PPG INDUSTRIES OHIO, INC.

Patent Trials and Appeals Board

Oct 14, 2021

2020006470 (P.T.A.B. Oct. 14, 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.
15/347,822 11/10/2016 SCOTT MORAVEK 11008207A1D1 2588
24959 7590 10/14/2021
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
STANLEY, JANE L
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
ipdocket@ppg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT MORAVEK, ROBIN M. PEFFER, and
MICHAEL A. MAYO1
____________

Appeal 2020-006470
Application 15/347,822
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to processes for coating plastic
substrates, particularly those used in the automotive industry. See, e.g.,

1 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., a wholly owned subsidiary of PPG Industries, Inc.
Br. 2.
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Spec. ¶¶ 2–6; Claim 1. Claim 1 is reproduced below from page 13 (Claims
Appendix) of the Appeal Brief:
1. A process for coating a plastic, heat sensitive, electroconductive
substrate comprising:
(a) electrophoretically depositing on the substrate a curable,
electrodepositable coating composition to form an
electrodeposited coating over at least a portion of the substrate,
the electrodepositable coating composition comprising a
resinous phase dispersed in an aqueous medium, said resinous
phase comprising:
(1) a resin component containing an active hydrogen-
containing, cationic or anionic resin comprising an acrylic,
polyester, polyurethane and/or polyepoxide polymer; and
(2) a curing agent; and
(b) heating the coated substrate to a temperature less than 250°F
for a time sufficient to cure the electrodeposited coating on the
substrate.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1–6 under 35 U.S.C. § 102(a)(1) as anticipated by Renken
(US 2005/0272855 A1, published Dec. 8, 2005).
2. Claims 1–4 and 6 under 35 U.S.C. § 102(a)(1) as anticipated by
Alms (US 2009/0258137 A1, published Oct. 15, 2009).
3. Claim 5 under 35 U.S.C. § 103 as obvious over Alms and Renken.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
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Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated August 16, 2019, and in the Examiner’s Answer.
Rejection 1
The Appellant presents separate arguments for claims 1 and 4. We
address those claims below. The remaining claims subject to Rejection 1
will stand or fall with claim 1, from which they depend. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Renken anticipates claim 1. Ans. 3–4. In
particular, the Examiner finds that Renken discloses polyamide substrates
that include electrically conductive fillers, and that those substrates are
coated using methods and materials that fall within the scope of claim 1. Id.
The Appellant first argues that “Renken does not teach the use of a
heat sensitive substrate” because Renken teaches that its substrates should be
able to withstand “heat distortion and deformation.” Br. 7. As to claim 4
(although presumably also applicable to claim 1), the Appellant alleges that
inclusion of a “novolac resin . . . renders the Renken substrate heat
resistant.” Br. 8–9.
Those arguments are not persuasive for reasons explained by the
Examiner in the Answer. Ans. 7–11. We emphasize that Renken teaches
the use of, e.g., “polyamide 6,6” as the polyamide of its substrate.
Renken ¶ 26. The Examiner finds, and the Appellant does not dispute, that
“[t]he preferred polyamide polymer of Renken is polyamide 66, which is
readily understood by an ordinary artisan as being Nylon 66.” Ans. 11. The
Examiner explains that the claims themselves indicate that resins comprising
nylon fall within the scope of claim 1. Id. at 3, 10–11. Thus, the Examiner
determines that substrates made with Renken’s polyamide 6,6 (i.e., nylon)
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constitute “heat sensitive” substrates. Id. at 7–11. The Appellant identifies
no persuasive reason to reject that rationale.
As to the inclusion of a novolac resin, Renken teaches that the
polyamide may be up to 97.9 wt% of the substrate composition, and that the
novolac resin may be as little as 1 wt% of the composition. Renken ¶¶ 12–
13. A person of ordinary skill in the art would have at once envisaged using
only 1 wt% novolac resin in view of those disclosures. See Kennametal, Inc.
v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (“[A]
reference can anticipate a claim even if it does not expressly spell out all the
limitations arranged or combined as in the claim, if a person of skill in the
art, reading the reference, would ‘at once envisage’ the claimed arrangement
or combination.” (some internal quotation marks and citation omitted)). The
Appellant provides no evidence or persuasive technical reasoning as to why
1 wt% novolac resin would cause an otherwise 97.9 wt% nylon composition
to fall beyond the scope of claim 1. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”). In that regard, we observe that the “resinous phase” of claim 1
“comprise[s]” a resin and a curing agent, is not precluded from including
other ingredients (such as a novolac resin), and recites no limitation as to the
wt% of polymer that must be present. See Br. 13 (Claims Appendix).
On this record, we are not persuaded of reversible error in the
Examiner’s determination that Renken discloses heat sensitive substrates
within the scope of claim 1.
The Appellant also argues that “Renken does not teach coating a heat
sensitive substrate via electrodeposition.” Br. 7. The Appellant focuses on
paragraph 45 of Renken, which discloses an embodiment in which the
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plastic portion of the substrate is coated using a spray process or an
electrostatically-assisted spray process, rather than electrodeposition. Id. at
7–8.
That argument is unpersuasive because, as the Examiner explains,
paragraph 49 of Renken explicitly teaches “another embodiment” in which
both the plastic and metal portions of the substrate are coated using “a
conventional electrodeposition process that is known to one skilled in the
art.” Renken ¶ 49; see Ans. 10. The Appellant does not address that
disclosure or otherwise identify any error in the Examiner’s reliance on it.
The Appellant raises no other arguments concerning Rejection 1. On
this record, we are not persuaded of reversible error in Rejection 1. 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 . . . .”).
Rejections 2 and 3
The Examiner finds that Alms anticipates claims 1–4 and 6
(Rejection 2), and that Alms in view of Renken renders obvious claim 5
(Rejection 3). The Appellant presents no distinct arguments as to claim 5.
We select claim 1 as representative, and claims 2–6 will stand or fall with
claim 1.
The sole issue concerning Rejection 2 is whether Alms discloses
coating the substrate via electrodeposition. Br. 10. The Appellant
acknowledges that Alms teaches that the coating of the substrate “may be
carried out in any conventional manner.” Id. The Appellant does not
dispute that electrodeposition is a “conventional manner” of applying a
coating to a substrate that would be immediately envisaged by a person of
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ordinary skill in the art. Id. Nevertheless, the Appellant argues that, because
Alms teaches a preference for coating only metal—not plastic—portions of
the substrate via electrodeposition, Alms “teaches away” from coating the
plastic portion of the substrate via electrodeposition. Id.
That argument is not persuasive. “[T]eaching away is not relevant to
an anticipation analysis; it is only a component of an obviousness analysis.”
Krippelz v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012). Because
the rejection of claim 1 is an anticipation rejection, the Appellant’s argument
concerning teaching away fails. We also note that Alms discloses a
preference for coating only metal—and not plastic—portions of its substrate
via electrodeposition, see Alms ¶ 27, and it is well established that “[a]
reference does not teach away . . . if it merely expresses a general preference
for an alternative . . . .” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (internal quotation marks
omitted).
On this record, we are not persuaded of reversible error in Rejection 2
or Rejection 3. See Jung, 637 F.3d at 1365.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s) Affirmed Reversed
1–6 102(a)(1) Renken 1–6
1–4, 6 102(a)(1) Alms 1–4, 6
5 103 Alms, Renken 5
Overall
Outcome 1–6
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED