Ex Parte Verardi et al

Patent Trial and Appeal Board

May 31, 2016

12896166 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/896,166
24959 7590
PPG Industries, Inc,
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
10/01/2010
05/31/2016
FIRST NAMED INVENTOR
Christopher A. Verardi
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.
08006037Al 9116
EXAMINER
CAMERON, ERMA C
ART UNIT PAPER NUMBER
1715
MAILDATE DELIVERY MODE
05/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. VERARDI, MICHELE L. MELI,
and PAUL LAMERS
Appeal2015-000879
Application 12/896, 166
Technology Center 1700
Before JEFFREY T. SMITH, MARK NAGUMO, and MONTE T. SQUIRE,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 1, 2, 4---6,
12-14, and 16. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
For the reasons set forth below, we AFFIRM.
1 Appellants identify PPG Industries Ohio, Inc. as the Real Party in Interest.
App. Br. 2.
Appeal2015-000879
Application 12/896, 166
The Claimed Invention
Appellants' disclosure relates to a method for coating a substrate
comprising applying to at least a portion of the substrate a primer coating
composition comprising a self-emulsified polyester microgel. Abstract.
Claims 1 and 14 are representative of the claims on appeal and are
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
17,18):
1. A method for coating a substrate, comprising:
a. applying a primer coating composition onto at least a
portion of a substrate, wherein the primer coating composition
comprises a self-emulsified polyester-melamine microgel, and
wherein the polyester is hydrophilic and has an acid value of 22
to 42;
b. applying a second coating composition to at least a
portion of the substrate coated with the primer coating
composition of component (a) without first substantially curing
the primer coating composition of component (a);
c. optionally, applying a third coating composition to at
least a portion of the substrate coated with the coating
composition of component (b) without first substantially curing
(a) and/or (b );
d. substantially curing the coating compositions of
components (a), (b) and, if used, (c).
14. The method of Claim 13, wherein the additional microgel
comprises polymeric microparticles comprising a reaction
product comprising:
i. at least one acid functional reaction product of
ethylenically unsaturated monomers; and
ii. at least one hydrophobic polymer having a number
average molecular weight of at least 500.
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Appeal2015-000879
Application 12/896, 166
The References
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Hille et al., US 5,412,023 May 2, 1995
(hereinafter "Hille")
Lamers et al., US 2008/0071011 Al Mar. 20, 2008
(hereinafter "Lamers")
The Rejection
On appeal, the Examiner maintains the following rejection:
1. Claims 1, 2, 4--6, 12-14, and 16 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Lamers in view of Hille.
OPINION2
Claims 1, 2, 4--6, 12, and 16. Appellants argue claims 1, 2, 4--6, 12,
and 16 as a group. We, therefore, select claim 1 as representative of this
group, and the remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Lamers teaches nearly all of claim 1 's
limitations, except that it does not specifically disclose that "the polyester
microgel comprises a polyester melamine microgel," as required by the
2 We affirm the Examiner's rejection for the reasons set forth in the Answer,
which we adopt as our own. Nevertheless, we highlight and address specific
findings and arguments for emphasis as follows.
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Appeal2015-000879
Application 12/896, 166
claim. Final Act. 4 (citing Lamers, Abstract, i-fi-1 5, 9, 15, 56, 64, 65, 66, 68,
69, 70, 73, and Examples A and B). The Examiner, however, relies on Hille
for teaching this missing limitation. Id.
In particular, the Examiner finds that Hille teaches "the use of a self-
emulsified polyester microparticle, wherein the polyester is formulated with
acid functionality to have an acid value between 20 and 50 ... so that the
polyester can be stably dispersed in an aqueous medium without the use of
further surfactant aids." Final Act. 4 (citing Hille, Abstract, col. 3, 11. 48-52,
col. 4, 11. 52-54, col. 12, 11. 28---62, and Example 13). The Examiner finds
further that Hille teaches that the "polyester is combined with a melamine
component, resulting in a polyester-melamine microgel dispersion, as
discussed in Example 13 ([Hille,] col. 12), which results in [a] self-
emulsified ... stable dispersion without the use of surfactants or emulsifying
aids." Id. (citing Hille, col. 12, 11. 28-62).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention "to have modified the
polyester microgel disclosed in Lamers, to include a polyester-melamine
microgel, with a reasonable expectation that said microgel would have been
a successful means of providing a self-emulsified polyester microparticle,
which is operable as a self-dispersed microparticle in waterborne coatings
compositions." Final Act. 5.
Appellants argue that the Examiner's rejection of claim 1 should be
reversed because there is no motivation to combine the references. App. Br.
10. In particular, Appellants argue that "there is no motivation in either
reference to use the self-emulsified micro gels of Hille ... which provide
metallic pigment stability to waterborne base coats, in a coating composition
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Appeal2015-000879
Application 12/896, 166
used as a primer in the compact process of Lamers" and that there is "no
indication that the polyester-melamine micro gels of Hille ... would provide
superior adhesion to a substrate even at low cure temperatures as required by
the Lamers primers." App. Br. 12
We are not persuaded by Appellants' arguments. Based on the record
before us and contrary to Appellants' argument, we find that the Examiner's
findings and rationale for why one of ordinary skill would have combined
the teachings of Lamers and Hille to arrive at the claimed invention are well-
supported by the evidence and based on sound technical reasoning. Lamers,
Abstract, i-fi-15, 9, 15, 56, 64, 65, 66, 68, 69, 70, 73, and Examples A and B;
Hille, Abstract, col. 3, 11. 48-52, col. 4, 11. 52-54, col. 12, 11. 28-62, and
Example 13. As the Examiner concluded (Final Act. 5), it would have been
obvious to one of ordinary skill in the art to combine Lamers' teachings
regarding a polyester microgel (Lamers i-fi-15, 9, 15, and Examples A and B)
with Hille's teachings regarding a polyester-melamine microgel dispersion
(Hille, Abstract, col. 12, 11. 28---62, and Example 13) because doing so would
have been a successful means of providing a self-emulsified polyester
microparticle, which is operable as a self-dispersed microparticle in
waterborne coatings compositions.
Appellants fail to direct us to a preponderance of the evidence or
provide an adequate technical explanation for why the Examiner's
articulated reasoning for combining the teachings of the prior art to arrive at
the claimed invention lacks a rational underpinning or is otherwise based on
some reversible error. Appellants' conclusory assertions regarding the scope
of Hille' s and Lamers' teachings and what one skilled in the art "having
common sense" would not have considered (App. Br. 12), without more, are
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Appeal2015-000879
Application 12/896, 166
insufficient to adequately rebut the Examiner's findings in this regard. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Moreover, the fact that Appellants disagree with the Examiner's
reason for combining the cited references, without more, is insufficient to
establish reversible error. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a
reason for combining the elements in the manner claimed). See also In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason to
combine the prior art references need not be the same as that of applicants).
Appellants argue that this rejection should be reversed because the
references considered as a whole do not lead to the claimed invention. App.
Br. 13. In particular, Appellants argue that "[i]f one were to combine the
whole teachings of Lamers with the whole teaching[ s] of the Hille et al.
reference, one would not arrive at the present invention as claimed." Id. at
13.
We are not persuaded by this argument because Appellants do not
identify sufficient evidence in the record to support it, and attorney argument
is not evidence. In re De Blauwe, 736 F.2d at 705. As previously discussed
above, the Examiner's findings regarding Lamers' and Hille's teachings and
rationale for why one of ordinary skill would have combined these teachings
to arrive at the claimed invention are adequately supported by the evidence.
Moreover, Appellants' conclusory assertion that "the teachings of the Hille
et al. reference combined with Lamers teach away from the present
invention" (App. Br. 13, 14), without more, is insufficient to rebut or
otherwise establish reversible error in the Examiner's findings in this regard.
Cf DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364
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Application 12/896, 166
(Fed. Cir. 2006) ("We will not read into a reference a teaching away ...
where no such language exists").
Accordingly, we affirm the Examiner's rejection of claims 1, 2, 4---6,
12, and 16 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Lamers and Hille.
Claims 13 and 14. We sustain the rejection of claims 13 and 14 for
the reasons presented above. Appellants fail to set forth separate,
substantive arguments for claims 13 and 14. Instead, Appellants devote a
separate paragraph to claims 13 and 14, and repeatedly state "[t]here is no
teaching or suggestion in the references of a method for coating a substrate
in accordance with the present invention for reasons discussed above." App.
Br. 15. Such comments do not constitute arguments for separate
patentability under 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, we affirm the Examiner's rejection of claims 13 and 14
under 35 U.S.C. § 103(a) as unpatentable over the combination of Lamers
and Hille.
DECISION/ORDER
The Examiner's rejection of claims 1, 2, 4---6, 12-14, and 16 under
35 U.S.C. § 103(a) as unpatentable over Lamers in view of Hille is affirmed.
It is ordered that 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. § 1.136(a).
AFFIRMED
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