Ex Parte Urmanova et al

Patent Trial and Appeal Board

Dec 27, 2016

12306746 (P.T.A.B. Dec. 27, 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.
12/306,746 07/01/2009 Antonia Urmanova BHD-4662-1014 6559
23117 7590 12/29/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BLAND, ALICIA
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIA URMANOVA, ROBERT VAN DEN BERG JETHS,
PAULUS FRANCISCUS ANNA BUIJSEN, MARCELLINUS
HERMANUS JOHANNES SCHUTTE, and JOCHEM BEETSMA1
Appeal 2015-005194
Application 12/306,746
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s maintained rejection under 35 U.S.C. § 103 of claims 27-30 and
32-38 over Kaplan2 in view of Geary,3 Bejko,4 De Jongh,5 and Hawley’s.6
1 Appellants state that the real party of interest is DSM IP Assets B.V.
Appeal Br. 2.
2 Kaplan et al., US 5,847,057, issued December 8, 1998.
3 Geary et al., US 4,801,680, issued January 31, 1989.
4 Bejko et al., US 2004/0143073 Al, published July 22, 2004.
5 De Jongh et al., US 4,340,068, issued July 20, 1982.
6 Fatty Acid, Hawley’s Condensed Chemical Dictionary, (14th ed. 2002),
accessed via http://www.knovel.com/web/portal/knovel_content....
Appeal 2015-005194
Application 12/306,746
More particularly, as explained by the Examiner, the claims stand rejected
over Kaplan in view of Geary, and Bejko, and alternatively in further view
of De Jongh, with Hawley’s cited as evidence as to the rejection of claim 30
Ans. 2-7; Non-Final Act. 8-12. We have jurisdiction pursuant to 35 U.S.C.
§ 6. We AFFIRM.
BACKGROUND
Appellants’ claimed invention relates to the field of powder coatings
and binder for use in powder coating compositions. Spec. Title and
Abstract.
Claim 27 is the sole independent claim on appeal.
27. A binder suitable for use in a powder coating
composition, said binder comprising:
(a) a crosslinker that is reactive with an acid
functional polyester, and
(b) a branched partially defimctionalized acid
functional polyester, wherein
the branched polyester has an acid value between 5 and
300 mg KOH/g polyester, a hydroxyl value lower
than the acid value, and a glass transition
temperature higher than 40°C, and wherein
the branched polyester is based on:
(i) at least one multi-functional component with
a functionality of three that is carboxyl-
functional, hydroxyl-functional or carboxyl-
and hydroxyl- functional;
(ii) di-functional components comprising a di­
functional acid and a di-functional alcohol
where at least one of the di-functional
components is reactive towards a functional
group on the multifunctional component;
(iii) at least a mono-functional component
comprising a monofimctional fatty acid
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having at least 8 carbon atoms in the chain;
and wherein
the branched polyester comprises 15 wt% or less of fatty
acid selected from the group consisting of mono-,
di-functional or a mixture of mono- and di­
functional acids having at least 8 carbon atoms in
the chain.
Appeal Br. (Claims Appendix) 57.
DISCUSSION7
Upon consideration of the record, we are not persuaded that the
Examiner erred in determining that one of ordinary skill in the art, armed
with the knowledge of Kaplan, Geary, and Bejko, or of Kaplan, Geary,
Bejko and De Jongh, would have been led to the subject matter of the claims
within the meaning of 35 U.S.C. § 103(a).
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
7 We refer to the Non-Final Office Action mailed April 3, 2014, the Appeal
Brief filed December 3, 2014, and the Examiner’s Answer mailed February
9, 2015.
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Application 12/306,746
On this record, we affirm the Examiner’s decision on the basis of
factual findings and legal conclusions set forth by the Examiner in the
Answer. We add the following.
Kaplan discloses heat-curable coating compositions, particularly
powder coating compositions including a carboxyl-fimctional polyester and
a beta-hydroxyalkylamide. Kaplan Abstract, col. 1,1. 5.
As to the recited crosslinker, the Examiner finds pro forma that the
disclosed beta-hydroxylalkylamide is a cross-linker reactive with the
carboxyl-functional polyester.8
As to the recited branched polyester, the Examiner relies on Kaplan
for the branching being implicit in the disclosed components (Ans. 4) and
for the explicit disclosure that its polyester has a glass transition temperature
(Tg) that ranges from 30-80°C, thereby overlapping that recited in claim 27,
and an acid value that ranges from 20-100 mg KOH/g, completely within
that recited in claim 27 (Ans. 2, citing Kaplan col. 1,11. 59-60; claim 18).
As to the hydroxyl value being less than the acid value, the Examiner
concedes that Kaplan does not disclose the hydroxyl value of its carboxyl
functional polyester (Ans. 2), but cites Geary for the proposition that it was
known in the art to use an excess of acid over alcohol to provide carboxylic
acid group containing polyester for use with beta-hydroxylalkylamide,
emphasizing similarities between the compositions of Kaplan and Geary,
including the overlapping Tg and acid value (Ans. 2-3, citing Geary col. 1,
11. 36-37). Geary discloses that “[t]he polyol and the acid or anhydride are
reacted together with an excess of acid over alcohol so as to form a polyester
8 Beta-hydroxylalkylamide’s function as a cross-linker for the acid
functional polyester is not disputed. See, e.g., Appeal Br. 53.
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Application 12/306,746
which has free carboxylic groups.” Geary col. 2,11. 1-3. The Examiner
concludes it would have been obvious at the time of the invention to have
used a carboxyl functional polyester with a hydroxyl value lower than the
acid value because such was known to be suitable for use with beta-
hydroxylamides in powder coating compositions. Ans. 3.
As to the makeup of the branched polyester, the Examiner relies on
Kaplan’s disclosure of components that can be used, in combination, to form
carboxyl-functional polyesters. Ans. 3-4 (citing col. 3,11. 12^43). As set
forth by the Examiner, Kaplan discloses an acid component of mainly
aromatic multifunctional acids, preferably 50-80 mol% of terephthalic acid,
meeting the di-functional acid component and the at least 50 mol% of
aromatic acid requirements9 of the claims. Ans. 3 (citing Kaplan col. 3,
11. 18-24). As highlighted by the Examiner’s comments as to the residue of
acids (Ans. 3), the difference from 100 mol%, “consists of aliphatic and/or
cycloaliphatic multibasic acids” (Kaplan col. 3,11. 19-28), but small
quantities of monocarboxylic acids may be included (Kaplan col. 3,11. 29-
32). As to the di-functional alcohol component, the Examiner relies on
Kaplan’s disclosure of aliphatic diols. Ans. 3 (citing Kaplan col. 3,11. 34-
40). As to the multi-functional component, i.e., having a functionality of
three that can be hydroxyl-functional, the Examiner relies on Kaplan’s
disclosure of triols, which includes disclosure of glycerol. Ans. 3—4 (citing
Kaplan col. 3,11. 40—43). The Examiner further finds that using these
components provides a branched carboxylic acid polyester. Ans. 4. In
9 The requirement as to at least 50 mol% of the acid derived groups
originating from aromatic groups is a limitation added by dependent claim
33, rather than from independent claim 27 argued by Appellants.
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Application 12/306,746
noting that the multifunctional component implicitly results in the claimed
branching, the Examiner pro forma found that the di-functional acid
component is reactive towards a functional group on the multifunctional
component.
As to the mono-functional component comprising a monofimctional
fatty acid having at least 8 carbon atoms in the chain and that there is
15 wt% or less of fatty acid having at least 8 carbon atoms in the chain,
including mono-, di- and a mixture of mono- and di-functional fatty acids,
the Examiner relies on Kaplan’s disclosure that “[mjonocarboxylic acids,
such e.g. as benzoic acid[,] tertiary butylbenzoic acid, hexahydrobenzoic
acid and saturated aliphatic carboxylic acids, can also be used in small
quantities” (emphasis added) (Ans. 4, citing Kaplan col. 3,11. 29-32) and on
Bejko for disclosing both the use of aliphatic monocarboxylic acids, and
fatty acids, for use in carboxyl functional polyesters with beta-
hydroxylalkylamide crosslinked powder coatings (Ans. 4, citing Bejko 119).
The Examiner concludes it would have been obvious for one of ordinary
skill in the art at the time of the invention to have included in the polyester
of Kaplan fatty acids as taught by Bejko to be the equivalent of aliphatic
monocarboxylic acids. Ans. 4. As to the branched polymer comprising
15 wt% or less fatty acid (claim 27, having at least 8 carbon atoms in the
fatty acid chain), the Examiner relies on Kaplan’s disclosed use of 80 mol%
terephthalic acid, which is aromatic, and that only a portion of the further
identified acids, monocarboxylic acids, are analogous to fatty acids such that
inclusion of fatty acid in amounts within the claimed range of 15 wt% or less
is reasonably suggested (Ans. 4-5).
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Alternatively, as to the inclusion of fatty acid in amounts up to
15 wt%, the Examiner relies on De Jongh for its inclusion of up to 15 wt%
monofimctional chain stoppers in a carboxyl functional polyester that is
suitable for use in powder coating compositions. Ans. 5. The Examiner
relies on the reasonable inference that fatty acids, being monofimctional
carboxylic acids, are monofunctional chain stoppers and concludes de facto
that it would have been obvious at the time of the invention to have included
monofimctional aliphatic carboxylic acids within the meaning of the phrase
fatty acid in amounts less than or equal to 15 wt%. Ans. 5.
In essence, with or without De Jongh, the Examiner relies on Kaplan’s
disclosure as to forming carboxyl-functional polyesters by combination of
various possible components where selection of particular components in
accordance with the disclosure leads to claimed subject matter. In this
regard, it is well-settled that the prior art is good for all that it discloses,
including, as here, each of the various possible combinations manifest in the
teaching to react different types of compounds when the reference also sets
forth distinct species within each type. Merck & Co. Inc. v. Biocraft
Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“Disclos[ing] a
multitude of effective combinations does not render any particular
formulation less obvious.”); see also In re Lamberti, 545 F.2d 747, 750
(CCPA) (A reference’s disclosure is not limited to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art.). Where Kaplan’s disclosed residue of diacids can
be acids other than fatty acids, and there is explicit disclosure of saturated
monocarboxylic acid, it is reasonably inferred that this component (or its
equivalent) is suggested for inclusion in amounts of no greater than 15 wt%.
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See, e.g., In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
Appellants’ arguments fail to adequately address the rejection as set
forth by the Examiner, particularly as discussed above.
Appellants contend that their invention is directed to providing
“powder coatings with improved corrosion resistance” and that Kaplan,
being silent as to this property, and teaching various possibilities as to
components, fails to provide the necessary teaching or suggestion to modify
or combine the prior art to arrive at the claimed invention that provides such
improved corrosion resistance. See, e.g., Appeal Br. 6-7, 22-23, 30-33, 37-
40, 45, 51. Relying on this contended improved corrosion resistance,
Appellants further argue that the Examiner has failed to establish that there
was a reasonable expectation of success (Appeal Br. 14-15, 29, 31-33, 36,
38-39, 41^12, 51, 54, 56), that the results are surprising and unexpected
(Appeal Br. 36, 39, 41, 44), and that there is some teaching away grounded
on the lack of consistent results in Geary as to corrosion resistance (Appeal
Br. 12-15) or in the teaching of other components than those relied on by the
Examiner, e.g., epoxides rather than diols or polyols (Appeal Br. 35, 47).
Appellants’ argument as to the lack of teaching or suggestion is
wholly without merit as the requisite basis is the use of Kaplan’s disclosed
combinations manifest in the cited teaching to provide powder coating
compositions, which is the same purpose claimed. “In determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int 7 Co.
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Application 12/306,746
v. Teleflex Inc., 550 U.S. at 419; see also In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996) (“Although the motivation to combine here differs from that
of the applicant, the motivation in the prior art to combine the references
does not have to be identical to that of the applicant to establish
obviousness.”); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he
law does not require that the references be combined for the reasons
contemplated by the inventor.”). Further, as noted by the Examiner, the
claims do not require improved corrosion resistance. Ans. 7, 13. Unclaimed
features cannot impart patentability to the claims. In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
As to the argument that the Examiner has failed to establish a
reasonable expectation of success, the argument lacks persuasive merit for at
least the reason that the contended deficiency is directed to a feature that is
not required by the claims—improved corrosion resistance—and because, as
noted by the Examiner, the combined art is analogous and the proper
motivation has been set forth for each combination. Ans. 9-10, 12-13.
As to the argument that there are surprising and unexpected results,
Appellants have failed to carry the requisite burden to rebut the prima facie
case. It is well-established that Appellants bear the burden of showing that
the claimed invention imparts surprising results. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). To meet the burden, Appellants must establish that the results
actually would have been unexpected, and that the unexpected results are
reasonably commensurate with the scope of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
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Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. For
reasons well-expressed by the Examiner (Ans. 7-8), Appellants’ proffer is
inadequate where the two proffered examples from the Specification are
both “inventive” and there are no comparative examples and no showing that
Tg, acid or hydroxyl value or wt% of fatty acid is critical. Further, to the
degree these differ from the prior art, there is no evidence that the difference
would have been unexpected as the cited portions of the Specification are
wholly inadequate—Spec. 2,11. 1-3, 12,11. 25-27—to establish such, and
attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
As to the teaching away arguments relying on Geary, we discern no
persuasive merit where the proffered argument is grounded on there being a
teaching away from improved corrosion resistance (Appeal Br. 12-15),
where such improved corrosion resistance is not claimed (claim 27). As to
Appellants’ arguments that there is a teaching away in the teaching of
epoxides as an alternative to diols or polyols are also without persuasive
merit. See, e.g., Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a
reference a teaching away from a process where no such language exists.”).
Whether a reference teaches away from a claimed invention is a question of
fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). The disclosure of
alternatives, including those that are superior, does not constitute a teaching
away. In reMouttet, 686 F.3d 1322, 1333-34 (Fed. Cir. 2012) (“[J]ust
because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.”).
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Appellants proffer further arguments grounded on the Examiner’s
reliance on Kaplan teaching the use of saturated aliphatic monocarboxylic
acids and Bejko teaching that fatty acids are members of the class of
monocarboxylic acids. See, e.g., Appeal Br. 24-27, 43^14, 48-50.
Appellants contend the Examiner has failed to establish that it would have
been obvious to include fatty acids in Kaplan’s composition because one of
ordinary skill in the art would have understood the relied on disclosure of
“saturated aliphatic carboxylic acids” as not being a subset of what the
“monocarboxylic acids” could be, but rather to be a separate, distinct
category. See, e.g., Appeal Br. 26 (citing Kaplan col. 3,11. 29-32).
Appellants’ arguments are wholly without foundation. As manifest from the
cited portion of Kaplan, reproduced below:
Monocarboxylic acids, such e.g. as benzoic acid[,] tertiary
butylbenzoic acid, hexahydrobenzoic acid and saturated
aliphatic carboxylic acids, can also be used in small quantities.
(Kaplan col. 3,11. 29-32), the reference teaches the inclusion of
monocarboxylic acids and that the included monocarboxylic acids can be
saturated aliphatic carboxylic acids. Contrary to Appellants’ position, there
is no conflict in the fact that some aliphatic carboxylic acids are not
monocarboxylic acids. Further, Appellants’ reliance on “saturated aliphatic
carboxylic acids” being set off by use of the conjunctive “and” is of no
import where the clause of exemplary monocarboxylic acids—terminated by
the comma following “aliphatic carboxylic acids”—includes “aliphatic
carboxylic acids.”
Appellants’ argument as to Bejko is likewise wholly without
persuasive merit as the cited portion of Bejko explains that when tri- or
higher functionality compounds are included in the polyester, that:
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it is possible to include monofimctional carboxylic acids or
anhydrides or anhydrides of monocarboxylic acids, such as
versatic acid, fatty acids, or neodecanoic acid, so long as the
poly-functional acid component has an average functionality of
at least two.
(Bejko 119), making manifest that Bejko teaches both the inclusion of
monofimctional carboxylic acids and that included carboxylic acids can be
fatty acids. Further, as explained by the Examiner, the combined teachings
would have led one of ordinary skill in the art to use monofimctional fatty
acids. See, e.g., Ans. 9-10.
Appellants proffer still a further related argument grounded on
Hawley’s disclosure that “fatty acids” would not be understood to be
members of the class of monocarboxylic acids because “[t]hey are classed
among the lipids together with soaps and waxes” (Appeal Br. 27), but we
discern no persuasive merit absent any cogent argument or evidence why the
meaning of “monocarboxylic acids” does not encompass some fatty acids.
Appellants further argue, in various ways, how the prior art fails to
provide the claims limitations when combined. Generally Appeal Br.
Certain of these arguments rely on Appellants’ contentions that particular
claim limitations are not taught by the individual references. See, e.g.,
Appeal Br. 6-21, 23-24. These arguments, however, are not persuasive
because they fail to address the rejection grounded on the combination as set
forth by the Examiner. Cf. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based on the teachings of a combination
of references . . . [The reference] must be read, not in isolation, but for what
it fairly teaches in combination with the prior art as a whole.”). Other
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arguments are grounded on Appellants’ contentions that the combined prior
art, taking into account the teachings of the prior art as a whole, would result
in a binder differing from that claimed. See, e.g., Appeal Br. 10-12, 16-21,
50-54. Appellants rely on the proposition that it is improper to take the
relied on prior art teaching out of context, however, in each instance, we find
no merit to the position that the prior art teaching relied on—Kaplan, Geary,
Bejko, and De Jongh—was not properly considered in its entirety, leaving
Appellants’ arguments, in essence, arguments against what is obtained by
the literal, bodily incorporation, or combination, of elements without regard
to the proper standard for an obviousness analysis. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of a primary reference .... Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”).
As to De Jongh, Appellants further argue that the disclosed percentage
of “monofunctional chain stoppers”—a “percentage 15”—is not sufficient to
render obvious the recited 15 wt% because it is not clear if the disclosed
percentage is a mol% or wt%, and whether it refers to the percentage relative
to the total of the polyester, the polyacid component, or the polyalcohol
component. Appeal Br. 19, 28-30; De Jongh col. 2,11. 35^40. Appellants
argue against the Examiner’s position, set forth in the Non-Final Office
Action and maintained in the Examiner’s Answer, that the percentage is
wt% since grams are used in the examples (Non-Final 5; Ans. 10), by
emphasizing that the disclosure in column 3, lines 4-7 in De Jongh, which
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uses wt%, refers to the ratio between the epoxy compound and polyester and
not the components from which the polyester was made (Appeal Br. 28).
Appellants’ argument is unpersuasive because it is not well-supported,
where it is not disputed that the examples in De Jongh—see col. 5,1. 44 to
col. 6,1. 32—do set forth the amounts of components in grams and we
discern no basis from De Jongh’s usage of wt% in describing the ratio of
epoxy compound to polyester to lessen that it likewise should be understood
to describe the ratio of alcohols in wt%.
Appellants’ further contentions that the Examiner’s rejection is
grounded on improper hindsight (Appeal Br. 29, 45-46, 48) are not
persuasive where, on this record, we are unpersuaded of any deficiency in
the Examiner’s articulated reasoning (see generally Ans.). See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”), cited with approval in KSR, 550 U.S. at 418.
For these reasons, and those set forth by the Examiner in the Non-
Final Office Action and Answer, we are unpersuaded of reversible error in
the Examiner’s rejection of the claims and, accordingly, affirm the
Examiner’s rejection. In re Jung, 637 F.3d at 1365-66.
CONCLUSION
The Examiner’s decision rejecting claims 27-30 and 32-38 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).
AFFIRMED
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