Ex Parte Siebenlist et al

Patent Trial and Appeal Board

Sep 26, 2017

11915883 (P.T.A.B. Sep. 26, 2017)

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.
11/915,883 07/22/2008 Ronnie Siebenlist IR3776NP 1273
31684 7590
ARKEMA INC.
900 First Avenue
Bldg 4-2
King of Prussia, PA 19406
09/28/2017 EXAMINER
WEDDLE, ALEXANDER MARION
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
steven.boyd @ arkema.com
elizabeth.gilson @ arkema.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONNIE SIEBENLIST, GUNTHER El SEN, and
LEENDERT HOEKMAN
Appeal 2017-001897
Application 11/915,8831
Technology Center 1700
Before RAE LYNN P. GUEST, JULIA HEANEY, and BRIAN D. RANGE,
Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—7, 11, 12, and 16—202 under 35 U.S.C. § 103(a)
1 Appellants identify the real party in interest as Arkema Inc. Appellants’
Appeal Brief 3, filed March 15, 2016 (hereinafter “Br.”).
2 Independent claim 23 is identified in the listing of the first group of claims
rejected in the Final Office Action, dated March 16, 2015 (“Final Act.”) (see
Final Act. 2) but is only specifically discussed with respect to the second
rejection of claims 21—23. Since independent claim 23 includes the same
subject matter recited in claims 21 and 22, we think the Examiner erred in
grouping claim 23 in the first rejection. We find this harmless error and
consider claim 23 properly grouped only in the second rejection.
Appeal 2017-001897
Application 11/915,883
as being unpatentable over Maruyama3 in view of Wright4 and Shibata5 and
as evidenced by Sivakumar6 and to reject claims 21—23 under 35 U.S.C.
§ 103(a) as being unpatentable over Maruyama, Wright, and Shibata and
further in view of Overbeek.7 See generally Examiner’s Final Office Action
2, 7; Examiner’s Answer 2, dated September 16, 2016 (“Ans.”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a scratch masking coating for
glass bottles which enhances appearance. Specification (“Spec.”) 1:8—10.
Emulsion based protective glass coatings known in the art typically
destabilize the emulsion by drying, such that upon evaporation of a water
phase, an oil phase coating is deposited on the glass surface. Spec. 2:12—31.
Appellants’ invention is an oil in water emulsion that provides flexibility in
shipping and handling by destabilizing or “breaking” the emulsion in a
controlled manner, namely by the addition of an emulsion breaker or heat
either before, during, or after the application of the emulsion to the glass
container. Spec. 3:6—30.
Independent claim 1 is exemplary of the subject matter on appeal and
is reproduced below (with some indentations added for clarity):
3 U.S. Patent 4,467,068, issued August 21, 1984 to Kazo Maruyama
(“Maruyama”).
4 U.S. Patent 6,060,555, issued May 9, 2000 to Winfield S. Wright
(“Wright”).
5 U.S. Patent 5,346,544, issued September 13, 1994 to Masatoshi Shibata et
al. (“Shibata”).
6 U.S. Patent 5,413,719, issued May 9, 1995 to Ananthasubra Sivakumar et
al. (“Sivakumar”).
7 U.S. Patent 4,983,662, issued January 8, 1991 to Gerardus C. Overbeek et
al. (“Overbeek”).
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Application 11/915,883
1. A method of forming a scratch masking coating on
a glass surface comprising the steps of:
(A) applying to the glass surface a scratch masking
emulsion consisting of
an oil in water emulsion or dispersion of an oil in
water, wherein the oil in water emulsion or dispersion is
prepared using
at least one non-ionic, cationic or anionic
emulsifier,
wherein said oil is selected from the group
consisting of polyolefins, paraffin oils, fatty acid esters of
up to 40 carbons atoms and mixtures thereof; and
(B) mixing a sufficient amount of an emulsion
destabilizer selected from the group consisting of acids,
polyvalent ionic materials or mixtures thereof, with said scratch
masking emulsion,
wherein said acids are selected from the group
consisting of citric acid, lactic acid, acetic acid,
hydrochloric acid, sulfuric acid and mixtures thereof, and
said polyvalent ionic materials are selected from
the group consisting of salts of calcium, iron, sodium,
magnesium and mixtures thereof,
whereby said oil in water emulsion or dispersion is
destabilized by the emulsion destabilizer resulting in breaking
of the scratch masking emulsion and deposition of the oil on
said glass surface; thereby forming a scratch masking coating
on said glass surface.
Br. 13, Claim App’x.
Unless otherwise indicated, we adopt the Examiner’s findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis.
With respect to the first rejection, Appellants present arguments with
respect to all the rejected claims as a group (Br. 7), for which we select
independent claim 1 as representative. Appellants do not advance any
additional arguments for the second rejection, instead they assert claims 21—
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Application 11/915,883
23 are patentable for the same reasons as the independent claims. Br. 12.
Thus, the issues presented for both rejections are the same.
II. DISCUSSION
Appellants initially argue that Maruyama teaches conventional
breaking of an emulsion by water evaporation and not the “controllable”
breaking of the present invention. Br. 8. We note that “controllable”
breaking is not recited in the claims. The claims have no time or
temperature requirements with respect to the breaking step. In other words,
the breaking need not occur instantly and may require some temperature
change. Moreover, the Examiner is relying on Wright, not Maruyama, for
teaching the step of using citric acid to instantly destabilize an emulsion,
particularly in moist environments where normal curing is not going to be
effective. See Final Act. 3. In other words, Wright specifically teaches
controllable breaking of an emulsion.
Appellants argue that Maruyama’s siloxane-based oil composition is
“excluded by” the claims “which specify the nature of the oil in water
emulsion/dispersion and the destabilizer.” Br. 8. Indeed, Maruyama teaches
a mixture of polyorganosiloxanes as the oil in an oil in water emulsion and
teaches fatty acid esters as a non-ionic surfactant. Maruyama, col. 2,11. 50—
53, col. 6,11. 57—58. Nonetheless, the Examiner relies on Shibata’s teaching
of fatty acid triglycerides as the oil component in a glass coating oil in water
emulsion. Final Act. 3; Ans. 3. Fatty acid triglycerides are glycol fatty acid
esters, as recited in the claims. The Examiner specifically determines that it
would have been obvious to modify the process of Maruyama in view of
Shibata by using the fatty acid esters of Shibata, because Shibata suggests
that these fatty acid esters are suitable to form oil in water emulsions for
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Appeal 2017-001897
Application 11/915,883
coating glass containers, which is the same purpose taught by Maruyama.
Final Act. 4.
Although Appellants argue that Shibata’s fatty acid esters are not
emulsion breakers, it is clear from the record that the Examiner is relying on
Shibata only for the specific oil in water emulsion, as an alternative to the
polyorganosiloxanes oil in water emulsion of Maruyama. See Final Act. 4.
Our reviewing Court has often held that Appellants cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See, e.g., In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants argue that Wright could only teach breaking the surface of
the emulsion, not underlying portions of the emulsion, which would
ultimately dry normally. Br. 10. The Examiner responds that the liquid
citric acid would diffuse into the coating and mix to some extent with the
coating to break the emulsion. Ans. 5. We agree with the Examiner that the
claims do not require any more than breaking a surface of an emulsion, in
those situations where the emulsion has already been applied to a glass
substrate prior to mixing with a destabilizer.
In particular, claim 1 is silent as to the order of applying the emulsion
and the destabilizer to the glass surface and encompasses a method applying
the emulsion first and then applying the destabilizer. Indeed, claim 6 recites
that “said emulsion destabilizer is applied to the glass surface after
application of the scratch masking emulsion.” Wright teaches a process that
mixes the citric acid destabilizer only after the emulsion is applied to the
substrate (roof). The process steps of Wright, thus, meet the “mixing”
requirement recited in the claims.
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Application 11/915,883
Appellants argue that Wright is not directed to a glass coating, but
rather a roof coating. Br. 10. In particular, Appellants argue that a skilled
artisan would not have predicted that Wright’s benefit, adherence to roofs,
would predictably apply to a coating’s adherence to glass, particularly when
the oil in water emulsion comprises different oils. Br. 10. Appellants
further contend that the Examiner has not shown sufficient reason to
combine the references in light of these differences in substrates. Br. 11.
We agree with the Examiner that Wright’s teaching is not limited to
latex roof emulsions. Wright initially explains technical aspects of oil in
water emulsions for coatings in general, including coatings in which an oil
phase is made from hydrocarbons, resins, waxes, nitrocellulose, alkyds,
rubber, vinyls, and acrylics. Wright, col. 1,11. 49-55; see generally Wright,
col. 1,1. 14 to col. 3,1. 46. Wright explains the well-known principle that in
oil in water emulsions, surfactants keep oil components dispersed by
electrostatic repulsion between the cationic or anionic charges of a
surfactant. Wright, col. 3,11. 28—36. Wright also explains that it is a well-
known principle that emulsions may be coagulated “by the addition of
surfactants or electrolyte with opposite charge to the ions used to stabilize
[the oil particles in the emulsion].” Wright, col. 3,11. 36-40.
As noted by the Examiner, Wright teaches that these principles are
particularly useful when using emulsions in wet conditions. Final Act. 3. In
fact, Wright teaches that using a destabilizer permits the use of oil in water
coatings in wet weather, even in the face of raindrops, yet does not interfere
with other valuable properties of such coatings, such as good adhesion to the
underlying material. Wright, col. 4,11. 28—33.
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Application 11/915,883
Appellants provide no technical or scientific reasoning why these
teachings would not be reasonably pertinent to the problem the inventor was
trying to solve. According to the Specification, the invention solves the
problem of the presence of moisture on glass bottles from condensation to
the extent that such moisture adversely impacts water evaporation from oil
in water emulsions. See Spec. 2:22—26, 4:1—5.
Because Wright teaches a process for forming an oil coating from an
oil in water emulsion in wet conditions without any effect on adhesion to the
underlying material (Wright, col. 4,11. 28—33), the skilled artisan would have
applied this teaching to coatings for glass bottles, such as taught by
Maruyama or Shibata, where such coatings are being applied in humid or
wet environments. We agree with the Examiner that there is no evidence of
unpredictability or undue experimentation, given Wright’s teaching of
coagulating emulsions in wet conditions. See Ans. 6.
Finally, Appellants argue that breaking the emulsion of Maruyama
using the citric acid destabilizer of Wright would be contrary to the purpose
of Maruyama, which relies on water evaporation to break the emulsion.
Appellants’ argument is not persuasive because no skilled artisan would
reasonably understand the purpose of Maruyama to be curing an emulsion
by water evaporation. Rather, the purpose of Murayama is the same as the
purpose of the present invention, namely to apply a coating for glass
surfaces such as bottles, to mask grazing and scratching, via an oil in water
emulsion. Maruyama, col. 1,11. 6—8. The skilled artisan would have used a
destabilizer as taught by Wright for use in wet environments where curing
by air drying would be difficult. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (“[I]f a technique has been used to improve one device, and
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Application 11/915,883
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”).
Accordingly, we find no error in the Examiner’s rejection of claims 1—
7, 11, 12, and 16-23.
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejections maintained by the Examiner.
IV. DECISION
We affirm the following Examiner’s rejections:
claims 1—7, 11, 12, and 16—20 rejected under 35 U.S.C. § 103(a) as
being unpatentable over Maruyama in view of Wright and Shibata and as
evidenced by Sivakumar and
claims 21—23 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Maruyama, Wright, and Shibata further in view of Overbeek.
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
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