Ex Parte Van Den Berg et al

Patent Trial and Appeal Board

Aug 22, 2016

12308355 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/308,355 07/23/2010
4743 7590 08/24/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Keimpe Jan Van Den Berg
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.
C0/2-23920/Z/AKZ l/PCT 4407
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIMPE JAN VAN DEN BERG,
JOSEPHUS CHRISTIAAN VAN OORSCHOT,
EDITH BENNINGSHOF-HULSBOS,
and JAN CORNELIS VAN BEELEN
Appeal2014-007094
Application 12/308,355 1
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 8, and 16-22. We have jurisdiction
pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appeal Brief, the Real Party in Interest is CIBA
Corporation. (App. Br. 3.)
Appeal2014-007094
Application 12/308,355
BACKGROUND
According to Appellants, the invention is directed to "an actinic
radiation-curable coating composition comprising a compound having at
least two isocyanate groups, a compound having at least two hydroxyl
groups, and a photolatent catalyst for the isocyanate-hydroxyl addition
reaction." (Spec. 1 ). Claim 1 is reproduced below from the Claims
Appendix to the principal Brief:
1. An actinic radiation-curable coating composition
compnsmg
a compound having at least two isocyanate groups,
a compound having at least two hydroxyl groups,
a sensitizer, and
a photolatent catalyst for the isocyanate-hydroxyl
addition reaction,
wherein the photolatent catalyst is an organic metal
compound
compnsmg a catalytically active metal,
wherein the catalytically active metal atom in the organic
metal
compound has no bonds to other metal atoms, and
wherein the photolatent catalyst is dibutyl dibenzyl tin, dibutyl
di-(3-methoxybenzyl)tin, or dibutyl di-(naphthalene-1-yl-
methyl)tin.
The Examiner maintains, and Appellants appeal, the rejection of
claims 1, 8, and 16-22 under 35 U.S.C. § 103(a) as unpatentable over
Klinkenberg (U.S. Patent No. 6,579,913, issued Jun. 17, 2003) in view of
Gerkin (U.S. Patent Application Publication No. 2003/0199663, published
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Appeal2014-007094
Application 12/308,355
Oct. 23, 2003) and Goldstein (U.S. Patent No. 5,850,064, issued Dec. 15,
1998).2
ANALYSIS
Appellants argue the Klinkenberg describes the advantages of
compositions comprising photolatent base belonging to the group of a-
amino acetophenones and does not teach or suggest a photolatent tin catalyst
as required by claim 1. (App. Br. 8). Appellants argue the Examiner has not
adequately explained why a person of ordinary skill in the art would replace
Klinkenberg's optional tin catalyst with a very specific photolatent tin
catalyst. (App. Br. 9).
The Examiner found3 Klinkenberg describes photoactivatable coatings
comprising photolatent catalyst. (Final Act. 4). Klinkenberg discloses the
photo activatable coatings comprise a photolatent base and optionally-if
hydroxyl functional compounds are present- an additional tin catalyst.
(Klinkenberg, col. 1, 11. 45-59, col. 8, 11. 18-22). The Examiner recognized
Klinkenberg' s tin catalyst was not described as a photo latent catalyst. (Final
Act. 4). The Examiner found the pot life of Klinkenberg's coating
composition was greater than one day. (Final Act. 4). The Examiner found
Gerkin described dibutyl dibenzyl tin catalyst that are latent catalyst for the
isocyanate-hydroxyl addition reaction. (Final Act. 4; Gerkin ,-i,-i 39--42, 45).
The Examiner cited Goldberg for describing tin catalyst were known to be
2 The Examiner withdrew the rejection of claims 1, 8, and 16-20 over
Klinkenberg, Zemlin and Goldstein. (Ans. 4).
3 A complete statement of the Examiner's findings appear in the Final
Action dated June 17, 2013.
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Appeal2014-007094
Application 12/308,355
heat or UV activatable. (Final Act. 5). The Examiner determined that it
would have been obvious to a person of ordinary skill in the art to use a
latent dibutyl dibenzyl tin catalyst as tin based catalyst in Klinkenberg for
the isocyanate-hydroxyl reaction- with the expectation of achieving the
required pot life required by Klinkenberg. (Final Act. 5).
Appellants' arguments are not persuasive of reversible error in the
Examiner's rejection. It is not been disputed that Klinkenberg discloses
photoactivatable compositions comprising optionally utilizing a tin based
catalyst reaction for hydroxyl groups. The Examiner found Gerkin describes
latent dibutyl dibenzyl tin catalyst that would achieve Klinkenberg's pot life
requirements. As such, the Examiner reasonably determined that it would
have been obvious to a person of ordinary skill in the art to utilize a dibutyl
dibenzyl tin catalyst Klinkenberg's coating composition. The "comprising"
claim language does not preclude the use of more than one catalyst.
Klinkenberg describes the situation in which is desirable to utilize tin
catalyst. Klinkenberg disclosure in col. 8 does not provide an exclusive list
of suitable catalysts. The Examiner has properly identified dibutyl dibenzyl
tin catalyst was a known catalyst for reacting with hydroxyl groups.
Consequently, a person of ordinary skill in the art would have reasonably
expected that a dibutyl dibenzyl tin catalyst would have been suitable for use
in Klinkenberg.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of prima facie obviousness was based. In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976). Appellants argue that the data presented in
Tables 3--4 of the Specification demonstrate that the claimed coating
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Appeal2014-007094
Application 12/308,355
compositions exhibit long gel time and indicates the compositions have a
long pot life. (App. Br. 18).
The Examiner asserts the evidence presented in the specification
describes expected results in view of the teachings of Gerkin. (Answer 5-6).
The coating compositions of Klinkenberg exhibit long pot life and Gerkin
describes latent dibutyl dibenzyl tin catalyst have a long pot life.
(Klinkenberg, col. 8; Gerkin iJ80). In view of the disclosure of Klinkenberg
and Gerkin, Appellants have not demonstrated the data presented in the
Specification exhibits unexpected results.
Therefore, on this record, we find no reversible error in the
Examiner's determination that the evidence of obviousness, on balance,
outweighs the evidence of non-obviousness relied upon by Appellants, and
we accordingly sustain the Examiner's rejection of claims 1, 8 and 16-22
under 35 U.S.C. § 103(a) as unpatentable over Klinkenberg, Gerkin, and
Goldberg.
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection
withthis appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
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