Ex Parte Stoffel et alDownload PDFPatent Trials and Appeals BoardJul 1, 201914717473 - (D) (P.T.A.B. Jul. 1, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/717,473 111787 7590 LKGLOBAL (Axalta) 7010 E. Cochise Road Scottsdale, AZ 85253 05/20/2015 07/03/2019 FIRST NAMED INVENTOR Petra Stoffel 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 ATTORNEY DOCKET NO. CONFIRMATION NO. l76.0451USD1(FA1944USDIV) 6495 EXAMINER RODRIGUEZ, MICHAEL P ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 07/03/2019 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): axalta@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETRA STOFFEL and MARCUS BRUNNER Appeal2018-008142 Application 14/717,473 Technology Center 1700 Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134 from a rejection2 of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as "Axalta Coating Systems IP Co. LLC." Appeal Brief of May 7, 2018 ("Br."), 3. 2 Final Office Action of November 3, 2017 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of June 11, 2018 ("Ans.") and the Reply Brief of August 13, 2018 ("Reply Br."). Appeal2018-008142 Application 14/717,473 CLAIMED SUBJECT MATTER The claims are directed to a non-aqueous solvent composition and its use as barrier liquid applicable to an industrial mass production coating line. Spec. 1 : 15-1 7. 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of operating a coating installation of an industrial mass production coating line, wherein the method compnses: providing the coating installation comprising a release valve for a non-aqueous hardener component; and filling the coating installation downstream of the non- aqueous hardener release valve with a non-aqueous solvent composition comprising: 0 to 10 wt.% ofN-alkyl pyrrolidone, 0 to 5 wt.% of dimethyl sulfoxide, 10 to 50 wt.% of y-butyrolactone, 10 to 50 wt.% of at least one monoalcohol, 10 to 60 wt.% of at least one organic solvent inert towards isocyanate groups, other than y-butyrolactone, other than N-alkyl pyrrolidone, and consisting of carbon, hydrogen, and oxygen and, optionally, nitrogen, and 0 to 10 wt.% of at least one additive. Br. 15 (Claims Appendix). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Ogasawara Piestert Kocher US 4,993,353 Feb. 19, 1991 US 5,264,486 Nov. 23, 1993 US 2006/0189234 Al Aug. 24, 2006 3 Application No. 14/717,473 filed May 20, 2015 ("Specification" or "Spec."). 2 Appeal2018-008142 Application 14/717,473 Eckert Herre US 2007/0254149 Al Nov. 1, 2007 EP 1543883 Al June 22, 2005 REJECTIONS Claims 1-3, 7-13, and 15 are rejected underpre-AIA 35 U.S.C. § 103(a) as being unpatentable over Herre, in view of Kocher and Eckert. Final Act. 2. Claims 4, 5, and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Herre in view of Kocher, Eckert, and Ogasawara. Final Act. 5. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Herre in view of Kocher, Eckert, and Piestert. Final Act. 7. OPINION We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellants contentions, we are not persuaded that Appellants have identified reversible error, and we affirm the Examiner's§ 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. 3 Appeal2018-008142 Application 14/717,473 "Appellants do not dispute the Examiner's interpretation of the teachings of Herre, Kocher, and Eckert." Br. 11. The sole issue on appeal is, therefore, whether the Examiner has provided an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness in rejecting claim 1.4 The Examiner explains that while Herre does not teach the specific anhydrous solvent composition used in the prior art coating process, "Herre teaches that the detergent is employed as a flushing agent and barrier for downstream moisture, and that the composition should be solvent-borne and matched to the curing agent of the coating applied by the coating installation." Final Act. 8 ( citing Herre ,i 24 ); see Herre ,i 24 (providing the use of "an additional detergent, based on solvent-borne and/or is matched to the curing agent, and therefore not react with the hardener"). Based on Eckert' s undisputed teaching of "the use of polyurethane polymeric compositions in automotive coating operations" which is an application specifically identified in Herre, the Examiner determines that "it would have been obvious to use a solvent compatible with the curing agent of such coatings as instructed by Herre." Final Act. 8. Based on Kocher's undisputed teaching of a composition (identical to that recited in claim 1) as a suitable solvent in polyurethane coating applications, the Examiner determined that Kocher' s composition "would have thus been expected to be operable and effective for flushing the lines in Herre in cases where 4 Appellants do not present separate arguments for the remaining claims and they therefore stand or fall with claim 1. See Br. 9-13; see also 37 C.F.R. § 41.37(c)(l)(iv)(2013). 4 Appeal2018-008142 Application 14/717,473 automotive painting operations using the polyurethane compositions of Eckert are conducted." Id. Appellants argue that the Examiner reversibly erred in combining the references because "Herre is primarily concerned with inhibiting or preventing the reaction between the hardener and moisture, as opposed to solvating the resulting polyurea that would be formed from such reaction" whereas Kocher "does not speak at all to the usefulness of such a solvent as a barrier liquid within the application of Herre, where the desire is to actually inhibit reaction of the hardener and moisture." Br. 11, 12. We are not persuaded that we should ignore Herre' s teachings as a whole, including the undisputed teaching of using a detergent matched to the curing agent in the coating process. See Herre ,-J 24. The inquiry here is not what Herre's primary concern - as argued by Appellants - might be. Rather, "the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (citation and emphasis omitted). In addition, Appellants' argument that the Examiner's rationale does not "account for why a person of skill in the art would employ the non- aqueous solvent of Kocher in the context of Herre given the completely different concerns" (Br. 12) ( emphasis omitted) is unpersuasive. Here again, this argument does not address the Examiner's rationale in its entirety. The Examiner's rationale for modifying Herre's coating for automotive application with the solvent based on y-butyrolactone taught by Kocher is based on Eckert's teaching to use abrasion-resistant polyurethane coatings in 5 Appeal2018-008142 Application 14/717,473 automotive painting operations. Final Act. 3. Appellants' argument does not address Eckert, 5 therefore, the argument does not persuade us of reversible error in the Examiner's rationale. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). In this case, Appellants argue that the method recited in claim 1 produces unexpected results illustrated by Example 3 and Table 1 of the Specification. Br. 12. Among other reasons, the Examiner points out that the data shown in the Specification is not commensurate in scope with claim 1 because claim 1 is not limited to the specific polyisocyanate compositions used in the Specification. Ans. 10. Appellants do not dispute that the data cited in 5 For the first time on appeal, Appellants raise various arguments in the Reply Brief. Compare Reply Br. 2-4 (for example, arguing against the Examiner's statement that "it would have been obvious to use a solvent compatible with the curing agent ( of Eckert) as instructed by Herre. The compositions taught by Kocher would have thus been expected to be operable and effective for flushing the lines of Herre in cases where automotive painting operations using the polyurethane compositions of Eckert are conducted") ( emphasis omitted), with Final Act. 8 (providing the statement quoted in the Reply Brief to which the arguments are directed). The Examiner has not had an opportunity to consider these arguments. Appellants offer no explanation as to why they could not have been raised in the opening brief. We therefore decline to consider them. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief); Exparte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause."). 6 Appeal2018-008142 Application 14/717,473 support of the unexpected results argument is not commensurate in scope with claim 1. Reply Br. 5 ( arguing only that "there is no explanation for the disparate results that were achieved with the claimed solvent as compared to conventional solvent, and such findings must be considered"). "The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains." In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). We are, therefore, not persuaded that the Examiner reversibly erred in evaluating the data in support of the unexpected results argument. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation