Ex Parte Yu et al

Patent Trial and Appeal Board

Dec 31, 2014

10867146 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte POLI C. YU, RICHARD R. ROESLER, KEI-YI WEI, and
SILVIE S. HORGAN
____________

Appeal 2013-000448
Application 10/867,146
Technology Center 1700
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3–6, 8–15 and 17–20. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to non-aqueous two-component
coating composition. Claims 1is illustrative of the subject matter on appeal
and is reproduced below:
1. A non-aqueous two-component coating
composition comprising
(A) a first component comprising an acid functional
aliphatic polyester polyol having an acid number of from at
least 50 up to 500 mg KOH/g and a hydroxyl number of from
100 to 250 mg KOH/g, and a molecular weight (Mn) of from
300 to 10,000, wherein said polyester polyol is prepared by
reacting a mixture comprising C4 to C24 aliphatic, alicyclic
and/or aromatic polybasic acids and/or their corresponding
anhydrides and C3 to C24 aliphatic, alicyclic and/or aromatic
polyhydric alcohols, wherein at least a portion of the polyhydric
alcohols contain one or more acid groups;
and
(B) a second component comprising one or more
polyisocyanates; wherein the NCO:OH equivalent ratio for the
polyisocyanate to the acid functional aliphatic polyester polyol
ranges from 1.1:1 to 1.3:1.

Appellants, App. Br. 4, request review of the following rejections
from the Examiner’s final Office action:

I. Claims 1, 3–6, 8–15 and 17–20 rejected under 35 U.S.C. § 102(b) as
anticipated by Barsotti, WO 03/070844 A1, August 28, 2003

II. Claims 1, 3–6, 8–15 and 17–20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Barsotti.

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OPINION1

We have thoroughly reviewed each of Appellants’ arguments for
patentability. We agree with Appellants that the Examiner has not
established by a preponderance of the evidence that Barsotti anticipates the
applied prior art renders dependent claims 1, 3–6, 8–15 and 17–20 for
essentially the reasons explained in their briefs. On the other hand, we will
sustain the Examiner’s § 103 rejection of claims 1, 3–6, 8–15 and 17–20 for
essentially those reasons expressed in the Answer, including the Response to
Argument section.
We add the following:

Rejection under 35 U.S.C. § 102(b)
The dispositive issue for this rejection is: Did the Examiner err in
determining that Barsotti describes non-aqueous two-component coating
composition comprising a first component comprising an acid functional
aliphatic polyester polyol as required by the subject matter of independent
claim 1?
After review of the respective positions provided by Appellants and
the Examiner, we answer the question in the affirmative.
The Examiner found that Barsotti describes non-aqueous two-
component comprising a first component comprising an acid functional
aliphatic polyester polyol Barsotti discloses a non-aqueous two component
coating composition comprising the claimed acid functional aliphatic

1 Appellants have not present arguments specific to any claim. We limit our
discussion to independent claim 1.
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polyester polyol having the claimed acid number, hydroxyl number, and
number average molecular weight (Mn). Final Act. 4-5. However,
selections from within the disclosed ranges is required to arrive at the
claimed acid number, hydroxyl number, and number average molecular
weight. A claim is not anticipated by a reference when independent picking
and choosing is required to arrive at the claimed invention. See In re Arkley,
455 F.2d 586, 587 (CCPA 1972).
On the record before us, the Examiner’s conclusion of anticipation is
not supported by factual evidence. It follows that we cannot sustain the
§ 102 rejection advanced in this appeal.
Rejection under § 35 U.S.C.103(a)
There is no dispute that Barsotti discloses a non-aqueous two
component coating composition comprising the claimed acid functional
aliphatic polyester polyol having the claimed ranges for hydroxyl number,
number average molecular weight that encompasses the requirements of
claim 1 except for acid number which is determined by calculation based on
the molecular weight and carboxyl content. (Ans. 4). In reviewing the
relevant facts of this case, the Examiner’s determination that the claimed
ranges are prima facie obvious is reasonable because Barsotti teaches ranges
for acid number, hydroxyl number, and number average molecular weight
that overlap the claimed ranges. (Final Act. 4–6; Barsotti 6). Cf. In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315
F.3d 1325, 1329-30 (Fed. Cir. 2003)):
[A] prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior art. [Citations
omitted.] Where the “claimed ranges are completely encompassed by the
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prior art, the conclusion [that the claims are prima facie obvious] is even
more compelling than in cases of mere overlap.”

The Examiner’s determination that the selection of a binder
component having a polyol with the claimed acid number, hydroxyl number,
and number average molecular weight would flow from the teachings of
Barsotti is also reasonable. Stated differently, the fact that Appellants may
have recognized another property (i.e., acid number) which would flow
naturally from following Barsotti’s teaching for molecular weight and
carboxyl content cannot be the basis for patentability when the differences,
if any, would otherwise have been obvious. Cf. In re Kao, 639 F.3d 1057,
1070 (Fed. Cir. 2011) (“Maloney's express teachings render the claimed
controlled release oxymorphone formulation obvious, and the claimed ‘food
effect’ adds nothing of patentable consequence.”).
Thus, Appellants’ arguments that the examples of the applied prior art
fails to render obvious the claimed invention are unavailing. A
preponderance of the evidence supports the Examiner’s reasonable position
that it would have been prima facie obvious to select a binder component
having a polyol with the claimed acid number, hydroxyl number, and
number average molecular weight required by the claimed invention.
Appellants rely upon the Table I, principal Brief 6, to establish that the
working examples of this reference lead the skilled artisan to conclude that a
high acid number copolyester polyol is not really suggested by Barsotti.
(App. Br. 8).
It is also well established that a reference is not limited to its examples
or preferred embodiments; see Merck & Co., Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over
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1200 possible combinations rendered all possible formulations obvious). As
discussed above, Barsotti teaches acid number, hydroxyl number, and
number average molecular weight in ranges that renders the claimed range
prima facie obvious. (Barsotti 6).
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellants must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. See e.g., In
re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). The burden rests with Appellants to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of prima facie obviousness was based, rather than evaluating
it on its knockdown ability. In re Rinehart, 531 F.2d 1048, 1052 (CCPA
1976).
On this record, the Examiner correctly determined that the evidence in
the Specification is not persuasive of patentability of the subject matter of
the claims for several reasons. (Ans. 16–19). Appellants have not
established unexpected results commensurate in scope with the breadth of
the appealed claims. The Examples in the Specification only describe
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compositions having an acid number of 50.5 or 51.5. Appellants have not
established why this narrow showing supports patentability over the entire
scope of the claimed metal genus for the acid number in the range of 50–
500.
Accordingly, we affirm the Examiner’s obviousness rejection of
claims 1, 3–6, 8–15 and 17–20 for the reasons presented by the Examiner
and given above.
ORDER
The Examiner’s anticipation rejection is reversed.
The Examiner’s obviousness rejection 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).

AFFIRMED

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