Ex Parte Spynda et al

Patent Trials and Appeals Board

May 15, 2019

12186249 - (D) (P.T.A.B. May. 15, 2019)

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.
12/186,249 08/05/2008 Rachael Spynda 06-1928-0101 1828
145706 7590 05/17/2019
Shumaker & Sieffert, P.A./Valspar Sourcing, Inc.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/17/2019 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):
pairdocketing@ ssiplaw.com
valspar_pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RACHAEL SPYNDA, ROBERT M. O'BRIEN,
BOBBIE LIST, and RICK BOSWELL
Appeal 2018-005593
Application 12/186,249
Technology Center 1700
Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our Decision, we refer to the Specification filed August 5, 2008
(“Spec.”) of Application 12/186,249 (“the ’249 Application”); the Final
Office Action dated April 27, 2017 (“Final Act.”); the Advisory Action
dated September 18, 2017 (“Adv. Act.”); the Appeal Brief filed November
27, 2017 (“App. Br.”); the Examiner’s Answer dated March 9, 2018
(“Ans.”); and the Reply Brief filed May 9, 2018 (“Reply Br.”).
Appeal 2018-005593
Application 12/186,249
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 7—9, 11, 13—15, 17—23, 27, 30-32, and 34. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
The claims3 are directed to beer or beverage containers having a glass
substrate coated with a coating composition and methods for making such
containers. Claims 1 and 20, reproduced below from the Claims Appendix,
illustrate the claimed subject matter:
1. A coated article comprising:
a beer or beverage container having a glass substrate; and
a cured coating applied over at least a portion of the glass
substrate, wherein the cured coating is formed from a coating
composition comprising:
a water-dispersible resin system comprising an oxirane-
functional vinyl addition polymer and an acid-functional
polymer reacted together in the presence of a tertiary amine and
water, wherein at least one of the oxirane-fimctional vinyl
addition polymer or the acid-functional polymer is an acrylic
polymer having a Tg of about 60°C to about 90°C,
a silane coupling agent,
a colorant,
a crosslinker, and
2 Appellants identify Valspar Sourcing, Inc. as the real party in interest.
App. Br. 3.
3 The Examiner did not enter claim amendments proposed by Appellants
after the Final Office Action. Adv. Act. 1.
2
Appeal 2018-005593
Application 12/186,249
an aqueous earner;
wherein the weight ratio of oxirane-functional vinyl additional
polymer to acid-functional polymer in the coating composition
is 50:50 to 90:10, and wherein the acrylic polymer having a Tg
of about 60°C to about 90°C comprises at least 30% of the total
nonvolatile weight of the coating composition.
20. A method comprising:
applying to at least a portion of a clear glass bottle a
coating composition comprising a water-dispersible resin
system comprising an oxirane-functional vinyl addition
polymer and an acid-functional polymer reacted in the presence
of a tertiary amine and water under conditions such that the
reaction product of the oxirane-functional vinyl addition
polymer and the acid-functional polymer is water-dispersible,
wherein at least one of the oxirane-functional vinyl addition
polymer or the acid-functional polymer is an acrylic polymer
having a Tg of about 60°C to about 90°C, a silane coupling
agent,
a crosslinker,
a colorant, and
an aqueous earner;
wherein the weight ratio of oxirane-functional vinyl additional
polymer to acid-functional polymer in the coating composition
is 50:50 to 90:10, and wherein the acrylic polymer having a Tg
of about 60°C to about 90°C comprises at least 30% of the total
nonvolatile weight of the coating composition; and
curing the coating composition at a temperature of at
least about 190°C to produce a cured coating.
3
Appeal 2018-005593
Application 12/186,249
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
appeal:
Brockway et al. US 4,098,934 July 4, 1978
(“Brockway”)
Hannon et al. US 4,171,056 Oct. 16, 1979
(“Hannon”)
Das et al. (“Das”) US 4,304,701 Dec. 8, 1981
Burkholder et al. US 4,855,164 Aug. 8, 1989
(“Burkholder”)
Kapp et al. US 5,085,903 Feb. 4, 1992
(“Kapp”)
Parekh et al. US 5,387,625 Feb. 7, 1995
(“Parekh”)
Mallya et al. US 2001/0003765 Al June 14, 2001
(“Mallya”)
Brown et al. US 2002/0183446 Al Dec. 5, 2002
(“Brown”)
Chip et al. US 2003/0089067 Al May 15,2003
(“Chip”)
O’Brien et al. US 2004/0259989 Al Dec. 23, 2004
(“O’Brien”)
Qiu et al. (“Qiu”) US 2008/0004392 Al Jan. 3, 2008
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a)
1. Claims 1,7, 11, and 13—15 over Burkholder in view of Brown,
O’Brien, Parekh, and Hannon;
2. Claims 8 and 9 over Burkholder in view of Brown, O’Brien,
Parekh, Hannon, and Brockway;
3. Claims 17—19 over Burkholder in view of Brown, O’Brien,
Hannon, Das, and Qiu;
4
Appeal 2018-005593
Application 12/186,249
4. Claims 20—23 and 30 over Burkholder in view of Brown,
O’Brien, Mallya, Chip, and Hannon;
5. Claim 27 over Burkholder in view of Brown, O’Brien, Mallya,
Chip, Hannon, and Qiu;
6. Claims 1,11, and 14 over Kapp in view of Brown, O’Brien,
and Das;
7. Claims 17—19 over Kapp in view of Brown, Das, O’Brien, and
Qiu;
8. Claims 20 and 23 over Kapp in view of Brown, Das, and
O’Brien;
9. Claim 27 over Kapp in view of Brown, Das, O’Brien, and Qiu;
10. Claims 31 and 32 over Kapp in view of Brown, Das, and
O’Brien; and
11. Claim 34 over Kapp in view of Brown, Das, O’Brien, and Qiu.
Final Act. 2—53.
OPINION
Appellants argue patentability of the claims under the broad
categories of either Burkholder or Kapp as the primary reference. See App.
Br. 8, 18. We follow this categorization in our Opinion.
Rejections 1—5 having Burkholder as the primary prior art reference
Appellants argue the rejection over Burkholder as the primary
reference in three groups: (1) Group 1: claims 1, 7—11, and 13—15; (2) Group
2: claims 17—19; and (3) Group 3: claims 20-23, 27, and 30. App. Br. 9-18.
We address each group in order.
5
Appeal 2018-005593
Application 12/186,249
Group 1
Appellants argue claims 1, 7—11, and 13—15 as Group l.4 App. Br. 9—
12. Therefore, we confine our discussion to claim 1, which we select as
representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 7—11 and 13—15 stand
or fall with claim 1.
The Examiner finds that Burkholder discloses an article coated with
the coating composition as recited in claim 1 with some exceptions. Final
Act. 2—9. Burkholder teaches “a coherent mar resistant film which is quite
resistant to abrasion with good water scrub and cleanability.” Id. (citing
Burkholder col. 12,11. 52—68 and col. 18,11. 15—34). The Examiner finds
that Burkholder does not expressly disclose a glass transition temperature
(“Tg”) range for an acrylic waterborne polymer. Id. at 4. However, the
Examiner finds that Brown discloses an aqueous coating composition for a
dried coating on glass that includes an aqueous emulsion polymer having a
Tg from greater than -20°C to 80°C, which overlaps the claimed Tg range.
Id. Brown discloses that scrub resistance of a coating is improved by
including the emulsion polymer described. Brown 11. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to modify the coating of Burkholder with
Brown’s aqueous emulsion polymer to improve the coating’s scrub
resistance. Final Act. 5.
The Examiner finds that Burkholder as modified by Brown does not
expressly disclose a reaction product between oxirane functional vinyl
4 Appellants include claims 1,7, 11, and 13—15, rejected over Burkholder in
view of Brown, O’Brien, Parekh, and Hannon, and claims 8 and 9, rejected
over these references and the additional reference Brockway, in Group 1.
App. Br. 9.
6
Appeal 2018-005593
Application 12/186,249
addition polymer and acid-functional polymer and tertiary amine or the
claimed ratio of the polymers. Id. The Examiner finds that O’Brien
discloses a reaction product of an oxirane-fimctional vinyl addition polymer,
an acid-functional polymer, and a tertiary amine. Id. (citing O’Brien
Abstract). O’Brien describes coatings that have “excellent adhesion to the
substrate and resist degradation over long periods of time when exposed to
harsh environments. O’Brien 13. The Examiner determines that it would
have been obvious to the skilled artisan to combine the coating of
Burkholder as modified by Brown with the coating taught in O’Brien in
order to have the benefits described by O’Brien. Final Act. 6.
The Examiner finds that Parekh discloses a waterborne coating
composition for metal food or beverage containers comprising a flexible
high molecular weight epoxy resin having a Tg of about 30°C to about
100°C. Id. at 7. Parekh teaches that the coating has high scratch resistance.
Parekh col. 7,11. 5—13. The Examiner concludes that one of ordinary skill in
the art would have combined the teachings of Burkholder as modified with
those of Parekh in order to have Parekh’s scratch resistance. Final Act. 7.
The Examiner finds that Hannon discloses a coated glass beer or
beverage bottle and a coating with a silane coupling agent. Id. at 8. Hannon
teaches that its coated article has long life abrasion resistance. Hannon col.
4,11. 42-49. The Examiner determines that the skilled artisan would have
been motivated to combine Hannon’s teaching with the modified Burkholder
coated article to have this advantage. Final Act. 8—9.
Appellants argue that a skilled artisan designing a hard coating would
not have looked to Burkholder as a starting point because Burkholder desires
7
Appeal 2018-005593
Application 12/186,249
a coating having the look and feel of fabric with a soft, piled texture. App.
Br. 9—10; Reply Br. 4.
Appellants’ argument is unpersuasive. As the Examiner points out,
Burkholder criticizes soft piled texture as impractical from the standpoint of
durability and cleanability, and seeks to achieve the aesthetic advantages of
soft piled texture without using fabrics or carpeting. See Ans. 8. Burkholder
discloses coating compositions that provide coherent mar resistant films
resistant to abrasion and result in films that have good water scrub and
cleanability. Burkholder col. 12,11. 52—68. Burkholder also identifies glass
as a substrate for its coating compositions. Id. at col. 3,11. 30-32.
Appellants argue that, although Burkholder does not mention Tg,
Example IV of Burkholder uses RHOPLEX EC-1685 acrylic latex, which is
reported in the literature to have a Tg of -45°C. App. Br. 9-10, Reply Br. 4.
Appellants contend that the Examiner has not explained why one of ordinary
skill in the art would have modified Burkholder’s coating composition with
a very low Tg of -45°C with higher Tg materials of Brown. App. Br. 9—10.
Appellants’ argument is not persuasive because Burkholder’s teaching
is not limited to the acrylic latex employed in Example IV. A reference is
not limited to a preferred embodiment or example. See In re Lamberti, 545
F.2d 747, 750 (CCPA 1976) (“all disclosure of the prior art, including
unpreferred embodiments, must be considered”). Burkholder more broadly
describes coating compositions with abrasion resistance and good water
scrub and cleanability. Burkholder col. 12,11. 52—68. Similar to
Burkholder, Brown discloses coating compositions that may be used on
glass with additives such as crosslinkers, pigments, and colorants that
provide a coated substrate with improved scrub resistance and exterior
8
Appeal 2018-005593
Application 12/186,249
durability. Brown || 2—3, 23, 26. The Examiner adequately explained that
a skilled artisan would combine the references for scrub and abrasion
resistance. See Ans. 9.
Appellants contend that the Examiner points to Example V of
Burkholder as support that the reference forms a coating that is mar resistant,
but both Examples IV and V are applied on a primed metal panel, which is
very different from the glass substrate claimed. Reply Br. 4—5.
However, Appellants misread the Examiner’s citations. The
Examiner’s citation to Burkholder column 12, lines 52—68 indicates that the
coating compositions provide a coherent mar resistant film that is resistant to
abrasion and result in films that have good water scrub and cleanability.
Moreover, column 18, lines 15—34 of Burkholder, cited by the Examiner,
concern all examples, not just Example V (“the coated panels prepared in
Examples I to V”). Burkholder discloses use of coating compositions on a
glass substrate, and is not limited to the substrates employed in examples.
See col. 3,11. 30-32.
According to Appellants, any prima facie case of obviousness based
on prior art Tg ranges that overlap the claimed Tg range is rebutted by
unexpected results. App. Br. 10. Appellants argue that the working
examples in the Specification show that a Tg in the claimed range of about
60°C to about 90°C unexpectedly provides improved abrasion resistance and
improved adhesion. Id. Appellants contend that selecting a Tg of a
component of a coating composition can have a significant impact on
performance of the coating. Id.
Appellants’ evidence is not persuasive of unexpected results. A party
asserting unexpected results as evidence of nonobviousness has the burden
9
Appeal 2018-005593
Application 12/186,249
of proving that the results are unexpected. In re Geisler, 116 F.3d at 1469-
70. Appellants’ arguments to that effect cannot take the place of evidence.
Id. at 1471; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). As explained by the Examiner, a single
composition with a Tg of 86°C is disclosed in the Specification. Ans. 12—
13; see also Spec. 33—38. This single Tg does not suggest a trend in data
supporting a Tg range and is insufficient to show unexpected results
commensurate with the scope of claim 1. In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005) (Unexpected results must also be “commensurate in scope
with the degree of protection sought by the claims on appeal.”). Moreover,
the unexpected result identified by Appellants is not tied solely to a single
Tg, but rather to the entire coating composition. Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983) (“A nexus is required between
the merits of the claimed invention and the evidence offered, if that evidence
is to be given substantial weight enroute to conclusion on the obviousness
issue.”). Appellants’ unexpected results fails to meet the requirements to
rebut the Examiner’s prima facie case of obviousness.
In relation to O’Brien, Appellants argue that the reference teaches
coating useful for metal coatings, and one of ordinary skill in the art would
not have reason to modify the compositions of Burkholder and Brown with
O’Brien with a reasonable chance of success. App. Br. 11. Appellants
contend that a skilled artisan would have had to vary all parameters or try
each of numerous possible choices until possibly arriving at a successful
result because neither Burkholder nor Brown provide any guidance leading
to selection of O’Brien. Id.
10
Appeal 2018-005593
Application 12/186,249
O’Brien describes coatings that have “excellent adhesion to the
substrate and resist degradation over long periods of time when exposed to
harsh environments.” O’Brien 13. The skilled artisan would have looked to
O’Brien to modify Burkholder (as modified by Brown) to obtain O’Brien’s
stated benefits. Even though O’Brien teaches coating metal substrates,
“[o]ne of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.”
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293,
1323 (Fed. Cir. 2005). “[T]he [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Moreover, “if a technique has been used to
improve one device, and 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.” Id. at 417.
Contrary to Appellants’ position, we find adequate reasoning to combine the
references and no suggestion of hindsight in so doing.
With regard to Parekh and Hannon, Appellants merely argue that
these references do not remedy the deficiencies of Burkholder, Brown, and
O’Brien. App. Br. 12. Because we find no such deficiencies, we are not
persuaded by Appellants’ statement.
We sustain the rejection of claim 1 over Burkholder, Brown, O’Brien,
Parekh, and Hannon. The rejection of claims 7—11 and 13—15, not argued
separately by Appellants, are sustained for the reasons given for claim 1.
11
Appeal 2018-005593
Application 12/186,249
Group 2
Appellants argue claims 17—19 as Group 2. App. Br. 13—15.
Appellants refer to the arguments made in support of Group 1, supra, and
further contend that these claims are patentable because they recite that both
of “the acid-functional polymer and the oxirane-fimctional vinyl addition
polymer” having a Tg of about 60°C to about 90°C. Id. at 13.
Claim 17, from which claims 18 and 19 depend, recites “a water
dispersible resin system comprising an oxirane-functional acrylic polymer
and an acrylic polymer’'' “wherein the weight ratio of oxirane-functional
vinyl addition polymer to acid-functional polymer’'' in the coating
composition is 50:50 to 90:10. App. Br. 32 (Claims Appx. (emphasis
added)). We find claim 17 to be indefinite because the metes and bounds of
the claim are unclear. See Ex parte McAward, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential). The claim language “oxirane-
functional acrylic polymer” in the third limitation differs from “oxirane-
functional vinyl addition polymer” in the final limitation, and “acrylic
polymer” in the third limitation differs from “acid-functional polymer” in
the final limitation. Such claim language is “ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
We enter a new ground of rejection of claims 17—19 under 35 U.S.C.
§112, first paragraph, as indefinite.
We summarily reverse the rejection of clams 17—19 as obvious over
Burkholder in view of Brown, O’Brien, Hannon, Das, and Qiu without
reaching the merits. See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(reversing an obviousness rejection because it was based on considerable
12
Appeal 2018-005593
Application 12/186,249
speculation as to meaning of terms of claims and assumptions as to their
scope).
Group 3
Appellants argue claims 20-23, 27, and 30 as Group 3. App. Br. 15—
18. Independent claim 20 recites a method comprising applying a coating
composition as claimed in claim 1, and further reciting that the reaction
product of the oxirane-fimctional vinyl addition polymer and an acid-
functional polymer is dispersible in water, and curing the composition at a
temperature of at least about 190°C. Id. at 33. We select claim 20 as
representative of the group. Claims 21—23, and 30 stand or fall with claim
20. 37 C.F.R. § 41.37(c)(l)(iv). We also separately consider the arguments
to the extent applicable to claim 27.
Appellants refer to arguments for patentability made relating to claim
1. App. Br. 15. For the reasons discussed above, such arguments are not
persuasive of reversible error by the Examiner.
In addition, Appellants contend that the cited references do not teach
the curing limitation. Id. at 16—17. Appellants argue that Burkholder
teaches curing its coating at temperatures of 38°C to 163°C, and it is
speculative whether, “due to the other components of the Burkholder
composition,” Burkholder’s composition could be modified by Chip’s
disclosure of curing at elevated temperature (215°C) without unsuitably
degrading. Id. at 16. According to Appellants, the claimed coatings provide
improved adhesion compared to a water-based epoxy acrylate control in
boiling water and pasteurization tests. Id. (citing Tables 2-4 of the ’249
Application). Appellants also argue that although O’Brien teaches curing its
13
Appeal 2018-005593
Application 12/186,249
composition at 150—220°C, O’Brien is useful for metal coatings and not
glass. Id.
Appellants’ arguments are not persuasive because the feature argued
(improved adhesion of the claimed composition compared to a water-based
epoxy acrylate control in boiling water and pasteurization tests) is not recited
in claim 20. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that
limitations not appearing in the claims cannot be relied upon for
patentability). Appellants do not address the Examiner’s reasoning in
combining Burkholder as modified with Chip—to further reduce curing time
as opposed to lower temperatures for longer time periods of modified
Burkholder. Moreover, Appellants do not adequately explain why “other
components of the Burkholder composition” would have made combining
the references “speculative” or how this overcomes the Examiner’s prima
facie case of obviousness.
In addition, O’Brien teaches a curing temperature that overlaps the
claimed range, and, as discussed supra, the Examiner gives adequate reason
to combine O’Brien’s disclosure with Burkholder as modified.
We sustain the rejection of claim 20, and, for the same reasoning,
sustain the rejection of its dependent claims 21—23, 27, and 30.
Rejections 5—10 having Kapp as the primary prior art reference
Appellants argue the rejection over Kapp as the primary reference in
four groups: (1) Group 1: claims 1,11, and 14; (2) Group 2: claims 17—19;
(3) Group 3: claims 20, 23, and 27; and (4) Group 4: claims 31, 32, and 34.
App. Br. 18—28. As with the rejections over Burkholder as the primary
reference, we address each group in order.
14
Appeal 2018-005593
Application 12/186,249
Group 1
Appellants argue claims 1,11, and 14 as Group 1. App. Br. 18—22.
We limit our discussion to claim 1, which we select as representative. 37
C.F.R. § 41.37(c)(l)(iv). Claims 11 and 14 stand or fall with claim 1.
The Examiner finds that Kapp discloses a water-based thermosetting
coating composition with acrylic polymer with additional elements in an
effective combination to substantially block transmission of light through a
container such as beer glass bottles. Final Act. 28. Kapp’s coating
composition produces hard, glossy, pasteurizable coatings with excellent
adhesion, and cures thermally. Id. Similarly to the rejection over
Burkholder as the primary reference, the Examiner finds that Kapp does not
expressly a glass transition temperature (“Tg”) range for an acrylic
waterborne polymer. Id. at 29. In the rejections based on either Burkholder
or Kapp, the Examiner finds that Brown discloses an aqueous coating
composition for a dried coating on glass that includes an aqueous emulsion
polymer having a Tg from greater than -20°C to 80°C, which overlaps the
claimed Tg range. Id. at 9-10 and 29. Brown discloses that scrub resistance
of a coating is improved by including the emulsion polymer described.
Brown 11. The Examiner determines that it would have been obvious to
one of ordinary skill in the art at the time of the invention to have modified
the coating of Kapp with Brown’s aqueous emulsion polymer to have
abrasion resistance and scrub type resistance of a coated article. Final Act.
29.
The Examiner finds that Das discloses aqueous dispersions of acrylic
polymers containing carboxyl and epoxy functionality where the dispersions
are useful in water-based coating compositions for substrates including glass
15
Appeal 2018-005593
Application 12/186,249
or metal which, when cured, becomes harder and more solvent resistant. Id.
at 30. Das teaches selection of monomers such that the polymer has a Tg
preferably above 0°C, which the Examiner finds overlaps the claimed Tg
ranges. Id. (citing Das, col. 5,11. 46—51). The Examiner finds that Das
teaches compositions with the claimed weight ratio of polymers. Id. at 31.
The Examiner concludes that it would have been obvious to a skilled artisan
to modify Kapp’s coating composition (as modified by Brown) with Das’s
acrylic to coat glass to have a hard film on glass with solvent resistance as
taught by Das. Id.
The Examiner relies on O’Brien in the rejections citing Kapp as the
primary reference for the same reasons as discussed in the rejections citing
Burkholder as the primary reference. Final Act. 33.
Appellants contend, without additional elaboration, that the Examiner
fails to establish a prima facie case of obviousness over Kapp, Brown, and
Das, which do not teach or suggest all elements of the clams. App. Br. 19.
We note that the rejection is over the combination of Kapp, Brown,
Das, and O ’Brien, the last of which Appellants do not include in this portion
of their argument. In addition, more substantive arguments are required in
an appeal brief to overcome a rejection. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R.
§ 41.37 (c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). This argument
of Appellants is not persuasive of reversible error.
Appellants restate the earlier assertion of unexpected results with the
claimed Tg range. App. Br. 20. For the reasons discussed in affirming the
16
Appeal 2018-005593
Application 12/186,249
rejection over Burkholder, Appellants’ argument again fails to show
sufficient unexpected results to rebut the rejection.
Appellants also argue that the Examiner does not show that any of
Kapp, Brown, or Das provide guidance or reason to a skilled artisan to
experiment to determine the optimum or workable ranges of an acrylic
polymer incorporated into a water-dispersible resin system or to modify the
Tg of the acrylic polymer to the claimed range. App. Br. 20—21. We
disagree. The Examiner identifies Das as teaching the claimed weight ratio
of polymers and sufficient reason to combine modified Kapp and Das (to
coat glass to have a hard film on glass with solvent resistance as taught by
Das). See Final Act. 30—31. The Examiner identifies both Brown and Das
as teaching the claimed Tg range, again with sufficient reason for the
combination of references. Id. Appellants do not address the Examiner’s
reasons to combine the references. See generally, App. Br. Appellants’
argument is not persuasive of reversible error.
Finally, Appellants contend that no teaching of Kapp, Brown, or Das
give a skilled artisan an indication of which parameters are critical, or which
of many possible choices of coating compositions are likely to be successful.
App. Br. 21. However, as discussed above, the Examiner provides adequate
reasoning for combining the references. One of ordinary skill in the art at
the time of the invention can use his or her ordinary skill, creativity, and
common sense to make the necessary adjustments and further modifications
to result in a properly functioning device. See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”).
Furthermore, “if a technique has been used to improve one device, and a
17
Appeal 2018-005593
Application 12/186,249
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.” See id. at 417.
We sustain the rejection of claims 1,11, and 14.
Group 2
Appellants argue claims 17—19 as Group 2. App. Br. 22—24.
For the same reasons discussed in addressing the rejection of these
claims over Burkholder as the primary reference, we find these claims
indefinite under 35 U.S.C. § 112, first paragraph, and enter a new ground of
rejection. We summarily reverse the rejection without reaching the merits.
Group 3
Appellants argue claims 20, 23, and 27 as Group 3. App. Br. 24—26.
Independent claim 20 is discussed above in relation to the rejection over
Burkholder as the primary reference.
Appellants’ arguments for patentability of claim 20 do not differ
substantively from those made for patentability of claim 1 over Kapp as the
primary reference, except for the additional argument relating to the curing
temperature of the claimed composition. Compare App. Br. 24—26, with
App. Br. 19-22. Appellants contend that, while Kapp and O’Brien teach
compositions cured at temperature above 150°C, O’Brien teaches a coating
useful for metal coatings, not glass coatings. Id. at 25. Appellants argue a
skilled artisan would have had no reason to modify the coating compositions
of Kapp, Brown, and Das with O’Brien’s water-dispersible resin system. Id.
The Examiner finds that Kapp in view of Brown and Das disclose
generic coatings for colorless glass or metal, and the coating of O’Brien is a
species of these generic coatings, thus the disclosures are combinable. Ans.
18
Appeal 2018-005593
Application 12/186,249
33. “As long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventors.” In
re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). To render an invention
obvious, the prior art does not have to address the same problem addressed
by a patent applicant. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
We sustain the rejection of claims 20, 23, and 27 over Kapp as the
primary reference.
Group 4
Appellants argue claims 31, 32, and 34 as a group. App. Br. 26—28.
Appellants’ arguments do not differ substantively from those made in
relation to Groups 1 and 3 above. We sustain the rejection based on our
analysis of the prior art for those groups.
CONCLUSION
In summary:
We sustain the rejection of claims 1,7, 11, and 13—15 under 35 U.S.C.
§103 over Burkholder in view of Brown, O’Brien, Parekh, and Hannon.
We sustain the rejection of claims 8 and 9under 35 U.S.C. § 103 over
Burkholder in view of Brown, O’Brien, Parekh, Hannon, and Brockway.
We do not sustain the rejection of claims 17—18 under 35 U.S.C.
§103 over Burkholder in view of Brown, O’Brien, Hannon, Das, and Qiu.
We sustain the rejection of claims 8 and 9 under 35 U.S.C. § 103 over
Burkholder in view of Brown, O’Brien, Parekh, Hannon, and Brockway.
19
Appeal 2018-005593
Application 12/186,249
We sustain the rejection of claims 20—23 and 30 under 35 U.S.C.
§103 over Burkholder in view of Brown, O’Brien, Mallya, Chip, and
Hannon.
We sustain the rejection of claim 27 under 35 U.S.C. § 103 over
Burkholder in view of Brown, O’Brien, Mallya, Chip, Hannon, and Qiu.
We sustain the rejection of claims 1,11, and 14 under 35 U.S.C. § 103
over Kapp in view of Brown, O’Brien, and Das.
We do not sustain the rejection of claims 17—19 under 35 U.S.C.
§103 over Kapp in view of Brown, Das, O’Brien, and Qiu.
We sustain the rejection of claims 20 and 23 under 35 U.S.C. § 103
over Kapp in view of Brown, Das, and O’Brien.
We sustain the rejection of claim 27 under 35 U.S.C. § 103 over Kapp
in view of Brown, Das, O’Brien, and Qiu.
We sustain the rejection of claims 31 and 32 under 35 U.S.C. § 103
over Kapp in view of Brown, Das, and O’Brien.
We sustain the rejection of claim 34 under 35 U.S.C. § 103 over Kapp
in view of Brown, Das, O’Brien, and Qiu.
We enter a new ground of rejection of claims 17—19 under 35 U.S.C.
§112, first paragraph, as indefinite.
DECISION
The Examiner’s decision is affirmed-in-part and a new ground of
rejection is entered.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
20
Appeal 2018-005593
Application 12/186,249
Section 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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-IN-PART; 37 C.F.R, $ 41.50(b)
21