Jeffrey Niederst et al.Download PDFPatent Trials and Appeals BoardMay 21, 202013570743 - (D) (P.T.A.B. May. 21, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/570,743 08/09/2012 Jeffrey Niederst 4918.59WOUS02 7100 145378 7590 05/21/2020 Patterson Thuente Pedersen, P.A. 80 South Eighth Street 4800 IDS Center Minneapolis, MN 55402 EXAMINER PATTERSON, MARC A ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 05/21/2020 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): cleveland@ptslaw.com efsuspto@ptslaw.com rahmlow@ptslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY NIEDERST, RICHARD H. EVANS, ROBERT M. O’BRIEN, KEVIN ROMAGNOLI, and MARK S. VON MAIER Appeal 2019-006691 Application 13/570,743 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, MICHAEL G. MCMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1, 4–12, 14–23, 28–44, and 46– 63.2 We heard oral arguments from the Appellant’s representative on May 11, 2020. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42—namely, the Inventors (Application Data Sheet filed August 9, 2012 at 1–2). The Appellant identifies “The Sherwin-Williams Company” as the real party in interest (Appeal Brief filed March 14, 2019 (“Appeal Br.”) at 4). 2 See Appeal Br. 7–36; Reply Brief filed September 9, 2019 (“Reply Br.”) at 3–17; Final Office Action entered September 14, 2018 (“Final Act.”) at 3– 15; Examiner’s Answer entered July 11, 2019 (“Ans.”) at 3–19. Appeal 2019-006691 Application 13/570,743 2 We reverse. I. BACKGROUND The subject matter on appeal relates to a food or beverage can with an interior metallic surface provided with a coating composition that is suitable for prolonged contact with a food or beverage product (Specification filed August 9, 2012 (“Spec.”) ¶ 18). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. An article comprising: a food or beverage can, or a portion thereof, having a metal substrate suitable as a food contact surface and a coating on at least a portion of the metal substrate, wherein the coating is a food-contact or beverage-contact coating on an interior surface of the can or portion thereof, and was formed from a coating composition comprising a polyether-acrylic copolymer that is substantially free of bisphenol A, bisphenol F, bisphenol S, and epoxides thereof, and includes an attached acrylic polymer, copolymer or resin component; and wherein the polyether-acrylic copolymer is formed by reacting ingredients including: (i) an extender comprising a polyacid; a phenol compound having both a phenol hydroxyl group and a carboxylic group; or a dihydric phenol compound of the below Formula (IIIB), wherein: v is 0 to 4; and w is 4; and (ii) a diepoxide compound that includes a segment of the below Formula (I): Appeal 2019-006691 Application 13/570,743 3 wherein: each of the oxygen atoms depicted in Formula (I) is present in an ether linkage; each R1 is independently an atom or group having an atomic weight of at least 15 Daltons; each v is independently 2 to 4; w is 4; R2, if present, is a divalent group; each phenylene group depicted in Formula (I) includes R1’s attached to the ring at both ortho positions relative to the depicted oxygen atom; n is 0 or 1, with the proviso that if n is 0, the phenylene groups depicted in Formula (I) can optionally join to form a fused ring system in which case w is 3 and each v is independently 1 to 3; t is 0 or 1; and two or more R1 and/or R2 groups can join to form one or more cyclic groups. (Appeal Br. 38–39) (emphases added). Claim 40, the only other independent claim on appeal, recites similar limitations but also specifies that the coating has an overall average dry coating thickness from about 1 to about 60 microns and that the polyether-acrylic copolymer has a number average molecular weight of at least 2,000 prior to cure (id. at 44–45). Appeal 2019-006691 Application 13/570,743 4 II. REJECTIONS ON APPEAL The claims on appeal stand rejected as follows: A. Claims 1, 4–12, 14–18, 22, 23, 28–33, 35–37, 39, 47–53, 55– 57, and 62 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Gibanel et al.3 (“Gibanel”) in view of Evans et al.4 (“Evans”); B. Claims 1, 19, and 34 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Shinohara et al.5 (“Shinohara”); C. Claims 20, 21, and 63 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Evans and further in view of Nikles;6 D. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Evans and further in view of Winner;7 E. Claims 40, 43, 44, 46, 54, and 60 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Evans and Winner; F. Claims 41, 58, and 61 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Evans, Winner, and Nikles; G. Claims 40 and 42 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Winner and Shinohara; H. Claim 59 under 35 U.S.C. § 103(a) as unpatentable over Gibanel in view of Winner, Shinohara, and Nikles; and I. Claims 1, 4–12, 14–23, 28–44, and 46–63 under the judicially- 3 US 2010/0068433 A1, published March 18, 2010. 4 US 2007/0087146 A1, published April 19, 2007. 5 US 2004/0176563 A1, published September 9, 2004. 6 US 3,006,891, issued October 31, 1961. 7 US 4,487,861, issued December 11, 1984. Appeal 2019-006691 Application 13/570,743 5 created doctrine of obviousness-type double patenting as unpatentable over claims 1–5, 9–18, 30, and 32 of abandoned Application No. 14/616,175 (Notice of Abandonment entered August 23, 2018). III. DISCUSSION Rejections A–H (Obviousness). With respect to claim 1, the Examiner finds that Gibanel describes a beverage can having on its interior surface a coating composition comprising epoxy and acrylic components that are covalently linked (Ans. 3; Final Act. 3). The Examiner finds further that Gibanel teaches an epoxy that is upgraded using bis-4-hydroxy benzoate of 1,4-cyclohexane dimethanol, as described in Evans (Ans. 3; Final Act. 3). According to the Examiner, “bis-4-hydroxy benzoate of 1,4-cyclohexane dimethanol is therefore an extender, and is a phenol compound having both a phenol hydroxyl group and a carboxylic group” (Ans. 3–4; Final Act. 3 (emphasis added)). The Examiner acknowledges that “Gibanel . . . fail[s] to disclose an epoxy that is a polyether that is a diepoxide having the claimed structure” (Ans. 4; Final Act. 4). The Examiner states, however, that: [I]t would have been obvious for one of ordinary skill in the art to provide for an epoxy disclosed by Evans . . . as upgrading of the epoxy using the extender described by Evans . . . is disclosed, and Evans . . . teach[es] a coating for a beverage can that is a polyether that is a diepoxide having the claimed structure (paragraph 0024 of Evans . . .) in which each ‘Ar’ is a phenylene ring (paragraph 0013 of Evans . . .); the phenylene ring comprises four chlorine atoms, therefore having an atomic weight of 15 Daltons, because halogen is disclosed (paragraph 0038 of Evans . . .). A chlorine atom is therefore attached to the ring at both ortho positions relative to an oxygen atom. The claimed R2 is also disclosed because there are atoms between the phenylene rings. Appeal 2019-006691 Application 13/570,743 6 (Ans. 4; Final Act. 4). As for the additional rejection of claim 1 based on the combination of Gibanel and Shinohara, the Examiner finds that “Gibanel . . . fail[s] to disclose an epoxy that is [a] diglycidyl ether of 4,4’-methylenebis (2,6- dimethylphenol) and an extender having the claimed formula” but relies on Shinohara’s teaching to bridge the gaps (Ans. 8; Final Act. 8). Specifically, the Examiner finds that Shinohara teaches a coating comprising a diglycidyl ether of 4, 4’-methylenebis (2,6-dimethylphenol) for the purpose of obtaining superior mechanical features, heat resistance, and water resistance (Ans. 8; Final Act. 8). Based on these findings, the Examiner concludes that the subject matter recited in claim 1 would have been obvious to a person having ordinary skill in the art (Ans. 8; Final Act. 8). The Appellant contends that the Examiner’s rejection based on Gibanel and Evans is flawed because bis-4-hydroxy benzoate of 1,4- cyclohexane dimethanol, which the Examiner considers to be an extender component (i) as recited in claim 1, does not contain a carboxylic group (Appeal Br. 14–15). Regarding the diepoxide compound component (ii), the Appellant argues that the Examiner’s finding that the prior art references disclose this component is incorrect because: (1) Evans does not disclose a compound (having Formula I) with any epoxide groups; (2) Evans does not name or exemplify any specific Formula I or Formula II compounds bearing any R1 substituents; and (3) although Evans mentions halogen atoms on the Ar groups in Formula I when Ar groups are phenylene, Evans does not mention chlorine (id. at 15–16). As for the rejection based on Gibanel and Shinohara, the Appellant argues that “resort to Shinohara would not provide [the Appellant’s] recited Appeal 2019-006691 Application 13/570,743 7 extenders” (id. at 23). The Appellant urges that “[t]he Examiner has not explained how reliance on Shinohara would provide a polyether-acrylic copolymer formed from any of [the Appellant’s] extenders” (id.). We concur with the Appellant that the Examiner’s rejections are not well-founded. Specifically, we agree with the Appellant that the Examiner’s rejection does not sufficiently account for all the limitations defining the extender (i) component, as explained below. Gibanel describes food and beverage containers including metal substrates that are at least partially coated with a coating composition including a water-dispersible resin system and an aqueous carrier, wherein the resin system includes covalently-linked epoxy and acrylic components (Gibanel Abstract; ¶ 47). Gibanel teaches that “[i]n some embodiments, the epoxy compound may be upgraded using non-BPA [bisphenol A] containing dihydric phenols (e.g., bis-4-hydroxy benzoate of 1,4-cyclohexane dimethanol) such as, for example, those described in [Evans]” (id. ¶ 54). According to Gibanel, “the resulting epoxy compound is free of bound and/or extractible BPA” (id.). As we recounted above, the Examiner considers the bis-4-hydroxy benzoate of 1,4-cyclohexane dimethanol suggested in Gibanel and Evans as the extender (i) component recited in claim 1 (Ans. 3–4). Contrary to the Examiner’s finding, however, the compound disclosed or suggested in Gibanel and Evans is a benzoate ester, which does not contain a carboxyl group. Therefore, the Examiner’s finding that bis-4-hydroxy benzoate of 1,4-cyclohexane dimethanol is an extender having both a phenol hydroxyl group and a carboxyl group constitutes reversible error. Appeal 2019-006691 Application 13/570,743 8 In the Answer, the Examiner responds to the Appellant’s argument by stating that the bis-4-hydroxy benzoate of 1,4-cyclohexane dimethanol is synthesized by reacting 4-hydroxy benzoic acid with 1,4-cyclohexanediol (Ans. 15). According to the Examiner, “[b]ecause 4-hydroxy benzoic acid, which is also called para hydroxy benzoic acid, is a phenol compound having both a phenol hydroxyl group and a carboxylic group, and is the extender disclosed in paragraph 091 of the instant specification, the claimed extender is disclosed” (id.). But, as the Appellant points out, “[t]he precursor benzoate formation reaction proposed by the Examiner is not a reaction of an extender with a diepoxide compound, and Gibanel does not extend a diepoxide by reacting it with a 4-hydroxy benzoic acid” (Reply Br. 6). As for the rejection based additionally on Shinohara, the Examiner responds to the Appellant’s argument (i.e., that the Examiner’s reliance on Shinohara does not account for the extender (i) limitations) by stating that “the extender is already included in the combination of Gibanel . . . and Evans” (Ans. 18). The problem, however, is that this ground of rejection does not rely on Evans (Ans. 8; Final Act. 8).8 In any event, the combination of Gibanel and Evans does not fully account for the extender (i) limitations, as we discussed above. Because claim 40 recites the same or similar key limitations as claim 1, our reasoning for claim 1 applies equally to claim 40, the only other 8 In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of rejection.”). Appeal 2019-006691 Application 13/570,743 9 independent claim on appeal. Accordingly, we cannot uphold any of the Examiner’s Rejections A through H. Rejection I (Double Patenting). We cannot uphold the Examiner’s double patenting rejection because, as the Appellant points out (Appeal Br. 36), Application 14/616,175 (’175 Application), which forms the basis of the rejection, was abandoned prior to the Final Office Action. The Appellant acknowledges, however, that the ’175 Application was refiled as Application 16/057,469, filed on August 7, 2018 (Appeal Br. 36), which issued as US 10,435,199 B2 to Niederst et al. (“Niederst”) on October 8, 2019. The Appellant states that “[f]ollowing the successful conclusion of the present Appeal and if a revised double patenting rejection [over the claims of the Niederst patent] is applied, [the Appellant] would be willing to consider whether an eTerminal disclaimer should be filed to overcome such a revised rejection” (Appeal Br. 36). Under these circumstances, the Examiner and the Appellant should, upon return of this application to the Examiner’s jurisdiction, evaluate whether a revised obviousness-type double patenting rejection over the claims of US 10,435,199 B2 and the filing of a terminal disclaimer or other appropriate reply are warranted. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–12, 14– 18, 22, 23, 28– 33, 35–37, 39, 47–53, 55–57, 62 103(a) Gibanel, Evans 1, 4–12, 14–18, 22, 23, 28–33, 35–37, 39, 47– 53, 55–57, 62 Appeal 2019-006691 Application 13/570,743 10 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 19, 34 103(a) Gibanel, Shinohara 1, 19, 34 20, 21, 63 103(a) Gibanel, Evans, Nikles 20, 21, 63 38 103(a) Gibanel, Evans, Winner 38 40, 43, 44, 46, 54, 60 103(a) Gibanel, Evans, Winner 40, 43, 44, 46, 54, 60 41, 58, 61 103(a) Gibanel, Evans, Winner, Nikles 41, 58, 61 40, 42 103(a) Gibanel, Winner, Shinohara 40, 42 59 103(a) Gibanel, Winner, Shinohara, Nikles 59 1, 4–12, 14– 23, 28–44, 46– 63 Obviousness- Type Double Patenting Claims 1–5, 9–18, 30, 32 of Application 14/616,175 1, 4–12, 14–23, 28–44, 46–63 Overall Outcome 1, 4–12, 14–23, 28–44, 46–63 REVERSED Copy with citationCopy as parenthetical citation