Ex Parte Yen et al

Patent Trial and Appeal Board

Jun 13, 2016

11899880 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111899,880 0910712007
129406 7590
The Chemours Company
Patent Legal Group
1007 Market Street
7028-1
Wilmington, DE 19801
06/15/2016
FIRST NAMED INVENTOR
Jessica Chen-Ying Yen
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. CONFIRMATION NO.
CH3094USCIP1 9175
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
patentlegal@chemours.com
gwen.a.wilson@chemours.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSICA CHEN-YING YEN,
MIA GENEVIEVE BERRETTINI, JOHN GA VENONIS,
XIANJUN MENG, and DAN QING WU
Appeal2013-004409 1
Application 11/899,880
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLL UM, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to coating
compositions that contain lecithins and fluorochemicals. The Examiner
rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 E.I. DuPont de Nemours & Co., Inc., is the real party in interest. App. Br.
4.
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Application 11/899,880
STATEMENT OF THE CASE
Appellants' invention "relates to coating compositions comprising
lecithin additives and fluorochemicals that in combination provide durable
oil-repellent dried coatings to substrates on which they are applied." Spec.
1. The Specification explains that "[b ]y the term 'fluorochemical' as used
herein is meant a compound, polymer, or composition that comprises a
fluorine group which can be added to a coating composition." Id. at 6. The
Specification also explains:
By the term "lecithin", as used hereinafter, is meant a
phosphatide mixture commonly derived from eggs, fish brewers
yeast, and vegetable sources, especially soy; however, any
phosphatide mixture, or derivative thereof, can be used in the
present invention regardless of source. The four major
components of such a phosphatide mixture are
phosphatidylcholine, phosphatidylethanolamine, phosphatidyl-
inositol, and phosphatidic acid. The term lecithin as used
herein without a modifying adjective may refer to unmodified
lecithin, acylated lecithin, hydroxylated lecithin, hydrolyzed
lecithin, enzyme modified lecithin, and combinations thereof.
Lecithins have been referred to in some literature by the
following names: PC-55, Ethanolamine, and Serine.
Id. at 4.
The Specification explains that is has "now been discovered that the
combination of a lecithin additive and fluorochemical imparts, to a coating
composition, significantly improved cleanability and/or oil repellency (as
measured by higher contact angles) compared to the individual ingredients
alone." The Specification describes specific methods by which coatings can
be tested for cleanability (Leneta Oil Stain Test) and contact angle (Sessile
Drop Method). Id. at 23-25, 26-27.
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Claims 1, 18, 23, 24, 34, and 44, the independent claims on appeal,
are illustrative and read as follows (App. Br., Claims App'x 1-5):
1. A composition comprising: a lecithin phospholipid, a
fluorochemical, and a coating selected from the group of a
solvent based coating and a water based coating, wherein the
composition upon drying provides improved cleanability of at
least 50% as measured by the Leneta Oil Stain Test, when
compared to cleanability of a second composition that does not
comprise the fluorochemical and the lecithin.
18. A kit comprising a lecithin phospholipid and a
fluorochemical.
23. A dried composition comprising 1) a coating selected from
the group of a solvent based coating, or a water based coating,
2) a lecithin, and 3) a fluorochemical.
24. A composition comprising a lecithin phospholipid; a
fluorochemical selected from the group consisting of a
fluorinated urethane, a perfluoroalkylsulfonic acid; a phosphate
ammonium salt and mixtures thereof; and a coating selected
from the group of a solvent based coating and a water based
coating.
34. A composition compnsmg a lecithin phospholipid, a
fluorochemical, and a coating selected from the group of a
solvent based coating and a water based coating.
44. A composition comprising a coating base, from 0.1 to
10.0% by weight of the composition of a lecithin additive, and
an amount of a fluorochemical effective to provide, on drying
of said composition, a fluorine concentration between 5
micrograms per gram and 10,000 micrograms per gram and an
advancing hexadecane contact angle of at least 50 degrees.
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The following rejections are before us for review:
(1) Claims 1--4, 7-9, 11, 13-16, 18-20, and 23-44, under 35 U.S.C.
§ 103(a), for obviousness over Crater2 and Kronstein3 (Ans. 3-5);
(2) Claims 5 and 6, under 35 U.S.C. § 103(a), for obviousness over
Crater, Kronstein, and Hiscock4 (Ans. 5-6);
(3) Claims 1--4, 7-9, 11, 13-16, 18-20, and 23-44, under 35 U.S.C.
§ 103(a), for obviousness over Anton5 and Kronstein (Ans. 6-7); and
(4) Claims 5 and 6, under 35 U.S.C. § 103(a), for obviousness over
Anton, Kronstein, and Hiscock (Ans. 8).
OBVIOUSNESS-CRATER AND KRONSTEIN
The Examiner cited Crater as describing fluorochemical-containing
coatings that also include a hiding pigment, such as titanium dioxide. Ans.
3. The Examiner found that Crater differs from the rejected claims in that
Crater did not include lecithin in its formulations. Id. To address that
deficiency, the Examiner cited Kronstein as disclosing that, by including
lecithin in coating compositions, one can alleviate the problem of
sedimentation of pigments, including titanium dioxide. Id.
Based on the references' teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious
to have added the modified lecithin disclosed by Kronstein et
al. to the paint composition disclosed by Crater et al. Kronstein
et al. teaches that the addition of this lecithin to paints leads to
better stability during storage by allowing the pigments in the
paint to readily redisperse. This composition [sic, combination]
2 US Patent No. 6,881,782 B2 (issued Apr. 19, 2005).
3 US Patent No. 4,126,591 (issued Nov. 21, 1978).
4 US Patent App. Pub. No. 2006/0207737 Al (published Sep. 21, 2006).
5 US Patent No. 5,859, 126 (issued Jan. 12, 1999).
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renders prima facie obvious the coating compositions recite[ d]
by instant claims 1--4, 11, 13-14, and 34.
Id. at 4.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
primafacie case ofunpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We select claim 34 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv). Appellants' arguments do
not persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case of obviousness as to claim 34. Moreover, for
the reasons discussed below, we are not persuaded that Appellants' evidence
of unexpected results is sufficient to outweigh the evidence of prima facie
obviousness advanced by the Examiner.
As to the Examiner's prima facie case, claim 34 recites a composition
that includes three ingredients: (1) a lecithin phospholipid, (2) a
fluorochemical, and (3) a coating which may be either a solvent based
coating or a water based coating. App. Br., Claims App'x 4.
As the Examiner found, Crater discloses that including certain
polyfluorourethane additives (i.e., fluorochemicals) in latex paints (i.e.,
water based coatings) imparts "improved stain and soil resistance and
repellency into the latex paint composition of the invention even at relatively
low concentrations." Crater, 2:8-10. As the Examiner found also, Crater
discloses that suitable hiding pigments in its compositions may be "white
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opacifying hiding pigments includ[ing] rutile and anatase titanium dioxides."
Id. at 3 :39--40.
Although Crater might not expressly describe including a lecithin
phospholipid in its compositions, as the Examiner found, Kronstein
discloses that, in paints with mixed pigments, the pigments sediment and
separate such that the "separated components do not redisperse readily with
the coating composition vehicle, upon shaking or mixing, to fully restore the
initial color shades." Kronstein, abstract. Kronstein discloses:
Plant phosphatides, which are referred to as lecithins, (and
modified plant phosphatides) can be used as the only additive
resulting in a joint sedimentation of the entire pigment mixture
without separation of the pigment components from each other.
As a result, on shaking or mixing, the entire pigmentation
reenters the coating composition jointly, and the initial color
shade of the coating composition is restored.
Id. As the Examiner found, this improvement is particularly useful as to
paints that have been stored (id. at 5:46-52), and is applicable to paints that
include titanium dioxide (id. at 11:1-14).
Given the references' combined teachings, we agree with the
Examiner that an ordinary artisan, advised by Kronstein that lecithin
improves pigment dispersion and is therefore useful in paint compositions,
would have been prompted to include lecithin in Crater's fluorochemical-
and pigment-containing paint compositions, thus arriving at a composition
encompassed by claim 34.
We acknowledge Appellants' assertion that they "were not motivated
to add lecithin to coating compositions in order to address a problem with
settlement of pigments (such as Ti02) .... " App. Br. 16. As the Supreme
Court pointed out in KSR Int'! v. Teleflex Inc., 550 U.S. 398, 419 (2007),
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however, "[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." Moreover, that
Kronstein might not have been directed specifically to improving
fluorochemical-containing paint compositions (see Reply Br. 6) does not
undercut Kronstein's general disclosure of the advantageousness of
including lecithin in pigment-containing paint compositions, such as those
described in Crater. Accordingly, Appellants do not persuade us that a
preponderance of the evidence fails to support the Examiner's prima facie
case as to claim 34.
Appellants also advance evidence, in the form of the First Yen
Declaration, 6 to show that, as compared to a control coating composition
containing a fluorochemical alone, the combination of a lecithin and
fluorochemical yields coating compositions with unexpectedly better
cleanability as measured by the Leneta Oil Stain Test, and also an
unexpectedly high proportion of fluorochemical on the surface of the dried
coating composition. App. Br. 16-18.
In response, the Examiner acknowledges that the cited references "do
not recognize an effect by the lecithin on the cleanability of the substrate, as
compared to the fluorochemical alone." Ans. 10-11. Indeed, the Examiner
finds that Appellants' evidence
does appear to show that there is an improvement to the
cleanability of the resultant paint when the lecithin is added,
6 Declaration, executed July 1, 2010, of Jessica Chen-Ying Yen ("First Yen
Declaration" or "First Yen Deel.").
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even when less of the fluorochemical is used (and the
fluroochemcial [sic] would be expected to impart the resistance
to staining, so using less of it would be expected to result in a
less resistant paint coating). And this result appears to be
unexpected.
Id. at 11 (emphasis added); see also Final Action 4 (making same finding).
The Examiner finds, however, that Appellants' claims are not
commensurate in scope with Appellants' showing of unexpectedness,
because the claims are not limited "to any particular fluorochemical and to
only one type of lecithin. The claims encompass both lecithin and modified
lecithins. And one of ordianry [sic] skill in the art would not expect all
lecithins to provide the same properties, even amoungst [sic] a narrow subset
of lecithins such as acetylated lecithins." Ans. 11 (citing US Patent Nos.
3,301,881and4,479,977); see also Final Action 5 (same contention). The
Examiner contends that the scope of the rejected claims is also broader than
the evidence of unexpectedness advanced by Appellants in that the claims do
not limit the concentration of the fluorochemical or lecithin. Ans. 12; see
also Final Action 5-6 (same contention).
In response to the Examiner's contention in the Final Rejection that
the claims are not commensurate in scope with the alleged showing of
unexpectedness, Appellants argue that, in accordance with multiple
decisions by our reviewing court and its predecessor, the Specification
adequately demonstrates possession and enablement of the claimed subject
matter. App. Br. 18-21. Responding to essentially the same contentions in
the Examiner's Answer, Appellants in their Reply Brief direct us to claim 1,
and its recitation of a composition that includes lecithin phospholipids,
fluorochemicals, and coatings, "wherein the composition upon drying
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provides improved cleanability of at least 50% as measured by the Leneta
Oil Stain Test, when compared to cleanability of a second composition that
does not comprise the fluorochemical and the lecithin." Reply Br. 7.
Appellants contend that the "steps of the Leneta Oil Stain Test are described
on page 23 beginning on line 26 of the specification." Id.
In their Reply Brief, Appellants also argue:
Cleanability may also be described by Contact Angles, and the
Contact Angles Measurement Procedure is used to identify the
elements resulting in enhanced cleanability as defined in
Claims 8, 9, 26, 27, 36, and 37. The Contact Angle
Measurement Procedure is described on page 26 beginning on
line 20. One skilled in the art is able to easily determine the
boundaries of the present invention without undue
experimentation.
Reply Br. 7.
Appellants' arguments do not persuade us that the Examiner erred in
maintaining the rejection.
We first note that Appellants appear to have misquoted the
Examiner's statement in the Final Rejection, which appears to have led to a
misunderstanding of the Examiner's position. Specifically, Appellants quote
the Examiner as stating that "'the evidence presented does not appear to
show there is an improvement to the cleanability of the resultant paint when
the lecithin is added, even when less of the fluorochemical is used."' App.
Br. 18 (quoting Final Action 4; emphasis by Appellants). As noted above,
however, the Examiner expressly conceded not only an improvement based
on the addition of lecithin, but also the unexpectedness of that improvement:
"The evidence does appear to show that there is an improvement to the
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cleanability of the resultant paint when the lecithin is added . . . . And this
result appears to be unexpected." Final Action 4 (emphasis added).
Thus, as noted above, the Examiner's position was not that Appellants
had not shown unexpectedness. Rather, the Examiner's position was, and is,
that the claims under rejection are not commensurate in scope with the
showing of unexpectedness.
As our reviewing court has explained, an "applicant's showing of
unexpected results must be commensurate in scope with the claimed range."
In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); see also id. at 1331
(citing In re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing
that one (or a small number of) species gives unexpected results is
inadequate proof, for it is the view of this court that objective evidence of
non-obviousness must be commensurate in scope with the claims which the
evidence is offered to support.") (internal quotations omitted)).
In the instant case, the coatings advanced by Appellants as having
unexpected cleanability properties contain only three species of
fluorochemical: (1) a polyfluorourethane (Fluorochemical #1 ), (2)
perfluoroalkylsulfonic acid (Fluorochemical #2), and (3) fluoroalkyl
phosphate (Fluorochemical #3). See First Yen Deel. 3--4; see also Spec. 28
(identifying fluorochemicals used in experiments); see also Reply Br. 6
(identifying trade names of fluorochemicals used in experiments).
In contrast, representative claim 34 recites a "fluorochemical" (App.
Br., Claims App'x 4), which, as noted above, encompasses any "compound,
polymer, or composition that comprises a fluorine group which can be added
to a coating composition" (Spec. 6). Thus, given the contrast between the
vast breadth of the genus of fluorochemicals encompassed by claim 34 and
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the limited number of species within the claimed genus for which
unexpectedness is asserted, and further given Appellants' failure to advance
clear or specific evidence suggesting that the asserted showing of
unexpectedness would extend to the entire claimed genus, or would be
representative of the entire claimed genus, we agree with the Examiner that
claim 34 is not commensurate in scope with the showing of unexpectedness
advanced by Appellants.
Similarly, the coatings advanced by Appellants as having unexpected
cleanability properties contain only three specific lecithin derivative
compounds: (1) an acetylated lecithin (Lecithin #1 ), (2) a hydroxy lated
lecithin (Lecithin #2), and (3) an enzyme modified lecithin (Lecithin #3).
See First Yen Deel. 3--4; see also Spec. 28 (identifying lecithins used in
experiments); see also Reply Br. 6 (identifying trade names of lecithins used
in experiments).
In contrast to these three specific lecithin derivative compounds,
representative claim 34 recites "a lecithin phospholipid" (App. Br., Claims
App'x 4) which, as noted above, encompasses "any phosphatide mixture, or
derivative thereof, ... regardless of source," and "may refer to unmodified
lecithin, acylated lecithin, hydroxylated lecithin, hydrolyzed lecithin,
enzyme modified lecithin, and combinations thereof' (Spec. 4). Thus, given
the contrast between the breadth of the genus of lecithin compounds
encompassed by claim 34 and the limited number of species within the
genus for which unexpectedness is asserted, and further given Appellants'
failure to advance clear or specific evidence suggesting that the asserted
showing of unexpectedness would extend to the entire claimed genus, or
would be representative of the entire claimed genus, we agree with the
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Examiner that claim 34 is not commensurate in scope with the showing of
unexpectedness advanced by Appellants.
As the Examiner points out also, representative claim 34 does not
contain any limitations as to the amounts of lecithin and fluorochemical,
whereas Appellants' evidence of unexpectedness is directed to specific
compositions having specific concentrations of those components. See, e.g.
First Yen Deel. 3 (1.0% lecithin, 0.2% fluorochemical). Thus, claim 34
encompasses very small amounts of both components, whereas Appellants
do not direct us to clear or specific evidence suggesting that a coating having
small amounts of the claimed components, or even large amounts of those
components, would exhibit the asserted unexpected properties.
To that end, we note that, in certain experiments identified in the First
Yen Declaration, at least one combination of a lecithin and a fluorochemical
actually has a lower cleanability than a composition containing lecithin
alone. See Spec. 38, Table 11; see also First Yen Deel. 4 (citing Table 11 of
Spec.). Thus, we agree with the Examiner that Appellants have not shown
that all concentrations of the components encompassed by claim 34 would
provide a coating having the asserted unexpected properties. Accordingly,
on this basis as well, we agree with the Examiner that representative claim
34 is not commensurate in scope with the showing of unexpectedness
Appellants advance.
As to the assertions that combining a fluorochemical and a lecithin
results in an unexpected amount of atomic fluorine at the surface of the dried
coating (App. Br. 17-18; Reply Br. 3), we note that the results were obtained
using only a single composition, and Appellants do not clearly identify the
specific lecithin or fluorochemical used in that composition. See First Yen
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Deel. 5-6. Thus, for reasons similar to those discussed above, we agree with
the Examiner that the asserted showing of unexpectedness is not
commensurate in scope with the subject matter encompassed by
representative claim 34.
In sum, for the reasons discussed, we agree with the Examiner that
representative claim 34 is not commensurate in scope with the showing of
unexpectedness advanced by Appellants.
It is well settled, moreover, that "when unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art." In re Baxter-Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). In the instant case, Appellants contend that
unexpectedness is evidenced by a comparison between (a) coating
compositions that contain only a fluorochemical, and (b) coating
compositions that contain a fluorochemical and lecithin. See App, Br. 16-17
(citing First Yen Deel. 3). Appellants, however, do not specifically discuss
comparisons between coating compositions containing a lecithin additive in
the absence of a fluorochemical, as taught in Kronstein, and a coating
composition containing neither a fluorochemical nor a lecithin. To that end,
as noted above, in certain experiments identified in the First Yen
Declaration, the combination of lecithin and a fluorochemical actually has a
lower cleanability than a composition containing lecithin alone. See Spec.
38, Table 11; see also First Yen Deel. 4 (citing Table 11 of Spec.).
As to Appellants' arguments that the Specification provides adequate
descriptive and enabling support for the claimed subject matter (App. Br.
18-21; Reply Br. 7), we note that the Examiner did not contend that the
claims lacked descriptive or enabling support in the Specification, nor did
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the Examiner reject the claims on those grounds. Rather, as discussed
above, the Examiner maintained the obviousness rejection because
Appellants' claims are not commensurate in scope with the limited showing
of unexpectedness advanced by Appellants. For the reasons discussed
above, we agree with the Examiner that representative claim 34 is not
commensurate in scope with the showing of unexpectedness advanced by
Appellants.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case or ultimate conclusion of obviousness as to
claim 34. Because they were not argued separately, claims 1--4, 7-9, 11,
13-16, 18-20, 23-33, and 35--44 fall with claim 34. 37 C.F.R.
§ 41.37(c)(l)(iv).
As to Appellants' arguments directed to specific limitations in claims
1, 8, 9, 26, 27, 36, and 37 (Reply Br. 4-7), we first note that Appellants did
not separately argue the patentability of any of those claims in their Appeal
Brief. See generally App. Br. Thus, Appellants' new arguments regarding
those claims are not timely. See 37 C.F.R. § 41.37(c)(l)(iv)
("Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.")
In any event, claim 1 requires that the cleanability of the claimed
composition be improved by at least 50% as measured by the Leneta Oil
Stain Test, only as compared to a composition lacking both a fluorochemical
and lecithin. App. Br., Claims App'x 1. As noted above, and as the
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Examiner found, Crater discloses that the tluorochemicals described therein
impart "improved stain and soil resistance and repellency into the latex paint
composition of the invention even at relatively low concentrations." Crater,
2:8-10. Indeed, Appellants concede that "at the top of column 14 of the
Crater patent, Table 1 teaches the cleanability of samples increase (low ~E)
as the amount of fluorochemical increases." App. Br. 17. Accordingly,
given that Crater's fluorochemicals undisputedly increase cleanability over
coating compositions that do not contain fluorochemicals, we are not
persuaded that Appellants have adequately explained why the Examiner
erred in concluding that a coating resulting from the asserted combination of
Crater and Kronstein meets the improved cleanability requirement of claim
1.
As to claims 8, 9, 26, 27, 36, and 37, Appellants contend that the
Examiner erred in concluding that the asserted combination of Crater and
Kronstein meets the contact angle limitations recited in those claims,
because the Examiner did not perform a comparison between a composition
without a lecithin or fluorochemical and "a fluorinated composition with a
lecithin as specified by the present invention." Reply Br. 5. To that end,
Appellants contend that claims 8, 9, 26, 27, 36, and 37 clearly could be
rewritten to include that comparison. Id. at 5-6.
We are not persuaded. Appellants do not identify, nor do we discern,
any specific error in the Examiner's finding that, because the claimed drop
contact angle property is a function of cleanability, Crater's compositions
reasonably would have been expected to meet that requirement because of
their improved cleanability. See Ans. 4. Moreover, that claims could be
amended does not demonstrate that the Examiner erred in concluding that
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the claims actually on appeal, as currently drafted, would have been obvious
over the cited references.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's conclusion that claims 1-4, 7-9, 11, 13-16, 18-20, and 23--44
would have been obvious to an ordinary artisan over Crater and Kronstein.
Accordingly, we affirm the Examiner's rejection of those claims over those
references.
OBVIOUSNESS-
CRATER, KRONSTEIN, AND HISCOCK
Appellants do not argue separately the claims subject to this ground of
rejection. We select claim 5 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1, from which claim 5 depends, recites a composition that
includes three ingredients: (1) a lecithin phospholipid, (2) a fluorochemical,
and (3) a coating which may be either a solvent based coating or a water
based coating. App. Br., Claims App'x 1. As noted above, claim 1 also
requires that the cleanability of the claimed composition be improved by at
least 50% as measured by the Leneta Oil Stain Test, as compared to a
composition lacking both a fluorochemical and lecithin. Id.
Claim 5 recites "[ t ]he composition according to claim 1, wherein the
lecithin phospholipid is selected from the group consisting of an acylated
lecithin, hydroxylated lecithin, hydrolyzed lecithin, and combinations
thereof." Id.
In rejecting claim 5 for obviousness over Crater, Kronstein, and
Hiscock, the Examiner relied on Crater and Kronstein for the teachings
discussed above, but conceded that neither reference taught an acylated
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lecithin. Ans. 5. The Examiner cited Hiscock as evidence that acylated
lecithins were known to be desirable in coating compositions because they
increased the opacity of the compositions. Id.
Appellants argue:
If one skilled in the art combined these references, the
hypothetical invention would be a composition comprising a
fluorochemical and Ti02 pigments coated with lecithin. The
examiner, using hindsight, simply eliminates required elements
(such as pigments) taught in the cited prior art references and
then combines the remaining elements (i.e. without motivation
to do so) to match the elements claimed in the present
invention. Neither Hiscock, Kronstein, or Crater, separately or
together teach adding lecithin directly to a fluorochemical
containing composition significantly increases cleanability of
the fluorochemical containing compos[i]tion. Hiscock and
Kronstein only address the problem of pigment dispersibility
and/or opacity.
App. Br. 21-22; see also Reply Br. 2.
\Ve are not persuaded that the rejection is based on hindsight or lacks
an identified motivation. As the Examiner found, Hiscock discloses
"aqueous pigmented coating formulations [that] comprise an acylated
lecithin," and that "[t]he acylated lecithin provides an increase in opacity to
paper and paperboard coated with the aqueous pigmented coating
formulation." Hiscock, abstract. Given these teachings, we agree with the
Examiner that an ordinary artisan would have been prompted to include an
acylated lecithin in Crater's compositions, so as to increase the opacity of
paper and paperboard coated with those compositions.
That the reason for including the acylated lecithin in coating
compositions might be different than Appellants' reason does not
demonstrate the non-obviousness of claim 5. See KSR, 550 U.S. at 419 ("In
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determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.").
That the composition suggested by the references would include pigments in
addition to the ingredients required by claim 5 also does not demonstrate
non-obviousness, given that claim 5, by its dependence on claim 1,
encompasses the presence of additional ingredients through its use of the
transitional term "comprising." App. Br., Claims App'x 1.
Lastly, as to Appellants' reiteration of their arguments regarding
unexpectedness (App. Br. 22), we note that claim 5 limits the lecithin to
several particular species of lecithin. Nonetheless, claim 5 encompasses the
use of any fluorochemical, and does not limit the concentration of the
components. Accordingly, for essentially the reasons discussed above, we
agree with the Examiner that claim 5 is not commensurate in scope with
Appellants' showing of unexpectedness.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's conclusion that claim 5 would have been obvious to an ordinary
artisan in view of Crater, Kronstein, and Hiscock. We, therefore, affirm the
Examiner's rejection of that claim over those references. Claim 6 falls with
claim 5. 37 C.F.R. § 41.37( c )(1 )(iv).
OBVIOUSNESS-ANTON AND KRONSTEIN
In rejecting claims 1-4, 7-9, 11, 13-16, 18-20, and 23-44 for
obviousness over Anton and Kronstein, the Examiner cited Anton as
describing the use of fluorochemicals in coating compositions, including
white paint. Ans. 6. The Examiner found that Anton differs from the
rejected claims in that Anton did not include lecithin in its formulations. Id.
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To address that deficiency, the Examiner cited Kronstein as disclosing that,
by including lecithin in coating compositions, one can alleviate the problem
of sedimentation of pigments, including titanium dioxide, which is
commonly used as a pigment for white paint. Id.
Based on the references' teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious
to have added the modified lecithin disclosed by Kronstein et
al. to the coating composition disclosed by Anton et al.
Kronstein et al. teaches that the addition of this lecithin to
paints leads to better stability during storage by allowing the
pigments in the paint to readily redisperse. This composition
[sic, combination] renders prima facie obvious the coating
compositions recite[d] by instant claims 1--4, 11, 13-14, and 34.
Id. at 7.
We select claim 34 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv).
In their ,,L\ .. ppeal Brief, although Appellants acknov;ledge this rejection
(App. Br. 14), Appellants do not present any argument specifically
traversing this ground of rejection (see id. at 15-23 (Argument and
Conclusion sections)). In their Reply Brief, Appellants contend that they
"have provided the above arguments, as well as arguments presented in
previous office actions and the Appeal Brief, specific to Rejection #3 [over
Anton and Kronstein ]." Reply Br. 4. Appellants do not, however, identify
with any specificity where they presented specific argument traversing this
ground of rejection in their Appeal Brief.
MPEP § 1205.02 states (citation omitted):
If a ground of rejection stated by the examiner is not addressed
in the appellant's brief, appellant has waived any challenge to
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that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in
the examiner's answer. . . . The fact that appellant may
consider a ground to be clearly improper does not justify failure
to point out to the Board the reasons for that belief, including an
explanation of why the examiner erred as to the ground of
rejection.
In any event, we detect no deficiency in the Examiner's prima facie
case of obviousness as to representative claim 34.
As the Examiner found, Anton discloses that a coating composition
that includes a fluorinated alcohol (i.e., a fluorochemical as required by
claim 34) when cured "has an advancing hexadecane contact angle of at
least about 40 degrees and durable improved oil and water repellency."
Anton, abstract. As the Examiner found also, Anton discloses that its
fluorinated compounds are useful in paints (i.e., a solvent or water based
coating as required by claim 34 (Anton, 1:19-22), including white paint (id.
at 9:30-39)
Although Anton might not expressly describe including a lecithin
phospholipid in its compositions as also required by claim 34, as the
Examiner found, and as noted above, Kronstein discloses that including
lecithin in pigment-containing coatings significantly improves pigment
dispersion and storage properties of the coating, and this improvement
extends to coatings containing titanium dioxide, a pigment undisputedly
used commonly in white paint, such as the paint described in Anton.
Kronstein, abstract; see also id. at 5:46-52; id. at 11:1-14.
Given the references' combined teachings, we agree with the
Examiner that an ordinary artisan, advised by Kronstein that lecithin
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improves pigment dispersion and is therefore useful in paint compositions,
would have been prompted to include lecithin in Anton's fluorochemical-
and pigment-containing paint compositions, thus arriving at a composition
encompassed by claim 34. Accordingly, Appellants do not persuade us that
a preponderance of the evidence fails to support the Examiner's prima facie
case as to claim 34. As to Appellants' evidence of unexpected results, for
the reasons discussed above, we agree with the Examiner that claim 34 is not
commensurate in scope with the showing of unexpectedness Appellants
advance.
In sum, for the reasons discussed, Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's conclusion that claims 1-4, 7-9, 11, 13-16, 18-20, and 23--44
would have been obvious to an ordinary artisan over Anton and Kronstein.
Accordingly, we affirm the Examiner's rejection of those claims over those
references.
OBVIOUSNESS-
ANTON, KRONSTEIN, AND HISCOCK
Appellants do not argue separately the claims subject to this ground of
rejection. We select claim 5 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 5 for obviousness over Anton, Kronstein, and
Hiscock, the Examiner relied on Anton and Kronstein for the teachings
discussed above, but conceded that neither reference taught an acylated
lecithin. Ans. 8. The Examiner cited Hiscock as evidence that acylated
lecithins were known to be desirable in coating compositions because they
increased the opacity of the compositions. Id.
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Appellants argue that the "arguments above that apply to Crater apply
to Anton since both prior art references teach how to make compositions
comprising fluorochemicals that are easy to clean." App. Br. 22.
For essentially the reasons discussed above as to Crater, we are not
persuaded that a preponderance of the evidence fails to support the
Examiner's conclusion that it would have been obvious to include a lecithin
compound in Anton's coating composition. Moreover, for essentially the
reasons discussed above as to the Examiner's rejection of claim 5 over
Crater, Kronstein, and Hiscock, we agree with the Examiner that an ordinary
artisan would have considered it obvious to include Hiscock's acylated
lecithin in Anton's coating composition.
Appellants again direct us to the evidence of unexpected results
presented in the First Yen Declaration. App. Br. 22. For essentially the
reasons discussed above, however, we are not persuaded that claim 5 is
commensurate in scope with the showing of unexpectedness Appellants
advance.
In sum, because Appellants' arguments do not persuade us that a
preponderance of the evidence fails to support the Examiner's conclusion
that claim 5 would have been obvious to an ordinary artisan in view of
Anton, Kronstein, and Hiscock, we affirm the Examiner's rejection of that
claim over those references. Claim 6 falls with claim 5. 37 C.F.R. §
41.37(c)(l)(iv).
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 1--4, 7-9, 11, 13-16, 18-20, and 23-44, under 35 U.S.C. § 103(a), for
obviousness over Crater and Kronstein.
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For the reasons discussed, we also affirm the Examiner's rejection of
claims 5 and 6, under 35 U.S.C. § 103(a), for obviousness over Crater,
Kronstein, and Hiscock.
For the reasons discussed, we also affirm the Examiner's rejection of
claims 1--4, 7-9, 11, 13-16, 18-20, and 23-44, under 35 U.S.C. § 103(a), for
obviousness over Anton and Kronstein.
For the reasons discussed, we also affirm the Examiner's rejection of
claims 5 and 6, under 35 U.S.C. § 103(a), for obviousness over Anton,
Kronstein, and Hiscock.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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