Ex Parte Verborgt et alDownload PDFPatent Trial and Appeal BoardSep 11, 201511183220 (P.T.A.B. Sep. 11, 2015) Copy Citation 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. 11/183,220 07/14/2005 Jozef Verborgt 96866-US1 7643 26384 7590 09/11/2015 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 09/11/2015 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 JOZEF VERBORGT and ARTHUR WEBB ____________ Appeal 2013-009648 Application 11/183,2201 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 8, 9, 22, and 24 under 35 U.S.C. § 103(a) over Codolar et al. (U.S. Patent No. 6,248,806 B1, issued June 19, 2001, “Codolar”) in view of Chang et al. (U.S. Patent No. 4,732,929, issued Mar. 22, 1988, “Chang”). We have jurisdiction under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is the Government of the United States of America, as represented by the Secretary of the Navy. (Appeal Brief filed May 6, 2013 (“App. Br.”), 2.) 2 Final Office Action (“Final Act.”) mailed July 31, 2012. Appeal 2013-009648 Application 11/183,220 2 We AFFIRM. The invention relates to polyurethane compositions useful as antifouling coatings. (Spec.3 ¶ 1.) Claim 8, the sole independent claim on appeal, is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 8. An antifouling self-polishing coating comprising a thermoset formed by reacting an aromatic polyisocyanate with a polyol; wherein the thermoset is hydrolyzable in water; wherein the polyol comprises the formula X(O-R1- OH)m(O-R2)nHq; wherein X is selected from the group consisting of Si, C, B, Ti, P, Al, Mg, and Ca; wherein each Rl is an independently selected divalent radical derived from dipropylene glycol or tripropylene glycol; wherein m is 2, 3, or 4; wherein each R2 is an independently selected aliphatic group; wherein n is 0, 1, or 2; and wherein q is 1 or 2 when X is C, and is 0 when X is not C. Appellants rely on limitations in independent claim 8 in support of patentability of all appealed claims. (See generally App. Br. 2–5.) Accordingly, claims 9, 22, and 24 stand or fall with claim 8. 37 C.F.R. § 41.37(c)(iv). 3 Specification filed July 14, 2005 (“Spec.”). Appeal 2013-009648 Application 11/183,220 3 We have thoroughly considered Appellants’ arguments in support of patentability, but are not convinced of reversible error in the Examiner’s conclusion of obviousness for the reasons stated by the Examiner in the Final Office Action and the Answer. (See Final Act. 2–6; Ans.4 3–9.) Accordingly, we sustain the rejections of claims 8, 9, 22, and 24 under 35 U.S.C. § 103(a) based on the findings of fact, conclusions of law, and rebuttals to arguments expressed in the Final Office Action and the Answer. (See id.) We add the following comments primarily to address some misapprehensions on the part of Appellants with respect to the burden of proof. The Examiner finds Codolar discloses an antifouling, self-polishing paint (i.e., coating) composition “comprising rosin or rosin equivalents as a binder, biologically active ingredients and polymeric flexibilizer polymer components.” (Final Act. 2.) The Examiner concedes Codolar does not disclose that the composition includes a thermoset as required by independent claim 8. (Id. at 3.) The Examiner finds Chang discloses a coating composition comprising a polyurethane polyol that, when cured, forms a coating comprising Appellants’ claimed thermoset. (See id. at 3–4; Ans. 5–6.) The Examiner determines one of ordinary skill in the art would have been motivated by the various advantages described in Chang (e.g., improved flexibility, scratch resistance, and glossiness), to include a polyurethane polyol as taught by Chang in Codolar’s coating composition to 4 Answer mailed May 29, 2013 (“Ans.”). Appeal 2013-009648 Application 11/183,220 4 achieve, upon reaction with a curing agent, a coating comprising a thermoset as recited in claim 8. (See id. at 4; Ans. 5–6.) Appellants dispute the Examiner’s finding that one of ordinary skill in the art would have had a reasonable expectation of success in using Chang’s thermoset in Codolar’s composition. (App. Br. 4; see Final Act. 4 (finding that because Codolar already uses polymeric flexibilizers to control the mechanical and polishing properties of the composition, the skilled artisan would have had a reasonable expectation of success in adding a thermoset which similarly provides improvements to a coating composition’s properties, such as flexibility, scratch resistance, etc.).) Appellants rely on the Declaration under 37 C.F.R. § 1.132 of Dr. Jozef Verborgt, one of the named inventors, to support their contention that the rosin in Codolar’s composition would inhibit formation of a thermoset. (See App. Br. 4; Reply Br. 2.) As explained in detail on pages 6–8 of the Answer, the declaration fails to provide persuasive evidence that the Examiner’s proposed combination would not result in formation of a thermoset as claimed, because the limited testing conducted by Dr. Verborgt was not commensurate in scope with the claims and did not represent a comparison to the closest prior art of record. Although Appellants are correct in stating they are not required to prove that every possible combination of Chang’s reactants would not form a thermoset in Codalor’s composition, Appellants’ testing must be adequate to support a conclusion that other combinations of Chang’s reactants within the scope of claim 8 reasonably would be expected to behave in the same manner as the tested embodiment. Cf. In re Kao, 639 Appeal 2013-009648 Application 11/183,220 5 F.3d 1057, 1068 (Fed. Cir. 2011). The limited testing conducted by Dr. Verborgt is insufficient to support such conclusion. See Ans. 8. Appellants contend that because the declaration provides evidence that one of ordinary skill in the art would not have had a reasonable expectation of success in combining the references, the burden was shifted to the Examiner to provide evidence to the contrary. (See Reply Br. 2–3.) Appellants’ argument attempts to improperly shift the burden of proof to the Examiner. During patent examination the PTO bears the initial burden of presenting a prima facie case of unpatentability. . . . [W]hen a prima facie case is made, the burden shifts to the applicant to come forward with evidence and/or argument supporting patentability. Patentability vel non is then determined on the entirety of the record, by a preponderance of evidence and weight of argument. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002) (citations omitted). Contrary to Appellants’ position, the Examiner is not required to put forth evidence to disprove Appellants’ testing. In sum, having considered the totality of the evidence of record relied upon by the Examiner and Appellants, including the Verborgt Declaration, we find a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness, and for the reasons expressed in the Final Office Action, the Answer, and above, we affirm the Examiner’s decision to reject claims 8, 9, 22, and 24 as obvious over Codolar in view of Chang. 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 tc Copy with citationCopy as parenthetical citation