Low, Norbert et al.

Patent Trials and Appeals Board

Sep 18, 2020

13265742 - (D) (P.T.A.B. Sep. 18, 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.
13/265,742 10/21/2011 Norbert Low 27843-1073
PAT0001553US01
8881
76656 7590 09/18/2020
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte NORBERT LÖW,
VINCENT COOK, and JORN LAVALAYE
_______________
Appeal 2019–005025
Application 13/265,742
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4, 6, 8, 9, and 17–21 of Application

1 In our Decision, we refer to the Specification filed October 21, 2011
(“Spec.”) of Application 13/265,742 (“the ’742 Application”); the Final
Office Action dated August 2, 2018 (“Final Act.”); the Appeal Brief filed
March 1, 2019 (“Appeal Br.”); the Examiner’s Answer dated April 17, 2019
(“Ans.”); and the Reply Brief filed June 17, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BASF Coatings GMBH as the real
party in interest. Appeal Br. 4.
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Application 13/265,742

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13/265,742. See Appeal Br. 1; Final Act. 1. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the ’742 Application relates to multicoat paint
systems. Spec. 1:5. The ’742 Application describes that the multicoat paint
systems feature lower yellowing, particularly on overbaking, in conjunction
with good storage stability of the high-solids basecoat and clearcoat
materials. Id. at 6:7–9.
Claim 1 is representative of the claims and is reproduced below from
the Claims Appendix of the Appeal Brief with key limitations emphasized.
1. A multicoat paint system for spray application to a
substrate, the multicoat paint system comprising:
i. at least one basecoat of a nonaqueous basecoat
material having a solids fraction of at least 35% by
weight, based on the total weight of the basecoat
material; and
ii. at least one clearcoat of a nonaqueous clearcoat
material having a solids fraction of at least 50% by
weight, based on the total weight of the clearcoat
material;
wherein the basecoat material and the clearcoat material
each comprise independently 1.5% to 3.0% by weight,
based on the total weight of the respective coating
material, of at least one of
A. an epoxy-sulfonic acid compound of formula (I)
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Application 13/265,742

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wherein
n is from 1 to 5,
R1 is at least one of the group consisting of a monovalent or
divalent C1–C18 alkyl radical, a monovalent or divalent
C1–C18 alkylene radical, a monoalkylated or dialkylated
C1–C18 phenyl radical, and a monoalkylated or
dialkylated C1–C18 naphthyl radical,
R5 and R6 independently are a hydrogen atom or a C1–C12
alkyl radical, or R5 and R6 together are a C6–C12
cycloalkyl radical,
and either
a. R4 is a hydrogen atom and the radicals R2 and X are
absent, or
b. R4 is a methylene radical,
R2 is at least one of the group consisting of a hydrogen atom,
a monovalent or polyvalent C1-C18 alkyl radical, an
unsubstituted or substituted bisphenol A radical, and an
unsubstituted or substituted bisphenol F radical, and
X is a carbonyl group or an oxygen atom, X being optional,
wherein the compound according to the formula (I)
comprises a number-average molecular weight of about
500 to 1800 g/mol, and, wherein if n > 1, at least one of
the radicals R1 or R2 is at least divalent,
or
B. an epoxy-isocyanate-blocked sulfonic acid compound of
formula (II)
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wherein
n is from 1 to 5,
R1, R2, R4, R5, R6, X, and n have the same definition as in
the compound of the formula (I) above and
R3 is at least one of the group consisting of a C1–C18 alkyl
radical, a C1–C18 alkenyl radical, a C1–C18 cycloalkyl
radical, a C1–C18 aryl radical, and a substituted or
unsubstituted polymer radical, wherein if n > 1, at least
one of the radicals R1, R2 or R3 is at least divalent, and
the compound according to the formula (II) comprises a
number-average molecular weight of about 1000 to 3000
g/mol,
wherein, when the at least one basecoat and the at least one
clearcoat are applied to a substrate via spraying, the
multicoat paint system exhibits less yellowing upon
overbaking than a multicoat paint system having a
basecoat and a clearcoat that do not comprise the epoxy-
sulfonic acid compound of the formula (I) or the epoxy-
isocyanate-block[ed] sulfonic acid compound of the
formula (II),
wherein the basecoat material further comprises
a. 15% – 50% by weight of at least one binder
comprising at least one (meth)acrylate copolymer,
which has a number-average molecular weight of
about 400 to 5000 g/mol,
b. 5% – 30% by weight of at least one melamine resin
derivative as crosslinking agent,
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c. 0.5% to 49% by weight of at least one colorant
comprising a pigment,
d. 30% – 65% by weight of at least one organic
solvent,
e. 0.05% – 40% by weight of at least one auxiliary or
additive,
based in each case on the total weight of the basecoat
material, the weight fractions of the A and/or the B as
present and the a to the e of the basecoat material adding
to 100%, and
wherein the clearcoat material further comprises
a. 15% – 50% by weight of at least one binder
comprising at least one (meth)acrylate copolymer,
which has a number-average molecular weight of
about 400 to 5000 g/mol,
b. 5% – 30% by weight of at least one melamine resin
derivative as crosslinking agent,
c. 30% – 50% by weight of at least one organic
solvent,
d. 0.05% – 40% by weight of at least one auxiliary or
additive,
based in each case on the total weight of the clearcoat
material, the weight fractions of the A and/or the B as
present and the a to the d of the clearcoat material
adding to 100%.
Appeal Br. 22–25 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Blank US 5,102,961 April 7, 1992
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Name Reference Date
Taniguchi et al.
(“Taniguchi”)
US 5,719,246 Feb. 17, 1998
Choi et al.
(“Choi”)
US 2006/0147745 A1 July 6, 2006
Pigments, BASF The Chemical Company, accessed May 17,
2014, https://www.dispersions-pigments.basf.com/portal/basf
/ien/dt.jsp?setCursor=1_561069 (“BASF-Pigments”).
REJECTIONS
The Examiner maintains the following rejections:3
1. Claims 1, 4, 6, 8, 9, and 17–21 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement. Final Act. 2–4.
2. Claims 1, 4, 6, 8, 9, and 17–21 under 35 U.S.C. § 103(a) as
obvious over Choi, Taniguchi, and further in view of Blank, as
evidenced by BASF-Pigments. Final Act. 5–18.
DISCUSSION
Ground 1: Rejection of claims 1, 4, 6, 8, 9, and 17–21 as lacking
written description support
The Examiner finds claims 1, 4, 6, 8, 9, and 17–21 lack written
description of a “binder,” in each of the basecoat and the clearcoat materials,
having “a number-average molecular weight of about 400 to 5000 g/mol.”
Final Act. 2–3 (emphasis added). The Examiner notes that claim 1 has been
amended to include the alleged new matter. Id. at 3.

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statutes.
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The Examiner finds that the application describes “[s]uitable binders”
having “a number-average molecular weight of 400 to 5000” g/mol. Id.
(citing Spec. 17:14–15). The Examiner finds, however, that “there is no
support in the originally filed disclosure for ‘the binder in each of the
basecoat material and the clearcoat material having the number-average
molecular weight of about 400 to 5000 g/mol,’ as presently claimed, and
how ‘about’ is defined.” Final Act. 3.
Appellant argues that the Specification “does not have to disclose
what is already known in the art.” Appeal Br. 10. Appellant argues that
“the use of the term ‘about’ is supported” because “one of ordinary skill in
the art would expect some deviation around a range when determining the
number-average molecular weight of the binder.” Id.
As evidence of the skilled artisan’s expectations, Appellant directs us
to the declarations of co-inventor Dr. Norbert Löw (“Löw Decl.”). Appeal
Br. 10. In the declaration filed October 19, 2016, Dr. Löw avers that
“[t]here is about a 10-% deviation possible when using . . . DIN method”
55672-1 to determine a binder’s number-average molecular weight. Löw
Decl. ¶ 5. Appellant relies on Ritter et al., Determination of molecular
weights by size exclusion chromatography (SEC) - Results of round robin
tests, 29 Polymer Testing 945–52 (2010) (“Ritter”) for additional supportive
evidence. Id. Ritter discloses that the standard deviation of reproducibility
for the DIN 55672-1 method is approximately 11%. Ritter 48; Table 7.
The sufficiency of an application’s written description is a question of
fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). The absence of a claim element in the specification in ipsis
verbis does not require a finding that a claim fails to comply with the written
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description requirement. In re Edwards, 568 F.2d 1349, 1351‒52 (Fed. Cir.
1978). At the same time, the appearance of the claim element in the
specification as filed does not guarantee that the written description
requirement is satisfied. See, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc.,
323 F.3d 956, 968 (Fed. Cir. 2002). All that is required is that the
specification demonstrate, with reasonable clarity, to a person of ordinary
skill in the art that the inventor was in possession of the invention. Carnegie
Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008).
A preponderance of the evidence supports Appellant’s argument that,
when determining a binder’s number-average molecular weight, one of
ordinary skill in the art would expect some deviation around the claimed
range of 400 to 5000 g/mol. Appeal Br. 9; see also Ritter 48; Table 7.
Appellant’s original disclosure thus reasonably conveys to those skilled in
the art that, as of the application filing date, Appellant had possession of the
binder subject matter, in each of the basecoat and the clearcoat materials,
having “a number-average molecular weight of about 400 to 5000 g/mol.”
For these reasons, we do not sustain the Examiner’s § 112, first
paragraph/written description rejection of claim 1. For the same reasons, we
likewise do not sustain the rejection of claims 4, 6, 8, 9, and 17–21.
Ground 2: Rejection of claims 1, 4, 6, 8, 9, and 17–21 as obvious over
Choi, Taniguchi, and further in view of Blank, as evidenced by BASF-
Pigments
Appellant argues patentability of claims in this rejection on the basis
of limitations recited in claim 1. See Appeal Br. 12–21; Reply Br. 2–4. We
select claim 1 as representative. Claims 4, 6, 8, 9, and 17–21 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds Choi teaches, inter alia, an embossed color steel
sheet comprising a color base paint layer and a top coat clear paint layer.
Final Act. 5. The Examiner finds that Choi does not disclose that the
basecoat and clearcoat materials include an amount of at least one
(meth)acrylate copolymer having a number-average molecular weight of
about 400 to 5000 g/mol. Id. at 9. The Examiner, however, finds that
Taniguchi teaches a paint comprising an acrylic copolymer having a number
average molecular weight of 1,000–500,000. Id. The Examiner concludes
that
it . . . would have been obvious to one of ordinary skill in the
art to add the amount of [Taniguchi’s] acrylic copolymer
having the number-average molecular weight in the clear paints
and in the base paints in Choi, in order to provide [Taniguchi’s]
long pot life, excellent abrasion resistance, chemical resistance,
flexibility, strength desirable durability in the clear paint and in
the base paint of Choi, while the acrylic copolymer prevents
having viscosity becoming too high to worsen the workability.
Id. at 9–10.
The Examiner finds that Choi also does not disclose that the basecoat
and clearcoat materials are comprised of “an epoxy-isocyanate-blocked
sulfonic acid compound of formula (II),” as recited in claim 1. Id. at 9; see
also Appeal Br. 23 (Claims App.). However, the Examiner finds that
“Blank teaches a polymeric isocyanate modified epoxy blocked sulfonic acid
ester as a catalyst.” Final Act. 10. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to have used Blank’s epoxy-isocyanate-blocked sulfonic acid
catalyst in Choi’s color base paint and top coat clear paint layer, as modified
by Taniguchi, because doing so would have provided a catalyst with
improved stability. Id. at 13. The Examiner determines that one of ordinary
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skill in the art would have been further motivated to use Blank’s catalyst as
this would have produced polymeric film coatings with superior hardness,
impact resistance, adhesion, improved blister resistance, salt spray
characteristics, and flexibility, while avoiding discoloration of the catalyst
solutions on storage. Id.
Appellant argues that the claimed composition unexpectedly solved
the problem that “overbaking of multicoat paint systems . . . is accompanied
by the phenomenon of yellowing.” Appeal Br. 12. Appellant argues that the
unexpected results are supported by the Specification and both Löw
declarations, which demonstrate that the claimed multicoat paint system
produces less yellowing upon overbaking than a multicoat paint system
lacking an epoxy-sulfonic acid compound of formula (I) or an epoxy-
isocyanate-blocked sulfonic acid compound of formula (II). Id. at 12–18.
According to Appellant, “the obviousness rejection should be overcome on
the basis of these surprising results.” Id. at 12.
The Examiner, however, finds that use of Blank’s epoxy-isocyanate-
blocked sulfonic acid compound of formula (II) would have avoided
discoloration of catalyst solutions on storage. Ans. 23; see also Final Act.
12. The Examiner concludes that Appellant’s evidence of unexpected
results is neither “unexpected[,] nor surprising” because Blank similarly
recognizes that the catalyst epoxy-isocyanate-blocked sulfonic acid
compound of formula (II) reduces or prevents yellowing. Ans. 24.
Appellant responds by arguing, inter alia, that “mere discussion of
‘stability’ in Blank is not suggestive of the surprising advantages associated
with Appellant’s claimed multicoat paint system.” Reply Br. 3; see also
Appeal Br. 19. According to Appellant, the storage stability of Blank’s
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catalyst was tested at low temperatures, which are distinguishable from the
high temperatures encountered in overbaking. Reply Br. 4. Appellant
contends that “like most compounds, catalysts may also decompose if kept
at too high of a temperature for too long.” Id.
For unexpected results to be probative of non-obviousness, Appellant
must establish that the difference actually obtained would not have been
expected by one skilled in the art at the time of the invention. In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973). Appellant has not provided
persuasive evidence of unexpected results because Blank reasonably
suggests that the catalyst epoxy-isocyanate-blocked sulfonic acid compound
of formula (II) would have reduced or prevented yellowing.
For purposes of section 103, a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom. In re Fritch, 972
F.2d 1260, 1264–65 (Fed. Cir. 1992). The question under 35 U.S.C. § 103 is
not merely what the references teach, but what they would have suggested to
one of ordinary skill in the art at the time the invention was made. All
disclosures of the prior art must be considered. In re Lamberti, 545 F.2d
747, 750 (CCPA 1976).
Although a “multicoat paint system exhibit[ing] less yellowing upon
overbaking than a multicoat paint system having a basecoat and a clearcoat
that do not comprise . . . the epoxy-isocyanate-blocked sulfonic acid
compound of the formula (II),” as recited in claim 1, is not explicitly
disclosed in Blank, the prior art would have suggested the compound’s
claimed property. As the Examiner persuasively reasons, Blank’s formula
(II) catalyst would have been chemically unaltered, unconsumed, and still
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capable of improving “storage stability, and preventing discoloration,” even
after an overbaking reaction. Ans. 24. The Examiner based this conclusion
on definitions of a “catalyst” and “Appellant agrees with the definitions.”
Reply Br. 4; see also Ans. 23. In our view, Blank’s teachings regarding
discoloration prevention would have encompassed the reduction or
prevention of yellowing upon overbaking. Appellant’s contention that
Blank’s compound of formula (II) would have decomposed at high
temperatures over a long duration is mere attorney argument outweighed by
the preponderance of evidence. See Reply Br. 4. We note that Blank
explicitly discloses a “[b]aking schedule [of] 30 min [at] 120 oC” for testing
paint compositions comprising catalysts.4 Blank 11:21–55. One of ordinary
skill in the art at the time of the invention would have found it obvious that
the catalyst epoxy-isocyanate-blocked sulfonic acid compound of formula
(II) would have reduced or prevented yellowing.
Therefore, Blank’s suggestion of a suitable catalyst for a reasonably
similar function would have suggested the disputed limitation recited in
claim 1.
Appellant also argues that the Examiner’s “obviousness rejection is
based on the addition of the acrylic copolymer of Taniguchi to the
polyester-containing clear and base paints of Choi.” Appeal Br. 20.
Appellant contends that
the amount of acrylic copolymer of Taniguchi to include into
the paints of Choi, the total of A and/or the B as present and the

4 Compare with Spec. 53:16–18 (describing that “the basecoat films and the
clearcoat films were baked at a panel temperature of 140°C for 10 minutes”
and that a “second series of test panels was overbaked at a panel temperature
of 160°C for 10 minutes.”).
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a to the e of the basecoat material simply cannot add to 100%.
Likewise, the weight fractions of the A and/or the B as present
and the a to the d of the clearcoat material simply cannot add to
100%.
Id. at 21. Appellant essentially argues that the Examiner has not established
a prima facie case of obviousness as the combined prior art does not teach or
suggest the limitations concerning the total weights of the basecoat and
clearcoat materials. Id. at 20–21.
We find that the Examiner has met her initial burden in establishing a
prima facie case of obviousness. Final Act. 5–15; Ans. 24–25. Appellant
fails to address (and rebut) the Examiner’s finding that “it would have been
within the skill level of one of ordinary skill in the art to adjust the amounts
of the components in the base material and the clear material to add to
100%.” Ans. 25. Appellant, furthermore, merely asserts that the
Examiner’s proposed combination “simply cannot add to 100%” without any
explanation why the required sum total % cannot be met. Appeal Br. 21.
Claim 1 contains the open transitional term “comprising,” which
permits elements in addition to those specified to be included in the
composition of the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir.
2004). In the Answer, the Examiner explains that the claim language
regarding components a. and d. of each the basecoat and clearcoat materials
does not exclude combining Choi’s polyester with Taniguchi’s acrylic
copolymer. Ans. 25.
On these bases, we are unpersuaded by Appellant’s argument for
reversible error. We sustain the rejection of claim 1. For the same reasons,
we likewise sustain the rejection of claims 4, 6, 8, 9, and 17–21.
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CONCLUSION
In summary:
ClaimsRejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 6, 8, 9, 17–
21
112, 1st
¶ Written Description
1, 4, 6, 8,
9, 17–21
1, 4, 6, 8, 9, 17–
21 103(a)
Choi, Taniguchi,
Blank, BASF-
Pigments
1, 4, 6, 8, 9,
17–21
Overall
Outcome
1, 4, 6, 8, 9,
17–21
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).
AFFIRMED