Ex Parte Singer et al

Patent Trial and Appeal Board

Apr 11, 2016

12752570 (P.T.A.B. Apr. 11, 2016)

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.
12/752,570 04/01/2010 Debra L. Singer 09006462A2 2734
7590 04/11/2016
Intellectual Property Law Department
PPG Industries, Inc.
One PPG Place - 39th Floor
Pittsburgh, PA 15272
EXAMINER
JONES JR., ROBERT STOCKTON
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
04/11/2016 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 DEBRA L. SINGER, DENNIS A SIMPSON, JOHN M. DUDIK,
ANTHONY M. CHASSER, KAM LUN LOCK, RICHARD WOODS, and
NIGEL FRANCIS MASTERS1
____________

Appeal 2014-002483
Application 12/752,570
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, CHRISTOPHER M. KAISER, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–8, 10, 12–15, 17, 18, and 21–23. An oral hearing was held on
March 29, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, the real party in interest is PPG Industries
Ohio, Inc. App. Br. 1.
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BACKGROUND
The subject matter on appeal relates to branched polyesters prepared
by free radical polymerization of the double bonds of an unsaturated
polyester prepolymer. Spec. ¶ 1; Claim 1. Claim 1 is reproduced below
from page 8 (Claims Appendix) of the Appeal Brief:
1. A crosslinkable branched polyester polymer prepared by free
radical polymerization of a double bond of a first unsaturated
polyester prepolymer with a double bond of a second unsaturated
polyester prepolymer, wherein each prepolymer independently
comprises:
a) a hard segment;
b) a polyol segment; and
c) an unsaturated polycarboxylic acid and/or an anhydride and/or
ester thereof.

EVIDENCE RELIED ON BY THE EXAMINER
Misev et al. (“Misev ’099) US 5,763,099 June 9, 1998
Barrio US 6,214,898 B1 Apr. 10, 2001
Koenraadt et al. US 6,812,269 B2 Nov. 2, 2004
T.A. Misev et al., Powder coatings technology: new developments at the
turn of the century, 34 Progress in Organic Coatings 160 (1998) (“Misev
’98”)

REJECTIONS ON APPEAL
1. Claims 1–3, 5–7, 10–15, 17, 18, and 21 are rejected under 35
U.S.C. § 102(b) as anticipated by Barrio.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barrio.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barrio, further in view of Misev ’099.
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4. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barrio, further in view of Misev ’98.
5. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barrio, further in view of Koenraadt.

ANALYSIS
The Appellants argue the claims subject to Rejection 1 as a group.
We select claim 1 as representative, and the remaining claims subject to
Rejection 1 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellants present no separate arguments for the claims subject to
Rejections 2–4, which depend (directly or indirectly) from claim 1.
Therefore, those claims will likewise stand or fall with claim 1. The
Appellants present a separate argument for claim 23, which is subject to
Rejection 5. Accordingly, we limit our discussion to claims 1 and 23.
After review of the cited evidence in the appeal briefs and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. Accordingly, we sustain the rejections for reasons set forth by
the Examiner in the Answer. See generally Ans. 2–17. We add the
following for emphasis and completeness.

A. Claim 1
The Examiner finds, inter alia, that Barrio teaches a crosslinkable
branched polyester polymer prepared by “a process identical to that
described in the instant specification.” Ans. 2–4. Concerning whether
Barrio’s polymer is “crosslinkable,” the Examiner finds that “Barrio’s
product is expected to be identical in structure to the claimed product, and
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will therefore be crosslinkable.” Id. at 3. Alternatively, the Examiner finds
that a person of ordinary skill in the art would have understood Barrio’s
polymer to be crosslinkable because it possesses terminal hydroxyl or
carboxyl functional groups, “which permit a dual crosslinking.” Id. at 3–4.
The Appellants argue that Barrio’s polymer is not “crosslinkable”
because it is already crosslinked or cured. See App. Br. 3–4; Reply Br. 2–3.
The Appellants allege, by contrast, that after the free radical polymerization
of claim 1, “the resulting polyester polymer . . . retains functionality that can
be further crosslinked.” App. Br. 3–4.
At the outset, we note that claim 1 is a product-by-process claim. “If
the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985). In this case, the Appellants do not meaningfully dispute
the Examiner’s repeated finding that the processes of Barrio and claim 1 are
identical. E.g., Ans. 3, 4, 10, 13, 14. “[W]hen the PTO shows sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 1255
(CCPA 1977) (“Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”).
The Appellants have not identified a patentable distinction between
the claimed crosslinkable branched polyester polymers and the polyester
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polymers of Barrio. While the Appellants insist that Barrio teaches cured
polymers that are already crosslinked, they provide no persuasive
explanation as to how their polymers, made by an identical process, differ
structurally from those of Barrio. As the Examiner explains, Ans. 4, the
Appellants’ Specification teaches that the polyester polymers are formed by
free radical polymerization and that “the terminal hydroxyl groups will
remain unreacted in the polyester of the present invention. . . . [and] can then
be crosslinked with another component,” Spec. ¶ 23. Barrio likewise
teaches free radical polymerization resulting in a polymer having “terminal
hydroxyl or carboxyl functions, which . . . likewise permit a dual
crosslinking” when combined with another component. Barrio at 3:36–43.
Thus, the processes and resulting products of claim 1 and Barrio appear to
be the same.
The Appellants’ assertion that “crosslinking across the double bonds
and crosslinking through any functionality [i.e., terminal hydroxyl groups]
that may be on the polyester occurs at the same time” in Barrio, App. Br. 4,
and their reliance on Barrio’s teaching that “[t]he application should be
finished off in all cases by the corresponding polymerization of the
coating . . . ,” Reply Br. 2, do not persuade us otherwise. As the Examiner
explains, while Barrio describes dual crosslinking, Barrio’s provided
example “does not include an additional crosslinking agent” that would be
required to crosslink the terminal hydroxyl and carboxyl groups, see Barrio
at 3:39–43 (reciting potential crosslinking agents); Spec. ¶¶ 33–34 (reciting
“suitable crosslinkers,” many of which overlap those disclosed by Barrio),
and therefore would result in a polymer in which free radical polymerization
has occurred, but terminal hydroxyl and/or carboxyl groups remain. Ans. 12
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(citing Barrio cols. 5–6). Therefore, “further crosslinking [would be]
possible.” Ans. 12.
Regardless of whether Barrio’s polymer is considered to be “cured”
after free radical polymerization, the Appellants provide no basis to reject
the Examiner’s finding that at least some terminal hydroxyl and/or carboxyl
groups would remain, and that those groups could be further crosslinked.
See Reply Br. 3. The Appellants’ assertion that Barrio’s “reaction product
cannot be further crosslinked,” id., is contrary to the teachings of Barrio, and
the Appellants’ argument fails to identify any structural difference between
Barrio’s free radical polymerization product and the claimed product. As
the Examiner explains, Ans. 13, the Appellants’ focus on the word “cured”
appears to be a semantic dispute that fails to identify a structural difference
that might overcome the Examiner’s rejection.
For those reasons, we affirm the Examiner’s rejection of claim 1.

B. Claim 23
Claim 23 depends from claim 12. Both claims are reproduced below
from the Claims Appendix of the Appeal Brief:
12. A coating comprising the polyester polymer of claim one and a
crosslinker therefor.

23. The coating of claim 12, wherein said coating is a liquid coating.

As noted above, the Appellants do not present separate arguments for
claim 12; it therefore falls with claim 1. The issue before us is whether it
would have been obvious to a person of ordinary skill in the art to provide
the coating of Barrio, which meets the limitations of claim 12, in liquid
form.
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The Examiner finds that Barrio does not teach a coating in the form of
a liquid, but that Koenraadt teaches several benefits to using coatings such as
those of Barrio in liquid form. See Ans. 9. The Examiner concludes that
preparing Barrio’s coating as a liquid would have been obvious because it
results “in a number of benefits such as eliminating dust formation; use of
smaller particle sizes for more even coatings; application with common
equipment rather than specialized electrostatic spray guns or fluidized bed
technology; increased formulation flexibility; and easier
filtration/purification.” Id. at 10.
The Appellants argue that “[p]owder coating technology and liquid
coating technology can be quite distinct, and are not necessarily
interchangeable. Indeed, there is no guarantee that a powder coating could
be put into an aqueous dispersion and successfully work as a coating.” App.
Br. 6.
We are not persuaded by that argument. An obviousness rejection
does not require a “guarantee” of success; it requires only a reasonable
expectation of success. In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir.
1988) (“Obviousness does not require absolute predictability of success. . . .
all that is required is a reasonable expectation of success.”). The references
here provide that. The Appellants do not dispute any of the Examiner’s
findings concerning Koenraadt, nor do they provide any basis to reject the
Examiner’s finding that Koenraadt’s teachings would apply to the coatings
of Barrio.
The Appellants’ argument that Barrio provides no motivation to
prepare liquid coatings, see App. Br. 6, is unpersuasive because, as
explained above, the Examiner relies on Koenraadt to supply the motivation
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to prepare liquid coatings from powders such as that of Barrio. Cf. In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
Based on the arguments presented, we are not persuaded of reversible
error in the Examiner’s rejection of claim 23.

CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1–8, 10, 12–15, 17,
18, and 21–23.
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