Ex Parte Vogel et alDownload PDFPatent Trial and Appeal BoardJan 24, 201811921603 (P.T.A.B. Jan. 24, 2018) 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. 11/921,603 12/05/2007 Thomas Vogel 32471/23333 7400 4743 7590 01/26/2018 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER KRUER, KEVIN R ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 01/26/2018 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 THOMAS VOGEL, ADALBERT BRAIG, and VIEN VAN TOAN Appeal 2017-000418 Application 11/921,603 Technology Center 3600 Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-000418 Application 11/921,603 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s Final rejection of claims 4-9, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION The claims are directed to automotive coatings comprising tris(hydroxyphenyl) triazines. Claims 4 and 26 are independent. Br. 30-34 (Claims App.). Claim 4, reproduced below, is illustrative of the claimed subject matter: 4. An automotive coating composition comprising compound of formula (Ha) Wherein Ri, RT and Ri” are independently hydrogen, C4-C24alkyl, C2-Cisalkenyl or Cs-Ci2cycloalkyl; and R21, R21’ and R21” are independently C4- C24alkyl, C2-Ci8alkenyl or C5-Ci2cycloalkyl. 1 Appellants assert that CIBA Specialty Chemicals Corp. is the real party in interest. Br. 3. 2 Appeal 2017-000418 Application 11/921,603 REFERENCES Hardy US 3,268,474 Aug. 23, 1966 Geary US 4,804,581 Feb. 14, 1989 REJECTION Claims 4-9, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Geary and Hardy. Final Act. 3. ANALYSIS The Examiner finds that Geary teaches an elastomer-modified automotive coating that may contain “light stabilizers.” Final Act. 3 (citing Geary, 2:15+, 7:35+); see Geary, 7:35-38. The Examiner acknowledges that Geary does not expressly teach the claimed triazine compounds, and therefore relies on Hardy for this teaching. Id. at 3—4. Hardy discloses a class of tris-aryl-triazine compounds, defined by a “Formula I,” as well as a “particularly preferred class of ultraviolet absorbers” based on this Formula I. Hardy, 1:65-2:51. Hardy describes the particularly preferred class of compounds as “symmetrical tris-orthohydroxy phenyl (or naphthyl)-s-triazines further substituted in the aryl moieties at the 4-position, i.e., meta to the hydroxyl group by an hydroxyl or alkoxy radical.” Hardy 2:47-51. The Examiner finds that one of ordinary skill in the art “could have at once envisaged” the claimed compounds from this particularly preferred class. Final Act. 4 (citing Hardy, 2:47+). According to the Examiner, the particularly preferred class is “relatively narrow,” the structure of individual compounds differing only as to a limited number of substituents on the phenyl rings. Id. The Examiner further asserts that all of the species in the class “are closely related with regards to the large unchanging chemical nucleus (each is a derivative of tri-ortho 3 Appeal 2017-000418 Application 11/921,603 hydroxyphenyl s-triazine) and [each has] similar properties (each is taught to be useful as a UV stabilizer).” Id. Appellants respond, inter alia, that the claimed compounds are not explicitly taught or suggested by Hardy. Br. 21-22. Appellants contend that “[n]one of the phenyl groups of the presently recited tris(hydroxyphenyl) triazine compounds of formula (Ha) are further substituted by a hydroxyl or alkoxy radical at the 4-position or at all for that matter, as they are in Hardy’s [particularly preferred class of] compounds.”2 Id (emphasis added). According to Appellants, the “distinct substitution pattern” of the claimed compounds, which are “not explicitly taught or suggested by Hardy,” exhibit “highly desirable and superior results as compared with other similarly structure[d] triazine compounds, when specifically used as a component in an automotive coating.” Id. at 22-23. In support of this contention, Appellants rely on a declaration submitted by a Dr. Adalbert Braig. Id. at 23-25. We are instructed that a reference’s teaching of a generic chemical formula constitutes a teaching of specific compounds that one of ordinary skill in the art would have “at once envisage” from the generic chemical formula. See In re Petering, 301 F.2d 676, 681-82 (CCPA 1962) (holding that a reference’s description of a “definite and limited class of compounds” that, among other things, contained only 20 compounds, each with a large unchanging parent structural nucleus and a limited number of possible substituents, constitutes a description of each member of the class, because 2 Hardy identifies Formula I as a general structural representation with Formula II being a “preferred class of triazines” per that structure. Hardy 2:1-2; 2:29-30. 4 Appeal 2017-000418 Application 11/921,603 one of ordinary skill in the art would have “at once envisage[d]” each class member). Here, however, we disagree with the Examiner that one of ordinary skill in the art would have “at once envisaged” the claimed compounds based on Hardy’s description of the particularly preferred class of compounds. Simply put, the claimed compounds are not members of Hardy’s particularly preferred class of compounds. Specifically, the claimed compounds contain an s-triazine nucleus with three 2-hydroxy phenyl substituents, each substituent further substituted in the 5- position (claim 4) or the 3- and 5- positions (claims 4 and 26), but lacking any substituent in the 4- position. Br. 30, 34 (Claims Appx.); see also Hardy 2:47-51. Conversely, in Hardy’s particularly preferred class of compounds, the 2- hydroxyl phenyl substituents are substituted in the 4- position, and not in either the 3-or 5-positions. Hardy, 2:47-51. Based on the record presented, we conclude that one of ordinary skill in the art could not have envisaged compounds based on a description of a genus that does not encompass the compounds.3 DECISION For the above reasons, the Examiner’s rejection of claims 4-9, 26, and 27 is reversed. REVERSED 3 There does not appear to be any dispute that the structure depicted by “general Formula I” (Hardy 2:1-2) may include the claimed compounds. See Ans. 9. But “[t]he fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious.” In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994). Moreover, the Examiner does not argue that one of ordinary skill in the art would have “at once envisaged” the claimed compounds from Formula I. Ans. 3. 5 Copy with citationCopy as parenthetical citation