Ex Parte Wegner et al

Patent Trials and Appeals Board

Apr 24, 2019

14111042 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/111,042 02/05/2014 Egon Wegner
48394 7590 04/26/2019
SERVILLA WHITNEY LLC
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
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.
BCM0061
(PAT0001648US02)
CONFIRMATION NO.
1160
EXAMINER
WEDDLE, ALEXANDER MARION
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
docket@dsiplaw.com
lmurphy@dsiplaw.com
hservilla@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EGON WEGNER and PETER MA YENFELS
Appeal2018-005857
Application 14/111,042
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
JANEE. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting, under 35 U.S.C. § 103(a), claims 1-7 and 10-21
as unpatentable over Weikard2 in view ofBlasko, 3 Johnson, 4 and TGT, 5 and
1 Appellants identify BASF Coatings GmbH as the real party in interest
(Appeal Br. 3).
2 Weikard et al., US 2007/0123613 Al, published May 31, 2007
("Weikard").
3 Blasko et al., US 5,098,956, issued March 24, 1992 ("Blasko").
4 Johnson et al., US 4,954,553, issued September 4, 1990 ("Johnson").
5 The Glass Transition,
<> ("TGT").
Appeal2018-005857
Application 14/111,042
claims 8, 9, and 16 over this combination and adding Chretien6 and
Rukavina. 7 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE. 8
STATEMENT OF THE CASE
The invention relates to a solvent-containing clearcoat composition, as
well as to the preparation and use of this composition (Spec. 1:4--10). The
composition comprises at least two OH-functional (meth)acrylate
copolymers as binders, at least one kind of synthetic polyamide wax
particles, at least one urea compound as an adduct of a polyisocyanate and a
monoamine, and a crosslinking agent having functional groups that are
reactive toward OH groups (id.). The two OH-functional (meth)acrylate
copolymers include one having a glass transition temperature Tg of I5°C to
100°C and one having a glass transition temperature Tg of -100°C to -20°C
(id. at 4: 13-21 ). Appellants disclose that the composition provides a
clearcoat having high optical quality, high resistance to condensation and
blushing, and good circuit-line stability, making the composition particularly
suitable for use in the automobile finishing segment (id. at 3:30-4:8).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
6 Chretien et al., US 2010/0112232 Al, published May 6, 2010 ("Chretien").
7 Rukavina et al., US 2009/0280329 Al, published November 12, 2009
("Rukavina").
8 Our Decision refers to the Specification ("Spec.") filed October 10, 2013,
the Examiner's Final Office Action ("Final Act.") dated June 16, 2017,
Appellants' Appeal Brief ("Appeal Br.") filed November 15, 2017, the
Examiner's Answer ("Ans.") dated April 5, 2018, and Appellants' Reply
Brief ("Reply Br.") filed May 18, 2018.
2
Appeal2018-005857
Application 14/111,042
1. A solvent-containing clearcoat coating composition
compnsmg:
(A) an OH-functional ( meth )acrylate ( co )polymer
component comprising:
(Al) 30o/o-99% by weight, based on the mass of
the nonvolatile fraction of the OH-functional
(meth)acrylate ( co )polymer component (A), of at least
one OH-functional (meth)acrylate ( co )polymer having an
OH number of 60-200 mg KOH/g and a glass transition
temperature Tg of l 5°C to 100°C, and
(A2) 1 o/o-70% by weight, based on the mass of the
nonvolatile fraction of the OH-functional (meth)acrylate
( co )polymer component (A), of at least one OH-
functional (meth)acrylate ( co )polymer having an OH
number of 60-200 mg KOH/g and a glass transition
temperature Tg of-100°C to -20°C;
(B) a crosslinker component comprising at least one
crosslinking agent having functional groups that are reactive
toward OH groups;
(C) 0.02o/o-l.2% by weight, based on the mass of the
nonvolatile fraction of the OH-functional (meth)acrylate
( co )polymer component (A), of at least one polyamide; and
(D) 0.04o/o-2.9% by weight, based on the mass of the
nonvolatile fraction of the OH-functional (meth)acrylate
( co )polymer component (A), of at least one urea compound
comprising an adduct of a polyisocyanate and benzylamine.
Independent claim 10 recites a process for preparing the composition
of claim 1. Independent claim 14 recites a process of using the composition
of claim 1. Independent claim 17 recites a multicoat coating system
comprising at least one coating of the composition of claim 1.
ANALYSIS
A dispositive issue in the appeal before us in this case is whether
Appellants have identified reversible error in the Examiner's conclusion-
3
Appeal2018-005857
Application 14/111,042
that a clearcoat composition as recited in claim 1 comprising a blend of two
OH-functional (meth)acrylate (co)polymers, one of which has a Tg of 15°C
to 100°C and the other of which has a Tg of -100°C to -20°C-would have
been obvious to one of ordinary skill in the art over the combined teachings
ofWeikard, Blasko, Johnson, and TGT. We answer this question in the
affirmative and, therefore, do not sustain the Examiner's obviousness
rejections of claims 1-21.
The Examiner finds that Weikard teaches a solvent-containing
clearcoat coating composition comprising an OH-functional methacrylate
copolymer component having an OH number of 20-300 mg KOH/g, a
crosslinker, a polyamide, and an urea compound which is an adduct of a
polyisocyanate and benzylamine (Final Act. 3). The Examiner also finds
that Weikard "evidences that glass transition temperature is a result-effective
variable affecting block resistance" (id.). However, the Examiner
acknowledges that Weikard fails to teach a blend of at least two different
OH-functional methacrylate copolymers, one of which has a Tg of 15°C to
100°C and the other of which has a Tg of -100°C to -20°C (id.). The
Examiner turns to Blasko for a teaching of a coating composition including
polyol blends of low Tg and high Tg acrylic copolymers to provide good
overall performance for an air-dryable, high solids coating composition with
reduced viscosity and extended pot life (id. at 3--4). The Examiner finds
Blasko teaches the low Tg copolymer has a Tg of about -10°C to about 20°C
and the high Tg copolymer has a Tg of about 25°C to about 100°C (id.).
Therefore, the Examiner concludes that it would have been obvious to
modify Weikard's composition as a blend of low and high Tg copolymers in
4
Appeal2018-005857
Application 14/111,042
order to provide a superior clear coating that is air-dryable, with high solids
content, and has reduced viscosity and extended pot life (id. at 4).
The Examiner acknowledges that Weikard as modified in accordance
with Blasko' s teaching, fails to teach one of the copolymers in the blend has
a Tg of -100°C to -20°C (Final Act. 4). For this feature, the Examiner turns
to Johnson and TGT, finding that Johnson suggests adding Tg modifiers
with a T g of about -100°C to about 0°C to a resin for improving the resin's
flexibility, while encouraging filming and air-drying at room temperature,
while TGT evidences that Tg is related to flexibility in the polymer
backbone (id. at 4--5). Therefore, the Examiner concludes that it would have
been obvious to further modify Weikard's composition such that one of the
copolymers of the blend has a Tg of -100°C to 0°C in order to flexibilize the
resin and to encourage filming and air drying at room temperature (id. at 5).
Appellants argue that Weikard teaches away from the above
modifications because Weikard's purpose is to provide block-resistant
coatings and teaches that polymers having low Tg below 40°C provide
insufficient block-resistance (Appeal Br. 10-11; Reply Br. 2-3). Appellants
also argue that Blasko's blend is specifically limited to a copolymer having a
Tg of -10°C to 20°C and a copolymer having a Tg of25°C to 100°C in order
to achieve the desirable properties relied on by the Examiner (Appeal Br.
11-12; Reply Br. 3--4). In addition, Appellants argue that Johnson's
teaching is limited to the use of a Tg modifier for a phenoxy resin (Appeal
Br. 12-13). Lastly, Appellants argue that Blasko and Johnson are concerned
with an air-dryable coating which is not relevant to the dual cure coatings of
Weikard (id. at 13-14).
5
Appeal2018-005857
Application 14/111,042
Appellants' arguments are persuasive of reversible error in the
Examiner's conclusion of obviousness. Although the Examiner finds that
"Blasko' s teaching is a relatively general reference which suggests a coating
which includes blend of both high ... and low Tg acrylic copolymers ... in
order to achieve a coating composition with a number of advantages,
including extended pot-life, improved weathering, good hardness, and
improved viscosity" (Ans. 4), Blasko teaches that the improved coating
composition is achieved "provided that certain conditions are met" (Blasko
8:22-27). Blasko teaches that "[o]ne such condition is that the low-Tg, high
-hydroxyl number acrylic copolymer have ... ( 4) a glass-transition
temperature (Tg) of about -10°C to about +20°C" (id. at 8:28-36). Blasko
further teaches that "[a]nother condition is that the high-Tg, low-hydroxyl
number acrylic copolymer have ... (4) a Tg of about +25°C to about
+ 100°C" (id. at 8:49-55). Moreover, Blasko contrasts this improved coating
composition from a prior blend of acrylic copolymers of low Tg below
-10°C and high Tg of -10°C to+ 10°C (id. at 4: 18-58). Thus, rather than
providing a general teaching of the desirability of blending low and high Tg
acrylic copolymers to achieve any of a variety of advantages, Blasko's
teaching limits the scope of selections of low and high Tg acrylic
copolymers to those specified as conditions that must be met to achieve the
disclosed improved pot-life, weathering, hardness, and viscosity.
Additionally, the Examiner fails to adequately respond to Appellants'
argument that W eikard teaches away from the use of an acrylic copolymer
having a low Tg of -100°C to -20°C. Although the Examiner finds that
Weikard does not address the question of whether it would have been
obvious to use a blend of high and low Tg polymers (Ans. 3), Weikard
6
Appeal2018-005857
Application 14/111,042
specifically teaches that the use of polymers of high Tg above 40°C
improves block resistance and desires a block-resistant composition
(Weikard ,r,r 5, 6, 14). These teachings suggest that Weikard's composition
would have a Tg above 40°C, although the Examiner is correct that Weikard
does not teach away from the use of a blend of low and high Tg whose
composite Tg is above 40°C. Nonetheless, the Examiner fails to take into
account Weikard's teaching regarding Tg and block resistance.
As to Johnson, the Examiner finds that Johnson evidences that
flexible coatings have lower viscosities and that a Tg of -120°C to 30°C will
provide a flexibilizing effect on a polymer coating (Ans. 5). The Examiner
also finds TGT further evidences a general relationship between Tg and
polymer flexibility (id.). However, Johnson specifically teaches the use of a
modifier whose Tg is below that of waterborne phenoxy resin in order to
impart the flexibilizing effect (Johnson 13:65-14:5). Johnson also prefers to
reduce the Tg of the blend to 60°C or below to attain the desired flexibility
generally, using modifiers whose Tg is below room temperature (id. at 14:5-
46). As Appellants argue, these teachings are specific to the use of a
modifier for a specific resin, a waterborne phenoxy resin. While the
Examiner correctly finds that TGT does indeed teach a relationship between
polymer flexibility and Tg, the Examiner fails to direct our attention to any
teaching in Johnson or TGT suggesting the use of an acrylic copolymer
having a Tg of -100°C to -20°C in a blend with an acrylic copolymer having
a Tg of l 5°C to 100°C in a clearcoat composition.
We note Appellants separately argue against the rejections of claims
7-9, 11, 16, 18, and 19 (Appeal Br. 14--19). Because we are persuaded of
reversible error in the Examiner's obviousness conclusion with regard to
7
Appeal2018-005857
Application 14/111,042
claim 1 over the combination of Weikard, Blasko, Johnson, and TGT, and
because the Examiner does not rely on Chretien or Rukavina to remedy the
deficiencies in this combination, we need not address these additional
arguments.
Accordingly, we will not sustain the Examiner's obviousness rejection
of claims 1-21 based on Weikard in view of Blasko, Johnson, and TGT,
alone or further in view of Chretien or Rukavina.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1-21 is reversed.
REVERSED
8