Ex Parte Verborgt et al

Patent Trial and Appeal Board

Sep 11, 2015

11183220 (P.T.A.B. Sep. 11, 2015)

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
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