Ex Parte Walters et al

Board of Patent Appeals and Interferences

Jun 28, 2011

10324725 (B.P.A.I. Jun. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/324,725 12/19/2002 David N. Walters 1718A1 1096
24959 7590 06/28/2011
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
06/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID N. WALTERS, JAMES A. CLAAR, JOHN R. RASSAU
and MELANIE S. CAMPBELL
____________

Appeal 2009-012430
Application 10/324,725
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 55-57, 2, 5-7, and 38. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2009-012430
Application 10/324,725

2
Appellants’ claimed invention is directed to a multi-component
coating method wherein a spray applicator including a mixing chamber is
employed for forming a coating, such as an automobile refinish coating
(Spec. 0013 - 0015; Fig. 1). A rheological profile of one or more of the
components of the multi-component coating is selected or adjusted such that
the coating components are delivered to the spray applicator at a
predetermined volume ratio over a selected temperature range and shear rate
range (Spec. 0007, 0008, and 0018-0021).
Appellants acknowledge that the rheological profile of a material can
be adjusted in a conventional manner, such as by changing the molecular
weight of a polymer, by selection of the solvent used, etc. (Spec. 0019).
Moreover, Appellants acknowledge that the relative amount of coating
material drawn into the spray applicator can also be adjusted by other means,
such as by adjustment of collection tube diameters for the components to be
supplied to the spray applicator (Spec. 0019). Furthermore, Appellants
acknowledge that the mixing of the coating components can occur in a
conventional manner in the coating device (Spec. 0020).
Claim 55 is illustrative and reproduced below:
55. A method of applying a multi-component coating composition
to a substrate with a spray applicator in which each component is delivered
to and mixed in a mixing chamber within the spray applicator to form a
coating mixture that is discharged from the spray applicator to form a
coating on the substrate; the method further comprising selecting and/or
adjusting the rheological profile of one or more of the components of the
multi-component coating composition such that each of the components is
delivered to the spray applicator at a predetermined volume ratio over a
selected temperature range and shear rate range.

Appeal 2009-012430
Application 10/324,725

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The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Sandison 5,713,519 Feb. 3, 1998
Casper 6,297,311B1 Oct. 2, 2001
Bruinsma 5,922,299 Jul. 13, 1999
Jones 5,738,934 Apr. 14, 1998
The Examiner maintains the following grounds of rejection:
Claims 2, 5-7, 38, and 55-57 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Casper or Sandison, each alone or further in view
of Jones or Bruinsma. We reverse the stated rejections over Casper. We
affirm the stated rejections over Sandison.
The Examiner acknowledges that Casper or Sandison do not explicitly
describe “selecting rheological profiles of the coating components” (Ans. 4).
However, the Examiner argues that (Ans. 4):
It is the Examiner's position that the adjustment and
selection of the rheological profiles of a coating
composition is commonplace in the art and is performed
explicitly or implicitly by the practitioner in the art to
achieve the proper ideal coating composition for the
application of choice. Hence, it is the Examiner's position
that the "rheological profiles" are a result effective
variable that is conventionally "selected" to achieve
optimized results. In support of the Examiner's position,
Sandison et al. (5,713,519), as noted above, teach that one
must prevent premature curing to prevent build-up in the
nozzle and a change in properties of the components.

Alternatively, the Examiner urges that (Ans. 5):
it would have been obvious for one skilled in the art at the
time the invention was made to have modified Casper et
al. (6,297,391) or Sandison et al. (5,713,519) process by
"selecting/adjusting" the rheological profiles of the coating
components as evidenced by Jones (5,738,934) or
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Application 10/324,725

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Bruinsma et al. (5,922,299) with the expectation of
achieving the optimized results.

Appellants, on the other hand, urge that Casper does not disclose how
the spray coating application is accomplished and provides no consideration
of the claimed process requiring use of a spray applicator wherein coating
components are delivered to and mixed in a mixing chamber within the
spray applicator and wherein a rheological profile of one or more coating
components are selected or adjusted as part of the component delivery
method (Br. 4).
As to the rejections over Sandison, Appellants argue that “[t]here is no
suggestion in Sandison to combine the components within the spray
applicator and discharge a mixture of the combined components” (Br.4).
Appellants urge that it would not have been obvious to one of ordinary skill
in the art to modify Sandison to mix the components internally and
discharge a mixture because Sandison cautions that such an approach would
result in premature reaction of components and reduce performance (id.).
Moreover, Appellants maintain Sandison independently sprays the
components of a multiple component mixture and uses the cross-sectional
areas of each nozzle to determine the ratio of each component being sprayed,
and does not suggest adjusting the rheological profile of the components as a
way to control the volume of each component delivered to the spray
applicator (Br. 4-5).
Appeal 2009-012430
Application 10/324,725

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Appellants urge that the optionally applied additional references do
not overcome the argued deficiencies of Casper or Sandison as to teaching
or suggesting the method of claim 55.1

ISSUES2
Have Appellants’ arguments indicated that the Examiner has not
proffered sufficient evidence coupled with a sustainable rationale that would
have prompted one of ordinary skill in the art to carry out the coating
methods of either Casper or Sandison in a manner corresponding to the
claimed method?
We answer in the affirmative as to the rejections over Casper. We
answer in the negative as to the rejections over Sandison.

DISCUSSION
Rejections over Casper
Concerning the rejections over Casper alone or in view of either of
Jones or Bruinsma, we agree with Appellants that the Examiner’s rejection
presentation falls short in addressing where and how Casper furnishes
sufficient detail as to a spray coating method as claimed. In this regard, the
Examiner does not articulate how Casper would have suggested to one of

1 Appellants argue the rejected claims together. Thus, we select claim 55,
the sole independent claim on appeal, as the representative claim on which
we decide this appeal.
2 Appellants’ comments concerning the Examiner’s non-entry of an
amendment submitted after final are out of place in the Appeal Brief as such
is not an issue for review on appeal (Br. 6). Relief for such a matter, if relief
were appropriate, should have been timely sought by filing an appropriate
petition.
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Application 10/324,725

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ordinary skill in the art using a spray applicator wherein each coating
composition component is delivered to and mixed within a mixing chamber
internal to the spray applicator, as required by representative claim 55(see
generally Ans.).
In this regard, the portions of Casper (col. 4, ll. 60-67 and col. 6, ll.
15-30) referred to by the Examiner disclose applying the coating via
spraying but the Examiner has not addressed how these cited teachings
would have suggested using a spray applicator wherein “each component is
delivered to and mixed in a mixing chamber within the spray applicator,” as
required by appealed claim 55. The Examiner does not rely on either of
Jones or Bruinsma to address this claimed feature.
It follows that, on this record, we reverse the Examiner’s obviousness
rejections over Casper.

Rejections over Sandison
As essentially found by the Examiner, Sandison, like Appellants,
teaches a multi-component coating method wherein each coating component
is delivered to a spray applicator mixing chamber for mixing and for
subsequent discharge of the coating mixture from the applicator to form a
coating on a substrate (Ans. 3-4 and 6; Sandison, col. 1, ll. 24-40).
Appellants argue that Sandison indicates that such a spraying technique may
result in earlier reactions than desired, reduce performance, and may clog the
nozzle, particularly in the case of multiple component adhesives wherein one
component is an activator/catalyst (Br. 4; Sandison, col. 1, ll. 29-57).
Appellants note that Sandison teaches mixing the coating components after
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Application 10/324,725

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they leave the spray applicator as a solution to the aforementioned
disadvantages associated with mixing components in the spray applicator.
This argument is not persuasive of error in the Examiner’s
obviousness rejection because: (a) representative claim 55 is not limited to
application of a multiple component adhesive that includes an
activator/catalyst; and (2) Sandison does not teach away from employing a
spraying technique with component mixing within the spray applicator for
all multiple component coatings. Indeed, even for multiple component
adhesive coatings involving an activator, Sandison teaches that the disclosed
adverse effects of pre-mixing in the spraying applicator may (or may not)
occur and that such possible disadvantages can be at least partially offset by
“meticulous cleaning of the internal parts of the spray applicator” (col. 1, ll.
52-54). Furthermore, this argument is undercut by Appellants
acknowledgement that their mixing of the coating components can occur in a
conventional manner within the coating device (Spec. 0020).
Appellants argue that Sandison uses the cross-sectional areas of each
nozzle to determine the ratio of each component being sprayed, and does not
suggest adjusting the rheological profile of the components as a way to
control the volume of each component delivered to the spray applicator.
This argument is not persuasive of harmful error in the Examiner’s
obviousness rejection. This is because representative claim 55 is not limited
to adjusting the rheological profile of each of the coating components as a
way to control the volume of the components delivered to the applicator as
argued. Rather, claim 55 embraces the option of selecting the rheological
profile of one or more of the components so that each of the components is
delivered to the applicator “at a predetermined volume ratio over a selected
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Application 10/324,725

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temperature range and shear rate range” (claim 55). Selecting a component
rheological profile does not necessitate adjustment of the rheological profile
of a component.
Moreover and as pointed out by Appellants in the Specification, the
relative amount of coating material drawn into Applicants’ spray applicator
can be adjusted by other means, such as by adjustment of collection tube
diameters for the components to be supplied to the spray applicator (Spec.
0019). In this regard, claim 55 employs open “comprises” terminology,
which leaves the claimed method open to using additional techniques for
controlling component volume flow, such as adjusting the diameter of tubes
used in transporting the coating components.
Also, Appellants acknowledge that the rheological profile of a
material can be adjusted in a conventional manner, such as by changing the
molecular weight of a polymer, by selection of the solvent used, etc. (Spec.
0019). This admission supports the Examiner’s common sense assertion to
the effect that the selection of the rheological profile of the coating
components to be delivered to a spray nozzle is commonplace and undercuts
Appellants’ countervailing argument. After all, the selection of a coating
component, such as a polymer, implicitly involves selection of the polymer
molecular weight and coating component viscosity. One of ordinary skill in
the art would have obviously performed this selection for a coating
component prior to its delivery to a spray applicator and such selection
would have been reasonably expected to be result effective in terms of the
flow volume delivered through a conduit under a given set of operating
conditions, including delivery pressure conditions. This would have been
particularly so when using a conventional supply technique for coating
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Application 10/324,725

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components to the spray applicator, such as a venturi effect technique, as
taught by Sandison. Indeed, and while unnecessary to the Examiner’s
obviousness position, the optionally applied additional reference, Jones,
further supports the Examiner’s position by teaching that viscosity and
rheological properties of a coating solution are known parameters that can be
selected/adjusted for the particular coating application technique employed
(col. 4, ll. 16-21).3
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (citing 35 U.S.C. § 103). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. Here, Appellants’
arguments do not indicate that which is asserted as “the improvement is
more than the predictable use of prior art elements according to their
established functions.” Id. at 417.

CONCLUSION/ORDER
The Examiner’s decision to reject claims 2, 5-7, 38, and 55-57 under
35 U.S.C. § 103(a) as being unpatentable over Casper alone or further in
view of Jones or Bruinsma is reversed. The Examiner’s decision to reject
claims 2, 5-7, 38, and 55-57 under 35 U.S.C. § 103(a) as being unpatentable
over Sandison alone or further in view of Jones or Bruinsma is affirmed.

3 We need not further discuss the optionally applied Bruinsma reference.
Appeal 2009-012430
Application 10/324,725

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

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