XUE, Chenchen et al.

Patent Trials and Appeals Board

Oct 9, 2019

14581074 - (D) (P.T.A.B. Oct. 9, 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.
14/581,074 12/23/2014 Chenchen XUE MASB 0116 PUS 4349
101011 7590 10/09/2019
Brooks Kushman P.C. / Masco Corporation
1000 Town Center, 22nd Floor
Southfield, MI 48075
EXAMINER
COHEN, STEFANIE J
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHENCHEN XUE, GREGORY ALLEN WILLIAMS, and
MING-REN TARNG
____________

Appeal 2019-001018
Application 14/581,074
Technology Center 1700
____________

Before LINDA M. GAUDETTE, SHELDON M. MCGEE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–16, 21–23, and 25–28. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Behr Process Corporation as the real
party in interest. Appeal Brief filed May 31, 2018 (“Appeal Br.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a paint composition. Appeal Br. 2. Independent
claims 1 and 21 illustrate the subject matter on appeal, and are reproduced
below with contested language italicized:
1. A paint composition comprising:
a solvent;
a polymeric binder that includes a component selected
from the group consisting of vinyl acetate/ethylene (VAE),
polyurethanes, polyesters, melamine resins, epoxy, and
combinations thereof; and
a plurality of zeolite particles, each zeolite particle
defining a plurality of pores therein with an average pore size
from about 1 to 100 angstroms, the zeolite particles having
exchangeable cations and sequestered cations disposed within
the pores, the sequestered cations including Mg2+.

21. A paint composition comprising:
water;
a polymeric binder that includes a component selected
from the group consisting of vinyl acetate/ethylene (VAE),
polyurethanes, polyesters, melamine resins, epoxy, and
combinations thereof;
a pigment; and
a plurality of zeolite particles, each zeolite particle
defining a plurality of pores therein with an average pore size
from about 1 to 100 angstroms, Zn2+ cations being disposed
within the pores.

Claims Appendix2 1, 3 (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 18, 2018 (“Ans.”):

2 The Claims Appendix filed with the Appeal Brief improperly omits claims
9, 16, 22, and 23. 37 C.F.R. § 41.37(c)(1)(v).
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I. Claims 9, 16, 22, and 23 under 35 U.S.C. § 112(d) as being of
improper dependent form for failing to further limit the subject matter of the
claims from which they depend, or for failing to include all the limitations of
the claims from which they depend;
II. Claims 1–16, 21–23, and 25–27 under 35 U.S.C. § 103 as
unpatentable over Hanzlicek3 in view of Floyd4 as evidenced by Armarego5
and Stanley6; and
III. Claims 1–16, 21–23, 25, 27, and 28 under 35 U.S.C. § 103 as
unpatentable over Hanzlicek in view of Craun7 as evidenced by Armarego
and Stanley.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–16, 21–23, and 25–28 under 35 U.S.C. § 103 for the reasons set
forth in the Final Action, the Answer, and below. We summarily affirm the
Examiner’s rejection of claims 9, 16, 22, and 23 under 35 U.S.C.
§ 112(d) because Appellant does not contest this rejection.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv) (2017); Ex parte Frye, 94 USPQ2d

3 Hanzlicek et al., US 2007/0237738 A1, published October 11, 2007.
4 Floyd et al., US 5,326,808, issued July 5, 1994.
5 Wilfred L. F. Armarego et al., Common Physical Techniques Used in
Purification, Purification of Laboratory Chemicals 1–60 (2009).
6 Steven M. Stanley et al., Low-magnesium calcite produced by coralline
algae in seawater of Late Cretaceous composition, 99 PNAS 15323–26
(2002).
7 Craun et al., US 5,576,360, issued November 19, 1996.
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1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner
had failed to make a prima facie case, “it has long been the Board’s practice
to require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Rejection I: claims 9, 16, 22, and 23 under 35 U.S.C. § 112(d)
We summarily sustain the Examiner’s rejection of claims 9, 16, 22,
and 23 under 35 U.S.C. § 112(d) because “Appellant acquiesces in the
. . . rejection and agrees to cancel claims 9, 16, 22, and 23.” Appeal Br. 3;
37 C.F.R. § 41.37(c)(1)(iv) (requiring that “arguments shall explain why the
examiner erred as to each ground of rejection . . . [and that] any arguments
or authorities not included in the appeal brief will be refused consideration
by the Board”); see also Manual of Patent Examining Procedure § 1205.02
(9th ed., rev. 08.2017, Jan. 2018) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).

Rejection II: claims 1–16, 21–23, and 25–27 under 35 U.S.C. § 103 over
Hanzlicek in view of Floyd as evidenced by Armarego and Stanley
Claims 1–3, 5–14, 16, 22, 23, and 25–27
Appellant, in effect, argues claims 1–3, 5–14, 16, 22, 23, and 25–27 as
a group on the basis of independent claims 1 and 13, which Appellant argues
together, because Appellant asserts that dependent claims 2, 3, 5, 6, 7, 8, 10,
11, 12, and 25–27 “are allowable by virtue of their dependence” on either
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claim 1 or claim 13, and “Appellant agrees to cancel claims 9, 16, 22[,] and
23,” as discussed above. Appeal Br. 3–7. We, accordingly, select claim 1 as
representative of claims 1–3, 5–14, 16, 22, 23, and 25–27. 37 C.F.R.
§ 41.37(c)(1)(iv).
Hanzlicek discloses a latex paint composition including water
(solvent), a binder, and an odor absorbing material, such as a crystalline
aluminum silicate zeolite. Hanzlicek ¶¶ 6, 8, 27. Hanzlicek discloses that
the latex paint composition may also include a pigment, such as calcium
carbonate, and a biocide or fungicide, such as zinc omadine. Hanzlicek
¶¶ 26, 27. Appellant does not dispute the Examiner’s finding that “the pores
of the zeolite as taught by Hanzlicek are within the . . . range [recited in
claim 1].” Compare Final Act. 4, with Appeal Br. 3–7. Nor does Appellant
dispute the Examiner’s finding that “zeolites include cations in pores
(typically aluminum, sodium and hydrogen) for charge balance.” Compare
Final Act. 4, with Appeal Br. 3–7.
Hanzlicek discloses that suitable binders for use in the latex paint
composition described in the reference “are known in the art and include
polymeric binders, such as acrylics, or non-polymeric binders.” Hanzlicek
¶ 27. The Examiner finds that the background section of Hanzlicek
discloses that urethane polymers (polyurethanes) are known in the art as
suitable polymeric binders for latex paint compositions. Final Act. 3–4
(citing Hanzlicek ¶ 2). The Examiner also relies on Floyd’s disclosure of
suitable polymeric binders for latex paint compositions. Final Act. 5 (citing
Floyd col. 3).
Hanzlicek exemplifies a latex coating (paint) composition that
includes water, a polymeric binder, a zeolite, calcium carbonate, and zinc
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omadine. Hanzlicek ¶ 33. Appellant does not dispute the Examiner’s
finding that the calcium carbonate included in the composition “will
necessarily include some magnesium carbonate” as an impurity, as
evidenced by Stanley and Armarego. Compare Final Act. 4 (citing Stanley
Introduction and Armarego Introduction), with Appeal Br. 3–7. The
Examiner finds that “because calcium carbonate necessarily includes some
magnesium carbonate, at least some magnesium cations will be in pores of
the zeolite” in the exemplary paint composition disclosed in Hanzlicek.
Ans. 22–23; see also Final Act. 4 (finding how the magnesium inherently
present in Hanzlicek’s example 2 formulation “will necessarily be ion
exchanged with the zeolite” in such formulation).
Appellant argues that although the Examiner asserts, based on the
Examiner’s finding that “magnesium [i]s an irremovable contaminate of
calcium carbonate,” that Hanzlicek’s paint composition will include
magnesium ions disposed in the pores of zeolite particles in the composition
because it includes calcium carbonate, the Examiner “does not account for
the concentration of magnesium ions, other ions, the concentration of
zeolite, the type of zeolite used, the purity of the calcium carbonate or the
pH [of the composition].” Appeal Br. 5. Appellant argues that the “mere
existence of residual magnesium carbonate” in calcium carbonate “does not
equate to Mg2+ being disposed in the pores of the zeolite,” and, Appellant
contends, it is inconsistent to take the position that magnesium is an
irremovable contaminant of calcium carbonate, while finding that
magnesium ions are nonetheless available for entrapment by zeolites. Id.
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection, however, for reasons that follow.
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We point out initially that the Examiner does not take the position that
magnesium is an “irremovable” contaminant of calcium carbonate. In our
view, Appellant’s argument on this point appears to take the Examiner’s
statements directed to the presence of magnesium in calcium carbonate out
of context. As discussed above, the Examiner finds that the calcium
carbonate included in the relied-upon latex paint composition exemplified in
Hanzlicek will necessarily include some magnesium carbonate as an
impurity, as evidenced by Stanley and Armarego. Final 4; Ans. 22–23.
Notably, as set forth above, Appellant does not dispute this finding, but
rather appears to agree that some residual amount of magnesium carbonate
would be present in Hanzlicek’s formulation. Appeal Br. 5 (“The mere
existence of residual magnesium carbonate as taught in Stanley does not
equate to Mg2+ being disposed in the pores of the zeolite”). The Examiner
does not assert that the magnesium carbonate impurity is somehow
“irremovable” from the calcium carbonate as Appellant argues. Appeal Br.
5. To the contrary, by finding that magnesium ions are disposed in the
pores of the zeolite in Hanzlicek’s latex paint composition, the Examiner
implicitly finds that the magnesium ions are free to move into the pores of
the zeolite. Final Act. 4; Ans. 22–23.
We find no fault in the Examiner’s finding that Hanzlicek’s
formulation would inherently contain sequestered Mg2+ cations. Final 4;
Ans. 22–23. “[I]n order to rely on inherency to establish the existence of a
claim limitation in the prior art in an obviousness analysis[,] the limitation at
issue necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharm., Inc. v. TWI
Pharms, Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). To properly rely on
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the doctrine of inherency in a rejection, “the Examiner must provide a basis
in fact and/or technical reasoning to reasonably support the determination
that the allegedly inherent characteristic necessarily flows from the teachings
of the applied prior art.” Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI
1990). Once the Examiner so provides, the burden then shifts to the patent
applicant to demonstrate otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA
1977). By providing evidence in the form of Stanley and Armarego that
calcium carbonate inherently includes some magnesium carbonate, and by
finding that zeolites, such as those disclosed by Hanzlicek, “include cations
in pores . . . for charge balance,” the Examiner provides adequate basis in
fact and technical reasoning to support the finding that Mg2+ cations
inherently would be present in the pores of Hanzlicek’s zeolite. Final 4; see
also Ans. 22–23. The burden to demonstrate that magnesium cations are not
sequestered in the pores of the zeolite of Hanzlicek’s example 2 formulation,
therefore, properly shifts to Appellant. Best, 562 F.2d at 1255.
Although Appellant argues (Appeal Br. 5) that the Examiner “does
not account for the concentration of magnesium ions, other ions, the
concentration of zeolite, the type of zeolite used, the purity of the calcium
carbonate or the pH,” we find no disclosure in Appellant’s Specification
indicating that a particular concentration of magnesium ions, a particular
concentration of other ions, a particular concentration of zeolite, a particular
type of zeolite, or a particular pH, are required in order for magnesium ions
to be sequestered in a paint composition as recited in claim 1, and Appellant
does not identify any such disclosure in the Specification.
Rather, the Specification describes producing the paint composition of
Appellant’s invention by mixing a solvent, zeolite particles, dispersant,
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defoamer, and pigments together, and then adding a binder to the mixture.
Spec. ¶ 24. The Specification indicates that the resulting composition
“usually includes at least one source of atoms or cations that initiate seed
formation,” such as magnesium, calcium, and/or zinc. Spec. ¶¶ 20, 24. The
Specification discloses that “after formation of the paint composition,” the
“atoms or cations that initiate seed formation are sequestered in the zeolite
via exchange with exchangeable cations (e.g. Na+).” Spec. ¶ 20. The
Specification, accordingly, indicates that the act of forming a paint
composition including the components recited in claim 1 results in cations,
such as magnesium and zinc, being sequestered in the pores of zeolite
present in the composition. Based on these disclosures in the Specification,
the recitation in claim 1 of magnesium ions disposed within the pores of
zeolite in the claimed paint composition appears to be an intrinsic
characteristic of the composition, rather than an additional requirement for
the composition imposed by the claim.
As discussed above, Hanzlicek discloses that the latex paint
composition of Hanzlicek’s invention may include water (solvent), a
polymeric binder “known in the art” to be suitable for latex paint
compositions, which Hanzlicek discloses includes a urethane polymer
(polyurethane), a zeolite, calcium carbonate pigment (including magnesium
carbonate as an impurity as evidenced by Stanley and Armarego), and zinc
omadine. As also discussed above, Hanzlicek exemplifies a latex coating
(paint) composition that includes water, a polymeric binder, a zeolite,
calcium carbonate, and zinc omadine. Hanzlicek’s disclosures as a whole,
therefore, would have suggested a paint composition including all of the
components recited in claim 1.
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The Examiner, therefore, had a reasonable basis for finding that
magnesium ions present in the paint composition suggested by Hanzlicek
would be disposed within the pores of zeolite in the composition, as recited
in claim 1, particularly in view of the apparent disclosure in Appellant’s
Specification discussed above indicating that this is an intrinsic
characteristic of paint compositions that include the components recited in
claim 1. In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no
prior art of record explicitly discusses the [limitation], [applicants’]
application itself instructs that [the limitation] is not an additional
requirement imposed by the claims on the [claimed invention], but rather a
property necessarily present in [the claimed invention].”); see also Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (“If Pereira
discloses the very same methods, then the particular benefits must naturally
flow from those methods even if not recognized as benefits at the time of
Pereira’s disclosure.”). On the record before us, Appellant does not provide
evidence demonstrating that magnesium ions would not be disposed within
the pores of the zeolite in the paint composition suggested by Hanzlicek.
Appeal Br. 3–7. Nor does Appellant show that one of ordinary skill in the
art would not have expected magnesium ions to be present in the pores of
the zeolite in the suggested composition. Id.
Appellant argues that Hanzlicek does not teach using zeolite in
combination with a polymeric binder as recited in claim 1 because “[w]hen
describing useful binders for latex paint compositions containing odor
entrapping agents, polymeric binders such as vinyl and urethane are
excluded.” Appeal Br. 3–4. Appellant argues that the paint compositions
described in the background section of Hanzlicek that include vinyl and
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urethane polymeric binders do not contain zeolite particles, while “the latex
paint composition containing entrapping agents like zeolite particles
includes polymeric binders such as acrylics or non-polymeric binders.” Id.
Appellant argues that Hanzlicek, therefore, implicitly teaches away from
using urethane and vinyl polymeric binders in combination with zeolites.
Appeal Br. 4.
As discussed above, however, Hanzlicek explicitly discloses that
suitable binders for use in Hanzlicek’s latex paint composition “are known
in the art and include polymeric binders, such as acrylics, or non-polymeric
binders.” Hanzlicek ¶ 27. One of ordinary skill in the art would have
understood this disclosure to indicate that any polymeric binder known in
the art to be suitable for use in latex paint compositions could be used as the
binder in Hanzlicek’s paint composition, and would have understood that
Hanzlicek’s use of “such as” when referring to acrylics and non-polymeric
binders, indicates that such binders are merely exemplary suitable binders.
As discussed above, Hanzlicek discloses in the background section of the
reference that urethane polymers (polyurethanes) are known in the art to be
suitable polymeric binders for latex paint compositions. Final Act. 3–4
(citing Hanzlicek ¶ 2). This disclosure, taken together with Hanzlicek’s
disclosure that suitable binders for Hanzlicek’s paint composition “are
known in the art and include polymeric binders” would have indicated to
one of ordinary skill in the art that urethane polymers would be suitable for
use as the binder in Hanzlicek’s paint composition. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) ([A]n obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] . . . can take account of the inferences and creative
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steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
Contrary to Appellant’s arguments, Hanzlicek, therefore, does not
implicitly teach away from using urethane and vinyl polymeric binders in
combination with zeolites. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (“[t]he prior art’s mere disclosure of more than one alternative does
not constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed”).
Appellant presents additional arguments directed to Floyd (Appeal Br.
6; Reply Br. 2–3), which, as discussed above, the Examiner relies on for
disclosure of suitable polymeric binders for latex paint compositions. Final
Act. 5 (citing Floyd col. 3). But because the Examiner explicitly finds that
“Hanzlicek broadly teaches a latex paint composition containing entrapping
agents like zeolite particles can include polymeric binders such as vinyl,
acrylic or urethane polymers” (Ans. 21), the Examiner, in effect, relies on
Floyd as a cumulative reference. Because Hanzlicek would have suggested
a paint composition having all the features recited in claim 1 for the reasons
discussed above, Appellant’s arguments directed to Floyd are unpersuasive
of reversible error in the Examiner’s rejection.
We, accordingly, sustain the Examiner’s rejection of claims 1–3,
5–14, 16, 22, 23, and 25–27 under 35 U.S.C. § 103 as unpatentable over
Hanzlicek in view of Floyd as evidenced by Armarego and Stanley.

Claim 21
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Independent claim 21 differs from claim 1, in part, by reciting that the
claimed paint composition comprises zeolite particles having a plurality of
pores in which zinc cations—rather than magnesium cations as recited in
claim 1—are disposed.
Appellant argues that the experimental examples in Hanzlicek “add
zinc omadine in extremely low concentrations,” which would “limit or
eliminate the availability of free zinc cations (Zn2+) to be disposed in the
zeolite pores” because “zinc cations are less likely to be disposed in zeolite
pores at lower concentrations of available zinc ions” as demonstrated by the
disclosure in paragraph 31 of Appellant’s Specification that adding “0.5% by
weight . . . of zeolite to a solution with a concentration of 1170 mg/ L of zinc
cations reduced the concentration to 232 mg/L or removed 938 mg/L,” while
“[a] 1 % addition of zeolite reduced the concentration to 0.57 mg/L.”
Appeal Br. 4–5.
Contrary to Appellant’s arguments, however, paragraph 31 of the
Specification indicates that adding 0.5 g of zeolite particles to 100 g of a
ZnCl2 solution prepared by mixing 0.27 g of ZnCl2 with 100 g of deionized
water reduced the magnesium ion concentration in the solution from 1170
mg/L to 232 mg/L, and adding 1.0 g of zeolite particles to 100 g of the
ZnCl2 solution reduced the zinc ion concentration in the solution to 0.57
mg/L. Paragraph 31 of the Specification, therefore, does not indicate that
zinc cations are less likely to be disposed in zeolite pores at lower
concentrations of available zinc ions as Appellant asserts. Because
Appellant’s argument that the concentration of zinc omadine used in
Hanzlicek’s experimental examples would “limit or eliminate the
availability of free zinc cations (Zn2+) to be disposed in the zeolite pores” is
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premised on an incorrect characterization of the disclosures in paragraph 31
of Appellant’s Specification, the argument is unpersuasive of reversible
error in the Examiner’s rejection.
Similar to the arguments Appellant provides for claim 1, Appellant
argues that in addition to the concentration of zinc ions, the ion exchange
process will be affected by the type of zeolite used, the concentration of
zeolite particles, the pH, and the availability and concentration of other ions,
and “[t]he mere existence of zinc omadine and zeolite particles does not
equate to zinc cations being disposed in the zeolite pores.” Appeal Br. 4.
As discussed above in connection with claim 1, however, Hanzlicek
discloses that the latex paint composition of Hanzlicek’s invention may
include water (solvent), a polymeric binder “known in the art” to be suitable
for latex paint compositions, which Hanzlicek discloses includes a urethane
polymer (polyurethane), a zeolite, and zinc omadine. As also discussed
above, Hanzlicek exemplifies a latex coating (paint) composition that
includes water, a polymeric binder, a zeolite, and zinc omadine. Hanzlicek’s
disclosures as a whole, therefore, would have suggested a paint composition
including all of the components recited in claim 21.
The Examiner, therefore, had a reasonable basis for finding that zinc
ions present in the paint composition suggested by Hanzlicek would be
disposed within the pores of zeolite in the composition, as recited in claim 1,
particularly in view of the apparent disclosure in Appellant’s Specification
discussed above indicating that this is an intrinsic characteristic of paint
compositions that include the components recited in claim 21. Kubin, 561
F.3d at 1357. On the record before us, Appellant does not provide evidence
demonstrating that zinc ions would not be disposed within the pores of the
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zeolite in the paint composition suggested by Hanzlicek. Appeal Br. 4–5.
Nor does Appellant show that one of ordinary skill in the art would not have
expected zinc ions to be present in the pores of the zeolite in the suggested
composition. Id.
We, accordingly, sustain the Examiner’s rejection of claim 21 under
35 U.S.C. § 103 as unpatentable over Hanzlicek in view of Floyd as
evidenced by Armarego and Stanley.
Claims 4 and 15
Although Appellant asserts that the Examiner “makes the
unsubstantiated assertion that all the commercial zeolites” disclosed in
Hanzlicek are in sodium form and correspond to the formula recited in
claims 4 and 15, Appellant does not provide any further explanation as to
why the Examiner’s finding is erroneous. Appeal Br. 6. Consequently,
Appellant’s conclusory assertion does not constitute a substantive argument
that requires our separate consideration. 37 C.F.R. § 41.37(c)(1)(iv)
(requiring, for each argument, “the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the Record relied on” and
further requiring that the “arguments shall explain why the examiner erred as
to each ground of rejection”); Jung, 637 F.3d at 1365; see also In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37(c) as requiring “more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
Rejection III: claims 1–16, 21–23, 25, 27, and 28 under 35 U.S.C. § 103
over Hanzlicek in view of Craun as evidenced by Armarego and Stanley
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Claims 1–9, 14–16, 22, 23, 25, 27, and 28
Appellant, in effect, argues claims 1–9, 14–16, 22, 23, 25, 27, and 28
as a group on the basis of independent claims 1 and 13, which Appellant
argues together, because Appellant asserts that dependent claims 2–8, 14,
15, 25, 27, and 28 “are allowable by virtue of their dependence” on either
claim 1 or claim 13, and “Appellant agrees to cancel claims 9, 16, 22[, ]and
23,” as discussed above. Appeal Br. 7–11. We, accordingly, select claim 1
as representative of claims 1–9, 14–16, 22, 23, 25, 27, and 28. 37 C.F.R.
§ 41.37(c)(1)(iv).
To address this rejection, Appellant repeats arguments directed to
Hanzlicek that Appellant provides for Rejection II. Appeal Br. 7–8. These
arguments are unpersuasive of reversible error in Rejection III for the same
reasons that the arguments are unpersuasive of reversible error in Rejection
II, discussed above.
Appellant also provides numerous arguments directed to Craun
(Appeal Br. 8–11), which the Examiner relies on for disclosure of suitable
polymeric binders for coating compositions. Final Act. 14–15 (citing Craun
cols. 2 and 3). Similar to the situation with Floyd discussed above for
Rejection II, in view of the Examiner’s finding that “Hanzlicek broadly
teaches a latex paint composition containing entrapping agents like zeolite
particles can include polymeric binders such as vinyl, acrylic or urethane
polymers” (Ans. 21), the Examiner, in effect, relies on Craun as a
cumulative reference. Because Hanzlicek would have suggested a paint
composition having all the features recited in claim 1 for reasons discussed
above, Appellant’s arguments directed to Craun are unpersuasive of
reversible error in the Examiner’s rejection.
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We, accordingly, sustain the Examiner’s rejection of claims 1–9,
14–16, 22, 23, 25, 27, and 28 under 35 U.S.C. § 103 as unpatentable over
Hanzlicek in view of Craun as evidenced by Armarego and Stanley.
Claims 10–13 and 21
Although Appellant presents numerous arguments for claims 10–13
and 21 based on Appellant’s assertion that the coating composition disclosed
in Craun does not include a pigment and need not include a surfactant
(Appeal Br. 10–11), as discussed above, the Examiner, in effect, relies on
Craun as a reference cumulative to Hanzlicek for disclosure of suitable
polymeric binders for coating compositions. Appellant’s arguments directed
to Craun are, therefore, unpersuasive of reversible error in the Examiner’s
rejection of claims 10–13 and 21 under 35 U.S.C. § 103 as unpatentable over
Hanzlicek in view of Craun as evidenced by Armarego and Stanley, which
we accordingly sustain.

CONCLUSION

Claims
Rejected
35 U.S.C. §

Basis Affirmed Reversed
9, 16, 22, and
23
§ 112(d) 9, 16, 22, and
23

1–16, 21–23,
and 25–27
§ 103 Hanzlicek,
Floyd,
Armarego,
Stanley
1–16, 21–23,
and 25–27

Appeal 2019-001018
Application 14/581,074

18
Claims
Rejected
35 U.S.C. §

Basis Affirmed Reversed
1–16, 21–23,
25, 27, and
28
§ 103 Hanzlicek,
Craun,
Armarego,
Stanley
1–16, 21–23,
25, 27, and
28

Overall
Outcome
1–16, 21–23,
and 25–28

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