Kam Lock et al.

Patent Trials and Appeals Board

Dec 12, 2019

14362046 - (D) (P.T.A.B. Dec. 12, 2019)

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.
14/362,046 08/28/2014 Kam Lock 12008909PCTA2/US 3888
24959 7590 12/12/2019
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
SALAMON, PETER A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
12/12/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAM LOCK, M. LAUDINE DUCROCQ, JEAN-LUC MARAL,
and GREGORY SMETS
Appeal 2019-001624
Application 14/362,046
Technology Center 1700

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 2–7, 9, and 10.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed May 30, 2014 (“Spec.”); Final Office Action dated Nov. 27, 2017
(“Final”); Appeal Brief filed May 9, 2018 (“Appeal Br.”); Examiner’s
Answer dated Oct. 30, 2018 (“Ans.”); Reply Brief filed Dec. 18, 2018
(“Reply Br.”); and Declaration of Debra L. Singer, executed Sept. 7, 2017
(“Decl.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as PPG
Industries Ohio, Inc. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-001624
Application 14/362,046

2
CLAIMED SUBJECT MATTER
“[T]he . . . invention relates to a coating composition suitable for
deposition onto a metal substrate and specifically a coating composition for
repairing a coated metal substrate (such as repairing a score line) and to a
method of repairing such a score line incorporating the use of the coating
composition.” Spec. 1:3–6. Independent claims 2 and 3, reproduced below,
are illustrative of the claimed subject matter:
2. A food or beverage can comprising a varnish layer, a
score line, and a repair coating applied to at least a portion of
the score line, wherein the repair coating comprises an acrylic
latex material that cures without exposure to radiation.
3. A method of repairing a score line on a food or beverage
can, the method comprising applying to the score line repair
coating composition, the repair coating composition comprising
an acrylic latex material that cures without exposure to
radiation.
Appeal Br. 6 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:

Name Reference Date
Bode US 6,306,934 B1 Oct. 23, 2001
Niederst US 2007/0065608 A1 Mar. 22, 2007

REJECTIONS
1. Claims 2–7, 9, and 10 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre–AIA), first paragraph, as failing to comply with the
written description requirement. Final 3.
Appeal 2019-001624
Application 14/362,046

3
2. Claims 2–4, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Niederst. Final 3.
3. Claims 2–7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Niederst in view of Bode. Final 6.
OPINION
Rejections under 35 U.S.C. § 103
Claims 2 and 3 recite a repair coating comprising “an acrylic latex
material.” See claims 2 and 3 supra p. 2. The Examiner relies on Niederst for
a teaching or suggestion of the invention as recited in claims 2 and 3, and
relies on Bode solely for a teaching or suggestion of the limitations recited in
dependent claims 5 and 6. See Final 6–7.
Niederst relates to “metal containers having . . . an easily openable
metal end having a score line on its exterior surface, wherein the score
line has a radiation-cured coating applied thereon.” Niederst ¶ 1. Niederst
defines the term “‘radiation-curable coating composition’ . . . as a
composition including [a] difunctional compound, polyfunctional reactive
diluent, photoinitiator, optional monofunctional reactive diluent, and any
other optional ingredients, optionally dispersed in an aqueous or nonaqueous
carrier.” Id. ¶ 21. Niederst describes the solvent as an optional ingredient, id.
¶ 64, but states that “[i]n some cases, a solvent is useful to reduce the
viscosity of the UV-curable coating composition, which facilitates
application of the radiation-curable coating composition to the score line of
the can end,” id. ¶ 66. According to Niederst, “[i]f coating composition
ingredients can be solubilized in an aqueous solution, the solvent is water.
Water can be included in an amount up to 30%, by weight, of the
composition.” Id. ¶ 67. Niederst discloses preparing
Appeal 2019-001624
Application 14/362,046

4
[a] radiation-curable coating composition . . . by simply
admixing composition ingredients in any desired order, in [an]
optional solvent, with sufficient agitation. The resulting mixture
is admixed until all the composition ingredients are
homogeneously solubilized or dispersed. If necessary, an
additional amount of the optional solvent can be added to the
radiation-curable coating composition to adjust the viscosity of
the composition to a predetermined level.
Id. ¶ 71. Niederst discloses that the “radiation-curable coating composition
can be applied to the score line [of an easily openable can end] in a spray-
type application, and is cured using UV, e-beam, or IR radiation and an
optional heating step.” Id. ¶ 80. Niederst defines a “‘cured coating
composition’ . . . as the adherent, tack-free polymeric coating resulting from
curing a radiation-curable coating composition.” Id. ¶ 21.
The Appellant contends that the Examiner erred reversibly in finding
that Niederst discloses or suggests an acrylic latex material. Appeal Br. 3.
The Appellant argues that “[t]he conditions employed and taught by
Niederst make it clear to one skilled in the art that latex formation is not,
and, indeed could not, occur.” Id. In support of this argument, the Appellant
relies on Dr. Debra L. Singer’s declaration testimony. Id. at 3–4.
Dr. Singer testified that she obtained a Ph.D. in Organic Chemistry
from Northwestern University in 1981. Decl. ¶ 1. Dr. Singer testified that
over the past 35 years, she has worked in Coatings Research and
Development for PPG Industries, including within the Automotive Coatings,
Industrial Coatings and Packaging Coatings Research groups. Id. We find
that Dr. Singer is qualified to testify as an expert in the field of polymer
synthesis and coating formulation. See id. ¶ 2.
Dr. Singer testified that Niederst does not teach an acrylic latex. Decl.
¶ 2. Dr. Singer explains that
Appeal 2019-001624
Application 14/362,046

5
[l]atex synthesis generally begins by adding surfactant to a
large amount of water. Monomers and initiator are added to the
water/surfactant mixture over a period of time; the monomer
polymerizes to very high molecular weight inside the micelles
that are formed by the surfactant. The monomers are fully
polymerized to high molecular weight polymers having an Mw
of 200,000 to 1,000,000. Thus the monomers undergo
polymerization during formation of the latex particles
themselves. These latex particles are not radiation cured, and
indeed, following the polymerization that occurs to form the
particles, are not capable of radiation cure, which requires
unreacted unsaturation. The latex is then used in the
formulation of a coating, which can be applied to a substrate.
Such a coating undergoes cure upon the evaporation of the
water and/or other solvent that may be present in the coating, or
by some form of heating. The coating would not, and indeed
could not, undergo cure by radiation exposure.
Decl. ¶ 2. In support of this testimony, Dr. Singer provides an “excerpt from
‘Emulsion Polymerization and Emulsion Polymers’ edited by Peter A.
Lovell and Mohamed S. El-Aasser” (“Excerpt”). See id. We have reviewed
the Excerpt and find that it supports Dr. Singer’s testimony regarding latex
particle formation.
There is no dispute that the definition of a latex is “a dispersion in
water of polymer particles.” Final 10; Appeal Br. 3; see Decl. ¶ 2 infra p. 6;
Excerpt 38 (“[A latex] is defined as a colloidal dispersion of polymer
particles in an aqueous medium.”).4 The Appellant argues that the Examiner
“provides no evidence that the composition of Niederst actually comprises

4 A preponderance of the evidence supports this definition and, therefore,
contrary to the Examiner’s statement that “polymer particles are not a
limitation in the independent claims,” Ans. 11, the claims’ recitation of an
“acrylic latex material” necessarily requires the presence of polymer
particles.
Appeal 2019-001624
Application 14/362,046

6
polymer particles. A coating that comprises polymers and employs water as
a solvent is not a latex unless these particles are formed.” Appeal Br. 3. Dr.
Singer testified that
Niederst . . . teaches a typical radiation curable coating and uses
oligomeric monomers that are polymerized only after
application to the substrate. . . . Exposure of these coatings to
UV radiation causes polymerization of the monomers, which is
the mechanism by which the coating cures. . . . The polymer
that results is a molecule, typically branched or linear. It is not a
polymer particle.
Decl. ¶ 2.
The Appellant has argued persuasively that the Examiner has not
shown by a preponderance of the evidence that Niederst discloses or
suggests a repair coating composition comprising “an acrylic latex material”
as required by the claims. As noted above, Niederst discloses that water is an
optional component in the radiation-curable coating and, if included may be
present in an amount up to 30%, by weight of the composition. See Niederst
¶¶ 64, 67 supra. The Examiner has not identified evidence to support a
finding that adding water in an amount up to 30% to Niederst’s required
composition components would have been sufficient for latex synthesis. See
Decl. ¶ 2 (“Latex synthesis generally begins by adding surfactant to a large
amount of water.”); Excerpt 38 (“Water is a chief ingredient . . . .”). The
Examiner has neither identified a teaching in Niederst of the reaction
conditions necessary to form latex particles, nor shown error in Dr. Singer’s
testimony regarding the reaction conditions required for latex synthesis. See
Decl. ¶ 2; Excerpt 38–40. Further, the Examiner’s argument that “[t]he term
polymer particles does not indicate[] a solid particle just a zone (sphere,
droplet etc.) of polymer material,” Ans. 11, is not supported by a
Appeal 2019-001624
Application 14/362,046

7
preponderance of the evidence of record. See Excerpt 40–43 (describing the
mechanisms for particle formation).
For the reasons discussed above, we do not sustain the rejections of
claims 2–7, 9, and 10 under 35 U.S.C. § 103(a).
Rejection under 35 U.S.C. § 112, written description
The Examiner determined that there is no support in the Specification
for the negative claim limitation “without exposure to radiation,” recited in
independent claims 2 and 3. Final 3. With respect to negative limitations, our
reviewing court has stated that “[n]egative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation.” Santarus, Inc. v. Par Pharm, Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012); see also In re Johnson, 558 F.2d 1008, 1018 (CCPA 1977)
(“Appellants . . . are narrowing their claims, and the full scope of the limited
genus now claimed is supported in appellants’ earlier application,
generically and by specific examples.”).
The Appellant argues that written description support is provided in
the following Specification disclosure relating to the examples, Appeal Br.
2: “After application of the coatings [to full aperture tinplate easy open
ends,] the easy open ends were dried for one minute in a fan assisted oven at
a temperature between 100°C and 175°C . . . . The drying process produces a
cured film of the coating on the end which is tested . . . .” Spec. 15:5–6, 12–
15. The Examiner, however, found that the cited disclosure is merely a
description of a species of the genus of radiation types: “Curing by heating is
equivalent to curing by drying[; h]eat curing is a form of curing by radiation
having wavelengths of approximately 750 – 800nm.” Ans. 10–11; see also
Final 5, 10.
Appeal 2019-001624
Application 14/362,046

8
An Examiner’s statement is accepted as true when an appellant fails to
question its accuracy or to present contradicting evidence. See, e.g., In re
Fox, 471 F.2d 1405, 1407 (CCPA 1973) (affirming the Board’s decision:
“In this court appellant has not denied the existence of the facts on which the
examiner rested his obviousness rejection nor the added facts of which the
board took judicial notice.”); In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
1964) (“[T]he examiner appears to have considered thoroughly this
assertion, and to have found otherwise. Since appellant has not shown this
finding to be clearly erroneous, we accept it as fact.”). The Appellant has not
identified error in the Examiner’s finding that curing by exposure to
radiation encompasses drying in an oven at a temperature between 100°C
and 175°C. See Appeal Br. 2–3; Reply Br.; Decl. ¶ 2 (testifying that a latex
coating composition “undergoes cure upon the evaporation of the water
and/or other solvent that may be present in the coating, or by some form of
heating[, but] . . . would not, and indeed could not, undergo cure by radiation
exposure,” but failing to address the Examiner’s finding that heat curing is a
form of curing by radiation). Nor has the Appellant directed us to any other
Specification disclosure that provides a reason to exclude from the scope of
the claims an acrylic latex material that cures without any type of radiation
exposure.
For the above reasons, we are not convinced of reversible error in the
Examiner’s rejection of claims 2–7, 9, and 10 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre–AIA), first paragraph, as failing to comply with the
written description requirement.

Appeal 2019-001624
Application 14/362,046

9
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–7, 9, 10 112(a) or
112 (pre-
AIA), ¶ 1
Written Description 2–7, 9, 10
2–4, 7, 9,
10
103(a) Niederst 2–4, 7, 9,
10
2–7, 9, 10 103(a) Niederst, Bode 2–7, 9, 10
Overall
Outcome
2–7, 9, 10

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) (2017).
AFFIRMED