10239671 (B.P.A.I. Jan. 19, 2010)

Ex Parte Wonnemann et al

Board of Patent Appeals and InterferencesJan 19, 2010

10239671 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HEINRICH WONNEMANN, BERTHOLD AUSTRUP, CHRISTOPHER HILGER, and SUSANNE PIONTEK ____________ Appeal 2009-008443 Application 10/239,671 Technology Center 1700 ____________ Decided: January 19, 2010 ____________ Before EDWARD C. KIMLIN, CHUNG K. PAK, and TERRY J. OWENS, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 12-15 and 19-22. Claims 16-18 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-008443 Application 10/239,671 2 Claim 12 is illustrative: 12. A process for producing multicoat color and/or effect finishes on a substrate comprising: (I) applying a pigmented powder coating material to a substrate to form a powder coating film on the substrate, (II) one of: A. at least partially curing the powder coating film, or B. one of: 1. melting and curing the powder coating film to give a powder coating, 2. melting and partly-curing the powder coating film, 3. melting and not curing the powder coating film, or 4. not subjecting the powder coating film to any further aftertreatment, to give a product of Step (II) (III) overcoating the product to Step (II) with one of: i) a solid-color topcoat to form a topcoat film, or ii) a basecoat and a clearcoat to form a basecoat film and a clearcoat film, and (IV) curing: i) the product of Step (II), if it was not previously fully cured, and the topcoat film, or ii) the product of Step (II), if it was not previously fully cured, the basecoat film, and the clearcoat film, Appeal 2009-008443 Application 10/239,671 3 wherein each film is cured individually or with at least one of the other films, wherein the powder coating material comprises one of: i) (A1) a binder comprising at least one carboxyl- containing polyester, and (B1) a crosslinking agent comprising at least one of i) a glycidyl ester of an aromatic dicarboxylic acid, ii) a glycidyl ester of a saturated cycloaliphatic dicarboxylic acid, iii) a glycidyl ester of an unsaturated cycloaliphatic dicarboxylic acid, and iv) a N,N,N',N'-tetrakis(beta- hydroxyalkyl)alkanedicarboxamide; or ii) (A2) a binder comprising at least one hydroxyl- containing polyester, and (B2) a crosslinking agent comprising at least one internally blocked uretdione of a diisocyanate wherein the powder coating film provides color- imparting or effect-imparting effect to the multicoat color and/or effect finishes. The Examiner relies upon the following references as evidence of obviousness: Duecoffre 5,739,216 Apr. 14, 1998 Barkac WO 00/12625 Mar. 9, 2000 Appellants’ claimed invention is directed to a process for making a multicoat color and/or effect finish on a substrate. The process entails applying a pigmented powder coating material to form a film on the substrate, and overcoating the film with either a solid-color top coat or a basecoat with a clearcoat thereon. Appeal 2009-008443 Application 10/239,671 4 Appealed claims 12-15 and 19-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Duecoffre in view of Barkac. Appellants do not present separate arguments for any particular claim on appeal. Accordingly, all the appealed claims stand or fall together with claim 12. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appellants do not dispute that Duecoffre teaches a binder composition that may contain a pigmented powder as a surface layer or a base lacquer in the production of multi-layer lacquer coatings (col. 13, ll. 35-39 and 51-57), which also may be overpainted with a binder composition formulated without pigments as clear lacquers (col. 12, ll. 63-66). Appellants also do not dispute the Examiner’s finding that Barkac evidences the obviousness of employing a wet-on-wet technique to form a substrate/surfacer/basecoat/clearcoat structure. Hence, we find no error in the Examiner’s legal conclusion that it would have been obvious for one of ordinary skill in the art, based on the collective teachings of the applied prior art, to perform the claimed process of applying a pigmented powder coating material to a substrate and overcoating the pigmented film with a basecoat and a clearcoat. Appeal 2009-008443 Application 10/239,671 5 Appellants’ principal argument is that “[t]he combined Duecoffre and Barkac teachings do not include overcoating the pigmented powder coating film with a subsequent colored layer (i.e., a solid-colored topcoat or a basecoat and a clearcoat, as per the third step of independent claim 12)” (App. Br. 4, first. para.). Appellants maintain that “the Duecoffre teachings do not provide the spatial separation of a powder coating pigment and a subsequent solid-color topcoat or basecoat and clearcoat as found in the present claims” (App. Br. 5, first full para.). Also, while Appellants acknowledge that “Barkac teaches a multi-component composite coating composition having a pigmented base coat, which can contain effect pigments, that is coated with a transparent top coat”, Barkac, like Duecoffre, “is devoid of any teaching regarding the application of a pigmented powder coating material followed by overcoating with a solid-colored topcoat or a basecoat and a clearcoat” (App. Br. 5, second full para.). Appellants submit that “the color-imparting and effect-imparting effects in Barkac are present in the same film and are not spatially separated, and thus cannot realize the effects afforded by the present claims” (App. Br. 7, first full para.). Appellants further state that “even if a powder surfacer composition is overcoated wet-on-wet, as per Barkac, Duecoffre and Barkac only teach overcoating with clear or transparent topcoats” (Reply Br. 3, first para.). Appellants emphasize that the claimed “topcoat or basecoat provides a separate pigmented film” (Reply Br. 5, first full para.). Appellants urge that “[t]he combined Duecoffre and Barkac teachings consequently fail to provide an apparent reason for a skilled artisan to overcoat a pigmented powder coating film with a subsequent colored layer” (Reply Br. 6, first full para.). Appeal 2009-008443 Application 10/239,671 6 The fatal flaw in Appellants’ arguments is that they are not germane to the claimed subject matter inasmuch as they are not commensurate in scope with the appealed claims. Contrary to Appellants’ arguments, there is no requirement in the appealed claims that the alternative embodiment directed to an overcoating of a basecoat and a clearcoat comprises a basecoat that includes a coloring material. Claim 12 simply recites “a basecoat and a clearcoat to form a basecoat film and a clearcoat film” as the overcoating with no requirement that the basecoat film comprises a coloring material. Appellants have pointed to no definition in the present Specification which defines the claimed basecoat as comprising a coloring material. In conclusion, based on the foregoing, the Examiner’s decision rejecting the appealed claimed is affirmed. 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)(iv). AFFIRMED kmm HARNESS, DICKEY AND PIERCE, P.L.C. 5445 CORPORATE DRIVE TROY, MI 48098