Ex Parte Tazzia

Board of Patent Appeals and Interferences

Apr 16, 2009

10723900 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES L. TAZZIA
____________

Appeal 2009-1674
Application 10/723,900
Technology Center 1700
____________

Decided:1 April 16, 2009
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/723,900

rejection of claims 1, 3, 4, 7-9, and 11-13. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
Claims 1 and 7 are representative of the subject matter on appeal, and
are set forth below:
1. An aqueous, electrodepositable coating composition comprising
a dispersion of a cathodically electrodepositable, active hydrogen-functional
epoxy resin and a uretdione compound, the epoxy resin having a cationic
functional group selected from the group consisting of quaternary
ammonium, sulfonium and phosphonium, wherein the uretdione compound
comprises a structure of:
,
wherein R is a divalent alkylene radical, R’ is a divalent alkylene,
cycloalkylene, arylene, or alkylarylene radical, and n is an integer of 1 to
about 50.

7. A method of making an aqueous dispersion coating, comprising
steps of combining a solid uretdione compound with a molten, water-
dispersible epoxy resin, the epoxy resin having a cationic functional group
selected from the group consisting of quaternary ammonium, sulfonium and
phosphonium, to form a homogenous resin mixture, wherein the uretdione
compound comprises a structure of:
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,
wherein R is a divalent alkylene radical, R’ is a divalent alkylene,
cycloalkylene, arylene, or alkylarylene radical, and n is an integer of 1 to
about 50;
salting the water-dispersible resin; and
dispersing the resin mixture in water.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O’Connor 4,496,684 Jan. 29, 1985
Gras 6,479,613 B2 Nov. 12, 2002
Hartung 2003/0150730 A1 Aug. 14, 2003

SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS
Claims 1, 3, 4, 7-9, and 11-13 stand rejected under 35 U.S.C. § 103(a)
over Hartung in view of O'Connor or Gras.

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ISSUE
Whether one skilled in the art, in view of the teachings of Hartung, in
view of O’Connor or Gras, would have been motivated to have selected the
uretdione containing polyaddition compounds of O’Connor or Gras as the
crosslinking agent in Hartung?
FINDINGS OF FACT
The Examiner finds that Hartung discloses an aqueous
electrodepositable coating composition, wherein an externally crosslinking
binder, such as a cationic group containing active hydrogen functional epoxy
resin, and crosslinking agent are homogeneously mixed as melts and
subsequently emulsified into an aqueous medium to yield the coating
composition. The Examiner finds that Hartung discloses that the
crosslinking agent may be selected from uretdione containing
polyisocyanates, wherein dimerized (uretdione group containing) isophorone
diisocyanate is disclosed as being one of the preferred crosslinking agents.
See paras. [0007]-[0017], [0026], [0034], and [0044] of Hartung. The
Examiner finds that Hartung discloses, in paragraphs [0020]-[0026], that the
cathodically depositable electrodeposition coatings employ quaternary
ammonium, sulfonium, and quaternary phosphonium groups. Ans. 3.
The Examiner finds that uretdione containing crosslinking agents
having Appellant's claimed structure (wherein the uretdione diisocyanate is
modified with a polyol compound to introduce urethane groups into the
uretdione structure) are taught by O'Connor and Gras. Ans. 4. Appellant
does not argue that the compounds taught by O’Connor or Gras are not the
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same as the uretdione compound as claimed by Appellant. The Examiner
finds that O'Connor discloses that uretdione containing polyurethane
oligomers are useful for the production of aqueous polyurethane dispersion
coatings. See O'Connor, abstract, cols. 2 and 4; Ans. 4.
The Examiner also finds that Gras discloses that polyaddition
products containing uretdione groups are useful for the production of
powder coatings and stoving enamels. See Abstract of Gras and page 4 of
Answer. The Examiner finds that Gras teaches that the uretdione
polyaddition products may be reacted with active hydrogen functional epoxy
resins. See col. 4, ll. 26 and 27; Ans. 4. Appellant does not dispute the
Examiner’s findings that both Hartung and Gras teach that the disclosed
components are reactive with active hydrogen containing compounds.

PRINCIPLES OF LAW
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and
the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements
in the fashion claimed by the patent at issue.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007). “To
facilitate review, this analysis should be made explicit.” Id. “[T]he 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.” Id.
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The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. Keller, 642
F.2d at 425-426; In re Merck & Co., Inc., 800 F.2d 1091, 1097-1098 (Fed.
Cir. 1986).
Obviousness does not require absolute predictability, but a reasonable
expectation of success. In re Clinton, 527 F.2d 1226, 1228-1229 (CCPA
1976).
ANALYSIS
As an initial matter, Appellant has not separately argued the
dependent claims with any reasonable specificity. Accordingly, dependent
claims 3, 4, and 11-13 stand or fall with independent claim 1, and dependent
claims 8 and 9 stand or fall with independent claim 7. Appellant also
presents the same arguments for claims 1 and 7. Hence, although our
analysis applies to independent claims 1 and 7, it addresses all of the
appealed claims.
Appellant’s basic position is that motivation is lacking to combine
Hartung in view of O’Connor or Gras. Br. 4-9; Reply Br. 2-7.
Appellant argues that one skilled in the art would not have been led to
use either the O'Connor polyurethane oligomer or the Gras polyaddition
product in the Hartung coating composition. Appellant asserts that in view
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of the different goals and priorities of Hartung and O'Connor or Gras, one
skilled in the art would not have been led to recreate the present invention
from these references. Br. 5. See also Reply Brief 3-52. Appellant asserts
that the combination of references is achieved solely based on Applicant's
disclosure and the impermissible use of hindsight. Br. 5-7. Appellant
argues that the combination of Hartung and Gras lacks motivation because
there is no reasonable expectation of success. Br. 8-9.
On page 5 of the Reply Brief, Appellant states:
The option of uretdione group containing diisocyanate
crosslinking agents in the production of aqueous,
electrodepositable coating compositions, (Examiner's
Answer page 5, lines 11-12) as per Hartung, provides no

2 On pages 3-4 of the Reply Brief, Appellant argues that the context in
which the compound is used in O’Connor is unrelated to forming an
electrodeposition coating material according to Hartung. Appellant argues
that O'Connor forms a pre-polymer by reacting an uretdione with a polyol
and further reacts the pre-polymer with an anhydride to form a polyurethane
oligomer. Appellant argues that it is then preferable to neutralize
substantially all of the carboxylic acid groups in the polyurethane oligomer
using a neutralizing agent. Appellant argues that the pre-polymer is simply
an intermediate in a multistep process to form the neutralized polyurethane
oligomer. Appellant argues that the polyurethane oligomer is used in an
aqueous dispersion to manufacture lignocellulosic composite materials (e.g.,
particle board). On page 4 of the Reply Brief, Appellant asserts that the
O'Connor teachings provide no connection to the electrodeposition coating
material of Hartung. Appellant argues that the polyurethane oligomer is not
being used to crosslink a separate active-hydrogen functional resin. On
pages 4-5 of the Reply Brief, Appellant argues that Gras provides no
disclosure regarding aqueous coatings or application via electrodeposition.
On page 5 of the Reply Brief, Appellant concludes that no nexus exists
between Hartung and O’Connor or Gras.

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basis for a skilled artisan to make the leap to the polyaddition
products of O'Connor or Gras, which contain uretdione
groups linked by polyol residues. If the skilled artisan
wanted to increase the isocyanate group content, the optional
dimers or trimers of diisocyanates according to Hartung
would serve that purpose. There is nothing to connect
Hartung's crosslinkers with uretdiones linked with polyols.
The Examiner’s position is that Hartung discloses an aqueous
electrodepositable coating composition, wherein an externally crosslinking
binder, such as a cationic group containing active hydrogen functional epoxy
resin, and crosslinking agent, are homogeneously mixed as melts, and
subsequently emulsified into an aqueous medium to yield the coating
composition. Ans. 3.
The Examiner finds that Hartung discloses that the crosslinking agent
may be selected from uretdione containing polyisocyanates, wherein
dimerized (uretdione group containing) isophorone diisocyanate is disclosed
as being one of the preferred crosslinking agents. The Examiner finds that
Hartung discloses that the cathodically depositable electrodeposition
coatings employ quaternary ammonium, sulfonium, and quaternary
phosphonium groups. See Findings of Fact section, supra.
The Examiner recognizes that although Hartung discloses that a
preferred crosslinking agent for the coatings is a dimerized or uretdione
containing isocyanate, Hartung fails to disclose the uretdione crosslinking
agent that corresponds to Appellant's particularly claimed uretdione
compound. Ans. 3.
However, the Examiner finds that uretdione containing crosslinking
agents having Appellant's claimed structure (wherein the uretdione
diisocyanate is modified with a polyol compound to introduce urethane
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groups into the uretdione structure), were known at the time of Appellant’s
invention, as supported by the teachings of O'Connor and Gras. Ans. 4.
The Examiner finds that O'Connor discloses that uretdione containing
polyurethane oligomers are useful for the production of aqueous
polyurethane dispersion coatings. See Findings of Fact section, supra.
The Examiner also finds that Gras discloses that polyaddition
products containing uretdione groups are useful for the production of
powder coatings and stoving enamels. The Examiner finds that Gras further
teaches that the uretdione polyaddition products may be reacted with active
hydrogen functional epoxy resins. See Findings of Fact section, supra.
The Examiner concludes that in view of the teachings of the use of
uretdione containing crosslinking agents in Hartung (as discussed supra),
and in view of the disclosed utilities for the polyaddition compounds taught
by O’Connor (for making aqueous compositions) or Gras (for making
coatings and the function of being reactive with active hydrogen functional
epoxy resins), that one of ordinary skill in the art would have been motivated
to employ the uretdione containing polyaddition compounds of O’Connor or
Gras as the crosslinking agent in Hartung. Ans. 4.
In view of the Examiner’s position as outlined above, the Examiner’s
analysis is sufficient to establish a prima facie case of obviousness. KSR,
127 S.Ct. at 1740-41.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. Keller,
642 F.2d at 425. The Examiner’s position is that in view of the combined
teachings of Hartung in view of O’Connor or Gras, one skilled in the art
would have been motivated to employ the uretidione containing polyaddition
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compounds of O’Connor and Gras as the crosslinking agent of Hartung, as
there would have been a reasonable expectation of success in so doing.
Clinton, 527 F.2d at 1228-1229. This reasonable expectation of success is
explained by the Examiner in the Answer, discussed below.
Contrary to Appellant’s assertion made on page 6 of the Brief that
Hartung does not provide a preference or reason for using any particular
crosslinker, the Examiner states “it cannot be argued that Hartung et al.
fail[s] to teach a preference for the use of dimerized diisocyanates” because
Hartung teaches that the use of blocked polyisocyanates are particularly
preferred within paragraph [0070], and that Hartung teaches that dimerized
(uretdione group containing) diisocyanates are especially preferred within
paragraph [0044]. This supports the Examiner’s position that one skilled in
the art would have been motivated to have selected, from the disclosed lists
of crosslinking agents of Hartung, dimerized diisocyanates, as a preferred
group of crosslinking agents. Ans. 4-5.
We also agree with the Examiner’s response to Appellant’s arguments
regarding O’Connor, in that Appellant has failed to appreciate the combined
teachings of the applied art. Ans. 5. In other words, Appellant attacks the
references individually, and one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. Keller, 642 F.2d at 425-426; Merck, 800 F.2d 1097-1098. See
also KSR, 127 S.Ct. at 1740-41. Appellant argues that O'Connor does not
provide any motivation to include the polyurethane oligomer in an aqueous,
electrodepositable coating composition. However, as the Examiner correctly
points out, Hartung teaches a preference for the uretdione group containing
diisocyanate derived crosslinking agents in the production of aqueous,
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electrodepositable coating compositions. Ans. 4-5. The Examiner finds that
Hartung teaches that the disclosed crosslinking agents and an externally
crosslinking binder, such as a cationic group containing active hydrogen
functional epoxy resin, are homogeneously mixed as melts, and
subsequently emulsified into an aqueous medium to yield an aqueous
electrodepositable coating composition. See Findings of Facts, supra.
The Examiner finds that O'Connor discloses the use of uretdione group
containing polyurethane oligomers in the production of aqueous coatings.
See Findings of Facts, supra.
The Examiner’s statement that these respective teachings to use
uretdione group containing compounds as components of aqueous coatings,
wherein the components are reactive with active hydrogen containing
compounds, supports the Examiner’s position that there is sufficient
motivation (i.e., reasonable expectation of success) to combine the teachings
of these references. Ans. 5. Appellant does not show that there is a lack of
a reasonable expectation of success regarding employment of the component
of O’Connor as the crosslinking agent of Hartung in view of the fact that
both Hartung and O’Connor teach to use uretdione group containing
compounds as components of aqueous coatings. Clinton, 527 F.2d at 1228-
29. Hence, Appellant’s assertion made on page 5 of the Reply Brief that it is
a “leap to the polyaddition products of O'Connor” is unsupported.
We also agree with the Examiner’s response to Appellant’s assertion
that nothing in Gras teaches the use or suitability of its polyaddition product
in an aqueous coating composition. In response, the Examiner states that
both Gras and Hartung disclose coating compositions derived from uretdione
or dimerized isocyanates. The Examiner’s position is that these teachings,
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coupled with the teachings to make aqueous coatings in Hartung, provide
sufficient motivation to combine these references. The Examiner’s position
is that both references teach that uretdione or dimerized isocyanates
function as crosslinking agents for active hydrogen compounds [emphasis
added], and therefore there is a reasonable expectation of success that the
compound in Gras can be used as the crosslinking agent in Hartung. Ans. 5-
6. As indicated in footnote 2, supra, while Appellant argues that there is no
disclosure in Gras regarding aqueous coatings or application via
electrodeposition, Appellant does not specifically dispute the similarity of
function in specific regard to the Examiner’s finding that the components (as
taught by both Hartung and Gras) are reactive with active hydrogen
containing compounds. Absent evidence to the contrary, we are not
convinced by Appellant’s arguments that there is no reasonable expectation
of success that the compound of Gras (taught to be reactive with active
hydrogen compounds) would function similarly to the compound in Hartung
(also taught to be reactive with active hydrogen compounds). Clinton, 527
F.2d at 1228-29.
We therefore affirm the rejection of claim 1 and its dependent claims
3, 4, and 11-13, as well as independent claim 7 and its dependent claims 8
and 9.
CONCLUSION OF LAW
One skilled in the art, in view of the teachings of Hartung, in view of
O’Connor and Gras, would have been motivated to have selected the
uretdione containing polyaddition compounds of O’Connor or Gras as the
crosslinking agent in Hartung.
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DECISION
The rejection of claims 1, 3, 4, 7-9, and 11-13 under 35 U.S.C.
§ 103(a) over Hartung in view of O'Connor or Gras is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ssl

HARNESS, DICKEY AND PIERCE, P.L.C.
5445 CORPORATE DRIVE
TROY, MI 48098

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