Lin, Jun

Patent Trials and Appeals Board

Jul 7, 2020

2019004283 (P.T.A.B. Jul. 7, 2020)

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.
13/499,993 04/03/2012 Jun Lin 176.0173US
(FA1808USPCT)
1594
111787 7590 07/07/2020
LKGLOBAL (Axalta)
7010 E. Cochise Road
Scottsdale, AZ 85253
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
axalta@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUN LIN
____________

Appeal 2019-004283
Application 13/499,993
Technology Center 1700
____________

Before JEFFREY T. SMITH, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 9, and 20–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Axalta
Coating Systems IP Co., LLC. Appeal Br. 1.
Appeal 2019-004283
Application 13/499,993

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The invention relates to a coating composition containing an
organosilane condensate that provides a clear coat having improved scratch
and mar resistance. Spec. 2. Claim 1 illustrates the subject matter on appeal
and is reproduced below (formatting added):
1. A solvent-based coating composition comprising:

A) a pre-formed organosilane condensate, wherein the
pre-formed organosilane condensate consists of a reaction
product that is formed by hydrolysis of a reaction mixture that
consists of mixture ingredients (1) - (6) as follows:

(1) a medium to long chain trialkoxy silane
selected from the group consisting of: propyltrimethoxysilane
and gamma-glycidoxypropyltrimethoxysilane, and
combinations thereof,

(2) water and optionally one or more solvents,

(3) about 0.03 percent to about 1 percent by
weight, based on total weight of the medium to long chain
trialkoxy silane, of 3-(2-
aminoethylamino)propyltrimethoxysilane,

(4) at least one silicon-containing additional
reactant compound including at least a tetraalkyl orthosilicate
and optionally one or more of: at least one di-alkoxy or
monoalkoxy silane, silane functional polymers, and colloidal
silica,

(5) at least one acid catalyst, and

(6) optionally a further medium to long chain
trialkoxy silane according to the formula: (RO)3-Si-R1, wherein
R1 is an unsubstituted alkyl group having 3 to 20 carbon atoms,
wherein the hydrolysis reaction is carried out by stirring the
reaction mixture for more than two minutes up to 24 hours at a
temperature of from 30°C to 90°C;
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Application 13/499,993

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B) a film-forming binder that is different from the pre-
formed organosilane condensate, wherein the pre-formed
organosilane condensate is present in an amount of from 1% to
30% by total weight of the film-forming binder;

C) optionally one or more of moisture scavengers, UV
stabilizers or screeners present in an amount of about 0.1% to
10% by total weight of the film-forming binder, pigments, and
rheology control agents; and

D) at least one organic solvent in addition to the optional
one or more solvents of component A(1).2

The Examiner maintains the following rejections from the Final
Office Action dated April 23, 2018 (Final Act. 2–16):
I. Claims 1, 4, and 9 rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Ono (AU 2006/237998 B2, published October 26,
2006), Tonaka (JP 2007-177314, published July 12, 2007, and relying on an
English machine translation dated December 7, 2007), Domes (WO
2004/076717 A1, published September 10, 2004, and relying on US
2011/0039115 A1 to Domes, published February 17, 2011, as an English
equivalent), Yoshikawa (EP 0 638 605 A1, published February 15, 1995),
and Seo (US 2003/0129740 A1, published July 10, 2003).

II. Claim 20 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ono, Tonaka, Domes, Yoshikawa, Seo, and Endo (US
2011/0143130 A1, published June 16, 2011).

III. Claim 21 rejected under pre-AIA 35 U.S.C. § 103(a) as

2 Claim 1’s recitation of A(1) in part (D) appears to be in error because it is
component A(2) that contains “optionally one or more solvents.” Therefore,
there may be an indefiniteness issue in the language of independent claim 1.
Appellant is encouraged to review the claim language carefully to ensure
that it particularly points out and distinctly claims the subject matter which
the applicant regards as the invention. For the purposes of our review, we
interpret part (D) of the claim as referring to component A(2).
Appeal 2019-004283
Application 13/499,993

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unpatentable over Ono, Tonaka, Domes, Yoshikawa, Seo, and Tamori (US
2003/0073779 A1, published April 17, 2003).

IV. Claim 22 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ono, Tonaka, Domes, Yoshikawa, Seo, Choi (US
6,610,872 B1, issued August 26, 2003), Birot (FR 2 741 626 A1, published
May 30, 1997 and relying on an English machine translation entered in the
record on August 2, 2014), and Ackermann (US 2007/0078250 A1,
published April 5, 2007).

OPINION
After review of the respective positions that Appellant presents in the
Appeal and Reply Briefs and Examiner presents in the Final Office Action
and the Answer, we REVERSE the Examiner’s prior art rejections of claims
1, 4, 9, and 20–22 under 35 U.S.C. § 103(a) for the reasons the Appellant
presents. We add the following.
Independent claim 13 is directed to a solvent-based coating
composition comprising a film-forming binder.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 2–10.
Briefly, the Examiner finds that the combined teachings of Ono and
Tonaka disclose a clear coating composition comprising a chemical
treatment agent consisting of epoxysilane and aminosilane agents that differs
from the subject matter of claim 1 in that the combined teachings do not
expressly disclose a film-forming binder. Final Act. 2–6. The Examiner
turns to Domes for this missing feature. The Examiner finds that Domes

3 We limit our discussion to independent claim 1.
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Application 13/499,993

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discloses a solvent-based coating for metal substrates comprising an organic
film former, Final Act. 9. The Examiner determines that it would have been
obvious to one skilled in the art to modify the coating from the combined
teachings of Ono and Tonaka to include Domes’s organic film former to
provide a coating suitable for metallic surfaces that can be used largely or
completely without chromium (VI) compounds. Final Act. 10.
Appellant argues that the Examiner benefitted from impermissible
hindsight in combining the teachings of the cited art to arrive at the claimed
invention. Appeal Br. 5, 8. Specifically, Appellant argues that the
Examiner relied on to make the relatively simple clear coat of Ono become
the much more detailed coating composition claimed, and that Domes does
not disclose a composition of a binder with Appellant’s pre-formed
organosilane condensate. Id. at 8–9. Appellant further argues that the
Office Action selectively takes one part of a completely different
composition and “stacks” it onto the simple disclosure of Ono. Id. at 9.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness. The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
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Application 13/499,993

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As Appellant argues, Ono discloses the use of an aminosilane type
and/or epoxysilane type chemical conversion treating agent in a solvent-
based coating composition because these agents provide a coating that
adheres satisfactorily to the surface onto which it is applied once baked and
dried. Appeal Br. 6; Ono 6. That is, Ono already includes a film-forming
binder. Given this disclosure, the Examiner does not explain adequately
why one skilled in the art would add Domes’s binder to Ono’s solvent-based
coating composition. Nor does the Examiner provide an adequate technical
explanation why one skilled in the art would have found Domes’s binder
suitable for Ono’s composition. Thus, the Examiner has not provided an
adequate reasoning with the requisite rational underpinning explaining why
one skilled in the art, absent impermissible hindsight, would have combined
the teachings of the cited art to arrive at the claimed invention.
Accordingly, we REVERSE the Examiner’s prior art rejections of
claims 1, 4, 9, and 20–22 under 35 U.S.C. § 103(a) for the reasons the
Appellant presents and we give above.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 4, 9 103(a)
Ono, Tonaka,
Domes,
Yoshikawa, Seo
1, 4, 9
20 103(a) Ono, Tonaka, Domes, 20
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Application 13/499,993

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Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
Yoshikawa, Seo,
Endo
21 103(a)
Ono, Tonaka,
Domes,
Yoshikawa, Seo,
Tamori
21
22 103(a)
Ono, Tonaka,
Domes,
Yoshikawa, Seo,
Choi, Birot,
Ackermann
22
Overall
Outcome
1, 4, 9, 20–
22

REVERSED