Michael Richert et al.

Patent Trials and Appeals Board

Feb 25, 2021

2020001720 (P.T.A.B. Feb. 25, 2021)

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.
13/146,022 09/13/2011 Michael Richert BCM0066
(PAT0001585US01)
1577
23657 7590 02/25/2021
SERVILLA WHITNEY LLC/BASF
33 WOOD AVE SOUTH
SUITE 830
ISELIN, NJ 08830
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/25/2021 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):
docket@dsiplaw.com
lmurphy@dsiplaw.com
spedersen@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL RICHERT, WOLFGANG DUSCHEK, and
MICHAEL DORNBUSCH
Appeal 2020-001720
Application 13/146,022
Technology Center 1700
BeforeKAREN M. HASTINGS, JAMES C. HOUSEL, and JENNIFER R.
GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed July 25, 2011 (“Spec.”); Final Office Action dated February 1, 2019
(“Final Act.”); Appeal Brief filed September 3, 2019 (“Appeal Br.”);
Examiner’s Answer dated November 6, 2019 (“Ans.”); and Reply Brief filed
January 3, 2020 (“Reply Br.”).
Appeal 2020-001720
Application 13/146,022

2
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 5.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a thermally cured multicoat composition
that reduces corrosion of a metallic substrate to which it is applied. Spec. 4,
l. 15–5, l. 2. Sole independent claim 1, reproduced below with emphasis to
highlight key disputed recitations, is illustrative of the claimed subject
matter:
1. A thermally cured multicoat color and/or effect paint
system which reduces corrosion of a metallic substrate to
which it is applied comprising, lying atop one another in
this order,
(1) at least one first basecoat comprising a thermally
curable basecoat material (A) coated on a metallic
substrate selected from the group consisting of an
unprimed substrate, a substrate coated with at least
one uncured or partly cured primer (G), and a
substrate coated with at least one fully cured primer
(G),
(2) a second, color and/or effect basecoat comprising a
thermally curable basecoat material (B) on top of the
first basecoat, and

2 Appellant to refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as BASF Coatings
GmbH. Appeal Br. 3.
3 Claims 7–10 and 17–19 are withdrawn from consideration by the Examiner
as directed to non-elected subject matter. Final Act. 2.
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(3) at least one transparent coating comprising clearcoat
material (C) on top of the second basecoat,
wherein the basecoat material (A) that forms the first
basecoat comprises
(a.1.) at least one binder consisting of a water-dilutable
polyester resin (a.1.1), a water-dilutable
polyurethane resin (a.1.2), and a water-dilutable
polyurethane-modified polyacrylate resin (a.1.3),
(a.2) at least one color or effect pigment, and
(a.3) 2-5% by weight based on a total weight of the
basecoat material (A) of N,N’-bis(2,4-
dimethyl)phenyl-N”-2-methyl-4-glycerinyl-3-
dodecanyl-triazine as a corrosion-inhibiting
component.
Appeal Br. 18 (Claims App.) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1 and 5 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Noguchi4, Odaka5, as
evidenced by Masumoto6, Shefer7, and Arruda8 on appeal. Ans. 4; Final
Act. 4.

4 Noguchi et al., US 2008/0220275 A1, published September 11, 2008.
5 Odaka et al., WO 2007/125746 A1, published November 8, 2007. Because
the Examiner and Appellant rely on and cite to US 2009/0111904 A1,
published April 30, 2009, as an English language equivalent to
WO 2007/0220275 A1 (Final Act. 4; Appeal Br. 8), we do the same in our
decision.
6 Masumoto et al., US 2013/0217884 A1, published August 22, 2013.
7 Shefer et al., US 2005/0112235 A1, published May 26, 2005.
8 Arruda et al., US 2013/0288050 A1, published October 31, 2013.
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Application 13/146,022

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DISCUSSION
We have carefully considered Appellant’s arguments, but we are not
persuaded of reversible error in the Examiner’s rejection of claims 1 and 5.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections . . . .”). Thus, we sustain the Examiner’s rejection for
the reasons expressed in the Final Office Action, the Answer, and below.
The dispute between the Examiner and Appellant focuses on claim 1’s
“polyurethane-modified polyacrylate resin (a.1.3)” and “N,N’-bis(2,4-
dimethyl)phenyl-N”-2-methyl-4-glycerinyl-3-dodecanyl-triazine” (a.3), a
corrosion-inhibiting component. We will address each recitation in turn
below.
Polyurethane-modified Polyarylate Resin
The Examiner finds that Noguchi teaches a base resin comprising an
acrylic resin having specific long chain primary hydroxyl-containing side
chains as crosslinking functional groups, and a blocked polyisocyanate
compound as a crosslinking agent provides curability, adherability, coated
surface smoothness, and aqueous dispersion stability to a water-based
package coat. Final Act. 6–7 (citing Noguchi ¶ 8). The Examiner finds that
the acrylic resin and the polyisocyanate in such a water-based package coat
“would necessarily form” a polyurethane moiety, as evidenced by The
Essential Chemical Industry - online,
https://www.essentialchemicalindustry.org/polymers/polyurethane.html (last
modified April 24, 2017). Ans. 10–11. Thus, the Examiner finds that one of
ordinary skill in the art would understand that Noguchi teaches that its
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Application 13/146,022

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basecoat material includes a “polyurethane-modified polyacrylate resin.” Id.
at 11, claim 1.
Appellant argues that finding that Noguchi teaches a polyurethane
modified polyacrylic resin is a misreading of Noguchi. Appeal Br. 11.
Appellant argues that Noguchi’s acrylic resin and blocked polyisocyanate
compound are separate ingredients of the package coating and Noguchi does
not mention any resultant of those ingredients including any kind of
polyurethane moiety. Id.
Appellant’s argument is not persuasive. The Examiner agrees that
Noguchi does not explicitly disclose a “polyurethane-modified polyacrylate
resin.” Ans. 10, claim 1. The Examiner, however, finds that because
Noguchi teaches that its base resin includes an acrylic resin having long
chain primary hydroxyl-containing side chains as the crosslinking functional
group and a blocked polyisocyanate compound as a crosslinking agent, one
of ordinary skill in the art would recognize that Noguchi teaches or suggests
a base resin that includes a polyurethane-modified polyacrylate resin. Id. On
the present record, Appellant does not direct us to sufficient factual evidence
to refute the Examiner’s findings. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (citation omitted) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
N,N’-bis(2,4-dimethyl)phenyl-N”-2-methyl-4-glycerinyl-3-dodecanyl-
triazine
The Examiner acknowledges that Noguchi does not teach that its first
base coat material includes N,N’-bis(2,4-dimethyl)phenyl-N”-2-methyl-4-
glycerinyl-3-dodecanyl-triazine. Final Act. 6. The Examiner finds that
Odaka teaches a curable coating composition containing a ultraviolet
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absorbent, such as Tinuvin 400, which is N,N’-bis(2,4-dimethyl)phenyl-N”-
2-methyl-4-glycerinyl-3-dodecanyl-triazine, as evidenced by Appellant’s
Specification. Final Act. 7; compare Odaka ¶ 69, with Spec. 28, l. 31–29, l.
1. The Examiner finds that Odaka teaches that the ultraviolent absorbent
improves weatherability of the coating composition and provides excellent
tenacity, heat resistance, and mar resistance of the obtained cured film. Final
Act. 8 (citing Odaka ¶¶ 68, 70). Based on Odaka’s teachings, the Examiner
finds that one of ordinary skill in the art would have used Tinuvin 400 in
Noguchi’s base resin “to provide excellent weatherability . . . tenacity, heat
resistance, and mar resistance” to Noguchi’s cured film. Id.
Appellant argues that one of ordinary skill in the art would not have
been motivated based on Odaka’s teachings to include an ultraviolet
absorber such as Tinuvin 400 in Noguchi’s underlying/inner first and second
base coat layers. Appeal Br. 12.
Appellant’s argument is not persuasive. Although Noguchi teaches the
use of an ultraviolet absorber in its top layer, Appellant has not directed us to
any disclosure in Noguchi or Odaka that would discourage one of ordinary
skill in the art from using an ultraviolet absorber to provide improved
weatherability, tenacity, heat resistance, and mar resistance in any layer of a
multilayer coating, such as Noguchi’s underlying/inner layers.
Based on the foregoing, we sustain the Examiner’s obviousness
rejection of claims 1 and 5.

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Application 13/146,022

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5 103(a) Noguchi, Odaka,
Masumoto, Shefer,
Arruda
1, 5

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED