, 12—15, 18—21, and 23—26 over
Niguma is affirmed.
The rejection of claims 1—4, 6—15, and 18—22 over Tomita in view of
Mizutani 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) (2015).
AFFIRMED-IN-PART
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